Sensus USA, Inc.v.Certified Measurement, LLC

Patent Trial and Appeal Board

Dec 11, 2015

09149025 (P.T.A.B. Dec. 11, 2015)

Trials@uspto.gov Paper No. 13
571.272.7822 Entered: December 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SENSUS USA, INC.,
Petitioner,
v.
CERTIFIED MEASUREMENT, LLC,
Patent Owner.
_______________

Case IPR2015-01439
Patent 6,289,453 B1
_______________

Before PHILLIP J. KAUFFMAN, BART A. GERSTENBLITH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

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

IPR2015-01439
Patent 6,289,453 B1

2
I. INTRODUCTION
A. Background
Sensus USA, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting institution of inter partes review of claim 43 of U.S. Patent
No. 6,289,453 B1 (Ex. 1001, “the ’453 patent”). Certified Measurement,
LLC (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314.
Under 35 U.S.C. § 314(a), an inter partes review may be instituted
only if “the information presented in the [P]etition . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c).
For the reasons given below, on this record, we are persuaded that
Petitioner has not established a reasonable likelihood of prevailing with
respect to at least one challenged claim of the ’453 patent. Accordingly, we
deny the Petition and decline to institute an inter partes review of the
’453 patent.
B. Related Proceedings
The parties represent that the ’453 patent is at-issue in Sensus USA,
Inc. v. Certified Measurement, LLC, No. 3:14-cv-01069 (D. Conn.);
Certified Measurement, LLC v. Centerpoint Energy Houston Electric, LLC
and Itron, Inc., No. 2:14-cv-00627 (E.D. Tex.); ALSTOM Grid Inc. v.
Certified Measurement, LLC, No. 1:15-cv-00072 (D. Del.); and ABB Inc. v.
Certified Measurement, LLC, No. 1:15-cv-00461 (D. Del.). Pet. 3–4;
Paper 6, 2.
The ’453 patent is also the subject of IPR2015-00572. Pet. 4; Paper 6,
2. Related patents, U.S. Patent Nos. 5,828,751, 6,282,648 B1, and
IPR2015-01439
Patent 6,289,453 B1

3
8,549,310 B2, are each the subject of two inter partes reviews, as shown in
the table below.
U.S. Patent Challenged Inter Partes Review
5,828,751 IPR2015-00570; IPR2015-01262
6,282,648 B1 IPR2015-00571; IPR2015-01311
8,549,310 B2 IPR2015-00573; IPR2015-01454
Pet. 4; Paper 6, 4.
C. Real Parties-in-Interest
The Petition identifies Sensus USA, Inc., Sensus Worldwide Limited,
and Sensus Worldwide Holdings Limited as real parties-in-interest. Pet. 3.
Patent Owner identifies Certified Measurement, LLC, Inventor Holdings,
LLC, and Patent Properties, LLC, as real parties-in-interest. Paper 6, 1–2.
Patent Owner contends that Petitioner’s identification of the real
parties-in-interest is incomplete, and that the Petition should be denied as
failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent
Owner asserts that in a related litigation involving the ’453 patent, Petitioner
identified an insurance company as covering some of the costs of defending
the action against Patent Owner. See Ex. 2001. Patent Owner argues:
A hallmark of indemnity or insurance agreements that are
available to satisfy part or all of a judgment or to reimburse
payments of same is an ability for the insurer or indemnitor to
control over [sic] aspects of the litigation, including the defense
and maintenance of an inter partes review which seek[s] to
invalidate the subject patent.
Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify
any specific evidence that any parties other than those identified by
IPR2015-01439
Patent 6,289,453 B1

4
Petitioner actually is exercising control over or could exercise control over
this proceeding.
1

Accordingly, we decline to deny the Petition on this basis.
D. The References
Petitioner relies on the following references:
U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”);
U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”);
U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,
“Swanson”);
U.S. Patent No. 5,699,244, issued Dec. 16, 1997 (Ex. 1014, “Clark”);
and
Computer Data Authentication, Federal Information Processing
Standards Publication 113, May 30, 1985 (Ex. 1015, “FIPS 113”).

1
Patent Owner asserts also that the “the Board should authorize immediate
discovery on Petitioner’s failure to comply with the real party-in-interest
requirement.” Prelim. Resp. 30–31. In light of the decision we reach herein,
declining institution of an inter partes review, we need not address further
Patent Owner’s position.
IPR2015-01439
Patent 6,289,453 B1

5
E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claim 43 of the ’453 patent
on the following grounds:
2,3

Reference(s) Basis
Bishop § 102(b)
Bishop § 103(a)
Cox § 102(b)
Cox § 103(a)
Swanson § 102(e)
Swanson § 103(a)
Clark § 102(e)
Clark § 103(a)
Clark and FIPS 113 § 103(a)

2
The Petition identifies five “COUNT[s]” (i.e., grounds), but each of the
first two grounds presents the challenge as “under 35 U.S.C. § 102(b) or
§ 103” and each of the third and fourth grounds presents the challenge as
“under 35 U.S.C. § 102(e) or § 103.” Pet. 7–8. Thus, the first four grounds
actually present eight challenges to claim 43.
3
In addition to the grounds identified in the table, Petitioner purports to
present challenges under § 103(a) “over Bishop . . . in view of the
knowledge of a person of ordinary skill in the art,” “over Cox . . . in view of
the knowledge of a person of ordinary skill in the art,” “over Swanson . . . in
view of the knowledge of a person of ordinary skill in the art,” and “over
Clark . . . in view of the knowledge of a person of ordinary skill in the art.”
Pet. 7–8. We treat such grounds as subsumed respectively by the asserted
grounds under § 103(a) over Bishop alone, Cox alone, Swanson alone, and
Clark alone.
IPR2015-01439
Patent 6,289,453 B1

6
Petitioner supports its challenge with a declaration executed by
Dr. Seth Nielson, dated June 17, 2015 (Ex. 1003, “the Nielson Declaration”).
F. The ’453 Patent
The ’453 patent “relates generally to methods and apparatuses for
acquiring and certifying physical measurements. . . . [and,] [m]ore
particularly, . . . to acquiring and cryptographically certifying a measurement
representative of a physical parameter, such that the measurement can be
verified at a later time.” Ex. 1001, 1:9–14. The “physical parameter” is
described broadly as “any physical quantity measurable by a sensor and
representable in digital form.” Id. at 4:20–21. Examples of a “physical
parameter” include, inter alia, “location data, biometric data, temperature,
humidity, light levels, noise levels, [and] precipitation.” Id. at 4:22–23. A
certified measurement may include additional features, e.g., “a unique
device ID to identify itself to a measurement recipient.” Id. at 6:2–4. The
measurement certification device “may include a signal generator for
providing a corroborative datum, indicative of an operational condition of
the device, to be included in the certified measurement. The corroborative
datum could be any quantity that independently attests to the acquisition of
the physical measurement.” Id. at 6:14–19.
IPR2015-01439
Patent 6,289,453 B1

7
Figure 1 of the ’453 patent is reproduced below.

Figure 1 “illustrates the basic components of a device for secure certification
of a physical measurement.” Id. at 6:43–44. Such basic components are
contained within secure perimeter 70, which “may include physical,
electronic, or a combination of physical and electronic features to resist
tampering.” Id. at 7:23–26, 34–36. The ’453 patent describes the “the
simplest embodiment of the invention” as follows:
the measurement certification device takes a physical
measurement using sensor 8, of any physical parameter or event
. . . whose value and/or time of measurement is to be provided
to a recipient for later verification. This measurement is added
to a time from clock 20, creating an augmented measurement
comprising the cleartext time plus the physical measurement.
Cryptoprocessor 10 then creates a certified measurement
comprising the (cleartext) augmented measurement and a
(ciphertext) one-way function representative of at least a
portion of the augmented measurement, and outputs the
certified measurement at output device 100.
Id. at 7:58–8:6.
IPR2015-01439
Patent 6,289,453 B1

8
G. Illustrative Claim
Claim 43 is the only claim challenged in this proceeding and is
reproduced below:
43. A method of generating secure physical measurements,
comprising:
receiving a first signal, the first signal being based at
least in part on a first physical measurement;
receiving a second signal, the second signal being based
at least in part on a second physical measurement;
receiving a third signal, the third signal being based at
least in part on a time;
generating an augmented measurement based at least in
part on the first signal, the second signal and the third signal;
and
performing a cryptographic operation on at least a
portion of the augmented measurement to generate a certifiable
measurement.
Ex. 1001, 22:22–36.
II. CLAIM CONSTRUCTION
Although Petitioner presents proposed constructions for several claim
terms, no terms require express construction for purposes of this Decision.
III. ANALYSIS
A. Anticipation of Claim 43 by Bishop
Petitioner asserts that Bishop discloses each and every element of
claim 43 of the ’453 patent. Pet. 22–25. The Petition includes a discussion
identifying where Bishop allegedly discloses the elements of claim 43. Id.
1. Bishop
Bishop relates to a “system for identifying ships and aircraft, both in
position and time, utilizing shipboard cryptographic equipment and
satellites.” Ex. 1005, at [57]. Bishop discloses shipboard “equipment,”
IPR2015-01439
Patent 6,289,453 B1

9
including storage register 47 that stores individual-identification code word
IS, “navigation equipment 48” that determines position P of a ship, and
clock 49 that determines “time-of-day T1 at which each report is made by the
ship.” Id. at 2:62–68. Three binary messages corresponding to IS, P, and T1
are combined to form a message that Bishop designates IS + P + T1, and the
combined message “is enciphered by a cryptographic encipherment unit 11
to produce the cryptographically enciphered message C (IS + P + T1), which
is then transmitted by the ship’s transmitter 10.” Id. at 3:7–14. Bishop
refers to the “enciphered message” as “MUS.” Id. at 3:14–15, 24.
2. Discussion
As reflected above, claim 43 recites, inter alia, receiving three
signals: a first signal “based at least in part on a first physical measurement,”
a second signal “based at least in part on a second physical measurement,”
and a third signal “based at least in part on a time.” Ex. 1001, 22:24–29.
Claim 43 also recites “generating an augmented measurement based at least
in part on the first signal, the second signal and the third signal.” Id. at
22:30–32.
Petitioner asserts that Bishop’s measurement of position P via sensors
in its navigation equipment discloses generating the recited first and second
signals based in part on a first and second physical measurement,
respectively (Pet. 23 (citing Ex. 1003 ¶ 40; Ex. 1005, 1:65–2:10, 2:62–68)),
which are received by Bishop’s computing device and combined into a
digital position signal (id. at 23–24 (citing Ex. 1003 ¶ 40; Ex. 1005, 3:7–
23)). Specifically, Petitioner contends that “[t]he position of a ship or
vehicle is itself a physical measurement that is made up of several separate
physical measurements. For example[,] position can be expressed as
IPR2015-01439
Patent 6,289,453 B1

10
‘longitude’ and ‘latitude,’ as ‘x’ and ‘y’ coordinates on a map, or as a vector
and a distance from a reference point.” Id. (citing Ex. 1003 ¶ 40). Petitioner
asserts that Bishop’s position P signal is combined into an augmented
measurement with “time and a code word.” Id. at 24 (citing Ex. 1003 ¶ 40;
Ex. 1005, 3:7–23).
Patent Owner contends that the alleged augmented measurement in
Bishop, upon which Petitioner relies, “has only three components: an
identification code, IS, a position, P, and a time-of day, T1.” Prelim. Resp. 9
(citing Ex. 1005, 2:52–3:18). Patent Owner asserts that Bishop’s alleged
augmented measurement “includes only one signal based on a physical
measurement—the position P, which is determined by shipboard- or
aircraft-based navigation equipment—and a signal based on a time—the
time-of-day, T1, determined by a clock.” Id. at 10.
Petitioner’s argument is not persuasive because Petitioner fails to
show that Bishop’s position P signal is formed from two separate signals
based at least in part on two physical measurements. Petitioner’s cited
portions of Bishop fail to disclose how position P is generated aside from
stating that “position P of the ship is determined to an accuracy of + 2 nm
. . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner,
however, has not identified where, if at all, Bishop discloses how the
navigation equipment generates the position of the ship. Petitioner’s
citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a
combined message, which Bishop designates as IS + P + T1, and then
enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on
paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s
testimony includes the same statements as the Petition without providing
IPR2015-01439
Patent 6,289,453 B1

11
additional explanation or evidentiary support for us to conclude that Bishop
expressly or inherently discloses that its position P signal is formed from
two separate signals based at least in part on two physical measurements.
See 37 C.F.R. § 42.65(a).
Accordingly, on this record, we are not persuaded that Petitioner has
established a reasonable likelihood of prevailing on the assertion that Bishop
discloses each and every element of claim 43 of the ’453 patent.
B. Obviousness of Claim 43 over Bishop
Petitioner asserts that Bishop would have rendered the subject matter
of claim 43 obvious to one of ordinary skill in the art. Pet. 20–25. In
particular, with respect to whether Bishop receives a first and a second
signal based in part on a first and second physical measurement,
respectively, Petitioner contends that “[i]t would also be obvious to a person
of ordinary skill in the art to measure and include other physical
measurements (including without limitation, speed and heading) with
messages that are sent.” Pet. 24 (citing Ex. 1003 ¶ 40).
Patent Owner contends that Petitioner fails to articulate any reasoning
with rational underpinning as to why one of ordinary skill in the art would
have modified Bishop’s disclosure. Prelim. Resp. 13. Patent Owner asserts
that Dr. Nielson’s testimony “does not provide any facts, data, or analysis to
support the opinion stated.” Id. at 13–14.
We agree with Patent Owner. Petitioner’s argument and paragraph 40
of the Nielson Declaration fail to provide any reason as to why one of
ordinary skill in the art would have been motivated to modify Bishop by
“measur[ing] and includ[ing] other physical measurements . . . with
messages that are sent.” Pet. 24. Rather, Petitioner’s entire position, and
IPR2015-01439
Patent 6,289,453 B1

12
Dr. Nielson’s complete testimony, as to why this element of claim 43 would
have been obvious consist of the same single conclusory sentence quoted
above, and nothing more. See 37 C.F.R. § 42.65(a).
Accordingly, Petitioner has not established, on this record, a
reasonable likelihood of prevailing on the assertion that Bishop would have
rendered the subject matter of claim 43 of the ’453 patent obvious as of the
effective filing date of the claimed invention.
C. Anticipation of Claim 43 by Cox
Petitioner asserts that Cox discloses each and every element of
claim 43 of the ’453 patent. Pet. 25–27. The Petition includes a discussion
identifying where Cox allegedly discloses the elements of claim 43. Id.
1. Cox
Cox “relates to a system for verifying the identity of [computer-based
training] users who perform the training in an unsupervised environment.”
Ex. 1006, 1:7–10. When a user registers with the system, a digital copy of
the user’s signature, along with “discriminator data” (signature size,
signature density ratio, time to create the signature, and number of erasures)
are captured, encrypted, and stored for later use in a verification process. Id.
at 4:3–44. During a subsequent training session, the system randomly
generates requests for session signatures, which are registered and stored
with the time, date, and discriminator data collected at the time of
registration of the session signatures. Id. at 4:58–5:12. Each of these is then
encrypted “for security purposes,” and the encrypted data are stored on a
magnetic storage medium, e.g., a disk, enabling subsequent comparison with
the original verified signature and discriminator data. Id. at 5:35–40, 5:52–
6:4 (describing the detection of anomalies in the discriminator data, i.e.,
IPR2015-01439
Patent 6,289,453 B1

13
instances where a discriminator datum falls outside a predetermined range of
acceptable deviation as compared to the corresponding discriminator datum
of the verified signature).
2. Discussion
As recited above, claim 43 includes the step of “generating an
augmented measurement based at least in part on the first signal, the second,
signal and the third signal.” Ex. 1001, 22:30–32. Petitioner asserts that Cox
teaches this step of claim 43 because “Cox discloses combining and storing
the measured signature, discriminator data (which includes signature size
and signature density), and the date and time.” Pet. 27 (citing Ex. 1003 ¶ 48;
Ex. 1006, 1:56–58, 4:67–5:13, 5:35–43, Fig. 2).
Patent Owner contends that Cox fails to teach combining the
measured signature, time, and discriminator data to create an augmented
measurement. Prelim. Resp. 17–18. Patent Owner asserts that “rather than
form an augmented measurement . . . Cox separately stores, in encrypted
form, signature representations, time and date, and discriminator data.” Id.
Petitioner does not propose a construction for “augmented
measurement” aside from stating that it “is described in the individual claims
of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that
generating an “augmented measurement” requires effecting some
combination of the elements recited in the claim—the first signal, the second
signal, and the third signal. See Pet. 27 (asserting that Cox disclosing
“combining” the previously recited elements of the claim in arguing that
Cox teaches “generating an augmented measurement”). Thus, both
Petitioner and Patent Owner recognize that generating an augmented
measurement requires combining specified elements of the claim. We agree.
IPR2015-01439
Patent 6,289,453 B1

14
The parties’ recognition that an augmented measurement requires
combining specified elements of the claim is consistent with the
specification of the ’453 patent. The ’453 patent explains that an
“augmented measurement comprising the cleartext time plus the physical
measurement” is created by adding a physical measurement of any physical
parameter or event to a time. Ex. 1001, 7:66–8:2.
Petitioner’s citations to Cox and the Nielson Declaration do not reflect
that Cox discloses combining the signature, time, and discriminator data to
form an augmented measurement. Rather, the cited portions of Cox teach
that a registered signature is stored with a time and discriminator data, but
do not disclose combining these elements. Petitioner has not explained how
the storage of disparate pieces of data, even on the same physical disk,
generates an “augmented measurement” as recited in claim 43. The Nielson
Declaration, as with its discussion of Bishop, is identical to the Petition, and
does not provide additional explanation as to how Cox discloses this step of
claim 43.
Accordingly, on this record, we are not persuaded that Petitioner has
established a reasonable likelihood of prevailing on the assertion that Cox
discloses each and every element of claim 43 of the ’453 patent.
D. Obviousness of Claim 43 over Cox
Petitioner provides no meaningful analysis of its obviousness
challenge over Cox independent of its anticipation challenge. Pet. 25–27.
Instead, Petitioner relies on a blanket assertion, repeated by Dr. Nielson, that
“Cox alone, or in combination with the knowledge of a person of ordinary
skill in the art, discloses all of the recitations of the Challenged Claim of the
[’]453 Patent, and either anticipates or renders obvious the Challenged
IPR2015-01439
Patent 6,289,453 B1

15
Claim.” Id. at 25; Ex. 1003 ¶ 44. An “obviousness analysis requires more
than an ipse dixit assertion that everything in a reference was also well
known in the art.” See generally Samsung Elecs. Co. v. Imperium Holdings,
Case IPR2015-01233, slip op. at 18 (PTAB Dec. 1, 2015) (Paper 14).
Failure to present evidence of that knowledge and evidence of a rationale for
modifying the teachings of the reference in accordance with that knowledge
does not comply with 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5).
Accordingly, for the reasons discussed above and in Section III.C.2,
Petitioner has not established, on this record, a reasonable likelihood of
prevailing on the assertion that Cox would have rendered the subject matter
of claim 43 of the ’453 patent obvious as of the effective filing date of the
claimed invention.
E. Anticipation of Claim 43 by Swanson
Petitioner asserts that Swanson discloses each and every element of
claim 43 of the ’453 patent. Pet. 27–29. The Petition includes a discussion
identifying where Swanson allegedly discloses the elements of claim 43. Id.
1. Swanson
Swanson relates “to a surveillance system for capturing and storing
information concerning events of interest for subsequent use in
investigations and courtroom proceedings.” Ex. 1007, 1:6–8. Event sensors
controlled by, and connected to, a control processor acquire event
information, which is subsequently encrypted and stored. Id. at 2:58–3:10.
The control processor maintains a timer and time stamps each frame of event
information “comprising images, sounds and conditions prior to storage in
the data storage device” to keep track of when certain frames of images and
IPR2015-01439
Patent 6,289,453 B1

16
associates sounds and conditions are acquired, as well as “to facilitate
subsequent synchronization of information.” Id. at 6:40–47.
2. Discussion
Petitioner asserts that Swanson’s sensors measure images and sound
and “provide the digital signals representative of sound and video
measurements to the computer.” Pet. 28 (citing Ex. 1003 ¶ 52; Ex. 1007,
2:58–65, 6:16–39, 10:43–48). Petitioner contends that each of Swanson’s
frames “includes a separate physical measurement.” Id. (citing Ex. 1003
¶ 52; Ex. 1007, 9:52–58).
As discussed above, claim 43 includes the step of “generating an
augmented measurement based at least in part on the first signal, the second
signal and the third signal.” Ex. 1001, 22:30–32. With respect to this step
of claim 43, Petitioner asserts that “Swanson discloses a computing device
that combines data from sensors (including sound and video) and the time
from the timer into time-stamped sensor data.” Pet. 29 (citing Ex. 1003
¶ 54; Ex. 1007, 6:39–51, 8:40–56, 10:49–55, 14:1–3, Fig. 1).
Patent Owner asserts that Petitioner fails to show that Swanson
discloses an augmented measurement. Prelim. Resp. 21–22. In particular,
Patent Owner contends that Swanson describes storing measurements made
by different sensors separately from one another and time stamping each
frame to synchronize the information. Id. at 22.
Petitioner’s citations to Swanson include the following as relevant to
the “generating an augmented measurement” step of claim 43:
In order to keep track of when certain frames of
images 28 and associated sounds 36 and conditions 42 are
acquired, as well as to facilitate subsequent synchronization of
information (especially if acquired by different sensors), the
IPR2015-01439
Patent 6,289,453 B1

17
control processor 10 maintains a timer 45 and time stamps each
frame of event information (76 in FIGS. 4A and 4B)
comprising images, sounds and conditions prior to storage in
the data storage device 18. By time stamping the event
information output from the sensors 12, 14 and 16,
[4]
the
system 100 advantageously does not require use of
sophisticated and expensive sensors having time
synchronization capabilities.
Ex. 1007, 6:40–51 cited in Pet. 29. This quotation reveals that Swanson
time stamps “each frame of event information” prior to storage in data
storage device 18. Id. Additionally, the event information “compris[es]
images, sounds and conditions.” Id.; see id. at 10:49–51 (describing
encrypting “all of the frames of event information 76 (images, sounds and
conditions)”).
Swanson’s teaching of time stamping each frame supports Petitioner’s
argument that a first signal based in part on a first physical measurement,
e.g., sound, is combined with a third signal based at least in part on a time,
e.g., time stamp. The cited portions of Swanson, however, do not expressly
disclose combining a first and a second signal, each signal based at least in
part on a first or second physical measurement, respectively.
5
And,
Petitioner fails to explain how or why one of ordinary skill in the art would

4
Swanson explains that “surveillance system 100 comprises a control
processor 10, an imaging sensor 12, an audio sensor 14, and environmental
sensor 16, and a data storage device 18.” Ex. 1007, 3:36–39.
5
In fact, Petitioner’s argument that “Swanson discloses a computing device
that combines data from sensors (including sound and video) and the time
from the timer into time-stamped sensor data” fails to assert that Swanson
combines the data from the sensors. See Pet. 29. In other words,
Petitioner’s argument appears to only address a combination based on a first
or second signal, as recited in claim 43, with a third signal, but does not
address a combination based on the first and second signals.
IPR2015-01439
Patent 6,289,453 B1

18
understand such combination to be inherent in Swanson’s disclosure. As
explained supra in our discussion of the Cox-based grounds, we agree with
the parties’ implications that “generating an augmented measurement”
requires effecting a combination based at least in part on the first, second,
and third signals. Petitioner’s reliance upon Dr. Nielson’s testimony fares
no better. Dr. Neilson repeats the same conclusory statement, without
additional elaboration or explanation. See Ex. 1003 ¶ 54; 37 C.F.R.
§ 42.65(a).
Accordingly, on this record, we are not persuaded that Petitioner has
established a reasonable likelihood of prevailing on the assertion that
Swanson discloses each and every element of claim 43 of the ’453 patent.
F. Obviousness of Claim 43 over Swanson
Petitioner provides no meaningful analysis of its obviousness
challenge over Swanson independent of its anticipation challenge. Pet. 27–
29. Instead, Petitioner relies on a blanket assertion, repeated by Dr. Nielson,
that “Swanson alone, or in combination with the knowledge of a person of
ordinary skill in the art, discloses all of the recitations of the Challenged
Claim of the [’]453 Patent, and either anticipates or renders obvious the
Challenged Claim.” Id. at 27; Ex. 1003 ¶ 50. As explained above, see
Section III.D, Petitioner’s failure to present evidence of that knowledge and
evidence of a rationale for modifying the teachings of the reference in
accordance with that knowledge does not comply with 37 C.F.R.
§§ 42.104(b)(4) and 42.104(b)(5). See generally Samsung Elecs.,
Case IPR2015-01233, slip op. at 18 (Paper 14).
Accordingly, for the reasons discussed above and in Section III.E.2,
Petitioner has not established, on this record, a reasonable likelihood of
IPR2015-01439
Patent 6,289,453 B1

19
prevailing on the assertion that Swanson would have rendered the subject
matter of claim 43 of the ’453 patent obvious as of the effective filing date
of the claimed invention.
G. Anticipation of Claim 43 by Clark
Petitioner asserts that Clark discloses each and every element of
claim 43 of the ’453 patent. Pet. 29–32. The Petition includes a discussion
identifying where Clark allegedly discloses the elements of claim 43. Id.
1. Clark
Clark is directed to “[a] handheld graphic user interface . . . personal
digital assistant (PDA) computer . . . for the collection of data associated
with position information.” Ex. 1014, at [57]. Clark explains:
A farmer may conveniently carry his PDA with him as he
farms to make data entries on the spot. This data is thusly
“validated” by its time stamp and place of entry with GPS
position data. This includes the completion of various farm
operations such as tilling, the application of chemicals or
herbicides to a field, the observed temperature or rainfall, a
scouting observation of insect or disease infestation or virtually
any other data . . . .
Id. at 3:41–49.
2. Discussion
As discussed above, claim 43 includes the step of “generating an
augmented measurement based at least in part on the first signal, the second,
signal and the third signal.” Ex. 1001, 22:30–32. Petitioner asserts that
“Clark discloses combining the GPS, chemical, temperature or rainfall
physical measurements (the first and second signals) and the time (the third
signal[]) into time-stamped, validated data entries (augmented
measurements).” Pet. 31 (Ex. 1003 ¶ 60; Ex. 1014, 3:41–46).
IPR2015-01439
Patent 6,289,453 B1

20
Patent Owner asserts that Petitioner fails to show that Clark teaches an
augmented measurement “because in Clark each measurement is time
stamped and recorded separately.” Prelim. Resp. 26.
We recognize that Petitioner relies upon Clark’s teaching of a data
entry, e.g., observed temperature, as a first signal based in part on a first
physical measurement, and Clark’s teaching of GPS position data as a
second signal based in part on a second physical measurement. See Pet. 30–
31; see id. at 31 (also indicating that GPS position data could constitute both
the first and second signals because position is made up of several separate
physical measurements, e.g., longitude and latitude). And, we agree with
Petitioner that Clark teaches that a farmer’s data entry is “validated” by a
time stamp and place of entry with GPS position data. Even accepting these
contentions, however, Petitioner has not shown where Clark discloses
effecting the combination based on first, second, and third signals that its
implicit construction of “generating an augmented measurement” requires.
Assuming Petitioner intended to rely on Clark’s use of the term “validated,”
Petitioner does not explain how or why one of ordinary skill in the art would
understand that “validated” results in such generation of an augmented
measurement. Petitioner’s reliance upon Dr. Nielson’s testimony fares no
better because, as with Dr. Nielson’s testimony in support of Petitioner’s
other grounds, his testimony repeats verbatim the same conclusory sentence
from the Petition, without additional elaboration or explanation. See
Ex. 1003 ¶ 60; 37 C.F.R. § 42.65(a).
Accordingly, on this record, we are not persuaded that Petitioner has
established a reasonable likelihood of prevailing on the assertion that Clark
discloses each and every element of claim 43 of the ’453 patent.
IPR2015-01439
Patent 6,289,453 B1

21
H. Obviousness of Claim 43 over Clark
Petitioner provides no meaningful analysis of its obviousness
challenge over Cox independent of its anticipation challenge. Pet. 29–32.
Instead, Petitioner relies on a blanket assertion, repeated by Dr. Nielson, that
“Clark alone, or in combination with the knowledge of a person of ordinary
skill in the art, discloses all of the recitations of the Challenged Claim of the
[’]453 Patent, and either anticipates or renders obvious the Challenged
Claim.” Id. at 29; Ex. 1003 ¶ 44. As explained above, see Section III.D,
Petitioner’s failure to present evidence of that knowledge and evidence of a
rationale for modifying the teachings of the reference in accordance with
that knowledge does not comply with 37 C.F.R. §§ 42.104(b)(4) and
42.104(b)(5). See generally Samsung Elecs., Case IPR2015-01233, slip op.
at 18 (Paper 14).
Accordingly, for the reasons discussed above and in Section III.G.2,
Petitioner has not established, on this record, a reasonable likelihood of
prevailing on the assertion that Clark would have rendered the subject matter
of claim 43 of the ’453 patent obvious as of the effective filing date of the
claimed invention.
I. Obviousness of Claim 43 over Clark and FIPS 113
Petitioner asserts that the combination of Clark and FIPS 113 would
have rendered the subject matter of claim 43 obvious to one of ordinary skill
in the art. Pet. 32–33. Petitioner contends:
To the extent that Clark may not specifically, expressly or
inherently disclose element 43[f] reciting “performing a
cryptographic operation on at least a portion of the augmented
measurement to form a certified measurement,” FIPS 113
discloses a federal standard method of encrypting any type of
data that can be used with Clark.
IPR2015-01439
Patent 6,289,453 B1

22
Id. at 32. Petitioner does not contend that FIPS 113 remedies the
deficiencies discussed above with respect to whether Clark teaches or
suggests the “generating an augmented measurement” step of claim 43.
Accordingly, for the reasons discussed in Section III.G.2, Petitioner
has not established, on this record, a reasonable likelihood of prevailing on
the assertion that Clark and FIPS 113 would have rendered the subject
matter of claim 43 of the ’453 patent obvious as of the effective filing date
of the claimed invention.
IV. CONCLUSION
For the foregoing reasons, we are persuaded that the information
presented in the Petition does not demonstrate that there is a reasonable
likelihood that Petitioner would prevail in challenging claim 43 of the
’453 patent as unpatentable.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to the challenged claim of
the ’453 patent; and
FURTHER ORDERED that no inter partes review is instituted.

IPR2015-01439
Patent 6,289,453 B1

23
For PETITIONER:

Rafael A. Perez-Pineiro
James A. Gale
Javier Sobrado
FELDMAN GALE, P.A.
RPerez@FeldmanGale.com
JGale@FeldmanGale.com
JSobrado@FeldmanGale.com

For PATENT OWNER:

Tarek N. Fahmi
Holly J. Atkinson
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
holly.atkinson@ascendalaw.com