Apple, Inc.v.TracBeam LLC

Patent Trial and Appeal Board

Feb 12, 2016

12014092 (P.T.A.B. Feb. 12, 2016)

Trials@uspto.gov Paper 7
Tel: 571.272.7822 Date Entered: February 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
TRACBEAM, LLC,
Patent Owner.

Case IPR2015-01700
Patent 8,032,153 B2

Before KEVIN F. TURNER, RICHARD E. RICE, DAVID C. MCKONE,
and BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
A. Background
Petitioner, Apple Inc., filed a Petition (Paper 1, “Pet.”) requesting that
we institute an inter partes review of claims 1–3, 6, 7, 15, 17, 18, 20, 21, 23,
24, 27–29, 32, 33, 35–39, and 42 (“the challenged claims”) of U.S. Patent
No. 8,032,153 B2 (Ex. 1001, “the ’153 Patent”). Patent Owner, TracBeam,
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LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
review may not be instituted “unless . . . the information presented in the
petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a).
Petitioner asserts that the challenged claims are unpatentable, under
35 U.S.C. § 103(a), as they would have been obvious over the combined
teachings of PCT ’3071 and FCC 99-245.2 Pet. 43–55. Based on our review
of the record, we determine that Petitioner has not established a reasonable
likelihood that it would prevail with respect to at least one challenged claim
of the ’153 patent. Accordingly, under the standard of § 314, we deny the
Petition and decline to institute an inter partes review of the challenged
claims of the ’153 patent.
B. Related Proceedings
Petitioner and Patent Owner identify, as related proceedings, two
lawsuits in which the ’153 patent is asserted, pending in the United States
District Court for the Eastern District of Texas, captioned TracBeam, LLC v.
Apple Inc., Case Number 6:14-cv-680, and TracBeam, LLC v. T-Mobile US,
Inc., Case Number. 6:14-cv-678. Pet. 1; Paper 5, 1. Patent Owner identifies
additional proceedings, that Patent Owner contends could affect, or be
affected by, a decision in this proceeding. Paper 5, 1–4.

1 PCT Patent Publication No. WO 98/10307, published March 12, 1998
(Ex. 1003) (“PCT ’307”).
2 Federal Communications Commission, Third Report and Order, 14 FCC
Rcd. 17012 (1999) (Ex. 1012) (“FCC 99-245”).
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C. The ’153 Patent
The ’153 Patent relates to a wireless location system for receiving
requests for locating mobile stations and providing location estimates.
Ex. 1001, Abstract.
D. Illustrative Claims
Of the challenged claims, claim 1 is independent. The other
challenged claims depend, directly or indirectly, from claim 1. Claim 1 is
illustrative and is reproduced below.
1. A method for locating, from a plurality of wireless
mobile stations, one of the wireless mobile stations using
measurements of wireless signals, wherein at least one of:
(i) said measurements and (ii) said wireless signals are
transmitted between said one wireless mobile station and at
least one of a plurality of fixed location communication
stations, each communication station capable of at least one of
receiving wireless signals from, and transmitting wireless
signals to said one wireless mobile station, comprising the
following steps at A and B which are performed by
computational machinery:
(A) receiving, from each of at least first and second
mobile station location estimators, corresponding
first and second information related to likely
geographical approximations for a location of said
one wireless mobile station, wherein (a) and (b)
following are satisfied:
(a) for determining a likely geographical
approximation, GAA, for a location, LA, of a
second of the wireless mobile stations at a
time TA, said first mobile station location
estimator generates GAA without requiring a
prior likely geographical location
approximation generated by said second
mobile station location estimator for
locating the second wireless mobile station
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at substantially the location LA at
substantially the time TA, and,
(b) for estimating a likely geographical
approximation, GAB, for a location, LB, of a
third one of the wireless mobile stations at a
time TB, said second mobile station location
estimator generates GAB without requiring a
prior likely geographical location
approximation generated by said first mobile
station location estimator for locating the
third wireless mobile station at the location
LB at substantially the time TB;
(B) determining a resulting location estimate of said one
wireless mobile station, wherein said step of
determining includes at least one of the substeps
(Bl) through (B2) following:
(Bl) when said first and second information
include, respectively, first and second likely
geographical approximations, combining
said first and second likely geographical
approximations so that said resulting
location estimate is dependent on each of
said first and second location likely
geographical approximations; and
(B2) selecting one of said first and second
information for receiving preference in
determining said resulting location estimate,
wherein said selecting is dependent upon
location related data in at least one of said
first and second information.
Ex. 1001, 169:7–55.
E. Claim Construction
1. Summary of the Petitioner’s Contentions
Here, Petitioner contends that the challenged claims “broadly
encompass the use of GPS-equipped handsets in making location
determinations.” Pet. 30. Petitioner also phrases its contention as “[t]he
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amendments made to the specification . . . reveal that Dr. Dupray intended
to broaden the scope of his claims to encompass the use of GPS receivers in
handsets.” Id. at 31. Petitioner provides another phrasing of its contention
by stating that independent claim 1 encompasses “GPS-equipped ‘mobile
stations,’ including GPS handsets.” Id. at 32. We note that Petitioner relies
on the testimony of Mr. Kevin S. Judge (Pet. 30 (citing Ex. 1002 ¶¶ 25–27)).
2. Analysis
For the purposes of this Decision, we are not persuaded that any of the
terms identified by Petitioner requires express construction, because even if
we were to adopt Petitioner’s proffered positions on claim construction,
Petitioner has not met its burden to show that it is reasonably likely to
succeed in showing that the challenged claims are unpatentable. See Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(“[O]nly those terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.”).
II. ANALYSIS
A. Obviousness of the Challenged Claims
Petitioner asserts that the challenged claims of the ’153 Patent are
unpatentable, under 35 U.S.C. § 103(a), as they would have been obvious
over the combined teachings of PCT ’307 and FCC 99-245. Pet. 43–55.
More specifically, Petitioner asserts that the challenged claims are not
entitled to priority, under 35 U.S.C. § 120, of the parent U.S. Patent
Application No. 09/194,367 (“’367 application”), which is the National
Stage application corresponding to International Application
No. PCT/US97/15892 (“PCT ’892”), filed on September 8, 1997. Pet. 2–3.
Petitioner asserts, therefore, that the challenged claims are unpatentable over
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the publication of PCT ’892, published as PCT ’307 on March 12, 1998, in
combination with other art, i.e., FCC 99-245. Id. at 3.
1. Whether the ’153 Patent is Entitled to the Filing Date of the
’367 Application
Petitioner asserts that the challenged claims are not entitled to priority
because “they lack written description support.” Pet. 33. In particular,
Petitioner contends that PCT ’892, published as PCT ’307, “does not contain
any disclosure whatsoever of a GPS handset.” Id. at 36. Patent Owner
points out correctly that the challenged claims do not recite expressly “GPS
handset.” Prelim. Resp. 8.
However, even assuming that the claims encompass a GPS handset,
we are not persuaded, based on the arguments and evidence presented, that
PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent
application to which the priority claim is made was published as PCT ’307
(Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual
description and more than 50 pages of drawings. See, generally, Ex. 1003.
We note that PCT ’307 includes a similar definition section to that in the
’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides
a non-exclusive list of wireless technologies that the mobile stations may use
to communicate with any of “infrastructure base stations 122,” “mobile base
stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26.
Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307
discloses that the “mobile location unit” in a mobile base station may be
similar to that in a mobile unit “For example . . . the electronics of the

3 Citations are to the page numbers of the PCT ‘307, not to the page
numbering provided in the footer.
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mobile location unit may be little more than an onboard MS 140.” Ex. 1003,
102. This is consistent with the definitions section, which indicates that the
term “mobile station” (“MS”) is synonymous with “location unit.” Id. at
11(explaining in definition 3.2 that “in some contexts herein instead or in
addition to MS, the following terms are also used . . . ‘location unit’ (LU).
In general these terms may be considered synonymous.”). PCT ’307 further
discloses that a GPS receiver may be incorporated into that “mobile location
unit”—which may be “little more than an onboard MS 140.” Id. (“In an
enhanced version of the mobile location unit, a GPS receiver may also be
incorporated so that the location of the mobile location unit may be
determined.”). Therefore, in light of these disclosures and the arguments
before us, we determine that even if the claims require a GPS handset as
Petitioner asserts, the evidence considered in its entirety supports the
conclusion that the inventor had possession of the invention as of the PCT
’892 filing date.
Petitioner, in reliance on the testimony of Mr. Judge, contends that “a
GPS receiver in a mobile base station 152 [is] separate from the mobile
station 140.” Pet. 37 (citing Ex. 1002 ¶¶ 35–38). Mr. Judge testifies that
“one of ordinary skill in the art would have understood the disclosure of
GPS in the ’892 application as applying to use of GPS only in base stations,
not GPS in mobile stations or handsets.” Ex. 1003 ¶ 37. Mr. Judge
acknowledges that PCT ’307 describes (1) “use of a GPS receiver in a
mobile base station” and (2) use of “the included GPS” to determine “the
mobile station’s location.” Id. ¶ 35. Mr. Judge, however, testifies “if the
inventors had contemplated and were in possession of GPS in a mobile
station or handset, one of skill in the art would have expected them to have
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similarly included such disclosure in the application as was included for
GPS in the mobile base station.” Id. ¶ 37.
We are not persuaded by Mr. Judge’s testimony, which is conclusory
and does not disclose sufficiently the underlying facts or data on which his
opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight
to Mr. Judge’s testimony regarding, for example, the expectation of one of
ordinary skill in the art in light of the disclosure of PCT ’307 considered in
its entirety. As Patent Owner points out, Mr. Judge and the Petition also do
not consider sufficiently the “definitions” section of PCT ’307, which we are
persuaded is highly relevant to understanding what PCT ’307 discloses.
Prelim. Resp. 15.
Petitioner bears the overall burden of persuasion to prove
unpatentability, but the burden of production, in certain circumstances, may
shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). It is unnecessary, however, to
determine whether the burden of production shifted on the issue of written
description support for the challenged claims because, even if Patent Owner
bore the burden, we determine that it identified sufficient written description
support in PCT ’307, as discussed above. The proper inquiry is whether
PCT ’307 “reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Furthermore, “[t]he disclosure as originally filed does not . . . have to
provide in haec verba support for the claimed subject matter at issue,” nor
must it describe “every conceivable and possible future embodiment of [the]
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invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364–65
(Fed. Cir. 2003) (internal quotation marks omitted).
Based on the evidence in the Petition, including Mr. Judge’s
testimony and the portions of PCT ’307 cited by Petitioner and Patent
Owner, we determine the record here indicates there is sufficient written
description support for the challenged claims. Petitioner, therefore, has not
persuaded us PCT ’307 is prior art to the challenged claims.
2. Summary of Analysis
Accordingly, we determine that Petitioner has not demonstrated a
reasonable likelihood of prevailing in showing that the challenged claims are
unpatentable on the ground that they would have been obvious over the
combined teachings of PCT ’307 and FCC 99-245.
III. ORDER
For the foregoing reasons, it is:
ORDERED that the Petition is denied and no inter partes review is
instituted.
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PETITIONER:
David L. Fehrman
Martin M. Noonen
Morrison & Foerster LLP
dfehrman@mofo.com
mnoonen@mofo.com
10684-TracBeam-IPR@mofo.com

PATENT OWNER:
Sean Luner
Dovel and Luner, LLP
sean@dovellaw.com

Steven C. Sereboff
Socal IP Law Group LLP
ssereboff@socalip.com