Trials@uspto.gov
`571-272-7822
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`Paper 39
`Date: March 2, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`LBT IP I LLC,
`Patent Owner.
`
`IPR2020-01192
`Patent 8,421,618 B2
`
`
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 39
`Date: March 2, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`LBT IP I LLC,
`Patent Owner.
`
`IPR2020-01192
`Patent 8,421,618 B2
`
`
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`IPR2020-01192
`Patent 8,421,618 B2
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`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
`For the reasons discussed herein, we determine that Petitioner has shown by
`a preponderance of the evidence that challenged claims 1–24 of U.S. Patent
`No. 8,421,618 B2 (Ex. 1001, “the ’618 patent”) are unpatentable.
`Patent Owner filed a contingent Motion to Amend to cancel original
`claims 1–24 and replace them with proposed substitute claims 25–48. For
`the reasons discussed herein, we deny this motion because Petitioner has
`established by a preponderance of the evidence that the proposed substitute
`claims are unpatentable in view of the prior art.
`Procedural Background
`A.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–24 of the ’618 patent, along with the supporting
`Declaration of Scott Andrews. Paper 1 (“Pet.”); Ex. 1003. LBT IP I LLC
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 8. On
`March 4, 2021, pursuant to 35 U.S.C. § 314(a), we instituted inter partes
`review based on the following grounds:
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`Claim(s) Challenged 35 U.S.C. §1
`1, 3, 9–11, 14–16,
`103(a)
`19–21, 24
`4–6
`
`103(a)
`
`References/Basis
`Sakamoto2, Levi3
`
`Sakamoto, Levi, Vaganov4
`
`7, 12, 13, 17, 22, 23
`
`103(a)
`
`Sakamoto, Levi, Cervinka5
`
`2
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`8, 18
`
`103(a)
`
`103(a)
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`Sakamoto, Levi, Krasner6
`
`Sakamoto, Levi, Cervinka,
`Krasner
`
`Pet. 8; Paper 9 (“Inst. Dec.”), 6–7.
`Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 17.
`Petitioner filed a Reply (“Pet. Reply”) to the Patent Owner Response, as
`well as the Supplemental Declaration of Scott Andrews. Paper 25; Ex. 1080.
`Patent Owner filed a Sur-reply (“PO Sur-reply”). Paper 31.
`In addition, Patent Owner filed a contingent Motion to Amend
`(Paper 16, “Mot.”), which was opposed by Petitioner (Paper 26, “Pet. Mot.
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, and 112 effective
`March 16, 2013. Because the ’618 patent was filed before this date, the pre-
`AIA versions of §§ 102, 103, and 112 apply.
`2 Japanese Unexamined Patent Application Publication No. 2004-37116
`(published February 5, 2004). Ex. 1004. We refer to the English translation
`(Ex. 1004) of the original reference herein. Petitioner provides declarations
`attesting to the accuracy of the translation. Id. at 20, 50.
`3 U.S. Patent No. 5,583,776, filed March 16, 1995, issued December 10,
`1996. Ex. 1006.
`4 U.S. Patent Application No. 2006/027413 A1, published December 7,
`2006. Ex. 1008.
`5 U.S. Patent No. 7,053,823 B2, filed July 3, 2003, issued May 30, 2006.
`Ex. 1009.
`6 U.S. Patent No. 6,799,050 B1, filed June 4, 2001, issued September 28,
`2004. Ex. 1010.
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`Opp.”). We issued Preliminary Guidance on Patent Owner’s Motion to
`Amend. Paper 28. Patent Owner submitted a Reply in Support of its
`Motion to Amend (Paper 30, “PO Mot. Reply”), and Petitioner filed a Sur-
`reply supporting its Opposition (Paper 36, “Pet. Mot. Sur-reply”).
`An oral hearing, consolidated with Cases IPR2020-01189 and
`IPR2020-01191, was conducted on December 9, 2021. A transcript of the
`hearing is included in the record. Paper 38 (“Tr.”).
`Related Matters
`B.
`The parties identify LBT IP I LLC v. Apple Inc., Civil Action No.
`1:19-cv-01245-UNA (D. Del.), filed on July 1, 2019 as a related matter.
`Pet. 70; Paper 3, 2. Petitioner also identifies several petitions filed
`challenging other patents related to the ’618 patent: IPR2020-01189,
`IPR2020-01190, IPR2020-01191, and IPR2020-01193. Pet. 70.
`The ’618 Patent
`C.
`The ’618 patent is titled “Apparatus And Method For Determining
`Location And Tracking Coordinates Of A Tracking Device” and issued on
`April 16, 2013, from an application filed on January 23, 2012. Ex. 1001,
`codes (22), (45), (54).
`The ’618 patent is directed to an apparatus to monitor location
`coordinates of an electronic tracking device. Ex. 1001, code (57). The
`electronic tracking device apparatus includes electronic components such as
`a transceiver, signal processing circuitry, and an accelerometer. Id. at 5:50–
`53. Figure 1, reproduced below, depicts a schematic of the electronic
`tracking device.
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`As depicted in the schematic of Figure 1, reproduced above, tracking
`device 100 contains electronic components 101 such as transceiver 102,
`signal processing circuitry 104 (e.g., a microprocessor or other signal logic
`circuitry), and accelerometer 130. Ex. 1001, 5:50–53. Signal processing
`circuitry 104 may store a first identification code, produce a second
`identification code, determine location coordinates, and generate a
`positioning signal that contains location data. Id. at 5:62–66. Location
`tracking circuitry 114 calculates location data received and sends the data to
`signal processing circuitry 104. Id. at 6:12–14. Memory 112 stores
`operating software and data communicated to and from signal processing
`circuit 104 and/or location tracking circuitry 114, which, for example, is
`global positioning system (GPS) logic circuitry. Id. at 6:14–17. Signal
`power levels are detected and measured, and the battery level is detected.
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`Id. at 6:17–22. When a signal level received by the GPS receiver is below a
`first signal level, portions of GPS circuitry may be placed in a sleep mode to
`conserve the battery level, and GPS signal acquisition may be resumed when
`the signal level is above a first signal level. Id. at 6:66–7:11. “[W]hen GPS
`signaling is not practicable, electronic device proximity measurements
`provide differential location coordinate information to calculate current
`location coordinate information.” Id. at 8:9–12.
`Figure 3, reproduced below, is a flow chart illustrating battery
`conservation for electronic tracking device 100. Ex. 1001, 9:32–33.
`
`
`
`As shown in the flow chart of Figure 3, above, antenna 122a, which is
`associated with electronic tracking device 100, acquires a snapshot of
`receive communication signal in step 302, including location coordinates
`data, and processing unit 104 processes the data in step 304. Ex. 1001,
`9:35–40. In step 306, processing unit 104 determines a power level of a
`receive communication signal. Id. at 9:40–41. In step 308, accelerometer
`130 activates if a power level of the receive communication signal is
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`insufficient, and accelerometer 130 may measure acceleration of electronic
`tracking device 100 at time intervals, with processing unit 104 computing
`current location coordinates using acceleration measurements at step 310.
`Id. at 9:42–48. In a variation of step 312, upon determining receive
`communication signal is of sufficient signal strength, accelerometer 130 is
`deactivated and location tracking circuitry 114 is activated. Id. at 9:56–61.
`Challenged claims 1 and 15 are independent. Claim 1 of the
`’618 patent is reproduced below, with bracketed letters added to the
`limitations for reference purposes.
`1. A portable electronic tracking device to monitor location
`coordinates of one or more individuals or objects, the device
`comprising:
`[a] transceiver circuitry to receive at least one portion of a
`receive communication signal comprising location coordinates
`information;
`[b] accelerometer circuitry to measure displacements of the
`portable electronic tracking device;
`[c] a battery power monitor configured to selectively activate
`and deactivate at least one portion of the transceiver circuitry
`and location tracking circuitry to conserve battery power in
`response to a signal level of the at least one portion of the
`receive communication signal; and
`[d] processor circuitry configured to process the at least one
`portion of the receive communication signal.
`Ex. 1001, 10:19–10:33.
`II. ANALYSIS OF PATENTABILITY OF CLAIMS 1–24
`A. The Parties’ Arguments
`In our Decision on Institution, we concluded that the arguments and
`
`evidence advanced by Petitioner demonstrated a reasonable likelihood that at
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`least one claim of the ’618 patent would have been obvious. Inst. Dec. 7–
`39. Here, we must consider whether Petitioner has established by a
`preponderance of the evidence that claims 1–24 of the ’618 patent would
`have been obvious. 35 U.S.C. § 316(e). We previously instructed Patent
`Owner that “Patent Owner is cautioned that any arguments not raised in the
`response may be deemed waived.” Paper 10, 9; see also In re NuVasive,
`Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding patent owner waived
`an argument addressed in the preliminary response by not raising the same
`argument in the patent owner response). Additionally, the Board’s Trial
`Practice Guide states that the Patent Owner Response “should identify all the
`involved claims that are believed to be patentable and state the basis for that
`belief.” Consolidated Trial Practice Guide (“TPG”), 66 (Nov. 2019).
`
`Patent Owner has chosen not to address certain arguments and
`evidence advanced by Petitioner to support its unpatentability contentions.
`In this regard, the record contains persuasive arguments and evidence
`presented by Petitioner regarding the manner in which the prior art discloses
`the corresponding limitations of claims 1–24 of the ’618 patent and the
`rationale for combining the asserted references.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art the time of
`the invention would have had a bachelor’s degree in electrical engineering,
`computer engineering, computer science, or an equivalent degree, with at
`least two years of experience in GPS navigation, dead reckoning, portable
`tracking devices, or related technologies. Pet. 5. Petitioner contends that
`additional education may substitute for lesser work experience and vice-
`versa. Id. (citing Ex. 1003 ¶¶ 29–31).
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`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`In the Institution Decision, we considered the subject matter of the
`’618 patent, the background technical field, and the prior art, and we agreed
`with Petitioner’s proposed qualifications; however, we deleted the use of the
`qualifier “at least” because it introduces vagueness. Inst. Dec. 7–8.
`Accordingly, we determined that one of ordinary skill in the art would have
`had a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or an equivalent degree, with two years of experience in
`GPS navigation, dead reckoning, portable tracking devices, or related
`technologies, and that additional education may substitute for lesser work
`experience and vice-versa. Id.
`Patent Owner adopted the qualifications identified in the Institution
`Decision. PO Resp. 2.
`In view of the relevant technology and claims of the ’618 patent, as
`well as the technology of the asserted prior art, and we adopt the same
`qualifications as those identified in the Institution Decision.
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`C. Claim Construction7
`For petitions filed after November 13, 2018, the Board interprets
`claim terms in accordance with the standard used in federal district court in a
`civil action involving the validity or infringement of a patent. 37 C.F.R.
`§ 42.100(b) (2019). Under the principles set forth by our reviewing court,
`the “words of a claim ‘are generally given their ordinary and customary
`meaning,’” as would be understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of
`the disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner asserts that no express claim construction is required in
`order to assess the grounds presented. Pet. 8–9; see generally Pet. Reply.
`Patent Owner does not present any proposed construction for any claim
`terms. See generally PO Resp.; PO Sur-reply.
`In the Institution Decision, we determined that it was not necessary to
`provide express interpretations of any claim terms. Inst. Dec. 8–9. On the
`full record, we likewise determine that it is not necessary to provide an
`express interpretation of any claim terms. See Nidec Motor Corp. v.
`
`
`7 This section applies to claim construction related to the original claims 1–
`24 of the ’618 patent. Claim construction issues related to the proposed
`substitute claims are addressed infra Section III.C.1.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`
`D. Alleged Obviousness of Claims 1, 3, 9–11, 14–16, 19–21, and 24
`
`Over Sakamoto and Levi
`Petitioner contends that claims 1, 3, 9–11, 14–16, 19–21, and 24
`would have been obvious over the combination of Sakamoto and Levi.
`Pet. 13–53. To support its contentions, Petitioner provides explanations as
`to how Sakamoto and Levi teach each claim limitation and why there is a
`motivation to combine the references. Id. Petitioner also relies upon the
`Andrews Declaration (Ex. 1003) and the Supplemental Andrews Declaration
`(Ex. 1080) to support its positions. Patent Owner argues that the prior art
`does not teach all the claim limitations. PO Resp. 4–14; PO Sur-reply 1–10.
`We begin our discussion with a brief summary of Sakamoto and Levi,
`and then address the evidence and arguments presented.
`
`
`1. Sakamoto (Ex. 1004)
`Sakamoto is directed to the use of a GPS positioning system that
`includes a portable terminal and remote server. Ex. 1004, code (57), ¶ 18.
`Figure 1, reproduced below, is a diagram of the configuration of an
`embodiment of Sakamoto’s system.
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`Figure 1, above, depicts the position information communication terminal 1
`which includes GPS receiver 10, positioning control unit 13, communication
`control unit 11 for mobile communications, man-machine interface control
`unit 14, which is an interface means with a terminal user, and battery control
`unit 16. Ex. 1004 ¶ 19. Battery control unit 16 provides positioning control
`unit 13 a remaining battery life warning when the remaining battery amount
`falls below a preset threshold value. Id. Terminal 1 also has satellite signal
`level detector 15 that detects a level of the GPS signal received by GPS
`receiver 10. Id. ¶ 50. When the satellite signal level received by terminal 1
`is low such that positioning is not possible, power consumption can be
`reduced by stopping the position search. Id.
`
`
`2. Levi (Ex. 1006)
`Levi is directed to the use of a portable navigation device that
`integrates GPS data, dead reckoning (DR) sensors, and digital maps into a
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`self-contained navigation instrument. Ex. 1006, code (57), 1:60–63. Levi’s
`device uses an accelerometer to provide acceleration data indicative of
`footsteps, and sensed footsteps are converted to distance and velocity. Id. at
`3:13–14, 3:35–36. A DR software module performs DR navigation by
`sampling vector velocities for incremental course changes. Id. at 7:64–66.
`The DR software accesses compass, altimeter, pedometer frequency, and
`calibration table data to obtain velocity magnitude and three-dimensional
`direction. Id. at 8:1–3. DR software normally uses GPS to obtain starting
`positions, but when GPS data is not valid, DR uses the last fix, whether GPS
`or manual, for a start point. Id. at 8:3–7. DR navigation is automatically
`used by the navigation module when GPS is unavailable. Id. at 8:7–9. The
`DR system allows users to designate landmarks for navigation. Id. at 8:50–
`9:52.
`3. Analysis
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective indicia of
`nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`8 No evidence of objective indicia of nonobviousness has been presented by
`Patent Owner. See generally PO Resp.
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`a. Claim 1
`
`
`Petitioner asserts that the combination of Sakamoto and Levi teaches
`all the limitations of claim 1, and that one of ordinary skill in the art would
`have been motivated to combine the asserted prior art references. See Pet.
`22–45; Pet. Reply 1–17.
`
`
`
`
`1) Parties’ Contentions
`
`
`
`
`
`i. Preamble
`The preamble of claim 1 recites “[a] portable electronic tracking
`device to monitor location coordinates of one or more individuals or
`objects.” Ex. 1001, 10:19–20. Petitioner argues that Sakamoto in
`combination with Levi discloses the portable electronic tracking device
`recited in the preamble of claim 1. Pet. 22–24. More specifically, Petitioner
`asserts that Sakamoto discloses several electronic devices that collectively
`operate to enable monitoring location of a terminal using GPS. Id. at 22–23
`(citing Ex. 1004 ¶ 19, Fig. 1; Ex. 1003 ¶ 121). Petitioner contends that
`Sakamoto teaches all the components of the electronic tracking device,
`except for the accelerometer circuitry, which Levi discloses for use in a
`portable navigation system. Id. at 24.
`Petitioner contends that one of ordinary skill in the art would have
`understood that Sakamoto discloses a portable mobile terminal that uses
`batteries. Pet. 24 (citing Ex. 1004 ¶¶ 3, 19, 31, 46; Ex. 1003 ¶ 123).
`Petitioner asserts that Sakamoto discloses monitoring for determination of
`terminal users’ positions where the GPS receiver “receives GPS satellite
`signals from GPS satellites and performs positioning operations.” Id. at 25–
`26 (citing Ex. 1004 ¶¶ 5, 18–24, Fig. 2). Petitioner argues that a person of
`ordinary skill in the art would have understood that orbit information from
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`the GPS satellite and position information from the GPS receiver is used to
`determine the position of the terminal, including location coordinates as
`recited in the preamble of claim 1. Id. at 26 (citing Ex. 1004 ¶¶ 5, 22;
`Ex. 1003 ¶ 124).
`
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`
`
`ii. Limitation 1[a]
`Limitation 1[a] recites “transceiver circuitry to receive at least one
`portion of a receive communication signal comprising location coordinates
`information.” Ex. 1001, 10:22–24. For the teaching of limitation 1[a],
`Petitioner argues that Sakamoto discloses transceiver circuitry that consists
`of GPS receiver 10, GPS control unit 12, positioning control unit 13, and
`communication control unit 11. Pet. 26–27 (citing Ex. 1004, Fig. 1).
`Petitioner asserts that Sakamoto teaches that its GPS receiver “receives GPS
`satellite signals from GPS satellites,” which includes information to
`determine location coordinates. Id. at 27–28 (citing Ex. 1004 ¶¶ 5, 19;
`Ex. 1003 ¶¶ 125–126). Petitioner contends that a person of ordinary skill in
`the art would have understood Sakamoto’s communication control unit 11 to
`be the claimed transceiver “because it transmits information (e.g., the battery
`level warning message) and receives information (e.g., positioning control
`information such as the position search request message)” with server 2. Id.
`at 29 (citing Ex. 1004 ¶ 48; Ex. 1003 ¶ 127).
`Petitioner asserts that one of ordinary skill in the art would have been
`motivated to combine Sakamoto and Levi. Pet. 13–18. Petitioner contends
`Sakamoto and Levi are analogous art to the ’618 patent, and that a person of
`ordinary skill in the art would have been familiar with both references. Id. at
`13. Petitioner contends that a person of ordinary skill in the art would have
`been motivated to combine Levi’s supplemental location tracking in the
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`form of a DR system, which includes an accelerometer, with Sakamoto’s
`GPS system because “[u]sing an accelerometer to supplement location
`tracking of a device, in particular when GPS signals are unavailable, was
`extremely well-known in the art prior to the invention of the ’618 Patent, as
`taught by numerous references including Levi.” Id. at 13–14 (citing
`Ex. 1003 ¶¶ 92–100). In support, Mr. Andrews testifies that it was known
`that the problems of weak GPS signals were well known prior to the ’618
`invention and Levi, as well as other references, “teaches a solution to the
`problem of insufficient GPS signal[s] by starting to measure acceleration
`data with an accelerometer.” Ex. 1003 ¶¶ 93–94 (citing, inter alia,
`Ex. 1004, 8:6–9; Ex. 1015, 11:43–46, 13:29–33).
`
`
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`
`iii. Limitation 1[b]
`Limitation 1[b] recites “accelerometer circuitry to measure
`displacements of the portable electronic tracking device” Ex. 1001, 10:25–
`26. Petitioner acknowledges that Sakamoto does not teach accelerometer
`circuitry, but argues that portable devices, as taught by Levi, were known to
`utilize both GPS-based and accelerometer-based position determinations.
`Pet. 29. Petitioner asserts that “Levi teaches a portable navigational system
`using both GPS and dead reckoning based on accelerometer data to
`determine a user’s position.” Id. at 29–30 (citing Ex. 1006, 1:8–11, 1:59–
`63). Petitioner contends that Levi’s accelerometer, incorporated in a
`pedometer, senses “harmonic motions and impact accelerations that result
`from walking or running,” and the accelerometer is used in the DR system.
`Id. at 30 (citing Ex. 1006, 2:5–14, 3:12–19; Ex. 1003 ¶ 129). Petitioner
`argues that Levi’s DR system supplements the GPS system when GPS is
`unavailable. Id. (citing Ex. 1006, 1:51–53, 8:7–9). Petitioner refers to
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`Levi’s disclosures that the accelerometer calculates displacement, including
`total displacement from a starting point, based on acceleration data. Id.
`(citing Ex. 1006, 1:13–17, 3:12–36, 4:18–28, 5:17–19; Ex. 1003 ¶ 130).
`
`
`
`
`
`iv. Limitation 1[c]
`Limitation 1[c] recites:
`a battery power monitor configured to selectively
`activate and deactivate at least one portion of the
`transceiver circuitry and location tracking circuitry
`to conserve battery power in response to a signal
`level of the at least one portion of the receive
`communication signal.
`Ex. 1001, 10:27–31.
`Petitioner argues that Sakamoto activates and deactivates the GPS
`receiver to conserve power and in response to a signal level. Pet. 31–41.
`More specifically, Petitioner asserts that Sakamoto teaches that its GPS
`receiver monitors the GPS satellite signal and then, depending on the signal
`level, changes its mode of its operation. Id. at 31–32 (citing Ex. 1004 ¶¶ 24–
`25, 27, 37–38, 45, 50). Petitioner contends that Sakamoto teaches
`selectively activating and deactivating a portion of the transceiver circuitry
`and location tracking circuitry in response to the signal level to conserve
`power. Id. at 32. Mr. Andrews testifies that the claimed transceiver
`circuitry, battery power monitor, and location tracking circuitry are disclosed
`in Sakamoto. Ex. 1003 ¶ 131. In support of his testimony, Mr. Andrews
`provides an annotated version of Sakamoto’s Figure 1, which is reproduced
`below.
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`In this annotated version of Sakamoto’s Figure 1, Mr. Andrews outlines the
`transceiver circuitry in red, the battery power monitor in blue, and the
`location tracking circuitry in green. Ex. 1003 ¶ 131. Mr. Andrews testifies
`on the operation of the three operational modes of Sakamoto: 1) the “normal
`mode” where the GPS signal is above a threshold value and positioning by
`the GPS receiver is performed cyclically; 2) the “stop-position searching
`mode” where the received GPS satellite signal is below a predetermined
`threshold level and location determination is halted; and 3) the “high mode”
`where the GPS satellite signal is low, but position searching is performed
`continuously to stabilize positioning. Id. ¶ 132 (citing Ex. 1004 ¶¶ 27, 37–
`38, 50).
`Petitioner argues that Sakamoto “teaches battery control unit 16,
`positioning control unit 13, and satellite signal level detecting unit 15, that
`either individually or collectively, selectively activate and deactivate GPS
`receiver 10 in response to a satellite signal.” Pet. 34 (citing Ex. 1003 ¶ 131).
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`Petitioner contends that in Sakamoto the activation/deactivation is done in
`response to a satellite signal level detected by satellite signal level detecting
`unit 15. Id. Petitioner asserts that Sakamoto’s GPS receiver monitors the
`GPS satellite signal and then, depending on the signal level, changes its
`mode of operation in order to conserve power. Id. at 31–32 (citing Ex. 1004
`¶¶ 24–25, 27, 37–38, 45, 50).
`
`Petitioner refers to Sakamoto’s teaching that “the GPS receiver
`cyclically monitors the GPS satellite signal level according to a
`‘measurement time.’” Pet. 32 (citing Ex. 1004 ¶ 37). Petitioner asserts that
`“Sakamoto teaches transitioning to the normal mode (if not already in the
`normal mode)” in situations where “the GPS signal is ‘high.’” Id. (citing
`Ex. 1004 ¶ 27). Petitioner further contends that “when the GPS signal is
`‘equal to or lower than a predetermined threshold value,’ such that
`‘positioning cannot be performed,’ the ‘position search may be stopped.’”
`Id. (citing Ex. 1004 ¶ 38).
`
`Mr. Andrews testifies that deactivating the GPS receiver, i.e., stopping
`position searching, is known to reduce power consumption. Ex. 1003 ¶ 136.
`Petitioner additionally refers to Sakamoto’s teaching that “power
`consumption can be reduced by stopping the position search when
`positioning is not possible.” Pet. 32–33 (citing Ex. 1004 ¶ 50).
`Petitioner argues that Sakamoto teaches activating and deactivating
`the GPS receiver by performing signal level detection during a set
`measurement time. Pet. 32, 35–36 (citing Ex. 1003 ¶ 137; Ex. 1004 ¶¶ 20,
`27, 37, Figs. 6, 7). Petitioner asserts that “at the cycle set in advance,” “a
`‘satellite signal level request message,’ including the measurement time for
`signal level detection, is sent to terminal 1 from server 2.” Id. at 35–36
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`IPR2020-01192
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`(citing Ex. 1003 ¶ 137; Ex. 1004 ¶ 37). According to Petitioner, “the
`positioning mode control unit 22 ‘sends a positioning control message
`(satellite signal level request message),’” and the positioning control unit
`then “causes the satellite signal level detection unit 15 to monitor the signal
`level from the GPS satellite” during this cycle. Pet. Reply 3–4 (citing
`Ex. 1003 ¶¶ 135, 138; Ex. 1004 ¶¶ 37–38). Petitioner contends that in
`Sakamoto, the satellite signal level response is sent to position
`management/positioning server 2, and the positioning mode control unit 22
`reads it and “determines the required positioning mode based on the satellite
`signal level, including whether the signal level is above ‘the predetermined
`threshold value.’” Id. at 4 (citing Ex. 1004 ¶ 38). Mr. Andrews testifies that
`Sakamoto teaches a cycle such that positioning operations are performed
`periodically and “a POSITA [person of ordinary skill in the art] would have
`expected that the device would have been configured to regularly reselect
`the appropriate mode of operation based on currently-sensed parameters to
`ensure the most appropriate functioning of the device.” Ex. 1003 ¶ 138.
`Petitioner refers to Sakamoto’s disclosure that position searching
`would be stopped (stop-position mode) if the signal level detected is equal to
`or lower than a predetermined threshold value. Pet. 32 (Ex. 1004 ¶ 38).
`Petitioner asserts that, in Sakamoto’s stop-position mode, at least the signal
`acquisition and signal processing sub-components of the GPS receiver are
`deactivated. Id. at 39 (citing Ex. 1003 ¶ 139; Ex. 1004 ¶ 50). If the signal
`level is measured above the set threshold during a cyclic signal level
`detection, then GPS receiver components are activated. Id. at 35–39.
`Mr. Andrews testifies that
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`if the device was previously in the stop-position
`searching mode (because the received GPS signal
`level was equal to or lower than a predetermined
`threshold) and a subsequently received GPS signal
`level is good (i.e., above a threshold value), then a
`POSITA would have understood GPS control
`unit 12 instructs GPS receiver 10 to begin position
`searching, resulting in increased power usage by the
`GPS receiver.
`Ex. 1003 ¶ 138 (citing Ex. 1004 ¶ 27). Mr. Andrews further testifies that a
`person of ordinary skill in the art “would have understood that a location
`tracking device that transitioned to stop-positioning mode (i.e. deactivated
`GPS) when the signal level was low, but did not transition to a positioning
`mode (i.e. activate GPS) when the signal was high enough to obtain
`positioning . . . would have understood such a device to be useless.” Id.
`¶ 136.
`Patent Owner asserts that Sakamoto does not disclose “selectively
`activating and deactivating at least one portion of the transceiver circuitry
`and location tracking circuitry . . . in response to a signal level.” PO Resp.
`4–13. Patent Owner notes that Petitioner relies upon the stop-position mode
`of Sakamoto to teach this limitation. Id. at 7–8 (citing Pet. 35). Patent
`Owner further notes Mr. Andrews’ testimony that Sakamoto’s GPS
`receiver 10 is the only component that receives GPS satellite signals. Id. at
`9–10, 12 (citing Ex. 2003, 14:5–16:2, 20:1–4, 23:10–11). As such, Patent
`Owner contends that transceiver circuitry and location tracking circuitry
`cannot both include the ability to receive GPS signals and also be turned off
`completely when deactivated. Id. at 7. More specifically, Patent Owner
`argues that if Sakamoto is “‘in a state in which the power of the GPS
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`receiver 10 is cut off,’ . . . or has deactivated the ‘sub-components of GPS
`receiver related to signal acquisition (transceiver circu
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