Filed on behalf of TRACBEAM, LLC
`
`By: Sean Luner
`
`DOVEL & LUNER, LLP
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC.
`Patent Owner
`__________________
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`__________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`By: Sean Luner
`
`DOVEL & LUNER, LLP
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC.
`Patent Owner
`__________________
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`__________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`Patent Owner’s Response
`
`I.
`
`II.
`
`III.
`
`
`Table of Contents
`
`Introduction. ..................................................................................................... 1
`
`Claim Construction. ......................................................................................... 1
`
`Petitioners have failed to satisfy their burden of demonstrating that
`Claims 25 and 82 are unpatentable. ................................................................. 7
`
`A.
`
`B.
`
`C.
`
`The Petition fails to meet its burden as to the “at least when
`said first collection is not available” limitation (25.2) .......................... 7
`
`The Decision ........................................................................................12
`
`Response to the Decision ....................................................................13
`
`IV.
`
` Conclusion. ...................................................................................................18
`
`
`
`
`
`i
`
`
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
`Patent Owner’s Response
`
`Table of Authorities
`
`Cases
`Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339 (Fed. Cir. 2004) .........................16
`
`
`
`ii
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`
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
`Patent Owner’s Response
`
`Updated Exhibit List
`
`
`Description
`Diagram of Location System – 5/12/95
`Invention Disclosure Document – 6/5/95
`60/025,855 Provisional Application – 9/9/96
`U.S. Patent No. 5,732,354 (MacDonald)
`The American Heritage Dictionary, p. 575 (3rd ed., 1994)
`Webster’s New World College Dictionary, p. 996 (4th ed., 2010)
`Random House Webster’s Dictionary, p. 668 (4th ed., 2001)
`Narrowing Agreement
`Memorandum Opinion and Order entered 7/14/16 in TracBeam
`LLC v. T-Mobile US, Inc., et al., case no 6:14-cv-678 (E.D.
`Tex.) (“Markman Order”)
`
`
`Exhibit No.
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`
`
`
`iii
`
`
`
`Introduction.
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
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`
`This Inter Partes Review is limited to review of claims 25 and 82 of the
`
`I.
`
`
`
`‘231 patent, which are challenged as obvious based on a combination of Kauser
`
`and Wortham. IPR2015-01681, paper 12 (“Decision”). Patent Owner TracBeam
`
`appreciates the guidance provided by the Board in its Decision but respectfully
`
`maintains that Petitioners have failed to show the challenged claims are obvious.
`
`II. Claim Construction.
`
`
`
`The Board ruled that “[f]or purposes of this Decision, we are persuaded that
`
`no claim term requires express construction.” Decision at 8. Since the Decision,
`
`the District Court in the pending infringement action issued a Markman Order that
`
`addresses challenged claim 25. Ex. 2009. The District Court’s constructions for
`
`the terms found in claim 25 are set forth below:
`
`Claim term or Phrase
`
`District Court Construction / Ruling
`
`wireless mobile station
`
`“mobile wireless device that is at least a
`
`transmitting device and may include a
`
`receiving device” Ex. 2009 at 8.
`
`location information
`
`No construction necessary. Id. at 9.
`
`first obtaining…second
`
`The obtaining steps require an order. Id. at
`
`obtaining…
`
`18-19; id. at 27 (‘first [obtaining/receiving]…’
`
`1
`
`
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`Claim term or Phrase
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
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`
`District Court Construction / Ruling
`
`indicates that this [obtaining/receiving] must
`
`occur first in time relative to the second act of
`
`[obtaining/receiving] (‘second receiving…’).1
`
`Additionally:
`
`Both the obtaining steps must be performed,
`
`however:
`
`“(1) the step of ‘first obtaining the first
`
`location information of said mobile station, the
`
`first location information determined by
`
`computational machinery when said
`
`corresponding location technique for using the
`
`first collection is supplied with an instance of
`
`said first collection’ need not be performed in
`
`those circumstances in which the ‘first
`
`collection of measurements’ is not available;
`
`
`1 The Court addressed the “first obtaining” and “second obtaining” steps of
`
`
`‘231 claim 25 along with “first receiving” and “second receiving” steps found in
`
`other claims, hence the reference in the Court’s ruling to “obtaining/receiving.”
`
`2
`
`
`
`Claim term or Phrase
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
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`
`District Court Construction / Ruling
`
`(2) the step of ‘second obtaining the second
`
`location information of said mobile station, the
`
`second location information determined by
`
`computational machinery when said
`
`corresponding location technique for receiving
`
`the second collection is supplied with an
`
`instance of said second collection’ may but
`
`need not be performed in those circumstances
`
`in which the ‘first collection of measurements’
`
`is available.” Id. at 19, 27.
`
`“computational machinery”
`
`No construction necessary. Id. at 23, 28.
`
`“outputting, to a source for
`
`No construction necessary. Id. at 21, 27-28.
`
`accessing location data for said
`
`mobile station, resulting
`
`location information that is
`
`dependent upon: at least one of
`
`said first and second location
`
`information”
`
`3
`
`
`
`Patent Owner respectfully submits that—for the reasons expressed by the
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`Case No. IPR2015-01681
`Patent 7,764,231 B1
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`
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`Court in its Markman Order—the foregoing claim construction rulings for ‘231
`
`claim 25 are correct under both the Phillips standard and the broadest reasonable
`
`interpretation standard and should be adopted by the Board in this proceeding.
`
`
`
`In addition, although the Board’s Decision stated that no claim terms
`
`required express construction, the Board implicitly construed “first collection of
`
`measurements related to signal time delay of wireless signals, the wireless signals
`
`received by said mobile station and transmitted from one or more satellites” (‘231
`
`claim 25, col. 180:23-26) to require “current GPS coordinates.”
`
`We find persuasive Petitioner’s assertion that claim 25 is directed to
`the availability of “current GPS coordinates” (Pet. 39–40), and that
`the availability of “stale” GPS coordinates, from some time ago, is not
`what one of ordinary skill in the art would have considered in
`interpreting claim 25.
`
`Decision at 18.
`
`
`
`This is a narrow construction that is not consistent with the broadest
`
`reasonable interpretation standard. There is no language in claim 25 that modifies
`
`or limits when the “first collection of measurements” is made (i.e., when the
`
`measurements of the satellite signals are taken). The relevant portion of the claim
`
`simply recites: “wherein for receiving a first collection of measurements related to
`
`signal time delay of wireless signals, the wireless signals received by said mobile
`4
`
`
`
`station and transmitted from one or more satellites, there is a predetermined
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`corresponding location technique for determining first location information of the
`
`mobile station.” ‘231 claim 25, col. 180:23-29 (emphasis added). To require that
`
`the “first collection” or any resulting location information not be “stale” would be
`
`to add a limitation to the claims, changing the claim to read: “wherein for
`
`receiving a first collection of recently computed measurements related to signal
`
`time delay of wireless signals, the wireless signals recently received by said
`
`mobile station and transmitted from one or more satellites, there is a predetermined
`
`corresponding location technique for determining first location information of the
`
`mobile station.”
`
`
`
`As shown above, the Decision cites to pages 39-40 of the Petition as
`
`containing “Petitioner’s assertion that claim 25 is directed to the availability of
`
`‘current GPS coordinates’ (Pet. 39–40), and that the availability of ‘stale’ GPS
`
`coordinates, from some time ago, is not what one of ordinary skill in the art would
`
`have considered in interpreting claim 25.” Decision at 18. However, while
`
`Petitioners refer to “the current GPS coordinates” as “either unavailable or
`
`unreliable” (Pet. 39), they do not develop or support any argument that the “first
`
`collection of measurements” can only be satisfied by “current GPS coordinates.”
`
`Pet. 39-40. Nor did Petitioners argue for such a construction—or any construction
`
`5
`
`
`
`of the “first collection” term, for that matter—in the six-page section of their
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`Case No. IPR2015-01681
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`Petition that addresses claim construction. Pet. 9-15.
`
`
`
`The Decision also asserts that “the Specification of the ’231 Patent does not
`
`discuss being ‘available’ in such a manner, but rather discusses its techniques
`
`‘which can be used to establish motion, speed, and an extrapolated next location in
`
`cases where the MS signal subsequently becomes unavailable.’ Ex. 1001, 9:30–
`
`32.” Decision at 18. The Board’s reference to “being available in such a manner”
`
`appears to mean being available in the form of measurements or coordinates that
`
`may not be “current.” That is indeed something taught by the specification, which
`
`teaches numerous embodiments in which “previous MS location estimates”
`
`(which may be “stale” coordinates) are used in determining the location of the
`
`mobile station. See, e.g., ‘231, col. 13:66-14:32 (“In particular, the following
`
`capabilities are provided by the present invention… an hypothesis generating
`
`capability for generating new location hypotheses from previous hypotheses.”); id.
`
`col. 59:26-37 (“In brief, the hypothesis analyzer 1332 receives target MS 140
`
`location hypotheses from the context analyzer 1336, and depending on the time
`
`stamps of newly received location hypotheses and any previous (i.e., older) target
`
`MS location hypotheses that may still be currently available to the hypothesis
`
`analyzer 1332, the hypothesis analyzer may: (a) update some of the older
`
`hypotheses by an extrapolation module, (b) utilize some of the old hypotheses as
`6
`
`
`
`previous target MS estimates for use in tracking the target MS 140”); Fig. 24
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`Case No. IPR2015-01681
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`(depicting as “■” the “previous MS location estimates by the present FOM”).
`
`
`
`
`
`Accordingly, there is nothing in the language of claim 25—read on its face
`
`or in the context of the entire specification—that imposes any limitation on when
`
`the “first collection of measurements” of satellite signals has been made. Patent
`
`Owner respectfully requests that the Board reconsider its implicit construction to
`
`the contrary.
`
`III. Petitioners have failed to satisfy their burden of demonstrating that
`
`Claims 25 and 82 are unpatentable.
`
`Patent Owner maintains each of the arguments asserted in its Preliminary
`
`
`
`Response and further maintains that Kauser is not prior art. Paper 8 (“Prelim.
`
`Resp.) at 7-17. For purposes of this Response, Patent Owner focuses on its
`
`argument that Petitioners failed to show that Kauser either expressly or inherently
`
`discloses claim element 25.2. Below Patent Owner restates its argument from the
`
`Preliminary Response and the Board’s response, and then responds to the Board.
`
`
`
`
`
`
`A.
`
`
`The Petition fails to meet its burden as to the “at least when
`said first collection is not available” limitation (25.2)2
`Element 25.2 recites:
`
`
`
`2 For ease of reference, this section presents the arguments found at pages 7-
`
`
`11 of Patent Owner’s Preliminary Response.
`
`7
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`wherein for receiving a second collection of measurements obtained
`from wireless signals transmitted between said mobile station and one
`or more fixed location terrestrial stations, at least when said first
`collection is not available, there is a predetermined corresponding
`location technique for determining second location information of the
`mobile station.
`
`‘231, col. 180:34-39.
`
`
`
`This element requires a second “predetermined corresponding location
`
`technique” (claim 25, element 25.1), that is
`
`
`
`
`
`
`
`(1) “for receiving a second collection of measurements” and
`
`(2) “at least when [the] first collection is not available.”
`
`The clause “at least when said first collection is not available” requires that
`
`“there is” (i.e., there exists) a second corresponding location technique (one that
`
`corresponds to the “second collection of measurements”) that is “for determining
`
`second location information of the mobile station” at least in those circumstances
`
`when the first collection of measurements (what Petitioners assert are the satellite
`
`measurements from claim element 25.1) is not available. Accordingly, the claim
`
`language requires that this second technique must be available when the first
`
`technique cannot be used because the necessary first collection of measurements
`
`for that first technique is not available.
`
`8
`
`
`
`Petitioners assert that the geometric location technique disclosed in Kauser
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`
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`is the second predetermined corresponding location technique. Pet. 38 (Kauser
`
`“uses a geometric location technique to determine a location estimate of the mobile
`
`telephone (i.e., ‘a predetermined corresponding location technique for determining
`
`second location information of the mobile station’”)). Petitioners assert that the
`
`“first collection” is the “GPS signal measurements.” Pet. 37 (“When provided
`
`with the GPS signal measurements (i.e., ‘when provided with the first
`
`collection’”)). Therefore, to demonstrate that Kauser discloses claim element
`
`25.2, Petitioners must show the geometric technique (i.e., second “predetermined
`
`corresponding location technique”) is used at least when GPS signal measurements
`
`(i.e., the claimed “first collection”) are not available. They have not done so.
`
`
`
`This is because Kauser does not disclose using a second “predetermined
`
`corresponding location technique” when “at least when said first collection is not
`
`available” as required by element 25.2. Instead, Kauser only discloses using the
`
`geometric technique along with the GPS signal measurements (i.e., when the GPS
`
`signal measurements are available):
`
`the location of a mobile telephone is determined using a geometric
`location technique in combination with GPS location coordinates
`produced by a GPS processor/receiver within the mobile telephone.
`
`Kauser, col. 2:62-66.
`
`9
`
`
`
`These reduced error distances are used to geometrically determine an
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`Case No. IPR2015-01681
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`
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`estimate of the location area. In addition, the mobile telephone comprises a GPS
`
`receiver/processor for sending the most recent GPS coordinates of the mobile
`
`telephone that are within a predetermined confidence level to the mobile location
`
`module. These GPS coordinates are compared with the calculated location area to
`
`increase the accuracy of the location determination. Kauser Abstract; id., col.
`
`3:11-15 (“the mobile location module receives the most recent GPS coordinates
`
`calculated by the GPS receiver/processor”). Kauser discloses using GPS “in
`
`combination with” the geometric location technique but does not disclose using the
`
`geometric technique when GPS information is not available.
`
`
`
`Petitioners assert that element 25.2 is disclosed in Kauser because “Kauser’s
`
`resulting location determination is simply performed using the geometric technique
`
`and the ‘last GPS coordinate position…within a predefined confidence level’”
`
`when “the current GPS coordinates are either unavailable or unreliable.” Pet. 39.
`
`Petitioner asserts that one of ordinary skill in the art would understand this to meet
`
`the “when unavailable” limitation. Id. This argument fails because the first
`
`collection is available when the “last GPS coordinate position” in Kauser is used.
`
`This is because, as explained below, the “last GPS coordinate position” is
`
`calculated from “GPS signal measurements”—which are the relied upon “first
`
`collection.” Pet. 37 (relying on GPS signal measurements as the “first collection”).
`10
`
`
`
`In Kauser, the “last GPS coordinate position” is a position that is calculated
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`
`
`by the GPS receiver/processor:
`
`The present invention accounts for this limitation by using the last
`GPS coordinate position which is within a predefined confidence
`level. This is accomplished by using a calculated average latitude and
`longitude position, along with a latitude and longitude error as
`follows…The GPS receiver/processor 125 is configured to compute
`the average of the latitude and longitude coordinates.
`Kauser, col. 9:34-55.
`
`
`
`The GPS receiver/processor does this calculation using GPS signal
`
`measurements (i.e., the relied upon “first collection”):
`
`a GPS receiver/processor receives signals from satellites orbiting the
`earth and translates these signals into latitude and longitude
`coordinates of the position of the GPS receiver/processor.
`
`Id., col. 9:22-25.
`
`
`
`Therefore, even in situations where the last GPS coordinates are used,
`
`Kauser relies on an available first collection (i.e., the first collection—the GPS
`
`signal measurements—that were used to calculate the GPS coordinates).
`
`
`
`Accordingly, Kauser does not disclose using a second collection when no
`
`GPS signal measurements are available as required by claim element 25.2. This
`
`element is simply not disclosed in Kauser. Moreover, Petitioners do not assert that
`
`this element is met by the combination Kauser and Wortham or that it would be
`11
`
`
`
`obvious to modify Kauser or the asserted combination to meet element 25.2. The
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`Petition’s analysis therefore fails as to Claim 25.
`
`B.
`
`The Decision3
`
`Patent Owner argues that claim 25 requires that the second technique
`must be available when the first technique cannot be used because the
`necessary first collection of measurements for that first technique is not
`available. Id. at 8. Patent Owner continues that to demonstrate that
`Kauser discloses the specified claim element, “Petitioners must show the
`geometric technique (i.e., second ‘predetermined corresponding location
`technique’) is used at least when GPS signal measurements (i.e., the
`claimed ‘first collection’) are not available,” and Petitioner has failed to
`so demonstrate. Id. at 9. Patent Owner also adds that even in situations
`where only the last GPS coordinates are used in Kauser, i.e., when “the
`current GPS coordinates are either unavailable or unreliable,” Kauser is
`still relying on an available first collection, contrary to claim 25. Id. at
`10. On the present record, we do not agree.
`
`The recitation in claim 25 provides, in part, that the location technique
`determines second location information from a second collection of
`measurements “at least when said first collection is not available.” We
`are persuaded at this stage of the proceeding that this requires that this
`second location technique could be used when the GPS signal
`
`3 For ease of reference, this section contains the relevant portion of the
`
`
`Board’s Decision.
`
`12
`
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`measurements are not available, not that Kauser must demonstrate this
`specific behavior. In other words, the recitation of “at least when” does
`not mean it is performed only when the first collection is not available;
`rather, it could be performed when the first collection is not available, or
`in other circumstances. We find persuasive Petitioner’s assertion that
`claim 25 is directed to the availability of “current GPS coordinates” (Pet.
`39–40), and that the availability of “stale” GPS coordinates, from some
`time ago, is not what one of ordinary skill in the art would have
`considered in interpreting claim 25. Further, the Specification of the ’231
`Patent does not discuss being “available” in such a manner, but rather
`discusses its techniques “which can be used to establish motion, speed,
`and an extrapolated next location in cases where the MS signal
`subsequently becomes unavailable.” Ex. 1001, 9:30–32. Patent Owner’s
`argument notwithstanding, we are persuaded that Petitioner is reasonably
`likely to show that Kauser and Wortham teach or suggest the cited
`element of claim 25.
`Decision at 17-18.
`
`C. Response to the Decision
`
`
`
`Patent Owner agrees with the Board’s statement that “the recitation of ‘at
`
`least when’ does not mean it is performed only when the first collection is not
`
`available; rather, it could be performed when the first collection is not available, or
`
`in other circumstances.” Decision at 17 (emphasis in original). To the extent our
`
`Preliminary Response suggested otherwise, that was not intended.
`
`13
`
`
`
`In fact, as shown above, the District Court adopted our proposed
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`
`
`construction that “the step of ‘second obtaining the second location information of
`
`said mobile station, the second location information determined by computational
`
`machinery when said corresponding location technique for receiving the second
`
`collection is supplied with an instance of said second collection’ may but need not
`
`be performed in those circumstances in which the ‘first collection of
`
`measurements’ is available.” Ex. 2009 at 19, 27.
`
` We respectfully disagree, however, with the Decision’s conclusion that
`
`“Petitioner is reasonably likely to show that Kauser and Wortham teach or suggest
`
`the cited element of claim 25.” Decision at 18. To begin, the Petition does not
`
`provide any analysis of or rely upon Wortham in addressing claim element 25.2.
`
`Pet. 38-40. Moreover, the Decision’s rejection of our argument is based on a
`
`narrow construction of the “first collection” limitation that, as shown above, is
`
`incorrect.
`
`
`
`As we explained in our Preliminary Response, Kauser does not teach using
`
`the geometric location technique (identified by Petitioners as the second
`
`“predetermined corresponding location technique”) in those circumstances in
`
`which the “first collection of measurements” (i.e., the satellite measurements) are
`
`not available. Rather—as shown by Petitioners’ own analysis and not contested by
`
`the Decision—Kauser teaches that the geometric technique also has, at minimum,
`14
`
`
`
`the “last GPS coordinate position.” Prelim. Resp. at 9-11. Thus, Kauser does not
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`teach or contemplate a situation in which the “first collection of measurements”
`
`(i.e., satellite signal measurements) is not available nor the use of the second
`
`predetermined technique (the geometric technique) in such “unavailable”
`
`circumstances. Rather, it is only by narrowly construing the “first collection of
`
`measurements” to require recently or newly taken satellite measurements, that one
`
`can conclude that Kauser teaches the use of the geometric location technique in
`
`those circumstances when the “first collection” is not available. Such a
`
`construction is incorrect, particularly under the broadest reasonable interpretation
`
`standard, as explained above.
`
`
`
`Finally, we turn to the following statement from the Decision: “We are
`
`persuaded at this stage of the proceeding that this requires that this second location
`
`technique could be used when the GPS signal measurements are not available, not
`
`that Kauser must demonstrate this specific behavior.” Decision at 18 (emphasis in
`
`original). This statement suggests that Petitioners may meet their burden with
`
`respect to Claim 25 by identifying a system (Kauser) that could be used to perform
`
`the claimed method. We respectfully disagree.
`
`
`
`To meet their burden of showing obviousness of claim 25, and in particular
`
`element 25.2, Petitioners were required to show that Kauser actually disclosed
`
`(expressly or inherently) the use of the system in a manner that meets the claims or
`15
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`
`
`to provide developed argument for modifying the disclosed use of the system to
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`meet the claims. For claim 25, that means Petitioners needed to show that Kauser
`
`expressly or inherently discloses using the geometric technique in circumstances
`
`where there was no available “first collection of measurements” or provide
`
`developed argument that it would be obvious to modify the system to disregard the
`
`first collection of measurements and the previous GPS coordinates. No such
`
`showing was made or even argued. To the contrary, the Petition expressly admits
`
`that even when newly obtained satellite measurements are not available the
`
`previous obtained measurements and resulting GPS coordinates are used in
`
`connection with the geometric technique:
`
`For example, Kauser explains that “[a] known problem with GPS
`receivers
`is
`that
`location accuracy
`requires
`line of sight
`communication with multiple satellites…[t]hus, they do not return
`accurate latitude and longitude coordinates if the line of sight is
`blocked, for example, inside a building.” (Ex. 1007 (Kauser) at 9:30-
`39.) Kauser explains that it addresses this problem by “using the last
`GPS coordinate position which is within a predefined confidence
`level” when the line of sight to the GPS satellites is blocked. (Id.) In
`that situation, because the current GPS coordinates are either
`unavailable or unreliable, Kauser’s resulting location determination is
`simply performed using the geometric technique and the “last GPS
`coordinate position…within a predefined confidence level” (Ex. 1007
`(Kauser) at 9:30-39, 11:43-47, 12:1-21, FIG. 10.).
`16
`
`
`
`Pet. 39-40.
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`
`
`
`
`Neither the Petition nor the Decision identify a single instance in which
`
`Kauser teaches that the geometric technique is, can, or should be used when the
`
`“last GPS coordinate position” is not available.
`
`Moreover, to the extent the Petition relies upon or suggests a theory of
`
`inherency, inherency “requires that the ‘missing characteristic is necessarily
`
`present,’” not merely possible, or even probable. Glaxo Group Ltd. v. Apotex, Inc.,
`
`376 F.3d 1339, 1348 (Fed. Cir. 2004) (quoting Schering Corp. v. Geneva Pharms.,
`
`Inc., 339 F.3d 1373, 1377 (Fed.Cir.2003)) (emphasis added). There is no
`
`evidence that the geometric technique is “necessarily present” when the “last GPS
`
`coordinate positions” is not available. That a “second location technique could be
`
`used when the GPS signal measurements are not available” (Decision at 17-18)
`
`does not make the technique it inherent or “necessarily present.”
`
`* * *
`
` Accordingly, Patent Owner respectfully requests that the Board reconsider
`
`its construction of the “first collection” limitation and find that Petitioners have
`
`failed to meet their burden as to claim element 25.2. And, because claim 82
`
`depends on claim 25, Patent Owner respectfully submits that Petitioners have also
`
`failed to meet their burden as to that claim.
`
`17
`
`
`
`IV.
`
` Conclusion.
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`
`
`For the foregoing reasons, the Board should reject Petitioners’ challenge to
`
`claims 25 and 82 and confirm that validity of those claims.
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL AND LUNER
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`18
`
`
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`
`
`Certificate of Filing and Service
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120 together with
`
`EXHIBIT 2009 are being filed via PTAB E2E and served by electronic mail this
`
`19th day of August, 2016 on counsel for Petitioners as follows:
`
`Brian W. Oaks
`BAKER BOTTS, LLP,
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone (512) 322-5470
`Facsimile (512) 322-3621
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6486
`Facsimile (214) 661-4486
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6511
`Facsimile (214) 661-4511
`chad.walters@bakerbotts.com
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL AND LUNER
`201 Santa Monica Blvd, Suite 600
`
`19
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-01681
`Patent 7,764,231 B1
`
`
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`20
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