Polaris Wireless, Inc.v.TruePosition, Inc.

Patent Trial and Appeal Board

Nov 3, 2014

11150414 (P.T.A.B. Nov. 3, 2014)

Trials@uspto.gov Paper 62
571-272-7822 Entered: November 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

POLARIS WIRELESS, INC.,
Petitioner,

v.

TRUEPOSITION, INC.,
Patent Owner.
____________

Case IPR2013-00323
Patent 7,783,299 B2
____________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
Administrative Patent Judges.

KIM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
Polaris Wireless, Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 111–114 of U.S. Patent No. 7,783,299 B2 (Ex.
1001, “the ’299 patent”). Paper 1 (“Pet.”). Petitioner relies upon the
following prior art references:
Zell WO 99/33303 July 1, 1999 Ex. 1007
1

Abbadessa U.S. Patent 6,088,587 July 11, 2000 Ex. 1011
Havinis U.S. Patent 6,167,266 Dec. 26, 2000 Ex. 1012
TruePosition, Inc. (“Patent Owner”) timely filed a Patent Owner Preliminary
Response. Paper 6 (“Prelim. Resp.”). On November 15, 2013, the Board
instituted trial for claims 111–114 on the following grounds of
unpatentability:
Reference(s) Basis Claims Challenged
Zell § 102(b) 111–114
Abbadessa and Havinis § 103(a) 111–114
Paper 9 (“Dec.”).
After institution of trial, Patent Owner filed a Patent Owner Response.
Paper 21 (“PO Resp.”). Petitioner subsequently filed a Reply to the
Response. Paper 30 (“Reply”). Petitioner filed a Motion to Exclude (Paper
39; “Pet. Mot.”), to which Patent Owner filed an Opposition (Paper 47; “PO

1
Although Zell is Exhibit 1007, Zell is written in French. Accordingly, all
citations to Zell in this Decision will be to Exhibit 1008, which is a certified
English language translation of Zell.
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Opp.”). Petitioner then filed a Reply (Paper 51; “Pet. Reply”). Patent
Owner filed a Motion to Exclude (Paper 38; “PO Mot.”), to which Petitioner
filed an Opposition (Paper 48; “Pet. Opp.”). Patent Owner then filed a
Reply (Paper 50; “PO Reply”). An oral hearing was held on July 15, 2014.
The transcript of the hearing has been entered into the record. Paper 61.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Petitioner has shown by a preponderance of the evidence that claims
111–114 of the ’299 patent are unpatentable.
Petitioner’s Motion to Exclude is dismissed.
Patent Owner’s Motion to Exclude is dismissed-in-part and denied-in-
part.
B. Related Proceedings
Both Petitioner and Patent Owner indicate that the ’299 patent was
asserted against Petitioner in a co-pending district court case captioned
TruePosition, Inc. v. Polaris Wireless, Inc., Case No. 1:12-cv-00646
(D. Del.). Pet. 3; Paper 23, 2.
C. The ’299 patent
The subject matter of the ’299 patent relates to locating wireless
devices, also called mobile stations (“MS”), such as those used in analog or
digital cellular systems, personal communications systems, enhanced
specialized mobile radios, and other types of wireless communications
systems. Ex. 1001, 1:23–28. The ’299 patent discloses that wireless
location systems have been installed in more than 40,000 Base Transceiver
Stations (BTS), providing emergency location coverage for wireless
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subscribers across the continental United States. Ex. 1001, 1:62–67.
According to the ’299 patent, widespread deployment of these systems can
reduce emergency response time, save lives, and save enormous costs
because of the reduced use of emergency response resources. Ex. 1001, 2:6–
9. In addition, the ’299 patent discloses that surveys and studies have
concluded that various wireless applications, such as location sensitive
billing, fleet management, and others, will have great commercial value in
coming years. Ex. 1001, 2:9–12.
Early work related to wireless location systems used time difference
of arrival techniques to locate cellular telephones. Ex. 1001, 1:39–43. Over
time, the cellular industry has increased the number of air interface protocols
available for use by wireless telephones, increased the number of frequency
bands in which wireless or mobile telephones may operate, and expanded
the number of terms that refer or relate to mobile telephones to include
“personal communications services,” “wireless,” and others. Ex. 1001,
1:51–57.
Air interface protocols use two categories of channels, where a
channel is defined as one of multiple transmission paths within a single link
between points in a wireless network. Ex. 1001, 2:19–22. A channel may
be defined by frequency, by bandwidth, by synchronized time slots, by
encoding, by shift keying, by modulation scheme, or by any combination of
these parameters. Ex. 1001, 2:22–24. The first channel category, called a
control or access channel, is used to convey information about the wireless
telephone or transmitter, for initiating or terminating calls, or for transferring
intermittent data. Ex. 1001, 2:25–28. The second channel category, known
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as a voice or traffic channel, typically conveys voice or data
communications over an air interface. Ex. 1001, 2:33–35.
There are some difficulties in integrating wireless location services
with certain air interface protocols. For example, one protocol, Code-
Division Multiple Access (“CDMA”), uses both frequency and code
separation. Ex. 1001, 3:7–9. Because adjacent cell sites may use the same
frequency sets, CDMA must operate under very careful power control,
producing a situation known to those skilled in the art as the near-far
problem, making it difficult for most methods of wireless location to achieve
an accurate location. Ex. 1001, 3:9–13. In another example, networks that
use Global System for Mobile Communications (“GSM”) protocol also
present a number of potential problems to existing wireless location systems.
Ex. 1001, 4:8–9. GSM networks use encryption on the traffic channel and
use temporary nicknames (Temporary Mobile Station Identifiers (TMSID))
for security reasons, making it difficult to identify properly a desired MS in
order to trigger or task wireless location systems. Ex. 1001, 4:11–15.
Furthermore, an MS connected to GSM networks does not transmit signals
to regional receivers except during call setup, voice/data operation, and call
breakdown, reducing the number of opportunities to detect the MS.
Ex. 1001, 4:15–21.
To solve these and other problems, methods and systems are disclosed
that are employed by a wireless location system (WLS) for locating a
wireless device operating in a geographic area served by a wireless
communications system. Ex. 1001, 4:39–42. According to the ’299 patent,
an exemplary method includes monitoring a set of signaling links of a
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wireless communications system, and detecting at least one predefined
signaling transaction occurring on at least one predefined signaling link.
Ex. 1001, 4:42–46. Some examples of predefined signaling transactions are
a called-number trigger, idle mobile location trigger, lists of all mobile
devices recently in set of cells trigger, background location of all subscribers
in set of cells trigger, and smart proximity identification trigger. Ex. 1001,
4:66–5:4. “Then, in response to the detection of the at least one predefined
network transaction, at least one predefined location service is triggered.”
Ex. 1001, 4:46–48.
D. Illustrative Claim
Each of claims 111 to 114 is an independent claim. Independent
claim 111 is reproduced as follows:
111. A method for use by a wireless location system
(WLS) for locating a wireless device operating in a geographic
area served by a wireless communications system, comprising:
monitoring a set of predefined signaling links of the
wireless communications system, wherein said predefined
signaling links include at least an Abis link between a base
transceiver station (BTS) and a base station controller (BSC),
wherein said monitoring comprises passively monitoring said
set of predefined links such that the operation of said wireless
device and said wireless communications system is unaffected
by said monitoring;
detecting at least one predefined network transaction
involving a predefined trigger occurring on said Abis link,
wherein said predefined network transaction comprises at least
one of a mobile origination transaction and a mobile
termination transaction; and
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in response to the detection of said at least one
predefined network transaction involving a predefined trigger,
initiating at least one predefined location service.
Ex. 1001, 49:47–66.
II. ANALYSIS
For the challenged claims, Petitioner has to prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). In patent law, “the
name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998). Therefore, we begin with claim construction, and then
follow with specific analysis of the prior art.
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction 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). Under the broadest reasonable construction standard, claim terms are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. Trigger
Each of claims 111 to 114 recites some form of trigger. For example,
independent claims 111 and 113 each recite “predefined trigger,” and
independent claims 112 and 114 each recite “dialed digit trigger” and
“Mobile Station Identification (MSID) trigger.” Petitioner proposes
construing “trigger” as “an indicium . . . that directly and but-for causes an
action.” Pet. 15. Patent Owner proposes construing “trigger” as limited to
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“location services,” because the claim context and Specification limit
“triggers” to “location triggers.” PO Resp. 5–6. Petitioner counters that
adopting Patent Owner’s construction would render, improperly, superfluous
“initiating at least one predefined location service,” as recited in each of
claims 111–114. Reply 1.
The Specification discloses the following concerning “trigger”:
More particularly, but not exclusively, the present invention
relates to the use of prescribed network message sequences in
initiating, or triggering, location-based service applications
and re-use of existing radio interface parameters within such
message sequences to provide low-accuracy location or to allow
tuning of specialized receivers for high accuracy location for a
particular subscriber.
Ex. 1001, 1:28–35 (emphasis added).
The use of encryption on the traffic channel and the use of
temporary nicknames (Temporary Mobile Station Identifiers
(TMSID)) for security render radio network monitors of limited
usefulness for triggering or tasking wireless location systems.
Ex. 1001, 4:11–15 (emphasis added).
For example, while [U.S. Patent No. 6,782,264] describes a
system that monitors communications between a base
transceiver station and base station controller, and forwards
mobile station (MS) information to a Wireless Location System
for emergency call location, the advanced location-based
services applications described herein utilize additional network
messages as triggering events and information sources for a
wide variety of location-based services.
Ex. 1001, 7:46–53 (emphasis added).
The following procedures are used for location triggering
by the Radio Network Monitor (RNM) and/or Link Monitoring
System (LMS). A trigger for wireless location consists of a
transaction and a filter. If a transaction occurs and the filtering
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matches, then a location trigger is generated. Each procedure
contains the messaging needed for determination if a potential
location-triggering event has occurred. The description of each
message includes the fields for filtering by the preset rules for
positive determination of the occurrence of a location trigger.
Ex. 1001, 13:6–15 (emphases added). Any of the above-described
three types of triggers can be set to cause (trigger) a location
estimation procedure. Ex. 1001, 22:64–66. The Specification then
discloses the following concerning the content of a trigger:
Advanced triggers allow for radio or network events
(corresponding to specific messages or groups of messages
detectable by the LMS 11 or RNM 82) to generate high and low
accuracy location estimates. A triggering event, one that
initiates a location estimation, may be a detection of a
particular message or a field within a specific message.
Ex. 1001, 26:36–42 (emphases added). Based on the above, we construe
“trigger” as “an event, message, message field, or message sequence
sufficient to initiate, cause, or task an action related to location-based
services.” The “direct” and “but for” requirements in Petitioner’s proposed
construction are not necessary to make sense of the claim, and are not
required in the context of the Specification. Furthermore, the limiting of
“trigger” to “location triggers” is appropriate in view of the fact that
“trigger” is disclosed consistently in the Specification as being related to
“location,” and does not render superfluous the “initiating” limitation, as a
“trigger,” by itself, only need be capable of, but need not actually, “initiate”
any action.
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2. Network Transaction
Each of claims 111 to 114 recites “network transaction.” Petitioner
proposes that “network transaction” be construed as follows:
“one or more messages on the signaling links of a network;” a
genus that comprises the two subgenera: (i) Mobile Origination
Transaction, and (ii) Mobile Termination Transaction, and the
14 species transactions listed in Table 1 [at column 23] of the
’299 Patent.
Pet. 15. The Specification discloses the following concerning “network
transaction”: “The term ‘transaction’ refers to a message or message
sequence potentially useful to the advanced trigger invention.” Ex. 1001,
12:66–67 (emphasis added). The Specification then discloses the following
concerning the relationship between “network” and “transaction”:
Advanced triggers allow for radio or network events
(corresponding to specific messages or groups of messages
detectable by the LMS 11 or RNM 82) to generate high and low
accuracy location estimates. A triggering event, one that
initiates a location estimation, may be a detection of a particular
message or a field within a specific message. Network events
(also called network transactions) include: (1) Mobile
originations/terminations; (2) SMS originations/terminations;
(3) GPRS Mobile Attach/Detach events; (4) Location/ Routing
Update (that is, a GSM “location” update for the purposes of
mobility and roaming as opposed to a U-TDOA location event);
(5) Handovers; and (6) Call Releases.
Ex. 1001, 26:36–47 (emphases added). We construe “network transaction”
as “a message, message sequence, or group of messages detectable by a
network.” Petitioner’s construction is overly restrictive. No persuasive
reasoning is provided as to why the term must be regarded as a particular
genus, especially a genus that includes a combination of species.
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3. Mobile Origination Transaction
Independent claims 111 and 113 each recite “mobile origination
transaction.” Petitioner proposes that “mobile origination transaction” be
construed as follows:
a subgenus of ‘network transaction[’;] a genus that consists of
exactly the three species: Mobile Originated Call Placed,
Mobile Originated SMS Sent, and Mobile Originated Call
Disconnect.
Pet. 16. The Specification sets forth an explicit definition of “mobile
origination” as follows: “Mobile Origination is the act of a mobile device
placing a call to the wireless network to begin a conversation or data
session.” Ex. 1001, 23:31–33. Independent claims 111 and 113 recite that
“mobile origination transaction” is a type of “network transaction.”
Accordingly, we construe “mobile origination transaction” as “a message,
message sequence, or group of messages that are detectable by a network,
and correspond to the act of a mobile device placing a call to the wireless
network to begin a conversation or data session.”
Petitioner’s construction is overly restrictive. No persuasive
reasoning is provided as to why the term must be regarded as a particular
genus, especially a genus that includes a precise number of species.
4. Mobile Termination Transaction
Independent claims 111 and 113 each recite “mobile termination
transaction.” Petitioner proposes that “mobile termination transaction” be
construed as follows:
subgenus of ‘network transaction[’;] a genus that consists of
exactly the three species: Mobile Terminated Call Received,
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Mobile Terminated SMS Received, and Mobile Terminated
Call Disconnect.
Pet. 16. The Specification sets forth an explicit definition of “mobile
termination” as follows: “Mobile termination is the act of a mobile device
receiving a call from the wireless network to begin a conversation or data
session.” Ex. 1001, 24:62–64. Independent claims 111 and 113 recite that
“mobile termination transaction” is a type of “network transaction.”
Accordingly, we construe “mobile termination transaction” as “a message,
message sequence, or group of messages that are detectable by a network,
and correspond to the act of a mobile device receiving a call from the
wireless network to begin a conversation or data session.”
Petitioner’s construction is overly restrictive. No persuasive
reasoning is provided as to why the term must be regarded as a particular
genus, especially a genus that includes a precise number of species.
5. Means for Monitoring
Independent claims 113 and 114 each recite “means for monitoring a
set of predefined signaling links of the wireless communications system . . .
wherein said monitoring comprises passively monitoring said set of
predefined links such that the operation of said wireless device and said
wireless communications system is unaffected by said monitoring”
(hereafter “means for monitoring”). Petitioner asserts that the recited
“means for monitoring” should be construed in accordance with 35 U.S.C.
§ 112, sixth paragraph, and that the corresponding structure disclosed in the
Specification for the recited “means” is a computer (Link Monitoring
System 11) programmed to perform the recited “monitoring” function.
Petitioner also asserts that because the recited function is not described in
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the Specification as implemented by a computer without software, but
instead by software implemented on a general purpose computer, the
corresponding structure under § 112, sixth paragraph, is not the general
purpose computer, but any disclosed algorithm for performing the claimed
function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d
1328, 1333 (Fed. Cir. 2008) (“computer-implemented means-plus-function
term is limited to the corresponding structure disclosed in the specification
and equivalents thereof, and the corresponding structure is the algorithm”
(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir.
2005)) (internal quotation marks omitted)). The algorithm may be expressed
“in any understandable terms including as a mathematical formula, in prose,
or as a flow chart, or in any other manner that provides sufficient structure.”
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir.
2011) (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008)) (internal quotation marks omitted). Petitioner contends
that the Specification does not disclose any algorithm for performing the
recited “monitoring” function. Pet. 10–15; Reply 4.
Independent claims 113 and 114 each further define the recited
“monitoring” function as follows: “wherein said monitoring comprises
passively monitoring said set of predefined links such that the operation of
said wireless device and said wireless communications system is unaffected
by said monitoring.”
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The Specification further discloses the following concerning
“monitoring”:
As described in U.S. Pat. No. 6,782,264, it is possible to
monitor the base transceiver station (BTS) to base station
controller (BSC) link (e.g., the Abis link) for triggering
messages and information fields. A passive network monitor,
called the AMS (Abis Monitoring System) in the ’264 patent
and exemplified by monitoring the GSM Abis interface, has
been extended in accordance with the present invention and is
now called the Link Monitoring System, or LMS. The Link
Monitoring System (LMS) can monitor multiple cellular
network data links simultaneously, scanning for data of
interest, and can detect particular messages or data fields within
messages. Setting or tasking of messages or data fields of
interest can take place at any time.
Ex. 1001, 10:32–44 (emphases added).
The Link Monitoring System allows for passive, non-
intrusive monitoring of, for example, the GSM, GSM-R, GPRS,
and UTMS systems. In the exemplary case of a GSM system,
the LMS can passively receive data streams from the Abis
(BTS-BSC) interface, the A (BSC-MSC) interface, and the
GSM MAP interface (MSC-HLR, MSC-GMLC, MSC-GMSC
and MSC-gsmSCF). The term GSM MAP (where MAP stands
for Mobile Application Part) is used to refer to the global SS7
network and includes the C, D, E, F, H, Gc, Gf, Gr, Lh, and Lg
interfaces.
In the exemplary case of a GPRS system, the LMS can
passively receive data streams from the Abis (BTS-BSC or
BTS-PCU) interface, the Gb (PCU-SGSN) interface, and the
GSM MAP interface (SGSN-HLR, SGSN-GMLC and SGSN-
gsmSCF). In the exemplary case of a UMRS system, the LMS
can passively receive data streams from the Iub (Node B-RNC)
interface, the Iu-CS (RNC-MSC) interface, the Iu-PS (RNC-
SGSN) interface, and the GSM MAP interface (MSC-HLR,
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MSC-GMLC and MSC-gsmSCF, SGSN-HLR, SGSN-GMLC
and SGSN-gsmSCF).
The LMS can search received data for particular
messages or data fields within messages. Setting or tasking of
messages or data fields of interest can take place at any time.
Ex. 1001, 11:5–27 (emphases added). We discern the following algorithm
from the aforementioned portions of claims 113 and 114, and the
Specification: (1) passively receive data streams from a set of predefined
links such that the operation of said wireless device and said wireless
communications system is unaffected; and (2) scan or search the data
streams for data of interest, such as particular messages or data fields within
messages. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
Cir. 2008) (the algorithm may be expressed in “any understandable terms
including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure” (citations omitted)).
Accordingly, we construe the recited “means for monitoring” as
corresponding to a computer that implements the aforementioned algorithm.
6. Means for Detecting
Independent claims 113 and 114 each recite “means for detecting at
least one predefined network transaction involving a predefined trigger
occurring on at least one of said predefined signaling links” (hereafter
“means for detecting”). Petitioner asserts that the recited “means for
detecting” should be construed in accordance with 35 U.S.C. § 112, sixth
paragraph, and that the corresponding structure for the recited “means”
should be an algorithm disclosed in the Specification for performing the
recited “detecting” function implemented on a computer (Link Monitoring
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System 11). Petitioner contends that the Specification does not disclose any
algorithm for performing the recited “detecting” function. Pet. 10–15;
Reply 4.
The Specification discloses the following concerning “detecting”:
The Link Monitoring System (LMS) can monitor multiple
cellular network data links simultaneously, scanning for data of
interest, and can detect particular messages or data fields
within messages. Setting or tasking of messages or data fields
of interest can take place at any time. When a match occurs,
the LMS may be further triggered to perform a pre-set action,
such as a write to storage memory or forwarding of the
triggering message and (or) data fields to another system node.
Ex. 1001, 10:39–47 (emphases added).
The LMS can search received data for particular
messages or data fields within messages. Setting or tasking of
messages or data fields of interest can take place at any time.
When a match occurs, the LMS is further triggered to perform a
pre-set action, normally a write to storage memory or
forwarding of the triggering message and (or) data fields to
another system node.
Ex. 1001, 11:25–32 (emphasis added).
The term “filter” refers to pre-set rules in the LMS for analysis
of the monitored data within the transaction. Filters can
include MS identification, cell identification, location area
codes, or differences between the monitored and expected pre-
set information.
Ex. 1001, 13:1–5 (emphasis added). We discern the following algorithm
from the aforementioned portions of the Specification: (1) setting a
predefined trigger, the predefined trigger including particular messages or
data fields within messages; and (2) matching or filtering-out a network
transaction having the predefined trigger. Accordingly, we construe the
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recited “means for detecting” as corresponding to a computer that
implements the aforementioned algorithm.
7. Means for Initiating
Independent claims 113 and 114 each recite “means for initiating at
least one predefined location service in response to the detection of said at
least one predefined network transaction involving a predefined trigger”
(hereafter “means for initiating”). Petitioner asserts that the recited “means
for initiating” should be construed in accordance with 35 U.S.C. § 112, sixth
paragraph, and that the corresponding structure for the recited “means”
should be an algorithm disclosed in the Specification for performing the
recited “initiating” function implemented on a computer (Link Monitoring
System 11). Petitioner contends that the Specification does not disclose any
algorithm for performing the recited “initiating” function. Pet. 10–15; Reply
4.
The Specification discloses the following concerning “initiating”:
A triggering event, one that initiates a location estimation, may
be a detection of a particular message or a field within a
specific message.
Ex. 1001, 26:39–42.
A NULL value SMS may be sent to the mobile or the asset
finder location services application can initiate an ATI message
to the GMLC to initiate the location process.
Ex. 1001, 28:50–53 (emphasis added).
If the received LAI code differs from that stored on the SIM,
then the MS has entered another location area and initiates a
location update procedure to report the change to the Mobile
Switching Center (MSC).
Ex. 1001, 34:21–25 (emphasis added).
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At step 842, the mobile can initiate a location update
transaction with the wireless network. The LMS will detect the
location update event at step 843 and will collect and deliver
mobile identity data, the CGI, and RF channel to location to a
location application, for example.
Ex. 1001, 35:8–12 (emphases added).
A mobile can then initiate a network transaction at step 920.
The LMS can then detect the transaction at step 925 and collect
the MSID, Cell, and radio information from the transaction
messaging and store that information into memory at step 930.
Ex. 1001, 42:37–41 (emphases added). We discern this algorithm from the
aforementioned portions of the Specification: (1) collecting and storing
device information; and (2) sending the device information to a location
application. Accordingly, we construe the recited “means for initiating” as
corresponding to a computer that implements the aforementioned algorithm.
B. Principles of Law
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). While the elements must be arranged or combined in the same way
as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “A
reference anticipates a claim if it discloses the claimed invention such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.” In re
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Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301
F.2d 929, 936 (CCPA 1962)) (internal quotation marks and emphasis
omitted). In the context of anticipation, “it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.” In re
Preda, 401 F.2d 825, 826 (CCPA 1968).
Similarly, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). A prima facie case of obviousness is established
when the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048,
1051 (CCPA 1976). The level of ordinary skill in the art may be reflected
by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Alleged Anticipation by Zell
Petitioner asserts that claims 111–114 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Zell, and relies on Declarations of
Dr. Tarun Kumar Bhattacharya. Pet. 35–41; Reply 4–12 (citing Exs. 1005,
1037). Patent Owner disagrees with Petitioner’s assertions, and relies on the
Declaration of Dr. Oded Gottesman. PO Resp. 6–29 (citing Ex. 2014).
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1. Whether Zell is Prior Art
Zell has a publication date of July 1, 1999. The ’299 patent issued
from U.S. Patent Application No. 11/150,414 (Ex. 1034, “the ’414
application”), which has a filing date of June 10, 2005. Patent Owner asserts
that Zell is not prior art to claims 111–114 of the ’299 patent under
35 U.S.C. § 102(b), because claims 111–114 claim the benefit of priority
through a chain of continuing applications to U.S. Patent Application No.
09/227,764 (Ex. 2009, “the ’764 application”), which has a filing date of
January 8, 1999, i.e., before Zell’s publication date. PO Resp. 6–16.
Specifically, Patent Owner asserts that the ’764 application provides
sufficient written description support for the subject matter of claims 111–
114, and asserts that each application in the chain of continuing applications
has at least one inventor common with the immediately preceding
application, and that such a showing is sufficient to claim the benefit of
priority under 35 U.S.C. § 120.
Petitioner counters that Patent Owner has not met its burden of
showing that it is entitled to the benefit of priority of the ’764 application,
because it has failed to meet numerous requirements for obtaining such
priority under § 120. For example, Petitioner asserts that Patent Owner must
show that each application in the chain of priority has sufficient written
description support for the subject matter of claims 111–114, and that Patent
Owner has failed to do so. Petitioner asserts further that § 120 requires that
the two applications at issue must have at least one common inventor, which
requirement the ’414 application and the ’764 application do not meet.
According to the Petitioner, it is insufficient that each application in the
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chain of continuing applications has at least one inventor common with the
immediately preceding application in the chain. Reply 4–9.
a. Principles of Law
Section 120 (1999) prior to the implementation of the Leahy-Smith
America Invents Act of 2011 (“AIA”) reads as follows
2
:
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in an application previously filed in the United States, or as
provided by section 363 of this title, which is filed by an
inventor or inventors named in the previously filed
application shall have the same effect, as to such invention,
as though filed on the date of the prior application, if filed
before the patenting or abandonment of or termination of
proceedings on the first application or on an application
similarly entitled to the benefit of the filing date of the first
application and if it contains or is amended to contain a
specific reference to the earlier filed application.
Emphases added. Our reviewing court has stated the following concerning
claiming the benefit of priority under § 120:
Under § 120, a patent is entitled to the priority date of an
earlier filed application if (1) the written description of the
earlier filed application discloses the invention claimed in the
later filed application sufficient to satisfy the requirements of
§ 112; (2) the applications have at least one common
inventor; (3) the later application is filed before the issuance or
abandonment of the earlier filed application; and (4) the later
application contains a reference to the earlier filed application.
In addition, if the later filed application claims priority through

2
As the ’299 patent has a filing date before September 16, 2012, we refer to
the pre-AIA version of § 120.
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the heredity of a chain of applications, each application in the
chain must satisfy § 112.
In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011) (emphases added)
(citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
1997)).
If any application in the priority chain fails to make the requisite
disclosure of the claimed subject matter under 35 U.S.C. § 112, first
paragraph, the later-filed application is not entitled to the benefit of the filing
date preceding the break in disclosure within the priority chain. Hollmer v.
Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012). To gain the benefit of the
filing date of an earlier-filed application under 35 U.S.C. § 120, each
application in the chain leading back to the earlier application must comply
with the written-description requirement of 35 U.S.C. § 112, first paragraph.
Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir.
2007); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
1997); In re Hogan, 559 F.2d 595, 609 (CCPA 1977); In re Schneider, 481
F.2d 1350, 1356 (CCPA 1973).
b. Statutory Interpretation
As articulated by our reviewing court, the burden is on Patent Owner
to show that it meets each of several requirements in order to claim the
benefit of priority of a prior application under § 120. In re NTP, Inc.,
654 F.3d at 1277. Among them is the requirement that the applications have
at least one common inventor. Fundamentally, Petitioner and Patent Owner
disagree as to which applications in a chain of continuing applications must
have a common inventor. To resolve this disagreement, we look to the
language of the statute.
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The statute begins by referring to two applications: “[a]n application
for patent” and “an application previously filed.” We read “an application
for patent” as the application with the claims at issue. The statute then refers
for the first time to “the prior application” in the phrase “which is filed by an
inventor or inventors named in the previously filed application shall have the
same effect, as to such invention, as though filed on the date of the prior
application.” Emphasis added. We read “the prior application” as referring
to the “application previously filed.” The statute characterizes “the prior
application” as the application with the accordable filing date. Thus, we
read § 120 as indicating that a proper comparison of inventorship is between
“an application for patent” and “the prior application” with the accordable
filing date.
The above-discussed reading of the statute already indicates that it is
the involved application and the earliest application in the priority chain
which must share at least one common inventor. That is so because the
earliest application in the priority chain is the prior application with the
accordable filing date. The conclusion is further supported by consideration
of statutory language immediately following that discussed above: “if filed
before the patenting or abandonment of or termination of proceedings on the
first application or on an application similarly entitled to the benefit of
the filing date of the first application.”
Here, the statute introduces for the first time “the first application.”
We read “the first application” as referring to the same “application
previously filed” and the same “prior application” identified and discussed
above, because the article “the” is used, and because use of the word “first”
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introduces a temporal aspect, which is fulfilled by the earlier mentioned
“application previously filed” and “prior application.” Thus, the covered
scenario includes both a priority chain of two applications including just the
earliest filed application with an accordable filing date and the involved
application, and a priority chain of three or more applications, including the
involved application, the earliest filed application with an accordable filing
date, and one or more intervening applications. Because both situations are
subject to the earlier portion of the statutory language discussed above, the
requirement of comparing the involved application and the earliest
application in the priority chain applies, regardless of whether there are
intervening applications.
Our reading of § 120 is consistent with the instructions of the U.S.
Court of Appeals for the Federal Circuit. For example, the Federal Circuit
stated: “Under § 120, a patent is entitled to the priority date of an earlier
filed application if . . . the applications have at least one common inventor.”
In re NTP, Inc., 654 F.3d at 1277. As there are only two applications
mentioned, we read the Federal Circuit’s interpretation of § 120 that “the
applications have at least one common inventor” as a requirement applicable
to the application that issued into the patent and the “earlier-filed
application” to which priority is claimed. In another example, the Federal
Circuit held that the 1984 Amendment to § 120 clarified that where a later-
filed application was a continuation-in-part application of an earlier-filed
application, identity of inventorship in the two applications was not required
to establish priority; overlapping inventorship was sufficient. In re Chu,
66 F.3d 292, 297 (Fed. Cir. 1995). What is instructive here is that, again, the
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comparison for inventorship was directly between the later-filed application
and the application with the accordable filing date. And although decided
before the 1984 Amendment to § 120, we nevertheless find it instructive that
the Court of Customs and Patent Appeals compared directly the inventive
entity for claims on appeal with the inventive entity of a great-grandparent
application to which appellant attempted to claim priority. In re Herschler,
591 F.2d 693, 697 (CCPA 1979); see also Hillman v. Shyamala, 55 USPQ2d
1220, 1221 (BPAI 2000) (informative) (“[s]ome overlap in inventorship is a
requirement for benefit under 35 U.S.C. § 120”).
In addition, 37 C.F.R. § 1.78(c)(1) requires “[e]ach prior-filed
application must name the inventor or a joint inventor named in the later-
filed application as the inventor or a joint inventor.” In short, both § 120 and
37 C.F.R. § 1.78(c)(1) require the involved application and the earliest
application in the priority chain to share at least one common inventor.
c. Analysis
There is no dispute that the ’414 application and the ’764 application
do not share a common inventor. Louis A. Stilp, the sole inventor named in
the ’764 application, is not identified as an inventor in the ’414 application
that issued as the ’299 patent.
Furthermore, Patent Owner only provides an analysis as to how
claims 111–114 have written description support in the ’764 application, but
does not meet its burden of showing how each application in the chain of
continuing applications leading back to the ’764 application complies with
the written-description requirement of 35 U.S.C. § 112, first paragraph.
Accordingly, we determine that Patent Owner has not shown that the ’414
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application is entitled to the filing date of the ’764 application. As a result,
Zell is applicable prior art to claims 111–114.
2. Zell (Exhibit 1008)
Zell “relates to locating mobile telephones belonging to a mobile radio
communication cellular network[,] such as networks of the GSM, DCS or
PCS type.” Ex. 1008, 1:12–15. Communication between mobile telephone
MS and “base station BTSi selected under the GSM standard is done using a
radio link.” Ex. 1008, 9:1–3. “The signals exchanged between the mobile
telephone MS and the base station BTSi comprise service signals . . . .”
Ex. 1008, 9:3–5. The service signals include the following types of data:
type of communication (call from the mobile telephone, or on the contrary
received by the mobile telephone); nature of the communication (voice or
data); and the identifier of the mobile telephone (IMEI – serial number).
Ex. 1008, 9:10–29. The service signals are acquired by a signaling capture
system or by a protocol analyzer installed at base station controller BSC of
base station BTSi. Ex. 1008, 11:16–19.
Zell discloses a location method including filtering service signals for
both pre-location and fine location. Ex. 1008, 13:1–4. The filtering method
is done using the protocol analyzer, and consists of isolating, at the interface
between base stations BTSi and base station controller BSC, a service signal
including data that must be detected. Ex. 1008, 13:5–8. If the data sought
are detected, all data relating to the service signal are transmitted for
exploitation. Ex. 1008, 13:20–26. The exploitation of the data to obtain a
coarse location, and to obtain the identifiers associated with the service
signal, is done at a local station or equivalent module. Ex. 1008, 14:4–7.
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3. Independent Claims 111–114
Petitioner asserts that independent claims 111–114 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by Zell. Pet. 35–41; Reply 4–12. In
support of this asserted ground of unpatentability, Petitioner provides
detailed explanations as to how each claim limitation is met by Zell.
For example, independent claim 111 requires passively monitoring a
predefined Abis link between a BTS and BSC and detecting a predefined
network transaction. Zell discloses using a filtering method that consists of
isolating, at the interface between base stations BTSi and base station
controller BSC, a service signal including data that must be detected.
Ex. 1008, 13:5–8. Independent claim 111 requires further that the
predefined network transaction is one of a mobile origination transaction and
a mobile termination transaction. Zell discloses that the service signals
include a type of communication, i.e., whether a call is from the mobile
telephone, or on the contrary received by the mobile telephone. Ex. 1008,
9:15–17. Independent claim 111 requires additionally, in response to the
detection, initiating a predefined location service. Zell discloses that if the
data sought are detected, all data relating to the service signal are transmitted
for exploitation. Ex. 1008, 13:20–26. The exploitation of the data to obtain
a coarse location, and to obtain the identifiers associated with the service
signal, is done at a local station or equivalent module. Ex. 1008, 14:4–7.
Petitioner sets forth similar analyses for claims 112–114.
Patent Owner asserts that Zell does not disclose detecting of a
predefined network transaction, as required by independent claim 111,
because the “filtering” disclosed in Zell is a collection of all data from all
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communications, as the sole purpose of the “filtering” in Zell is for
reconstructing all simultaneous communications. According to Patent
Owner, the collecting of all data in Zell is incompatible with, and thus
cannot correspond properly to, the recited detecting of specific predefined
data. PO Resp. 19–26. Patent Owner’s assertions are misplaced, however,
as Zell does not disclose that its use of the “filtering” constitutes collection
of all data. Patent Owner relies on the following disclosure of Zell:
The invention is characterized by the fact that the method
includes a filtering step that is essential to enable the
reconstruction of all simultaneous communications. The
filtering step makes it possible to reconstruct a communication
(or a plurality of specific communications) from the analyzed
communication flow.
Ex. 1008, 5:6–12. If read in isolation, Patent Owner’s assertion appears to
have merit. When read in conjunction with other portions of Zell, however,
Patent Owner’s assertion is unpersuasive.
We read the term “filtering” as indicating a screening based upon the
contents of one or more fields or other characteristics. See Filtering
Definition, Dictionary of Communications Technology: Terms, Definitions
and Abbreviations (Wiley 1998), available at
http://search.credoreference.com/content/entry/wileycommtech/filtering/0
(last visited Sept. 17, 2014) (“[t]he process by which a bridge, router, switch
or other device examines frames, and forwards or blocks the frame based
upon the contents of one or more of its fields”) (Ex. 3003); Filter Definition,
Hargrave’s Communications Dictionary (Wiley 2001), available at
http://search.credoreference.com/content/entry/hargravecomms/filter/0 (last
visited Sept. 17, 2014) (“[f]ilters may also be used to screen incoming mail
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or newsgroups to just those sources the user wants to receive”) (Ex. 3004).
Thus, a plain and ordinary meaning of the word “filtering” is contrary to
Patent Owner’s position that “filtering” in Zell constitutes collecting all data.
Our reading of “filtering” is consistent with other portions of Zell, which
discloses “filtering said data on the basis of predetermined criteria”
(Ex. 1008, 3:35–4:1) and using the filtering step to detect sought elements
(Ex. 1008, 13:5–23). Specifically, both of these disclosures of Zell use
“filtering” in a context more consistent with its plain and ordinary meaning,
i.e., the narrowing down of data, and contrary to Patent Owner’s position
that “filtering” in Zell constitutes collecting all data. Thus, we are not
persuaded by Patent Owner’s assertion that filtering in Zell means collecting
all data from all communications. Collecting all data from all
communications is not screening based upon the contents of one or more
fields or other characteristics, which is the proper meaning of “filtering” in
Zell, and this proper meaning of “filtering” corresponds appropriately to the
recited detecting of specific predefined data.
Patent Owner acknowledges that Zell may disclose “filtering said data
on the basis of predetermined criteria” and detecting sought elements.
Patent Owner asserts, however, that because Zell does not indicate the nature
of the sought elements, Zell cannot meet the “detecting” limitation of claims
111–114, each of which requires identification of specific predefined
network transactions. Patent Owner asserts further that while other portions
of Zell may disclose certain service signal data which may correspond to the
recited predefined network transactions, because Zell does not disclose any
explicit connection between the sought elements and the service signal data,
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a ground of unpatentability based on anticipation cannot be satisfied. As an
initial matter, we are not persuaded that Zell does not disclose explicitly
such a connection, as Zell discloses certain service signal data at page 13,
lines 16–19, and then in the sentence that immediately follows, discloses that
“[i]n the event the sought element is detected.” It is clear that the sought
element would be within the service signal data disclosed in the immediately
previous sentence.
Moreover, as noted above, “[a] reference anticipates a claim if it
discloses the claimed invention such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and
be in possession of the invention.” In re Graves, 69 F.3d at 1152 (citation
and emphasis omitted). That means what matters is the understanding of
one with ordinary skill in the art with respect to what has been described,
and not the literal words of a reference. In an anticipation analysis, “it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d at 826. To that end,
even without the aforementioned explicit connection between the sought
elements and the service signal data, we are not persuaded by Patent
Owner’s assertion that one of ordinary skill, when reading Zell, would not
have understood that there is that connection between the sought elements
disclosed in one portion of Zell, and the service signal data disclosed in
another. Accordingly, given that Zell discloses “filtering said data on the
basis of predetermined criteria” and detecting sought elements in one portion
of Zell, we are not persuaded one of ordinary skill would not have made the
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connection that the filtering/detecting operations would use, as the
predetermined criteria, the service signal data disclosed in another portion of
Zell.
4. Conclusion
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that, by a preponderance of the
evidence, Petitioner has shown that claims 111–114 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Zell.
D. Alleged Obviousness over Abbadessa and Havinis
Petitioner asserts that claims 111–114 are unpatentable under
35 U.S.C. § 103(a) as over Abbadessa and Havinis. Pet. 41–48; Reply 12–
15. Petitioner explains how a combination of Abbadessa and Havinis
allegedly discloses or suggests the claimed subject matter, and also relies on
the Declarations of Dr. Bhattacharya. Exs. 1005, 1037. Patent Owner
disagrees with Petitioner’s assertions and relies on the Declaration of
Dr. Gottesman. PO Resp. 22–34 (citing Ex. 2014).
1. Abbadessa (Ex. 1011)
Abbadessa discloses a network discovery method for identifying data
in GSM-type systems. Ex. 1011, 2:7–8. The network includes switching
elements and radio elements, where mobile stations communicate with the
radio elements. Ex. 1011, 2:8–13. The method includes monitoring
signaling messages passed between the radio elements and the switching
elements, and selecting a signaling message in accordance with
predetermined selection criteria. Ex. 1011, 2:14–17. The method also
includes extracting data from the signaling message, and correlating the
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extracted data with previously extracted data. Ex. 1011, 2:17–19.
Monitoring equipment is used to monitor links on both an Abis interface and
an A interface of a GSM network. Ex. 1011, 5:51–53.
The first action a mobile station takes on a new channel is establishing
a link layer connection for signaling initial messages on the new channel.
Ex. 1011, 13:43–45. The initial messages each carry data related to a reason
initial access was triggered. Ex. 1011, 13:50–52. One possible reason for
triggering the initial message is a service request (e.g., call set up, SMS,
Supplementary Service Management). Ex. 1011, 13:52–57. The initial
message is incorporated into two further signaling messages, the first on the
Abis interface and the second on the A interface. Ex. 1011, 13:57–60. The
first signaling message on the Abis interface is the monitored signaling
message looked for by the present procedure. Ex. 1011, 14:1–2.
2. Havinis (Exhibit 1012)
Havinis is related to determining a location of a mobile station within
a GSM cellular network. Ex. 1012, 1:9–23. An event that triggers location
positioning of the mobile station includes a call originated by the mobile
station. Ex. 1012, 6:19–21. Any triggering event can be defined by a
requesting location application, and only upon occurrence of the event is the
mobile station positioned. Ex. 1012, 6:44–46.
3. Analysis
Petitioner asserts that claims 111–114 are unpatentable under
35 U.S.C. § 103(a) as obvious over Abbadessa and Havinis. Pet. 41–48;
Reply 12–15. In support of this asserted ground of unpatentability,
Petitioner provides detailed explanations as to how a combination of
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Abbadessa and Havinis allegedly discloses or suggests the claimed subject
matter, and also relies on the Declarations of Dr. Bhattacharya. Exs. 1005,
1037.
For example, independent claim 111 requires passively monitoring a
predefined Abis link between a BTS and BSC and detecting a predefined
network transaction. Abbadessa discloses monitoring signaling messages
passed through an Abis interface and selecting a signaling message in
accordance with predetermined selection criteria. Ex. 1011, 2:14–19, 5:51–
53, 14:1–2. Independent claim 111 requires further that the predefined
network transaction is one of a mobile origination transaction and a mobile
termination transaction. Abbadessa discloses extracting data from the
signaling message, and correlating the extracted data with previously
extracted data. Ex. 1011, 2:17–19. The extracted data may include one of
five possible reasons for triggering an initial message that is now contained
in the signal message, for example, a service request (e.g., call set up, SMS,
Supplementary Service Management). Ex. 1011, 13:52–60.
Petitioner acknowledges that Abbadessa does not disclose, in response
to the detection, initiating a predefined location service, as required by
independent claim 111. For that, Petitioner cites Havinis for disclosing that
an event that triggers location positioning of the mobile station includes a
call originated by the mobile station. Ex. 1012, 6:19–21. For a rationale to
combine Abbadessa and Havinis in the manner set forth in the Petition,
Petitioner asserts as follows:
[B]oth Abbadessa and Havinis feature processing data in a
GSM mobile cellular radio system. Ex. 1005, ¶ 85.
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Thus, it would have been obvious to one of skilled in the
art at the time of the purported invention to take the triggering
event of mobile origination or of mobile termination taught by
Havinis and apply it to the monitoring and detecting taught by
Abbadessa. Ex. 1005, ¶ 86. The motivation to combine
Havinis with Abbadessa is clear, as the mobile-originated call
event or mobile-terminated call event taught in Havinis could
have been derived from the monitored signals (e.g., “initial
messages” related to call setup) on the Abis link in Abbadessa.
Ex. 1005, ¶ 87.
Instead of sending a message to MSC/VLR 360 to arm
one or more positioning triggers, such a message could be sent
to monitoring system 14 of Abbadessa instead. Ex. 1005, ¶ 88.
And the matched data detected by monitoring system 14 of
Abbadessa could be provided to MLC 370 in Havinis for
initiating a location service. Ex. 1005, ¶ 89.
Pet. 42 (citing Ex. 1005 ¶¶ 85–89). Petitioner sets forth similar analyses for
claims 112–114.
Patent Owner asserts that Abbadessa is directed to “identifying radio
elements,” and not location, and thus cannot correspond properly to the
recited “triggering” for location services. Patent Owner’s assertion is
misplaced, as Abbadessa is cited only for triggering while Havinis is cited
for disclosing location. Thus, a combination of Abbadessa and Havinis is
cited for suggesting the recited “triggering” for location services. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references”).
Similarly, Patent Owner asserts that Havinis is directed to using
upstream MSC/VLR network data and not Abis monitoring for location, and
thus cannot correspond properly to the recited “triggering” for location
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services. Again, Patent Owner’s assertion is misplaced, because Abbadessa
is cited for Abis monitoring and triggering and Havinis is cited for
disclosing location. In re Keller, 642 F.2d at 426.
Patent Owner asserts further that Havinis discloses very little about
how VLR position triggers are used to determine a location. Patent Owner’s
assertion is misplaced, as regardless of the amount of disclosure, Patent
Owner admits that Havinis does disclose determining location based upon a
position trigger. PO Resp. 38.
Patent Owner asserts additionally that Abbadessa does not disclose
the recited “detecting,” because no predetermined triggering criteria are set
in Abbadessa. Patent Owner is incorrect, as Abbadessa discloses extracting
data from the signaling message, and correlating the extracted data with
previously extracted data. Ex. 1011, 2:17–19. The extracted data may
include one of five possible reasons for triggering an initial message that is
now contained in the signal message, for example, a service request (e.g.,
call set up, SMS, Supplementary Service Management). Ex. 1011, 13:52–
60. It is this correlating step of Abbadessa that corresponds to the recited
“triggering,” and Abbadessa discloses explicitly that this correlating takes
into account previously extracted data, which by definition is
“predetermined.”
Patent Owner asserts also that triggers in Abbadessa are for
establishing initial access between an MS and BTS to set up a
communication link, which has nothing to do with location. Patent Owner’s
assertions are misplaced because Havinis is cited for disclosing location, as
noted above, and moreover the portion of Abbadessa cited for the recited
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“detecting” is after the portion concerning establishing initial access
between an MS and BTS to set up a communication link. Specifically,
Abbadessa discloses the following: “the initial message sent by the MS is
incorporated into two further messages, the first on the Abis interface and
the second on the A interface.” Ex. 1011, 13:57–60 (emphasis added). It is
the comparison of these two further messages, which is done after
establishing initial access, which are cited as corresponding to the recited
“detecting.”
Patent Owner asserts further that one of ordinary skill would not have
been motivated to combine Abbadessa and Havinis in the manner described,
because to do so would cause redundancy and expense. Specifically, Patent
Owner asserts that combining Abbadessa and Havinis in the suggested
manner would require adopting additional hardware and modifying a
carrier’s standard network equipment, both of which are undesirable due to
complexity and expense. For support, Patent Owner cites the Declaration of
Dr. Gottesman (Ex. 2014). We are not persuaded by the argument because
the law does not exclude from an obviousness determination solutions which
are more complex and/or expensive. KSR, 550 U.S. at 417 (“[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. . . . [A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). Moreover, concerning expense specifically, the Federal Circuit
wrote the following:
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[T]he fact that the two [prior art disclosures] would not be
combined by businessmen for economic reasons is not the same
as saying that it could not be done because skilled persons in
the art felt that there was some technological incompatibility
that prevented their combination. Only the latter fact is telling
on the issue of nonobviousness.
Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983). Patent Owner’s assertions do not address why the proffered
combination would not have been within the abilities of one of ordinary skill
or would have been technologically incompatible. Indeed, Patent Owner
even has not made either contention. Therefore, Patent Owner’s assertions
do not undermine the Petitioner’s rationale to combine. See Ex. 1005 ¶¶ 85–
89; Ex. 1037 ¶¶ 48–61.
Patent Owner asserts additionally that Abbadessa’s correlating
function is not a trigger, because it does not trigger any action. We are not
persuaded, as Abbadessa discloses that the correlating function causes
performance of other functions, as explained below:
By monitoring these two messages, and matching the initial
message elements found within each, within a time window as
described above, the CI for a particular TRX on a particular
channel (labelled by the physical identifier given by the
monitoring system) can be identified. 30 milliseconds has been
found to be a suitable time window for this message pair.
Depending on the number of other steps within the network
discovery method that have been successfully carried out, the
CI can be allocated to a TRX identified by its TEI (Process 1),
and can also be allocated to other TRXs aggregated as
belonging to the same cell (Process 2).
Ex. 1011, 14:10–21 (emphasis added).
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Patent Owner asserts also that one of ordinary skill in the art would
not have been motivated to combine Abbadessa and Havinis because they
are directed to different problems in GSM technology, which encompasses a
wide range of technologies. We are not persuaded, however, because Patent
Owner has not shown why and how addressing different problems in GSM
technology would have been beyond the abilities of one of ordinary skill in
GSM technology, especially where the citations within both Abbadessa and
Havinis are directed more narrowly to initiating events in response to other
events within the boundaries of GSM technology. Indeed, Patent Owner
does not assert that either Abbadessa or Havinis is non-analogous art.
Patent Owner asserts further that Petitioner’s rationale for combining
disparate elements of Abbadessa and Havinis includes merely summary
conclusions as to what “could” be done, but does not provide an explicit
motivation to do so, as required for a determination of obviousness. Patent
Owner’s assertions are misplaced, because an explicit teaching to combine is
unnecessary in a proper obviousness analysis. KSR, 550 U.S. at 421–22
(“There is flexibility in our obviousness jurisprudence because a motivation
may be found implicitly in the prior art. We do not have a rigid test that
requires an actual teaching to combine . . . .” (quoting Alza Corp. v. Mylan
Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006)) (internal quotation marks
omitted)).
We weigh the evidence provided by Petitioner and Patent Owner
concerning obviousness, and on the balance, determine that Petitioner’s
evidence is more persuasive. In particular, Abbadessa discloses using a
correlating function to trigger other processes and Havinis discloses using a
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generic event to trigger positioning, both in the realm of GSM technology.
We determine that these express disclosures of Abbadessa and Havinis are
persuasive particularly in supporting the conclusion that combining those
two disclosures in the manner set forth by Petitioner would have been
known, and thus obvious, to one of ordinary skill at the time of the
invention.
Patent Owner asserts additionally that Dr. Bhattacharya’s opinions
were improperly made with hindsight reconstruction and biased interests,
and that without Dr. Bhattacharya’s testimony, Petitioner does not have
sufficient facts on record to support a determination of obviousness. We
note, however, the following:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
We are cognizant of Dr. Bhattacharya’s position as Vice President of
Petitioner with significant financial interests, and have weighed his
testimony accordingly. Also, the rationale to combine, as articulated by
Petitioner, stems from the prior art themselves as viewed from the
perspective of one with ordinary skill in the art, without reliance on
impermissible hindsight.
5. Conclusion
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that, by a preponderance of the
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evidence, Petitioner has shown that claims 111–114 are unpatentable under
35 U.S.C. § 103(a) as obvious over Abbadessa and Havinis.
E. Petitioner’s Motion to Exclude
Petitioner’s Motion to Exclude seeks to exclude portions of Dr.
Gottesman’s Declaration (Ex. 2014). Paper 39. Patent Owner filed an
Opposition (Paper 47), to which Petitioner filed a Reply (Paper 51).
The current situation does not require us to assess the merits of
Petitioner’s Motion to Exclude. As discussed above, even having
considered the identified evidence, we have concluded that Petitioner has
demonstrated by a preponderance of the evidence that the challenged claims
are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed
as moot.
F. Patent Owner’s Motion to Exclude
Patent Owner’s Motion to Exclude seeks to exclude (1) Exhibits 1035,
1036, 1043, and 1044, and (2) the entirety of Dr. Bhattacharya’s
Declarations (Exs. 1005, 1037). Paper 38. Petitioner filed an Opposition
(Paper 48), to which Patent Owner filed a Reply (Paper 50).
1. Exhibits 1035, 1036, 1043, and 1044
Exhibits 1035, 1036, 1043, and 1044 (“the Exhibits”) are various non-
patent literature submitted by Petitioner in support of its positions
concerning the requirements for claiming the benefit of priority in a chain of
continuation applications. Specifically, Exhibits 1035 and 1036 are directed
to questions and answers from an examination taken to be admitted to
practice before the U.S. Patent and Trademark Office, and Exhibits 1043 and
1044 are legal articles. Patent Owner seeks to exclude these exhibits
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because (1) they are inadmissible hearsay under the Federal Rules of
Evidence (“Fed. R. Evid.”) 801 and do not satisfy an exception under
Fed. R. Evid. 802, (2) they lack authentication under Fed. R. Evid. 901, and
(3) Exhibits 1043 and 1044 constitute improper expert testimony under
Fed. R. Evid. 702. PO Mot. 4–11; PO Reply 1–3. Petitioner responds by
asserting that the Exhibits are directed to authority concerning
interpretations of the law, which is squarely within the province of the Board
to consider, and that in the alternative, the Board take judicial notice of their
reliability under Fed. R. Evid. 803. Pet. Opp. 2–4.
The Motion to Exclude Exhibits 1035, 1036, 1043, and 1044 is moot
because we do not find the material therein which has been relied on by
Petitioner to be sufficiently on point to have significance in our decision.
Our decision does not rely in any part on the content of those exhibits.
Accordingly, the Motion to Exclude is moot with respect to Exhibits 1035,
1036, 1043, and 1044.
2. Dr. Bhattacharya’s Declarations (Exs. 1005, 1037)
Patent Owner asserts that Dr. Bhattacharya’s Declarations should be
excluded because they are hearsay. The assertion is without merit. In this
proceeding, direct testimony ordinarily is not presented live, but taken by
affidavit or declaration. 37 C.F.R. § 42.53(a). Cross-examination of the
witness is provided by 37 C.F.R. § 42.51(a)(1)(ii). Indeed, Patent Owner did
cross-examine Dr. Bhattacharya. Accordingly, the Declarations of
Dr. Bhattacharya are not hearsay.
Patent Owner seeks further to exclude Dr. Bhattacharya’s
Declarations on the basis that Dr. Bhattacharya, as an officer with significant
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42
stock options and other interests in Petitioner, is a “quintessential paid,
biased witness.” PO Reply. 4. Petitioner replies that Patent Owner ignores
other indicia of reliability of Dr. Bhattacharya’s testimony. Pet. Opp. 4–5.
Patent Owner’s assertions are misplaced, as the items they note go to the
weight of Dr. Bhattacharya’s testimony, and not its admissibility. Indeed, as
indicated supra, we have considered and weighed the alleged “bias” of
Dr. Bhattacharya’s testimony in its analysis of the grounds of
unpatentability.
Accordingly, for the aforementioned reasons, we deny Patent Owner’s
Motion to Exclude concerning Dr. Bhattacharya’s Declarations.
3. Conclusion
Patent Owner’s Motion to Exclude Exhibits 1035, 1036, 1043, and
1044 is dismissed as moot. Patent Owner’s Motion to Exclude Exhibits
1005 and 1037 is denied.
III. CONCLUSION
Petitioner has proved, by a preponderance of the evidence, that claims
111–114 of the ’299 patent are unpatentable under 35 U.S.C. § 102(b) as
anticipated by Zell.
Petitioner has proved, by a preponderance of the evidence, that claims
111–114 of the ’299 patent are unpatentable under 35 U.S.C. § 103(a) as
obvious over Abbadessa and Havinis.
Petitioner’s Motion to Exclude is dismissed.
Patent Owner’s Motion to Exclude is dismissed-in-part and denied-in-
part.
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IV. ORDER
It is
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 111–114 of U.S. Patent No. 7,783,299 B2 are
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed;
FURTHER ORDERED Patent Owner’s Motion to Exclude is
dismissed-in-part and denied-in-part; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Brad Pedersen
prps@ptslaw.com

Jason Demont
jpdemont@kbsolaw.com

Eric Chadwick
prps@ptslaw.com

Kenneth Ottesen
kottesen@kbsolaw.com

Vincent McGeary
vmcgeary@mcgearycukor.com

For PATENT OWNER:

Michael Bonella
mbonella@condoroccia.com

Michael Stein
mstein@bakerlaw.com

Daniel Goettle
dgoettle@bakerlaw.com