Apple, Inc.v.TracBeam LLC

Patent Trial and Appeal Board

Feb 12, 2016

10262413 (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 IPR2015-01694
Patent 7,298,327 B2

Before KEVIN F. TURNER, 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 1–6, 13–19, 24, 25, 28, 31–33,
47, 50, 54, 55, 60–62, 65–67, 69, 72, 74, 76, and 80 (“the challenged
claims”) of U.S. Patent No. 7,298,327 B2 (Ex. 1001, “the ’327 Patent”).
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Patent Owner, TracBeam, 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. 40–59. 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 ’327 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 ’327 patent.
B. Related Proceedings
Petitioner and Patent Owner identify, as related proceedings, two
lawsuits in which the ’327 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 ’327 Patent
The ’327 Patent relates to a wireless location system for outputting
requested locations of commercially available handsets or mobile stations.
Ex. 1001, Abstract.
D. Illustrative Claims
Of the challenged claims, claims 1 and 60 are independent. The other
challenged claims depend, directly or indirectly, from either claim 1 or 60.
Claim 1 is illustrative and is reproduced below.
1. A method for locating communication devices in
communication with a communications network having a
plurality of geographically dispersed network communication
components operably connected together for communicating
with the communication devices, comprising:
performing the steps (1) and (2) following for locating
each communication device (CD) of various ones
of the communication devices, wherein each one
of a plurality of location determiners is used for
determining corresponding geographic location
information for locating each communication
device of various ones of the communication
devices, and wherein at least a first and a second of
the location determiners utilize a different
geographic location process from the other, such
that (Al) and (A2) following hold:
(Al) for at least one actual geographic location (L)
of at least one of the communication
devices, a difference between the first
location determiner and the second location
determiner includes one or more processing
steps that result in a geographical location or
extent such that (Al-1) and (Al-2) following
hold:
(Al-1) an identification of a potential
geographic location of L, output by the
first location determiner, is substantially
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dependent upon an instance of the
geographical location or extent resulting
from performing the one or more
processing steps, and an identification of
a potential geographic location of L,
output by the second location determiner,
is not substantially dependent upon an
instance of the geographical location or
extent resulting from performing the one
or more processing steps, and
(Al -2)) the one or more processing steps are
used by the first location determiner for
locating communication devices in a
plurality of geographically spaced apart
locations; and
(A2) for at least one actual geographical location
of at least one of the communication
devices, each of (A2-1) and (A2-2)
following does not substantially affect a
determination of the other of (A2-1) and
(A2-2):
(A2-1) a first identification of a potential first
geographic location or geographic extent
output by the first location determiner,
and
(A2-2) a second identification of a potential
second geographic location or
geographic extent output by the second
location determiner;
(1) obtaining, from each of one or more of the location
determiners, corresponding output geographic
location information for locating CD when the one
or more location determiners are each provided
with a corresponding input of geolocation
indicative data from transmissions between the
communication device CD and at least one of the
network communication components, wherein the
corresponding output geographic location
information for at least one of the location
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determiners includes one or more geographic
identifications, each geographic identification
representing at least one of: a potential geographic
location and a potential geographic extent for an
actual location of CD;
(2) providing resulting geographic location information
of the communication device CD, wherein said
resulting location information is obtained by
accessing, for each of the one or more of the
location determiners, its corresponding output
geographic location information;
wherein for at least one instance of locating the
communications device CD, a corresponding
performance of said steps of obtaining and
providing includes performing at least two of (B1)
through (B4) following:
(B1) for at least two of the geographic
identifications (GI, and GI2) for CD,
obtained, in said obtaining step, from
different ones of the location determiners, a
step of at least one of: (a) combining, or (b)
resolving a difference between; (i) GI, (or
location data derived therefrom) and (ii) GI2
(or location data derived therefrom) so that
said resulting geographic location
information is dependent on each of GI, and
GI2;
(B2) for each of at least two of the geographic
identifications (GI3 and GI4) for CD,
obtained from different corresponding ones
of the location determiners, a step of
obtaining a corresponding rating value for
each of GI[3] (or location data derived
therefrom), and GI4 (or location data derived
therefrom), wherein said rating values are
indicative of relative expected performances
of the different corresponding location
determiners in locating the communication
devices, and wherein each corresponding
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rating value is determined after its
corresponding geographic identification is
identified by its location determiner;
(B3) for each of at least two of the geographic
identifications (GI5 and GI6) for CD,
obtained from different corresponding ones
of the location determiners, a step of
selecting one of: GI5 (or location data
derived therefrom), and GI6 (or location data
derived therefrom), for receiving a
preference in determining said resulting
geographic location information; and
(B4) obtaining information indicative of a
reliability of at least one geographic
identification (GI7) of CD from one of the
one or more location determiners, wherein
the reliability represents a likelihood that
CD is within the potential geographic
location or the potential geographic extent
identified by GI7, and wherein the reliability
is determined after the at least one
geographic identification is obtained from
its location determiner.
Ex. 1001, 259:2–260:44.
E. Claim Construction
1. Summary of the Petitioner’s Contentions
Here, Petitioner contends that the challenged claims “broadly
encompass the use of GPS receivers in handsets in making location
determinations.” Pet. 28. Petitioner further contends that as evident from a
recitation of claim 47, which depends directly from claim 1, “it is apparent
that the location determiners of claim 1 are intended to be broad enough to
encompass GPS handsets.” Id. at 29 (citing Ex. 1001, 266:13–16).
Petitioner also phrases its contention as “the challenged claims . . . broadly
encompass, for example, the transmission of GPS data received at the
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mobile station and then transmitted from the mobile station to a base
station.” Id. at 29–30. We also note that Petitioner relies on the testimony
of Mr. Kevin S. Judge (Pet. 28 (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 ’327 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. 40–59.
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
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.
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1. Whether the ’327 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. 31. In particular,
Petitioner contends 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.
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 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 26.3 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

3 Citations are to the page numbers of the PCT ‘307, not to the page
numbering provided in the footer.
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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 relies on the Declaration of Mr. Judge (Pet. 36 (citing
Ex. 1002 ¶¶ 28–39)), 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. 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 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 the 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,
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therefore, has not persuaded us that 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.
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