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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
`____________
`
`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`____________
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`
`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`I.
`II. THE AMENDED CLAIMS ARE PATENTABLE UNDER § 112. ........... 1
`A. Claims 11-13 Are Fully Supported By Written Description. ..................... 1
`B. Patent Owner’s Claim Construction Is Fully Supported By Written
`Description. ............................................................................................................ 2
`III. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`OVER THE PRIOR ART ....................................................................................... 3
`A. Alberth .............................................................................................................. 4
`B. Gronemeyer ...................................................................................................... 7
`IV. CONCLUSION .............................................................................................10
`
`
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`i
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`PATENT OWNER’S EXHIBIT LIST
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`
`
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`
`
`2002
`
`Exhibit Number Description
`2001
`Declaration of Brian S. Seal in support of Patent Owner’s
`Unopposed Motion For Pro Hac Vice Admission
`Revised Declaration of Brian S. Seal in support of Patent
`Owner’s Unopposed Motion For Pro Hac Vice Admission
`Transcript of deposition of Scott Andrews
`U.S. Pub. No. 2009/0174603 (Appl. No. 11/969,905)
`Sun, U.S. Patent Number 7,612,663
`Syrjarinne et al., U.S. Pub. No. 2005/0113124
`Suprun et al., U.S. Patent Number 7,292,223
`Croyle et al., U.S. Patent Number 5,862,511
`Lau et al., U.S. Patent Number 5,592,173
`Tsai, U.S. Pub. No. 2007/0057068
`Huang et al., U.S. Patent Number 7,826,968
`File history of U.S. Patent Number 8,421,619
`U.S. Pub. No. 2009/0189807 (Appl. No. 12/419,451)
`U.S. Appl. No. 13/356,614
`U.S. Appl. No. 11/969,905
`U.S. Appl. No. 13/356,599
`U.S. Appl. No. 12/419,451
`U.S. Appl. No. 13/356,643
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`
`ii
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`U.S. Patent No. 8,421,618
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`I.
`
`INTRODUCTION
`
`Petitioner’s Opposition to Patent Owner’s Motion to Amend (Paper 26,
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`“Opp.”) asserts claim 25 and Patent Owner’s claim construction lack written
`
`description support. See Opp. at 1-3. Petitioner also asserts claims 25-48 are
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`obvious over prior art not previously before the Board. Id. at 5-23.
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`As discussed below, the proposed substitute claims and Patent Owner’s claim
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`construction have written description support and claims 25-48 are patentable over
`
`the prior art.
`
`
`
`II. THE AMENDED CLAIMS ARE PATENTABLE UNDER § 112
`
`A. Claims 11-13 Are Fully Supported By Written Description
`
`The ‘618 patent issued from Application Ser. No. 13/356,599, filed Jan. 23,
`
`2012, which is a divisional of the U.S. patent application entitled “Apparatus and
`
`Method For Determining Location And Tracking Coordinates Of A Tracking
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`Device”, having Ser. No. 11/969,905, filed Jan. 6, 2008, now U.S. Pat. No.
`
`8,102,256. The non-provisional ‘905 application (Ex. 2015) provides § 112 support
`
`for the proposed substitute claims.
`
`As noted by the Board, the ‘905 application states that “[b]attery level
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`detection circuitry (e.g., battery level monitor 116) detects a battery level of battery
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`118.” Ex. 2015 at p. 9, ll. 9-10. Further, the ‘905 application states “[i]n response
`
`to measured signal strength level, a power management circuitry (e.g., battery
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`monitor) controls power levels associated with [a] tracking device to reduce or
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`increase power consumption of transceiver and its associated circuitry.” Id. at p. 4,
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`l. 30 – p. 5, l. 2. As determined by the Board, “the ‘905 application adequately
`
`supports ‘battery power monitor,’ as recited in substitute claim 25.” Preliminary
`
`Guidance (“Guidance”) at 5.
`
`B.
`
`Patent Owner’s Claim Construction Is Fully Supported By
`Written Description
`Petitioner asserts “a component consuming reduced power is met by a
`
`component that is periodically activated relative to a normal positioning mode where
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`positioning is at a higher frequency, i.e., every one second or every ten seconds.”
`
`Opp. at 3. However, Petitioner’s assertion is explicitly contradicted by the clear
`
`disclosure of the ‘905 application.
`
`The ‘905 application states “the present invention conserves battery power by
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`placing on standby, low power mode, or disabling entirely GPS signal acquisition
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`circuitry and other associated devices, e.g., all or a portion of amplifier block 120
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`including power amplifiers.” Ex. 2015 at p. 11, ll. 25-27. The ‘905 application also
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`states “electrical circuitry associated with GPS signal acquisition, e.g., all or a
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`portion of amplifier block 120, may be, for instance, placed on standby or in a sleep
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`mode” and “circuitry, such as amplifier block 120 or location tracking circuitry 114,
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`may be placed in a sleep or standby mode to conserve a battery level of the battery
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`118.” Id. at p. 10, ll. 3-4 and 11-13. Thus, the ‘905 application draws a clear
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`distinction between “standby,” “sleep,” “low power,” and “disabling entirely” as
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`alternative modes. Since the ‘905 application draws such clear distinction between
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`“low power” and “disabling entirely” as alternative modes, it would be illogical for
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`a component consuming reduced power in a low power mode to be met by a
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`component that is alternately disabled entirely and fully activated, neither of which
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`consumes reduced power.
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`The ‘905 application further discloses “during supplemental location
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`coordinates tracking … the transceiver circuitry (e.g., transceiver 102, location
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`tracking circuitry 114, and signal processing circuitry 104) consumes reduced
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`battery for GPS circuitry while the electronic track device 100 communicates … to
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`monitoring station 110.” Ex. 2015, p. 11, l. 27 – p. 12, l. 1. Based on the clear
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`disclosure of the ‘905 application, Patent Owner’s proposed claim construction is
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`fully supported by written description.
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`III. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`OVER THE PRIOR ART
`
`
`Petitioner asserts that substitute claims 25-48 are unpatentable as obvious in
`
`view of ten new grounds. See Opp. at 5-23. These ten new grounds variously cite
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`two new prior art: Alberth and Gronemeyer. However, Alberth and Gronemeyer do
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`not disclose the amended claim limitations for which they are relied upon in
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`Petitioner’s Opposition.
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`As a preliminary matter, Petitioner implicitly acknowledges that the various
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`combinations based on Sakamoto raised in the Petition fail to disclose the amended
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`claim limitations of proposed substitute claims 25-48.
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`A. Alberth
`Regarding Ground 6, Petitioner asserts:
`
`Applying LBT’s claim construction, a POSITA would have understood
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`that if “at least a portion of the [GPS] receiver” (Alberth, 4:50-52) is
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`deactivated during the twenty-minute period comprising the second
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`activation rate, then this means that there are at least some
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`circumstances where the GPS receiver’s power is not shut off or
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`eliminated. (Ex. 1080, ¶ 22).
`
`Opp. at 14. However, Petitioner misquotes Alberth out of context.
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`Alberth explicitly discloses “[t]he combined GPS receiver and cellular
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`receiver may then be generally referred to as a mobile station receiver.” Alberth at
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`col. 3, ll. 51-52. In turn, Alberth consistently refers explicitly to either the GPS
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`receiver or the cellular receiver. See generally Alberth. With this context, Alberth
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`explicitly discloses “[d]uring each twenty minute period, at least a portion of the
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`receiver, here GPS receiver 42, is deactivated to conserve power.” Id. at col. 4, ll.
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`50-52. That is, Alberth discloses that the portion of the combined mobile station
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`receiver being deactivated is the GPS receiver. This is in contrast to Petitioner’s
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`assertion that only a portion of the GPS receiver is deactivated. See Opp. at 14.
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`Although Alberth arguably discloses a low power mode, such low power mode is
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`achieved by deactivating or otherwise turning off the GPS receiver completely and
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`then reactivating the GPS receiver in an alternating cycle. See Alberth, col. 4, ll. 42-
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`49. Since Alberth discloses only that the GPS receiver, as a whole unit, is powered
`
`on and powered off, Alberth can not disclose “when at least a portion of the GPS
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`receiver is deactivated, this means at least a portion of the GPS receiver is using
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`power” as asserted by Petitioner. Opp. at 14.
`
`Based on the clear disclosure of Alberth in context, the proposed combination
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`of Sakamoto, Levi, and Alberth in Ground 6 does not disclose “wherein the at least
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`one portion of the transceiver circuitry and the location tracking circuitry is
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`deactivated by placing the at least one portion of the transceiver circuitry and the
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`location tracking circuitry in a low power mode in which the at least one portion of
`
`the transceiver circuitry and the location tracking circuitry consumes at least reduced
`
`power” as recited in proposed substitute independent claims 25 and 39.
`
`Petitioner similarly relies on the out of context misquote of Alberth as part of
`
`Grouds 8-11. See Opp. at 21. As such, the various proposed combinations including
`
`Sakamoto, Levi, Vaganov, Cervinka, Krasner, and Alberth do not disclose “wherein
`
`the at least one portion of the transceiver circuitry and the location tracking circuitry
`
`is deactivated by placing the at least one portion of the transceiver circuitry and the
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`5
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`location tracking circuitry in a low power mode in which the at least one portion of
`
`the transceiver circuitry and the location tracking circuitry consumes at least reduced
`
`power” as recited in the proposed substitute claims.
`
`For at least the reasons above, substitute claims 25-48 are patentable in view
`
`of the various proposed combinations raised in Grounds 6 and 8-11 of Petitioner’s
`
`Opposition.
`
`Patent Owner notes that Petitioner explicitly states “[i]n the proposed
`
`modification, Sakamoto’s GPS system is modified to have two activation cycles, as
`
`taught by Alberth.” Opp. at 10. It is significant to note that, as acknowledged by
`
`Petitioner throughout this proceeding, Sakamoto discloses three operating modes: a
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`stop-positioning mode; a normal sensitivity positioning mode; and a high sensitivity
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`mode. See Ex. 1004 at ¶¶ [0025]-[0029], [0031]-[0032], and [0036]-[0038]. This is
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`fundamental to the operation of Sakamoto because Sakamoto explicitly discloses that
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`normal sensitivity positioning is performed when a signal level is above a
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`predetermined threshold, high sensitivity positioning is performed when the signal
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`level is below a predetermined threshold, and stop-positioning is performed when
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`the signal level is below another predetermined threshold. See id. at ¶ [0038]. Thus,
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`Petitioner’s proposed combination would effectively eliminate Sakamoto’s high
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`sensitivity positioning mode, altering the fundamental operation of Sakamoto in an
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`impermissible fashion. Petitioner does not provide any explanation why a POSITA
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`would be motivated to impermissibly alter the fundamental operation of Sakamoto.
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`For at least these reasons, the various proposed combinations including Alberth are
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`improper.
`
`B. Gronemeyer
`Substitute independent claims 25 and 39 recite, in relevant part, “wherein the
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`at least one portion of the transceiver circuitry and the location tracking circuitry is
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`deactivated by placing the at least one portion of the transceiver circuitry and the
`
`location tracking circuitry in a low power mode in which the at least one portion of
`
`the transceiver circuitry and the location tracking circuitry consumes at least reduced
`
`power.” This limitation clearly requires that the at least one portion that is
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`deactivated is also the at least one portion that consumes at least reduced power.
`
`This limitation also clearly requires that the at least one portion that consumes
`
`reduced power is a portion of the transceiver circuitry and the location tracking
`
`circuitry.
`
`Petitioner asserts, in summary, “Gronemeyer thus teaches at least a portion of
`
`GPS receiver 100, namely oscillator 302 and low power clock 306, continuously
`
`consumes power during a low power mode with reduced power.” Opp. at 18-19.
`
`However, Petitioner does not, and can not, assert that Gronemeyer’s oscillator 302
`
`and low power clock 306 are the at least one portion of GPS receiver 100 that is
`
`“deactivated by placing the at least one portion of the transceiver circuitry and the
`
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`location tracking circuitry in a low power mode in which the at least one portion of
`
`the transceiver circuitry and the location tracking circuitry consumes at least reduced
`
`power” as recited in claims 25 and 39.
`
`In contrast to Petitioner’s assertions, Gronemeyer explicitly discloses that
`
`GPS circuitry, as one portion of Gronemeyer’s GPS receiver, is powered off and a
`
`distinct time circuit, as a separate portion of Gronemeyer’s GPS receiver, is utilized
`
`to maintain GPS time. See Ex. 1077, FIGS. 3-4, col. 6, ll. 36-48. Specifically,
`
`Gronemeyer discloses “[t]he RF chip 103 includes a GPS oscillator 204, which is a
`
`high accuracy oscillator used to keep GPS time” and “[a] K32 (typically a nominal
`
`32,768 Hz) oscillator residing in a low power time keeping circuit accurately
`
`preserves GPS time when the selected components are shut off.” Id. Although the
`
`GPS oscillator and K32 oscillator are both located in a GPS receiving unit, the K32
`
`oscillator is not part of the GPS circuitry. The K32 oscillator is also not part of
`
`transceiver circuitry. Gronemeyer explicitly discloses “the local GPS oscillator 204,
`
`radio 202, local GPS clocks generator 216 and/or GPS signal processors 208 may
`
`have been powered down by the navigation processor 210 to conserve power.” Id.
`
`at col. 14, ll. 13-16. Gronemeyer further discloses “[a] K32 (typically a nominal
`
`32,768 Hz) oscillator residing in a low power time keeping circuit accurately
`
`preserves GPS time when the selected components are shut off.” Id. at col. 5, ll. 13-
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`16 and col. 6. ll. 45-48. Since Gronemeyer clearly discloses that the deactivated
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`portion (i.e., GPS circuitry) is “shut off”, Gronemeyer can not disclose that such
`
`deactivated portion “consumes at least reduced power” as recited in substitute claims
`
`25 and 39.
`
`To be clear, Gronemeyer does not disclose that the GPS receiver, as a whole,
`
`is deactivated. Rather, Gronemeyer discloses that GPS circuitry, of which the K32
`
`oscillator is not a portion, is deactivated. See Ex. 1077, FIGS. 3-4, col. 5, ll. 13-16,
`
`col. 6, ll. 36-48, and col. 14, ll. 13-16. As such, Gronemeyer does not disclose that
`
`at least one portion that is deactivated consumes at least reduced power.
`
`Gronemeyer also does not disclose that at least one portion that consumes at least
`
`reduced power is a portion of the transceiver circuitry and the primary location
`
`tracking circuitry.
`
`Petitioner relies solely on Gronemeyer as disclosing this claim limitation. As
`
`such, the various proposed combinations including Gronemeyer under Grounds 7
`
`and 12-15 do not disclose “wherein the at least one portion of the transceiver
`
`circuitry and the location tracking circuitry is deactivated by placing the at least one
`
`portion of the transceiver circuitry and the location tracking circuitry in a low power
`
`mode in which the at least one portion of the transceiver circuitry and the location
`
`tracking circuitry consumes at least reduced power” as recited in proposed substitute
`
`independent claims 25 and 39.
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`For at least the reasons above, substitute claims 25-48 are patentable in view
`
`of the various proposed combinations raised in Grounds 7 and 12-15 of Petitioner’s
`
`Opposition.
`
`IV. CONCLUSION
`
`For at least the reasons presented above, all of the proposed substitute claims
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`are patentable in view of the various proposed combinations raised in Grounds 6-15
`
`of Petitioner’s Opposition.
`
`
`
`Date: October 12, 2021
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`
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`Respectfully submitted,
`
`BUTZEL LONG, PC
`
`/Shaun D. Gregory/
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
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`U.S. Patent No. 8,421,618
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
`
`OWNER’S REPLY TO PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO AMEND contains 10 pages, excluding the parts of the petition
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`exempted by 37 C.F.R. § 42.24(a), as measured by the word-processing system used
`
`to prepare this paper.
`
`BUTZEL LONG, PC
`
`/Shaun D. Gregory/
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: October 12, 2021
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that PURSUANT TO 37 C.F.R. §42.8(a)(2)
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`the foregoing PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO AMEND is being served electronically via e-
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`mail on October 12, 2021, in its entirety on the following counsel of record for
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`Petitioners:
`
`Jennifer C. Bailey (Lead Counsel)
`USPTO Reg. No. 52,583
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`
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`
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`Date: October 12, 2021
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`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`Adam P. Seitz (Back-Up Counsel)
`USPTO Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`BUTZEL LONG, PC
`
`/Shaun D. Gregory/
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`
`
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