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 SUR-REPLY IN RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,421,618
`
`
`
`
`
`
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`
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`IWASHINGTON\000150560\0001\590399.v1-10/12/21
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`
`____________
`
`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 SUR-REPLY IN RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,421,618
`
`
`
`
`
`
`
`
`
`
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`
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`IWASHINGTON\000150560\0001\590399.v1-10/12/21
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`
`TABLE OF CONTENTS
`
`PATENT OWNER’S EXHIBIT LIST ................................................................. ii
`TABLE OF AUTHORITIES ............................................................................... III
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`IT IS UNDISPUTED THAT SAKAMOTO DOES NOT DISCLOSE
`MOVING FROM STOP POSITION MODE TO ANOTHER MODE IN
`RESPONSE TO GPS SIGNAL LEVEL STRENGTH ............................... 2
`III. THE TESTIMONY OF MR. ANDREWS IS CONCLUSORY AND
`UNSUPPORTED ............................................................................................. 5
`IV. CONCLUSION .............................................................................................10
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`
`
`
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`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`
`PATENT OWNER’S EXHIBIT LIST
`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
`
`
`
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`TABLE OF AUTHORITIES
`
`Cases
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
` 885 F.3d 1367 (Fed. Cir. 2018) .............................................................................. 7
`
`
`InTouch Techs., Inc. v. VGO Communications, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 7
`
`
`TQ Delta, LLC v. Cisco Systems, Inc.,
` 942 F.3d 1352 (Fed. Cir. 2019)) ............................................................................. 7
`
`
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`All claims of U.S. Patent No. 8,421,618 (the “’618 Patent”) require certain
`
`circuitry known as “location tracking circuitry” that deactivates when the strength
`
`of a GPS signal falls below a certain level, then reactivates in response to a GPS
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`signal whose strength rises above a certain level. EX. 1001 at Claims, 1, 15. The
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`Petitioner relies exclusively on the Sakamoto reference to meet that limitation. But
`
`as conceded by the Petitioner’s expert, Scott Andrews, Sakamoto does not disclose
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`location tracking circuitry that deactivates and reactivates in response to the strength
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`of a GPS signal. Nor does Mr. Andrews succeed in supplying that limitation, as his
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`testimony is conclusory. Because the Petitioner has failed to establish the existence
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`of that limitation in the prior art, the Petition must fail as to all claims.
`
`I.
`
`INTRODUCTION
`
`Although the Petitioner relies solely on the Sakamoto reference to disclose the
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`primary location tracking circuitry claimed by the ’618 Patent, Sakamoto does not
`
`disclose circuitry that both deactivates and reactivates based on the strength of a GPS
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`signal. Specifically, the Petitioner maps the ’618 Patent’s primary location tracking
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`circuitry to Sakamoto’s GPS receiver 10 and related components. Paper 1, at 24.
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`According to the Petitioner, Sakamoto deactivates the primary location tracking
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`circuitry by cutting off power to GPS receiver 10, which stops all position
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`searching—a state Mr. Andrews identifies as Sakamoto’s “stop-position mode”—
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`then “reactivates” the circuitry by transitioning from stop-position mode into one of
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`two other modes: (1) “normal positioning mode,” in which the GPS receiver cycles
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`on and off intermittently when the signal is strong and easy to obtain and (2) “high
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`positioning mode,” in which the GPS receiver remains on constantly when the signal
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`is weak and difficult to obtain. Paper 25, Petitioner’s Reply, at 5-6. As shown below,
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`however, none of the evidence from Sakamoto provided by the Petitioner teaches a
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`transition from stop-position mode to another mode in response to a signal level.
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`Although the Petitioner attempts to supply that missing disclosure through the
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`testimony given by Mr. Andrews at his deposition, that testimony is conclusory and
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`unsupported. Mr. Andrews notes only that the Sakamoto reference could be modified
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`to transition from stop-position mode to another mode in a way taught by the ’618
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`Patent, not that a POSITA would do so. Nor does Mr. Andrews explain why a
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`POSITA who wanted to modify Sakamoto to transition from stop-position mode to
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`another mode would do it in the way taught by the ’618 Patent, as opposed to other
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`ways, including ways taught by Sakamoto itself.
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`II.
`
`IT IS UNDISPUTED THAT SAKAMOTO DOES NOT DISCLOSE
`MOVING FROM STOP POSITION MODE TO ANOTHER
`MODE IN RESPONSE TO GPS SIGNAL LEVEL STRENGTH
`
`The Petitioner asserts that the “reactivation” limitation is met when Sakamoto
`
`
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`transitions from stop-position mode to either normal positioning mode or high
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`positioning mode, but the evidence on which it relies does not support that assertion.
`
`For example, the Petitioner states that “the GPS receiver’s transition from the stop-
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`position searching mode (where no position searching is performed) to either of the
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`normal or high sensitivity positioning modes (where both modes perform position
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`searching) reactivates the GPS receiver.” Paper 25, Petitioner’s Reply, at 2
`
`(emphasis in original). The only evidence offered in support of that assertion is from
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`Mr. Andrews, who in turn relies exclusively on paragraph 27 of Sakamoto. See Paper
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`25, Petitioner’s Reply, at 5-6, relying EX. 1003, ¶ 138 “Such transitioning between
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`modes is discussed by Sakamoto at ¶ [0027].”).
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`At his deposition, however, Mr. Andrews conceded that paragraph 27 of
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`Sakamoto does not disclose a transition from stop-position mode:
`
`Q:
`
`I would like you to identify for me the portion of paragraph 27
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`in Sakamoto that teaches activating the GPS receiver while in
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`stop-position mode to move into either normal mode or high
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`mode.
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`A: Well, in 27, he’s saying that when the environment is such that
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`it’s easy to receive GPS signals, the receiver is in normal mode,
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`and then when that signal level drops below a certain threshold,
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`he transitions to -- and in normal mode, he only periodically is
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`checking the -- or computing the GPS position, and then when
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`you drop below that level, you transition to the high sensitivity
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`mode. He’s not talking here about transitioning from the stop-
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`positioning mode to the start-positioning mode or to normal or
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`high.
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`EX. 2003 at 30:16-31:5 (emphasis added).
`
`The Petitioner separately relies on Sakamoto’s disclosure of making a
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`transition based on measuring a signal level at “the cycle set in advance” to meet the
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`reactivation requirement. Paper 25, Petitioner’s Reply, at 7-8. Sakamoto, however,
`
`discloses using that measurement cycle only to transition between normal sensitivity
`
`positioning mode and high sensitivity positioning mode or to move into stop-
`
`position mode:
`
`When the positioning mode control unit 22 determines that the high
`
`sensitivity positioning mode is required when the signal level value is
`
`equal to or lower than a predetermined threshold value, it sends a
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`request to communication control unit 21 for the position search request
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`message including positioning mode information designating the
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`positioning operation of the GPS receiver 10 of the position information
`
`communication terminal 1 as the high sensitivity positioning mode to
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`be
`
`transmitted
`
`to
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`the
`
`corresponding position
`
`information
`
`communication terminal 1; if it is determined that the normal sensitivity
`
`positioning mode is required when the signal level value is equal to or
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`higher than a predetermined threshold value, it sends a request to
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`communication control unit 21 for the position search request message
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`including positioning mode information designating the positioning
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`operation of the GPS receiver 10 of the position information
`
`communication terminal 1 as the normal sensitivity positioning mode
`
`to be
`
`transmitted
`
`to
`
`the corresponding position
`
`information
`
`communication terminal 1. If it is determined that the positioning
`
`cannot be performed when the signal level value is equal to or lower
`
`than a predetermined threshold value, the position search may be
`
`stopped.
`
`As shown above, Sakamoto does not disclose using the measurement cycle to move
`
`out of stop-position mode at all, much less into either of the other two modes.
`
`Accordingly, the Petitioner has not identified any disclosure from Sakamoto
`
`in which that system transitions from stop-position mode to either normal sensitivity
`
`positioning mode or high sensitivity positioning mode in response to the strength
`
`level of a GPS signal as required by the claims of the ’618 Patent.
`
`III. THE TESTIMONY OF MR. ANDREWS IS CONCLUSORY AND
`UNSUPPORTED
`
`The Petitioner’s attempts to supply the missing reactivation limitation through
`
`
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`Mr. Andrews’s deposition testimony similarly fails, because that testimony is
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`conclusory and unsupported.1 For example, the Petitioner’s Reply cites Mr.
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`Andrews’s deposition testimony for the premise that “based on the understanding of
`
`a person of skill in the art, during the stop-position searching mode, Sakamoto would
`
`turn on the GPS receiver components to measure a satellite signal level cyclically.”
`
`Paper 25, Petitioner’s Reply, at 7, citing EX. 2003 at 23:21-24:10, 24:18-25.
`
`An examination of that testimony, however, reveals that it is purely
`
`speculative:
`
`Well, Sakamoto doesn’t describe how he determines that the signal
`
`level is above that threshold. It’s possible that he periodically turns on
`
`the GPS receiver just briefly to check so that it’s – most of the time it’s
`
`off and every now and then he turns it on and looks, and if it’s not above
`
`the level, he turns it back off, or maybe even just turns those
`
`components that he needs to use to examine the signal, and it’s possible
`
`that he might leave some of the components on, but probably not given
`
`that he’s after minimum power consumption.
`
`
`1 If for no other reason, Mr. Andrews’s testimony is not itself a “patent or printed
`
`publication,” which are the only statutory bases upon which an obviousness
`
`conclusion may be based. See 35 U.S.C. § 311(b).
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`So presumably he would turn the GPS receiver off and then maybe once
`
`a minute, once every five minutes, would turn it back on briefly, check
`
`the power level, and if it was above that level, he would then transition
`
`to the normal mode or to the high mode, and if he was below, he would
`
`turn it back off and keep it off until he decided to check the next time.
`
`EX.2003 at 23:10-24:3 (emphasis added).
`
`Such conclusory and unsupported testimony cannot be the basis for a
`
`finding of invalidity. See TQ Delta, LLC v. Cisco Systems, Inc., 942 F.3d
`
`1352, 1360-61 (Fed. Cir. 2019) (noting that “‘conclusory statements and
`
`unspecific expert testimony’ did not qualify as substantial evidence that could
`
`support the Board’s conclusions regarding obviousness”), citing DSS Tech.
`
`Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1376 (Fed. Cir. 2018). Indeed, the
`
`use of qualifiers such as “[i]t’s possible,” “maybe,” “might,” and
`
`“presumably” underscore the speculative nature of Mr. Andrews’s testimony.
`
`See InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352
`
`(Fed. Cir. 2014) (rejecting an expert’s opinion that “primarily consisted of
`
`conclusory references to her belief that one of ordinary skill in the art could
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`combine these references, not that they would have been motivated to do so”)
`
`(emphasis in original).2
`
`Moreover, the basis identified by Mr. Andrews for the above testimony
`
`is itself unreliable. After the testimony quoted above, he stated:
`
`This is a -- this is based on the understanding that I think is reasonable
`
`for a person of skill in the art, that without a method like that, Sakamoto
`
`would turn the GPS receiver off when the signal level went below that
`
`threshold and it would never come back on again, which would not be
`
`a practical solution to the problem.
`
`EX. 2003 at 24:4-10 (emphasis added). Contrary to that reasoning, Sakamoto
`
`does in fact teach how to reactivate GPS receiver 10 after it has been placed
`
`in stop-position mode, but it does so manually, not in response to a signal
`
`level:
`
`
`2 Mr. Andrews’s deposition testimony is further flawed because he never identifies
`
`which standard—if any—he applied in reaching his conclusions. See InTouch
`
`Techs., Inc., 751 F.3d at 1351 (rejecting an expert’s testimony for failing to
`
`“articulate reasons why a person of ordinary skill in the art at the time of the
`
`invention would” modify the prior art) (emphasis added).
`
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`The position information communication terminal 1 waits in a state in
`
`which the power of the GPS receiver 10 is cut off; in order to obtain
`
`terminal user A’s own position, a position request is sent to the
`
`positioning control unit 13 by pressing the button provided on the man-
`
`machine interface control unit 14. The positioning control unit 13 that
`
`has received the position request turns on the power of the GPS receiver
`
`10 via the GPS control unit 12 and the GPS receiver 10 starts the
`
`position detection process.
`
`Ex. 1004 at ¶ 20. Mr. Andrews’s deposition testimony fails to account for that
`
`reactivation method, nor does he offer any opinion as to why a POSITA would
`
`choose his speculative reactivation theory over the method expressly taught by
`
`Sakamoto itself.
`
`
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`
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`IV. CONCLUSION
`
`For the reasons set forth above, the Petitioner has failed to establish, by a
`
`preponderance of the evidence, that any of the claims of the ’618 Patent are
`
`unpatentable. The challenged claims should be upheld.
`
`
`
`Respectfully submitted,
`
`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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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
`
`OWNER’S SUR-REPLY TO PETITION FOR INTER PARTES REVIEW OF U.S.
`
`PAT. NO. 8,412,618 contains 1,868 words, excluding the parts of the petition
`
`exempted by 37 C.F.R. § 42.24(b), 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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`IWASHINGTON\000150560\0001\590399.v1-10/12/21
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`Case IPR2020-01192
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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)
`
`the foregoing PATENT OWNER’S SUR-REPLY TO PETITION FOR INTER
`
`PARTES REVIEW OF U.S. PAT. NO. 8,421,618 is being served electronically via
`
`e-mail on October 12, 2021, in its entirety on the following counsel of record for
`
`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
`
`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
`
`
`
`
`
`
`
`
`Date: October 12, 2021
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`IWASHINGTON\000150560\0001\590399.v1-10/12/21
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`
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