U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`Uber Technologies, Inc.,
`Petitioner
`
`v.
`
`LBT IP II LLC,
`Patent Owner.
`
`_______________
`
`Case No. IPR2022-00880
`_______________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,598,855
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................... 2
`III.
`FEE AUTHORIZATION ............................................................................... 3
`IV. GROUNDS FOR STANDING ....................................................................... 3
`V.
`PRECISE RELIEF REQUESTED ................................................................. 3
`VI. THE CHALLENGED PATENT .................................................................... 4
`VII. PATENT PROSECUTION HISTORY .......................................................... 7
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7
`IX. PRIORITY DATE .......................................................................................... 8
`X.
`CLAIM CONSTRUCTION ........................................................................... 8
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES ............................................................................................... 9
`A. Hashimoto (Ex-1005) ........................................................................... 9
`B.
`Hockley (Ex-1006) ............................................................................. 11
`C.
`Luccketti (Ex-1007) ........................................................................... 12
`D. Mohi (Ex-1008) .................................................................................. 14
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS ................................................................................................... 15
`A. Ground 1: Claim 11 is rendered obvious by Hashimoto in view
`of Hockley. ......................................................................................... 16
`1.
`A POSITA would be motivated to combine the teachings
`of Hashimoto and Hockley, and would have a reasonable
`expectation of success in doing so. .......................................... 16
`Independent claim 11 ............................................................... 17
`2.
`Ground 2: Claims 12-14 are rendered obvious by Hashimoto
`and Hockley in further view of Luccketti .......................................... 47
`
`B.
`
`
`
`
`
`i
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`1.
`
`C.
`
`A POSITA would be motivated to combine the teachings
`of Luccketti with the teachings of Hashimoto and
`Hockley, and would have a reasonable expectation of
`success in doing so. .................................................................. 47
`Dependent claims 12-14 .......................................................... 48
`2.
`Ground 3: Claims 15-16 are rendered obvious by Hashimoto
`and Hockley in further view of Mohi. ................................................ 61
`1.
`A POSITA would be motivated to combine the teachings
`of Mohi with the teachings of Hashimoto and Hockley,
`and would have a reasonable expectation of success in
`doing so. ................................................................................... 61
`Dependent claims 15-16 .......................................................... 62
`2.
`XIII. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................ 67
`A. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted ....................................... 67
`Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision .................................... 68
`Investment in the parallel proceeding by the court and the
`parties ................................................................................................. 69
`D. Overlap between issues raised in the petition and in the parallel
`proceeding .......................................................................................... 71
`E. Whether the petitioner and the defendant in the parallel
`proceeding are the same party ............................................................ 73
`Other circumstances that impact the Board’s exercise of
`discretion, including the merits .......................................................... 74
`XIV. CONCLUSION ............................................................................................. 74
`
`
`
`
`B.
`
`C.
`
`F.
`
`
`
`
`
`ii
`
`
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS1
`
`Ex-1001 U.S. Patent No. 7,598,855
`Ex-1002 Declaration of Mr. Scott Andrews
`Ex-1003 Curriculum Vitae of Mr. Scott Andrews
`Ex-1004 Prosecution History of U.S. Patent No. 8,784,855
`Ex-1005 U.S. Patent No. 6,999,779 (“Hashimoto”)
`Ex-1006 U.S. Published Patent Application No. 2004/0008138(“Hockley”)
`Ex-1007 U.S. Published Patent Application No. 2003/0151506 (“Luccketti”)
`Ex-1008 U.S. Published Patent Application No. 2003/0195008 (“Mohi”)
`Ex-1009
`[INTENTIONALLY LEFT BLANK]
`Ex-1010
`[INTENTIONALLY LEFT BLANK]
`Ex-1011
`[INTENTIONALLY LEFT BLANK]
`Ex-1012
`[INTENTIONALLY LEFT BLANK]
`Ex-1013
`[INTENTIONALLY LEFT BLANK]
`Ex-1014
`[INTENTIONALLY LEFT BLANK]
`Ex-1015
`[INTENTIONALLY LEFT BLANK]
`Ex-1016
`[INTENTIONALLY LEFT BLANK]
`Ex-1017
`[INTENTIONALLY LEFT BLANK]
`Ex-1018
`[INTENTIONALLY LEFT BLANK]
`Ex-1019
`[INTENTIONALLY LEFT BLANK]
`
`
`1 Four-digit pin citations that begin with 0 are to the page stamps added by Uber in
`the bottom right corner of the exhibits. All other pin citations are to original page,
`column, paragraph, and/or line numbers.
`
`iii
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`[INTENTIONALLY LEFT BLANK]
`Ex-1020
`Ex-1021 Petitioner’s Stipulation Letter to Patent Owner, dated April 15, 2022
`Ex-1022 Plaintiff’s Preliminary Infringement Contentions, dated February 18,
`2022, including Claim Chart for ’855 Patent (“Infringement
`Contentions”)
`[INTENTIONALLY LEFT BLANK]
`Ex-1023
`[INTENTIONALLY LEFT BLANK]
`Ex-1024
`[INTENTIONALLY LEFT BLANK]
`Ex-1025
`[INTENTIONALLY LEFT BLANK]
`Ex-1026
`[INTENTIONALLY LEFT BLANK]
`Ex-1027
`[INTENTIONALLY LEFT BLANK]
`Ex-1028
`Ex-1029 Yilin Zhao, Vehicle Location and Navigation Systems (1997)
`Ex-1030 U.S. Patent No. 6,901,260 (“Xin”)
`Ex-1031 U.S. Patent No. 5,592,173 (“Lau”)
`Ex-1032 U.S. Patent No. 6,748,224 (“Chen”)
`Ex-1033 U.S. Patent No. 6,889,053 (“Chang”)
`Ex-1034 The History of Computing, Abacus Explained — Everything You
`Need To Know (2021)
`Ex-1035 Alan M. Turing, On Computable Numbers, With An Application to
`the Entscheidungsproblem (1936)
`Ex-1036 The History of Computing, John von Neumann – Biography, History
`and Inventions (2021)
`Intel, The Story of Intel
`(https://www.intel.com/content/www/us/en/history/museum-story-
`of-intel-4004.html (Accessed 4/13/2022)
`Ex-1038 Christopher Evans, The Micro Millennium (1979) (Excerpted)
`
`Ex-1037
`
`iv
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`Ex-1039 Datamath Calculator Museum, Intel and TI: Microprocessors and
`Microcontrollers (2001)
`Judge Albright’s Standing Order Governing Proceedings Patent
`Cases
`
`Ex-1040
`
`
`
`v
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Uber Technologies, Inc. (“Petitioner”) requests inter partes review (“IPR”)
`
`of Claims 11-16 of U.S. Patent No. 7,598,855 (“the ’855 Patent”) (Ex-1001),
`
`currently assigned to LBT IP II LLC (“Patent Owner”).
`
`The ’855 Patent relates to methods of tracking and monitoring individuals,
`
`such as children, using tracking devices, a central monitoring station, and well-
`
`known, conventional positioning systems such as GPS. For example, the patent
`
`explains that parents may be in possession of a mobile device capable of contacting
`
`a central monitoring station to locate a child using a tracking device associated
`
`with that child. The position of the tracked child will be displayed on a map on the
`
`parent’s mobile device.
`
`None of this was new. In fact, the prior art in this Petition demonstrates that
`
`claims 11-16 of the ’855 Patent involved well-known tracking applications of
`
`routine and conventional positioning approaches, such as GPS, assisted GPS, and
`
`mobile-phone network based approaches. This prior art also shows Claims 11-16
`
`of the ’855 Patent are obvious over the prior art.
`
`This Petition presents non-cumulative grounds of unpatentability not
`
`addressed during patent prosecution. The grounds presented in this Petition are
`
`reasonably likely to prevail, this Petition should be granted, a trial should be
`
`instituted, and the challenged claims should be canceled.
`
`1
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
`
`interest: Uber Technologies, Inc.
`
`Related Matters: Patent Owner has asserted the ’855 Patent against
`
`Petitioner in Uber Technologies, Inc., v. LBT IP II LLC, No. 6:21-cv-01210-ADA
`
`(WDTex).
`
`A related entity, LBT IP I LLC, asserted 5 somewhat similar patents against
`
`Apple in LBT IP I LLC v. Apple Inc., No. 1-19-cv-01245 (DDE). The USPTO
`
`instituted 5 IPR proceedings, each of which resulted in a final written decision
`
`canceling all challenged claims: IPR2020-01189, IPR2020-01190, IPR2020-
`
`01191, IPR2020-01192, and IPR2020-01193.
`
`Lead and Back-Up Counsel:
`• Lead Counsel: Benjamin Haber (Reg. No. 67,129), O’Melveny &
`
`Myers LLP, 400 S. Hope Street, Los Angeles, CA 90071 (Telephone:
`
`213-430-6000; Fax: 213-430-6407; Email: bhaber@omm.com).
`
`• Backup Counsel: Caitlin P. Hogan (Reg. No. 61,515), O’Melveny &
`
`Myers LLP, 7 Times Square, Times Square Tower, New York, NY
`
`10036 (Telephone: 212-326-2000; E-Mail: chogan@omm.com).
`
`Service Information: Petitioner consents to electronic service by email to
`
`Uber-LBTIPR@omm.com. Please address all postal and hand-delivery
`
`2
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`correspondence to lead counsel at O’Melveny & Myers LLP, 400 South Hope St.,
`
`Los Angeles CA, with courtesy copies to the email address identified above.
`
`III. FEE AUTHORIZATION
`Pursuant to 37 C.F.R. §42.15(a) and §42.103(a), the PTO is authorized to
`
`charge any and all fees to Deposit Account No. LA500639.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’855 Patent is available for IPR, this Petition is
`
`timely filed, and Petitioner is not barred or estopped from requesting IPR on the
`
`grounds presented.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Petitioner requests cancellation of Claims 11-16 of the ’855 Patent under 35
`
`U.S.C. §§ 103 on the following grounds:
`
`•
`
`Ground 1: Claim 11 is rendered obvious by U.S. Patent No.
`
`6,999,779 (“Hashimoto”, Ex-1005) in view of U.S. Published Patent Application
`
`No. 2004/0008138 (“Hockley”, Ex-1006).
`
`•
`
`Ground 2: Claims 12-14 are rendered obvious by Hashimoto and
`
`Hockley, in further view of U.S. Published Patent Application No. 2003/0151506
`
`(“Luccketti”, Ex-1007).
`
`•
`
`Ground 3: Claims 15-16 are rendered obvious by Hashimoto and
`
`Hockley, in further view of U.S. Published Patent Application No. 2003/0195008
`
`3
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`(“Mohi”, Ex-1008).
`
`The following table is a summary of the above enumerated grounds:
`
`Ground
`1
`2
`3
`
`Prior Art
`Hashimoto and Hockley
`Hashimoto, Hockley, and Luccketti
`Hashimoto, Hockley, and Mohi
`
`Claims
`11
`12-14
`15-16
`
`The Petition discusses rationales for each of the above enumerated grounds
`
`and is supported by a declaration from Mr. Scott Andrews. Ex-1002; see id., ¶¶1-
`
`26, 30-71, 211-212.
`
`VI. THE CHALLENGED PATENT
`The ’855 Patent “relates generally to the field of communications systems
`
`that provide location information.” Ex-1001, 1:16-17; Ex-1002 ¶¶72-76.
`
`Specifically, the patent purports to provide “a system for monitoring location
`
`information of a tracking unit associated with an individual or object” using any of
`
`a number of wireless tracking approaches already known in the art. Id. The patent
`
`does not attempt to describe or claim any particular wireless tracking technologies,
`
`and instead describes uses or applications of conventional tracking approaches
`
`using GPS, assisted GPS, and others. Id. 1:24-2:55.
`
`Based on these conventional components, the ’855 Patent purports to
`
`describe a system for monitoring and tracking children, as shown in Figure 1B
`
`(annotated). An individual, such as a child associated with tracking device 402
`
`4
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`(purple), is monitored by monitoring station 506 (red). A list of individuals
`
`interested in the position of the child, such as parents, uncles, and aunts, is
`
`maintained in list 408 (orange). User 504 may be one of these individuals, such as
`
`the child’s parent. User 504 carries mobile device 516 (green). The user can use its
`
`mobile device to track the location of the child, including displaying that child’s
`
`position on a map.2
`
`
`
`
`2 Throughout this petition, all annotations and emphasis have been added, unless
`otherwise noted.
`
`5
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`
`
`Claim 11 of the ’855 Patent, reproduced below, is representative.
`
`11. A method of determining location via a tracking device associated with
`an individual or an object to be located, the method comprising:
`receiving a location request from a user;
`activating a positioning apparatus associated with the tracking device;
`transmitting to the tracking device:
`(i) a first signal from a monitoring station;
`(ii) a second signal from a wireless location and tracking system;
`(iii) a third signal from a mobile transceiver; and
`(iv) a fourth signal from an adjacent tracking device;
`determining which of the first signal, the second signal, the third signal, and
`the fourth signal match defined selection criteria stored in the tracking
`device;
`determining location data in part based on a signal selected utilizing the
`defined selection criteria;
`transmitting the location data to the monitoring station for analysis to
`determine a location of the tracking device; and
`informing the user of the location of the tracking device on a map.
`
`The claim describes, in essence, that the tracking device has to receive four
`
`different signals and then choose, based on some selection criteria, which of the
`
`four signals to use for determining the position of the tracking device in response
`
`to a user’s request. Once the position of the tracking device is found, the
`
`monitoring station returns its position to the user and displays it on a map.
`
`As explained in detail below, the ’855 Patent claims are obvious in view of
`
`the prior art.
`
`6
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`VII. PATENT PROSECUTION HISTORY
`The ’855 Patent’s file history (Ex-1004) is unremarkable. Ex-1002 ¶¶77-78.
`
`The application leading to the ’855 Patent was filed on July 21, 2006. The
`
`examiner issued a non-final rejection on December 29, 2008, rejecting all then-
`
`pending claims as obvious. The applicant submitted an amendment and response
`
`on March 16, 2009. The examiner issued a final rejection on June 9, 2009,
`
`rejecting then-pending claims 1-5 as obvious over the same prior art applied in the
`
`first non-final rejection, but stating that claims 6-22 were allowable. Ex-1004,
`
`0048.3 Other than stating that the arguments related to claims 6-22 were
`
`“persuasive,” no other reasons for allowability were provided. Id. In response, the
`
`applicant cancelled then-pending claims 1-5, and asked for claims 6-22 to be
`
`issued. Ex-1004, 0035. The examiner issued a notice of allowance on August 7,
`
`2009, and the patent subsequently issued on October 6, 2009.
`
`None of the art relied upon in this petition was ever submitted or considered
`
`during prosecution of the ’855 Patent.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art would have had a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a related field,
`
`
`3 Exhibits lacking original page numbers are cited with 4-digit numbers
`corresponding to their PDF page number.
`
`7
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`and at least two years of experience in the research, design, development, and/or
`
`testing of GPS and related positioning techniques, or the equivalent, with
`
`additional education substituting for experience and vice versa. Ex-1002 ¶¶27, 32-
`
`71.
`
`IX. PRIORITY DATE
`The ’855 Patent is a continuation-in-part of an application filed on February
`
`1, 2005. Petitioner takes no position on the proper priority date for each claim of
`
`the ’855 Patent.4 All prior art references asserted in this petition are U.S. patents or
`
`patent publications that were published and/or filed well-before the earliest
`
`possible filing date of the ’855 Patent. Ex-1002 ¶28.
`
`X. CLAIM CONSTRUCTION
`Petitioner interprets the claims of the ’855 Patent according to the Phillips
`
`claim construction standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005). Petitioner does not believe that any term requires explicit construction to
`
`resolve the grounds presented. Ex-1002 ¶29. 5
`
`
`4 Patent Owner asserts an earlier date of invention in district court. Petitioner
`reserves the right to challenge any alleged prior invention date in district court.
`5 Claim construction procedures have not yet begun in the district court.
`Additionally, in accordance with 37 C.F.R. 42.100(b), Petitioner will request leave
`to submit the district court’s claim construction order as soon as it becomes
`available, so that it is timely made of record in the proceeding and can be
`considered by the Board.
`
`8
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES
`A. Hashimoto (Ex-1005)
`Hashimoto, titled “Position Information Management System” is U.S. Patent
`
`No. 6,999,779, was filed on July 29, 1997, and issued on February 14, 2006. Ex-
`
`1002 ¶¶79-85. Hashimoto is prior art under at least pre-AIA 35 U.S.C. §102(e),
`
`based on its filing date.
`
`Hashimoto relates to “a position information management system,”
`
`specifically, “a portable remote terminal,” such that a user “can supervise, for
`
`example, the action of an old person, a child, or a skier in a skiing area” who is
`
`also using such a remote portable terminal. Ex-1005, 1:50-51, Abstract.
`
`Portable remote terminal 11 (below, purple) receives GPS (and DGPS)6
`
`signals (from satellite 12 and tower 13, respectively), base station signals (from
`
`radio equipment 23 and 24), and radio marker signals (from information providing
`
`point/radio marker 33). Central system 10 (below, red) monitors the portable
`
`terminal, such that a user on home terminal 32 (below, green), or a user of another
`
`
`6 Differential GPS (DGPS) is a similar concept to Assisted GPS (AGPS), whereby
`GPS signals are obtained at stationary reference points, such as the mobile tower in
`Hashimoto, Figure 1, and corrected DGPS signals are sent to the portable receiver.
`For purposes of the ’855 Patent, the details of DGPS are not important. Ex-1002
`¶81.
`
`9
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`portable terminal, Ex-1005, 8:61-65 (not shown), can access location information
`
`about one of the monitored portable terminals.
`
`
`
`
`
`Additionally, Hashimoto discloses an organized approach for determining
`
`which signal to use to determine the position of remote terminal 11 at any given
`
`time. Hashimoto attempts to use the most accurate available signal first, and then
`
`tries to use the next most accurate signal, if the first signal is not available, and so
`
`on. This is shown in Hashimoto’s Figure 2:
`
`10
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`
`
`B. Hockley (Ex-1006)
`Hockley, titled “Apparatus and method of position determination using
`
`shared information” is U.S. Patent Publication no. 2004/0008138, published on Jan
`
`15, 2004. Ex-1002 ¶¶86-87. Hockley is prior art under at least pre-AIA 35 U.S.C.
`
`§102(b), based on its publication date.
`
`Hockley “relates to the field of position determination. More particularly,
`
`the invention relates to position determination using information received from
`
`multiple sources.” Ex-1006, ¶3. As shown in Figure 1, in Hockley’s “hybrid
`
`11
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`position determination system,” when “the position of the mobile device is
`
`underdetermined because of an insufficient number of satellite[s], the mobile
`
`device shares position information with other devices” to aid in position
`
`determination. Id., Abstract.
`
`
`
`C. Luccketti (Ex-1007)
`Luccketti, titled “Method and Apparatus for Locating Missing Persons,” is
`
`U.S. Patent App. Pub. No. 2003/0151506, published on August 14, 2003. Ex-1002
`
`¶¶88-91. Luccketti is prior art under at least pre-AIA 35 U.S.C. §102(b), based on
`
`its publication date.
`
`12
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`Luccketti “relates to personal monitoring and locating systems incorporating
`
`Global Positioning System (GPS) technology,” Ex-1007, ¶2, and specifically to
`
`“[a] system for locating a person including a mobile transmitter removably secured
`
`to the person and a portable monitoring unit carried by a user monitoring the
`
`location of the person.” Id., Abstract. Luccketti teaches a system that may be
`
`useful, for example, for a parent to monitor the location of a child, as shown in
`
`Figure 1.
`
`
`
`The child may be equipped with a tracking device (above, purple) that has a
`
`“unique user ID code.” A parent has a “portable monitoring unit” (above, green).
`
`
`
`13
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`The parent may request the location of the monitored child and, “the request signal
`
`transmitted from the portable monitoring unit 200 typically includes a unique
`
`userID code” matching the child’s unique ID code. Ex-1007, ¶ 44. The tracking
`
`device components are shown in Figure 3:
`
`
`
`
`
`D. Mohi (Ex-1008)
`Mohi, titled “Locating System and Method,” is U.S. Patent App. Publication
`
`No. 2003/0195008, published on October 16, 2003. Ex-1002 ¶¶92-94. Mohi is
`
`prior art under at least pre-AIA 35 U.S.C. §102(b), based on its publication date.
`
`14
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`Mohi “relates to tracking systems that use a radio positioning system such as
`
`GPS and wireless radio communications such as cellular telephone,” Ex-1008,
`
`[0002], and specifically, “the invention has as one use for keeping in touch with
`
`children, periodically determining a child’s location.” Id., [0025].
`
`In addition to monitoring the position of a person or child, Mohi discloses
`
`several alarm modes that are also monitored. Such as an alarm may be triggered,
`
`for example, by the monitored individual traveling at a speed in excess of a
`
`threshold. For example, Mohi’s “[a]larms … may activate at a speed limit, if the
`
`rover starts to move faster than the alarm limit.” Ex-1008, ¶ 24.
`
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS
`The ’855 Patent contains 17 claims, of which 1, 6, 9, 11, and 17 are
`
`independent. The present petition challenges independent claim 11 and all of its
`
`dependent claims 12-16.7 Ex-1002 ¶95.
`
`
`7 Patent Owner asserts claims 11-13, 15, and 16 in the litigation. Ex-1022. This
`petition also challenges unasserted claim 14.
`
`15
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`A. Ground 1: Claim 11 is rendered obvious by Hashimoto in view of
`Hockley.
`1.
`A POSITA would be motivated to combine the teachings of
`Hashimoto and Hockley, and would have a reasonable
`expectation of success in doing so.
`In addition to the reasons set out below with respect to specific claim
`
`elements, a POSITA would have been motivated to combine the teachings of
`
`Hashimoto and Hockley, and would have a reasonable expectation of success in
`
`doing so, because each relates to the same well-known issues with GPS tracking
`
`and monitoring systems. Ex-1002 ¶96. Specifically, Hashimoto relates to a position
`
`information management system used to track individuals using multiple
`
`positioning sources including GPS and cellular base stations. Ex-1005, 1:7-9; 1:50-
`
`51. Similarly, Hockley also relates to position determination systems that are used
`
`to determine the location of a device using information received from multiple
`
`sources, including other mobile phones, for increased accuracy. Ex-1006, ¶¶2-5.
`
`Additionally, a POSITA would have been motivated to implement the
`
`teachings of Hockley to improve the location determination ability of a GPS and
`
`fixed system of terrestrial devices as taught by Hashimoto. Ex-1002 ¶97.
`
`Hashimoto describes well-known problems with using GPS-based systems, such as
`
`situations in which GPS signals “are not receivable.” Ex-1005, 4:25-30. Hockley
`
`provides an additional obvious solution to this well-known problem. Ex-1002 ¶98.
`
`Specifically, Hockley’s “system is useful because a mobile device may not have a
`
`16
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`sufficient number of GPS satellites to determine its position, or ‘fix’ as it is
`
`commonly referred. The mobile device may supplement the GPS information with
`
`information received from other mobile devices.” Ex-1006, ¶36. A POSITA would
`
`have been motivated to implement the Hockley approach in the Hashimoto system
`
`to achieve Hockley’s additional solution to Hashimoto’s problem, resulting in
`
`more accurate position information. Ex-1002 ¶¶99-102. Both recognize these
`
`issues and propose solutions using similar types of hardware and software.
`
`Accordingly, a POSITA would have understood that these references disclose
`
`interrelated teachings and they would be amenable to various well understood and
`
`predictable combinations. Id.
`
`2.
`
`Independent claim 11
`a.
`Element 11[Pre]: A method of determining location
`via a tracking device associated with an individual or
`an object to be located, the method comprising:
`Hashimoto teaches the preamble of Claim 11, to the extent it is limiting. Ex-
`
`1002 ¶¶103-105.
`
`Hashimoto is directed to “[a] position information management system in
`
`which a portable remote terminal includes a plurality of kinds of positioning means
`
`for positioning based on a GPS, positioning based on a portable-telephone or PHS
`
`base station, positioning based on a radio marker, and independent positioning
`
`based on a direction detector, so that the holder of the portable remote terminal can
`
`17
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`be navigated anywhere.” Ex-1005, Abstract, Figure 1. Portable remote terminal 11,
`
`corresponding to the claimed tracking device, is highlighted below (purple).
`
`
`
`
`
`
`
`An example portable remote terminal is depicted in Figure 10A, below. The
`
`holder of the portable remote terminal is an individual or an object whose location
`
`is tracked by the portable remote terminal. See Ex-1005, 7:43-47. The holder of the
`
`portable terminal, “for example, an old person or a child,” can be located from
`
`home terminal 32 (above, green). Id., 4:31-35.
`
`
`
`18
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`
`
`b.
`
`Element 11[A]: receiving a location request from a
`user;
`Hashimoto teaches element 11[A]. Ex-1002 ¶¶106-108.
`
`Hashimoto discloses home terminal 32 as shown in Figure 1 (below, green).
`
`
`
`
`
`19
`
`
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`The user of home terminal 32 submits a location request to central system
`
`10, requesting the current position of portable remote terminal 11 (i.e. the claimed
`
`tracking device). Ex-1005, 9:27-36; see also id., Fig. 6. Such a request is shown,
`
`for example, in elements S33 and S34 (yellow) of Figure 6,8 below:
`
`
`
`
`8 Figure 6 and Figure 5 differ because, in Figure 5, the home terminal is the
`requesting device, while in Figure 6, the location requesting device is also using a
`portable terminal. Petitioner refers to the more detailed Figure 6, however, a
`POSITA would understand that Figure 5 and Figure 6 do not materially differ in
`that both use a similar algorithm to request and receive a location information from
`a tracking device. See Ex-1002 ¶108.
`
`20
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`Element 11[B]: activating a positioning apparatus
`associated with the tracking device;
`Hashimoto teaches elements 11[B]. Ex-1002 ¶¶109-112.
`
`c.
`
`Hashimoto discloses that portable remote terminal 11 includes a positioning
`
`apparatus with a number of different components used to determine its position.
`
`See Ex-1005, 3:29-33 (“The portable terminal 11 includes the respective receivers
`
`of a GPS antenna 14, radio equipment 15 for a portable telephone, radio equipment
`
`16 for a ‘PHS’, and radio equipment 17 for receiving radio waves from the radio
`
`marker 33. The respective receivers receive radio waves from corresponding radio-
`
`wave transmission stations, and deliver them to a controller 22.”). The claimed
`
`“positioning apparatus” of the tracking device, including its various components,
`
`is shown in Figure 1 (yellow):
`
`
`
`21
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`
`
`
`Hashimoto teaches that “controller 22 acquires the current position of the
`
`portable terminal 11 by the use of the highest precision of position information
`
`among position information items obtained from the respective radio waves… .”
`
`Id., 3:42-45. Hashimoto further discloses that the power source of the portable
`
`remote terminal may be powered off and back on. Ex-1005, 7:18-20; 6:19-26. The
`
`positioning apparatus is activated at least during power-up, before which the
`
`terminal’s position is unknown. Ex-1002 ¶111. That is, when the device is powered
`
`on, the positioning apparatus in the device will also be activated as a part of that
`
`initial power-on so that it can provide location information upon request. Id. A
`
`POSITA would have understood that the positioning system was activated before
`
`element S37 in Figure 6 (“Obtain Current Position”), so that it could send
`
`requested position information at element S38 (“Transmit Current Position”). Id.
`
`22
`
`

`

`U.S. Patent No. 7,598,855
`Petition for Inter Partes Review
`Alternatively, it would have been obvious to activate the tracking device’s
`
`positioning apparatus in response to a user location request. Ex-1002 ¶112. For
`
`example, Hashimoto describes requesting the tracking device’s “current position.”
`
`Ex-1005, Fig 6, element S34.9 A POSITA would have understood that the
`
`positioning apparatus in the tracking device must be activated in order to provide
`
`an accurate “current position.” Ex-1002 ¶112. Accordingly, a POSITA would have
`
`been motivated to send an activation signal from the controller to the positioning
`
`apparatus upon receiving a request for the device’s current position. Ex-1002 ¶112.
`
`Sending such an activation signal would have ensured that the positioning system
`
`can provide an accurate “current position.” Ex-1002 ¶112.
`
`d.
`Element 11[C]: transmitting to the tracking device:
`Hashimoto teaches element 11[C]. Ex-1002 ¶¶113-114.
`
`As discussed below, 11[C](i)-(iv), Hashimoto discloses that portable
`
`terminal 11 is continually acquiring its current position via signals transmitted and
`
`received by it, using GPS, D-GPS, PHS, portable telephone system and/or radio
`
`markers. Ex-1005, 9:5-8. The central system also checks if portable terminal 11
`
`
`9 Hashimoto also describes that the tracking device updates its current position and
`sends it to be logged after a fixed time period. See Ex-1005, 9:6-24, Fig. 6 (S30-
`S32). A POSITA would have understood that the positioning apparatus would
`have to be activated either each time the current pos