Broadcom Corporation

Patent Trials and Appeals Board

Aug 28, 2020

IPR2019-00816 (P.T.A.B. Aug. 28, 2020)

Trials@uspto.gov Paper 34
571.272.7822 Date: August 28, 2020

1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

v.

BROADCOM CORPORATION,
Patent Owner.
____________

IPR2019-00816
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
Japan Radio Co., Ltd., Denso Corporation, and u-blox AG
(collectively, “Petitioner”) filed a Petition (Paper 1, “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”). 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 13, “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 19, Pet. Opp. RMTA), Patent Owner filed a Reply
(Paper 24, “PO Reply”), and Petitioner filed a Sur-reply (Paper 30, “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 33, “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 Japan Radio Co.,
Ltd., DENSO CORPORATION, DENSO INTERNATIONAL AMERICA,
Inc., DENSO Manufacturing Tennessee, Inc., DENSO Wireless Systems
America, Inc., u-blox AG, u-blox America, Inc., and u-blox San Diego, Inc.
Pet. 1. Patent Owner states that it is the sole real party in interest for Patent
Owner. Paper 7, 2.
B. Related Proceedings
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 Broadcom: 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 7, 2; Pet. 2. The parties also identify IPR2019-00737 as a related
proceeding, which challenges the ’104 patent on different grounds. Pet. 2;
see also Paper 7, 2. We issue the Final Written Decision in IPR2019-00737
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
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“satellite positioning systems and, more particularly, to a method and
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
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3:57–63. First satellite navigation system 111A may, for example, be a
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
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navigation systems.” Id. at 5:52–54, Fig. 2 (step 208). Finally, the “first and
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. Illustrative Claim
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 five grounds.
Pet. 7. Petitioner challenges:
Petitioner also relies on the Declaration of Dr. Stephen Heppe.
Ex. 1003 (“Heppe Declaration”).6
We briefly address the prior art status of the references Petitioner
relies upon. As to Beser, Petitioner contends that it was published in a

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 Beser, Jacques, Ph.D, Integrated GPS/GLONASS User Equipment,
Advisory Group for Aerospace Res. & Dev., Lecture Series 207 (Ex. 1004)
(“Beser”).
3 The Global Navigation Satellite System GLONASS Interface Control
Document, Coordination Scientific Information Center (Version 4.0) (Ex.
1006) (“GLONASS ICD”).
4 U.S. Patent No. 5,923,287, issued July 13, 1999 (Ex. 1005) (“Lennen”).
5 Kaplan, Elliott D., Understanding GPS Principles and Applications, Artech
House Mobile Communications Series (1996) (Ex. 1007) (“Kaplan”).
6 Petitioner also submits other declarations from Dr. Stephen Heppe in
connection with Patent Owner’s Motion to Amend and Revised Motion to
Amend. Exs. 1024, 1029.
Claims

35 U.S.C. § Reference(s)/Basis
1, 2, 6–13, 16 102(b) Beser2
5, 15 103(a) Beser, GLONASS ICD3
1, 2, 6, 7, 11–13 102(b) Lennen4
8–10, 16 103(a) Lennen, Kaplan5
5, 15 103(a) Lennen, GLONASS ICD
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lecture series titled “System Implications and Innovative Applications of
Satellite Navigation” in June 1996. Pet. 5–6 (citing Ex. 1004, 1; Ex. 1010;
Ex. 1011). Petitioner also contends that Beser was publicly accessible
in 2001 via the file history of U.S. Patent No. 6,229,479. Id. (citing Ex.
1012). 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). We address this issue further, with reference to Patent Owner’s
arguments in connection with its Revised Motion to Amend.
As to GLONASS ICD, Petitioner asserts that it was published
in 1998. Pet. 6 (citing Ex. 1006, 1; Ex. 1013, 27). Petitioner also points to
two additional references that describe the publication and availability of
GLONASS ICD in 1998 and 2003. See id. at 6–7 (citing Ex. 1006, 45;
Ex. 1013, 27; Ex. 1015, 10-18, 10-30; Ex. 1016). We are persuaded that
Petitioner has proven by a preponderance of the evidence that GLONASS
ICD is prior art to the ’104 patent under 35 U.S.C. § 102(b).
As to Kaplan, Petitioner asserts that it was published in 1996, relying
on its copyright date and Library of Congress catalog listing. Pet. 7 (citing
Ex. 1007; Ex. 1017). We are persuaded that Petitioner has proven by a
preponderance of the evidence that Kaplan is prior art to the ’104 patent
under 35 U.S.C. § 102(b).
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.
§ 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
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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
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
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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. 12 (citing Ex. 1003 at
¶ 46). 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.
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
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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. 13. Petitioner relies on two
passages from the specification to support its construction. Id. at 14–16.
The first passage describes the “combining” step 209 of the method shown
in Figure 2:
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.
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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. 16.7
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
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

7 Petitioner also addresses an alleged proposed construction from Patent
Owner in the related ITC proceeding. See Pet. 16–18. 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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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 Beser
Petitioner challenges claims 1, 2, 6–13, and 16 under 35 U.S.C.
§ 102(b) as anticipated by the Beser. Pet. 18–42. For these challenges,
Petitioner cites to Beser and the Heppe Declaration. Id.
1. Beser (Ex. 1004)
Beser relates to “[i]ntegrated GPS/GLONASS receivers” that offer
“better availability, performance and integrity than GPS-only receivers.”
Ex. 1004, 3-1.8 Beser describes the “R-100 series” and “more compact”
“GNSS-200” receivers 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.

8 We cite to the native page numbering used in Beser, rather than the
pagination added when Beser was filed as an exhibit.
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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
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. 1004, 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.
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2. Discussion of Independent Claim 1
Petitioner asserts that Beser discloses all of the limitations of claim 1.
Pet. 14–23. Petitioner provides analysis of each limitation in claim 1, with
citations to Beser that correspond to each of the claim limitations. Id.
Petitioner also cites to the relevant declarant testimony. Id. (citing various
portions of Ex. 1003).
Claim 1’s preamble states: “A method for determining a position of a
mobile receiver.” Petitioner asserts that Beser discloses the requirements of
the preamble, to the extent it limits the claim, because it discloses tracking
the receiver while undergoing dynamic maneuvers, which suggests mobile
operation. Pet. 20 (citing Ex. 1004, 3-14). Petitioner also argues that Beser
further indicates mobile operation by describing “both the ‘position process’
and the ‘velocity process’ for computing position” and other variables
indicated mobile operation of the receiver. Id. (citing Ex. 1003 ¶ 98).
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 Beser discloses equations for measuring a first pseudorange
from a first satellite system (e.g., GLONASS), and a second pseudorange
from a second satellite system (e.g., GPS). Pet. 21–22 (citing Ex. 1003
¶¶ 99–102; Ex. 1004, 3-8 to 3-10, 3-14, 3-15, 3-21, Figs. 4-1, 6-5, 6-6).
Petitioner points to specific equations Beser discloses for measuring the
pseudoranges. Id.
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
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contends that Beser discloses this limitation because it describes the need to
determine the “two receiver clock offsets” in order to determine a position
based on a combination of GPS and GLONASS measurements, and then
discloses how to determine the “GPS-to-GLONASS time difference
relationship.” Pet. 23 (citing Ex. 1003 ¶¶ 103–106; Ex. 1004, 3-9, 3-10).
Petitioner contends that Beser refers to the time difference “as tGLN - tGPS in
the expression ‘PRGLN + c(tGLN - tGPS).’” Id. (quoting Ex. 1004, 3-10).
According to Petitioner, one of ordinary skill in the art “would have
understood that the difference in system time references (tGLN - tGPS) is also
the difference in offsets from the receiver’s local clock to the two time
references (i.e., since the receiver’s local clock has a single value or ‘state’
at any instant of time, tGLN - tGPS = δtRGPS - δtRGLN).” Id. (citing Ex. 1003
¶ 104). Petitioner contends that these offsets can then be used to “‘software
correct’ the measurements of one system into the time reference of the other
system.” Id. at 23–24 (citing Ex. 1003 ¶¶ 104–105; Ex. 1004, 3-9, 3-10, 3-
15, § 4.3). Petitioner also contends that Beser discloses an alternative
method, where the receivers receive the time difference or offset, which also
involves “determining a difference” between the time references as claimed.
Id. at 24–25 (citing Ex. 1003 ¶ 106; Ex. 1004, 3-10).
As to the “combining” step we construed above, Petitioner argues that
both of Beser’s pseudoranges are measured to satellites of the first and
second navigation systems and the measurements are software correctable
“to the time base of the other system” using, for example, the time difference
determined in the previous step. See Pet. 25–26 (citing Ex. 1003 ¶¶ 107–
109; Ex. 1004, 3-9, 3-10). Petitioner also points to Beser’s statement that
this process provides a “solution based on a combination of GPS and
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GLONASS measurements.” Id. at 26 (quoting Ex. 1004, 3-9 (citing Ex.
1003 ¶ 108)). Petitioner also contends that Beser discloses combining the
first and second pseudoranges “using the claimed ‘difference’ to generate
combined first and second pseudoranges (i.e., the set of measurements which
are used to compute the navigation solution),” when Beser employs a
“software correcting” procedure “where the time difference is known ahead
of time.” Id. at 26–27 (citing Ex. 1003 ¶ 109; Ex. 1004, 3-9).
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Beser 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:
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 Beser 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 Heppe Declaration. See Pet. 18–27; Ex. 1003 ¶¶ 98–109.

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3. Remaining Claims
We have also reviewed Petitioner’s challenge of claims
2, 6–13, and 16. Petitioner provides analysis of each limitation in claims 2,
6–13, and 16, with citations to Beser that correspond to each of the claim
limitations. Pet. 27–42. Petitioner also cites to the relevant declarant
testimony of Dr. Heppe. Id. (citing Ex. 1003 ¶¶ 110–146). Patent Owner
did not file a Response, and does not dispute that Petitioner carried its
burden of proving that Beser discloses all of the limitations of claims 2, 6–
13, and 16.
We are persuaded by Petitioner’s arguments and evidence, and find
that Petitioner has established by a preponderance of the evidence that Beser
discloses all of the limitations of claims 2, 6–13, and 16, for the reasons
stated by Petitioner in the Petition, which we adopt as our own findings, as
further supported by the Heppe Declaration. See Pet. 27–42; Ex. 1003
¶¶ 110–146.
E. Challenge Under 35 U.S.C. § 103 Based on Beser, GLONASS
ICD, in light of the Knowledge of a Person of Ordinary Skill in the
Art
Petitioner challenges claims 5 and 15 under 35 U.S.C. § 103 based on
Beser, GLONASS ICD, and in light of the knowledge of a person of
ordinary skill in the art. Pet. 42–46. For these challenges, Petitioner cites to
the asserted references and the Heppe Declaration. Id.
1. GLONASS ICD (Ex. 1006)
GLONASS ICD relates to an interface control document that
“specifies parameters of [the] interface between [the] GLONASS space
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segment and user equipment.” Ex. 1006, 6.9 GLONASS ICD discloses the
“content and a format of the GLONASS navigation message.” Id. at 17.
More specifically, the GLONASS navigation message within the navigation
signal provides “users with requisite data for positioning, timing and
planning observations.” Id. The message includes “non-immediate
information” such as “data on GLONASS time” such as a “GLONASS time
scale correction.” Id. at 26. GLONASS ICD includes a value corresponding
to the “correction to GPS time relative to GPS time or [the] difference
between these time scales TGPS and TGL.” Id.
2. Discussion of Dependent Claims 5 and 15
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.” Ex. 1001, 9:47–49. Claim 15
depends from claim 12 and further requires “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.” Id. at 10:36–39. Both claims therefore require receiving the time
difference from a satellite navigation system.
Petitioner alleges that Beser alone discloses, “the relation between the
two references can be measured and communicated to users” from an
external source. Pet. 44 (citing Ex. 1004, 3-10). Petitioner acknowledges
that Beser “does not explicitly disclose receiving the difference between the
first time reference and the second time reference specifically from a

9 We cite to the native page numbering used in GLONASS ICD, rather than
the pagination added when GLONASS ICD was filed as an exhibit.
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satellite message” as required by claims 5 and 15. Id. Petitioner argues that,
“[n]onetheless, a POSITA would have known, from published standards
defining satellite navigation messages (such as the GLONASS ICD), that
receiving that time difference from a satellite navigation message would
have been the most natural source, and obvious to try at the least.” Id.
(citing Ex. 1003 ¶ 150). Petitioner also argues that the “results would have
been predictable because the GLONASS ICD describes how to use this
information.” Id. Petitioner relies on the following passage from
GLONASS ICD as an express disclosure of including the time difference
(e.g., TGPS – TGL) in the GLONASS navigation message:
Word τGPS is correction to GPS time relative to GPS time or
[the] difference between these time scales TGPS and TGL as
indicated in the following equation:
TGPS - TGL = ΔT + τGPS, where
ΔT is integer part, and τGPS is fractional part of the difference
between the system time scales expressed in seconds. The
integer part ΔT is determined from GPS navigation message in
user receiver.
Pet. 45 (quoting Ex. 1006, 26). Petitioner contends that the time difference
would have been included in the GLONASS navigation message already
being received and decoded by the receiver Beser discloses. Id. (citing Ex.
1003 ¶ 153).
As to the motivation to combine of Beser and GLONASS ICD,
Petitioner argues that one of ordinary skill in the art “would also have been
motivated by the desire to: a) avoid having to compute the time difference;
b) avoid having to smooth the time difference over time to eliminate
measurement noise; and c) save computing resources.” Pet. 46 (citing Ex.
1003 ¶ 154). Petitioner also contends that Beser expressly describes the
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motivation to combine by noting that “using ‘ground stations and data links’
increase[s] complexity and cost,” and using a satellite to send the
information avoids that complexity and cost. Id. (citing Ex. 1003 ¶ 155; Ex.
1004, 3-1, 3-2); see also id. (relying on same arguments for claim 15 as
claim 5).
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Beser and GLONASS ICD
disclose all of the limitations of claims 5 and 15 and that one of ordinary
skill in the art would have been motivated to make the proposed
combination. Moreover, we are persuaded by Petitioner’s arguments and
evidence, and find that Petitioner has established by a preponderance of the
evidence that Beser and GLONASS ICD disclose all of the limitations of
claims 5 and 15 and that one of ordinary skill in the art would have been
motivated to combine the references for the reasons stated by Petitioner in
the Petition, which we adopt as our own findings, as further supported by the
Heppe Declaration. See Pet. 42–46; Ex. 1003 ¶¶ 147–158.
“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 5 and 15; (3) one of ordinary skill in the
art would have had a reason to combine Beser with GLONASS ICD; 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 5 and 15 of the ’104 patent are
unpatentable over the combination of Beser, GLONASS ICD, and the
knowledge of a person of ordinary skill in the art.
F. Challenge Under 35 U.S.C. § 102 Based on Lennen
Petitioner challenges claims 1, 2, 6, 7, and 11–13 under 35 U.S.C.
§ 102(b) as anticipated by Lennen. Pet. 47–61. For these challenges,
Petitioner cites to Lennen and the Heppe Declaration. Id.
1. Lennen (Ex. 1005)
Lennen relates to a “combined GPS/GLONASS satellite positioning
system receiver.” Ex. 1005, 1:5–6. Lennen describes applications that may
benefit from the use of both GPS and GLONASS navigation systems,
including aircraft, car, and marine navigation. Id. at 3:31–34. In one
embodiment, Lennen describes combining “the GPS and GLONASS
measurements into one navigational solution.” Id. at 13:1–2. Lennen’s
Figure 15 is reproduced below.
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Figure 15 “depicts combined GPS/GLONASS measurement processing.”
Ex. 1005, 5:54–55. More specifically, it depicts the flow of information
when processing pseudoranges “to solve for position, velocity and time.” Id.
at 13:22–24. First, Lennen discloses smoothing measured pseudoranges to
decrease noise. Id. at 13:24–26. Next, when both GPS and GLONASS
pseudoranges are available, Lennen describes using an equation that requires
a satellite to solve for the “time offset between the GPS and GLONASS
system times.” Id. at 13:45–49. According to Lennen, the “timing solution
provides a measure of the offset between GPS and GLONASS system times
and hence accurate time referenced to the GPS system time, GLONASS
system time,” and UTC times that “can be presented to the user.” Id. at
13:56–61.
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2. Discussion of Independent Claim 1
Petitioner asserts that Lennen discloses all of the limitations of
claim 1. Pet. 49–54. Petitioner provides analysis of each limitation in
claim 1, with citations to Lennen that correspond to each of the claim
limitations. Id. Petitioner also cites to the relevant declarant testimony. Id.
(citing various portions of Ex. 1003).
Claim 1’s preamble states: “A method for determining a position of a
mobile receiver.” Petitioner asserts that Lennen discloses the requirements
of the preamble, to the extent it limits the claim, because it discloses
determining a receiver position, and refers to motion of the user platform,
which one of ordinary skill in the art would have understood as requiring a
“mobile receiver.” Pet. 49 (citing Ex. 1003 ¶¶ 160–161; Ex. 1005, Abstract,
1:5–6, 1:67–2:2, 3:31–35, 11:36–39, 13:22–24, Figs. 1, 15).
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 Lennen discloses measuring both the GPS and GLONASS
pseudoranges, and provides an equation with a variable that represents the
measured pseudoranges. Pet. 50–52 (citing Ex. 1003 ¶¶ 162–165; Ex. 1005,
13:1–10, Fig. 15; Ex. 1008, 12:59–13:10, Figs. 16a–b).
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 Lennen discloses this limitation because in the context of
combining the GPS and GLONASS pseudoranges, it notes the need to “take
into account the offset between the GPS and GLONASS system times,” and
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provides an equation that uses a variable that represents the time offset. Pet.
52–53 (citing Ex. 1003 ¶¶ 166–168; Ex. 1005, 13:12–21, 13:45–61).
Petitioner also relies on Lennen’s statement that “[t]he timing solution
provides a measure of the offset between GPS and GLONASS system
times.” Pet. 53 (quoting Ex. 1005, 13:56–58 (emphasis removed)). Based
on Lennen’s descriptions, Petitioner argues that Lennen discloses,
“determining a difference (i.e., ΔtSystem) between a first time reference of the
first satellite navigation system (e.g., GLONASS system) and a second time
reference of the second satellite navigation system (e.g., GPS system).”
Id. (citing Ex. 1003 ¶¶ 167–168).
As to the “combining” step we construed above, Petitioner relies on
Lennen’s express statement that “when combining GPS and GLONASS
pseudo ranges into the same solution we must also take into account the
offset between the GPS and GLONASS system times.” Pet. 53–54 (quoting
Ex. 1005, 13:11–13). Petitioner also relies on Lennen’s representation of the
time offset as ΔtSystem in the equations, which is determined in the previous
claim step. Id. at 54 (quoting Ex. 1005, 13:15–18). Petitioner argues that by
“combining” the pseudoranges into the “same” solution with the time offset,
“Lennen accounts for the difference in time references between the two
satellite navigation systems and uses the difference to generate pseudoranges
that can be used together.” Id. (citing Ex. 1003 ¶¶ 170–171).
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Lennen discloses all of the
limitations of claim 1. Moreover, we are persuaded by Petitioner’s
arguments and evidence, and find that Petitioner has established by a
preponderance of the evidence that Lennen discloses all of the limitations of
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claim 1, for the reasons stated by Petitioner in the Petition, which we adopt
as our own findings, as further supported by the Heppe Declaration. See Pet.
49–54; Ex. 1003 ¶¶ 159–171.
3. Remaining Claims
We have also reviewed Petitioner’s challenge of claims
2, 6, 7, and 11–13. Petitioner provides analysis of each limitation in claims
2, 6, 7, and 11–13, with citations to Lennen that correspond to each of the
claim limitations. Pet. 54–61. Petitioner also cites to the relevant declarant
testimony of Dr. Heppe. Id. (citing Ex. 1003 ¶¶ 172–187). Patent Owner
did not file a Response, and does not dispute that Petitioner carried its
burden of proving that Lennen discloses all of the limitations of claims 2, 6,
7, and 11–13.
We are persuaded by Petitioner’s arguments and evidence, and find
that Petitioner has established by a preponderance of the evidence that
Lennen discloses all of the limitations of claims 2, 6, 7, and 11–13, for the
reasons stated by Petitioner in the Petition, which we adopt as our own
findings, as further supported by the Heppe Declaration. See Pet. 54–61; Ex.
1003 ¶¶ 172–187.
G. Challenge Under 35 U.S.C. § 103 Based on Lennen and Kaplan
Petitioner challenges claims 8–10 and 16 under 35 U.S.C. § 103 based
on Lennen and Kaplan. Pet. 62–70. For these challenges, Petitioner cites to
the asserted references and the Heppe Declaration. Id.
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1. Kaplan (Ex. 1007)
Kaplan relates to understanding GPS principles and applications, and
describes the fundamentals of satellite navigation. Ex. 1007, Title, 15.10 As
part of its calculation of a user position, Kaplan discloses use of measured
pseudoranges. Id. at 43–44. Kaplan also discloses using approximate
positions and the offset from the approximation to the true position, along
with the clock offset. Id. at 44. Kaplan discloses use of these variables in a
series of equations, providing a solution that determines a user’s position
and the receiver clock offset. Id. at 44–47.
2. Discussion of Dependent Claims 8–10 and 16
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 relies on Lennen as
disclosing all of the limitations from which these claims depend, and argues
that Lennen discloses a relationship between a measured and actual
pseudorange and the means to obtain pseudoranges from multiple satellite
systems, and combining them to determine actual positions. Pet. 62–63.
Petitioner argues that the limitations of claims 8–10 and 16 not expressly
disclosed by Lennen would have already been known to one of ordinary skill
in the art, as well as expressly disclosed by Kaplan. See Pet. 62–70. For
example, as to claim 8,11 Petitioner argues that one of ordinary skill in the art

10 We cite to the native page numbering used in Kaplan, rather than the
pagination added when Kaplan was filed as an exhibit.
11 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.” Ex. 1001, 9:58–63.
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would already know that Lennen’s actual position calculation includes the
steps of forming pseudorange residuals and using them to update
measurements because such methods were standard at the time.
Id. at 63 (citing Ex. 1003 ¶ 189). Petitioner also argues that Kaplan
discloses, “that this was all well known by 1996.” Id. (citing Ex. 1003
¶ 189). More specifically, Petitioner alleges that Kaplan’s equations
disclose forming pseudorange residuals as the difference between Kaplan’s
approximate pseudoranges and pseudorange measurements. Id. at 63–64
(citing Ex. 1007, 43–44, 46–47, Equations 2.16–2.20, 2.22, 2.23, 2.27–2.31).
As to a reason to combine, Petitioner argues that Lennen already
suggests, at a minimum, forming pseudorange residuals, providing a
motivation “to apply the specific linearization method disclosed by Kaplan,”
which “avoids the complexities of solving a set of nonlinear equations.”
Pet. 65–66 (citing Ex. 1003 ¶ 190). Petitioner also alleges that Kaplan’s
method provides various advantages, and that it would have at least been
“obvious to try” given Kaplan’s “comprehensive disclosure on how to form
pseudorange residuals and update measurements.” Id. at 66 (citing Ex. 1003
¶ 191; Ex. 1005, 3:26–30; Ex. 1007, 47). Petitioner also characterizes the
combination as “nothing more than choosing from a finite number of
identified, predictable solutions (i.e., forming pseudorange residuals as a
difference between an approximated pseudorange and a measured
pseudorange as disclosed by Kaplan (and as understood by a POSITA)),
with a reasonable expectation of success (i.e., actually perform and complete
the steps of determining the receiver position).” Id. at 66–67 (citing
Ex. 1003 ¶¶ 191–192; KSR, 550 U.S. at 416).
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Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Lennen and Kaplan disclose all
of the limitations of claims 8–10 and 16 and that one of ordinary skill in the
art would have been motivated to make the proposed combination.
Moreover, we are persuaded by Petitioner’s arguments and evidence, and
find that Lennen and Kaplan disclose all of the limitations of claims 8–10
and 16 and that one of ordinary skill in the art would have been motivated to
combine the references for the reasons stated by Petitioner in the Petition,
which we adopt as our own findings, as further supported by the Heppe
Declaration. See Pet. 62–70; Ex. 1003 ¶¶ 188–203.
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 8–10 and 16; (3) one of ordinary skill in
the art would have had a reason to combine Lennen and Kaplan; 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 the combination of Lennen and Kaplan.
H. Challenge Under 35 U.S.C. § 103 Based on Lennen, GLONASS
ICD, in light of the Knowledge of a Person of Ordinary Skill in the
Art
Petitioner challenges claims 5 and 15 under 35 U.S.C. § 103 based on
Lennen, GLONASS ICD, and the knowledge of a person of ordinary skill in
the art. Pet. 70–72. For these challenges, Petitioner cites to the asserted
references and the Heppe Declaration. Id.
The analysis of this challenge to claims 5 and 15 follows that
discussed above with respect to the challenge to claims 5 and 15 based on
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Beser and GLONASS ICD. Here, Petitioner relies on Lennen, rather than
Beser, as disclosing the limitations of independent claims 1 and 12, from
which claims 5 and 15 depend, respectively. See Pet. 70, 72. As discussed
above, Petitioner has established sufficiently, on the present record, that
GLONASS ICD discloses the limitations of claims 5 and 15.
As to the motivation to combine Lennen and GLONASS ICD,
Petitioner argues that one of ordinary skill in the art would have been
“motivated by the desire to: a) avoid having to compute the time difference;
b) avoid having to smooth the time difference over time to eliminate
measurement noise; and c) save computing resources.” Pet. 71 (citing Ex.
1003 ¶ 207). Petitioner also contends that modifying Lennen in view of
GLONASS ICD “would have been obvious to try, given that the standard
was already being developed in the 1990s,” and that there would have been a
reasonable expectation of success when making the modification. Id. at 72
(citing Ex. 1003 ¶¶ 208–209; Ex. 1006, 6); see also id. (citing Ex. 1003 ¶
210) (relying on same arguments for claim 15).
Patent Owner did not file a Response, and does not dispute that
Petitioner carried its burden of proving that Lennen and GLONASS ICD
disclose all of the limitations of claims 5 and 15 and that one of ordinary
skill in the art would have been motivated to make the proposed
combination. Moreover, we are persuaded by Petitioner’s arguments and
evidence, and find that Lennen and GLONASS ICD disclose all of the
limitations of claims 5 and 15 and that one of ordinary skill in the art would
have been motivated to combine the references for the reasons stated by
Petitioner in the Petition, which we adopt as our own findings, as further
supported by the Heppe Declaration. See Pet. 70–72; Ex. 1003 ¶¶ 204–210.
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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 5 and 15; (3) one of ordinary skill in the
art would have had a reason to combine Lennen and GLONASS ICD; 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 5 and 15 of the ’104 patent are
unpatentable over the combination of Lennen, GLONASS ICD, and the
knowledge of one of ordinary skill in the art.
I. 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.12 As explained below, Petitioner has proven, by a preponderance of

12 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; RMTA 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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the evidence based on the entirety of the record, that the substitute claims are
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). “[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. (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)).
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).
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2. Requirements Under 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121
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). RMTA 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 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, 10, 12–14, 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;
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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 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. 13–18. 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
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35 U.S.C. § 103(a) based on Beser and van Diggelen13; (3) obvious under 35
U.S.C. § 103(a) based on Beser and Peterson14; and (4) patent-ineligible
under 35 U.S.C. § 101. Pet. Opp. RMTA 1, 10, 20–21. Petitioner relies on
a second Declaration of Dr. Heppe (Ex. 1024) in support of its Opposition to
Patent Owner’s Motion to Amend, and a third, follow-on Declaration of Dr.
Heppe (Ex. 1029) 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 Beser and Peterson are prior art to the ’104
patent.
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 2–4, 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).

13 US 6,417,801 B1, issued July 9, 2002 (“van Diggelen”) (Ex. 1010).
14 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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5. Obviousness Based on Beser and van Diggelen
Petitioner opposed Patent Owner’s original MTA by arguing that
those proposed substitute claims were unpatentable over Beser and van
Diggelen. See Pet. Opp. MTA 13–18.15 In our Preliminary Guidance, we
noted that Petitioner’s arguments appeared to have merit based on the record
before us at that time. PG 11–13. 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 Beser and van Diggelen.
Pet. Opp. RMTA 10–14, 16–18.
Patent Owner argues that Petitioner fails to establish that Beser is
prior art as a printed publication before the effective filing date of the
’104 patent in 2005. RMTA 10–12. Patent Owner also argues that one of
ordinary skill in the art would not have been motivated to combine Beser
and van Diggelen, and that a long-felt but unresolved need supports a
finding of nonobviousness. Id. at 14–19.16 We will address these issues in
turn, along with Petitioner’s arguments and evidence in support of its
challenge.

15 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 10–11.
16 Patent Owner also argues that Beser fails to disclose the “without knowing
absolute time” limitation added by amendment, but Petitioner does not
contend that Beser discloses that limitation and we will not address the issue
further. See RMTA 12–14.
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a. The Prior Art Status of Beser
Patent Owner argues that Petitioner fails to meet its burden of proving
that Beser 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 Petitioner improperly
relies on hearsay statements in the form of WorldCat and ISBN catalog
listings from two websites. RMTA 11 (citing Exs. 1010, 1011). Patent
Owner argues that, even if there were no hearsay problem, dates from Beser
itself and the websites fail to establish the date Beser was made publicly
accessible. Id. at 11–12. Patent Owner also argues that Petitioner cannot
rely on Beser’s inclusion on the face of an unrelated patent and file history
as sufficient to establish public accessibility. Id. at 12 (citing Pet. 5–6;
Ex. 1012).
Petitioner argues that Patent Owner waived its hearsay objection to
the WorldCat and ISBN catalog listings that include Beser by missing the
deadline for such objections. Pet. Opp. RMTA 12. Petitioner contends that
because Petitioner submitted these exhibits (Exs. 1010, 1011) along with 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. (citing 37 C.F.R. § 42.64(b)(1)). Petitioner also contends that
the evidence supports its argument that Beser was sufficiently publicly
accessible by at least 2001. Id. at 13. First, Petitioner argues that a copy of
Beser could have been obtained in 2001 along with an order of the file
history of the patent that lists Beser. Id. (citing MPEP 707.05(a)). Second,
Petitioner argues that Beser is part of a NATO document related to the
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AGARD Lecture Series,17 and “the compendium indicates that it was
presented in three cities during the first half of July 1996.” Id. (citing Ex.
1004, 1). Third, Petitioner argues that a separate document summarizing the
history of AGARD notes that copies of the AGARD Lecture Series were
typically published to attendees just before the lectures, and copies were sent
free of charge to distribution centers of each NATO country. Id. at 13–14
(citing Ex. 1030, 150, 154; Ex. 1031). Fourth, Petitioner argues that
“AGARD also authorized three Sales Agencies, in US, UK and France, to
sell copies of its unclassified publications,” and was therefore publicly
available by 1996. Id. at 14 (citing Ex. 1030, 154).
In its Reply to Petitioner’s Opposition, Patent Owner argues that it
objects to the sufficiency of the evidence, not its admissibility due to
hearsay. PO Reply 5. Patent Owner also argues that the catalog websites do
not establish the date Beser was “disseminated or otherwise made available.”
Id. Patent Owner also argues that Beser’s inclusion on the face of another
patent and in its file history does not establish public accessibility due to
Petitioner’s lack of evidence that those skilled in the art could locate it. Id.
(citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95
(Fed. Cir. 2008)). As to the AGARD Lecture Series issue, Patent Owner
argues that: (1) Petitioner’s evidence fails to establish when Beser was
disseminated; (2) the “presentations” that were “normally” distributed may
not include papers such as Beser; and (3) Petitioner’s evidence lacks detail

17 “AGARD” stands for Advisory Group for Aerospace Research &
Development. Ex. 1004, 1, 4.
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as to publication practices and dates of publication. Id. at 5–7 (citing Pet.
Opp. RMTA 13–14; Ex. 1030, xiii, 150, 154; Ex. 1031).
In its Sur-reply, Petitioner argues that Patent Owner concedes that it
waived the hearsay objection and improperly imposes a sufficiency of the
evidence standard that requires someone to testify personally as to receipt of
a copy of Beser in 1996. Pet. Sur-reply 4–5 (citing PO Reply 5). According
to Petitioner, “Agard itself showing a date of 1996 and describing its
distribution channels, the catalog listings showing a published date in 1996,
the Agard a History book stating in 1999 that Beser was published in 1996,
and the file history of U.S. Patent No. 6,229,479 showing that inventors of a
combined GPS/GLONASS technique were aware of Beser—establishes a
publication date of 1996.” Id. at 5. Petitioner also argues that the case law
supports its position. Id. at 5–6 (citing cases).
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
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(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.
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 Beser is a prior art printed publication because it was publicly accessible
at least as early as 2001. There are a number of indicia that, standing alone,
may not establish that Beser was publicly accessible, but taken together do
meet that standard. First, Beser itself indicates that it was a NATO
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“AGARD”18 document “published June 1996,” that the material was
assembled to support a series of lectures in July 1996, and bears a stamp
with a “DISTRIBUTION STATEMENT”19 stating that the material was
“Approved for public release[;] Distribution Unlimited.” Ex. 1004, 1. Beser
itself, therefore, states that it was published in June 1996, ahead of a series
of July lectures, and that there were no restrictions on its distribution or
expectation of confidentiality. Id. A separate document, detailing “AGARD
The History 1952–1997,” notes that the Lecture Series of which Beser was a
part included “full texts of the presentations” that “were normally published
just before the lectures were presented and made available to persons
attending the lectures.” Ex. 1030, 1, 150 (showing list including 1996
Lecture Series that includes Beser), 154 (describing publication practices);
Ex. 1031 (showing Library of Congress catalog entry for Ex. 1030, dated
1999).20 This document corroborates what already appears apparent from

18 AGARD seeks “to bring together the leading personalities of the NATO
nations in the fields of science and technology relating to aerospace.” Ex.
1004, 4. Beser was created under “the sponsorship of the Mission Systems
Panel of AGARD and the Consultant and Exchange Programme of
AGARD.” Id. at 1. The AGARD Panels are composed of appointed
experts, with the results of AGARD work “reported to the member nations
and the NATO Authorities through the AGARD series of publications of
which this is one.” Id. at 4.
19 Our ultimate conclusion would not change even if Beser lacked the
“DISTRIBUTION STATEMENT” stamp on the first page of the Lecture
Series document. Patent Owner does not argue that any recipients of Beser
were under some sort of express or implied obligation of confidentiality.
20 Patent Owner suggests that the publication practices may have changed in
1996 due to a change in organizational structure, but nothing in the
document ties the organizational changes to any changes in publication
practices. See PO Reply 6 (citing Ex. 1030, xiii).
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Beser itself—that Beser was distributed to attendees of the lecture without
restriction in June 1996, prior to the upcoming lectures in July 1996.
Ex. 1004, 1. The same document states that the publications were not only
distributed to those attending the upcoming lectures, but were also sent to
NATO member nations, “often a national defence or aerospace scientific
information unit,” for further distribution. Id. at 154. The WorldCat catalog
page supports the proposition that this second round of distribution occurred
by suggesting that, while AGARD published the document, “NASA Center
for AeroSpace Information” distributed the document in 1996. Ex. 1010, 1;
see also Ex. 1004, 163 (Beser noting that requests for copies in the United
States could be made to “NASA Center for AeroSpace Information (CASI)”
in the United States). The remaining documents, while not determinative,
generally support Petitioner’s position. See Ex. 1011 (catalog page with
ISBN number showing publication by December 1996); Ex. 1012, 3 (2001
patent listing Beser as prior art reference, suggesting that Beser was
available to some extent by that date).
Patent Owner suggests that Petitioner fails to establish when
dissemination occurred, and the content of the material disseminated. PO
Reply 6. We disagree. As noted above, Beser itself indicates that it was
disseminated in June 1996 ahead of the lectures, and a separate document
confirms that publication prior to the lectures was the practice of the
organization. Ex. 1004, 1; Ex. 1030, 154. Patent Owner’s argument that
some other document may have been sent rather than Beser contradicts
Beser itself, and has no support in the record. See Ex. 1004, 1. To the
extent that Patent Owner suggests the record lacks evidence of what was
distributed at the lectures, or after them, that is of no moment when the
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record already establishes what was sent to attendees prior to the lectures.21
Although cases addressing printed publication issues in the context of
lectures or conferences typically focus on what was disseminated at the
lecture, and conclude that unrestricted distribution at the lecture supports a
conclusion of public accessibility, we see no reason why distribution prior to
the event in question should lead to a different result. See, e.g.,
Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir.
1985) (holding that 6 copies of paper delivered to attendees at a conference,
where paper was orally presented, was a printed publication).
Based on the foregoing, we conclude that Petitioner has established by
a preponderance of the evidence that Beser 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. 1025, 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

21 We note, however, that the record does support an inference that a
separate, wider publication of Beser occurred when it was distributed by
NASA. See Ex. 1030, 154 (describing secondary distribution through
aerospace agencies of NATO member states); Ex. 1010 (indicating
distribution by NASA in 1996). These documents further support
Petitioner’s argument that Beser was publicly disseminated in 1996.
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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 Beser. 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
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 (citing Ex. 1025, 7:35–42, 7:45–48; Ex. 1024 ¶¶ 93–94);
Pet. Opp. RMTA 11 (citing Pet. Opp. MTA 14–22; Ex. 1029 ¶¶ 57–58).
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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 10.
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. 1025, codes (54), (57), 7:35–42, 7:45–48; Ex. 1024 ¶¶ 93–94.
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.
As to the motivation to combine Beser 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 14. Petitioner asserts that van Diggelen’s method for
addressing unknown time requires an additional satellite measurement, and
Beser 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 14–15 (citing Ex. 1004, 3-1; Ex. 1024 ¶¶ 93–94; Ex. 1025,
7:35–42, 7:45–48). According to Petitioner, “[a] POSITA would have been
motivated to use Beser to improve van Diggelen’s method by increasing the
number of satellites to choose from, by allowing for the use of more than
one GNSS. (Each GNSS has its own dedicated set of satellites.).” Id. at 15–
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16 (citing Ex. 1024 ¶¶ 93–99). Petitioner asserts that the combination would
make “van Diggelen’s method available more often (and more reliable).” Id.
at 16. Petitioner also contends that “van Diggelen expressly espoused the
benefits of increasing numbers of satellite measurements.” Id. (citing Ex.
1024 ¶ 99; Ex. 1025, 10:66–11:5). Petitioner also argues that it would have
been “trivial” to make modifications to Beser based on van Diggelen’s
teachings. Id. at 16–18 (citing Ex. 1004, 3-16; Ex. 1024 ¶¶ 100–102; Ex.
1025, 7:18–31, 7:35–42).
Patent Owner argues that “Beser and van Diggelen offer competing,
not complimentary, solutions to different problems” and combining them
would have frustrated the principles under which each 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 15 (citing Ex. 1004, 3-6;
Ex. 1025, 1:36–39; Ex. 2005 ¶ 60). 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 15–16 (citing Ex. 1004, 3-8 to 3-10; Ex. 1025, 7:35–42;
Ex. 2005 ¶ 61).
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
16 (citing Ex. 1025, 1:36–39; Ex. 1029 ¶ 67). Petitioner contends that van
Diggelen addresses the problem of computing position without knowing
absolute time. Id. at 16–17 (citing Ex. 1025, 1:52–65, 3:50–52, 3:55–62).
Petitioner also contends that the references complement each other in that
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“van Diggelen teaches a way to solve for absolute time if at least one
additional satellite measurement is available” and “Beser teaches a way to
make many more satellite measurements available.” Id. at 17 (citing Ex.
1004, 3-1; Ex. 1029 ¶ 68). Petitioner also takes issue with Patent Owner’s
argument that Beser requires an additional satellite signal because, in some
embodiments, Beser utilizes information already known or provided by an
external source, negating the need for an additional satellite source. Id. at
17–18 (citing Ex. 1004, 3-9 to 3-10; Ex. 1029 ¶¶ 68–69); see also Pet. Sur-
reply 6–7.
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 7–8 (citing
RMTA 17; Ex. 1025, 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 8 (citing RMTA 16–18; Ex. 1004, 3-6, Fig.
3-1; 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 Beser
to improve accessibility to satellites, which enables use of van Diggelen’s
method that does not require knowing absolute time. 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 Beser discloses a method that makes more of such satellite
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measurements available. Ex. 1004, 3-1; Ex. 1025, 1:52–65, 3:50–52, 3:55–
62; Ex. 1024 ¶¶ 93–96; Ex. 1029 ¶¶ 67–68. We are also persuaded that the
combination provides benefits such making van Diggelen’s valuable method
available more often, and therefore more useful. Ex. 1024 ¶ 99. 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
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 Beser and van Diggelen. See Ex. 1024 ¶¶ 93–102;
Ex. 1029 ¶¶ 66–70.
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 17–18 (citing Ex. 1004; Ex. 1025, 1:36–39; Ex. 1026,
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 18 (citing Ex. 1004; Ex. 1025; Ex.
1026; Ex. 2005 ¶ 64). Patent Owner contends that the ’104 patent “was the
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first invention that met this long-felt need.” Id. at 18–19 (citing Ex. 2005
¶ 65).
Petitioner argues that Patent Owner’s “cursory discussion” fails to
meet its burden of establishing a nexus to the substitute claims. Pet. Opp.
RMTA 19–20. 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. at 20 (citing
Pet. 25–27, 41; Pet. Opp. MTA, 14–21); see also Pet. Sur-reply 8–9.
In its Reply, Patent Owner argues that Petitioner’s lack of nexus
argument fails to identify a “single prior art reference that quickly and
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 9 (citing RMTA 10–22). 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 10.
Patent Owner bears the burden of establishing a nexus between the
alleged long-felt need and the 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
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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
and accuracy of its claimed invention in comparison with the prior art. See
RMTA 17–18. 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 Beser 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
Beser and van Diggelen; and (4) the evidence of long-felt but unresolved
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need, if any, is weak. Weighing these underlying factual determinations, a
preponderance of the evidence persuades us that substitute claims 21–33 are
unpatentable over the combination of Beser and van Diggelen.
6. Obviousness Based on Beser and Peterson
Petitioner opposed Patent Owner’s original MTA by arguing that
those proposed substitute claims were unpatentable over Beser and Peterson.
See Pet. Opp. MTA 18–21. 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 Motion to
Amend, Petitioner again argues that the current proposed substitute claims
are unpatentable as obvious over Beser and Peterson. Pet. Opp. RMTA 10–
11, 14–16, 18–19.
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 Beser
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
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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.22
Petitioner argues that “Peterson was presented at the 8th International
Technical Meeting of the Satellite Division of the Institute of Navigation in
1995 (‘the ION Conference’).” Pet. Opp. RMTA 14 (citing Ex. 1026, 1).
Petitioner relies on personal testimony from Dr. Dafesh, a declarant in the
related IPR2019-00737, who testifies that he attended the ION Conference
and that “copies of Peterson were distributed to attendees in 1995.” Id.
(citing Ex. 1034 ¶¶ 8–12; Ex. 1035, 7). Petitioner also relies on the
testimony from Dr. Heppe, 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,” and that he kept a copy of his CD that contains Peterson. Id.
(citing Ex. 1029 ¶¶ 62–63). 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

22 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 20 (citing Ex. 1027, 4). Our analysis does not rely on the
treatment of Peterson in any related decisions.
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publicly accessible and prior art as of 1995. Id. at 15–16 (citing Ex. 1026, 1;
Ex. 1029 ¶¶ 62–65; Ex. 1034 ¶¶ 8–12).
In its Reply to Petitioner’s Opposition, Patent Owner does not respond
to Petitioner’s arguments and evidence as to the public accessibility of
Peterson as of 2005. See PO Reply 10–11. 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
publicly accessible by 1995. Dr. Dafesh testifies that he attended the ION
Conference in 1995, which the attendee list for the conference confirms. Ex.
1034 ¶¶ 8–9; Ex. 1035, 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 at the ION
Conference. Ex. 1034 ¶¶ 10–12. 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. 1029 ¶¶ 62–65;
Ex. 1032 (image of CD); Ex. 1033 (copy of table of contents of CD listing
Peterson). Taken together, this unrebutted personal testimony, combined
with the dates on Peterson itself,23 establish by a preponderance of the

23 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
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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
Peterson addresses the problem of losing sight of satellites in cities
having “deep urban canyons.” Ex. 1026, 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 18. Petitioner relies on Peterson’s goal: to find a solution when
absolute time is unknown due to obstructions in cities, using equations that

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., 774 F.2d at 1109 (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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include variables for time errors. Id. (citing Ex. 1026, Abstract, 1329;
Ex. 1024 ¶ 103); Pet. Opp. RMTA 11 (citing Pet. Opp. MTA 14–21; Ex.
1029 ¶¶ 57–58). 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 10.
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
unknown, and does so using mathematical models that include variables
accounting for absolute time error. See Ex. 1026, 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 Beser and Peterson, Petitioner argues
that “a POSITA faced with the urban canyon problem would have looked to
Peterson to obtain position fix without absolute time (which requires an
additional satellite measurement) and to Beser to make more satellites
available to a receiver with sightlines blocked by buildings.” Pet. Opp.
MTA 18 (citing Ex. 1024 ¶ 103). Petitioner contends that the same
reasoning supporting the combination of Beser and van Diggelen applies to
Beser and Peterson. Id. Petitioner also contends that Peterson’s method of
using small “snapshots” of the satellite signal overcomes the deficiency in
Beser that “can require continuously tracking the satellites until absolute
time can be decoded from the satellite signal.” Id. at 18–19 (citing Ex. 1024
¶ 104). Petitioner also argues that Peterson and Beser are analogous art, and
employ very similar equations that “include position and clock-error
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variables.” Id. at 19–20. Due to the alleged similarity, Petitioner contends
that modifying Beser’s method with the equations in Peterson “would have
been simple and obvious.” Id. at 20–21. Petitioner alleges that additional
motivations support the combination, such as increasing the number of
satellites available using Peterson’s snapshot approach and reducing the time
necessary to track satellites in urban canyons. Id. at 21 (citing Ex. 1024
¶¶ 112–115).
Patent Owner argues, as it did in its arguments against the
combination of Beser and van Diggelen, that “Beser 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, 3-6; Ex. 1026, 1323; Ex. 2005 ¶ 68). 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 (citing Ex. 1004, 3-8 to 3-
10; Ex. 1026, 1329–1330; Ex. 2004 ¶ 70).
Petitioner argues that Beser 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
“Beser solves this problem by adding 3 or 4 additional measurements.” Pet.
Opp. RMTA 18–19 (citing Ex. 1004, 3-9 (Fig. 3-1); Ex. 1026, 1323, 1329;
Ex. 1029 ¶ 71). Petitioner contends that Beser offers more satellites than
typically required and enhances performance in the environments Peterson
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describes. Id. (citing Ex. 1029 ¶ 72). 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” Beser and Peterson. Id. at 19
(citing Ex. 1029 ¶¶ 72–75).
In its Reply, Patent Owner argues that adding an additional satellite
reduces the times that a position solution can be obtained. PO Reply 8–10
(citing Ex. 1004, Fig. 3-1; 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 had reason to and would have
been motivated to use Peterson’s positioning equations when absolute time
is unknown, and would look Beser’s method as a way to obtain additional
satellite measurements. 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 Beser discloses a method that makes more
of such satellite measurements available. Ex. 1004, 3-1, 3-9 (Fig. 3-1);
Ex. 1024 ¶¶ 103–104, 112–115; Ex. 1026, 1323, 1329–1330. We are also
persuaded that the combination provides benefits such as overcoming
Beser’s need to continuously track satellites to obtain absolute time,
increasing the number of satellites available using Peterson’s snapshot
approach, and reducing the time necessary to track satellites in urban
canyons. Ex. 1024 ¶¶ 104, 112–115; see also Ex. 1029 ¶¶ 71–75.
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
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additional satellite signal to either Beser 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
Beser’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. 1029 ¶¶ 71 (“Beser typically provides 3
or 4 additional measurements.”), 72 (“Beser 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 Beser and Peterson.
i. Long-Felt Need
Patent Owner relies on the same long-felt need argument we
addressed above in the context of the Beser/van Diggelen challenge. See
RMTA 22. For the same reasons, we find the evidence of long-felt need
weak.
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 Beser 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 Beser 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 the
combination of Beser and Peterson.
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7. Remaining Challenges
Petitioner argues that proposed substitute claims 21–33 are patent-
ineligible under 35 U.S.C. § 101. Pet. Opp. 20–25; Pet. Sur-reply 9–12.
Patent Owner disagrees. RMTA 22–25; PO Reply 11–12. Petitioner also
argues that the proposed substitute claims are indefinite, and Patent Owner
disagrees. Pet. Opp. RMTA 1–10; RMTA 10; PO Reply 1–4.
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.24

24 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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CONCLUSION25
In summary:

25 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, 6–
13, 16
102(b) Beser 1, 2, 6–13, 16
5, 15 103(a) Beser, GLONASS
ICD
5, 15
1, 2, 6, 7,
11–13
102(b) Lennen 1, 2, 6, 7, 11–
13

8–10, 16 103(a) Lennen, Kaplan 8–10, 16
5, 15 103(a) Lennen,
GLONASS ICD
5, 15
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:

Matthew Satchwell
Gianni Minutoli
James Heintz
Paul Steadman
DLA PIPER (US) LLP
matthew.satchwell@dlapiper.com
gianni.minutoli@dlapiper.com
jim.heintz@dlapiper.com
paul.steadman@dlapiper.com

Timothy May
Joshua Goldberg
FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP
timothy.may@finnegan.com
joshua.goldberg@finnegan.com

For PATENT OWNER:

John Caracappa
Thomas Yebernetsky
STEPTOE & JOHNSON LLP
jcaracap@steptoe.com
tyebernetsky@steptoe.com