`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`LBT IP I LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,421,618
`
`

`

`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...................................................................................... 1
`SUMMARY OF THE ’618 PATENT ........................................................ 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’618 PATENT .......... 1
`B.
`SUMMARY OF UNPATENTABILITY OF THE CHALLENGED CLAIMS ........... 3
`C.
`PRIORITY DATE OF THE CHALLENGED CLAIMS ..................................... 5
`D.
`LEVEL OF SKILL OF A POSITA ............................................................. 5
`E.
`OPINION OF A POSITA ........................................................................ 5
`III. THE BOARD’S DISCRETION UNDER 35 U.S.C. § 314(A) ................... 6
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 7
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ...................... 7
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B)
`AND RELIEF REQUESTED ...................................................................... 7
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ..................... 8
`C.
`SHOWING OF ANALOGOUS PRIOR ART ........................................... 9
`SAKAMOTO IS ANALOGOUS PRIOR ART ................................................. 9
`A.
`LEVI IS ANALOGOUS PRIOR ART ......................................................... 10
`B.
`CERVINKA IS ANALOGOUS PRIOR ART................................................. 10
`C.
`VAGANOV IS ANALOGOUS PRIOR ART ................................................. 11
`D.
`KRASNER IS ANALOGOUS PRIOR ART .................................................. 11
`E.
`VI. GROUND 1: CLAIMS 1, 3, 9-11, 14-16, 19-21, AND 24 ARE
`OBVIOUS OVER SAKAMOTO IN VIEW OF LEVI.............................. 12
`A. OVERVIEW OF PROPOSED GROUND FOR CLAIM 1 ................................ 12
`1.
`Overview of Sakamoto Combined with Levi ............................ 12
`B. OBVIOUSNESS OF SAKAMOTO COMBINED WITH LEVI .......................... 13
`1. Motivation to Combine Sakamoto and Levi ............................. 13
`2.
`Obviousness of Modifying Electronic Hardware and
`Software to Be Circuitry ......................................................... 17
`Sakamoto’s Multiple Embodiments and Motivation to
`Combine the Embodiments ...................................................... 18
`Physical Components Shared by Claim Elements ................... 21
`4.
`CLAIM 1 ............................................................................................ 22
`1.
`Claim 1[Preamble] ................................................................. 22
`2.
`Claim 1(a) ............................................................................... 26
`3.
`Claim 1(b) ............................................................................... 29
`
`3.
`
`C.
`
`V.
`
`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`ii
`
`

`

`D.
`E.
`F.
`G.
`H.
`I.
`
`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`Claim 1(c) ............................................................................... 31
`4.
`Claim 1(d) ............................................................................... 41
`5.
`CLAIM 3 ............................................................................................ 46
`CLAIM 9 ............................................................................................ 48
`CLAIM 10 .......................................................................................... 49
`CLAIM 11 .......................................................................................... 50
`CLAIM 14 .......................................................................................... 50
`CLAIM 15 .......................................................................................... 52
`1.
`Claim 15[Pre]......................................................................... 52
`2.
`Claim 15(a) ............................................................................. 52
`3.
`Claim 15(b) ............................................................................. 52
`4.
`Claim 15(c) ............................................................................. 52
`5.
`Claim 15(d) ............................................................................. 52
`CLAIM 16 .......................................................................................... 52
`J.
`CLAIM 19 .......................................................................................... 53
`K.
`CLAIM 20 .......................................................................................... 53
`L.
`M. CLAIM 21 .......................................................................................... 53
`N.
`CLAIM 24 .......................................................................................... 53
`VII. GROUND 2: CLAIMS 4-6 ARE OBVIOUS OVER SAKAMOTO
`IN VIEW OF LEVI IN FURTHER VIEW OF VAGANOV .................... 53
`A.
`CLAIM 4 ............................................................................................ 53
`B.
`CLAIM 5 ............................................................................................ 55
`C.
`CLAIM 6 ............................................................................................ 57
`VIII. GROUND 3: CLAIMS 7, 12-13, 17, AND 22-23 ARE OBVIOUS
`OVER SAKAMOTO IN VIEW OF LEVI IN FURTHER VIEW
`OF CERVINKA ......................................................................................... 57
`A.
`CLAIMS 7 AND 17 ............................................................................... 57
`1.
`Claim 7 ................................................................................... 57
`2.
`Claim 17 ................................................................................. 60
`CLAIMS 12 AND 22 ............................................................................. 60
`1.
`Claim 12 ................................................................................. 60
`2.
`Claim 22 ................................................................................. 62
`CLAIMS 13 AND 23 ............................................................................. 63
`1.
`Claim 13 ................................................................................. 63
`2.
`Claim 23 ................................................................................. 64
`IX. GROUND 4: CLAIM 2 IS OBVIOUS OVER SAKAMOTO IN
`VIEW OF LEVI IN FURTHER VIEW OF KRASNER .......................... 65
`
`B.
`
`C.
`
`iii
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`X. GROUND 5: CLAIMS 8 AND 18 ARE OBVIOUS OVER
`SAKAMOTO IN VIEW OF LEVI IN FURTHER VIEW OF
`CERVINKA AND KRASNER ................................................................... 66
`A.
`CLAIM 8 ............................................................................................ 66
`B.
`CLAIM 18 .......................................................................................... 68
`XI. CONCLUSION ......................................................................................... 69
`XII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................... 70
`A.
`REAL PARTY-IN-INTEREST ................................................................. 70
`B.
`RELATED MATTERS ........................................................................... 70
`C.
`LEAD AND BACK-UP COUNSEL .......................................................... 70
`
`
`
`
`
`
`
`iv
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`

`

`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Eli Lilly and Co. v. Los Angeles Biomedical Research Inst., 849 F.3d 1073,
`(Fed. Cir. 2017)
`
`Valeo North America, Inc. v. Magna Elec., Inc., IPR2015-00251, Paper
`(PTAB May 26, 2016)
`
`
`Statutes:
`35 U.S.C. § 102(b)
`35 U.S.C. § 103(a)
`35 U.S.C. § 314(a)
`
`
`Regulations:
`37 C.F.R. § 42.6(e)
`37 C.F.R. § 42.8
`37 C.F.R. § 42.8(a)(1)
`37 C.F.R. § 42.8(b)(1)
`37 C.F.R. § 42.8(b)(2)
`37 C.F.R. § 42.8(b)(3)
`37 C.F.R. § 42.8(b)(4)
`37 C.F.R. § 42.24
`37 C.F.R. § 42.104
`37 C.F.R. § 42.104(a)
`37 C.F.R. § 42.104(b)
`37 C.F.R. § 42.104(b)(1)
`37 C.F.R. § 42.104(b)(2)
`37 C.F.R. § 42.104(b)(3)
`37 C.F.R. § 42.104(b)(4)
`37 C.F.R. § 42.104(b)(5)
`37 C.F.R. § 42.105
`
`
`v
`
`9, 10, 11
`8
`6, 7
`
`6
`
`6
`
`79
`78
`70
`70
`70
`70
`70
`78
`7
`7
`7
`7
`8
`8
`8
`8
`79
`
`

`

`I.
`
`INTRODUCTION
`
`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`Petitioner Apple Inc. requests Inter Partes Review of Claims 1-24
`
`(collectively, the “Challenged Claims”) of USPN 8,421,618 assigned to LBT IP I
`
`LLC. ’618 Patent (Ex. 1001). The purportedly distinguishing feature of the
`
`Challenged Claims—an electronic tracking device employing an accelerometer to
`
`selectively activate/deactivate circuitry in response to a GPS signal level—was well-
`
`known before the priority date of the ’618 Patent, and the Challenged Claims are
`
`obvious over the prior art as detailed herein. Accordingly, IPR of the Challenged
`
`Claims should be instituted.
`
`II.
`
`SUMMARY OF THE ’618 PATENT
`A. Description of the Alleged Invention of the ’618 Patent
`The ’618 Patent describes a device and method to monitor location
`
`coordinates of an electronic
`
`tracking device having
`
`transceiver circuitry,
`
`accelerometer circuitry, processor circuitry, and a battery power monitor configured
`
`to selectively activate and deactivate at least one portion of the transceiver circuitry
`
`and location tracking circuitry in response to a signal level of the at least one portion
`
`of the receive communication signal. ’618 Patent, Abstract.
`
`The ’618 Patent describes location tracking circuitry, such as GPS logic
`
`circuitry, and an accelerometer to measure location coordinates without requiring
`
`GPS signaling. ’618 Patent, 6:12-23, 5:3-14. The ’618 Patent describes use of the
`
`accelerometer to measure location coordinates without GPS when the device is
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`located in a partially enclosed structure. ’618 Patent, 5:4-10. When the device’s
`
`access to GPS satellites is partially or fully blocked (i.e., when a signal level of a
`
`receive communication signal received by GPS receiver is below a first signal level),
`
`the location tracking circuitry deactivates portions of GPS circuitry to otherwise
`
`reduce power consumption. ’618 Patent, 5:10-14, 7:2-5, 7:62–8:12, 9:32-61. By
`
`reducing power to circuitry associated with the GPS signal acquisition (i.e., the
`
`receiver) when the GPS signals are “insufficient for processing” (6:54-65, 9:43-44),
`
`the device “conserves battery power” (7:62-67). “[W]hen GPS signaling is not
`
`practicable, electronic device proximity measurements provide differential location
`
`coordinate information to calculate current location coordinate information.” ’618
`
`Patent, 8:9-12.
`
`2
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`
`
`’618 Patent, FIG. 1.
`
`The ’618 Patent was allowed on the first action. There were no rejections and
`
`no claim amendments during prosecution.
`
`Summary of Unpatentability of the Challenged Claims
`
`B.
`Sakamoto teaches a GPS system including a portable terminal and a remote
`
`server. Sakamoto (Ex. 1004), [0018]. Sakamoto recognizes GPS signals are not
`
`always available ([0038]) and GPS receivers use a relatively high amount of power
`
`([0050]) and teaches controlling power supply to a GPS receiver of battery-powered
`
`([0019]). Given this, Sakamoto teaches powering down the GPS receiver when a
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`GPS signal level is below a predetermined threshold value so as to reduce power
`
`consumption, and powering up the GPS receiver when the signal level is above a
`
`threshold value. Sakamoto, [0038], [0050].
`
`Sakamoto does not teach an accelerometer to measure displacements of the
`
`device when GPS signals are unavailable. However, in related art, Levi teaches such.
`
`Similar to Sakamoto, Levi teaches a portable navigation device including a GPS
`
`receiver and an accelerometer. Levi (Ex. 1006), Abstract. Levi also recognizes GPS
`
`signals may be unavailable. Levi, 2:5-14. Levi determines the device’s position when
`
`GPS signals are unavailable using a dead reckoning (DR) system, including an
`
`accelerometer. Id.
`
`Activating and deactivating a GPS receiver based on availability of GPS
`
`signals in battery-powered devices was extremely well-known, as evidenced by
`
`numerous background references discussed by Apple’s expert, Mr. Andrews. Dec.,
`
`33-721. Additionally, the problems of GPS signals being unavailable and GPS
`
`receivers being power-heavy were also well-known. As detailed below, a POSITA
`
`would have found it obvious and been motivated to modify Sakamoto’s GPS system
`
`to include an accelerometer to measure displacements, as taught by Levi. Such a
`
`combination would have the added advantage of continuously providing location
`
`coordinates to the user even when GPS signals were unavailable. Dec., 93-96.
`
`
`1 All citations to “Dec.” are to Ex. 1003, Declaration of Scott Andrews.
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`Priority Date of the Challenged Claims
`
`C.
`U.S. Patent Application No. 13/356,599 (“the ’618 Application”), from which
`
`the ’618 Patent issued, was filed on January 23, 2012. The ’618 Application is a
`
`division of Application No. 11/969,905, filed January 6, 2008 (now USPN
`
`8,102,256, also the subject of an inter partes review petition). ’618 Patent, (21),
`
`(22), (62).
`
`For purposes of this Petition, Apple applies January 6, 2008, as the priority
`
`date for the Challenged Claims.
`
`D. Level of Skill of a POSITA
`A POSITA at the time of the ’618 Patent—which, for purposes of this Petition
`
`is January 6, 2008—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. Additional education may substitute for lesser work
`
`experience and vice-versa. Dec., 29-31.
`
`E. Opinion of a POSITA
`Petitioner submits Exhibit 1003, Declaration of Scott Andrews, as evidence
`
`supporting its arguments. A proper unpatentability analysis entails considering Mr.
`
`Andrews’s reasonable understanding or appreciation of the discussed references. Eli
`
`Lilly and Co. v. Los Angeles Biomedical Research Inst., 849 F.3d 1073, 1074-75
`
`(Fed. Cir. 2017); Valeo North America, Inc. v. Magna Elec., Inc., IPR2015-00251,
`
`5
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`Paper 18 at 18 (PTAB May 26, 2016); MPEP 2112 (“The express, implicit, and
`
`inherent disclosures of a prior art reference may be relied upon in the rejection of
`
`claims under 35 U.S.C. 102 or 103.”). Mr. Andrews’s understanding of what would
`
`be understood from a reference as of the ’618 Patent’s priority date should be
`
`considered.
`
`III. THE BOARD’S DISCRETION UNDER 35 U.S.C. § 314(A)
`The Board should decline to exercise its discretion to deny institution under
`
`§ 314(a) because trial in the co-pending litigation will begin approximately 3-4
`
`months after the Final Written Decision, and the court will not invest resources in
`
`an invalidity analysis of the patent until at least post-institution. A Final Written
`
`Decision is due approximately January 2022, whereas trial is currently scheduled for
`
`May 9, 2022, approximately 3-4 months after the Final Written Decision.
`
`(Fintiv Factor 3). The parties’ joint claim construction brief is due March 17, 2021,
`
`and a Markman hearing is currently scheduled for April 5, 2021. Thus, the court is
`
`at least 9 months from even beginning to invest resources in an invalidity analysis.
`
`(Fintiv Factor 3). The parties have not yet served preliminary invalidity and
`
`infringement contentions, and dispositive motions are not due until October 29,
`
`2021. Therefore, the parties are at the early stages of the invalidity analysis.
`
`(Fintiv Factor 3). And because the parties have not even served preliminary
`
`contentions, the ability to evaluate the overlap between issues raised in the petition
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`and the litigation is at a nascent stage. (Fintiv Factor 4). At the least, there is likely
`
`going to be no complete overlap between the asserted and challenged claims, as this
`
`Petition challenges more and different claims than asserted in the Complaint. (Ex.
`
`1036, LBT Complaint). The Petition also presents a strong showing of
`
`unpatentability. (Fintiv Factor 6). These factors favor not exercising discretionary
`
`denial under § 314(a).
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies the ’618 Patent is available for IPR and Apple is not barred or
`
`estopped from requesting IPR challenging the claims of the ’618 Patent. Apple is
`
`not the owner of the ’618 Patent, has not filed a civil action challenging the validity
`
`of any claim of the ’618 Patent, and this Petition is not filed more than one year after
`
`Apple was served with a complaint alleging infringement of the ’618 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art and evidence presented, the Challenged Claims of the
`
`’618 Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`Based on the prior art references identified below, IPR of the Challenged Claims
`
`should be granted. 37 C.F.R. § 42.104(b)(2).
`
`7
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`
`Grounds of Unpatentability
`Ground 1: Claims 1, 3, 9-11, 14-16, 19-21, and 24 are obvious under 35 U.S.C.
`§ 103(a) over Sakamoto (Ex. 1004) in view of Levi (Ex. 1006)
`Ground 2: Claims 4-6 are obvious under 35 U.S.C. § 103(a) over Sakamoto (Ex.
`1004) in view of Levi (Ex. 1006) in further view of Vaganov (Ex. 1008)
`Ground 3: Claims 7, 12-13, 17, and 22-23 are obvious under 35 U.S.C. § 103(a)
`over Sakamoto (Ex. 1004) in view of Levi (Ex. 1006) in further view of Cervinka
`(Ex. 1009)
`Ground 4: Claim 2 is obvious under 35 U.S.C. § 103(a) over Sakamoto (Ex. 1004)
`in view of Levi (Ex. 1006) in further view of Krasner (Ex. 1010)
`Ground 5: Claims 8 and 18 are obvious under 35 U.S.C. § 103(a) over Sakamoto
`(Ex. 1004) in view of Levi (Ex. 1006) and Cervinka (Ex. 1009) in further view of
`Krasner (Ex. 1010)
`
`Sections VI-XI identify where each element of the Challenged Claims is
`
`found in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
`
`supporting evidence relied upon to support the challenges are provided above and
`
`the relevance of the evidence to the challenges raised are provided in Sections VI-
`
`XI. 37 C.F.R. § 42.104(b)(5). Exhibits 1001–1050 are also attached.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Patent Owner has submitted a Complaint in a co-pending litigation, but has
`
`not provided detailed infringement contentions. In view of Patent Owner’s apparent
`
`contentions and the prior art and evidence provided herein, no claim terms require
`
`express construction to resolve the grounds presented. Where appropriate, Petitioner
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`provides support for the meaning of claim terms in its analysis of how the prior art
`
`renders the challenged claims obvious, as detailed below.
`
`V.
`
`SHOWING OF ANALOGOUS PRIOR ART
`
`Sakamoto, Levi, Cervinka, Vaganov, and Krasner were neither cited nor
`
`considered during the prosecution of the ’618 Patent. The earliest claimed priority
`
`date for the ’618 Patent is January 6, 2008.
`
`Sakamoto Is Analogous Prior Art
`
`A.
`Sakamoto published February 5, 2004, and therefore qualifies as prior art to
`
`the ’618 Patent under at least 35 U.S.C. § 102(b) (Pre-AIA).
`
`Sakamoto teaches a GPS positioning system including a position information
`
`communication terminal having a GPS receiver. Sakamoto, Abstract, [0018-[0019]].
`
`Sakamoto recognizes GPS signals are sometimes unavailable (“positioning is not
`
`possible”) and, consequently, stops position searching using the GPS receiver when
`
`a GPS signal strength is equal to or lower than a predetermined threshold level.
`
`Sakamoto, [0038], [0050].
`
`Because Sakamoto, like the ’618 Patent, discloses a portable electronic
`
`tracking device employing a GPS receiver and manages battery power consumption
`
`by deactivating the GPS receiver when the GPS signal is unavailable, Sakamoto is
`
`in the same field of endeavor and is pertinent to a problem to be solved by the
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`claimed invention in the ’618 Patent. Dec., 73-75. Therefore, Sakamoto is analogous
`
`art to the claimed invention in the ’618 Patent.
`
`Levi Is Analogous Prior Art
`
`B.
`Levi issued December 10, 1996, and therefore qualifies as prior art to the ’618
`
`Patent under at least 35 U.S.C. § 102(b) (Pre-AIA).
`
`Levi teaches a portable navigation device including a GPS receiver and an
`
`accelerometer. Levi, 2:5-14. The device determines a current position using
`
`acceleration values and dead reckoning techniques when GPS is unavailable. Levi,
`
`7:64–8:35, 3:13-14. Because Levi, like the ’618 Patent, discloses a portable
`
`electronic tracking device including a GPS receiver and an accelerometer, and
`
`measures acceleration values when the GPS receiver is unable to receive GPS
`
`signals, Levi is in the same field of endeavor and is pertinent to a problem to be
`
`solved by the claimed invention in the ’618 Patent. Dec., 76-79. Therefore, Levi is
`
`analogous art to the claimed invention in the ’618 Patent.
`
`C. Cervinka Is Analogous Prior Art
`Cervinka issued May 30, 2006, and therefore qualifies as prior art to the ’618
`
`Patent under at least 35 U.S.C. § 102(b) (Pre-AIA).
`
`Cervinka teaches a tracking device having communication and dead
`
`reckoning capabilities and determining position via DR when GPS position data is
`
`not received. Cervinka, 7:1-9. Because Cervinka, like the ’618 Patent is directed to
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`tracking and monitoring of objects, Cervinka is in the same field of endeavor and is
`
`pertinent to the problem to be solved by the claimed invention of the ’618 Patent.
`
`Dec., 80-82. Therefore, Cervinka is analogous art to the claimed invention in the
`
`’618 Patent.
`
`D. Vaganov Is Analogous Prior Art
`Vaganov published December 7, 2006, and therefore qualifies as prior art to
`
`the ’618 Patent under at least 35 U.S.C. § 102(b) (Pre-AIA).
`
`Vaganov teaches a 3D accelerometer measuring three components of
`
`acceleration for use in hand-held devices and to reduce power consumption.
`
`Vaganov, Title, Abstract, [0007], [0065]-[0066], ]0040], [0077]. Because Vaganov,
`
`like the ’618 Patent, discloses an accelerometer for use in portable electronic
`
`devices, Vaganov is in the same field of endeavor and is pertinent to a problem to be
`
`solved by the claimed invention in the ’618 Patent. Dec., 83-85.Therefore, Vaganov
`
`is analogous art to the claimed invention in the ’618 Patent.
`
`Krasner Is Analogous Prior Art
`
`E.
`Krasner issued September 28, 2004, and therefore qualifies as prior art to the
`
`’618 Patent under at least 35 U.S.C. § 102(b) (Pre-AIA).
`
`Krasner teaches a mobile device including a GPS receiver and a
`
`communication
`
`transceiver. Krasner, FIG. 1. Krasner determines position
`
`information using GPS and teaches reducing cross-interference between a
`
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`communication transceiver and GPS receiver. Krasner, 3:5-16, 6:1-9, 6:37-50, 7:10-
`
`39. Because Krasner, like the ’618 Patent, discloses a portable electronic tracking
`
`device including a GPS receiver, Krasner is in the same field of endeavor and is
`
`pertinent to a problem to be solved by the claimed invention in the ’618 Patent. Dec.,
`
`86-88. Therefore, Krasner is analogous art to the claimed invention in the ’618
`
`Patent.
`
`VI. GROUND 1: CLAIMS 1, 3, 9-11, 14-16, 19-21, AND 24 ARE OBVIOUS
`OVER SAKAMOTO IN VIEW OF LEVI
`A. Overview of Proposed Ground for Claim 1
`1.
`Overview of Sakamoto Combined with Levi
`The proposed combination for Claim 1 relies on Sakamoto and Levi.
`
`Sakamoto teaches a GPS positioning system comprising position information
`
`communication
`
`terminal 1 and position management/positioning server 2
`
`communicating with each other over a mobile communication network. Sakamoto,
`
`[0018]. The terminal 1 includes electronic components that collectively operate to
`
`monitor and track the terminal by the server or position searcher B. Id. Terminal 1
`
`includes GPS receiver and satellite signal level detection unit for detecting a signal
`
`level of a GPS satellite signal. Sakamoto, [0019]. Sakamoto recognizes (1) GPS
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`signals are sometimes unavailable or otherwise weak; and (2) the need to reduce
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`power consumption by stopping GPS position searching when GPS signals are
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`unavailable.
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`Sakamoto does not teach an accelerometer. In related art, Levi teaches an
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`“electronic, portable navigational system[]” including an “integrated GPS-DR
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`navigation system” using an accelerometer. Levi, 1:8-11, 2:5-14, 3:12-13. Like
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`Sakamoto, Levi recognizes GPS signals may sometimes be unavailable. Levi, 2:5-
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`14. In such cases, Levi teaches supplementing GPS-based position determination
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`with accelerometer data by determining the current position based on accelerometer
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`data. Levi, 1:49-55, 7:64–8:35.
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`Ground 1 proposes modifying Sakamoto’s portable
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`information
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`communication terminal to include an accelerometer, as taught by Levi. The
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`modified Sakamoto portable information communication terminal then includes an
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`electronic tracking device having a GPS receiver (as already taught by Sakamoto)
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`and an accelerometer to supplement GPS locations (as taught by Levi). As detailed
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`below, it would have been obvious to a POSITA to modify Sakamoto’s terminal to
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`include an accelerometer as taught by Levi to enable position determination when
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`GPS signals are unavailable.
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`B. Obviousness of Sakamoto Combined with Levi
`1. Motivation to Combine Sakamoto and Levi
`As discussed above, Sakamoto and Levi are both analogous art to the ’618
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`Patent, and a POSITA would have been familiar with both references. A POSITA
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`would have found it obvious and been motivated to combine Levi’s supplemental
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`location tracking in the form of a dead reckoning (DR) system including an
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`accelerometer with Sakamoto’s system employing GPS for determining a position.
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`Dec., 92. Using an accelerometer to supplement location tracking of a device, in
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`particular when GPS signals are unavailable, was extremely well-known in the art
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`prior to the invention of the ’618 Patent, as taught by numerous references including
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`Levi. Dec., 92-100.
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`Prior to the ’618 Patent, accelerometers were accurate, inexpensive, readily-
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`available, and easily incorporated into larger electronic components (e.g., navigation
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`devices). Dec., 100. It was also well-known an accelerometer was readily-available
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`for supplemental position determination when GPS location determination was
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`unavailable (e.g., due to weak signal). Dec., 94, 99. Well before the priority date of
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`the ’618 Patent, accelerometers were used in systems to determine the position of a
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`tracking device, such as through DR techniques. Levi, 1:13-55 (discussing DR
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`systems, including inertial navigation systems (INS), and stating “[a] considerable
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`amount of work has been done related to the integration of a Global Positioning
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`System (GPS) and INS.”).
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`Using an accelerometer to supplement location data from a GPS receiver
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`would have been use of a known technique (e.g., supplementing GPS with an
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`accelerometer as taught by Levi) to improve a similar device (Sakamoto’s GPS
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`receiver employed in terminal 1) in the same way. Specifically, the known
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`supplemental
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`tracking
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`the accelerometer
`to measure
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`technique employing
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`acceleration data from Levi is an improvement upon the base device of Sakamoto
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`(the position
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`information communication
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`terminal 1)
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`to enable position
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`determination even without a sufficient GPS signal. Dec., 96-98.
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`A POSITA would have recognized the supplemental tracking technique was
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`a straightforward modification of the position information communication terminal
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`of Sakamoto for computing positioning when GPS signal is insufficient. Dec., 97-
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`100. Both the Sakamoto terminal and the Levi navigation device are portable, and
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`Levi teaches a built-in radio frequency transponder allowing for position monitoring
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`by a central coordinating facility, indicating tracking by another device. Levi, 1:67–
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`2:4; Dec. 98. Therefore, a POSITA would have understood an accelerometer, as used
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`in Levi’s portable navigation device, was usable and desirable in a communication
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`device with a GPS receiver, such as Sakamoto’s terminal, and would have been a
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`low-cost, simple-to-implement improvement. For example, it would have been
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`obvious and simple to add an accelerometer to Sakamoto’s terminal and perform
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`position determination using the acceleration measurements, as the terminal already
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`performs various signal processing functionality (e.g., evaluation of the signal
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`strength). Dec., 99. Additionally, an accelerometer as taught by Levi combined in
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`Sakamoto’s system would have performed the same function of supplemental
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`Inter Partes Review No. IPR2020-01192
`U.S. Patent No. 8,421,618
`location tracking to measure displacements with an accelerometer when GPS signals
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`cannot be received. Levi, 2:5-14.
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`Further, a POSITA would have found it obvious and been motivated to
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`modify, supplement, or replace Sakamoto’s positioning control unit 13, such that it
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`would have been configured to receive signals from the Levi accelerometer and
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`perform position processing, at least because (a) accelerometers and processors
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`utilizing accelerometers were well-known,
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`(b) exemplary processing of
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`accelerometer signals is taught in Levi, and (c) a POSITA would not have combined
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`an accelerometer into the Sakamoto system without also including the hardware
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`and/or software necessary for utilizing the accelerometer. Dec., 92-100.
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`There would have been a reasonable expectation of success for adding Levi’s
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`accelerometer
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`to Sakamoto’s system. Dec., 99-100. As discussed above,
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`accelerometers were readily-available, inexpensive, and ready for use and
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`integration with larger electronic devices, including in mobile devices such as
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`mobile phones. For example, the ’618 Patent discusses using a specific
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`accelerometer provided by Analog Devices, Inc. ’618 Patent, 6:45-50. The
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`accelerometer—the ADXL320—is described in the data sheet as “low cost,” “low
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`power,” and for use in “cost-sensitive motion- and tilt-sensitive applications,”
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`including smart hand-held devices, mobile phones, and sports and health-related
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`applications. (ADXL320, Ex. 1031, p. 1). Given the ubiquitous use of accelerometers
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`Inter Partes Review No. IPR2020-01192
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`in hand-held portable devices as alternative position determination means, a
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`POSITA would have had a reasonable expectation of success, without undue
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`experimentation, in modifying Sakamoto’s terminal to include Levi’s accelerometer.
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`Dec., 100.
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`2.
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`Obviousness of Modifying Electronic Hardware and Software
`to Be Circuitry
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`To the extent Patent Owner argues the various electronic components
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`disclosed in Sakamoto and Levi must be embodied as circuitry, it would have been
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`obvious to a POSITA to substitute any of the hardware or software components in
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`the references performing similar function to the ’618 Patent’s claims as components
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`with circuitr