Wavemarket, Inc., d/b/a LOCATION LABSv.LocatioNet Systems, Ltd.

Patent Trial and Appeal Board

Jul 29, 2015

09677827 (P.T.A.B. Jul. 29, 2015)

Trials@uspto.gov Paper 58
571-272-7822 Entered: July 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WAVEMARKET INC. d/b/a LOCATION LABS,
Petitioner,

v.

LOCATIONET SYSTEMS LTD.,
Patent Owner.
____________

Case IPR2014-00199
Patent 6,771,970 B1

Before KRISTEN L. DROESCH, GLENN J. PERRY, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)
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Patent 6,771,970 B1

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I. INTRODUCTION
A. Background
In a May 9, 2014 Decision (Paper 18, “Dec.”), we instituted inter
partes review of claim 18 of U.S. Patent No. 6,771,970 B1 (“the ’970
Patent”).
Following institution, LocatioNet Systems Ltd. (“Patent Owner”) filed
a Response (Paper 35, “PO Resp.”) and Wavemarket, Inc. d/b/a Location
Labs (“Petitioner”) filed a Reply (Paper 39, “Pet. Reply”). Petitioner relies
upon the Declaration of Craig Rosenberg Ph.D. (Ex. 1020) in support of its
Reply.
Patent Owner filed a Motion to Exclude certain of Petitioner’s
evidence. Paper 43 (“PO Mot. Excl.”). Petitioner filed an Opposition
(Paper 48, “Pet. Opp.”), and Patent Owner filed a Reply (Paper 51, “PO
Reply Opp.”).
We heard oral argument on February 10, 2015. Paper 55 (“Tr.”).
Patent Owner filed a Request for Rehearing (Paper 57, “Req. Reh’g”)
of our Final Written Decision (Paper 56, “Final Dec.”) of May 7, 2015 in
which claim 18 of the ’970 Patent was determined to be unpatentable.
II. STANDARD OF REVIEW
In its request for rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
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III. DISCUSSION
Patent Owner argues the Board misapprehended or overlooked the
intrinsic evidence supporting the proper claim construction for the terms
“map database,” and “map engine for manipulating said map database.”
Req. Reh’g. 1. Patent Owner also argues the Board misapprehended or
overlooked the evidentiary standard for admissible expert testimony. Id.
Intrinsic Evidence for Claim Construction
Patent Owner argues the Board, in rendering the Final Written
Decision, misapprehended or overlooked intrinsic evidence against our
construction of “map database,” and “map engine for manipulating said map
database,” that is overly broad and unreasonable. Req. Reh’g 2–8.
Specifically, Patent Owner argues that we misapprehended or overlooked
the ’970 Patent’s disclosure of numerous functions performed using the
claimed “map database,” including the following:
supplying “street names derived from map databases” (Ex.
1001 at 5:45-50), “correlating between maps stored in the
database (5)” (id. at 4:15-20), “the step of correlating the
location of each remote platform with a map database” (id. at
3:21-25), “access said map database for correlating map to said
location information, so as to obtain correlated location
information” (id. at 9:1-3).
Req. Reh’g 3 (citing PO Resp.10–11; PO Mot. for Observations 11–13;
Tr.14, ll. 8–24, 19, ll. 14–19).
We are not persuaded by Patent Owner’s argument that our claim
construction is unreasonably broad due to a failure to construe “map
database” and “map engine for manipulating said map database,” in
accordance with the alleged disclosures of the ’970 Patent. It is well-settled
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that it is improper to import limitations from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The ’970 Patent does not disclose, explicitly or implicitly, that the
map database performs the functions of deriving street names, and
correlating between maps and location and/or positioning information. In
contrast to Patent Owner’s arguments, the ’970 Patent discloses “[i]t may be
linked to an SMS (simple messaging service) server (140) and supply
locations as coordinates, street names derived from map databases or other
location data available to mobile telephones (141), pagers (142), etc.”
Ex. 1001, col. 5, ll. 45–53. The pronoun “it” refers to the subject of the
preceding sentence––location determination system 1. Id. at col. 5, ll. 43–
45. The ’970 Patent also discloses the following: (1) “map server (4) is
capable of correlating between maps stored in the database (5) and
positioning information,” (id. at col. 4, ll. 17–20 (emphasis added)); and (2)
“the at least one mobile platform location system being adapted to receive
said mobile platform location information and access said map database for
correlating map to said location information, so as to obtain correlated
location information,” (id. at col. 8, l. 66–col. 9, l. 3 (emphasis added)). In
other words, the map server (4) and at least one mobile platform location
system are the subjects of the aforementioned sentences that perform the
correlating between maps and positioning and/or location information.
Lastly, the ’970 Patent discloses “[s]tep (e) may further comprise the step of
correlating the location of each remote platform with a map database and
transmitting a map having marked said remote platform location(s) to said
subscriber.” Id. at col. 3, ll. 21–24. This sentence is written in passive
voice; it does not include a subject.
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Patent Owner also argues that we misapprehended or overlooked the
described functionality of the “map engine” in the ’643 Application. Req.
Reh’g 5. Specifically, Patent Owner contends the ’643 Application
“explains that the ‘integrated map engine’ operating on the Company Device
(41) is not only used to extract a map from the map database, but is also used
to correlate the location data with the desired map stored in the map
database.” Id.; see id. at 6. Patent Owner asserts the ’643 Application
discloses the following: (1) “Each of the specified Company Devices ((41)
to (44)) is associated with a map database (not shown) and a known per se
map engine for accessing the map database and is capable of correlating
between maps and the positioning information received from the vehicle’s
tracking unit” (id. at 5–6 (quoting Ex. 1002, 4, ll. 1–4)); and (2) “The latter
[i.e., Company Device (41)] correlates the so received location data with
the desired map (as defined in input (63)) as extracted from the map
database using its integrated map engine” (id. at 6 (quoting Ex. 1002, 5, ll.
4–7)). Patent Owner concludes “[i]t is clear that the verb of the sentence
(i.e., correlates) is performed by the Company Device (41) using its
[Company Device (41)’s] integrated map engine.” Id. Patent Owner further
contends the ’970 Patent and the language of claim 18 is consistent with the
alleged disclosure of the ’643 Application. Id. at 6–8 (quoting Ex. 1001, col.
4, ll. 15–20, col. 8, ll. 59–61).
Similar to our discussion above addressing “map database”, we are
not persuaded by Patent Owner’s arguments because the ’643 Application,
and ’970 Patent do not disclose, explicitly or implicitly, that the map engine
performs the function of correlating the location data with map(s). Contrary
to Patent Owner’s arguments, the ’643 Application discloses Company
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Device 41 as having an integrated map engine that performs the extraction
of the desired map from the database, but discloses that Company Device 41
performs the correlation of the location data with the desired map. Ex. 1002,
4, ll. 1–5, 5, ll. 2–7. We also are not persuaded that the ’970 Patent is
consistent with the alleged disclosure of the ’643 Application because, as
explained above, the ’970 Patent discloses the map server (4) and at least
one mobile platform location system perform the correlating between maps
and positioning and/or location information. Ex. 1001 col. 4, ll. 17–20, col.
8, l. 66–col. 9, l. 3.
For the foregoing reasons, we are not persuaded that we
misapprehended or overlooked the intrinsic evidence in applying the
broadest reasonable construction to “map database,” and “map engine for
manipulating said map database.”
Admissibility of Expert Testimony
Patent Owner argues we misapprehended or overlooked Sundance,
Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008), and
Morpho Detection, Inc. v. Smiths Detection, Inc., No. 211cv498, 2012 WL
6004085 at *1–2 (E.D. Va. Nov. 30, 2012) cited by Patent Owner to support
its argument that Dr. Rosenberg’s testimony should be excluded as not
admissible. Req. Reh’g 8–9 (citing PO Mot. to Exclude 2–5; PO Reply
Opp. 1–2; Tr. 29, l. 3–30, l. 14). In the Final Written Decision, we
determined Dr. Rosenberg was qualified as an expert based at least on Dr.
Rosenberg’s experience, in particular, over four years of experience as
founder and CEO of WhereWuz, a technology company focusing on
location tracking applications for GPS enabled smartphones. Final Dec. 20.
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Patent Owner asserts, under the Federal Rules of Evidence and Federal
Circuit case law, a declarant who is not qualified as a person of ordinary
skill in the art cannot testify as to issues of invalidity, the substance and
disclosure of the prior art, or how a person of ordinary skill in the art would
understand the prior art. Req. Reh’g 8; see id. at 9–11.
We considered and found unpersuasive Patent Owner’s substantially
similar arguments in Patent Owner’s Motion to Exclude Evidence, and
Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO
Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an
opportunity to reiterate arguments that were addressed in our Final Written
Decision, and merely express disagreement.
As explained in the Final Written Decision, Patent Owner does not
direct us to binding authority sufficient to support its argument that in order
for expert testimony to be admissible, the expert must be a person of
ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding
authority; however, Sundance does not support fully Patent Owner’s
arguments. The court in Sundance held, in the context of the admissibility
of a testimony by a technically unqualified patent attorney, “it was an abuse
of discretion to permit a witness to testify as an expert on the issues of
noninfringement or invalidity unless that witness is qualified as an expert in
the pertinent art.” Sundance, 550 F.3d at 1363.
We also are not persuaded by Patent Owner’s argument that SEB S.A.
v. Montgomery Ward & Co., 594 F.3d 1360(Fed. Cir. 2010)) is inapposite
because the testimony offered in SEB did not relate to any issue of invalidity
or the prior art. Req. Reh’g 9 (citing Final Dec. 19). Patent Owner does not
explain adequately why the admissibility of testimony related to
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infringement (see SEB, 594 F.3d at 1373) is distinct from the admissibility
of testimony related to invalidity or the prior art. See Req. Reh’g. 9.
Similarly, we are not persuaded that Mytee Prods., Inc. v. Harris Research,
Inc., 439 F. App’x 882, 887 (Fed. Cir. 2011)(non-precedential) also is not
pertinent because the proffered level of ordinary skill in the art in Mytee is
that of an ordinary layman with average intelligence. Id. Patent Owner does
not explain sufficiently why Mytee is inapplicable based on the proffered
level of ordinary skill in the art. See id.
For all of the foregoing reasons, we are not persuaded that we
misapprehended or overlooked the Federal Rules of Evidence and Federal
Circuit case law regarding the admissibility of expert testimony.
IV. DECISION ON REHEARING
Petitioner’s request for rehearing is denied.
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PETITIONER:
Mark L. Hogge
Scott W. Cummings
DENTONS US LLP
mark.hogge@dentons.com
scott.cummings@dentons.com

PATENT OWNER:
Thomas Engellenner
Reza Mollaaghababa
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com