Broadcom Corporation

Patent Trials and Appeals Board

Aug 28, 2020

IPR2019-00737 (P.T.A.B. Aug. 28, 2020)

Trials@uspto.gov Paper No. 38
571.272.7822 Date: August 28, 2020

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

U-BLOX AG and JAPAN RADIO CO., LTD.,
Petitioner,

v.

BROADCOM CORP.,
Patent Owner.
____________

IPR2019-00737
Patent 8,902,104 B2
____________

Before JAMES A. TARTAL, MICHAEL L. WOODS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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INTRODUCTION
u-blox AG and Japan Radio Co., Ltd. (collectively, “Petitioner”) filed
a Petition (Paper 3, “Pet.”) requesting institution of an inter partes review of
claims 1, 2, 5–13, 15, and 16 of U.S. Patent No. 8,902,104 B2 (Ex. 1001,
“the ’104 patent”). Broadcom Corp. (“Patent Owner”) did not file a
Preliminary Response. Pursuant to 35 U.S.C. § 314, we instituted an inter
partes review of claims 1, 2, 5–13, 15, and 16 of the ’104 patent on all
presented challenges. Paper 8. After institution, Patent Owner did not file a
Response. Instead, Patent Owner filed a Contingent Motion to Amend and
Request for Preliminary Guidance (Paper 11, “MTA”), and Petitioner filed
an Opposition (Paper 12, “Pet. Opp. MTA”). We then issued our
Preliminary Guidance (Paper 14, “PG”), which indicated, based on the
record at that time, that Petitioner demonstrated a reasonable likelihood that
the proposed substitute claims were unpatentable. Id. at 5.
Subsequent to the Preliminary Guidance, Patent Owner filed a
Revised Motion to Amend (Paper 15, “RMTA”), Petitioner filed an
Opposition (Paper 20, Pet. Opp. RMTA), Patent Owner filed a Corrected
Reply (Paper 26, “PO Reply”), and Petitioner filed a Sur-reply (Paper 32,
“Pet. Sur-reply”). An oral hearing in this proceeding was held on July 1,
2020, and a transcript of the hearing is included in the record (Paper 36,
“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1, 2, 5–13, 15, and 16 of the
’104 patent are unpatentable. We also deny Patent Owner’s Revised Motion
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to Amend because Petitioner has shown by a preponderance of the evidence
that the proposed substitute claims are unpatentable.
BACKGROUND
A. Real Parties in Interest
Petitioner states that its real parties in interest are u-blox AG, u-blox
America, Inc., u-blox San Diego, Inc., and Japan Radio Co., Ltd. Pet. 53.
Patent Owner states that it is the sole real party in interest for Patent Owner.
Paper 6, 2.
B. Related Matters
The parties identify the following proceedings that may affect, or
could be affected by, a decision in this proceeding because they involve
assertions of the ’104 patent by Patent Owner: Broadcom Corp. v. Toyota
Motor Corp., No. 2-18-cv-00190-JRG (E.D. Tex. 2018); Certain
Infotainment Systems, Components Thereof, and Automobiles Containing
the Same, Inv. No. 337-TA-1119 (U.S.I.T.C.) (instituted May 7, 2018).
Paper 6, 2; Pet. 53. The parties also identify IPR2019-00816 as a related
proceeding, which challenges the ’104 patent on different grounds. Pet. 53;
see also Paper 6, 2. We issue the Final Written Decision in IPR2019-00816
concurrently with this Decision.
C. The ’104 Patent (Ex. 1001)
The ’104 patent issued on December 2, 2014, from an application
filed July 2, 2012. Ex. 1001, codes (22), (45). The ’104 patent claims
priority through a series of three continuation applications to an application
filed on March 18, 2005. Id. at code (63). The ’104 patent relates to
“satellite positioning systems and, more particularly, to a method and
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apparatus for combining measurements and determining clock offsets
between different satellite positioning systems.” Id. at 1:22–25. The
different satellite position systems include the Global Positioning System
(“GPS”), Europe’s GALILEO system, and Russia’s GLONASS system. See
id. at 1:34–37.
Figure 1 of the ’104 patent is reproduced below.

Figure 1 is “a block diagram depicting an exemplary embodiment of a
position location system.” Ex. 1001, 3:25–26. Figure 1 depicts mobile
receiver 102 in communication with server 108 via wireless communication
network 110. Id. at 3:49–52. Mobile receiver 102 obtains satellite
measurement data with respect to satellites 112, which are selected from first
satellite navigation system 111A and second navigation system 111B. Id. at
3:57–63. First satellite navigation system 111A may, for example, be a
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GPS-based system, while second navigation system 111B may be a
GALILEO system or GLONASS system. Id.
GPS receivers measure time delays called “pseudoranges” in an effort
to determine the location of the receiver, where “[a] set of four pseudoranges
together with knowledge of absolute times of transmission of the GPS
signals and satellite positions in relation to these absolute times is sufficient
to solve for the position of the GPS receiver.” Ex. 1001, 1:47–58. “The
absolute times of transmission (or reception) are needed in order to
determine the positions of the GPS satellites at the times of transmission and
hence to compute the position of the GPS receiver.” Id. at 1:59–62.
According to the ’104 patent, GALILEO and GLONASS systems employ
similar methods to determine the position of a receiver. Id. at 2:39–42. The
’104 patent notes that it is sometimes desirable for receivers to process
signals from multiple satellite systems at the same time when a preferred
satellite system lacks adequate signal strength. Id. at 2:42–46. Combining
measurements from different satellite systems introduces complications
because the satellite systems typically use different time references. Id. at
2:46–58.
The ’104 patent seeks to satisfy the need for a method and device that
combines measurements from multiple satellite systems while compensating
for the time differences between the systems. Ex. 1001, 2:59–62. In one
embodiment, shown in a series of method steps in Figure 2’s “flow
diagram,” the process begins by measuring pseudoranges from two different
satellite systems. Id. at 5:36–44, Fig. 2 (steps 204, 206). Next, the system
obtains “a difference in time references between the first and second satellite
navigation systems.” Id. at 5:52–54, Fig. 2 (step 208). Finally, the “first and
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second pseudoranges are combined using the time reference difference,” and
a new position is computed using the combined pseudoranges. Id. at 5:55–
62, Fig. 2 (steps 209, 210).
D. Challenged Claims
Petitioner challenges claims 1, 2, 5–13, 15, and 16. Pet. 1. Of those
claims, claims 1 and 12 are independent. Ex. 1001, 9:24–10:50. Claim 1 is
reproduced below.
1. A method for determining a position of a mobile receiver,
comprising:
measuring a first pseudorange from the mobile receiver to a first
satellite of a first satellite navigation system;
measuring a second pseudorange from the mobile receiver to a
second satellite of a second satellite navigation system;
determining a difference between a first time reference of the
first satellite navigation system and a second time reference
of the second satellite navigation system; and
combining the first pseudorange and the second pseudorange
using the difference to generate combined first and second
pseudoranges.
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Id. at 9:24–36.1
E. Asserted Grounds
Petitioner challenges claims 1, 2, 5–13, 15, and 16 on three grounds.
Pet. 13, 35, 45. Petitioner challenges:
Petitioner also relies on the Declaration of Dr. Philip Dafesh.
Ex. 1002 (“Dafesh Declaration”).
We briefly address the prior art status of the references Petitioner
relies upon. As to Rossbach, Petitioner contends that Rossbach was
submitted for publication in 2000 and published by the University of Armed
Forces in Neubiberg, in 2001, and was added to the library system of
Bundeswehr University Munich in 2003. Pet. 13 (citing Ex. 1016, Ex. 1017;

1 Petitioner also challenges Patent Owner’s proposed substitute claims as
part of Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend.
We will address those proposed amendments and challenges separately
below.
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
effective filing date of the ’104 patent was before the effective date of the
relevant amendments, the pre-AIA versions of §§ 102 and 103 apply.
3 Rossbach, Udo, Positioning and Navigation Using the Russian Satellite
System GLONASS (Ex. 1004) (“Rossbach”).
4 Beser, Jacques, Ph.D., Integrated GPS/GLONASS User Equipment,
Advisory Group for Aerospace Res. & Dev., Lecture Series 207 (Ex. 1005)
(“Beser”).
5 US 7,660,588 B2, filed April 17, 2003 (Ex. 1006) (“Sheynblat”).
1, 2, 5–13, 15, 16 102(b)2 Rossbach3
1, 2, 5–13, 15, 16 103(a) Rossbach, Beser4
8–10, 16 103(a) Rossbach, Sheynblat5
8–10, 16 103(a) Rossbach, Beser, Sheynblat
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Ex. 1018, 4; Ex. 1019, 4); Ex. 1016 ¶ 3. Petitioner also asserts that
Rossbach was indexed in the library’s catalog and that any person could
search for Rossbach in that system using tags such as “GPS,” “GLONASS,”
and “Navigation.” Id. (citing Exs. 1016, 1017, 1020–1021). We are
persuaded that Petitioner has proven by a preponderance of the evidence that
Rossbach is prior art to the ’104 patent under 35 U.S.C. § 102(b). We
address this issue further, with reference to Patent Owner’s arguments in
connection with its Revised Motion to Amend.
As to Beser, Petitioner contends that Beser was published in a lecture
series titled “System Implications and Innovative Applications of Satellite
Navigation” in June 1996. Pet. 36 (citing Exs. 1005, 1013–1015; Ex. 1016
¶¶ 10–11; Ex. 1023). Petitioner also contends that Beser was publicly
accessible in 2001 via the file history of U.S. Patent No. 6,229,479. Id. We
are persuaded that Petitioner has proven by a preponderance of the evidence
that Beser is prior art to the ’104 patent under 35 U.S.C. § 102(b).
As to Sheynblat, Petitioner contends that Sheynblat is prior art under
35 U.S.C. § 102(e) based on its filing date in 2003. See Pet. 45 (citing
Ex. 1006, code (22), (45)). We are persuaded that Petitioner has established
adequately that it is prior art to the ’104 patent under 35 U.S.C. § 102(e).
See id.; Ex. 1001, code (63) (earliest effective filing date of Mar. 18, 2005);
Ex. 1006, code (22) (filing date of April 17, 2003).
ANALYSIS
A. Legal Standards
To prevail in its challenges, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
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§ 42.1(d) (2018). “In an [inter partes review], the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof
in an inter partes review).
Petitioner relies on both anticipation and obviousness in its challenges
to the claims of the ’104 patent. To anticipate a claim under 35 U.S.C.
§ 102, “a single prior art reference must expressly or inherently disclose
each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1334 (Fed. Cir. 2008). “A prior art reference anticipates a patent’s
claim under § 102(b) if it ‘discloses each and every element of the claimed
invention arranged or combined in the same way as in the claim.’”
Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336,
1342–43 (Fed. Cir. 2018) (quoting Blue Calypso, LLC v. Groupon, Inc., 815
F.3d 1331, 1341 (Fed. Cir. 2016)).
As to obviousness, a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) if the differences between the claimed subject matter and the prior
art are such that the subject matter, as a whole, would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
of underlying factual determinations, including: (1) the scope and content of
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the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). “The person of ordinary skill in the art is a
hypothetical person who is presumed to have known the relevant art” at the
time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. Id. In a given case, one or more factors
may predominate. Id.
Petitioner contends that a person having ordinary skill in the art
“would have had a Bachelor’s Degree in an Engineering discipline such as
Electrical, Aeronautical or Mechanical Engineering, or a Bachelor’s Degree
in Computer Science or Equivalent degree, plus at least two years of relevant
experience with GNSS or similar systems.” Pet. 7 (citing Ex. 1002 at ¶ 24).
Patent Owner did not file a Response or dispute Petitioner’s proposal at any
point in this proceeding.
We adopt Petitioner’s asserted level of ordinary skill because it is
consistent with the prior art of record.
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C. Claim Construction
In inter partes reviews, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b); Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (setting forth claim
construction approach in district court cases). Under that standard, we
generally give claim terms their ordinary and customary meaning, as would
be understood by a person of ordinary skill in the art at the time of the
invention, in light of the language of the claims, the specification, and the
prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic
evidence, when available, may also be useful when construing claim terms
under this standard, extrinsic evidence is generally “less reliable” than the
intrinsic record. See id. at 1318–19. Only terms that are in controversy need
to be construed, and then only 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).
Claim 1 requires “combining the first pseudorange and the second
pseudorange using the difference to generate combined first and second
pseudoranges.” Ex. 1001, 9:34–36. Claim 12 includes a nearly identical
limitation, but uses the word “combine” rather than “combining.” Id. at
10:25–27. Petitioner contends that we should construe these limitations to
mean “accounting for the difference in time references between the two
satellite navigation systems and using the difference to generate
pseudoranges that can be used together.” Pet. 9. Petitioner relies on two
passages from the specification to support its construction. Id. at 10. The
first passage describes the “combining” step 209 of the method shown in
Figure 2:
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At step 209, the first and second pseudoranges are
combined using the time reference difference obtained at step
208. That is, a process is performed that allows the first and
second pseudoranges measured with respect to different
satellite navigation systems to be used together to compute
position and/or time.
Ex. 1001, 5:55–60. The second passage provides further guidance regarding
the combining step:
The pseudorange measurements are “combined” by accounting
for the difference in time references between, the two satellite
navigation systems. In other words, a process is performed that
allows the pseudorange measurements to be used together,
despite the measurements being made with respect to two
different satellite navigation systems.
Id. at 8:59–65. Petitioner argues that its proposed construction properly
tracks the language of the specification because these are the only
descriptions of the combining step in the ’104 patent. Pet. 10.6
Petitioner’s proposed construction finds support in the claim
language. For example, the claim language refers to “combining . . . using
the difference,” which refers to the “difference between” the time references
of the first and second satellite systems referred to earlier in the claims. See
Ex. 1001, 9:31–33, 10:21–23. Accordingly, the portion of Petitioner’s

6 Petitioner also addresses an alleged proposed construction from Patent
Owner in the related ITC proceeding. See Pet. 11–13. Patent Owner has not
submitted a Response, or otherwise advocated for that construction in this
forum. In addition, neither party has submitted any documents from the ITC
proceeding, including a record of Patent Owner’s claim construction
argument or any claim construction determination made by the ITC. Under
these circumstances, we need not address Patent Owner’s alleged proposal in
the ITC.
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proposed construction that refers to “the difference in time references
between the two satellite navigation systems and using the difference” finds
support in other portions of the claims referring to determining a difference.
See id. The additional portion of Petitioner’s construction requiring “using
the difference to generate pseudoranges that can be used together” also finds
support in the claim language, which refers to “generat[ing]” pseudoranges.
In addition, the “accounting for” and “used together” language in
Petitioner’s proposed construction, which we interpret as an effort to
construe what the claim means when it says to “combine” pseudoranges,
finds direct support in the portions of the specification discussing the
combining step. See id. at 5:55–60, 8:59–65.
Based on the foregoing, we adopt Petitioner’s proposed construction
of the “combining”/“combine” limitations in claims 1 and 12 to mean
“accounting for the difference in time references between the two satellite
navigation systems and using the difference to generate pseudoranges that
can be used together.”
D. Challenge Under 35 U.S.C. § 102 Based on Rossbach
Petitioner challenges claims 1, 2, 5–13, 15, and 16 under 35 U.S.C.
§ 102(b) as anticipated by Rossbach. Pet. 13–35. For this challenge,
Petitioner cites to Rossbach and the Dafesh Declaration. Id.
1. Rossbach
Rossbach relates to positioning and navigation of a satellite receiver.
Ex. 1004, Title. Rossbach notes that both GPS and GLONASS satellite
systems may be used in combined applications, but that “first a number of
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inter-operability issues have to be solved.” Id. at ii7 (Abstract). In
particular, “[i]n combined GPS/GLONASS data processing the differences
between [the] time scales must be accounted for.” Id. at 31.
Rossbach discloses a number of receivers capable of receiving
information from different satellite systems. Rossbach’s Figures 3.13
and 3.14 are reproduced below.

Figure 3.13, shown on the left above, depicts an R-100/R-101
GPS/GLONASS receiver. Ex. 1004, 25. Multiple GPS and GLONASS
satellites can be tracked at the same time using the R-100 receiver. Id.
Figure 3.14, shown on the right above, depicts a GNSS-200
GPS/GLONASS receiver. Id. at 26. Rossbach describes the GNSS-200
receiver as “merely the basic R-100 version . . . fitted into a specially
modified industrial computer.” Id. According to Rossbach, these receivers
were developed by 1995. Id. at 25–26. A year later, a GNSS-300 receiver

7 We cite to the native page numbering used in Rossbach, rather than the
pagination added when Rossbach was filed as an exhibit.
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was introduced as a successor to the GNSS-200 receiver, which “provided
the same features as the GNSS-200, but was again shrunk.” Id. at 26.
Rossbach describes accounting for the time difference between
different satellite systems as “the crucial problem to be solved when
combining GPS and GLONASS data in navigation.” Ex. 1004, 33.
Rossbach devotes a section to resolving the time reference difference. See
id. In a series of equations, Rossbach refers to “(tGPS – tGLONASS) as the
difference in system time scales,” which “is now independent of the
receiver.” Id. at 35. Rossbach also discloses measuring pseudoranges from
satellites, referred to in Rossbach’s equations as “PR.” Id. at 73, 85.
Rossbach refers to measured pseudoranges from GPS satellites as PRiR, and
measured pseudoranges from GLONASS satellites as PRjR. Id. at 88.
Rossbach then shows use of the difference in system time with pseudoranges
measured from the two satellite systems. Id.
2. Independent Claim 1
Petitioner asserts that Rossbach discloses all of the limitations of
claim 1. Pet. 14–23. Petitioner provides analysis of each limitation in
claim 1, with citations to Rossbach that correspond to each of the claim
limitations. Id. Petitioner also cites to the relevant declarant testimony. Id.
(citing various portions of Ex. 1002).
Claim 1’s preamble states: “A method for determining a position of a
mobile receiver.” Petitioner asserts that Rossbach discloses the
requirements of the preamble, to the extent it limits the claim, because it
relates to positioning and navigation of a receiver, and discloses the R-100
and GNSS-200 receivers. Pet. 14–15 (citing Ex. 1002 ¶¶ 68–70; Ex. 1004,
Title, 25, 26, 100, 106, 118, 135). Petitioner also relies on a “‘much smaller’
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GG24 and NovAtel MiLLenium combined GPS/GLONASS receiver” that
Rossbach discloses, “which have numerous mobile applications in sea, air,
or land vehicles.” Id. at 15 (citing Ex. 1002 ¶¶ 71–72; Ex. 1004, 27).
The first two steps of claim 1 require “measuring a first pseudorange”
and “measuring a second pseudorange” measured from the receiver to
satellites in the first and second navigation systems, respectively. Petitioner
contends that Rossbach discloses use of a combined GPS/GLONASS
receiver that measures the pseudoranges from a satellite in the GPS system
and GLONASS system. Pet. 15–17 (citing Ex. 1002 ¶¶ 73–75; Ex. 1004,
73, 85–91, 94). More specifically, Petitioner points to Rossbach’s Equations
8.1.14 and 8.1.15, which identify measured pseudoranges associated with
the GLONASS and GPS satellites. Id. at 16–17 (citing Ex. 1004, 88).
The next limitation in claim 1 requires “determining a difference
between a first time reference of the first satellite navigation system and a
second time reference of the second satellite navigation system.” Petitioner
contends that Rossbach discloses this limitation because it describes a time
difference between GPS time and GLONASS time, and denotes that
difference as “tGPS – tGLONASS” or “tGPS – tGLO.” Pet. 18 (citing Ex. 1002 ¶ 78;
Ex. 1004, 35, 88). Petitioner contends that Rossbach discloses resolution of
the time difference in situations where a GLONASS-M satellite provides the
difference, or when no GLONASS-M satellites are available, and the
difference must be calculated by the receiver. Id. at 18–19 (citing Ex. 1002
¶ 79; Ex. 1004, 33–37). Petitioner contends that Rossbach discloses the
“determining a difference” limitation in both situations. Id. Petitioner also
points to Rossbach’s disclosure of a “more-detailed version” of the
algorithm that incorporates the time difference, with the receiver’s algorithm
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using the results of the difference calculation when determining the
receiver’s position “at the next instant in time.” Id. at 19–20 (citing Ex.
1002 ¶¶ 76–79; Ex. 1004, 34–35, 88).
As to the “combining” step we construed above, Petitioner argues that
Rossbach discloses the step because it uses the measured first and second
pseudoranges “together to compute a new position state by using the time
difference tGPS – tGLONASS.” Pet. 20 (citing Ex. 1002 ¶ 81; Ex. 1004, 87–88).
More specifically, Petitioner relies on Rossbach’s Equation 8.1.20, which
Petitioner alleges combines the pseudoranges into a “single matrix” that
discloses the claimed “to generate combined first and second
pseudorange[s].” Id. at 21 (citing Ex. 1004, 88). Petitioner points to
Equations 8.1.21 to 8.1.23 as “other equations used in the GPS/GLONASS
algorithm to determine position.” Id. (citing Ex. 1002 ¶¶ 82–83). Petitioner
also alleges that Rossbach discloses “accounting for the difference in time
references between GPS and GLONASS system times 𝛿𝛿tSys,” and, consistent
with Petitioner’s construction, using the difference 𝛿𝛿tSys to generate
pseudoranges that can be used together to determine the position of the
receiver. Id. at 22 (citing Ex. 1002 ¶¶ 81–83; Ex. 1004, 88–89).
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Rossbach discloses all of the
limitations of claim 1. In circumstances such as this where Patent Owner
has chosen not to address or dispute Petitioner’s arguments and evidence, we
view Patent Owner’s arguments as waived. See In re Nuvasive, Inc., 841
F.3d 966, 974 (Fed. Cir. 2016) (“Although the Board did not make findings
as to whether any of the other claim limitations (such as fusion apertures or
anti-migration teeth) are disclosed in the prior art, it did not have to:
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Nuvasive did not present arguments about those limitations to the Board. . . .
The Board, having found the only disputed limitations together in one
reference, was not required to address undisputed matters.”); Paper 9, 6–7
(emphasizing that “any arguments for patentability not raised in the response
may be deemed waived”).
Moreover, we are persuaded by Petitioner’s arguments and evidence,
and find that Petitioner has established by a preponderance of the evidence
that Rossbach discloses all of the limitations of claim 1, for the reasons
stated by Petitioner in the Petition, which we adopt as our own findings, as
further supported by the Dafesh Declaration. See Pet. 14–23; Ex. 1002
¶¶ 65–91.
3. Independent Claim 12
Petitioner asserts that Rossbach discloses all of the limitations of
claim 12. Pet. 32–34. Claim 12’s preamble states: “A mobile receiver,
comprising.” Petitioner asserts that Rossbach discloses the requirements of
the preamble for the same reasons as the preamble of claim 1. Pet. 32 (citing
Ex. 1002 ¶¶ 66–72, 118).
Claim 12 requires “satellite receiver circuitry configured to receive
first and second satellite signals from first and second satellites respectively,
the first and second satellites corresponding to first and second respective
satellite navigation systems.” Petitioner asserts that Rossbach discloses
implementing a positioning algorithm on an R-100 GPS/GLONASS receiver
that could receive signals from both systems. Id. at 33 (citing Ex. 1002
¶¶ 118–119; Ex. 1004, 86–91). Petitioner also contends that Rossbach
discloses other GPS/GLONASS receivers include satellite receiver circuits.
Id. (citing Ex. 1002 ¶¶ 118–119).
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Claim 12 also requires “a processor configured to” perform certain
functions. Petitioner contends that Rossbach discloses the R-100 receiver,
which included a processor “for processing the received GPS/GLONASS
satellite signals.” Pet. 33 (citing Ex. 1002 ¶ 120; Ex. 1004, 86–91).
Petitioner also contends that Rossbach discloses other receivers that include
processors. Id. (citing Ex. 1002 ¶¶ 120–121). Claim 12 also requires
functions that the processor is configured to perform that mirror limitations
in claim 1, such as “measure” first and second pseudoranges, “determine a
difference between” first and second time references, and “combine” the
first and second pseudoranges “using the difference to generate combined
first and second pseudoranges.” For these limitations, Petitioner relies on
the analysis for the nearly identical limitations in claim 1. See id. at 34.
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Rossbach discloses all of the
limitations of claim 12. Moreover, we are persuaded by Petitioner’s
arguments and evidence, and find that Petitioner has established by a
preponderance of the evidence that Rossbach discloses all of the limitations
of claim 12, for the reasons stated by Petitioner in the Petition, which we
adopt as our own findings, as further supported by the Dafesh Declaration.
See Pet. 32–34; Ex. 1002 ¶¶ 118–121.
4. Dependent Claims 2, 5–11, 13, 15, and 16
Petitioner contends that Rossbach discloses all of the limitations of the
challenged dependent claims. Pet. 24–32, 34–35.
Claim 2 depends from claim 1 and further requires “computing the
position of the mobile receiver using the combined first and second
pseudoranges.” Claim 13 depends from claim 12 and contains similar
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requirements: “wherein the processor is further configured to compute a
position of the mobile receiver using the combined first and second
pseudoranges.” For claim 2, Petitioner contends that Rossbach discloses
algorithms using the combined pseudorange measurements to compute the
receiver’s position. Pet. 24 (citing Ex. 1002 ¶ 93; Ex. 1004, 88–89). For
claim 13, Petitioner relies on its analysis for claim 2. See id. at 34 (citing
Ex. 1002 ¶¶ 123–124).
Claim 5 depends from claim 1 and further requires “receiving the
difference between the first time reference and the second time reference
from the first satellite navigation system.” Claim 15 depends from claim 12
and contains similar requirements: “wherein the satellite receiver circuitry is
further configured to receive the difference between the first time reference
and the second time reference from the first satellite navigation system.”
For claim 5, Petitioner asserts that Rossbach describes how GLONASS
satellites can include a time difference between its system and the GPS
system in the navigation message “transmitted by the satellite to the
receiver.” Pet. 25 (citing Ex. 1002 ¶¶ 96–97; Ex. 1004, 36–37). For
claim 15, Petitioner relies on its analysis for claim 5. See id. at 35 (citing
Ex. 1002 ¶¶ 125–126).
Claim 6 depends from claim 1 and further requires “computing a time
of day using the combined first and second pseudoranges.” Petitioner
contends that “a receiver’s clock and the GPS system time are not always in
sync” and that the receiver will estimate a “clock offset” that corresponds to
this difference. Pet. 26 (citing Ex. 1002 ¶ 100). Petitioner also contends that
a GPS receiver will determine the “time of day” using this clock offset. Id.
(citing Ex. 1001, 8:1–4; Ex. 1001 ¶ 100). Petitioner argues that Rossbach
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discloses computing the receiver clock offset “using the combined GPS and
GLONASS pseudoranges” and using that offset to determine the claimed
“time of day.” Id. at 26–27 (citing Ex. 1002 ¶¶ 99–103; Ex. 1004, 33, 88–
89).
Claim 7 depends from claim 1 and further requires “wherein
combining the first pseudorange and the second pseudorange comprises
converting the first pseudorange from the first time reference to the second
time reference.” Petitioner contends that Rossbach’s equations include a
variable that represents the difference between the first and second time
references. Pet. 27–28 (citing Ex. 1004, 88). Petitioner also argues that the
GLONASS pseudorange contains that time difference term, but the GPS
pseudorange does not, and Rossbach combines the two pseudoranges “by
converting the GLONASS pseudorange (‘first pseudorange’) from the
GLONASS time reference (‘first time reference’) to the GPS time reference
(‘second time reference’).” Pet. 28 (citing Ex. 1002 ¶¶ 105–107).
Claim 8 depends from claim 1 and further requires “forming a first
pseudorange residual as a difference between an expected first pseudorange
and the measured first pseudorange; and forming a second pseudorange
residual as a difference between an expected second pseudorange and the
measured second pseudorange.” Claim 16 depends from claim 12 and
further recites limitations similar to those in claim 8: “wherein the processor
is further configured to:” (1) “form a first pseudorange residual as a
difference between an expected first pseudorange and the measured first
pseudorange;” (2) “form a second pseudorange residual as a difference
between an expected second pseudorange and the measured second
pseudorange;” and (3) “compute a position update of a position of the
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mobile receiver using the first and second pseudorange residuals.” For
claim 8, Petitioner argues that Rossbach describes forming pseudorange
residuals that correspond to the difference between an expected and a
measured pseudorange. Pet. 29 (citing Ex. 1002 ¶¶ 110–112; Ex. 1004, 88).
For claim 16, Petitioner relies on its arguments for claims 7 and 8. Id. at 35
(citing Ex. 1002 ¶¶ 127–128).
Claim 9 depends from claim 8 and further requires “computing a
position update of the position of the mobile receiver using the first and
second pseudorange residuals.” Petitioner contends that “[p]seudorange
residuals are conventional quantities used to determine a receiver’s position
when solving a set of linearized observation equations.” Pet. 30 (citing Ex.
1002 ¶¶ 110–112). Petitioner argues that Rossbach teaches determining a
position, as set forth in Petitioner’s arguments for claims 1 and 2, and using
first and second pseudorange residuals to compute an updated position of the
receiver as discussed in connection with claim 8, and the combination of
these teachings satisfies the limitations of claim 9. Id.
Claim 10 depends from claim 8 and further requires “computing an
update to a time of day measurement using the first and second pseudorange
residuals.” Petitioner contends that, as discussed in connection with claim 6,
Rossbach discloses use of a clock offset to compute time of day and, as
discussed in connection with claims 1 and 8, discloses using the
pseudorange residuals. Pet. 31 (citing Ex. 1004, 33). Petitioner further
argues that Rossbach discloses the claimed “update to a time of day
measurement” because value of the difference between the local receiver
time and the satellite “time of day,” which Rossbach uses, “represents an
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update to a ‘time of day’ measurement in the receiver.” Id. (citing Ex. 1002
¶¶ 110–112).
Claim 11 depends from claim 1 and further requires “the first satellite
navigation, system and the second satellite navigation system include any
two of GPS, GALILEO, and GLONASS.” Petitioner contends that
Rossbach discloses deals with GLONASS in combination with GPS
systems, and discloses a combined GPS/GLONASS receiver that
implements an algorithm using measurements from both systems. Pet. 32
(citing Ex. 1004, 2, 87).
Patent Owner did not file a Response, or dispute that Rossbach
discloses all of the limitations in these challenged dependent claims.
Moreover, we are persuaded by Petitioner’s arguments and evidence, and
find that Petitioner has established by a preponderance of the evidence that
Rossbach discloses all of the limitations of claims 2, 5–11, 13, 15, and 16,
for the reasons stated by Petitioner in the Petition, which we adopt as our
own findings, as further supported by the Dafesh Declaration. See Pet. 24–
32, 34–35; Ex. 1002 ¶¶ 92–116, 122–129.
Based on the foregoing, we determine Petitioner has proven by a
preponderance of the evidence that claims 1, 2, 5–13, 15, and 16 are
unpatentable as anticipated by Rossbach.
E. Challenge Under 35 U.S.C. § 103 Based on Rossbach and Beser
Petitioner challenges claims 1, 2, 5–13, 15, and 16 under 35 U.S.C.
§ 103 based on Rossbach and Beser. Pet. 35–44. For these challenges,
Petitioner cites to the asserted references and the Dafesh Declaration. Id.
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1. Beser
Beser relates to “[i]ntegrated GPS/GLONASS receivers” that offer
“better availability, performance and integrity than GPS-only receivers.”
Ex. 1005, 3-1.8 Beser uses the R-100 and GNSS-200 receivers—the same
receivers described in Rossbach—as models to discuss integrated receiver
components and functions. Id. “Air, sea and ground results are presented”
for both the R-100 series and GNSS-200 receivers. Id.
Beser’s Figure 4-1 is reproduced below.

Figure 4-1 above depicts the R-100 receiver architecture, including an
“Antenna/PreAmp Assembly,” “RF/IF Unit,” “GPS/GLONASS Digital
Signal Processor,” and an IBM PC. Id. at 3-12. Beser also includes figures

8 We cite to the page numbering used in Beser, rather than the pagination
added when Beser was filed as an exhibit.
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showing a schematic of the R-100 L1/L2 RF/IF Unit and the GNSS-200
architecture. Id. at 3-14 (Figure 4-2), 3-18 (Figure 5-2).
Beser notes that “[t]he major software issue relating to dual
GLONASS/GPS operations has to do with timing” due to “the relation
between the GPS and GLONASS time references,” which must “be known
for acceptable position accuracies to be achieved.” Ex. 1005, 3-8. To
address this issue, Beser discloses measuring the pseudoranges from the
GPS and GLONASS satellite systems and determining the “GPS-to-
GLONASS time difference” relationship ahead of time. Id. at 3-8 to 3-9.
Beser then discloses a series of equations so that “this issue can be handled
with limited effort.” Id. at 3-10.
2. Disclosure of Limitations in Challenged Claims and
Combination of References
We first address whether the combination of Rossbach and Beser
discloses the limitations in independent claims 1 and 12. Independent
claim 1 requires a “mobile receiver,” and independent claim 12 requires
“satellite receiver circuitry” and a “processor.” Ex. 1001, 9:26, 10:8, 10:14.
Petitioner alleges that Rossbach alone discloses these limitations as part of
its first challenge, addressed above. Pet. 14–15, 33, 36–37. For purposes of
its challenge based on Rossbach and Beser, Petitioner assumes that
Rossbach does not disclose these limitations, and argues that the claims
would have been obvious because Beser discloses the limitations, and that it
would have been obvious to modify Rossbach with Beser’s further
teachings. Id. at 38–44.
More specifically, Petitioner argues that Beser discloses the same
“mobile receivers” discussed in Rossbach—the R-100 and GNSS-200
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satellite receivers. Pet. 40. Petitioner points out that Beser discloses the
mobile nature of the receivers by describing their use in various “ground, air
and sea applications” and describing field tests using an SUV, airplane, and
ship. Id. (citing Ex. 1005, 3-11, 3-17, 3-23 to 3-25).
As to the “satellite receiver circuitry” limitation in claim 12, Petitioner
contends that Beser discloses this circuitry in its figures. Id. at 40–42. For
example, Beser contends that the “antenna/preamp assembly and the RF/IF
unit” in Beser’s Figure 4-1 (reproduced above) constitute “satellite receiver
circuitry,” as well as the “antenna/preamp unit and the RF unit” shown in
Figure 5-2, which describes the GNSS-200 receiver architecture. Id. at 41–
42 (citing Ex. 1002 ¶¶ 118–121, 136; Ex. 1005, 3-11 to 3-18, Figures 4-1, 5-
2).
As to the “processor” limitation in claim 12, Petitioner points to the
R-100’s “GPS/GLONASS Digital Signal Processor” depicted in Figure 4-1,
and contends that this processor, “alone or in combination with the IBM
PC/XT/AT” also disclosed in Figure 4-1, discloses the claimed “processor.”
Id. at 42–43 (citing Ex. 1002 ¶¶ 118–121; Ex. 1005, 3-12 to 3-13, Figure 4-
1). Petitioner also argues that the GNSS-200’s digital processor card, alone
or in combination with the receiver’s “internal PC/AT host computer,”
discloses the claimed processor. Id. at 43–44 (citing Ex. 1002 ¶¶ 118–121;
Ex. 1005, 3-12, 3-16 to 3-17, Figure 5-2).
For the challenged dependent claims 2, 5–11, 13, 15, and 16,
Petitioner relies on its contention that Rossbach discloses all of the
limitations of these claims. Pet. 44 (citing Ex. 1002 ¶¶ 134–137).
As to the motivation to combine Rossbach and Beser, Petitioner notes
that Beser expands on the description provided for the R-100 and GNSS-200
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receivers provided in Rossbach. Pet. 38–39. Petitioner argues that “it would
have been obvious to use either the R-100 or GNSS-200 as further described
in Beser to implement the positioning algorithm disclosed in Rossbach.” Id.
at 39 (citing Ex. 1002 ¶¶ 118–121, 131–137). Petitioner also argues that
“[s]uch a modification would merely combine known elements—i.e., a
commercially-available satellite receiver and the concept of combined
GPS/GLONASS positioning using such a receiver.” Id.
Patent Owner did not file a Response or dispute any of Petitioner’s
assertions in connection with this challenge. Moreover, we are persuaded by
Petitioner’s arguments and evidence, and find Petitioner has established by a
preponderance of the evidence that the combination of Rossbach and Beser
discloses all of the limitations of claims 1, 2, 5–13, 15, and 16, and that one
of ordinary skill in the art would have been motivated to modify Rossbach
by applying the further details Beser discloses regarding the R-100 or
GNSS-200 receivers, for the reasons stated by Petitioner in the Petition,
which we adopt as our own findings, as further supported by the Dafesh
Declaration. See Pet. 35–44; Ex. 1002 ¶¶ 118–121, 131–137.
3. Conclusion
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves weighing of the fact findings to conclude whether the
claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361
(Fed. Cir. 2017). Above, based on the full record before us, we provide our
factual findings regarding (1) the level of ordinary skill in the art, (2) the
scope and content of the prior art, (3) any differences between the claimed
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subject matter and the prior art, and (4) objective evidence of
nonobviousness.
In particular, we find that (1) Petitioner’s proposed level of ordinary
skill in the art is consistent with the art of record; (2) the asserted references
teach all the limitations of claims 1, 2, 5–11, 13, 15, and 16; (3) one of
ordinary skill in the art would have had a reason to combine the Rossbach
with Beser; and (4) there is no objective evidence of nonobviousness in the
record. Weighing these underlying factual determinations, a preponderance
of the evidence persuades us that claims 1, 2, 5–11, 13, 15, and 16 of the
’104 patent are unpatentable over the combination of Rossbach with Beser.
F. Challenge Under 35 U.S.C. § 103 Based on Rossbach, Beser, and
Sheynblat
Petitioner challenges dependent claims 8–10 and 16 under 35 U.S.C.
§ 103 based on Rossbach and Sheynblat, or Rossbach, Beser, and
Sheynblat.9 Pet. 45–53. For these challenges, Petitioner cites to the asserted
references and the Dafesh Declaration. Id.
1. Sheynblat
Sheynblat relates to methods for improving the accuracy of an initial
position estimate for a wireless terminal. Ex. 1006, Abstract. The method
includes the steps of obtaining an estimated initial position of the terminal,
measuring the position of the terminal, and updating the initial position
estimate using the measured information. Id. The updating step “may be
performed by first deriving a measurement vector,” with the vector typically

9 Because Petitioner sets forth the challenge in the alternative, the challenge
encompasses two distinct challenges, one based on Rossbach and Sheynblat,
and the other based on Rossbach, Beser, and Sheynblat. See Pet. 45.
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including pseudorange residuals. Id. at 3:30–34. Sheynblat describes each
pseudorange residual as the difference between a “measured” pseudorange
and a “computed” pseudorange from the initial position estimate. Id. at
3:34–38.
2. Discussion
Dependent claims 8–10 and 16 all recite “pseudorange residuals.”
Ex. 1001, 9:58, 9:61, 9:66–67, 10:3, 10:42, 10:45. Petitioner alleges that
Rossbach alone discloses these limitations as part of its first challenge,
addressed above. Pet. 28–31, 35. For purposes of its challenge based on
Rossbach, Beser, and Sheynblat, Petitioner assumes that “Rossbach (and/or
Rossbach and Beser) fails to disclose elements relating to pseudorange
residuals because it does not explicitly label the difference between expected
and measured pseudoranges as ‘pseudorange residuals.’” Id. at 45.
Petitioner argues that Sheynblat discloses the limitations relating to
pseudorange residuals. Id. at 48–49. For example, as to claim 8, Petitioner
contends that Sheynblat’s disclosure of forming a pseudorange residual for
“each” pseudorange discloses these limitations, although Sheynblat uses the
term “computed” pseudorange rather than the equivalent term “expected”
pseudorange used in the ’104 patent. Id. (citing Ex. 1002 ¶¶ 141, 146–147;
Ex. 1006, 3:34–46, 10:44–61). According to Petitioner, one of ordinary skill
in the art “would have known that the term ‘pseudorange residual’ [in
Sheynblat] refers to the difference between a ‘measured’ pseudorange and
an ‘expected’ pseudorange, and then [to] use the residual values to update
the measured values.” Id. at 49 (citing Ex. 1002 ¶ 148).
As to the motivation to combine, Petitioner argues that one of
ordinary skill in the art would have combined Rossbach and Sheynblat to
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practice the claimed invention because the combination “involves only
common knowledge well-known” to one of ordinary skill in the art. Id. at
49–50 (citing Ex. 1002 ¶¶ 146–150). Petitioner also contends that “to form
a ‘residual’ would merely have involved transforming Rossbach’s equations
8.1.9–8.1.13 to reflect a ‘residual’ value, as shown in Sheynblat’s Eq. 6,
rather than the difference between the ‘measured’ and ‘expected’ values
shown in Rossbach’s equations.” Id. at 50 (citing Ex. 1002 ¶ 149).
Petitioner further contends that one of ordinary skill in the art “would have
had a reasonable expectation of success in doing so because Sheynblat
demonstrates that GPS receiver algorithms used ‘pseudorange residuals’ to
accurately determine the receiver’s position in the same type of equations
used in Rossbach.” Id. (citing Ex. 1002 ¶¶ 148–149).
Patent Owner did not file a Response or dispute any of Petitioner’s
assertions in connection with this challenge. Moreover, we are persuaded by
Petitioner’s argument and evidence, and find that Petitioner has established
by a preponderance of the evidence that, in the event that Rossbach does not
anticipate because it does not disclose the claimed “pseudorange residuals,”
the combination of Rossbach and Sheynblat, and Rossbach, Beser, and
Sheynblat discloses all of the limitations of claims 8–10 and 16, and that one
of ordinary skill in the art would have been motivated to modify Rossbach
by applying the further teachings of Sheynblat, for the reasons stated by
Petitioner in the Petition, which we adopt as our own findings, as further
supported by the Dafesh Declaration. See Pet. 45–53; Ex. 1002 ¶¶ 110–112,
141, 146–150.
We find that (1) Petitioner’s proposed level of ordinary skill in the art
is consistent with the art of record; (2) the asserted references (Rossbach and
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Sheynblat, and Rossbach, Beser, and Sheynblat) teach all the limitations of
claims 8–10 and 16; (3) one of ordinary skill in the art would have had a
reason to combine the Rossbach and Sheynblat, or Rossbach, Beser, and
Sheynblat; and (4) there is no objective evidence of nonobviousness in the
record. Weighing these underlying factual determinations, a preponderance
of the evidence persuades us that claims 8–10 and 16 of the ’104 patent are
unpatentable over Rossbach and Sheynblat, as well as Rossbach, Beser, and
Sheynblat.
G. Patent Owner’s Revised Motion to Amend
Patent Owner filed a Revised Motion to Amend original claims 1, 2,
5–13, 15, and 16 and replace them with proposed substitute claims 21–33
(“substitute claims”). RMTA, App. A (claim listing). We have determined
that all of the original claims that are subject to Patent Owner’s Revised
Motion to Amend are unpatentable by a preponderance of the evidence;
therefore, we proceed to address Patent Owner’s Revised Motion to
Amend.10 As explained below, Petitioner has proven, by a preponderance of
the evidence based on the entirety of the record, that the substitute claims are

10 Unlike Patent Owner’s original Motion to Amend, which was described as
“contingent upon a finding of unpatentability with respect to the original
challenged claims,” Patent Owner describes its Revised Motion to Amend as
non-contingent. Paper 11, 1; R. MTA 1; Tr. 51:12–23, 59:26–60:7. While
such a motion would typically require cancellation of the original claims to
ensure our consideration of the proposed substitute claims, Patent Owner has
not sought cancellation of any claims. In any event, because we determine
that Petitioner has established the unpatentability of all of the challenged
original claims, even if the Revised Motion to Amend is more properly
interpreted as contingent, that does not impact our ability to address the
Motion, as the contingency has occurred.
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unpatentable under 35 U.S.C. § 103(a), and we deny Patent Owner’s
Revised Motion to Amend on that basis.
1. Legal Standards
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). Patent Owner “does not bear the burden of persuasion
to demonstrate the patentability of substitute claims.” Lectrosonics, Inc. v.
Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019)
(precedential) (citing Aqua Prods. Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
2017); Bosch Auto. Serv. Sols. LLC v. Matal, 878 F.3d 1027 (Fed. Cir.
2017)). “[T]he burden of persuasion ordinarily will lie with the petitioner to
show that any proposed substitute claims are unpatentable by a
preponderance of the evidence.” Id.
In determining whether a petitioner has proven unpatentability of the
substitute claims, the Board focuses on “arguments and theories raised by
the petitioner in its petition or opposition to the motion to amend.” Nike,
Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). “Although the Board
may, in certain rare circumstances, raise a ground of unpatentability that a
petitioner did not advance, or insufficiently developed, against substitute
claims proposed in opposing a motion to amend, those circumstances are
limited to situations in which the adversarial process fails to provide the
Board with potential arguments of patentability with respect to the proposed
substitute claims.” Hunting Titan, Inc. v. DynaEnergetics Europe GMBH,
IPR2018-00600, Paper 67 at 25 (PTAB July 6, 2020) (precedential).
2. Requirements Under 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121
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Patent Owner asserts that the proposed substitute claims are
responsive to an asserted ground of unpatentability, do not enlarge the scope
of the originally issued claims, constitute a reasonable number of substitute
claims, and are supported by the original specification (as well as the parent
applications). R. MTA 1–9.
For the reasons below, whether or not the requirements under
35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 are met, Petitioner persuades us
that proposed substitute claims 58–64 are unpatentable. Thus, we do not
reach the arguments mentioned above.
3. Proposed Substitute Claims and Petitioner’s Challenges
Patent Owner’s proposed substitute claims 21–33 include two
independent claims, substitute claims 21 and 30. RMTA, App. A 1, 4.
Patent Owner proposes amendments in substitute claims 21 and 30 that are
substantively the same, and are argued together. See id.; see also id. at 1,
12–15, 20–22 (arguing the added limitations together). The remaining
proposed substitute claims are unchanged from the original claims, with the
exception of changes made to maintain the correct dependency. RMTA,
App. A 2–3, 5. Proposed substitute claim 21 appears below.
21. (substitute for claim 1, if found unpatentable) A method for
determining a position of a mobile receiver, comprising:
measuring a first pseudorange from the mobile receiver
to a first satellite of a first satellite navigation system;
measuring a second pseudorange from the mobile
receiver to a second satellite of a second satellite navigation
system;
determining a difference between a first time reference of
the first satellite navigation system and a second time reference
of the second satellite navigation system; and
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combining the first pseudorange and the second
pseudorange using the difference to generate combined first and
second pseudoranges accounting for the difference in time
references between the first time reference and the second time
reference and using the difference to generate pseudoranges;
and
using the generated pseudoranges in a mathematical
model without knowing absolute time to compute at least
absolute time tag error.
RMTA, App. A, 1 (strikethroughs indicate deletions; underlining indicates
additions).
Patent Owner’s first amendment to the claim replaces the
“combining” step with language from Petitioner’s proposed claim
construction for the limitation, which we adopted above when analyzing the
original claims. See RMTA 3; Pet. 8–13. Patent Owner’s second
amendment, requiring use of the generated pseudoranges “without knowing
absolute time,” seeks to narrow the claim to avoid prior art and address
indefiniteness concerns identified in our Preliminary Guidance. RMTA 1–4.
Patent Owner relies on a first Declaration of Dr. Steven Goldberg in support
of its Motion to Amend (Ex. 2003), a second Declaration of Dr. Steven
Goldberg in support of its Revised Motion to Amend (Ex. 2005), and a third
Declaration of Dr. Steven Goldberg in support of its Reply in support of its
Revised Motion to Amend (Ex. 2006).
Petitioner argues that all of the proposed substitute claims are
unpatentable as (1) indefinite under 35 U.S.C. § 112; (2) obvious under
35 U.S.C. § 103(a) based on Rossbach and van Diggelen11; (3) obvious

11 US 6,417,801 B1, issued July 9, 2002 (“van Diggelen”) (Ex. 1010).
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under 35 U.S.C. § 103(a) based on Rossbach and Peterson12; and (4) patent-
ineligible under 35 U.S.C. § 101. Pet. Opp. RMTA 1, 9, 22. Petitioner
relies on a Declaration of Dr. Dafesh (Ex. 1028) in support of its Opposition
to Patent Owner’s Motion to Amend, and follow-on Declaration of
Dr. Dafesh (Ex. 1032) in support of its Opposition to Patent Owner’s
Revised Motion to Amend. Petitioner also relies on various exhibits and
declarations in support of its arguments that Rossbach and Peterson are prior
art to the ’104 patent. See, e.g., Exs. 1016, 1033.
4. Claim Construction
Patent Owner asserts that no limitations require construction. RMTA
9–10. Although Petitioner takes issue with Patent Owner’s assumed
meaning for the limitations added by amendment, Petitioner does not
contend that we need to construe any claim term to resolve the issues
presented by the Revised Motion to Amend. See Pet. Opp. RMTA 2–3, 7.
We agree with the parties that no claim terms require express construction.
See Nidec Motor Corp., 868 F.3d at 1017 (only terms that are in controversy
need to be construed, and then only to the extent necessary to resolve the
controversy).
5. Obviousness Based on Rossbach and van Diggelen
Petitioner opposed Patent Owner’s original MTA by arguing that
those proposed substitute claims were unpatentable over Rossbach and van

12 Capt. Benjamin Peterson, et al., GPS Receiver Structures for the Urban
Canyon, 8th International Technical Meeting of the Satellite Division of the
Institute of Navigation, 1323–1332 (proceedings held Sept. 12–15, 1995)
(“Peterson”) (Ex. 1029).
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Diggelen. See Pet. Opp. MTA 15–19.13 In our Preliminary Guidance, we
noted that Petitioner’s arguments appeared to have merit based on the record
before us at that time. PG 11–12. In its Opposition to Patent Owner’s
Revised Motion to Amend, Petitioner again argues that the revised proposed
substitute claims are unpatentable as obvious over Rossbach and van
Diggelen. Pet. Opp. RMTA 9–15, 17–19.
Patent Owner argues that Petitioner fails to establish that Rossbach is
prior art as a printed publication before the effective filing date of the
’104 patent in 2005. RMTA 10. Patent Owner also argues that one of
ordinary skill in the art would not have been motivated to combine Rossbach
and van Diggelen, and that a long-felt but unresolved need supports a
finding of nonobviousness. Id. at 13–19.14 We will address these issues in
turn, along with Petitioner’s arguments and evidence in support of its
challenge.
a. The Prior Art Status of Rossbach
Patent Owner argues that Petitioner fails to meet its burden of proving
that Rossbach is prior art to the ’104 patent. RMTA 10–11 (citing Hulu,
LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 11
(PTAB Dec. 20, 2019) (precedential)). Patent Owner argues that

13 We consider the parties’ briefing on the original Motion to Amend, as
well as the Revised Motion to Amend, because the parties’ briefing refers
back to and relies on the original briefing for context. See, e.g., RMTA 1–3;
Pet. Opp. RMTA 9–10.
14 Patent Owner also argues that Rossbach fails to disclose the “without
knowing absolute time” limitation added by amendment, but Petitioner does
not contend that Rossbach discloses that limitation and we will not address
the issue further. See RMTA 12–13.
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Petitioner’s declarant, Rachel Coffin, improperly relied on hearsay
statements in an email attached to her declaration. RMTA 11 (citing Ex.
1016 ¶¶ 2–3; Ex. 1017). Patent Owner argues that without that hearsay
evidence, Petitioner’s declarant fails to establish that Rossbach was publicly
available in 2003. Id. (citing Pet. 13–14; Ex. 1016 ¶¶ 4–6; Ex. 1017).
Petitioner argues that Patent Owner waived its hearsay objection to
the email (Ex. 1017, “Schorsch Email”) by missing the deadline for such
objections. Pet. Opp. RMTA 10–11. Petitioner contends that because
Petitioner included the email as part of the Petition, the deadline for any
objection was due on September 16, 2019, and Patent Owner’s objection
came nearly seven months after that deadline, and was improperly included
in a motion rather than filed as a separate objection. Id. at 11–12 (citing
37 C.F.R. § 42.64(b)(1)). Petitioner also contends that the evidence supports
its argument that Rossbach was sufficiently publicly accessible at least by
2003. Id. at 12. Petitioner argues that the Schorsch Email was “from a
librarian at Rossbach’s publishing university library” and confirms “that
Rossbach was published, cataloged, and indexed at least by 2003.” Id. at 11.
Petitioner also argues that Ms. Coffin relied on “a catalog page from
Rossbach’s publishing library showing that Rossbach was indexed and
cataloged in 2003.” Id. at 13 (citing Exs. 1020–1021). According to
Petitioner, the catalog page “further shows that Rossbach can be (1) located
by keywords, and (2) directly downloaded from the catalog page” and was
first published in 2000. Id. at 13–14 (citing Exs. 1020–22). Petitioner also
asserts that the Schorsch Email confirms Ms. Coffin’s understanding that
anyone would have been able to search for Rossbach based on its title or
other associated tags, and to request a copy via email. Id. at 14 (citing
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Ex. 1017). Petitioner also relies on a copy of Rossbach stating that “150
copies” of Rossbach were printed and published as early as 2001. Id. (citing
Exs. 1018–1019).
In its Reply to Petitioner’s Opposition, Patent Owner does not respond
to Petitioner’s argument and evidence as to Patent Owner’s waiver of its
hearsay objection and the public accessibility of Rossbach as of 2003. See
PO Reply 5–7.
Whether a document qualifies as a printed publication under § 102
“involves a case-by-case inquiry into the facts and circumstances
surrounding the reference’s disclosure to members of the public.” Hulu,
IPR2018-01039, Paper 29 at 9 (quoting Medtronic, Inc. v. Barry, 891 F.3d
1368, 1380 (Fed. Cir. 2018)). Petitioner bears the burden of establishing by
a preponderance of the evidence that a particular document is a printed
publication. Id. at 11. A reference is publicly accessible upon a satisfactory
showing that it has been disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it. Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera
Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir.
2008)); see also GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 693
(Fed. Cir. 2018) (explaining that accessibility goes to the issue of “whether
interested members of the relevant public could obtain the information if
they wanted to”). “If accessibility is proved, there is no requirement to show
that particular members of the public actually received the information.”
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir.
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1988). Petitioner bears the burden of establishing that a particular document
is a printed publication. Medtronic, 891 F.3d at 1380.
We are persuaded by Petitioner’s arguments and evidence. First, we
agree that Patent Owner waived its hearsay objection by not filing the
objection “within ten business days of the institution of the trial” as required
by 37 C.F.R. § 42.64(b)(1). That deadline passed in September 2019, and
Patent Owner did not raise the hearsay issue until filing its Revised Motion
to Amend in April 2020. See RMTA 25. Patent Owner presents no
argument or evidence that its delay should be excused for good cause, and
our review of the record reveals no basis to entertain the late objection.
We are also persuaded that Petitioner met its burden of establishing
that Rossbach is a prior art printed publication because it was publicly
accessible at least as early as 2003. Notably, Patent Owner rests its
argument against the public accessibility of Rossbach on the premise that the
Schorsch Email is hearsay and that Ms. Coffin’s declaration standing alone,
without resort to the Schorsch Email, is insufficient. RMTA 11. Patent
Owner does not argue that Petitioner fails to meet its burden if the Schorsch
Email cannot be excluded based on Patent Owner’s hearsay objection, and
Patent Owner waived any such argument by failing to include it in its
Motion or Reply. Moreover, Petitioner supports its position with persuasive
evidence. Petitioner’s unrebutted declarant testimony and evidence include
statements by a librarian with personal knowledge of the pertinent facts and
a library catalog page showing that Rossbach was indexed, cataloged,
searchable, and available via download as of 2003. Ex. 1016 ¶¶ 2–6;
Ex. 1017; Exs. 1020–1022. Petitioner also points to evidence that 150
copies of Rossbach were printed in 2001. See Ex. 1018; Ex. 1019, 1–4.
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Based on the foregoing, we conclude that Petitioner has established by a
preponderance of the evidence that Rossbach is prior art to the ’104 patent.
b. Van Diggelen
Van Diggelen relates to a “method and apparatus for computing GPS
receiver position without using absolute time information transmitted by the
satellite or by an alternative source of timing available at the GPS receiver.”
Ex. 1010, code (57). In van Diggelen, the “GPS receiver measures satellite
pseudoranges and uses the wireless communication transceiver to send the
pseudoranges to the server. The server fits the pseudoranges to a
mathematical model in which the GPS receiver position and the absolute
time are unknown parameters.” Id. The server then computes a position and
absolute time to fit the model, producing an accurate position and the
absolute time that the measurements were made. Id.; see id. at 3:55–4:5,
4:45–64. Van Diggelen describes the novel aspect of its invention as
including a fifth column to its matrix of equations, which adds a fifth
variable to account for unknown time errors. Id. at 7:35–42. Van Diggelen
notes that adding a sixth satellite can enable the solution to the additional
equation presented by the additional unknown variable. Id. at 10:66–11:5.
c. Disclosure of Limitations and Combination of References
As noted above, Patent Owner’s first amendment replaces the
“combining” claim language with Petitioner’s proposed construction for that
term, which we used in our analysis of those claims and found to be
disclosed in Rossbach. See RMTA 3, App. A, 1, 4. Patent Owner’s second
amendment adds the following language to proposed substitute claim 21:
“using the generated pseudoranges in a mathematical model without
knowing absolute time to compute at least absolute time tag error” (“without
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knowing absolute time” limitation). Id. at App. A, 1. Substantively
identical language was added to proposed substitute claim 30. See id. at
App. A, 5 (“use the generated pseudoranges in a mathematical model
without knowing absolute time to compute at least absolute time tag error”).
The parties argue the claims as a group, and we will analyze the claims as a
group in our analysis.
Petitioner contends that van Diggelen discloses the without knowing
absolute time limitation because it seeks to find a solution when absolute
time is unknown by using a fifth variable to account for the unknown time
variable, which in turn requires at least one more satellite to be in view.
Pet. Opp. MTA 15–16 (citing Ex. 1010, 7:35–42, 7:45–48; Ex. 1028 ¶¶ 84–
85); Pet. Opp. RMTA 9–10 (citing Pet. Opp. MTA 14–23; Ex. 1032 ¶¶ 59–
63). Petitioner argues that Patent Owner concedes the issue by failing to
argue that any of the claim limitations are missing from the proposed
combination. Pet. Opp. RMTA 9
The record fully supports Petitioner’s assertion that van Diggelen
discloses “using the generated pseudoranges in a mathematical model
without knowing absolute time to compute at least absolute time tag error.”
Based on its title and abstract, and other portions of its disclosure, van
Diggelen primarily focuses on solving GPS equations in the absence of
knowing absolute time, and it discloses methods for doing so using
mathematical models including an equation accounting for absolute time
error. See Ex. 1010, codes (54), (57), 7:35–42, 7:45–48; Ex. 1028 ¶¶ 84–85.
Based on the foregoing, we find that van Diggelen discloses the “without
knowing absolute time” limitations in the substitute claims for the reasons
advanced by Petitioner, as supported by its declarant.
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As to the motivation to combine of Rossbach and van Diggelen,
Petitioner argues that the two references “offer complementary solutions to
the same problem: obtaining position without sufficient GPS satellite
measurements.” Pet. Opp. MTA 15. Petitioner asserts that van Diggelen’s
method for addressing unknown time requires an additional satellite
measurement, and Rossbach offers a solution by providing a method that
increases the number of available satellites by teaching how to combine the
GPS and GLONASS systems. Id. at 15–16 (citing Ex. 1004, 1; Ex. 1010,
7:35–42, 7:45–48; Ex. 1028 ¶¶ 84–88). According to Petitioner, “[g]iven
these teachings, a POSITA would have been motivated to use van
Diggelen’s positioning equations to improve Rossbach’s method, by further
making use of the additional satellites measurements resulting from the use
of more than one GNSS.” Id. at 16 (citing Ex. 1028 ¶ 93). Petitioner also
contends that “van Diggelen expressly espoused the benefits of increasing
numbers of satellite measurements” and one of ordinary skill in the art
would have been motivated to modify Rossbach “so that Rossbach’s
combined positioning method is usable and reliable when absolute time may
not be available before the satellite signals can be decoded.” Id. at 16–17
(citing Ex. 1010, 10:66–11:5). Petitioner also argues that Rossbach allows
for adding satellite measurements (pseudoranges) to its model, and it would
have been “trivial” to make such modifications to Rossbach based on van
Diggelen’s teachings. Id. at 17–18 (citing Ex. 1004, 85–89; Ex. 1010, 7:18–
31; Ex. 1028 ¶¶ 87, 91, 94–95).
Patent Owner argues that “Rossbach and van Diggelen offer
competing, not complimentary, solutions to different problems” and that
combining them would have frustrated the principles under which each
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reference was designed to operate. RMTA 14. Patent Owner contends that
both references were attempting to solve the problem of limited access to
satellites and providing solutions in light of that problem. Id. at 14–15
(citing Ex. 1004, 1; Ex. 1010, 1:36–39; Ex. 2005 ¶¶ 57–62). According to
Patent Owner, both references propose solutions that require acquisition of a
signal from an additional satellite, so combining them would have frustrated
their “basic principles.” Id. at 15 (citing Ex. 1004, 35; Ex. 1010, 7:35–42;
Ex. 2004 ¶ 62).
Petitioner argues that Patent Owner misconstrues van Diggelen by
suggesting that van Diggelen sought to solve the problem of acquiring
position in environments with limited access to satellites. Pet. Opp. RMTA
17–18 (citing Ex. 1005, 1:36–39; Ex. 1032 ¶ 69). Petitioner contends that
van Diggelen addresses the problem of computing position without knowing
absolute time. Id. at 18 (citing Ex. 1010, 1:52–65, 3:50–52, 3:55–62).
Petitioner also contends that the references complement each other in that
“van Diggelen teaches a way to solve for absolute time if at least one
additional satellite measurement is available” and “Rossbach teaches a way
to make many more satellite measurements available.” Id. (citing Ex. 1004,
34; Ex. 1032 ¶ 70). Petitioner argues that the combination provides benefits
in the form of “better availability, accuracy, integrity, and time-to-first fix.”
Id. (citing Ex. 1032). Petitioner also takes issue with Patent Owner’s
argument that Rossbach requires an additional satellite signal because, in
some embodiments, Rossbach utilizes information already known or
provided by an external source (e.g., difference in time references), negating
the need for an additional satellite source. Id. at 18–19 (citing Ex. 1004, 35–
37); see also Pet. Sur-reply 5–6.
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In its Reply, Patent Owner argues that Petitioner ignores the intended
purpose of van Diggelen and that the proposed combination requires van
Diggelen to “process every visible satellite from the GLONASS system,”
which is the problem van Diggelen sought to avoid. PO Reply 5–6 (citing
Ex. 1010, 1:31–39; Ex. 2006 ¶¶ 38–39). Patent Owner also argues that
adding an additional satellite reduces the times that a position solution can
be obtained. Id. at 6–7 (citing RMTA 18–19; IPR2029-00816, Ex. 1004, 9;
Ex. 2006 ¶¶ 40–41).
Based on our review of the parties’ arguments and evidence, including
the competing declarant testimony, we find that Petitioner has established
that one of ordinary skill in the art would have been motivated to use van
Diggelen’s positioning equations when absolute time is unknown to improve
Rossbach’s method. We agree with Petitioner that the two references
complement one another in that van Diggelen discloses a solution to the
problem of computing position without knowing absolute time, but it
requires an additional satellite measurement to do so, and Rossbach
discloses a method that makes more of such satellite measurements
available. Ex. 1004, 34; Ex. 1010, 1:52–65, 3:50–52, 3:55–62; Ex. 1032
¶ 70. We are also persuaded that the combination provides benefits such as
better availability, accuracy, integrity, and time-to-first fix, that would
outweigh any disadvantages due to the need to add an extra satellite,
assuming that was required for certain embodiments. Ex. 1032 ¶ 72. Given
these complementary primary purposes and advantages in the combination,
we disagree with Patent Owner’s position that the references were focused
on avoiding the use of additional satellites to such an extent that the
combination would frustrate the purposes of the references. Patent Owner
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does not point to persuasive evidence that any such concern would have
overridden the advantages of the combination that Petitioner identifies.
Based on the foregoing, for the reasons provided by Petitioner and its
declarant, we find that one of ordinary skill in the art would have been
motivated to combine Rossbach and van Diggelen. See Ex. 1032 ¶¶ 68–72.
d. Long-Felt Need
Patent Owner argues that objective evidence such as long-felt but
unresolved need supports a finding of nonobviousness here. RMTA 16. In
particular, Patent Owner argues “that there was a long-felt need for satellite
positioning receivers that could obtain a quick and accurate position in
environments where there was a limited number of satellites available to
receiver.” Id. at 16–17 (citing Ex. 1004, 1; Ex. 1005; Ex. 1010, 1:36–39;
Ex. 1029, 1323). Patent Owner also alleges that the prior art only provided
“partial solutions” to this problem that either required absolute time, or
supplied absolute time but required additional satellites and performed
poorly in environments with few satellites. Id. at 17–18 (citing Ex. 1004;
Ex. 1005; Ex. 1010; Ex. 1029; Ex. 2005 ¶ 65). Patent Owner contends that
the ’104 patent “was the first invention that met this long-felt need.” Id.
at 18 (citing Ex. 2005 ¶ 66).
Petitioner argues that Patent Owner’s “cursory discussion” fails to
meet its burden of establishing a nexus to the substitute claims. Pet. Opp.
RMTA 21. Petitioner argues that no nexus can be found here given that the
alleged long-felt need was met by the prior art of record. Id. (citing
Pet. Opp. MTA, 14–23); see also Pet. Sur-reply 6–8.
In its Reply, Patent Owner argues that Petitioner’s lack of nexus
argument fails to identify a “single prior art reference that quickly and
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accurately obtains a position in environments where there was a limited
number of satellites available to [a] receiver and absolute time is not
known.” PO Reply 7–8 (citing RMTA 9–22). Patent Owner also argues that
the passage of time between the existence of the prior art and the 2005
priority date of the ’104 patent, varying between 3 and 10 years, supports its
position that the claims would not have been obvious. Id. at 8–9.
Patent Owner bears the burden of establishing a nexus between the
alleged long-felt need and the proposed substitute claims. Fox Factory, Inc.
v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). Based on our review
of the arguments and evidence, we find that Patent Owner has failed to
establish any long-felt but unresolved need allegedly satisfied by the ’104
patent. Patent Owner does not address the limitations of the proposed
substitute claims, or otherwise explain what aspects of the claimed invention
satisfied a long-felt need. Patent Owner suggests that a long-felt need exists
because no “single prior art reference” discloses all of the limitations of the
claims, but Patent Owner provides no support for the proposition that a long-
felt need arises merely because no prior art anticipates the claims. See PO
Reply 7–8. Indeed, secondary considerations evidence is not part of an
anticipation analysis, in which a single prior art reference discloses all
limitations of a claim. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d
1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness
because “obviousness requires analysis of secondary considerations of
nonobviousness, while secondary considerations are not an element of a
claim of anticipation”). In addition, Patent Owner refers to the need for
“quick and accurate position in environments where there was a limited
number of satellites available to receiver,” but does not identify the speed
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and accuracy of its claimed invention in comparison with the prior art. See
RMTA 16–17. Without any objective evidence of the relative speed and
accuracy of prior art systems in comparison to the claimed system, we
cannot ascertain the degree to which the claimed invention satisfies any
alleged need.
We conclude that Patent Owner has not shown any nexus of the
alleged long-felt need to the substitute claims, and even if some nexus were
shown, the record lacks sufficient support for an assertion that the claimed
invention addresses a need for improved speed and accuracy through
noticeably better results. Accordingly, we find the objective evidence of
long-felt need weak.
e. Conclusion
We find that (1) Petitioner’s proposed level of ordinary skill in the art
is consistent with the art of record; (2) the Rossbach and van Diggelen
combination teaches all the limitations of the proposed substitute claims;
(3) one of ordinary skill in the art would have had a reason to combine the
Rossbach and van Diggelen; and (4) the evidence of long-felt but unresolved
need, if any, is weak. Weighing these underlying factual determinations, a
preponderance of the evidence persuades us that proposed substitute claims
21–33 are unpatentable over Rossbach and van Diggelen.
6. Obviousness Based on Rossbach and Peterson
Petitioner opposed Patent Owner’s original MTA by arguing that
those proposed substitute claims were unpatentable over Rossbach and
Peterson. See Pet. Opp. MTA 19–23. In our Preliminary Guidance, we
noted that Petitioner’s arguments appeared to have merit based on the record
before us at that time. PG 13. In its Opposition to Patent Owner’s Revised
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Motion to Amend, Petitioner again argues that the current proposed
substitute claims are unpatentable as obvious over Rossbach and Peterson.
Pet. Opp. RMTA 9–10, 15–17, 19–20.
Patent Owner argues that Petitioner fails to establish that Peterson is
prior art as a printed publication before the effective filing date of the
’104 patent in 2005. RMTA 19–20. Patent Owner also argues that one of
ordinary skill in the art would not have been motivated to combine Rossbach
and Peterson, and that a long-felt but unresolved need supports a finding of
nonobviousness. Id. at 20–22. We will address these issues in turn, along
with Petitioner’s arguments and evidence in support of its challenge.
f. The Prior Art Status of Peterson
Patent Owner argues that Petitioner fails to meet its burden of proving
that Peterson is prior art to the ’104 patent. RMTA 19 (citing Hulu,
IPR2018-01039, Paper 29 at 11). Patent Owner argues that “Petitioners
provide no evidence that Peterson was ‘disseminated or otherwise made
accessible to persons interested and ordinarily skilled in the subject matter to
which the [document] relates prior to the critical date.’” Id. (quoting Orion
IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 974 (Fed. Cir. 2010)). Patent
Owner contends that Petitioner relies solely “on the date printed on the front
of Peterson,” which, standing alone, does not establish public availability.
Id.15

15 Patent Owner also argues that the Petitioner cannot rely on an earlier
Board decision that treated Peterson as prior art to van Diggelen, because the
§ 102(b) issue Patent Owner raises here was not before the Board at that
time. RMTA 19–20 (citing Ex. 1030, 4). Our analysis does not rely on the
treatment of Peterson in any related decisions.
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Petitioner argues that Patent Owner does not dispute that “Peterson
was a paper presented at the 1995 International Technical Meeting of the
Satellite Division of the Institute of Navigation (‘the ION Conference’).”
Pet. Opp. RMTA 15 (citing Ex. 1029, 1). Petitioner relies on personal
testimony from Dr. Dafesh, who testifies that he attended the ION
Conference and that “copies of Peterson were distributed to attendees in
1995.” Id. (citing Ex. 1032 ¶¶ 64–67; Ex. 1037, 2053). Petitioner also relies
on the testimony from Dr. Heppe, its declarant in the related matter,
IPR2019-00816, who testifies that he is a member of ION, that “all ION
conferences were open to the public,” and that “ION attendees could order a
CD containing ION Conference proceedings, including Peterson.” Id. at 15–
16 (citing Ex. 1033 ¶¶ 9–10). Petitioner asserts that its declarants’ testimony
as to their attendance at ION conferences, distribution of Peterson at the
1995 ION Conference, the copies of Peterson that they still retain from that
distribution, and corroboration of that testimony “by the conference name
and date on Peterson’s cover” all support its position that Peterson was
publicly accessible and prior art as of 1995. Id. at 17 (citing Ex. 1029, 1;
Ex. 1032 ¶¶ 64–67; Ex. 1033 ¶¶ 10–15).
In its Reply to Petitioner’s Opposition, Patent Owner does not respond
to Petitioner’s argument and evidence as to the public accessibility of
Peterson as of 2005. See PO Reply 9–10. Patent Owner’s sole argument
rests on the mistaken assertion that Petitioner merely relies on the date on
the front of Peterson, which is not the case based on our summary of
Petitioner’s position above.
Based on our review of the record, Petitioner’s arguments are
supported by persuasive evidence tending to show that Peterson was
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publicly accessible by 1995. Dr. Dafesh testifies that he attended the ION
Conference in 1995, which the attendee list for the conference confirms.
Ex. 1032 ¶¶ 64–65; Ex. 1037, 7. Dr. Dafesh also testifies that the ION
Conference was open to the public and that attendees could obtain copies of
Peterson and other proceedings, and that he obtained a copy of Peterson
shortly after the ION Conference. Ex. 1032 ¶ 66; Ex. 1029 (Dr. Dafesh’s
personal copy of Peterson). Dr. Heppe provides testimony that ION
conferences are open to the public, and that he received a CD from the 1995
ION Conference that includes a copy of Peterson. Ex. 1033 ¶¶ 11–15;
Ex. 1035 (image of CD); Ex. 1036 (copy of table of contents of CD listing
Peterson). Taken together, this unrebutted personal testimony, combined
with the dates on Peterson itself,16 establish by a preponderance of the
evidence that Peterson was publicly accessible as of 1995, and that Peterson
is a prior art printed publication with respect to the ’104 patent.
g. Peterson

16 We agree with Patent Owner that the dates on the face of the document
may not, standing alone, establish a date of publication on that date.
Nevertheless, those dates are probative, and are consistent with the
declaration evidence in the record showing that Peterson was distributed and
available as of 1995. See Nobel Biocare Servs. AG v. Instradent USA, Inc.,
903 F.3d 1365, 1376 (Fed. Cir. 2018), as amended (Sept. 20, 2018) (finding
date on cover of a catalog was “relevant evidence” that, in conjunction with
other evidence, supported the Board’s finding of public accessibility as of
that date); Hulu, Paper 29, at 17 (“the indicia on the face of the reference,
such as printed dates and stamps, are considered as part of the totality of the
evidence”); see also Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d
1104, 1109 (Fed. Cir. 1985) (holding that six copies of paper delivered to
attendees at a conference, where paper was orally presented, was a printed
publication).
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Peterson addresses the problem of losing sight of satellites in cities
having “deep urban canyons.” Ex. 1029, 1323. In such situations, Peterson
discloses a method of determining GPS position without knowing absolute
time, and only knowing rough estimates of time within “several minutes” of
absolute time, when satellite positions are also unknown. Id. Peterson
devotes a section of the paper to “OBTAINING FIXES WITHOUT TIME
FROM SATELLITES” and provides a “POSITION SOLUTION” that
includes a series of equations. Id. at 1329–1330. These equations include
position and time-error variables. Id. at 1330. Peterson discloses use of its
method even when small portions of a signal can be obtained from “brief
glimpses” satellites. Id. at 1323 (“obtaining fixes based on as little as one
millisecond of data”).
h. Disclosure of Limitations and Combination of References
Petitioner contends that Peterson discloses the “without knowing
absolute time” limitation added to the proposed substitute claims. Pet. Opp.
MTA 19–20. Petitioner relies on Peterson’s goal: to find a solution when
absolute time is unknown due to obstructions in cities, using equations that
include variables for time errors. Id. (citing Ex. 1029, 1329–30; Ex. 1028
¶¶ 98–100); Pet. Opp. RMTA 9–10 (citing Pet. Opp. MTA 14–23; Ex. 1032
¶¶ 59–63). Petitioner argues that Patent Owner concedes the issue by failing
to argue that any of the claim limitations are missing from the proposed
combination. Pet. Opp. RMTA 9.
The record supports Petitioner’s assertion that Peterson discloses
“using the generated pseudoranges in a mathematical model without
knowing absolute time to compute at least absolute time tag error.” Peterson
discloses determining a GPS position, or a “fix,” when absolute time is
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unknown, and does so using mathematical models that include variables
accounting for absolute time error. See Exs. 1029, 1323, 1329–1330. Based
on the foregoing, we find that Peterson discloses the without knowing
absolute time limitations in the proposed substitute claims.
As to the motivation to combine of Rossbach and Peterson, Petitioner
argues that “a POSITA faced with the urban canyon problem would look to
Peterson to obtain position fix without absolute time (which requires an
additional satellite measurement).” Pet. Opp. MTA 19 (citing Ex. 1028
¶ 99). Petitioner contends that “Rossbach describes the exact same scenario
as an issue that can be solved using the combined GPS-GLONASS model”
that Rossbach discloses. Id. at 19–20 (citing Ex. 1004, 1). According to
Petitioner, a “POSITA would thus also look to Rossbach and would
understand that Rossbach’s teachings supply the additional satellite
measurement required by Peterson.” Id. at 20 (citing Ex. 1028 ¶¶ 98–99).
Petitioner also contends that Peterson’s method of using small “snapshots”
of the satellite signal overcomes the deficiency in Rossbach that “can require
continuously tracking the satellites until absolute time can be decoded from
the satellite signal.” Id. (citing Ex. 1028 ¶ 98). Petitioner also argues that
Peterson and Rossbach are analogous art, and employ very similar equations
that “include position and clock-error variables.” Id. at 20–22. Due to the
alleged similarity, Petitioner contends that “modifying Rossbach’s method
with the 5-satellite equations in Peterson would have been simple and
obvious.” Id. at 22 (citing Ex. 1028 ¶¶ 102–106). Petitioner alleges that
additional motivations support the combination, such as increasing the
number of satellites available using Peterson’s snapshot approach and
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reducing the time necessary to track satellites in urban canyons. Id. at 22–23
(citing Ex. 1028 ¶¶ 96–99, 107–108).
Patent Owner argues, as it did in its arguments against the
combination of Rossbach and van Diggelen, that “Rossbach and Peterson
offer competing, not complementary, solutions to different problems” and
that combining them would have frustrated the principles under which each
reference was designed to operate. RMTA 20. Patent Owner contends that
both references were attempting to solve the problem of limited access to
satellites and providing solutions in light of that problem. Id. at 20–21
(citing Ex. 1004, 1; Ex. 1029, 1323; Ex. 2005 ¶¶ 67–71). According to
Patent Owner, both references propose solutions that require acquisition of a
signal from an additional satellite, so combining them would have
exacerbated the problems they were attempting to solve. Id. at 21–22 (citing
Ex. 1004, 35; Ex. 1029, 1329–1330; Ex. 2005 ¶ 71).
Petitioner argues that Rossbach and Peterson complement one another
because “Peterson provides a technique to solve for position without
knowledge of absolute time,” but requires an additional satellite signal, and
“Rossbach solves this problem by typically doubling the available
measurements, even though Rossbach’s method requires only 1 or no
additional measurements.” Pet. Opp. RMTA 20 (citing Ex. 1004, 34; Ex.
1029, 1323, 1329; Ex. 1032 ¶ 73). Petitioner contends that Rossbach offers
more satellites than typically required and enhances performance in the
environments Peterson describes. Id. (citing Ex. 1032 ¶ 74). Petitioner also
argues that a “POSITA could have easily applied the teachings of one to
enhance the other,” and “would have been capable of combining” Rossbach
and Peterson. Id. (citing Ex. 1032 ¶¶ 73–76).
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In its Reply, Patent Owner argues that Petitioner disregards the
problems the combination would have created and how the combination
would have frustrated the intended purpose of the references. PO Reply 9–
10 (citing Ex. 1004, 1; Ex. 1029, 1323; Ex. 2006 ¶¶ 43–44). Patent Owner
also argues that adding an additional satellite reduces the times that a
position solution can be obtained. Id. at 10 (citing IPR2029-00816, Ex.
1004, 9; Ex. 2006 ¶¶ 42–44).
Based on our review of the parties’ arguments and evidence, including
the competing declarant testimony, we find that Petitioner has established
that one of ordinary skill in the art would have had reason to and would have
been motivated to use Peterson’s positioning equations when absolute time
is unknown to improve Rossbach’s method. Notably, both Rossbach and
Peterson identify and seek to provide solutions to the problems encountered
in urban areas when fewer satellites are visible. Ex. 1004, 1 (noting
advantages in combining GPS and GLONASS systems “[i]n cases with
obstructed visibility of the sky, such as mountainous or urban areas”); Ex.
1029, 1323 (noting use of method in “deep urban canyons” where only
“brief glimpses of satellites” are available). We agree with Petitioner that
the two references complement one another in that Peterson discloses a
solution to the problem of computing position without knowing absolute
time, but it requires an additional satellite to do so, and Rossbach discloses a
method that makes more of such satellite measurements available. Ex. 1004,
34; Ex. 1029, 1323, 1329–1330; Ex. 1028 ¶¶ 98–99; Ex. 1032 ¶ 73. We are
also persuaded that the combination provides benefits such as overcoming
Rossbach’s need to continuously track satellites to obtain absolute time,
increasing the number of satellites available using Peterson’s snapshot
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approach, and reducing the time necessary to track satellites in urban
canyons. Ex. 1028 ¶¶ 96–99; Ex. 1032 ¶¶ 73–75.
Patent Owner’s arguments do not adequately address the advantages
that are readily apparent based on Petitioner’s proposed combination.
Instead, Patent Owner argues, without persuasive support, that requiring one
additional satellite signal to either Rossbach or Peterson would entirely
frustrate their purpose, and presumably outweigh all of the potential
advantages of that combination. See, e.g., RMTA 20–21. We are more
persuaded by Petitioner’s reading of the references and supporting declarant
testimony that Rossbach’s combination of the GPS and GLONASS systems
would have provided more than enough satellites for use in urban
environments, and requiring one additional satellite signal would not have
frustrated the purpose of either reference. See Ex. 1032 ¶¶ 73 (“Rossbach
can approximately double the number of satellite signals.”), 74 (“Rossbach
typically provides many more than the needed number of satellites.”). Based
on the foregoing, for the reasons provided by Petitioner and its declarant, we
find that one of ordinary skill in the art would have been motivated to
combine Rossbach and Peterson. See Ex. 1028 ¶¶ 96–109; Ex. 1032 ¶¶ 73–
75, 78.
i. Long-Felt Need
Patent Owner relies on the same long-felt need argument we
addressed above in the context of the Rossbach/van Diggelen challenge. See
RMTA 22. For the same reasons, we find the evidence of long-felt need
weak.
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j. Conclusion
We find that (1) Petitioner’s proposed level of ordinary skill in the art
is consistent with the art of record; (2) the Rossbach and Peterson
combination teaches all the limitations of the substitute claims; (3) one of
ordinary skill in the art would have had a reason to combine the Rossbach
and Peterson; and (4) the evidence of long-felt but unresolved need, if any, is
weak. Weighing these underlying factual determinations, a preponderance
of the evidence persuades us that proposed substitute claims 21–33 are
unpatentable over Rossbach and Peterson.

7. Remaining Challenges
Petitioner argues that proposed substitute claims 21–33 are patent-
ineligible under 35 U.S.C. § 101. Pet. Opp. 22–25; Pet. Sur-reply 8–11.
Patent Owner disagrees. RMTA 22–25; PO Reply 10–12. Petitioner also
argues that the proposed substitute claims are indefinite. Pet. Opp. RMTA
1–9.
Because we have already determined that all of the proposed
substitute claims are unpatentable based on Petitioner’s obviousness
challenges, we need not determine whether they are also unpatentable due to
their alleged ineligibility under § 101 or indefiniteness.17

17 The potential indefiniteness concerns raised by Petitioner are not of the
type that prevents us from applying the prior art to the claims. See Pet. Opp.
1–9. We also note that Patent Owner does not argue that the prior art (van
Diggelen and Peterson) fails to disclose the without using absolute time
limitation that forms the basis for Petitioner’s indefiniteness arguments.
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CONCLUSION18
In summary:

18 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 5–
13, 15, 16
102(b) Rossbach 1, 2, 5–13, 15,
16

1, 2, 5–
13, 15, 16
103(a) Rossbach, Beser 1, 2, 5–13, 15,
16

8–10, 16 103(a) Rossbach,
Sheynblat
8–10, 16
8–10, 16 103(a) Rossbach, Beser,
Sheynblat
8–10, 16
Overall
Outcome
1, 2, 5–13, 15,
16

Motion to Amend Outcome

Claim(s)
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 21–33
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 21–33
Substitute Claims: Not Reached
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ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 5–13, 15, and 16 of U.S. Patent
No. 8,902,104 B2 have been shown, by a preponderance of the evidence, to
be unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Timothy May
Joshua Goldberg
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
Timothy.may@finnegan.com
Joshua.goldberg@finnegan.com

Matthew Satchwell
Gianni Minutoli
James Heintz
Paul Steadman
DLA PIPER (US)
Matthew.satchwell@dlapiper.com
Gianni.minutoli@dlapiper.com
Jim.heintz@dlapiper.com
Paul.steadman@dlapiper.com

For PATENT OWNER:
John Caracappa
Thomas Yebernetsky
STEPTOE & JOHNSON LLP
jcaracap@steptoe.com
tyebernetsky@steptoe.com