Apple, Inc.v.TracBeam LLCDownload PDFPatent Trial and Appeal BoardFeb 19, 201609194367 (P.T.A.B. Feb. 19, 2016) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Entered: February 19, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC., Petitioner, v. TRACBEAM, LLC, Patent Owner. ____________ Case IPR2015-01702 Case IPR2015-01703 Patent 7,764,231 B1 ____________ Before KEVIN F. TURNER, JAMES A. TARTAL, and MATTHEW R. CLEMENTS, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION Institution of Inter Partes Review in IPR2015-01703 and Denying Institution of Inter Partes Review in IPR2015-01702 37 C.F.R. § 42.108 IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 2 Petitioner, Apple Inc., filed two petitions requesting an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 of U.S. Patent No. 7,764,231 B1 (“the ’231 patent”). IPR2015-01702 (“IPR-1702”), Paper 1 (“1702-Pet.”); IPR2015-01703 (“IPR-1703”), Paper 2 (“1703-Pet”).1 Patent Owner, TracBeam, LLC, filed a Preliminary Response in each case. IPR-1702, Paper 6 (“1702-Prelim. Resp.”); IPR-1703, Paper 6 (“1703-Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as 1 To the extent Petitioner’s arguments in IPR-1703 are duplicative to its arguments in IPR-1702, we cite only to IPR-1702. Additionally, Petitioner mistakenly refers to claim “42” in place of claim “72” in various headings (see IPR1702-Pet. ii, 39), but Petitioner provides argument only with respect to claim 72 (see id. at 47–48). There is no challenge to claim 42. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 3 to patentability of claims for which inter partes review is instituted. Our final decision will be based on the record, as fully developed during trial. I. BACKGROUND A. The ’231 Patent (Ex. 1001) The ’231 patent, titled “Wireless Location Using Multiple Mobile Station Location Techniques,” issued July 27, 2010, from U.S. Application No. 09/194,367, filed on September 8, 1997. Ex. 1001. The ’231 patent describes location systems for wireless telecommunication infrastructures. Ex. 1001, Abstract. According to the ’231 patent, the location techniques are useful for 911 emergency calls, vehicle tracking and routing, and location of people and animals. Id. at Abstract, 12:17–23. Figure 4, reproduced below, illustrates an embodiment: IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 4 Figure 4 is an overall view of a wireless radio location network architecture. Id. at 21:34–35. The network includes a plurality of mobile stations (“MS”) 140, a mobile switching center (“MSC”) 112, and a plurality of wireless cell sites forming radio coverage area 120, each site including a fixed-location base station 122 for voice and data communication with MSs 140. Id. at 24:6–42. The network also includes location base stations (“LBS”) 152 with wireless location enablement, e.g., with transponders used primarily in communicating MS location related information to location center 142 (via base stations 122 and MSC 112). Id. LBSs can be placed, for example, in dense urban areas, in remote areas, along highways, or wherever more location precision is required than can be obtained using conventional wireless infrastructure components. Id. at 28:1–10. Location center 142 determines a location of a target MS 140. Id. at 25:26–30, 37:16–18. The system uses a plurality of techniques for locating MSs, including two-way time of arrival (“TOA”), time difference of arrival (“TDOA”), and Global Positioning System (“GPS”). Id. at Abstract, 9:13– 28, 11:13–62, 66:52–58. To determine a location for an MS, the system computes a first order model (also referred to as a hypothesis or estimate) for one or more of the locating techniques, computes a confidence value for each model indicating the likelihood that the model is correct, performs additional computations on the models to enhance the estimates, and computes from the models a “most likely” location for the MS. Id. at 12:52– 13:36, 37:66–38:6. The most likely location can be a composite of the estimates. Id. at 13:30–36, 66:20–31. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 5 Location estimates can be provided to location requesting applications, such as 911 emergency, police and fire departments, taxi services, etc. Id. at 8:56–64, 13:25–28. B. Illustrative Claim Challenged claims 1, 11, 17, 18, 20, 25, 39, 155, and 162 of the ’231 patent are independent. Challenged claims 3, 6, 7, 40, and 215 depend from claim 1; claim 72 depends from claim 17; claims 24 and 78 depend from claim 20; claims 27 and 81 depend from claim 25; and, claim 165 depends from claim 162. Claim 1 of the ’231 patent is illustrative of the claims at issue: 1. A method for locating each terrestrial mobile station of a plurality of terrestrial mobile stations, M, wherein said method uses wireless signal measurements obtained from one or more transmissions between said terrestrial mobile station M and one or more of a plurality of terrestrial communication stations, each terrestrial communication capable of at least one of: wirelessly detecting said terrestrial mobile station M, and wirelessly being detected by said terrestrial mobile stations M, comprising: for each of the mobile stations M perform the following steps by computational machinery: receiving first and second location related information, respectively, from computational machinery performing first and second mobile station location estimation determiners, wherein said location estimation determiners provide different geographical indications of an unknown location of said mobile station M when said location estimation determiners are supplied with corresponding input data obtained using wireless signal measurements obtained by transmissions between said mobile station M and the communication stations; IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 6 wherein, when available, the first location related information includes at least a first geographical indication for a location of the mobile station M; wherein, when available, the second location related information includes at least a second geographical indication for the location of the mobile station M; wherein for locating the mobile station Min at least one location, said second geographical indication for M is obtained and is dependent upon a delay time of a signal from at least one non-terrestrial wireless transmitter, not supported on the Earth's surface, to M for determining a spatial range for M; and outputting a resulting location estimate of the mobile station M, a determination of said resulting location estimate is dependent upon at least one of (a) and (b) following: (a) a first value obtained from said first location related information, and (b) a second value obtained from said second location related information. Ex. 1001, 170:62–171:35. C. Related Proceedings Petitioner states that the ’231 patent is a subject of various proceedings, including the following civil action: TracBeam, LLC v. Apple Inc., Case No. 6:14-cv-680 (E.D. Tex.)). 1702-Pet. 1; 1703-Pet. 1; see also IPR2015-01702, Paper 5. The ’231 patent also is the subject of T-Mobile US, Inc. v. TracBeam, LLC., Case IPR2015-01681 (PTAB); and T-Mobile US, Inc. v. TracBeam, LLC., Case IPR2015-01687 (PTAB). Id. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 7 D. Asserted Grounds of Unpatentability Petitioner contends that claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 are unpatentable based on the following grounds, combined from the two petitions: Reference[s] Basis Challenged Claims IPR2015-01703 Loomis2 § 103(a) 1, 17, 18, 20, 25, 27, 40, 72, 78, 81, 155, 162, and 215 Loomis and Stjernholm3 § 103(a) 3, 6, 7, and 11 Loomis and Olsson4 § 103(a) 24, 39, and 165 Bruno5 § 103(a) 1, 17, 40, and 72 Bruno and Olsson § 103(a) 3, 6, 7, 11, 20, 24, 39, and 78 Bruno and Geier6 § 103(a) 18, 25, 27, 81, 162, 165, and 215 Bruno, Olsson, and Geier § 103(a) 155 IPR2015-01702 Green7 and Hashimoto8 § 103(a) 1, 3, 7, 11, 17, 18, 40, 72, 78, and 81 Green, Hashimoto, and Hilsenrath9 § 103(a) 6 Green, Hashimoto, and Krasner10 § 103(a) 20 and 24 Green, Hashimoto, and Sheffer11 § 103(a) 25, 27, 155, 162, 165, and 215 Green, Hashimoto, and Drane12 § 103(a) 39 2 U.S. Patent No. 5,936,572, issued Aug. 10, 1999 (IPR-1703, Ex. 1008). 3 U.S. Patent No. 5,418,843, issued May 23, 1995 (IPR-1703, Ex. 1011). 4 U.S. Patent No. 5,564,079, issued Oct. 8, 1996 (IPR-1703, Ex. 1010). 5 U.S. Patent No. 5,604,765, issued Feb. 18, 1997 (IPR-1703, Ex. 1007). 6 U.S. Patent No. 5,202,829, issued Apr. 13, 1993(IPR-1703, Ex. 1009). 7 U.S. Patent No. 5,926,133, issued July 20, 1999 (IPR-1702, Ex. 1035). 8 U.S. Patent No. 6,999,779, issued Feb. 14, 2006 (IPR-1702, Ex. 1036). 9 U.S. Patent No. 6,026,304, issued Feb. 15, 2000 (IPR-1702, Ex. 1037). 10 U.S. Patent No. 6,208,290, issued Mar. 27, 2001 (IPR-1702, Ex. 1038). 11 U.S. Patent No. 5,844,522, issued Dec. 1, 1998 (IPR-1702, Ex. 1039). IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 8 II. ANALYSIS A. Claim Construction Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 1. Whether the claims encompass GPS handsets. None of the challenged claims recite “GPS handsets,” and Petitioner does not propose any express construction for any claim term that would allegedly correspond to a “GPS handset.” Instead, Petitioner contends that every challenged claim of the ’231 patent “encompass the use of GPS receivers in handsets in making location determinations.” 1702-Pet. 25. Patent Owner has not disputed Petitioner’s contention. In the absence of an affirmative proposal by Petitioner to expressly construe any claim term, we discern no reason to do so in this case at this time. 2. Alternative claim language. Petitioner contends that alternative recitations in the ’231 patent “should be interpreted such that they encompass a single one or more than one of the recited alternatives, as well as all combinations and permutations of the various alternatives.” 1702-Pet. 28. Petitioner does not explicitly identify what “alternative recitations” it refers to, and Patent Owner has not expressly disputed Petitioner’s contention. In the absence of an affirmative proposal by Petitioner to expressly construe any claim term, we discern no reason to do so in this case at this time. 12 WO/97/23785, published July 3, 1997 (IPR-1702, Ex. 1040). IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 9 B. Asserted Obviousness Over Loomis, Alone or in Combination with Stjernholm or Olsson Petitioner contends that claims 1, 17, 18, 20, 25, 27, 40, 72, 78, 81, 155, 162, and 215 would have been obvious over Loomis. 1703-Pet. 36–48. Petitioner further contends that claims 3, 6, 7, and 11 would have been obvious over Loomis and Stjernholm (1703-Pet. 49–52), and that claims 24, 39, and 165 would have been obvious over Loomis and Olsson (1703-Pet. 53–56). Petitioner’s contentions are supported by the Declaration of Kevin S. Judge. IPR-1703, Exhibit 1002. 1. Overview of Loomis Loomis, titled “Portable Hybrid Location Determination System,” issued on August 10, 1999. IPR-1703, Ex. 1008. Loomis describes an apparatus for determining a location of a mobile user, both inside and outside of buildings and structures, using two different location determining techniques. Id. at Abstract. Loomis observes that location technology such as GPS, Global Orbiting Navigation Satellite System (“GLONASS”), and Long Range Navigation (“LORAN”) “provide object location estimates over regions with diameters of hundreds of kilometers (km) but do not work well where some of the signal sources are obscured by structures outdoors, or when the object to be located is positioned indoors.” Id. at 1:19–34. In contrast, “[frequency modulation (“FM”)] subcarrier signals can be used over smaller regions to estimate the location of an object inside or outside a building or other structure,” but such systems “tend[] to be limited to smaller regions, with diameters of the order of 20–50 km.” Id. at 1:38–46. To take advantage of both types of technology, Loomis’s system “provides an IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 10 integrated, mobile or portable system for location determination that combines beneficial features of two or more LD systems.” Id. at 4:39–42. Figure 1, reproduced below, illustrates an example: Figure 1 is a schematic illustrating user 12 operating hybrid location determining (“LD”) system 11. Id. at 6:21–29. Hybrid LD system 11 includes two different technologies for receiving location information. Specifically, radio LD unit 13 (renumbered 71 in Figure 6) receives FM information from radio LD signal sources 21, 23, and 25, and outdoor LD unit 31 (renumbered 81 in Figure 6) receives GPS or GLONASS information from satellites 41, 43, and 45. Id. at 6:20–29, 7:9–22. A controller receives location coordinates (in x, y, z format) from the radio LD unit and from the outdoor LD unit, along with indicia resulting from the comparison of the FM and outdoor signals to thresholds (i.e., IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 11 indicia indicating the accuracy of the respective location coordinates). Id. at 12:21–27. In Figure 6, the controller is depicted as part of hybrid LD unit 11, although, in an alternative embodiment, “information from the radio LD signals and/or the outdoor LD signals may be transmitted, unprocessed or partly processed or fully processed, to a central processing station 29 (optional), located at or near the site R, to allow determination of the present location of the user 12 at selected times.” Id. at 8:29–34; accord id. at 20:29–36. The controller can choose the radio coordinates or satellite coordinates, depending on which is the most accurate (or choose neither, if both are determined to be too inaccurate). Id. at 12:47–13:4. “[H]ybrid LD system 11 then processes the LD signals further, or transmits or stores or displays the location of the hybrid LD system.” Id. at 19:63–65. Although the outdoor LD unit can determine coordinates without input from the radio LD unit, the converse is not the case. Rather, for the radio LD unit to make a location determination, it must first know the relative phases of the FM signals from the radio LD signal sources. Id. at 4:9–14. To that end, The outdoor LD unit 31 in FIG. 1 includes a radio LD signal antenna and receiver/processor 37 and controller/interface 39 that also receives radio LD signals from the radio LD sources 21, 23 and 25, determines the relative phases of these radio LD signals, and provides this relative phase information with little or no time delay for use by the radio LD unit 13. Id. at 7:23–29; accord id. at 11:66–12:8: The outdoor LD unit 81 includes an FM subcarrier signal antenna 83, an outdoor signal receiver/processor 85 associated with and connected to the outdoor antenna 83, and a phase information antenna 87. The phase information antenna and receiver 87 receives the radio LD signals from the radio LD IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 12 signal sources and passes these signals to the outdoor LD signal receiver/processor 85 for determination of the relative phases of the radio LD signal sources. This relative phase information is then passed to the radio LD unit 71 through the controller interface 91. 2. Overview of Stjernholm Stjernholm, titled “Method for Estimating Traffic Density in Mobile Telephone Networks,” issued on May 23, 1995. IPR-1703, Ex. 1011. According to Petitioner: Stjernholm discloses a pattern recognition location technique whereby wireless signal characteristics of transmitting mobile stations are recorded for a given set of locations from which the signals are transmitted. Wireless signals received from mobile stations of unknown locations are then correlated against the recorded signal measurements to determine positions of the mobile stations. 1703-Pet. 49. 3. Overview of Olsson Olsson, titled “Method for Locating Mobile Stations in a Digital Telephone Network,” issued on October 8, 1996. IPR-1703, Ex. 1010. According to Petitioner: [A measuring mobile “MM”] 2 collects GPS location and cellular reference data, and supplies this information to a neural network. (Id. at 3:1–10.) The neural network calculates position information based on the cellular reference data, and compares it to the GPS data. (Id. at 3:36–45.) If there is a difference, the neural network adjusts its weightings to train itself. (Id. at 3:43– 45.) When a mobile device seeks to determine its location, the neural network applies its weightings to solve patterns in cellular measurements of the mobile device (“measurement reports”) and estimates a location of the mobile device. (Id. at 3:45–4:2.) 1703-Pet. 18–19. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 13 4. Independent claims 1, 18, 20, 25, 155, and 162 Petitioner asserts that independent claims 1, 18, 20, 25, 155, and 162 are unpatentable as obvious over Loomis. 1703-Pet. 36–48. According to Petitioner, Loomis discloses a hybrid location system to determine the location of a mobile station having two location determination (“LD”) units embodied within a mobile station, one satellite-based (“outdoor LD unit”), and the other based on the use of terrestrial radio signals (“radio LD unit”). Id. at 36 (citing IPR-1703, Ex. 1008 at Abstract, 4:39–5:13; and Figs. 1–3, 6, 8, 9). Petitioner further asserts that Loomis discloses that wireless signal measurements received at the mobile station may be transmitted to a central station, which uses the signals to determine the mobile station location, including at different time intervals, as well as the use of threshold error and accuracy indicators to select between two different location techniques to determine a resulting location estimate. Id. at 36–37 (citing IPR-1703, Ex. 1008, 8:29–35, 12:47–58). Petitioner concedes that “Loomis does not discuss in extensive detail the use of timing data of satellite signals to acquire location estimates,” but contends “such would have been obvious to one of skill in the art at the time of the claimed invention of the ’231 patent, given that the use of timing data is (and was) the standard, if not only, technique for position acquisition via satellite signals.” Id. at 37 (citing Ex. 1002 ¶ 51.) Patent Owner broadly argues that Petitioner has not sufficiently identified the missing elements not disclosed in Loomis, and relies on an unsupported conclusion as to why it would have been obvious to “modify or expand Loomis.” 1703-Prelim. Resp. 48–49. Contrary to Patent Owner’s IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 14 argument, we understand Petitioner to contend that Loomis discloses the claimed features, and that particular details recited in the verbose language of the claims of the ’231 patent would have been obvious to one of skill in the art in light of Loomis, not that Loomis must be modified or expanded. With regard to claim 1, Petitioner provides a minimal claim chart that identifies the portions of Loomis it contends corresponds to the features of claim 1, including the disclosure in Loomis of two different location determiners which each provide a location, one of which uses delay time of a signal from GPS satellites, and outputting a resulting location estimate. See id. at 37–38. Petitioner provides a similar showing with regard to claims 18, 20, 25, and 155. See id. at 39–48. Patent Owner broadly argues that Petitioner has failed to address all of the elements of the claims and provides no detailed analysis, but does not persuasively identify any feature of the claims not disclosed by the portions of Loomis relied upon by Petitioner. 1703-Prelim. Resp. 33–45. We are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claims 1, 18, 20, 25, 155, and 162 would have been obvious over Loomis. 5. Dependent claims 27, 78, 81, and 215 Claims 27 and 81 depend from claim 25. Claim 78 depends from claim 20. Claim 215 depends from claim 1. Petitioner asserts that claims 27, 78, 81, and 215 are unpatentable as obvious over Loomis. 1703-Pet. 44– 45, 48. For claims 27, 78, and 81, Patent Owner relies upon the same arguments asserted with respect to the independent claims on which they depend. 1703-Prelim. Resp. 45–46. As to claim 215, Patent Owner argues IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 15 that the citation to Loomis with no explanation is wholly insufficient. Id. Patent Owner, however, does not persuasively identify any feature of the claims not disclosed by the portions of Loomis relied upon by Petitioner. We are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claims 27, 78, 81, and 215 would have been obvious over Loomis. 6. Claims 17, 40, and 72 Claim 40, which depends from claim 1, further requires that the first and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 16 from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17. 7. Claims 3, 6, 7, and 11 Petitioner asserts that claims 3, 6, and 7, which depend from claim 1, as well as independent claim 11, are unpatentable as obvious over Loomis and Stjernholm. 1703-Pet. 49–52. Petitioner provides claims charts identifying how it contends each of the elements of the claims is disclosed by Loomis in combination with Stjernholm. Id. at 50–52. Patent Owner argues that Petitioner has failed to identify the difference in the asserted art and provides no articulated reasoning with some rational underpinning. 1703-Prelim. Resp. 52–56. Petitioner asserts that claims 3, 6, 7, and 11 “recite the use of pattern- recognition location technique as one of the multiple location techniques to be used.” 1703-Pet. 49. According to Petitioner, Loomis “teaches that any of various known terrestrial techniques can be used to augment GPS location determination,” and the addition of the pattern-recognition location technique of Stjernholm to Loomis is “merely a combination of familiar elements according to known methods which yields predictable results.” Id. (citing IPR-1703, Ex. 1002 ¶ 52). We are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claims 3, 6, 7, and 11 would have been obvious over Loomis. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 17 8. Claim 24 Claim 24 depends from claim 20 and further requires “one or more of: (a) a velocity of the mobile station, (b) an acceleration of the mobile station, and (c) one or more geographical features determined using said at least one resulting location estimate.” In addition to providing a claim chart mapping the features of claim 24 to Loomis and Olsson, Petitioner contends that: Loomis discloses determining the position of mobile stations periodically, and Olsson discloses determining the velocity of a mobile station. It would have been known to one of ordinary skilled in the art that periodic position determination can be used to determine a velocity. Incorporating the teaching of Olsson to Loomis would have simply entailed applying a known technique to a known method that is ready for improvement to yield predictable results. (See [IPR-1703 Ex 1002] ¶ 53.) 1703-Pet. 53. Patent Owner argues, among other things, that Petitioner failed to provide anew a claim chart for claim 20 on which claim 24 depends. 1703- Prelim. Resp. 57–59. Petitioner’s allegations concerning claim 20 as obvious over Loomis, addressed above, apply equally to claim 24, with only the additional limitations of claim 24 necessitating the combination with Olsson. We have considered Patent Owner’s arguments, and are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claim 24 would have been obvious over Loomis and Olsson. 9. Claim 165 Claim 165, which depends from claim 162, further requires, among other things, “preferring a less recent one of the first location related response information and the second location related response information IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 18 when the other of the first location related response information and the second location related response information indicates an unsatisfactory result for location determination.” In addition to providing a claim chart mapping the features of claim 165 to Loomis and Olsson, Petitioner contends that: Loomis discloses periodically obtaining the position of a mobile station and discarding location information that fails to meet an acceptable level of accuracy. Olsson teaches preferring less recently acquired location information (i.e., reference location information) when compared to a less satisfactory, more recently obtained location information. To prefer an older, but more accurate location is a known technique in the art since accuracy of a position fix is often the more important factor in determining whether a position determination is satisfactory. (See [IPR-1703 Ex 1002] ¶ 55.) Combining Loomis and Olsson is simply applying a known technique to a known method ready for improvement to yield predictable results. (See id.) 1703-Pet. 53–54. Patent Owner argues, among other things, that Petitioner failed to provide anew a claim chart for claim 162 on which claim 165 depends. 1703-Prelim. Resp. 57–60. Petitioner’s allegations concerning claim 162 as obvious over Loomis, addressed above, apply equally to claim 165, with only the additional limitations of claim 165 necessitating the combination with Olsson. We have considered Patent Owner’s arguments, and are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claim 165 would have been obvious over Loomis and Olsson. 10. Claim 39 Petitioner contends independent claim 39 would have been obvious over Loomis and Olsson, with Loomis disclosing all of the claimed features IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 19 other than “determining a likely roadway upon which a mobile station is located,” as disclosed by Olsson. In addition to providing a claim chart mapping the features of claim 39 to Loomis and Olsson, Petitioner contends that: Loomis discloses displaying the position of the mobile station, and Olsson discloses displaying the position of a mobile station on a map relative to positions of roads. It would have been obvious to one of ordinary skill in the art to incorporate the teachings of Olsson into Loomis, given that the use of a road map to display the position of a mobile station is helpful to a user, to be able to visually assess the location of a mobile station relative to the surroundings. (See [IPR-1703 Ex 1002,] ¶ 54.) Displaying position information on a map is simply the use of a known technique to improve similar methods in the same way. (See id.) 1703-Pet. 53. Patent Owner argues, among other things, that Petitioner ignores elements of the claim, particularly “unless there is a reduced or no effectiveness for locating the mobile station by wireless timing signals according to (a).” 1703-Prelim. Resp. 57–58. Patent Owner, however, does not persuasively identify any feature of claim 39 not disclosed by the portions of Loomis relied upon by Petitioner. We have considered Patent Owner’s arguments, and are persuaded Petitioner has shown a reasonable likelihood that it would prevail in showing claim 165 would have been obvious over Loomis and Olsson. C. Asserted Obviousness Based on Bruno Petitioner contends that claims 17, 40, and 72 would have been obvious over Bruno. 1703-Pet. 37–48. Bruno teaches a system for position determination via radio frequency (RF) navigation signals. IPR-1703, Ex. 1007, 2:14–16. The system IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 20 comprises three elements including (1) a Global Positioning System (GPS), (2) GPS-like signals broadcast at a different frequency, and (3) GPS-like RF signposts. Id. at 2:17–19. The first element of the system provides world- wide positioning via a receiver that determines its position by using signals broadcasted by GPS satellites. Id. at 2:20–24. The second element of the system involves embedding GPS-like signals within the communication bandwidth of wireless communication systems. Id. at 2:25–30. The third element involves use of GPS-like RF broadcasts that mark the location of the broadcast. Id. at 2:53–55. As discussed above, claim 40 requires first and second location estimation determiners that determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” A petition must include a “detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Petitioner fails to address the relevant limitation of claim 17. See 1703-Pet. 16–17. Regarding claim 40, Petitioner provides only a conclusory assertion that “Bruno’s techniques are independent” followed by a string citation. Petitioner’s unexplained and unsupported allegations fail to demonstrate a reasonable likelihood that it would prevail. Moreover, we are not persuaded that “Bruno’s techniques are independent.” Bruno teaches, for example, that incoming signals—cellular, GPS, and RF signpost—“have separate front ends, but share the middle and IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 21 end stages of the GPS receiver.” Ex. 1007, 9:2–4. Specifically, they are all routed to Pseudorange Measurements stage 9-13 of the GPS receiver, and then are sent to Position Calculation stage 9-14. See Ex. 1007, Fig. 9, 9:21– 23. This is consistent with Bruno’s teaching that the broadcast signals and signpost signals are “GPS-like.” Id. at 2:17–19. Additionally, Bruno teaches that the system is “integrated” (id. at 10:34). Bruno also teaches the timing of the navigation signal sent over the communication or cellular system “preferably, is slaved to the GPS system.” Id. at 3:67–4:1. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17. Petitioner’s unexplained and unsupported allegations fail to demonstrate a reasonable likelihood that it would prevail in showing any of claims 17, 40, or 72 would have been obvious over Bruno. D. Asserted Obviousness Based on Green and Hashimoto Petitioner contends that claims 17, 40, and 72 would have been obvious over Green and Hashimoto. 1702-Pet. 39–48. According to Petitioner, “Green is directed to a network-based system for determining location of cellular phones in which a coarse position is first determined by, e.g., using one or more of AOA, TOA or TDOA techniques using telephone transmissions,” and the system “may be augmented with a GPS receiver in the ‘rover’ (i.e., handset).” 1702-Pet. 39. Petitioner also contends that “Hashimoto discloses a position information management system in which a portable terminal 11 includes plural different types of location determination IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 22 means, including GPS, telephone, PHS ‘Handy-phone,’ and radio marker.” Id. at 39–40. As discussed above, claim 40 requires first and second location estimation determiners that determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” A petition must include a “detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Petitioner fails to address the relevant limitation of claim 17. See 1702-Pet. 45 (contending only that Green “discloses obtaining location information using time delays between mobile station and base stations,” and that “[t]he coarse position obtained from time delays is corrected by using surveyed wireless signaling characteristics.”). Regarding claim 40, Petitioner asserts in its claim chart only that “Green discloses that independent GPS can augment other techniques,” (citing IPR-1702, Ex. 1035, 7:45–46, which states “[f]inally, whatever geolocation technique or techniques are used can be augmented with a GPS receiver in the rover 16”), and that “Hashimoto discloses independent determination,” (citing IPR-1702, Ex. 1036 “e.g., FIG. 2”). Absent any explanation, we discern no sufficient support for Petitioner’s assertion from the cited statement in Green or Figure 2 of Hashimoto. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 23 information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17. Petitioner’s unexplained and unsupported allegations fail to demonstrate a reasonable likelihood that it would prevail in showing any of claims 17, 40, or 72 would have been obvious over Green and Hashimoto. E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a). IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 24 III. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted in IPR2015-01703 with respect to the following grounds of unpatentability: (1) claims 1, 18, 20, 25, 27, 78, 81, 155, 162, and 215 as obvious over Loomis under 35 U.S.C. § 103(a); (2) claims 3, 6, 7, and 11 as obvious over Loomis and Stjernholm under 35 U.S.C. § 103(a); and, (3) claims 24, 39, and 165 as obvious over Loomis and Olsson under 35 U.S.C. § 103(a); FURTHER ORDERED that inter partes review is not instituted in IPR2015-001702; FURTHER ORDERED that no ground other than those specifically instituted above is authorized for the inter partes review; FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ’231 patent is hereby instituted in IPR2015-01703 commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. IPR2015-01702 and IPR2015-01703 Patent 7,764,231 B1 25 PETITIONER: David L. Fehrman Martin Noonen MORRISON & FOERSTER LLP 10684-TracBeam-IPR@mofo.com PATENT OWNERS: Sean Luner DOVEL AND LUNER, LLP. sean@dovellaw.com Steven C. Sereboff SOCAL IP LAW GROUP LLP. ssereboff@socalio.co Copy with citationCopy as parenthetical citation