Apple, Inc.v.TracBeam LLC

Patent Trial and Appeal Board

Feb 19, 2016

09770838 (P.T.A.B. Feb. 19, 2016)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: February 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
APPLE INC.,
Petitioner,
v.
TRACBEAM, LLC,
Patent Owner.
_______________

Case IPR2015-01696
Patent 7,525,484 B2
_______________

Before KEVIN F. TURNER, RICHARD E. RICE, BARBARA A. PARVIS,
and MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Apple Inc. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”)
to institute an inter partes review of claims 25–28, 31, 36–43, 45, 47–51,
55–57, 60–61, 63, and 72 of U.S. Patent No. 7,525,484 B2 (Ex. 1001, “the
’484 patent”). TracBeam, LLC (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”).
Upon consideration of the Petition and Preliminary Response, we
conclude, under 35 U.S.C. § 314(a), that Petitioner has not established a
reasonable likelihood that it would prevail with respect to at least one
challenged claim of the ’484 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 ’484 patent.

B. Related Matters
The ’484 patent is the subject of several lawsuits filed in the United
States District Court for the Eastern District of Texas. Pet. 1; Paper 5, 1–2.
The ’484 patent also is the subject of Apple Inc. v. TracBeam, LLC,
Case IPR2015-01697 (PTAB), T-Mobile US, Inc.. v. TracBeam, LLC, Case
IPR2015-01708 (PTAB), and T-Mobile US, Inc. v. TracBeam, LLC, Case
IPR2015-01711 (PTAB). Pet. 1; Paper 5, 3.
Various related patents also are subjects of these and other
proceedings before the district courts and the Board. Paper 5, 1–3.

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C. The ’484 Patent
The ’484 patent describes location systems for wireless
telecommunication infrastructures. Ex. 1001, Abstract. According to the
’484 patent, the location techniques are useful for 911 emergency calls,
vehicle tracking and routing, and location of people and animals. Id. at
Abstract, 12:11–17.
Figure 4, reproduced below, illustrates an embodiment:

Figure 4 is an overall view of a wireless radio location network architecture.
Id. at 21:66–67. The network includes a plurality of mobile stations (“MS”)
140, a mobile switching center (“MSC”) 112, and a plurality of wireless cell
sites forming radio coverage area 120, each site including a fixed-location
base station 122 for voice and data communication with MSs 140. Id. at
24:41–57. The network also includes location base stations (“LBS”) 152
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with wireless location enablement, e.g., with transponders used primarily in
communicating MS location related information to location center 142 (via
base stations 122 and MSC 112). Id. at 24:57–64. LBSs can be placed, for
example, in dense urban areas, in remote areas, along highways, or wherever
more location precision is required than can be obtained using conventional
wireless infrastructure components. Id. at 28:29–38.
Location center 142 determines a location of a target MS 140. Id. at
25:8–10, 37:43–46. The system uses a plurality of techniques for locating
MSs, including two-way time of arrival (“TOA”), time difference of arrival
(“TDOA”), and Global Positioning System (“GPS”). Id. at Abstract, 9:5–23,
11:7–55, 66:45–50. To determine a location for a MS, the system computes
a first order model (also referred to as a hypothesis or estimate) for one or
more of the locating techniques, computes a confidence value for each
model indicating the likelihood that the model is correct, performs additional
computations on the models to enhance the estimates, and computes from
the models a “most likely” location for the MS. Id. at 12:62–13:20, 38:9–31.
The most likely location can be a composite of the estimates. Id. at 13:22–
30, 66:45–50.
Location estimates can be provided to location requesting
applications, such as 911 emergency, police and fire departments, taxi
services, etc. Id. at 8:52–60, 13:20–22, 38:32–34.

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D. Illustrative Claim
Of the challenged claims, claims 25, 27, 45, 49, 51, 57, and 63 are
independent. Claim 25, reproduced below, is illustrative of the claimed
subject matter:
25. A method for estimating, for each mobile station M of a
plurality of mobile stations, an unknown terrestrial
location (LM) for M using wireless signal measurements
obtained via transmissions between said mobile station M
and a plurality of fixed location terrestrial communication
stations, wherein each of said communications stations is
substantially co-located with one or more of a transmitter
and a receiver for wirelessly communicating with said
mobile station M, comprising:
initiating a plurality of requests for information related to the
location of said mobile station M, the requests provided to
each of at least two mobile station location evaluators,
wherein there is at least a first of the requests provided to
a first of the location evaluators and a second of the
requests, different from the first request, provided to a
second of the location evaluators, such that when said
location evaluators are supplied with corresponding input
data having values obtained using wireless signal
measurements obtained via two way wireless
communication between said mobile station M, and the
communication stations, each of said first and second
location evaluators determine corresponding location
information related to LM, and
wherein for at least one location L of one of the mobile stations,
said first location evaluator and said second location
evaluator output, respectively, first and second position
information related to the one mobile station being at L
wherein neither of the first and second position
information is dependent upon the other;
obtaining a first collection of location information of said mobile
station M, wherein the first collection includes first
location information from the first location evaluator, and
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second location information from the second location
evaluator;
determining resulting information related to the location LM of
the mobile station M, wherein the resulting information is
dependent on geographical information in each of the first
and second location information; and
transmitting, to a predetermined destination via a
communications network, the resulting information.
Ex. 1001, 174:11–63.

E. References Relied Upon
Petitioner relies upon the following prior art references:
Dupray (“PCT ‘307)” WO 98/10307 Mar. 12, 1998 Ex. 1003
Federal Communications Commission, Third Report and Order,
14 FCC Rcd. 17012 (1999) (“FCC 99-245”)
Ex. 1012
Stilp US 5,327,144 July 5, 1994 Ex. 1032
Petitioner also relies upon a Declaration of Kevin S. Judge. Ex. 1002
(“Judge Decl.”).
F. Asserted Grounds of Unpatentability
Petitioner argues that the challenged claims are unpatentable based on
the following grounds (Pet. 41):
Reference(s) Basis Claim(s) challenged
PCT ’307 and FCC 99-245 § 103 25–28, 31, 36–42, 45, 47–51,
55–57, 60, 61, 63, and 72
PCT ’307, FCC 99-245, and Stilp § 103 43

II. ANALYSIS
A. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
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they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted, Cuozzo Speed Techs.
LLC v. Lee, 84 U.S.L.W. 3218 (U.S. 2016). In applying a broadest
reasonable construction, claim terms generally are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
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.”).

B. Prior Art Status of PCT ’307
Petitioner argues that (1) claims 25–28, 31, 36–42, 45, 47–51, 55–57,
60, 61, 63, and 72 are unpatentable under 35 U.S.C. § 103(a) as obvious
over the combination of PCT ’307 and FCC 99-245; and (2) claim 43 is
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
PCT ’307, FCC 99-245, and Stilp. Pet. 41–59. Both grounds are predicated
upon Petitioner’s assertion 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
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’892”), filed on September 8, 1997, because that applications “lack[s]
written description support” for the challenged claims. Pet. 2–3, 32–40. As
a result, according to Petitioner, the publication of PCT ’892—PCT ’307—is
prior art. Id.
Petitioner contends specifically that PCT ’892—published as PCT
’307—“does not contain any disclosure whatsoever of a GPS handset.” Id.
at 34. Patent Owner points out correctly that the challenged claims do not
recite expressly “GPS handset.” Prelim. Resp. 8.
Even assuming that the claims encompass a GPS handset as Petitioner
asserts, we are not persuaded, based on the arguments and evidence
presented, that PCT ’307 fails to disclose a GPS handset. PCT ’307
provides more than 200 pages of textual description and more than 50 pages
of drawings. See generally Ex. 1003. PCT ’307 includes, amongst that
disclosure, 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 26.1 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 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).

1 Citations are to the page numbers of the PCT ‘307, not to the page
numbering provided in the footer.
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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 filing
date of PCT ’892 and, therefore, it’s publication—PCT ’307—is not prior
art.
Petitioner relies on the Declaration of Mr. Judge (see, e.g., Pet. 35–36
(citing Ex. 1002 ¶¶ 28–38)), who 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. 1002 ¶ 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 testifies, however, that “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 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
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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 may, in certain circumstances,
shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378–80 (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]
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 respective portions of PCT ’307 cited by Petitioner and
Patent Owner, we determine that the record here indicates there is sufficient
written description support for the challenged claims. Petitioner, therefore,
has not persuaded us that PCT ’307 is prior art to the challenged claims.
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Accordingly, we determine that Petitioner has not demonstrated a
reasonable likelihood of prevailing in showing that the challenged claims are
unpatentable on the grounds that they would have been obvious over PCT
’307 in combination with either FCC 99-245 alone or with FCC 99-245 and
Stilp.
III. CONCLUSION
We do not institute an inter partes review of any challenged claim.
IV. ORDER
For the reasons given, 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
10684-TracBeam-IPR@mofo.com

PATENT OWNER:
Sean A. Luner
DOVEL & LUNER, LLP
sean@dovellaw.com

Steven C. Sereboff
SOCAL IP LAW GROUP LLP
ssereboff@socalip.com