Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: March 4, 2021
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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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`571-272-7822
`
`Paper 9
`Date: March 4, 2021
`
`
`
`
`
`
`
`
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01192
`Patent 8,421,618 B2
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`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Apple Inc. (“Apple” or “Petitioner”) filed a Petition requesting inter
`partes review of claims 1–24 of U.S. Patent No. 8,421,618 B2 (Ex. 1001,
`“the ’618 patent”), along with the supporting Declaration of Scott Andrews.
`Paper 1 (“Pet.”); Ex. 1003. LBT IP I LLC (“LBT” or “Patent Owner”) filed
`a Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons that follow, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims. For the
`reasons set forth below, and pursuant to 35 U.S.C. § 314, we institute inter
`partes review of claims 1–24 of the ’618 patent.
`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; Paper 6, 2. Petitioner also identifies several petitions
`filed that challenge 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
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`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.
`
`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
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`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.
`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.
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`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
`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.
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`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.
`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims of the ’618 patent on
`the following grounds:
`Claim(s) Challenged 35 U.S.C. §
`1, 3, 9–11, 14–16,
`19–21, 24
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’618 patent was filed before this date, the pre-AIA
`version of § 103 applies.
`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 a declaration
`attesting to the accuracy of the translation. Id. at 20.
`3 U.S. Patent No. 5,583,776, filed March 16, 1995, issued December 10,
`1996. Ex. 1006.
`
`References/Basis
`
`103(a)1
`
`Sakamoto2, Levi3
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`Claim(s) Challenged 35 U.S.C. §
`103(a)
`
`4–6
`7, 12, 13, 17, 22, 23
`
`References/Basis
`Sakamoto, Levi, Vaganov4
`
`Sakamoto, Levi, Cervinka5
`
`Sakamoto, Levi, Krasner6
`
`Sakamoto, Levi, Cervinka,
`Krasner
`
`103(a)
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`103(a)
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`103(a)
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`2
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`8, 18
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`Pet. 8.
`
`II. ANALYSIS
`A. 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 ¶ 30).
`Patent Owner does not present a proposed level of qualifications for
`one of ordinary skill in the art. See generally Prelim. Resp.
`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
`
`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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`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).
`Considering the subject matter of the ’618 patent, the background
`technical field, and the prior art, we agree with Petitioner’s proposed
`qualifications; however, we delete the use of the qualifier of “at least”
`because it introduces vagueness. Accordingly, the acceptable qualifications
`for one of ordinary skill in the art would be possession of 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 additional
`education may substitute for lesser work experience and vice-versa.7
`
`B. Claim Construction
`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,
`
`
`7 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the obviousness analysis in any subsequent
`briefing.
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`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. Patent Owner does not present
`any proposed construction for any claim terms. See generally Prelim. Resp.
`We determine that it is not necessary to provide an express
`interpretation of any claim terms at this juncture. See Nidec Motor Corp. v.
`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.”).
`
`C. 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. 12–53. To support its contentions, Petitioner provides explanations as
`to how Sakamoto and Levi teach each claim limitation. Id. Petitioner also
`relies upon the Andrews Declaration (Ex. 1003) to support its positions.
`Patent Owner argues that the prior art does not teach all the claim limitations
`and Petitioner’s rationale to combine the references is improper and employs
`hindsight. Prelim. Resp. 2–16.
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`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.
`
`
`
`Figure 1, above, depicts 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, 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.
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`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
`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 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
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`(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).
`
`
`
`a. Independent Claim 1
`The Petition asserts that the combination of Sakamoto and Levi
`teaches all the limitations of claim 1, and one of ordinary skill in the art
`would have been motivated to combine the prior art references. See Pet. 12–
`45.
`
`
`i. Preamble, Limitation 1[a]
`
`
`
`Petitioner argues that Sakamoto in combination with Levi discloses
`the portable electronic tracking device of 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
`
`8 No evidence of objective indicia of nonobviousness is presented in Patent
`Owner’s Preliminary Response. See generally Prelim. Resp.
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`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
`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).
`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 and server 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).” 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. Patent Owner argues
`that Petitioner’s rationale to combine the references is improper. Prelim.
`Resp. 2–11. Because Patent Owner’s arguments concerning the rationale to
`combine more directly apply to issues related to limitation 1[b], we will
`address those issues below in the discussion of that limitation. Patent Owner
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`presents no other disputes specific to the Petitioner’s showing of the prior
`art’s teachings of the preamble and limitation 1[a].
`We have reviewed the evidence and argument and determine that
`Petitioner has presented sufficient evidence that the combination of
`Sakamoto and Levi teaches the preamble and limitation [a] of claim 1.9
`More specifically, Sakamoto discloses a portable tracking device for
`monitoring individuals or objects and circuitry for receiving a signal with
`location information. See Ex. 1004 ¶¶ 19, 22.
`
`
`
`
`ii. Limitation 1[b]
`Petitioner argues that Sakamoto does not teach accelerometer
`circuitry, but 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, 1:7–9, 8:7–9). Petitioner refers to Levi’s disclosures that
`the accelerometer provides acceleration data indicative of footsteps, with
`determination of displacement and calculation of total displacement from a
`
`
`9 We need not determine whether the preamble of claim 1 is limiting because
`Petitioner has shown that the combination of Sakamoto and Levi teaches the
`preamble. See Nidec, 868 F.3d at 1017.
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`starting point. Id. (citing Ex. 1006, 1:13–17, 3:12–36, 4:18–28, 5:17–19;
`Ex. 1003 ¶ 130).
`Patent Owner contends that the prior art relied upon by Petitioner fails
`to teach limitation 1[b]. Prelim. Resp. 11–14. More specifically, Patent
`Owner argues that Levi’s accelerometer measures footsteps by “sense[ing]
`[sic] the harmonic motions and impact accelerations that result from walking
`or running,” but footsteps are not “displacements of the portable electronic
`tracking device” as claimed. Id. at 13 (quoting Ex. 1004, 3:17–19).
`Referring to the ’618 patent specification, Patent Owner argues that the
`patent discloses that the “magnitude of displacement vectors may be
`measured by one or more accelerometers, such as accelerometer 130,
`disposed at various inclinations and orientations.” Id. (citing Ex. 1001, 8:5–
`7, 9:6–11). Patent Owner contends that, even if Levi’s velocity and three-
`dimensional direction were considered to be the claimed “displacements,”
`Levi does not disclose that they are measured by an accelerometer. Id.
`Patent Owner argues that, to the contrary, “[t]he DR software accesses the
`compass, altimeter, pedometer frequency, and calibration table data to obtain
`velocity magnitude and 3-D direction.” Id. (quoting Ex. 1004, 8:1–3).
`Having considered both parties’ arguments, at this juncture we are
`persuaded by Petitioner’s showing that Levi teaches limitation [b], despite
`Patent Owner’s arguments to the contrary. The evidence supports that,
`while Levi’s accelerometer is used to sense motions and impact
`accelerations resulting from walking or running, the “sensed footsteps are
`converted to distance and velocity.” Ex. 1006, 3:17–19, 3:35–36. Levi
`additionally discloses that the accelerometer is used in the DR system which
`measures “displacements from a known starting point in accordance with
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`motion of the user.” Id. at 1:13–17, 2:5–8. Although Levi’s DR system may
`access information from other instruments used in determining dead
`reckoning (e.g., an altimeter), Levi’s accelerometer circuitry is nevertheless
`used in determining a measurement of displacement of the portable
`electronic tracking device.
`Petitioner argues that one of ordinary skill in the art would have been
`motivated to combine Sakamoto and Levi. Pet. 13–18. Petitioner contends
`that Sakamoto and Levi are analogous art to the ’618 patent and one of skill
`would have been motivated to combine Levi’s supplemental location
`tracking in the form of a DR system, which includes an accelerometer, with
`Sakamoto’s system that uses GPS for determining a position. Id. at 13–14
`(citing Ex. 1003 ¶ 92). Petitioner asserts that the use of accelerometers for
`location tracking of a device, in particular when GPS signals are unavailable,
`was well-known. Id. (citing Ex. 1003 ¶¶ 92–100). Petitioner contends that
`using an accelerometer to supplement location data from a GPS receiver
`would have been use of a known technique to improve a similar device and
`would have been an improvement to Sakamoto’s device. Id. Petitioner
`further alleges that a person of ordinary skill in the art would have
`recognized that the supplemental tracking technique was a straightforward
`modification of the position information communication terminal of
`Sakamoto for computing positioning when the GPS signal is insufficient.
`Id. at 15 (citing Ex. 1003 ¶¶ 97–100). Petitioner asserts that because
`Sakamoto’s terminal and Levi’s navigation device are portable, and Levi
`teaches a built-in radio frequency transponder allowing for position
`monitoring by a central coordinating facility, a person of ordinary skill in the
`art would have understood that an accelerometer, as used in Levi’s portable
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`navigation device, was usable and desirable in a communication device with
`a GPS receiver, such as in Sakamoto’s terminal, and it was a low-cost,
`simple-to-implement improvement. Id. (citing Ex. 1006, 1:67–2:4; Ex. 1003
`¶ 98).
`
`Petitioner argues that there would have been a reasonable expectation
`of success in adding the accelerometer of Levi in the system of Sakamoto.
`Pet. 16. Petitioner asserts that accelerometers were readily available,
`inexpensive, and ready for use and integration with larger electronic devices.
`Id. Petitioner further asserts that, in view of the ubiquitous use of
`accelerometers, a person of ordinary skill in the art would have had a
`reasonable expectation of success, without undue experimentation, in the
`modification of Sakamoto’s terminal to add Levi’s accelerometer. Id. at 16–
`17 (citing Ex. 1003 ¶ 100).
`Patent Owner argues that Petitioner’s proposed combinations of
`references is improper because Petitioner must show that the proposed
`combination does not impermissibly change the fundamental behavior of a
`primary reference. Prelim. Resp. 3. More specifically, Patent Owner asserts
`that Sakamoto discloses the use of the following different modes based on
`different GPS signal level values:
`a) the GPS receiver intermittently operates when a signal level
`exceeds a first threshold, b) the GPS receiver constantly operates
`when the signal level does not exceed the first threshold, and c)
`the GPS receiver stops operating when the signal level falls
`below a second threshold.
`Prelim. Resp. 5 (citing Ex. 1004 ¶¶ 24–25). Patent Owner argues that
`“[w]hile Levi’s ‘DR navigation is automatically used by the navigation
`module when GPS is unavailable,’ Levi does not disclose that the DR
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`navigation system is utilized because GPS is unavailable or that the DR
`navigation system is not utilized when GPS is available.” Id. at 8. Patent
`Owner contends that “[t]o the contrary, Levi explicitly discloses that the DR
`navigation system is utilized when GPS is available.” Id. Further, Patent
`Owner asserts that Petitioner’s proposed combination of Sakamoto and Levi
`would result in a DR software module that utilizes a GPS fix when available
`under Levi’s teachings, and a GPS positioning system that operates a GPS
`receiver in one of three modes under Sakamoto’s teachings. Id. at 9. Patent
`Owner argues that Petitioner’s combination would result in increased battery
`consumption and would fundamentally alter Sakamoto’s operation in an
`impermissible fashion, when instead Sakamoto operates to transition
`between the three modes of operation in order to conserve battery
`consumption. Id. at 10.
`Patent Owner’s arguments are premised on Levi’s disclosure that
`“[c]alculations [for the DR system] can be performed continuously
`whenever there is a detected velocity,” with Patent Owner arguing that DR
`will be used when GPS is available. See Prelim. Resp. 7–8 (citing Ex. 1006,
`7:64–8:11) (emphasis added). Although Levi states that DR calculations can
`be performed continuously, it does not state that DR would be used if GPS is
`available. And, as Patent Owner acknowledges, Levi discloses that “DR
`navigation is automatically used by the navigation module when GPS is
`unavailable,” and the “present invention provides advantages during GPS
`outages.” Ex. 1006, 2:10–12, 8:6–8 (emphasis added). Thus, Levi discloses
`the use of DR navigation, that includes accelerometer use, when GPS is not
`available and this is the teaching Petitioner relies upon in its assertions for
`the combination. See Pet. 30 (“Levi’s DR system supplements the GPS
`
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`system when GPS is unavailable.”); see id. at 14. Further, the use of an
`accelerometer when GPS is not available is consistent with Mr. Andrews’s
`testimony that a person of ordinary skill in the art would have been
`motivated to modify Sakamoto, which teaches that its GPS receiver stops
`position searching when the signal strength of the GPS signal is below a
`predetermined threshold level, “to include Levi’s teaching of an
`accelerometer to start recording acceleration data when a cellular phone
`terminal cannot receive GPS signals.” Ex. 1003 ¶ 93. Accordingly, we are
`not persuaded by Patent Owner’s argument that the combination of the prior
`art impermissibly changes the operation of Sakamoto. Rather, Petitioner’s
`proposed modification to use Levi’s accelerometer under no GPS signal
`conditions supplements Sakamoto’s disclosed operation in low GPS
`conditions. Therefore, despite Patent Owner’s arguments to the contrary, we
`are persuaded that Petitioner has provided sufficient rationale to combine
`Sakamoto and Levi, and, as discussed above, we also determine that Levi in
`combination with Sakamoto teaches limitation [b].
`
`
`
`
`iii. Limitation 1[c]
`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
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`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.
`
`
`In this annotated version of Sakamoto’s Figure 1, Mr. Andrews has outlined
`the transceiver circuitry in red, the battery power monitor in blue, and the
`location tracking circuitry in green. Ex. 1003 ¶ 131. Mr. Andrews also
`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 asserts that Sakamoto discloses
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`transitioning between the stop-position searching mode and either of the
`normal/high modes, and this results in selective activation and deactivation
`of the GPS receiver’s signal acquisition and processing functionalities.
`Pet. 35. Mr. Andrew testifies that the GPS signal level is detected either in
`response to a position request, or at the cycle time set in advance, and based
`on the signal level detected, “the operation mode is again set.” Ex. 1003
`¶ 138. Mr. Andrews testifies that a person of ordinary skill in the art would
`have expected that the device would “regularly reselect the appropriate
`mode of operation based on currently-sensed parameters to ensure the most
`appropriate functioning of the device.” Id.
`Petitioner refers to Sakamoto’s disclosure that with “devices with
`limited battery capacity such as portable terminals, it is necessary to flexibly
`control the operation mode of the GPS receiver.” Pet. 35 (citing Ex. 1004
`¶ 3). Petitioner asserts that Sakamoto’s selective activation of GPS receiver
`and control unit conserves battery power. Id. at 40. Mr. Andrews testifies
`that “if the device was previously in a normal mode (because the signal level
`was good) and the subsequen
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