TRAXCELL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Dec 7, 2021

IPR2021-01004 (P.T.A.B. Dec. 7, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Date: December 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

TRAXCELL TECHNOLOGIES, LLC,
Patent Owner.

IPR2021-01004
Patent 9,918,196 B2

Before MIRIAM L. QUINN, PATRICK M. BOUCHER,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2021-01004
Patent 9,918,196 B2

2

I. INTRODUCTION
On June 16, 2021, Google LLC (“Petitioner”) filed a Petition (“Pet.”)
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–30 of U.S. Patent No. 9,918,196 B2 (“the ’196 patent”). Paper 1.
On September 23, 2021, Traxcell Technologies, LLC (“Patent Owner”) filed
a Preliminary Response (“Prelim. Resp.”). Paper 6.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides that an inter partes review may not be
instituted unless the information presented in the Petition and any
preliminary response shows that “there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.”
For the reasons explained below, we determine that Petitioner has not
shown a reasonable likelihood of prevailing on any challenged claim.
Accordingly, we do not institute an inter partes review of any claim of the
’196 patent. The Petition is denied.
II. BACKGROUND
A. The ’196 Patent
The ’196 patent, titled “Internet Queried Directional Navigation
System With Mobile And Fixed Originating Location Determination,” was
filed on September 27, 2017, issued on March 13, 2018, and lists related
continuation and continuation-in-part applications dating to September 24,
2002, and related provisional applications dating to October 4, 2001.1
Ex. 1001, codes (54), (22), (45), (63), (60).

1 The effective priority date for the claims is not at issue here.
IPR2021-01004
Patent 9,918,196 B2

3

The ’196 patent is directed to providing directional assistance in
response to an Internet query, where “[t]he location of the querying device is
. . . determined depending on whether the querying device is a wireless
device such as a mobile telephone, or whether the device has a presumed
fixed location, such as an ordinary telephone connected to a public-switched
telephone network (PSTN).” Ex. 1001, Abstr. A “Directional Assistance
Network” (DAN) described in the ’196 patent determines whether a user is
calling from a “wireless communication device (WCD),” such as a cellular
phone, a Personal Digital Assistant (PDA), or a wireless navigational
system, or is calling from a publicly switched telephone network (PSTN).
Id. at 100:15–16, 100:32–36, 101:1–3. If the user is calling from a wireless
communication device, the location of the user is determined from a user
location database, or from such methods as the Global Positioning System
(GPS) capabilities of the WCD, or from triangulation methods based on
mobile base station data handling the communications from the WCD. Id. at
18:4–7, 18:46–55, 100:32–55, 124:44–48. If the user is calling from a
PSTN, the location of the user is determined from a Publicly Switched
Telephone Network (PSTN) database. Id. at 101:1–9.
Once the location of the calling device is determined, and the
destination location is provided, an internet query to the DAN results in
directional assistance to the user. Ex. 1001, Abstr., Fig. 70, 101:21–44.
B. Illustrative Claim
Independent claim 1 is reproduced below.
1. A method of providing navigation assistance to a user
of a communications device, the method comprising:
IPR2021-01004
Patent 9,918,196 B2

4

receiving, by a directional assistance service, an Internet
query initiated at the communications device and
directed via the Internet to initiate a request for
navigational assistance to a destination;
responsive to receiving the Internet query, determining
whether or not the communications device is a
mobile wireless communications device;
responsive to determining that the communications
device is the mobile wireless communications
device, the directional assistance service
determining and using a present location of the
mobile wireless communications device as a
location of the communications device;
responsive to determining that the communications
device is not the mobile wireless communications
device, obtaining a fixed location associated with
the communications device to determine the
location of the communications device; and
the directional assistance service providing navigation
information to the communications device in
response to the Internet query, wherein the
navigation provides directions for proceeding from
the location of the communications device to a
location of the destination.
Ex. 1001, 127:67–128:3.
C. References
Petitioner relies on the following references (Pet. 3):
 Hancock et al., US 6,202,023 B1. Ex. 1005 (“Hancock”).
 Karp et al., US 6,591,242 B1. Ex. 1006 (“Karp”).
 Rayburn, US 6,937,869 B1. Ex. 1010 (“Rayburn”).
 Takaki, US 6,029,069. Ex. 1007 (“Takaki”).
 Enzmann et al., US 7,130,630 B1. Ex. 1008 (“Enzmann”).
IPR2021-01004
Patent 9,918,196 B2

5

 Behr et al., US 6,107,944. Ex. 1009 (“Behr”).
Petitioner also filed the Declaration of Dr. William Michalson in support of
the Petition. Ex. 1003 (“Michalson Decl.”).
D. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–30 of the ’196
patent on the following grounds (Pet. 3):
E. Real Parties in Interest
The parties identify themselves as the real parties in interest. Pet. 94;
Paper 4, 3.
F. Related Proceedings
The parties identify as related matters, Traxcell Technologies, LLC v
Google LLC., 6:21-cv-00023-ADA, filed January 12, 2021; Traxcell
Technologies, LLC v. Apple, Inc., 6:21-cv-00074, filed January 26, 2021;
Traxcell Technologies, LLC v. Verizon Wireless Personal Communications,
Claims Challenged 35 U.S.C. § References
1, 4, 5, 7, 8, 10, 11, 15,
18–20, 22, 24, 25
103 Hancock, Karp
2, 3, 16, 17, 29, 30 103 Hancock, Karp, Rayburn
6, 9, 13, 21, 23, 27 103 Hancock, Karp, Takaki
12, 26 103 Hancock, Karp, Enzmann
14, 28 103  Hancock, Karp, Takaki,
Enzmann
1, 4, 5, 7, 8, 10–12, 15,
18–20, 22, 24–26
103 Behr, Karp
2, 3, 6, 9, 13, 14, 16, 17,
21, 23, 27–30
103  Behr, Karp, Rayburn
IPR2021-01004
Patent 9,918,196 B2

6

LP, 6:21-cv-01175, filed December 21, 2020; Traxcell Technologies, LLC v
Nokia Solutions and Networks US, LLC, 2-18 cv-00412, filed September 26,
2018; and Traxcell Technologies, LLC v Huawei Technologies, USA, Inc. 2-
18-cv- 00354, filed August 13, 2018. Pet. 95; Paper 3, 1; Paper 4, 3.
III. ANALYSIS
A. Obviousness: Legal Standards
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
question of obviousness is resolved on the basis of underlying factual
determinations, including “the scope and content of the prior art”;
“differences between the prior art and the claims at issue”; and “the level of
ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
Additionally, secondary considerations, such as “commercial success,
long felt but unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented. As indicia of obviousness or nonobviousness, these inquiries
may have relevancy.” Graham, 383 U.S. at 17–18.
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. Rather, an obviousness determination requires finding
“both ‘that a skilled artisan would have been motivated to combine the
IPR2021-01004
Patent 9,918,196 B2

7

teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success in
doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements [in the way the claimed] new invention does”).
“Although the KSR test is flexible, the Board ‘must still be careful not to
allow hindsight reconstruction of references . . . without any explanation as
to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted).
Further, an assertion of obviousness “cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
articulation [] of motivation to combine”; “instead, the finding must be
supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
burden of proving obviousness, a petitioner cannot employ mere conclusory
statements. The petitioner must instead articulate specific reasoning, based
on evidence of record, to support the legal conclusion of obviousness.”).
The motivation to combine must be “accompanied by a reasonable
expectation of achieving what is claimed in the patent-at-issue.” Intelligent
IPR2021-01004
Patent 9,918,196 B2

8

Bio-Sys, 821 F.3d at 1367. “The reasonable expectation of success
requirement refers to the likelihood of success in combining references to
meet the limitations of the claimed invention.” Id.
B. Level of Skill in the Art
Petitioner’s expert Dr. Michalson, opines:
[A] person of ordinary skill in the art of the ’196 patent as of its
earliest claimed priority date would have been someone
knowledgeable in mobile communication devices and mobile
navigation systems. That person would have at least a
Bachelor’s degree in Computer or Electrical Engineering,
Computer Science, or equivalent training, and approximately 2
years of experience working on telecommunications, navigation
and geolocation systems.
Michalson Decl. ¶ 35.
Patent Owner submits a declaration of Robert Van Essen, who opines:
[A] person of ordinary skill in the art (“POSITA”) at the time of
the filing the ‘196 Patent would have at least a Master of Science
(“MS”) Degree in Computer Science, Computer Engineering,
Cartography, or equivalent work experience in the field of
computer networks, along with knowledge of the general
structure of networked communication systems, its hardware and
software components and underlying communications
technologies. In addition, a POSITA would be familiar with the
latest communications standards.
Ex. 2001 (hereafter, “Van Essen Decl.”) ¶ 21.
Either proposal is consistent with the level of ordinary skill in the art
reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On
this record, the level of ordinary skill is neither in dispute nor dispositive of
IPR2021-01004
Patent 9,918,196 B2

9

any challenge. For purposes of this Decision, we apply Petitioner’s
articulation.
C. Claim Construction
The Petition was accorded a filing date of June 16, 2021. Paper 3, 1.
In an inter partes review for a petition filed on or after November 13, 2018,
a claim “shall be construed using the same claim construction standard that
would be used to construe the claim in a civil action under
35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply the claim
construction standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc).
Claim terms need only be construed to the extent necessary to resolve
the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017).
Petitioner states, “[n]o claims need be expressly construed.” Pet. 2.
Patent Owner does not propose any constructions of the claims for purposes
here. Prelim. Resp. 3–4. For purposes of this Decision, we do not construe
any claim terms.
D. Ground 1: Obviousness of Claims 1, 4, 5, 7, 8, 10, 11, 15, 18–20, 22,
24, and 25 Over Hancock and Karp
Petitioner challenges claims 1, 4, 5, 7, 8, 10, 11, 15, 18–20, 22, 24,
and 25 as obvious over the combination of Hancock and Karp. Pet. 4–38.
1. Hancock
Hancock, titled “Internet Based Geographic Location Referencing
System and Method,” was filed February 25, 1999, and issued
March 13, 2001. Ex. 1005, codes (54), (22), (45). Hancock is directed to
IPR2021-01004
Patent 9,918,196 B2

10

automatically providing services over a computer network, such as the
Internet, for users in a mobile environment based on their geographic
location. Id. at Abstr. For example, the “[t]he subject invention may be
used for general vehicular navigation,” or “to direct local traffic to a
particular point of interest.” Id. at 17:35–36, 17:52–53. Figure 13 of
Hancock is reproduced below.

Figure 13 depicts portable-computing device 1302 installed in mobile unit
1304, in which is installed an “automatic location identification” (ALI)
device that automatically determines the location of the device. Ex. 1005,
23:44–45, 3:4, 3:16–20. Two different embodiments of ALI examples are
depicted in Figure 13: ALI Example I (item 1301) and ALI Example II (item
1303). For ALI Example I, the device receives data from Global Positioning
System (GPS) satellites 1310 for location identifying purposes. Id. at
23:52–57. In the alternative embodiment of ALI Example II, the device
location is automatically determined via a cellular transmission using
IPR2021-01004
Patent 9,918,196 B2

11

triangulation techniques in conjunction with at least two cellular base
stations, or distance measuring techniques from three cellular base stations,
such as base station 1306. Id. at 23:57–65. An additional alternative
embodiment of an ALI, not shown in Figure 13, is the use of automatic
identification signals commonly used in land-line telephonic devices (such
as “Automatic Number Identification” (ANI) in conjunction with a database
lookup table to identify a callers fixed location. Id. at 24:1–4.
As shown in Figure 13, portable-computing device 1302 is connected
to Internet 1318 via base station 1306, mobile Switching office 1308, and
public switched telephone network 1312. Ex. 1006, 24:25–38. Primary
server 1314 is also coupled to Internet 1318, and interfaces with portable-
computing device 1302, and is also coupled to enhanced servers 1315, which
provide location specific data to portable-computing device 1302. Id. at
24:39–46. An application program installed on portable-computing device
1302, which determines the current location of the device via the ALI,
obtains from the user the desired destination location, and formulates a
query sent to primary server 1314 via Internet 1318. Id. at Figs. 15, 16,
26:24–29, 27:19–28:2. The results from the query are then retrieved via
enhanced servers 1315, and sent to the client. Id. at Fig. 16, 28:3–8.
2. Karp
Karp, titled “Visit Verification Method and System,” was filed April
15, 1999, and issued July 8, 2003. Ex. 1006, codes (54), (22), (45). Karp is
directed to tracking clients as they visit the locations of various recipients,
where information from the client’s device is provided to a central computer,
which uses the information to determine the client’s location. Id. at Abstr.
Figure 1 of Karp is reproduced below.
IPR2021-01004
Patent 9,918,196 B2

12

Figure 1 depicts wireless phone 112 and standard plain old telephone service
(POTS) phone 114 interfacing with computer 120 via a PSTN. Id. at 3:40–
44. The PSTN includes wired segments 118A and wireless segments 118B.
Id. at 3:44–45. Computer 120 implements processes 140 for determining, on
the basis of information from packet 144 received from the client: who
called, when they called, where they called from, what they did when they
were at the location, and how long they were at the location. Id. at 3:66–4:3.
The process for determining the location of the client is shown in
Figure 11B, reproduced below.
IPR2021-01004
Patent 9,918,196 B2

13

As shown in the flow chart of Figure 11B, the process first determines,
based on information received in incoming packets from the client, if the call
is a cell call (step 1130). Ex. 1006, 12:19–24. For example, ANI can be
used to look up a database entry which lists the number as cellular, or the
ANI may be a unique identifier which identifies the call as a wireless cell
call. Id. at 12:24–27, 12:37–40. If the call is a cell call, steps 1132–1142
use information from the cellular system to determine the call location, such
as via GPS or triangulation. Id. at 12:40–44, 12:47–57, 7:62–63. If the call
is not a cell call, in step 1150 the ANI from the incoming packet is matched
against phone numbers in the PSTN database to determine location. Id. at
14:28–34.
IPR2021-01004
Patent 9,918,196 B2

14

3. The Combination of Hancock and Karp
Petitioner argues that one of ordinary skill would have been motivated
to combine the geographic location system of Hancock with the location
determination approach of Karp, resulting in a combination that would have
rendered obvious, for example, independent claim 1. Pet. 6–26. Petitioner’s
combination would relocate the automatic location identification device of
Hancock from the portable computing device to the server, as is the case for
Karp. Id. at 15–16. Petitioner would also change the order of operations of
Hancock as illustrated in Petitioner’s annotated version of Figure 16 as
reproduced below.
IPR2021-01004
Patent 9,918,196 B2

15

The above annotated Figure 16 relocates “Determine Current Location” step
1602, from the first step disclosed in Hancock, to the sixth step. Pet. 2021.
Thus located, step 1602 now follows the establishment of the connection of
the portable computing device to the server and the receipt by the server of
the data packet corresponding to the query transmitted from the portable
computing device. Id. In addition, Petitioner’s asserted combination would
IPR2021-01004
Patent 9,918,196 B2

16

include, in the “Determine Current Location” step of Hancock, step 1130 of
Karp, which determines if the call is a cell call. Id. at 12–13.
Petitioner argues that one of ordinary skill would have been motivated
to make this combination because identifying the location of the requesting
device at the server, rather than at the mobile device, would have realized
efficiency gains and reduced power consumption and processing power at
the mobile device. Pet. 15–16. Petitioner argues that Hancock suggests this
modification because it “expressly envisions flexibility in its system
architecture where functionality described within the mobile device can be
implemented outside the device, including at the server.” Id. at 21 (citing
Ex. 1005, 25:15–21, 30:58–64). Also, argues Petitioner, as of the time of the
’196 patent, the database used for device location would be more feasibly
implemented on a server rather than on a mobile device. Id. at 22.
As to adding Karp’s step 1130 to Hancock (i.e., determining if the call
is a cell call), Petitioner argues that even though Hancock has “no express
disclosure” of such a step, the “identification technique disclosed in
Hancock necessarily includes a determination of whether the device type is
fixed or mobile.” Pet. 15. Therefore, argues Petitioner, given that Karp
discloses a location-determination system similar to Hancock, the same
efficiencies gained by moving location determination to the server would
also have suggested incorporating the cell call determination step of Karp,
thus satisfying, for example, the claim 1 requirement, “determining whether
or not the communications device is a mobile wireless communications
device.” Id. at 11, 15–16. Petitioner argues that this is an example where “if
a technique has been used to improve one device, and a [POSA] would
recognize that it would improve similar devices in the same way, using the
IPR2021-01004
Patent 9,918,196 B2

17

technique is obvious.” Id. at 14 (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, (2007)).
Patent Owner argues Petitioner’s proposed combination does not
render obvious the Ground 1 challenged claims because “[t]he Karp system
is designed for visit verification . . . not for navigation assistance.” Prelim.
Resp. 11. Patent Owner also disputes that Hancock includes any suggestion
that the ALI can be implemented at the server. Id. at 13 (citing Van Essen
Decl. ¶ 44). Patent Owner further argues that “Karp’s ‘remote computer’,
cannot query, by itself, a plurality of wireless networks for location
information [to] retrieve location information therefrom.” Id. at 14 (citing
Van Essen Decl. ¶ 49). In addition, Patent Owner argues that “in Hancock
and Karp, the location database, server, PSTN, etc., all are placed on
different locations; wherein in the ‘196 Patent, the DAN, in various
embodiments, includes all the units in one place.” Id. at 16. Finally, Patent
Owner argues that the use of triangulation techniques to locate the mobile
device results in “low precision, low accuracy, and a low degree of
granularity,” which is “unacceptable for use in a navigational system.” Id. at
17–18 (citing Van Essen Decl. ¶¶ 61–63).
We agree with Patent Owner that nothing in Hancock suggests that
the ALI can be implemented at the server. At most, Hancock suggests that
that the ALI can be a “discrete external device[] coupled to the portable-
computing device 1302 through external ports, such as RS-232, SCSI, USB
ports or the like.” Ex. 1005, 25:17–21.
On the other hand, Patent Owner’s arguments regarding the
dependence of Karp’s remote computer on information provided by the
mobile unit, the fact that components are placed at different locations, and
IPR2021-01004
Patent 9,918,196 B2

18

the relative precision of triangulation techniques, are not commensurate with
the scope of the claims.
Nonetheless, we are not persuaded that Petitioner has sufficiently
articulated reasoning with rational underpinnings for the proffered
combination, as required by KSR. Contrary to Petitioner’s assertion, it is not
the case that “the identification technique disclosed in Hancock necessarily
includes a determination of whether the device type is fixed or mobile.”
Pet. 15. Rather, each separate embodiment of a portable computing device
used in the Hancock system has an automatic location identification (ALI)
device that is specifically designed for that device. Ex. 1005, 23:51–24:4
(describing “ALI Example I” and “ALI Example II” for cellular devices, and
an additional example for land-line telephone devices). There is no
suggestion of providing, for any of Hancock’s devices or server, the
capability to determine whether the device is fixed or mobile, and Hancock
suggests no reason to have that capability. Each device has its own ALI that
is specifically designed for that device.
Because we find insufficient factual support for Petitioner’s basic
premise, that “the identification technique disclosed in Hancock necessarily
includes a determination of whether the device type is fixed or mobile,” the
rationale for the combination fails scrutiny. Even though Karp discloses a
step in which a server determines whether a communicating device is a cell
device, there is no persuasive reason in the present record why one of
ordinary skill would have considered that pertinent to Hancock.
This being the case, Patent Owner’s argument that Karp is designed
for visit verification and not for navigation assistance is persuasive. Here,
the record does not evidence a problem that one of ordinary skill would have
IPR2021-01004
Patent 9,918,196 B2

19

been presented with, that would have in turn led to consideration of Karp in
combination with Hancock. See Broadcom Corp. v. Emulex Corp., 732 F.3d
1325, 1334 (Fed. Cir. 2013) (prior art references that address different
problems may not support an inference that the skilled artisan would consult
both of them simultaneously).
Nor does the record provide sufficient motivation for relocating the
ALI of Hancock from the portable device to the server. The server of
Hancock is configured to expect the location of the portable device to have
already been determined by the ALI of the device and included in the query
received from the device. Ex. 1005, Figs. 16, 17, 26:12–23, 27:19–25, 28:3–
8, 29:39–41. Petitioner’s arguments are directed to efficiency gains and
reduced power consumption resulting in relocating the ALI to the server,
which requires the reordering of steps as illustrated in the annotated version
of Hancock Figure 16 reproduced above. Those arguments, however,
presuppose an additional motivation to fundamentally alter Hancock’s use of
ALIs specifically configured for each participating portable device, capable
of connection to servers that expect to be provided with location information
from the local ALIs. Petitioner has not established sufficiently such
additional motivation.
Accordingly, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail with respect to its challenge of
claims 1, 4, 5, 7, 8, 10, 11, 15, 18–20, 22, 24, and 25 as obvious over the
combination of Hancock and Karp.
IPR2021-01004
Patent 9,918,196 B2

20

E. Grounds 2–5
Petitioner challenges claims 2, 3, 16, 17, 29, and 30 as obvious over
the combination of Hancock, Karp, and Rayburn, claims 6, 9, 13, 21, 23 and
27 as obvious over the combination of Hancock, Karp, and Takaki, claims
12 and 26 as obvious over the combination of Hancock, Karp, and Enzmann,
and claims 14 and 28 as obvious over the combination of Hancock, Karp,
Takaki, and Enzmann. Pet. 39–60.
Independent claims 29 and 30 are similar to claim 1, and add
additional limitations that Petitioner alleges are taught by Rayburn. Pet. 47–
48. For the requirements of those claims that are commensurate to the
claim 1 limitations, Petitioner relies solely on the above discussed
combination of Hancock and Karp. Id. Accordingly, we are not persuaded
that Petitioner has demonstrated a reasonable likelihood that it would prevail
with respect to its challenge of claims 29 and 30 as obvious over the
combination of Hancock, Karp, and Rayburn.
Claims 2, 3, 6, 9, 12–14, 16, 17, 21, 23, 26, 27, and 28 depend from
independent claims 1 or 15. Ex. 1001, 128:4–132:51. Petitioner does not
rely on Rayburn, Takaki, or Enzmann as having taught or suggested the
limitations of those independent claims. E.g., Pet. 50. Accordingly, we are
not persuaded that Petitioner has demonstrated a reasonable likelihood that it
would prevail with respect to its challenge of claims 2, 3, 16, and 17 as
obvious over the combination of Hancock, Karp, and Rayburn, claims 6, 9,
13, 21, 23 and 27 as obvious over the combination of Hancock, Karp, and
Takaki, claims 12 and 26 as obvious over the combination of Hancock,
Karp, and Enzmann, and claims 14 and 28 as obvious over the combination
of Hancock, Karp, Takaki, and Enzmann.
IPR2021-01004
Patent 9,918,196 B2

21

F. Ground 6: Obviousness of Claims 1, 4, 5, 7, 8, 10–12, 15, 18–20, 22,
and 24–26 Over Behr and Karp
Petitioner challenges claims 1, 4, 5, 7, 8, 10–12, 15, 18–20, 22, and
24–26 as obvious over the combination of Behr and Karp. Pet. 60–84.
1. Behr
Behr, titled “Electronic Navigation System and Method,” was filed
September 10, 1998, and issued August 22, 2000. Ex. 1009, codes (54),
(22), (45). Behr is directed to providing route guidance and other
information from a base unit to a remote unit in response to a request from
the remote unit. Id. at Abstr. Figure 1 of Behr is reproduced below.

IPR2021-01004
Patent 9,918,196 B2

22

Figure 1 shows a base unit 12 in communication with three exemplary
remote units 14: desktop computer 16, laptop computer 18, and pager 20.
Ex. 1009, 7:26–38. Laptop 18 includes position locator (“POS”) 42, which
IPR2021-01004
Patent 9,918,196 B2

23

provides the geographical position of the laptop in the form of latitude and
longitude via, for example, radio frequency (RF) triangulation or GPS. Id. at
8:32–38. In operation, an origin and a destination are entered at the remote
unit in the form of a street address, for example, and communicated to the
base unit, which sends back the routing information. Id. at 5:65–6:10. For
laptop 18, either the keyboard is used to enter the origin location, or POS 42
can be used to provide the origin location. Id. at 8:38–47, 14:15–18.
2. The Combination of Behr and Karp
Petitioner’s arguments in support of the combination of Behr and
Karp closely track those for the Hancock/Karp combination discussed
above, with Behr taking the place of Hancock. Pet. 64–74. Similar to
Petitioner’s argument supporting the Hancock/Behr combination, Petitioner
argues that, although Behr does not expressly disclose the claimed
“determining whether or not the communications device is a mobile wireless
communications device,” it “teaches that the route guidance determination
can be based on the type of remote unit.” Id. at 64–65. Petitioner further
argues that one of ordinary skill would have been motivated to adapt Behr to
use Karp’s cell call determination step 1130. Id. at 65–68. Petitioner
argues, “Karp . . . describes the efficiencies gained in identifying and
tracking client locations by determining whether the requesting device is
mobile.” Id. at 68 (citing Ex. 1006, 12:21–22). Petitioner further argues that
moving location determination to the server and adding the cell call
determination step “would reduce power consumption and processing power
at the mobile device.” Id. at 68–69.
Patent Owner’s arguments disputing the Behr/Karp combination also
track those made in challenging the combination of Hancock/Karp. Prelim.
IPR2021-01004
Patent 9,918,196 B2

24

Resp. 45–49. For reasons comparable to those discussed above for the
Hancock/Karp combination, we are not persuaded that Petitioner has
sufficiently articulated reasoning with rational underpinnings for the
proffered combination, as required by KSR. Contrary to Petitioner’s
assertion (at Pet. 64), there is no suggestion in Behr that “the route guidance
determination can be based on the type of remote unit.” Karp simply
discloses that, for a laptop computer, POS 42 can determine the present
location of the device, as an alternative to simple keyboard entry of the
location. Ex. 1009, 8:32–47. Nor does Karp describe “the efficiencies
gained . . . by determining whether the requesting device is mobile,” as
alleged by Petitioner — the passage relied on simply states that “a
determination is made as to whether a wireless or fixed call is being
received.” Ex. 1006, 12:21–22.
Behr does not suggest determining whether the device type is fixed or
mobile, and we are not persuaded the record establishes a sufficient reason
why one of ordinary skill would have considered Karp’s cell call
determination step 1130 as pertinent to Behr. Nor does the record provide
sufficient motivation for relocating the functionality of POS 42 in Behr from
the remote unit to the base unit. The base unit of Behr is configured to
expect the location of the laptop to have already been determined by POS
42, or entered manually at the keyboard, and included in the query received
from the remote unit. Ex. 1009, 5:65–6:10. Petitioner’s arguments directed
to efficiency gains and reduced power consumption resulting in relocating
operation to the server, presuppose some additional motivation to
fundamentally alter the approach of Behr, which is based on position
determination or manual entry at the remote devices, capable of connection
IPR2021-01004
Patent 9,918,196 B2

25

to servers that expect to be provided with location information from those
remote devices. Petitioner has not established such additional motivation.
Accordingly, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail with respect to its challenge of
claims 1, 4, 5, 7, 8, 10–12, 15, 18–20, 22, and 24–26 as obvious over the
combination of Behr and Karp.
G. Ground 7
Petitioner challenges claims 2, 3, 6, 9, 13, 14, 16, 17, 21, 23, and 27–
30 as obvious over the combination of Behr, Karp, and Rayburn. Pet. 85–
93. Independent claims 29 and 30 are similar to claim 1, and add additional
limitations that Petitioner alleges are taught by Rayburn. Pet. 91–93. For
the requirements of those claims that are commensurate to the claim 1
limitations, Petitioner relies solely on the above discussed combination of
Behr and Karp. Id. Accordingly, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail with respect to its
challenge of claims 29 and 30 as obvious over the combination of Behr,
Karp, and Rayburn.
Claims 2, 3, 6, 9, 13, 14, 16, 17, 21, 23, 27, and 28 depend from
independent claims 1 or 15. Ex. 1001, 128:4–132:51. Petitioner does not
rely on Rayburn as having taught or suggested the limitations of those
independent claims. E.g., Pet. 86–87. Accordingly, we are not persuaded
that Petitioner has demonstrated a reasonable likelihood that it would prevail
with respect to its challenge of claims 2, 3, 6, 9, 13, 14, 16, 17, 21, 23, 27,
and 28 as obvious over the combination of Behr, Karp, and Rayburn.
IPR2021-01004
Patent 9,918,196 B2

26

IV. CONCLUSION
After considering the evidence and arguments presented in the
Petition and the Preliminary Response, Petitioner has not shown a
reasonable likelihood that it would prevail in establishing unpatentability of
any claim of the ’196 patent.
V. ORDER
It is
ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes
review of claims 1–30 of the ’196 patent is instituted, and the Petition is
denied.

IPR2021-01004
Patent 9,918,196 B2

27

PETITIONER:
Trenton Ward
Kara A. Specht
A. Safiya Aguilar
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
trenton.ward@finnegan.com
kara.specht@finnegan.com
a.safiya.aguilar@finnegan.com

PATENT OWNER:
William P. Ramey, III
Melissa D. Schwaller
Ramey & Schwaller, LLP
wramey@rameyfirm.com
mschwaller@rameyfirm.com