Sonitor Technologies, Inc.v.Centrak, Inc.

Patent Trial and Appeal Board

Jan 28, 2015

12986519 (P.T.A.B. Jan. 28, 2015)

Trials@uspto.gov Paper No. 9
571-272-7822 Entered January 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONITOR TECHNOLOGIES, INC.,
Petitioner,

v.

CENTRAK, INC.,
Patent Owner.
____________

Case IPR2014-01219
Patent 8,604,909 B1
____________

Before LINDA M. GAUDETTE, JUSTIN T. ARBES, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
On July 30, 2014, Petitioner, Sonitor Technologies, Inc., filed a
Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–14,
16–24, and 26–28 of U.S. Patent No. 8,604,909 B1 (Ex. 1001, “the ’909
patent”). Patent Owner, CenTrak, Inc., timely filed a Preliminary Response
(Paper 8, “Prelim. Resp.”), including a copy of a “Disclaimer in Patent under
37 CFR 1.321(a)” filed November 5, 2014, wherein Patent Owner
disclaimed claims 27 and 28 of the ’909 patent. Prelim. Resp. 1 n.1; Ex. 1.
1

We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
partes review may not be instituted “unless . . . 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 that the information presented in the Petition does not establish a
reasonable likelihood that Petitioner would prevail in showing the
unpatentability of any of claims 1–14, 16–24, or 26 on the grounds set forth
in the Petition. With respect to claims 27 and 28, 37 C.F.R. § 42.107(e)
provides that “[n]o inter partes review will be instituted based on disclaimed
claims.” Accordingly, we deny Petitioner’s request to institute an inter
partes review of claims 1–14, 16–24, and 26–28 of the ’909 patent.

1
We note that exhibits filed by a patent owner must be numbered
sequentially in the “2001–2999” range. 37 C.F.R. § 42.63(c).
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II. BACKGROUND
A. Related Matters
The ’909 patent is asserted in CenTrak, Inc. v. Sonitor Technologies,
Inc., Civil Action No. 1:14-cv-00183-RGA, filed February 12, 2014, in the
United States District Court for the District of Delaware. Pet. 1.
B. The ’909 Patent (Ex. 1001)
The ’909 patent, entitled “Methods and Systems for Synchronized
Ultrasonic Real Time Location,” issued on December 10, 2013, from U.S.
Patent Application No. 12/986,519, filed January 7, 2011, as a division of
U.S. Patent Application No. 12/016,547, filed January 18, 2008. The ’909
patent also claims the benefit of U.S. Provisional Application No.
60/881,269, filed January 20, 2007.
The ’909 patent generally relates to “real-time location” (RTL)
systems for determining the location and identity of portable devices (e.g.,
tags that may be attached to people or equipment), using signals sent
between the devices and fixed base stations. Ex. 1001, Abstract.
The Background of the Invention (Ex. 1001, col. 1, ll. 23–61) explains
that RTL systems using radio frequency (RF) and infrared (IR) transmitters
were known in the prior art but that the prior art systems have various
drawbacks. Conventional tag-based IR transmitters, for example, require a
line-of-sight connection with IR receivers, making them prone to lack of
reception if the line of sight is blocked and limiting their reliability. Id. at
col. 1, ll. 29–40. Also, because the receivers are “open” at all times, they are
generally hard-wired for power and connectivity, increasing the installation
complexity and cost. Id. at col. 1, ll. 40–44. An alternative arrangement
employs transmitters with substantially higher transmission power in the
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base stations and receivers in the tags; this helps with reliability, but not with
the need for hard-wiring. Id. at col. 1, ll. 45–51. Also, high burst repetition
rates from the transmitters can result in interference with, for example,
television remote controls in hospital rooms, whereas systems that transmit
relatively infrequently in order to avoid causing interference are problematic
because they need to search continuously for IR signals with an open IR
receiver and thereby drain battery power in the tags. Id. at col. 1, ll. 51–61.
The invention of the ’909 patent addresses these problems by
synchronizing the tags and the base stations so that the tags can save power
by being in a sleep mode when the base station is not transmitting. Id. at
col. 3, ll. 63–67. This is achieved by sending “timing synchronization
information” (“TSI”) to the tags. Id. at col. 3, ll. 54–56. The invention uses
the TSI to synchronize activation of the portable devices’ receivers with the
transmission timing of the base stations. Id. at col. 3, ll. 56–61.
C. Illustrative Claims
Of the challenged claims, claims 1, 3, 4, 7, 8, 12, 13, 16, and 26 are
independent.
Independent claims 1, 3, 4, 7, 8, 12, and 13, as well as dependent
claims 2, 5, 6, 9–11, 14, and 18–24, are directed to systems “for determining
a location and an identity of a portable device,” including: (1) means for
transmitting timing synchronization information; (2) a plurality of stationary
ultrasonic base stations configured to (a) receive the TSI and (b) transmit a
corresponding ultrasonic location code, representing the location of the base
station, in a time period based on the received TSI; and (3) a plurality of
portable devices configured to (a) receive the TSI, (b) detect the ultrasonic
location codes in the time periods based on the received TSI, and
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(c) transmit an output signal that includes a portable device ID representative
of the portable device as well as the detected location code. Claim 1 is
illustrative:
1.
[1.1]
A system for determining a location and an identity of
a portable device, the system comprising:
[1.2]
means for transmitting timing synchronization
information including a plurality of RF transceivers
coupled to a backbone network and
[1.3]
a time server
generating the timing synchronization information;
[1.4]
wherein each of the plurality of RF transceivers
periodically transmits a request to the time server to
receive the timing synchronization information;
[1.5]
a plurality of stationary ultrasonic base stations, each
ultrasonic base station configured
[1.6]
to receive the
timing synchronization information and
[1.7]
to transmit a
corresponding ultrasonic location code in a time period
based on the received timing synchronization
information, each ultrasonic location code representative
of a location of the respective ultrasonic base station; and
[1.8]
a plurality of portable devices, each portable device
configured to
[1.8.1]
1) receive the timing synchronization
information,
[1.8.2]
2) detect the ultrasonic location codes
from the ultrasonic base stations and
[1.8.3]
3) transmit an
output signal including a portable device ID
representative of the portable device and the detected
location code,
[1.9]
wherein each portable device is synchronized to detect
the ultrasonic location code in the time period based on
the received timing synchronization information.
Ex. 1001, claim 1 (bracketed paragraph numbering added by Petitioner,
Pet. 6–8).
Independent claims 16 and 26 are directed to ultrasonic base stations
that include: (1) an RF receiver coupled to a time server via a backbone
network and configured to receive TSI from the time server via the
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backbone network; and (2) an ultrasonic transmitter configured to transmit
an ultrasonic location code, representing the location of the base station, in a
time period based on the received TSI. Claim 26 is illustrative:
26.
[26.1]
An ultrasonic base station, comprising:
[26.2]
a radio frequency (RF) receiver configured to receive timing
synchronization information; and
[26.3 & 26.4]
an ultrasonic transmitter configured to transmit an
ultrasonic location code in a time period based on the received
timing synchronization information, the ultrasonic location
code representative of a location of the ultrasonic base station,
[26.5]
wherein the RF receiver is configured to receive beacons in
predetermined time slots, the beacons including the timing
synchronization information and respective time delay
information relative to a unified time of origin.
Ex. 1001, claim 26 (bracketed paragraph numbering added by Petitioner,
Pet. 35–36).
D. Evidence Relied Upon
Petitioner’s patentability challenges are based upon the following
references:
References Patents/Printed Publications Exhibit
Carter US 6,958,677 B1 1003
Amorai-Moriya US 6,141,293 1004
Marco
A. Marco et al., Location-based services for
elderly and disabled people, 31 COMPUTER
COMM. 1055 (2008) (available online January 1,
2008)
1005
Mills
David L. Mills, Internet Time Synchronization:
The Network Time Protocol, 39(10) IEEE
TRANSACTIONS COMM. 1482 (1991)
1007

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Petitioner also relies on the Declaration of Robert Kline-Schoder,
Ph.D. regarding U.S. Patent No. 8,604,909 (Ex. 1002).
E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the challenged claims on the
following seven grounds:
References Basis Claims Challenged
Carter and Mills § 103(a) 1, 5, 9–11, 14, 16–18
Carter § 102(b) 7, 8, 12, 13, 21–24
Amorai-Moriya § 102(b) 3, 7, 8, 26
Amorai-Moriya and Mills § 103(a) 4
Amorai-Moriya and Carter § 103(a) 19
Marco § 102(a) 1–7, 9–12, 14, 16, 17, 26
Marco and Carter § 103(a) 18–21, 23

III. CLAIM CONSTRUCTION
In an inter partes review proceeding, we assign claim terms of an
unexpired patent their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Within that framework, terms generally are given their ordinary and
customary meaning, as would be understood by a person of ordinary skill in
the art, in the context of the entire patent disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner asks us to construe three phrases: (1) “means for
transmitting timing synchronization information,” as recited in claims 1, 3,
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4, 7, 8, 12, and 13; (2) “means for receiving the output signal from each of
the portable devices,” as recited in claim 2; and (3) “backbone network,” as
recited in claims 1, 9, and 16. Pet. 4–6. Patent Owner responds to
Petitioner’s proposed construction of only the first of these terms and
additionally asks us to construe two other terms: (4) “detect the ultrasonic
location codes,” as recited in claims 1, 3, 4, 7, 8, 12, and 13; and (5) “time
delay information,” as recited in claims 3 and 26. Prelim. Resp. 8–16.
A. “detect the ultrasonic location codes”
Patent Owner argues that although Petitioner has not proposed a
definition for the phrase “detect the ultrasonic location codes,” the Petition
appears to conflate detecting the location codes with simply receiving the
ultrasonic signal itself. Prelim. Resp. 12. Patent Owner argues that this
position disregards the specification and claims of the ’909 patent, which
repeatedly draw a firm distinction between merely detecting or receiving an
ultrasonic signal, on the one hand, and detecting the base station location
code included in that ultrasonic signal, on the other, and is also in conflict
with the ordinary meaning of the term “detect.” Id. at 12–13. Patent Owner,
accordingly, urges us to construe the phrase to mean “to recover the location
codes from the [ultrasonic] signal.” Id. at 14.
We agree with and adopt Patent Owner’s proposed construction as the
broadest reasonable interpretation of “detect the ultrasonic location codes” in
view of the ’909 patent and the ordinary usage of the term “detect” in the art.
As pointed out by Patent Owner, for example, “claim 7 states that the
portable device is configured to ‘detect the ultrasonic location codes from
the ultrasonic signals transmitted by the ultrasonic base stations.’ (Emphasis
added),” whereas claim 18 merely “states instead that the portable devices
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‘receive ultrasonic signals’” and does not recite “detect[ing] the ultrasonic
location codes.” Id. at 13. We further agree with Patent Owner that such
construction is also consistent with the ordinary meaning of “detection” in
the art. See id. (citing Alliance for Telecommunications Industry Solutions
(ATIS) Telecom Glossary at http://www.atis.org/glossary/definition.aspx?id
=7128 (defining “detection” as “[t]he recovery of information from an
electrical or electromagnetic signal”) (Ex. 3001)).
2

Accordingly, for purposes of this decision, we construe “detect the
ultrasonic location codes” to mean “recover the ultrasonic location codes
from the ultrasonic signal.”
B. “time delay information”
Patent Owner argues that the ’909 patent makes clear that the phrase
“time delay information,” as recited in claims 3 and 26, specifically refers to
the “delay until the next transmission.” Prelim. Resp. 15–16 (citing
Ex. 1001, col. 6, ll. 32–39, col. 8, ll. 16–21, 24–29).
Although each instance of the phrase “time delay” in the ’909 patent
specification refers to a time delay “to a next beacon transmission time”
(see, e.g., Ex. 1001, col. 8, ll. 17–18, 20–21), “to an IR . . . transmission
time” (e.g., id. at col. 8, l. 26), or both (id. at col. 6, ll. 30–31, 33–35, col. 8,
ll. 11–13), we do not find such usage to constitute a sufficiently clear,
deliberate, and precise definition as to overcome the presumption that the

2
Although we have exercised our discretion to consider the cited definition
and enter a copy as Ex. 3001, we note that Patent Owner was required to file
a copy of this evidence as an exhibit rather than simply citing to a web
address. See 37 C.F.R. § 42.63(a) (“All evidence must be filed in the form
of an exhibit.”). We also note that the same definition is set forth in Federal
Standard 1037C (1996). See http://www.its.bldrdoc.gov/fs-1037/dir-011/
_1584.htm (Ex. 3002).
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phrase should be given its ordinary and customary meaning. See In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific
terms used to describe invention, but must do so “with reasonable clarity,
deliberateness, and precision” and, if done, must “‘set out his uncommon
definition in some manner within the patent disclosure’ so as to give one of
ordinary skill in the art notice of the change” in meaning); see also In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have
cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.”).
Moreover, we cannot discern how construing the phrase “time delay
information” would add any clarity to the claim phrase itself. Accordingly,
we conclude that no explicit construction of “time delay information” is
either warranted or necessary.
C. Remaining Terms
We conclude that it is not necessary for our determination of whether
to institute inter partes review of the ’909 patent to construe expressly any
additional claim terms.

IV. ANALYSIS
We now turn to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in the Preliminary Response.
Asserted Ground of Obviousness of Claims 1, 5, 9–11, 14, and 16–18
over Carter and Mills
Carter is directed to an object location monitoring system that
includes beacons spatially distributed throughout an area to be monitored
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and transponders that attach to the objects to be tracked. Ex. 1003, Abstract,
col. 1, ll. 44–47. Each beacon intermittently transmits an RF or ultrasonic
(“US”) interrogation signal, and transponders that are in range of the beacon
receive and echo back the interrogation signal. Id. at col. 1, ll. 47–50. Each
beacon retransmits its interrogation signal, and any transponder response
thereto as received by the beacon, to a receiver that measures a time
difference between the two signals. Id. at col. 1, ll. 50–53. This time
difference reflects the signal propagation time and, thus, the distance
between the beacon and the transponder. Id. at col. 1, ll. 53–55. A receiver
analyzes the retransmitted signals from multiple beacons and uses a
triangulation method to determine the location of each transponder based on
the transponder’s distances from a set of beacons. Id., at col. 1, ll. 55–59.
Petitioner alleges Carter teaches every element of independent claims
1 and 16 of the ’909 patent except that “(1) Carter may not expressly
disclose more than one RF transceiver [1.2] in its ultrasonic embodiment and
(2) Carter does not expressly disclose the ultrasonic transceivers periodically
transmitting a request to the time server for the TSI [1.4].” Pet. 9, 11–13,
15–16. Petitioner alleges those features are provided by the combination
with Mills. Id. at 9, 11–12, 15–16.
Mills provides an overview of the Network Time Protocol (NTP). See
Ex. 1007, 1482. Mills teaches that NTP had been in regular operation on the
Internet for several years to synchronize distributed systems. Id. at 1482.
NTP is said to be easily implemented and usable in a variety of operating
system and networking environments. Id. at 1485.
Claim 1 of the ’909 patent recites, inter alia, “a plurality of portable
devices, each portable device configured to . . . detect the ultrasonic location
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codes from the ultrasonic base stations.” With respect to that limitation,
Petitioner alleges:
Carter discloses a plurality of transponders 32 that correspond
to the portable devices of the claim. [1.8] . . . . Each
transponder in Carter operates by listening for and echoing the
interrogation signals of nearby beacons. As each interrogation
signal includes a beacon ID portion, the transponder is
configured to detect the code [1.8.2]. (Ex. 1002 at 75 and 79;
Ex. 1003 at 4:11-13 and 3:27-28.)
Pet. 12–13.
We agree with Patent Owner (see Prelim. Resp. 24) that Petitioner has
not explained adequately how the cited portions of Carter describe portable
devices that “recover” the location codes from the ultrasonic signal as
required by the claim 1 limitation “detect the ultrasonic location codes.” See
supra Section III.A. The portions of Carter cited by Petitioner merely state,
respectively, that “[e]ach transponder 32 operates generally by listening for
and echoing the interrogation signals of nearby beacons 30 during an
assigned transponder timeslot,” and the “interrogation signal includes a
beacon ID portion and a portion for measuring distances to nearby
transponders 32.” Ex. 1003, col. 4, ll. 11–13, col. 3, ll. 27–28.
Unlike the method to which claim 1 of the ’909 patent is directed,
Carter uses a triangulation method to determine transponder locations based
on the transponders’ distances from a set of beacons. Ex. 1003, Abstract.
Patent Owner persuasively explains:
[T]he cited language in Carter explains that the portable devices
receive and echo back whatever signal is received from the US
base station. There is no description in Carter of any
mechanism in any of the described portable devices to actually
detect the ultrasonic location code from the ultrasonic signal.
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Importantly, as explained in Carter, the portable devices
simply echo back whatever signals they receive from the US
base stations, and the base stations measures a round-trip delay
time—from the time it transmitted the ultrasound signal until
the time it received the echo—to calculate distance. The
distances between the portable device and each of several base
stations are line segments that can then be used in a
trigonometric formula to determine the location of the object
associated with the portable device.
The ’909 patent describes and claims a completely
different type of location method.[] In the ’909 method, the
portable device receives the US base station ID, appends its
own portable device ID, and then transmits both IDs together in
a message, preferably via RF, to an RF base station. Both IDs
are then sent to the server, which determines that the asset is at
a particular location because the asset has forwarded the ID
associated with a particular US base station, and the location of
the US base station is known. . . .
. . . [I]n Carter, there is absolutely no use or reason for
the portable device—the tag—to detect the location code of the
base station. The portable device is only used to echo the
ultrasound signal back to the US base station, so that round trip
delay time can be measured by the base station. This is
precisely why the portable devices, advantageously, according
to Carter, never actually detect the US base station ID.
(Ex. 1003, col. 4, lines 27-40) (emphasis added.)
Prelim. Resp. 24–26.
Claim 1 also recites the limitation “wherein each of the plurality of RF
transceivers periodically transmits a request to the time server to receive the
timing synchronization information.” Ex. 1001, claim 1. Claim 16 similarly
recites “wherein the ultrasonic base station periodically transmits a request
to the time server, via the backbone network, to receive the timing
synchronization information.” Id., claim 16. As noted above, Petitioner
acknowledges that Carter does not expressly disclose transceivers
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periodically transmitting a request to the time server for the timing
synchronization information, but contends that feature is provided by the
combination with Mills. See Pet. 9. With respect to the “request . . . to
receive the timing synchronization information” limitation, Petitioner asserts
“Mills discloses a ‘procedure-call’ class of operation where elements send
NTP messages to a peer indicating its willingness to be synchronized by the
peer [1.4].” Pet. 12 (citing Ex. 1002, 67, 79; Ex. 1007, 1486). Petitioner
further states that, in the procedure-call class, “an NTP server operating in
client mode sends an NTP message to a peer operating in server mode,
which then interchanges the addresses, inserts the requested timestamps,
recalculates the checksum and optional authenticator and returns the
message immediately.” Id. at 10.
Although Petitioner’s assertions accurately reflect Mills’ disclosure,
we do not find, either in the portions of Mills cited by Petitioner or
elsewhere in Mills, any teaching or suggestion of RF transceivers
transmitting to a time server “requests . . . to receive . . . timing
synchronization information.” Rather, we understand Mills to describe only
a subnet of time servers that synchronize with one another and distribute
timing information to computers on the network. In the “procedure-call”
class of operation described in the passage quoted in the Petition, one time
server makes a procedure call to another time server to establish a common
timing. See Ex. 1007, 1486. Indeed, Mills explains that the Network Time
Protocol (NTP)—to which the Mills reference is directed—is a protocol
“used to organize and maintain a set of time servers.” Id. at 1484.
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Patent Owner persuasively argues:
[I]f the teaching of Mills were used by one of ordinary skill in
the art to modify the system of Carter, the most that these
combined teachings would show is that the time servers 36 of
Fig. 7 in Carter, which distribute the timing information (Ex.
1003, Fig. 1), would use the system of Mills to arrive at a
common clock. However, distribution of any timing
information to the ultrasound base stations 30, shown in Fig. 7
of Carter, and installed at a completely different part of the
network, would still utilize “local routing algorithms and time
daemons.” as taught in Mills. Nothing in Mills suggests that the
computers receiving TSI should periodically request
synchronization information from the time servers.
Thus, the suggested combination is missing a claim
limitation – it would still not provide a system in which an
“ultrasonic base station periodically transmits a request to the
time server, via the backbone network, to receive the timing
synchronization.”
Prelim. Resp. 19.
Because, on this record, Petitioner has not identified sufficient
evidence to support its contention that the combination of Carter and Mills
teaches or suggests (a) “a plurality of portable devices, each portable device
configured to . . . detect the ultrasonic location codes from the ultrasonic
base stations,” as recited in claim 1, or (2) that either a plurality of RF
transceivers or an ultrasonic base station “periodically transmits a request to
the time server to receive the timing synchronization information,” as recited
in independent claims 1 and 16, respectively, we conclude that the Petition
does not establish a reasonable likelihood of Petitioner prevailing at trial in
challenging claim 1 or claim 16, or any of dependent claims 5, 9–11, 14, 17,
and 18, under 35 U.S.C. § 103(a) over the combination of Carter and Mills.
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Asserted Ground of Anticipation of Claims 7, 8, 12, 13, and 21–24 by
Carter
Identically to claim 1, independent claims 8, 12, and 13 each recite “a
plurality of portable devices, each portable device configured to . . . detect
the ultrasonic location codes from the ultrasonic base stations.” Independent
claim 7 similarly recites “a plurality of portable devices, each portable
device . . . being configured to . . . detect the ultrasonic location codes from
the ultrasonic signals transmitted by the ultrasonic base stations.” Petitioner
does not separately address these limitations in connection with its asserted
ground for these claims, but relies on the discussion of the analogous
limitation in claim 1. See Pet. 16–17.
For the reasons stated in the discussion of Petitioner’s asserted ground
based on Carter and Mills above, Petitioner has not explained adequately
how Carter discloses “a plurality of portable devices, each portable device
. . . being configured to . . . detect the ultrasonic location codes from the
ultrasonic signals transmitted by the ultrasonic base stations,” as recited in
claim 7, or “a plurality of portable devices, each portable device configured
to . . . detect the ultrasonic location codes from the ultrasonic base stations,”
as recited in claims 8, 12, and 13. Accordingly, we conclude that the
Petition does not establish a reasonable likelihood of Petitioner prevailing at
trial in challenging any of claims 7, 8, 12, or 13, or of claims 21–24, which
depend, respectively, from claims 7, 8, 12, and 13, under 35 U.S.C. § 102(b)
over Carter.
Asserted Ground of Anticipation of Claims 3, 7, 8, and 26 by Amorai-
Moriya
Amorai-Moriya is directed to a system for tracking an object within a
surveillance area. Ex. 1004, Abstract. Figure 1 from Amorai-Moriya,
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reproduced below, illustrates an embodiment of Amorai-Moriya’s system
that includes “transmitting units” 26 fixed to object 24 to be tracked and
three or more “background units” 40 distributed in surveillance area 20 to
receive and determine the propagation time of ultrasound waves transmitted
from the transmitting units. Id. at col. 3, ll. 1–9, col. 11, ll. 46–65.

As shown in the embodiment of Figure 1, above, Amorai-Moriya’s
system for tracking an object includes control unit 50 that periodically
initiates position-determining cycles by transmitting an RF “trigger signal”
to be received by both the transmitting units and the background units. Id. at
col. 12, ll. 38–42. In response to the trigger signal, the transmitting units
transmit frequency-distinct ultrasound waves and then return to a pause state
until another trigger signal is received, and each background unit opens a
time window in which it is enabled to receive ultrasound waves. Id. at
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col. 12, ll. 55–61. The background units determine the frequency and arrival
time for each wave received while the window is open and transfer that
information to the control unit along with the identification of the specific
background unit. Id. at col. 12, l. 61–col. 13, l. 5. The control unit uses the
propagation times to calculate the position of the transmitting unit via a
triangulation method. Id. at col. 16, ll. 12–16. In an alternative
embodiment, Amorai-Moriya also discloses that the transmitting and
receiving functions can be reversed such that ultrasound waves may be
transmitted from the background units to the object, rather than vice versa.
Id. at col. 7, ll. 58–67.
Claims 3 and 8 of the ’909 patent both recite, inter alia, “a plurality of
portable devices, each portable device configured to . . . detect the ultrasonic
location codes from the ultrasonic base stations.” As discussed above, claim
7 similarly recites “a plurality of portable devices, each portable device . . .
being configured to . . . detect the ultrasonic location codes from the
ultrasonic signals transmitted by the ultrasonic base stations.”
Petitioner asserts with respect to this limitation in claim 3 that
Amorai-Moriya teaches transmitting unique IDs by ultrasound (Pet. 28
(citing Ex. 1004, col. 9, ll. 20–22)) and that those codes “are, at least in the
embodiment of Ex. 1004 at 7:58-67, transmitted by the ultrasonic base
stations (the background units) and received by the portable devices (the
transmitting units)” (Pet. 29 (citing Ex. 1004, col. 3, ll. 15–22, col. 7, ll. 58–
67)). Petitioner relies on the same assertions for claims 7 and 8. Pet. 33, 34.
In view of our above determination that the broadest reasonable
interpretation of the phrase “detect the ultrasonic location codes” is “to
recover the ultrasonic location codes from the ultrasonic signal,” and not
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simply to receive the signal, we agree with Patent Owner that Petitioner has
not explained adequately how the cited portions of Amorai-Moriya describe
“detect[ing]” location codes. Prelim. Resp. 33.
Amorai-Moriya’s disclosed system differs from the invention of
claims 3, 7, and 8 of the ’909 patent in its use of signal propagation time,
rather than base station location codes, to determine the location of an
object. See, e.g., Ex. 1004, col. 3, ll. 28–31 (explaining that “propagation
information including the measured time intervals and/or arrival times is
transferred, preferably by RF transmission, to the control unit, which
calculates precise position coordinates of the objects in the surveillance
area”), col. 5, l. 66–col. 6, l. 1 (“The control unit calculates the position of
each transmitting unit according to the arrival times of the waves.”), col. 9,
ll. 34–35 (“Preferably, calculating coordinates of the object includes using a
triangulation method.”). Patent Owner has persuasively argued that Amorai-
Moriya’s system does not require the tag to detect the actual location code
from the ultrasonic signal. Prelim. Resp. 33. Patent Owner explains:
[A]s with Carter, because the location methodology described
in Amorai does not locate objects by associating them with a
specific US base station based upon the US base station ID,
there is no need for the portable devices to incur the additional
processing power required to decode and retransmit any US
base station ID. . . .
Importantly, [Amorai-Moriya] explains that each
transmitting unit transmits on a unique frequency, and the
receiver simply determines frequency as a function of time.
(Ex. 1004, col. 3, lines 25-27) No suggestion is made for the
portable devices to detect any US location code, nor is there any
need to, given the location methodology [Amorai-Moriya] uses.
Id. at 33–34.
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Claim 3 additionally recites “at least one RF transceiver configured to
periodically transmit beacons in predetermined time slots . . . , the beacons
including the timing synchronization information and respective time delay
information relative to a unified time of origin.” Claim 26 similarly recites
the limitation “wherein the RF receiver is configured to receive beacons in
predetermined time slots, the beacons including the timing synchronization
information and respective time delay information relative to a unified time
of origin.”
With respect, specifically, to the claim phrase “the beacons including
the timing synchronization information and respective time delay
information relative to a unified time of origin” (emphasis added), Petitioner
argues:
The RF trigger signals of Amorai-Moriya include timing
synchronization information, as they are used by the system
components to synchronize transmission and receipt of
ultrasounds signals. (See Ex. 1004 at 12:55-62).
The RF trigger signals of Amorai-Moriya can also
include respective time delay information relative to a unified
time of origin. For example, Amorai-Moriya teaches that “in
other preferred embodiments of the present invention, each
triggering signal initiates transmission of a sequence of
ultrasound waves, rather than initiating only one transmission.
The transmitting unit includes an inner timer which initiates the
transmission at predetermined intervals.” (Ex. 1004 at 6:24-
28). Further: “In response to trigger signal 43, each
transmitting unit 26 transmits at a predetermined rate a
sequence of ultrasound waves 52, preferably with a constant
interval 54 between consecutive waves 52. Preferably, trigger
signal 43 is followed by, or otherwise includes, indication of
the number of waves 52 in the group.” (Ex. 1004 at 13:46-52).
By indicating the number of waves in the group, to be
transmitted at a predetermined interval, the trigger signal of
Amorai-Moriya includes respective time delay information
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relative to a unified time of origin (the time the trigger signal is
sent). (Ex. 1002 at 199-203).
Pet. 31–32.
Although the portions of Amorai-Moriya quoted by Petitioner disclose
a triggering signal that initiates transmission of a sequence of ultrasonic
waves, optionally including an indication of the number of waves to be
transmitted, and also disclose that the transmissions occur at predetermined
intervals, those portions also make clear that it is an inner timer in the
transmitting unit—rather than time delay information transmitted with the
timing synchronization information—that sets the transmission intervals.
See Ex. 1004, col. 6, ll. 24–28, col. 13, ll. 46–52. In contrast, claims 3 and
26 recite beacons that include time delay information in addition to the
timing synchronization information. We discern no disclosure of time delay
information being included either in triggering signals or otherwise being
transmitted in Amorai-Moriya. Accordingly, we agree with Patent Owner
that Petitioner has not shown that Amorai-Moriya “teach[es] that the proper
interval (i.e., the delay time) until the next transmission should be sent in the
trigger signal itself from the means for transmitting the TSI.” Prelim. Resp.
32. Rather, Amorai-Moriya “teaches the opposite—that the interval is preset
in the ultrasound transmitting unit.” Id.
Because Petitioner has not identified persuasive evidence that
Amorai-Moriya discloses “a plurality of portable devices, each portable
device configured to . . . detect the ultrasonic location codes from the
ultrasonic base stations,” as recited in claims 3 and 8; “a plurality of portable
devices, each portable device . . . being configured to . . . detect the
ultrasonic location codes from the ultrasonic signals transmitted by the
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ultrasonic base stations,” as recited in claim 7; or “beacons including the
timing synchronization information and respective time delay information
relative to a unified time of origin,” as recited in claims 3 and 26, we
conclude that the Petition does not establish a reasonable likelihood of
Petitioner prevailing at trial in challenging any of claims 3, 7, 8, or 26 under
35 U.S.C. § 102(b) over Amorai-Moriya.
Asserted Ground of Obviousness of Claim 4 over Amorai-Moriya and
Mills
Claim 4, like claim 3, recites “a plurality of portable devices, each
portable device configured to . . . detect the ultrasonic location codes from
the ultrasonic base stations.” Petitioner relies on the same arguments
regarding Amorai-Moriya for this limitation as for the corresponding
limitation in claim 3, relying on the combination with Mills only for the
teaching or suggestion of the limitation “at least one of the RF transceivers
configured to periodically transmit a request to another one of the RF
transceivers to receive the timing synchronization information.” Pet. 37–38.
We conclude, for the reasons set forth in connection with Petitioner’s
asserted ground based on Amorai-Moriya alone, that Petitioner has not
identified evidence to show, or otherwise explained how, Amorai-Moriya
teaches portable devices “configured to . . . detect the ultrasonic location
codes from the ultrasonic base stations.” Because Petitioner does not argue
that Mills teaches or suggests that element, we also conclude the Petition
does not establish a reasonable likelihood of Petitioner prevailing at trial in
challenging claim 4 under 35 U.S.C. § 103(a) over the combination of
Amorai-Moriya and Mills.
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Asserted Ground of Obviousness of Claim 19 over Amorai-Moriya
and Carter
Claim 19 depends from claim 3 and, therefore, includes the limitation
“a plurality of portable devices, each portable device configured to . . . detect
the ultrasonic location codes from the ultrasonic base stations.” Because we
conclude, for the reasons set forth in connection with Petitioner’s asserted
grounds based on various combinations of Carter, Mills, and Amorai-
Moriya, that Petitioner has not shown how Amorai-Moriya or Carter
discloses that limitation, we also conclude that the Petition does not establish
a reasonable likelihood of Petitioner prevailing at trial in challenging claim
19 under 35 U.S.C. § 103(a) over the combination of Amorai-Moriya and
Carter.
Asserted Ground of Anticipation of Claims 1–7, 9–12, 14, 16, 17, and
26 by Marco
3

Marco describes a system for providing location-based services for
the elderly and the disabled, using existing ZigBee radiofrequency and
ultrasound positioning technology to measure distances between mobile
devices, or “tags,” and beacons with known locations. Ex. 1005 at 1055,
1057. An overview of the system architecture is shown in Figure 1 from
Marco, reproduced below. Id. at 1057.

3
Petitioner asserts that Marco was “published at least as early as Jan. 1,
2008,” and is prior art under 35 U.S.C. § 102(a) because the challenged
claims are only entitled to the benefit of parent U.S. Patent Application No.
12/016,547, filed January 18, 2008, not U.S. Provisional Application No.
60/881,269, filed January 20, 2007. Pet. 2–3. We need not resolve this
issue, however, because even assuming that Marco is prior art, Petitioner has
not shown a reasonable likelihood of prevailing on its asserted grounds
based on the reference.
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The embodiment of Figure 1, above, shows beacons forming a ZigBee mesh
network backbone, into which the tags are also connected. Id. at 1058. The
RF transmitters in the network also double as ultrasound beacons that
transmit ultrasound “chirps” that are detected by the tags. Id. at 1059. The
tags measure the time-of-flight of the chirps. Id. A ZigBee coordinator acts
as the network gateway into a computer that configures the systems and
receives the transmit time of the ultrasound signals as measured by the tags.
Id. at 1058. With these transit times, it can identify the proximity or
multilateration cell containing the tag and compute its location. Id. Marco
also describes a multi-hop broadcast synchronization (MBS) method that
synchronizes the nodes in the system to a global network time (GNT). Id. at
1059.
As discussed above in connection with Petitioner’s asserted ground
based on Carter and Mills, independent claims 1 and 16 of the ’909 patent
recite, inter alia, the limitation “wherein each of the plurality of RF
transceivers periodically transmits a request to the time server to receive the
timing synchronization information.” With respect to this limitation,
Petitioner asserts:
Marco establishes a ZigBee grid network with a multi-hop
broadcast synchronization (MBS) method that includes one or
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more time servers (e.g., time stampers) that provide timing
synchronization information in response to requests. (Ex. 1005
at 1059; Ex. 1005 at Fig. 2). Propagators in the Marco system
transmit the GNT broadcast synchronization messages.
(Ex. 1005 at 1059). That the response from a time stamper to a
previous synchronization message is said to be sent by the
propagator “in the next synchronization message” shows that
the synchronization messages (“requests”) are periodic.
(Ex. 1005 at 1059). Accordingly, elements 1.3 and 1.4 are
taught by Marco. (Ex. 1002 at 258-260).
Pet. 43.
Upon review of Marco, Petitioner’s argument, and the cited
paragraphs 258–260 of Dr. Kline-Schoder’s Declaration, we discern no
disclosure in Marco of a plurality of RF transceivers periodically
transmitting requests to a time server to receive timing synchronization
information, as recited in claims 1 and 16. Petitioner relies on the sentence
“Time-stampers notify the propagators of the arrival timestamp of the
previous broadcast message, which will be sent by the propagator in the next
synchronization message” (Ex. 1005, 1059), as evidence of Marco’s
disclosure of this limitation. Pet. 43. But as Patent Owner correctly
explains (Prelim. Resp. 36–37), based on the context in which that sentence
appears, Marco is not discussing RF transceivers periodically requesting
timing synchronization information from a time server, but instead
describing a method to propagate global network time (GNT) to the nodes of
Marco’s network, and the “next synchronization message” refers simply to
the subsequent “hop” in Marco’s multi-hop broadcast synchronization
(MBS) method. Ex. 1005, 1059.
Independent claim 1, as well as independent claims 3, 4, and 12, also
recites “a plurality of portable devices, each portable device configured to
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. . . detect the ultrasonic location codes from the ultrasonic base stations.”
Claim 7 similarly recites “a plurality of portable devices, each portable
device configured to . . . detect the ultrasonic location codes from the
ultrasonic signals transmitted by the ultrasonic base stations.” Petitioner
asserts that “[t]he Marco system performs this function by timed
transmission of ultrasonic chirps that act as an identification code, which can
in turn be decoded into location information. (Ex. 1005 at 1062). Marco
thus discloses this claim element. (Ex. 1002 at 267).” Pet. 45.
In view of our above construction of the phrase “detect the ultrasonic
location codes,” we again disagree with Petitioner’s conclusion. Although
the ultrasonic chirps disclosed by Marco can act as an identification code
(see Ex. 1005, 1062), we agree with Patent Owner that, “[a]s explained in
the lower right hand column of p. 1059 of Marco, the tag simply measure[s]
a time of flight of the ultrasound chirp. It never actually detects any
ultrasonic location code, as required by the claims of the 909 patent – nor is
there any need to do so.” Prelim. Resp. 37.
As discussed in connection with Petitioner’s asserted ground based on
Amorai-Moriya, independent claims 3 and 26 recite “at least one RF
transceiver configured to periodically transmit beacons in predetermined
time slots . . . , the beacons including the timing synchronization information
and respective time delay information relative to a unified time of origin”
and “wherein the RF receiver is configured to receive beacons in
predetermined time slots, the beacons including the timing synchronization
information and respective time delay information relative to a unified time
of origin,” respectively. Petitioner asserts:
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Regarding element 3.9, the propagator node N9 of Marco
constitutes an RF transceiver and broadcasts synchronization
messages. (Ex. 1005 at 1059). The synchronization messages
are broadcast to multiple nodes and thus constitute beacons as
claimed. The synchronization messages must also be
“periodic” in order to maintain synchronization. The
propagator node N9 emits synchronization messages according
to some schedule, and therefore they are transmitted in
predetermined time slots. (See Ex. 1005 at 1059). The
synchronization messages are received by the ultrasonic base
station nodes, e.g., N6 and N10. (Ex. 1005 at Fig. 2). The
synchronization messages from propagator nodes are also
received by the plurality of portable devices (the tags).
(Ex. 1005 at 1059).
These synchronization messages include timing
synchronization information and respective time delay
information relative to a unified time of origin. For example,
with respect to timing synchronization information, Marco
teaches that “the arrival timestamp of the previous broadcast
message” is transmitted by node N9 in the “next broadcast
message.” (Ex. 1005 at 1059). With respect to the time delay
information, Marco teaches that the synchronization messages
allow the recipient nodes to establish a common time reference
point with other nodes of the network, in order to synchronize
the network with the “global time provider” node N1.
(Ex. 1005 at Fig. 2; Ex. 1005 at 1059). The arrival timestamps
in the synchronization messages constitute time delay
information relative to a unified time of origin, since the time-
stamper node N10 will have previously been synchronized with
the “global time provider” node N1 (by the action of nodes N1
and N6). (Ex. 1005 at 1059). The clock of the “global time
provider” node N1 defines a unified time of origin for the
network. Accordingly, Marco teaches this element and
anticipates claim 3. (Ex. 1002 at 276-280).
Pet. 48–49.
Although Petitioner asserts that “[t]hese synchronization messages
include timing synchronization information and respective time delay
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information relative to a unified time of origin,” we find no support for that
conclusion in the cited Figure 2, page 1059, or elsewhere in the Marco
reference. In particular, we disagree with Petitioner’s assertion that “[t]he
arrival timestamps in the synchronization messages constitute time delay
information relative to a unified time of origin, since the time-stamper node
N10 will have previously been synchronized with the ‘global time provider’
node N1 (by the action of nodes N1 and N6).” Pet. 49 (citing Ex. 1005,
1059).
Because Petitioner has not shown that Marco discloses “wherein each
of the plurality of RF transceivers periodically transmits a request to the time
server to receive the timing synchronization information,” as recited in
claims 1 and 16; “detect the ultrasonic location code,” as recited in claims 1,
3, 4, 7, and 12; or “beacons including the timing synchronization
information and respective time delay information relative to a unified time
of origin,” as recited in claims 3 and 26, we conclude that the Petition does
not establish a reasonable likelihood of Petitioner prevailing at trial in
challenging any of claims 1, 3, 4, 7, 12, 16, or 26, or of any of dependent
claims 2, 5, 6, 9–11, 14, and 17, under 35 U.S.C. § 102(a) over Marco.
Asserted Ground of Obviousness of Claims 18–21 and 23 over Marco
and Carter
Claims 18–21 and 23 depend from claims 1, 3, 4, 7, and 12,
respectively, and, therefore, each includes the limitation “a plurality of
portable devices, each portable device configured to . . . detect the ultrasonic
location codes from the ultrasonic base stations,” as recited in claims 1, 3, 4,
and 12, or the limitation “a plurality of portable devices, each portable
device configured to . . . detect the ultrasonic location codes from the
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ultrasonic signals transmitted by the ultrasonic base stations,” as recited in
claim 7. Because we have already concluded, as discussed above, that
neither Carter nor Marco discloses at least those limitations, we conclude
that the Petition also does not establish a reasonable likelihood of Petitioner
prevailing at trial in challenging claims 18–21 or 23 under 35 U.S.C.
§ 103(a) over the combination of Marco and Carter.

V. CONCLUSION
We conclude that Petitioner has not shown a reasonable likelihood
that it would prevail in demonstrating that any of the challenged claims of
the ’909 patent are unpatentable.

VI. ORDER
Upon consideration of the record before us, it is
ORDERED that the Petition is denied, and an inter partes review is
not instituted with respect to any claims of U.S. Patent No. 8,604,909 B1.

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PETITIONER:

Ronald E. Cahill
rcahill@nutter.com

Michael P. Visconti, III
mvisconti@nutter.com

PATENT OWNER:

Jeffrey I. Kaplan
jkaplan@kbsolaw.com

Dr. Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com