Gordon * Howard Associates, Inc.v.Lunareye, Inc.

Patent Trial and Appeal Board

Sep 28, 2015

10008893 (P.T.A.B. Sep. 28, 2015)

Trials@uspto.gov Paper 43
571-272-7822 Entered: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GORDON * HOWARD ASSOCIATES, INC.,
Petitioner,

v.

LUNAREYE, INC.,
Patent Owner.
____________

Case IPR2014-00712
Patent 6,484,035 B2
____________

Before MICHAEL W. KIM, GEORGIANNA W. BRADEN, and
J. JOHN LEE, Administrative Patent Judges.

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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INTRODUCTION
On April 30, 2014, Gordon * Howard Associates, Inc. (“GH”) filed a
Petition (Paper 2, “Pet.”) requesting inter partes review of claim 3 of U.S.
Patent No. 6,484,035 B2 (Ex. 1002, “the ’035 patent”). Patent Owner
LunarEye, Inc. (“LunarEye”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). An inter partes review of claim 3 was instituted on
October 17, 2014. Paper 8, 16 (“Inst. Dec.”). After institution, LunarEye
filed a Patent Owner Response (Paper 17, “PO Resp.”), and GH filed a
Petitioner Reply1 (Paper 23, “Pet. Reply”). In addition, GH filed a Motion
to Seal requesting that Exhibit 1017 be sealed.2 Paper 25 (“Mot. Seal”). An
oral hearing was held on May 13, 2015. Paper 42 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As
discussed below, GH has shown by a preponderance of the evidence that
claim 3 of the ’035 patent is unpatentable.
A. Related Proceedings
The ’035 patent is at issue in a pending district court case involving
the same parties in this proceeding, Lunareye, Inc. v. Gordon Howard
Associates, Inc., No. 9:13-cv-91 (E.D. Tex.). Pet. 1; Paper 6, 2.
Additionally, the ’035 patent is the subject of IPR2014-01213, in which an

1 GH filed both a confidential Petitioner Reply (Paper 24), and a redacted
Petitioner Reply (Paper 23), in which confidential information is redacted.
The redacted information was not relied on for this Decision. Thus, all
citations to the Petitioner Reply refer to the redacted version.
2 GH filed both confidential and redacted versions of the Motion to Seal
(Paper 25 (redacted); Paper 26 (confidential)) and Exhibit 1017. All
citations to the Motion refer to the redacted version.
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inter partes review of claims 1–24 was instituted on February 3, 2015. See
Gordon * Howard Assocs., Inc. v. LunarEye, Inc., Case IPR2014-01213,
2015 WL 495016, at *16 (PTAB Feb. 3, 2015) (Paper 11).
B. The ’035 Patent
The ’035 patent relates to a “triggerable location-reporting apparatus,”
where the apparatus transmits its location information in response to a
“trigger signal.” Ex. 1002, Abstract. The Summary of the Invention states:
In general, in one aspect, the invention features a triggerable
location-reporting apparatus comprising a trigger signal, a GPS
processor coupled to the trigger signal, a position signal
carrying position information generated by the GPS processor
in response to the trigger signal, a telemetry transmitter coupled
to the position signal, and a telemetry transmit signal
transmitted by the telemetry transmitter, the telemetry transmit
signal carrying the position information.
Id. at 2:1–9. In addition, the apparatus may include a controller configured
to switch on and off the power signals to the GPS processor and telemetry
transmitter. Id. at 2:10–19. The specification indicates that this “power
management” by the controller limits power drain. Id. at 6:23–40.
Further, the specification describes a “data selector” operating such
that certain bits of location data from a GPS device are not included in the
data signal transmitted by the apparatus—for example, “only the bits
representing latitude, longitude, velocity and heading . . . are included in the
data to transmit signal” while “the bits representing height and current time
are discarded.” Id. at 7:4–15; see id. at Figs. 6, 7. Additionally, the
specification states that “it may be desirable to change the order that the
various portions of the information are transmitted.” Id. at 7:15–17. Thus,
in sum, the data selector selects the data to be transmitted and arranges it
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into the desired order. Id. at 7:18–20.
C. Challenged Claim
The sole claim challenged in this Petition is independent claim 3,
which recites:
3. A triggerable location-reporting apparatus comprising:
a location-signal generating device configured to produce a
location signal including location data when enabled;
a data selecting device for selecting less than all of the location
data to include in the location signal;
a telemetry transmitter coupled to the data selecting device
configured to transmit the location signal when enabled; and
an enable controller configured to enable the location signal
generating device and the telemetry transmitter when it receives
a trigger signal and to disable the location-signal generating
device and the telemetry transmitter after the telemetry
transmitter transmits the location signal;
wherein the data selecting device reorders the selected location
data.
D. Instituted Ground of Unpatentability
This inter partes review of claim 3 was instituted solely on the ground
of unpatentability under 35 U.S.C. § 103 over Mohan3 and Oncore.4 Inst.
Dec. 16.

3 U.S. Patent No. 6,121,922 (issued Sept. 19, 2000) (Ex. 1006, “Mohan”).
4 Motorola, Oncore User’s Guide, Revision 7.0 (May 1996) (Ex. 1007,
“Oncore”). The parties do not dispute that Oncore is a prior art printed
publication under § 102(b). See Pet. 14 (citing Ex. 1011 ¶¶ 4–8 (Declaration
of Art Sepin)).
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ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Only those terms in controversy
need to be construed, and only to the extent necessary to resolve the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999).
In the Decision on Institution, certain terms in claim 3 of the ’035
patent were construed preliminarily as follows:
Claim Term Claim Construction
location data
data generated by the location-signal generating
device, which may include, but is not limited to,
GPS data such as latitude, longitude, height,
velocity, heading, and time
data selecting device device capable of selecting location data to include in the location signal
reorders the selected
location data
arranges the selected location data into the
desired order for transmission

Inst. Dec. 6–9. During trial, the parties did not dispute the above
construction of “location data,” nor was any conflicting evidence presented.
Thus, we maintain the same construction for this Decision, and we
incorporate our previous analysis set forth in the Decision on Institution.
See Inst. Dec. 6. The parties, however, raised certain issues relating to the
terms “data selecting device” and “reorders the selected location data,”
which are addressed below.
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1. Data Selecting Device
LunarEye argues that “data selecting device” must be further
construed to exclude any device that is located physically inside of a GPS
receiver. PO Resp. 20–24 (citing Ex. 2024 ¶ 15 (Declaration of Joseph C.
McAlexander III)). According to LunarEye, the specification of the ’035
patent distinguishes between the claimed data selecting device and a GPS
receiver, and a “Motorola® OncoreTM GPS receiver” in particular.5 Id.
LunarEye asserts this is an “implicit specification disclaimer” that precludes
any construction encompassing devices located within GPS receivers. Tr.
23:11–24:7. GH disagrees the specification compels such a limitation. Pet.
Reply 7–8; Tr. 15:10–14.
The record evidence does not support LunarEye’s “disclaimer”
argument. LunarEye relies on the specification’s descriptions of certain
embodiments. For example, Figure 2 of the ’035 patent is a block diagram
depicting certain features of an embodiment of the claimed invention,
including Global Positioning Satellite System Receiver 48 (“GPS Receiver
48”) and Controller 36. Ex. 1002, Fig. 2, 5:49–6:8. As an initial matter,
LunarEye does not identify anything in Figure 2 or its accompanying
description requiring that GPS Receiver 48 and Controller 36 be physically
distinct components. Even if there was such a requirement, however, “a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”
Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.

5 We note that claim 3 recites a “location-signal generating device,” which is
not limited necessarily to a GPS receiver, much less a particular brand or
model of GPS receiver.
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2004). LunarEye’s reliance on other figures and descriptions of
embodiments in the specification is unpersuasive for the same reason. See
PO Resp. 20 & n.36; see also Ex. 2024 ¶¶ 15, 18–19 (LunarEye’s proffered
expert relying on descriptions of embodiments for opinion that data selecting
device is external to GPS receiver). Merely describing a narrower
embodiment does not constitute even an “implicit specification disclaimer”
(Tr. 23:11–24:7), much less the clear disclaimer required to apply the
limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004).
In addition to its “disclaimer” argument, LunarEye also contends the
claim language itself indicates the GPS receiver (i.e., location-signal
generating device) and data selecting device are physically distinct
components. PO Resp. 22. According to LunarEye, claim 3 specifies that
the location-signal generating device “produce[s] a location signal including
location data” first, and the data selecting device must be outside of the
location-signal generating device because it operates on the output of the
location-signal generating device, i.e., after the location signal is produced.
Id. at 22–24; Tr. 36:6–22 (counsel for LunarEye citing as support Ex. 1002,
7:4–20, Figs. 2, 5, 9).
The claim language, however, does not support LunarEye’s position.
Claim 3 is an apparatus claim, not a method claim, and recites a series of
components with their functions rather than claiming steps of a process.
Moreover, claim 3 recites that the location-signal generating device is
configured to “produce a location signal including location data,” and that a
function of the data selecting device is “selecting less than all of the location
data to include in the location signal” (emphasis added). Thus, the claim
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does not, “as a matter of logic or grammar,” mandate that the data selecting
device act after the location-signal generating device produces the location
signal. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d
1323, 1342–43 (Fed. Cir. 2001). To the contrary, the claim language
indicates the data selecting device may participate during the production of
the location signal by the location-signal generating device, because the data
selecting device selects location data to include in “the” location signal (i.e.,
the same “location signal including location data” as that produced by the
location-signal generating device, from which it derives its antecedent
basis). See Pet. Reply 10–11. Thus, the claim language does not preclude
the data selecting device from being located within—or, indeed, being a part
of—the location-signal generating device. LunarEye does not identify any
disclosure in the specification indicating that it is important for the data
selecting device to act after the location-signal generating device produces
the location signal, or disclaiming any particular order in which those
components may operate. See Altiris, Inc. v. Symantec Corp., 318 F.3d
1363, 1371 (Fed. Cir. 2003).
LunarEye further argues, however, that the location signal recited
with respect to the data selecting device actually is not the same location
signal produced by the location-signal generating device, but rather a second
location signal required by the claim. PO Resp. 23–24; Tr. 25:3–11, 31:3–
33:9. LunarEye’s argument is not supported by the claim language. Claim 3
only recites one “location signal.” Nor does the specification support
LunarEye’s position. For example, LunarEye cites to Figure 5 of the ’035
patent and contends items 52 and 56 constitute the two location signals
allegedly required by the claim. Tr. 32:4–14. As LunarEye acknowledged
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at the oral hearing (id. at 32:16–22), however, the specification identifies
item 52 as “GPS data 52” (emphasis added), whereas item 56 is identified as
“data to transmit signal 56” (internal quotation marks omitted, emphasis
added). Ex. 1002, 6:61–7:3; see also id. at 8:18–24 (identifying GPS data
52 and data to transmit signal 56 in describing Figure 9 of the ’035 patent).6
Moreover, even if GPS data 52 also could be considered a location signal, it
would be improper to import a requirement of a second location signal into
the claim solely on the basis of embodiments depicted in the figures, without
a clear disclaimer of the claim’s broader scope. See Superguide, 358 F.3d at
875; In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Based on the complete record, the broadest reasonable interpretation
of the claim term “data selecting device” is “device capable of selecting
location data to include in the location signal.” Furthermore, the term does
not preclude the data selecting device from being located physically within
the location-signal generating device.
2. Reorders the Selected Location Data
LunarEye argues the preliminary construction set forth in the Decision
on Institution—“arranges the selected location data into the desired order for
transmission”—is incorrect because it does not require the selected location
data to be in a preexisting order. See PO Resp. at 28–32 (arguing the
asserted prior art references fail to teach the “reorders” limitation because

6 According to LunarEye, GH’s proffered expert, Dr. James M. Janky,
testified that item 52 in the ’035 patent constitutes a “location signal” (i.e.,
the alleged second location signal). Tr. 33:7–16 (citing Ex. 2023, 59:8–12).
It is apparent from Dr. Janky’s deposition transcript, however, that the cited
testimony was intended to address aspects of the prior art Oncore device, not
claim 3 of the ’035 patent. See Ex. 2023, 59:8–60:13 (referencing “the
block diagram of Oncore”).
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they do not disclose a preexisting order); Tr. 24:8–19 (asserting that “reorder
implies an initial order”). According to LunarEye, “the ‘reordering’ in claim
3 requires ordered location data in a location signal before it is processed by
the data selecting device.” PO Resp. 29.
GH contends the preliminary construction is correct, and that the term
“reorders the selected location data” does not require the data to be in an
initial order before reordering. Pet. Reply 8–9. With respect to LunarEye’s
position, GH asserts that it “wrongly presumes that the data selecting device
must act upon a location signal.” Id. at 9.
Although the parties did not address specifically the construction of
“reorders the selected location data” in either the Petition or the Preliminary
Response, we construed the term due to its significance in the analysis of
GH’s asserted grounds of unpatentability. Inst. Dec. 9. Specifically, we
construed the term preliminarily in the Decision on Institution as “arranges
the selected location data into the desired order for transmission.” Id. This
construction was based on the ’035 patent specification, which describes the
reordering function:
An example of the data selector function is illustrated in FIGS.
6 and 7. The Motorola® GT Plus OncoreTM GPS family of
chips produces an digital output signal 86 containing bits
representing the latitude, longitude, height, velocity, and
heading of the apparatus 12 and the current time, as shown in
FIG. 6. . . . Preferably, only the bits representing latitude,
longitude, velocity and heading 88 are included in the data to
transmit signal 56, as shown in FIG. 7. . . . Further, it may be
desirable to change the order that the various portions of the
information are transmitted. For example, it may be desirable
to send the heading portion first. The data selector selects the
data to be transmitted and arranges it into the desired order.
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Ex. 1002, 7:4–20 (emphasis added). We concluded, “the specification
explains that reordering the selected location data encompasses arranging the
data received from the location-signal generating device (e.g., a GPS device)
into the order desired for transmission.” Inst. Dec. 9.
The ordinary meaning of the term “reorders”—as contrasted with
“orders”—indicates a change in order. The specification supports this
understanding of the term, stating that “it may be desirable to change the
order that the various portions of the information are transmitted.” Ex.
1002, 7:15–17 (emphasis added). Therefore, based on the parties’
arguments and evidence developed since the Decision on Institution, we now
determine the broadest reasonable interpretation of “reorders the selected
location data” is “changes the order of the selected location data into the
desired order for transmission.”7
B. Alleged Unpatentability Under § 103
GH contends claim 3 of the ’035 patent is obvious in light of the
teachings of Mohan and Oncore. Pet. 21–38. Based on the complete record,
GH has shown by a preponderance of the evidence that claim 3 is
unpatentable for the reasons explained below.
1. Mohan
Mohan discloses a tracking system using a miniaturized geographic
position determination and communications module. Ex. 1006, Abstract.
The tracking system includes “GPS receiver 520,” which produces a signal

7 On this record, it is unnecessary to resolve whether this claim term requires
in every instance that the selected location data be placed first in an initial
order before being reordered into a different order, because the asserted prior
art teaches changing the order from an initial order to a different order, as
explained below.
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comprising “[g]eographic position data such as latitude, longitude and
altitude.” Id. at 3:5–15, Fig. 1. This geographic position data is then
transmitted over a network via “communications transmitter/receiver 540.”
Id. Additionally, Mohan teaches that position information may be
transmitted in response to activation of a panic function or a request from a
remote location. Id. at 2:15–19. The system of Mohan also includes a
power management subsystem:
Upon activation, the system enters a full power mode state as
shown at node 206, then enters an “acquire GPS position” state
as shown at node 202. When a positioning signal is received,
as indicated by symbol 203, the system remains in this state, as
indicated by loop line 205, until a geographic fix has been
determined. At this point, the system enters a ready state and a
communications link is opened, as shown at node 208. The
system remains in this state until a link has been established, at
which point a ready condition is entered, and identification and
position information are transmitted according to node 210, as
shown by symbol 211.
Id. at 5:10–20 (emphases added); see id. at Fig. 3. After the system reports
the position information, the communications link is closed and the system
enters a “low-power mode.” Id. at 5:44–48. Mohan’s claims recite “a
controller operative to . . . cause the global positioning satellite receiver to
receive and decode a signal . . . containing information relating to the
geographic position of the module, cause the communications transceiver to
communicate the information to a remote location, and disable the global
positioning satellite receiver and communications transceiver when not in
use.” Id. at 7:29–39.
2. Oncore
The Oncore reference is a user’s guide to Motorola’s Oncore GPS
receiver products. Ex. 1007, 1.1. Oncore discloses that GPS signals from
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GPS satellites are routed to a “position processor (microprocessor [MPU])
section.” Id. at 3.2. The MPU decodes and processes satellite data and
measurements used to compute position and velocity. Id. According to
Oncore, the Motorola GPS receiver transmits autonomous position, velocity,
heading, satellite tracking status, and time information in “three different,
user selectable I/O protocols.” Id. at 1.1; see id. at 5.1–5.2.
Oncore provides further information regarding each available I/O
protocol. One of them is the “NMEA-0183 standard format,” which
includes several “NMEA output messages.” Id. at 5.7. A user can enable or
disable each output message independently. Id. Thus, more than one output
message can be enabled and transmitted. See also id. at 5.8 (discussing “the
case where more than one output message is scheduled during the same one
second interval”). One such message is the “GPGGA” message, which
includes certain data fields in the following order: UTC of position fix (i.e.,
time), latitude, longitude, GPS quality indicator, number of satellites being
used, HDOP, antenna height, geoidal separation, age of differential data, and
differential reference station ID. Id. at 6.149. Another such message is the
“GPGLL” message, which includes only latitude, longitude, and UTC of
position fix (i.e., time), in that order. Id. at 6.153. The GPGLL message
does not include several of the data fields included in the GPGGA message,
such as antenna height, and includes time in a different order relative to
latitude and longitude. Compare id. at 6.153, with id. at 6.149.
3. Analysis of the Teachings of Mohan and Oncore
GH contends Mohan teaches each of the limitations of claim 3, except
those relating to the data selecting device. Pet. 21–30. In particular, GH
identifies Mohan’s disclosures regarding its GPS receiver as teaching the
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claimed location-signal generating device and its related limitations. Id. at
25–26 (citing Ex. 1006, 2:7–12, 3:5–15, Fig. 1). According to GH, the
communications transmitter/receiver of Mohan teaches the claimed
telemetry transmitter, and the disclosed power management system teaches
the claimed enable controller and its related limitations. Id. at 26–30 (citing
Ex. 1006, 3:2–15, 4:43–5:49, Figs. 1, 3). LunarEye does not dispute that
Mohan teaches these aspects of claim 3 of the ’035 patent. The record
supports GH’s contentions regarding Mohan.
With respect to the data selecting device and related limitations of
claim 3, GH relies on the teachings of Oncore. Pet. 30–35. Considering the
evidence and arguments presented by both parties, we conclude GH has
shown sufficiently that Oncore’s teachings would have led a person of
ordinary skill to a device, like the Oncore MPU, capable of selecting a
subset of GPS location data to include in an output signal in the form of an
NMEA output message—for example, including latitude, longitude, and
time for a “GPGLL” message, but not antenna height or other fields used in
a “GPGGA” message. Id. at 30–34; see Ex. 1010 ¶¶ 89–101; Ex. 1007, 5.7–
5.8, 6.149, 6.153. Furthermore, we conclude the record as a whole indicates
a person of ordinary skill would have found it obvious in light of Oncore to
change the order of the data fields for one NMEA message to construct a
different NMEA message—for example, changing the order of time, then
latitude, then latitude, such as in a GPGGA message, to the different order of
latitude, then longitude, then time, such as in a GPGLL message. Pet. 34–
35; Ex. 1010 ¶¶ 102–108; Ex. 1007, 5.7–5.8, 6.149, 6.153. Thus, GH has
shown sufficiently that Oncore teaches the data selecting device and related
limitations of claim 3 of the ’035 patent.
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LunarEye disputes GH’s contentions regarding Oncore, but its
arguments are unpersuasive. First, LunarEye argues Oncore discloses only a
GPS receiver—i.e., a location-signal generating device—and, thus, a person
of ordinary skill would not consider its teachings applicable to the recited
data selecting device, which LunarEye contends must be a physically
separate device. PO Resp. 19–22. As discussed earlier, however, the
premise of LunarEye’s argument—that a data selecting device must be
physically distinct from the location-signal generating device—is not
commensurate with the full scope of the claim. Claim 3 includes no such
limitation when given its broadest reasonable interpretation.
Similarly, LunarEye’s assertion that the Oncore GPS receiver cannot
be the recited data selecting device, because it does not receive or further
process its own output signal, also is unpersuasive. See id. at 22–25. As
discussed earlier with respect to claim construction, LunarEye is incorrect
that claim 3 requires the location-signal generating device to first produce a
location signal that is received only afterward by the data selecting device to
be processed for a second location signal. Rather, claim 3 only requires that
the data selecting device process “location data,” which is then included in
the location signal produced by the location-signal generating device. As
GH has demonstrated, the MPU of the Oncore device is described as
receiving and processing location data, the result of which ultimately is
transmitted as the output of the GPS receiver. Pet. 30–35; see Ex. 1007, 1.1,
3.2, 5.1–5.2.
Lastly, LunarEye contends the alleged data selecting device in Oncore
identified by GH does not reorder selected location data as required by claim
3. PO Resp. 26–30. According to LunarEye, Oncore does not disclose any
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initial order of the location data received by the GPS receiver. Id.; Tr.
50:23–53:2. LunarEye argues that when Oncore discusses generating
multiple different NMEA messages, each message is constructed separately
from the original, unordered data; thus, the data is ordered for each output
message in the first instance, rather than reordered. PO Resp. 28–29; Tr.
53:3–18. In an obviousness analysis, however, we consider not only the
express disclosures of the asserted prior art references, but also the
“inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the
record indicates that a person of ordinary skill would have had at least a
bachelor’s degree in electrical or computer engineering and familiarity with
GPS and communications technology, such as that gained from five years of
professional experience in the design and implementation of GPS
technology. See Ex. 1010 ¶¶ 38–41 (Dr. Janky’s testimony on level of
ordinary skill); Ex. 2024 ¶¶ 8–9 (LunarEye’s proffered expert, Joseph
McAlexander, adopting Dr. Janky’s testimony regarding level of ordinary
skill). Considering the level of ordinary skill and the evidence of record, we
find that Oncore would have taught or suggested to an ordinary artisan a
device that changes the order of selected location data from one order (e.g.,
an NMEA message) to another order (e.g., a different NMEA message).
In conclusion, considering all of the parties’ arguments and the full
record, GH has shown sufficiently that the combination of Mohan and
Oncore teaches or suggests each limitation of claim 3 of the ’035 patent.
4. Reason to Combine
GH asserts that a person of ordinary skill would have been motivated
to combine Mohan and Oncore because both disclose and relate to GPS
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receiver technology. Pet. 35–37. In addition to the prior art references, GH
also relies on the testimony of Dr. Janky, who stated that “[i]t would have
been readily apparent and straightforward for one of ordinary skill in the art
to combine” Mohan and Oncore. Ex. 1010 ¶ 109. He further testified that
the “simple” substitution of the Oncore GPS device for the GPS device in
Mohan would achieve predictable results, such as a GPS system with a GPS
receiver capable of using industry standard data output formats as well as
various other benefits of the Oncore GPS receiver outlined in the Oncore
reference. Id. ¶¶ 110–113 (citing Ex. 1007, 1.1). We have considered Dr.
Janky’s testimony, including his underlying analysis and reasoning, and find
it credible. Based on all of the evidence presented, including Dr. Janky’s
testimony, we conclude GH has articulated sufficient reasoning with rational
underpinning to support the conclusion that a person of ordinary skill would
have had reason to combine the teachings of Mohan and Oncore. See KSR,
550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
LunarEye argues that Mohan and Oncore teach away from the
combination advanced by GH. PO Resp. 32–45. Specifically, LunarEye
contends Mohan states that a device constructed according to its teachings
should conform to certain size constraints to achieve adequate
miniaturization. Id. at 35–40. The GPS device described in Oncore are too
large and are, thus, incompatible with Mohan, according to LunarEye. Id.
This argument is unpersuasive, however, because claim 3 of the ’035 patent
does not require miniaturization, nor does it include any limitations
restricting the size of the claimed apparatus or any recited component
device. LunarEye does not identify any portion of Mohan that criticizes,
discredits, or otherwise discourages the combination of Mohan and Oncore
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to produce the solution recited in claim 3. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS
device does not teach away from non-miniaturized devices. See id.; In re
Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, whether the GPS receiver
described in Oncore is too large to be incorporated physically into the GPS
device described in Mohan is inapposite, because claim 3 does not recite any
limitations on size.
The next teaching away argument presented by LunarEye—that
Oncore also teaches away from the asserted combination—fails for similar
reasons. LunarEye asserts that Oncore teaches GPS receivers with antennae
that are too large and consume too much power for the GPS devices
disclosed in Mohan. PO Resp. 42–45. Claim 3, however, does not include
any limitations on antenna size, nor does it include any limitations reciting
particular levels of antenna power consumption.8
LunarEye also argues Oncore teaches away from the invention of
claim 3 because Oncore teaches the use of NMEA messages compliant with
the NMEA standard. Id. at 40–42. According to LunarEye, the NMEA
standard is incompatible with the invention of the ’035 patent because “the

8 To be sure, the ’035 patent discusses the importance of managing power
consumption, but the specification describes the use of a controller to
manage power, not limiting the claimed invention to using only antennae
with particular power consumption restrictions. See, e.g., Ex. 1002, 6:23–
40. Consistent with the specification, claim 3 recites an enable controller
that disables certain components after use but does not recite any limitations
on antenna or transmitter power consumption.
IPR2014-00712
Patent 6,484,035 B2
19
teachings of the ’035 patent are directed to non-standard, proprietary data
communications.” Id. at 41. LunarEye’s argument is unpersuasive,
however, because claim 3 does not recite any requirement of “non-standard,
proprietary data communications.” LunarEye does not identify any support
for such a narrow reading of the claim, and LunarEye fails to explain
persuasively why such a requirement should be read into the claims.
CONCLUSION
Based on the evidence and arguments, GH has demonstrated by a
preponderance of the evidence that claim 3 of the ’035 patent is obvious in
light of Mohan and Oncore.
MOTION TO SEAL
GH moves to seal Exhibit 1017. Mot. Seal. 2. As this is the Final
Written Decision, we consider GH’s Motion to Seal as a motion to expunge
Exhibit 1017 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1017
was not relied on for this Decision. Consequently, GH’s motion is granted,
and Exhibit 1017 will be expunged.
ORDER
Accordingly, it is:
ORDERED that claim 3 of U.S. Patent No. 6,484,035 B2 is held
unpatentable under 35 U.S.C. § 103; and
FURTHER ORDERED that Exhibit 1017 is expunged from the
record.
This is a final written decision. Parties to the proceeding seeking
judicial review of this Decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.
IPR2014-00712
Patent 6,484,035 B2
20
PETITIONER:
Rodney B. Carroll
Ryan D. Jenlink
J. Robert Brown, Jr.
Jerry C. Harris, Jr.
CONLEY ROSE, P.C.
rcarroll@dfw.conleyrose.com
rjenlink@dfw.conleyrose.com
rbrown@dfw.conleyrose.com
jcharris@dfw.conleyrose.com

PATENT OWNER:
Matthew S. Compton, Jr.
Stephen W. Abbott
Christopher M. Faucett
PREBEG, FAUCETT & ABBOTT PLLC
mcompton@pfalawfirm.com
sabbott@pfalawfirm.com
cfaucett@pfalawfirm.com