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

Patent Trial and Appeal Board

May 7, 2015

09677827 (P.T.A.B. May. 7, 2015)

Trials@uspto.gov Paper 56
571-272-7822 Entered: May 7, 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.

FINAL WRITTEN DECISION
35 U.S.C. 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Background
Wavemarket, Inc. d/b/a Location Labs (“Petitioner”) filed a Petition1
(Paper 6, “Pet.”) to institute an inter partes review of claims 1–19 of U.S.
Patent No. 6,771,970 B1 (“the ’970 Patent”). LocatioNet Systems Ltd.
(“Patent Owner”) timely filed a Preliminary Response. Paper 12. In a May
9, 2014 Decision (Paper 18, “Dec.”), we instituted review of claim 18.
Following institution, Patent Owner filed a Response (Paper 35, “PO
Resp.”) and Petitioner filed a Reply (Paper 39, “Pet. Reply”). Patent Owner
relies upon the Declaration of Narayan Mandayam Ph.D. (Ex. 2016, “Dr.
Mandayam’s Declaration”) in support of its Response.
Petitioner relies upon the Declaration of Scott Hotes Ph.D. (Ex. 1013)
in support of its Petition and the Declaration of Craig Rosenberg Ph.D. (Ex.
1020, “Dr. Rosenberg’s Declaration”) 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.”). Patent Owner also filed a Motion for Observations on the
Cross Examination of Craig Rosenberg Ph.D. (Paper 44, “PO Mot. Obs.”)
and Petitioner filed a Response to Patent Owner’s Observations (Paper 49,
“Pet. Resp. Obs.”).

1 Throughout this Decision, we refer to the corrected Petition (Paper 6) filed
on December 13, 2013.
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Petitioner filed a Motion to Exclude certain of Patent Owner’s
evidence. Paper 42. Patent Owner filed an Opposition (Paper 47), and
Petitioner filed a Reply (Paper 50).
We heard oral argument on February 10, 2015. Paper 55 (“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. For
the reasons that follow, Petitioner has shown by a preponderance of the
evidence that claim 18 is unpatentable.
B. Related Proceedings
Petitioner indicates the ’970 Patent is at issue in the following actions
(Pet. 2):
(1) CallWave Communications, LLC v. AT&T Mobility, LLC, No.
1:12-cv-01701-RGA (D. Del.);
(2) CallWave Communications, LLC v. Sprint Nextel Corp, No. 1:12-
cv-01702-RGA (D. Del.);
(3) CallWave Communications, LLC v. T-Mobile USA Inc, No.1: 12-
cv-01703-RGA (D. Del.);
(4) CallWave Communications, LLC v. Verizon Communications Inc.,
No. 1:12-cv-01704 (D. Del.); and
(5) CallWave Communications, LLC v. AT&T Mobility LLC, No. 1:12-
cv-01788 (D. Del.).

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C. The ’970 Patent
The ’970 Patent relates to a system and method for location tracking
of mobile platforms. Ex. 1001, Abs., col. 2, ll. 2–28, col. 3, ll. 4–24.
Figure 1 of the ’970 Patent, reproduced below, schematically depicts a
location tracking system. Id. at col. 3, ll. 31–32.

Figure 1 illustrates mobile platforms 21, 22, 23, and 24, and location
tracking systems 11, 12, 13, and 14 that communicate with communication
subsystem 3 of location determination system 1. Ex. 1001, col. 3, l. 44–col.
4, l. 11. Location determination system 1 is linked to database 2 and map
server 4 that accesses map database 5. Id. at col. 4, ll. 12–22. Location
determination system 1 hosts website 50 on Internet 30. Id. at col. 4, ll. 23–
28. A subscriber to location determination system 1, and equipped with
computer 60 running an internet browser, logs on to website 50 and selects a
mobile platform from among mobile platforms 21–24 for which the location
is sought. Id. at col. 4, ll. 29–39. The request is passed from web site 50 to
location determination system 1, which passes the request to communication
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subsystem 3. Id. at col. 4, ll. 12–15, 39–45. Communication subsystem 3
formats the request for transmission to a location tracking system 11–14, and
transmits the request. Id. at col. 4, ll. 6–11, 46–48, col. 5, l. 51–col. 6, l. 2.
Location tracking system 11–14 receives the request, determines the location
of the requested mobile platform, and transmits the location information
back to communication subsystem 3. Id. at col. 4, ll. 48–52, col. 6, ll. 2–11.
Communication subsystem 3 associates the location information with the
request and passes it to location determination system 1, which passes the
location of the requested mobile platform 21–24 to map server 4. Id. at col.
4, ll. 52–56. Map server 4, using a map engine, obtains a map of the area in
which the requested mobile platform 21–24 is located, marks the position of
the mobile platform on the map, and passes it to location determination
system 1. Id. at col. 4, ll. 56–59. The map then is passed to the web browser
running on subscriber’s computer 60. Id. at col. 4, ll. 60–61, col. 5, ll. 19–
24.
D. Claim 18
Claim 18 is reproduced below (disputed limitations italicized):
18. A system for location tracking of mobile platforms,
each of which is equipped each with a tracking unit, each being
adapted to determine the location of a respective mobile
platform according to a property that is predetermined for each
mobile platform; the system comprising:
(a) a location server communicating through a user
interface with at least one subscriber equipped with a browser;
said communication having inputs that include at least the
subscriber identity, the mobile platform identity and map
information;
(b) at least one mobile platform location system coupled
to said location server for receiving the mobile platform identity
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and map information that pertain to mobile platforms associated
with the respective mobile platform location system; each one
of said mobile platform location systems being associated with
a map database and map engine for manipulating said map
database;
(c) at least one remote tracking service communicating
with said respective mobile platform location system for
receiving mobile platform identity and returning mobile
platform location information;
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;
said location server being adapted to receive the
correlated location information and forward them to said
browser.
II. ANALYSIS
A. Claim Construction
We interpret claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012). “[C]laim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quotations and citation omitted). “[T]he specification ‘is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (en banc) (quoting Vitrionics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Extrinsic evidence, such as
dictionaries and expert testimony, may be useful, but it is unlikely to result
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in a reliable interpretation of patent claim scope unless considered in the
context of the intrinsic evidence. Id. at 1319.
For the purpose of our Decision instituting inter partes review we did
not construe expressly any of the claim terms and phrases recited in claim
18. See Dec. 6–7. In its Response, Patent Owner presents explicit
constructions for “map database” and “map engine for manipulating said
map database,” recited in claim 18. PO Resp. 10–11, 13.
Map Database
Patent Owner asserts, with supporting expert testimony, “the ordinary
and customary meaning of map ‘database’ as understood by a person of
ordinary skill in the art as well as a layperson is a collection of map data that
is organized so that it can easily be accessed, searched, managed, and
updated.” PO Resp. 10–11 (citing Ex. 2016 ¶ 28; Ex. 2017, 61; Ex. 2018,
126). Patent Owner relies on the testimony of Dr. Narayan Mandayam,
which provides two dictionary definitions to support the opinion regarding
the ordinary and customary meaning of map database. Ex. 2016 ¶ 28 (citing
Ex. 2017, 61; Ex. 2018, 126). The provided dictionaries define “database”
as follows: (1) “[a]n organized collection of information that can be
searched, retrieved, changed, and sorted using a collection of programs
known as a database management system” (Ex. 2017, 61); and (2) “[a]
collection of information organized in such a way that a computer program
can quickly select desired pieces of data” (Ex. 2018, 126).
Turning to the intrinsic evidence, the ’970 Patent Specification utilizes
the term “map database” in the following contexts: (a) “maps stored in the
database (5),” (b) “a map from said at least one map database,” (c) “[t]he
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map database may include maps formatted as at least one of the following:
Raster Map in various scales, vector maps and air photo,” (d) “[a] map
database (5) in formats such as Raster, Vector, Topographic or aerial
photographs;” and (e) “accessing a map database (5).” Ex. 1001, col. 2, ll.
32, 46–48, col. 4, ll. 15–17, col. 5, ll. 3–6.
We are not persuaded by Patent Owner’s argument that its proposed
construction of “map database” is consistent with the ’970 Patent
Specification. PO Resp. 11 (citing Ex. 1001, col. 2, ll. 46–48, col. 4, ll. 15–
22, col. 5, ll. 45–50). Patent Owner’s proposed construction is narrower
than the ’970 Patent’s broad disclosure of a map database as collection of
maps that can be accessed. In addition, Dr. Mandayam’s opinion is not
supported fully by the provided dictionary definitions for database. See 37
C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying
facts or data on which the opinion is based is entitled to little or no
weight.”).
We give more weight to the intrinsic evidence than we give to Patent
Owner’s extrinsic evidence, as the ’970 Patent Specification serves as the
best guide regarding the construction of “map database.” Accordingly, the
broadest reasonable construction in light of the ’970 Patent Specification for
“map database” is an organized collection of map data that can be accessed.
Map Engine for Manipulating Said Map Database
Patent Owner contends, with supporting expert testimony, “the
ordinary and customary meaning of the term map database ‘engine’ as
understood by a person of ordinary skill in the art and a layperson is a
program or module for accessing, searching, managing, and updating the
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map database.” PO Resp. 13–14 (citing Ex. 2016 ¶ 32; Ex. 2019, 208). For
clarification, claim 18 recites “map engine for manipulating said map
database” Ex. 1001, col. 8, l.61, not “map database engine,” as asserted by
Patent Owner. In other words, Patent Owner contends a “map engine”
should be construed as a program or module, and the phrase “for
manipulating said map database” should be construed as “for accessing,
searching, managing, and updating the map database.” Id. Patent Owner’s
expert Dr. Narayan Mandayam provides a dictionary definition to support
the opinion regarding the ordinary and customary meaning of map engine.
Ex. 2016 ¶ 32 (citing Ex. 2019, 208). The provided dictionary defines
“engine” as “[t]he portion of the program that determines how the program
manages and manipulates data. Another name for processor.” Ex. 2019,
208.
Petitioner counters Patent Owner’s proposed construction and points
out that the ’970 Patent Specification recites the term “map engine” in two
instances, and does not include the term “manipulating.” Pet. Reply 9
(citing Ex. 1001 col. 4, ll. 5–17, 55–58); see Ex. 1001. The ’970 Patent
Specification discloses the interaction of the map engine and map database
in the following contexts: (1) “a map server (4) operating a map engine for
accessing a map database (5),” and (2) “the map server (4) which obtains
a map of the area in which the vehicle (22) is located using the map
engine.” Ex. 1001, col. 4, ll. 15–17, 55–59 (emphases added). Petitioner
argues that based on the ’970 Patent Specification disclosure, “it must be
presumed that accessing and/or obtaining a map from a map database reads
on the claimed ‘manipulating’ of the map database.” Pet. Reply 9.
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The ’970 Patent relies on Provisional Patent Application 60/157,643
(Ex. 1002, “’643 Application”) to establish domestic priority. The ’643
Application includes language nearly identical to the language recited in
claim 18 (compare Ex. 1001, claim 18, with Ex. 1002, 2, claim 1), and
provides additional illumination regarding the disclosed interaction of the
map engine and map database. Specifically, the ’643 Application discloses
the interaction of the map engine and map database in the following
contexts: (1) “[e]ach of the specified Company Devices ((41) to (44))[(i.e.,
mobile platform location systems)] is associated with a map database (not
shown) and a known per se map engine for accessing the map
database . . . ;” and (2) “[t]he latter [(i.e., unit 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.” Ex. 1002, 4, ll.
1–3, 5, ll. 4–6 (emphases added). The disclosure in the ’643 Application of
the map engine accessing the map database, and extracting a map from the
map database, is consistent with, and complementary to, the ’970 Patent
Specification disclosure of the map engine accessing the map database, and
obtaining a map from the map database.
We are not persuaded that Patent Owner’s proposed construction for
“map engine for manipulating said map database” is consistent with the ’970
Patent Specification and the express language of claim 18. PO Resp. 14
(citing Ex. 1001, col. 4, ll. 16–17, 55–58, claim 18; Ex. 2016 ¶ 32); see also
Tr. 16–18 (asserting the ’970 Patent Specification discloses the step of
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correlating is performed using the map engine).2 Patent Owner’s proposed
construction is narrower than the ’970 Patent and ’643 Application
disclosures of the map engine accessing the map database, or obtaining or
extracting a map from the map database. Additionally, Dr. Mandayam’s
opinion is not supported fully by the provided dictionary definitions for the
term “engine.” See 37 C.F.R. § 42.65(a).
We give more weight to the intrinsic evidence than we give to Patent
Owner’s extrinsic evidence, as the ’970 Patent Specification serves as the
best guide regarding the construction of “map engine for manipulating said
map database.” Therefore, the broadest reasonable construction in light of
the ’970 Patent Specification for “map engine for manipulating said map
database” is an element or component for accessing the map database or
obtaining or extracting map data from the map database.
B. Asserted Ground of Unpatentability
We instituted review of claim 18 as unpatentable under 35 U.S.C.
§ 102(e) as anticipated by Elliot.3 Dec. 15–17, 30.
Elliot
Elliot describes a wireless communications system which tracks the
current and historical locations of a device worn or carried by a person, and

2 The ’970 Patent discloses the map server (4) is capable of correlating
between maps stored in the database (5) and the received positioning
information. Ex. 1001, col 4, ll. 17–20. Similarly, claim 18 recites the
“mobile platform location system being adapted . . . for correlating map to
said location information so as to obtain correlated location information.”
3 U.S. Patent No. 6,243,039 B1 (Ex. 1003).
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provides widely available access to the data referencing these locations. Ex.
1003, col. 2, ll. 29–35.
Figure 1 of Elliot, reproduced below, depicts the network architecture
of the system. Ex. 1003, col. 4, ll. 18–19.

Figure 1 illustrates device 12 worn or carried by a child, GPS (Global
Positioning System) satellite 14, ground based position systems 15, central
receiver-transmitter 16, and central control system 20. Id. at col. 4, l. 52–
col. 5, l. 46. Device 12 receives broadcast signals from each of three GPS
satellites 14, triangulates the three signals, and determines the coordinates of
the current location of device 12. Id. at col. 4, ll. 55–58. “Similarly, the
signals may be received from [] ground based position system 15.” Id. at
col. 4, ll. 59–60. Device 12 encodes the location coordinates into a data
package and sends the data to central receiver-transmitter 16, which may be
any type of cellular transmission system. Id. at col. 4, l. 66–col. 5, l. 5. The
data signal transmitted by device 12 includes the current GPS coordinates,
the current time, and the device identification code of transmitting device 12.
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Id. at col. 5, ll. 32–35. Central receiver-transmitter 16 receives the
transmission from device 12 and forwards the data signal to centralized
control system 20. Id. at col. 5, ll. 41–43.
Figure 3 of Elliot, reproduced below, depicts the process architecture
of central control system 20. Ex. 1003, col. 4, ll. 22–23, col. 6, ll. 18–19.

The central control system of Figure 3 includes GPS/device information
database 26, translation process 28, translated record database 30, and web
server 34. Id. at col. 6, ll. 31–65, col. 7, ll. 1–13. Central control system 20
receives data from device 12 via central receiver-transmitter 16, decodes the
data from the transmission message, and stores the data in GPS/device
information database 26. Id. at col. 6, ll. 22–24, 31–32, 35–36. The data
include the current GPS coordinates of device 12, the current time stamp,
and device identification code. Id. at col. 6, ll. 32–34. Translation process
28 translates the GPS coordinates to a commonly recognized location
reference, such as graphical maps. Id. at col. 6, ll. 37–38, 45–52, col. 2, ll.
11–13. The translated data signals are stored as records in translated record
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database 30. Id. at col. 6, ll. 64–65. Web server 34 functions as a web
interface for central control system 20 to enable web access to central
control system 20. Id. at col. 7, ll. 1–5. Web server 34 provides the
subscriber parent with the location data stored in translated record database
30 by transmitting a graphical map display embedded in a web page by
incorporating a graphic source file for the map into an HTML page as a
graphics file “image” (i.e., map source file, graphics image source file, GIF),
and including the current GPS coordinates of device 12 depicted on the map
with a distinguishing mark “X.” Id. at col. 6, ll. 47–50, col. 7, ll. 6–13, col.
9, ll. 12–42. Maps of non-local areas are also available. Id. at col. 9, l. 10;
see also id. at col. 3, ll. 2–4 (web server 34 with its associated files provides
graphical maps).
Claim 18
Patent Owner does not dispute Petitioner’s assertions that Elliot
describes the majority of the subject matter recited in claim 18. See PO
Resp. 1–16; Pet. 30–33. Patent Owner’s arguments instead focus on the
following limitations of claim 18: “each one of said mobile platform
location systems being associated with a map database and map engine for
manipulating said map database.” PO Resp. 1–3, 8–16. Petitioner asserts
Elliot’s web server 34 functions as a web interface for central control system
20, and the web server 34 with its associated files provides graphical maps
capable of showing the current and historical locations of device 12, thus,
Elliot describes the disputed limitations of claim 18. Pet. 31 (quoting Ex.
1003, col. 3, ll. 2–4, col. 7, ll. 1–7).
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Relying on its proposed construction for “map database,” discussed
above in Section II.A., Patent Owner contends, with supporting expert
testimony, Elliot’s web server does not describe a map database because it
“fails to describe any data organization, management or functionality
required for a database.” PO Resp. 10–11 (citing Ex. 2016 ¶¶ 26–28).
Patent Owner also asserts Elliot’s disclosure of a web server that “provides”
graphical maps does not describe the source of the graphical maps. Id. at
11–12 (citing Ex. 2016 ¶ 29).
In response to Patent Owner’s arguments, Petitioner contends Patent
Owner ignores Elliot’s disclosure of not only a web server but the disclosure
of a collection of graphical map files. Pet. Reply 3. Petitioner asserts Patent
Owner’s expert Dr. Mandayam acknowledges that Elliot discloses a
collection of graphical map files. Id. (citing Ex. 1019, 40, l. 18–41, l. 3).
Petitioner argues Elliot is explicit that “graphical maps” or a “graphical
display of a map” is a specific type of what Elliot refers generally to as a
“location reference,” and “[t]he ‘collection’ of location references (i.e.,
maps) is explicitly in the form of a database.” Id. at 4–5 (citing Ex. 1001,
claim 10, col. 2, ll. 11–13, col. 5, ll. 52–57, col. 6, ll. 36–37, 64–67, col. 7,
ll. 6–16, Fig. 3). With supporting expert testimony, Petitioner makes the
following additional contentions: (1) “one of ordinary skill in the art would
understand that [Elliot’s] ‘associated files’ that provide[] the . . . graphical
maps to [web] server [34] constitute what Elliot expressly discloses as a map
database (e.g. 30, Fig. 3);” and (2) Elliot “makes clear that the files
contained in the database are organized in a way that makes them
accessible.” Id. at 5 (citing Ex. 1020 ¶¶ 12–26); see also Tr. 34, l. 15 (“Our
position is that database 30 [of Elliot] is the map database.”).
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Based upon our review of the arguments and supporting evidence
presented by each of the parties, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that Elliot’s database 30,
which includes graphical maps that can be accessed by web server 34,
describes the “map database” recited in claim 18 and constitutes an
organized collection of map data that can be accessed.
Relying on its proposed construction for “map engine for
manipulating said map database,” discussed above in Section II.A., Patent
Owner contends Elliot’s description suggesting commercially available
software programs for producing and manipulating graphics images does not
disclose a “map engine for manipulating said map database.” PO Resp. 13–
15 (citing Ex. 2016 ¶¶ 33–34).
In response, Petitioner contends Patent Owner’s arguments
mischaracterize the Petition and Decision instituting inter partes review.
Pet. Reply 8. Petitioner clarifies that it is Elliot’s web server 34 and the
interaction of the web server 34 and the database 30 which describes the
“map engine for manipulating said map database.” Id. at 10–11 (citing
Ex. 1003, col. 3, ll. 2–4, col. 7, ll. 1–13). Specifically, Petitioner directs
attention to Elliot’s description of web server 34 functioning as a web
interface for central control system 20 to enable web access to the central
control system, and web server 34 providing a subscriber with location data
stored in the translated records database 30 in a graphical map display
format. Id. at 11 (citing Ex. 1003, col. 7, ll. 1–13). Petitioner asserts, with
supporting expert testimony, that based on Elliot’s description, it is clear that
Elliot’s web server 34 accesses and obtains graphical map files from the map
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database 30, and necessarily constitutes a “map engine for manipulating said
map database.” Id. (citing Ex. 1020 ¶¶ 32–34).
Upon consideration of arguments and supporting evidence of each of
the parties, we are persuaded by a preponderance of the evidence that
Elliot’s web server 34 that accesses graphical maps from database 30
describes the “map engine for manipulating said map database,” recited in
claim 18 and broadly constitutes an element or component for accessing the
map database or obtaining or extracting map data from the map database.
We are not persuaded by Patent Owner’s conclusory statement that
“Elliot fails to disclose that each one of the mobile platform locations
systems is ‘associated with’ a corresponding map database and map engine,
as required by claim 18.” PO Resp. 1–2; see id. 8, 9–10 (citing Ex. 2016 ¶
26), 15–16. Patent Owner relies largely on arguments directed to the “map
database,” and “map engine for manipulating said map database,” and does
not meaningfully explain why Elliot fails to describe “each one of said
mobile platform location systems being associated with a map database and
map engine for manipulating said map database,” recited in claim 18. Patent
Owner’s arguments also are not commensurate in scope with the claim
limitations because claim 18 does not require a corresponding map database
and map engine for each mobile platform location system. Compare PO
Resp. 1–2, 8, 9–10, with Ex 1001, claim 18.
Patent Owner does not attempt to distinguish any other features of
claim 18 over the system disclosed by Elliot. The record contains the same
arguments and evidence regarding the merits of the alleged anticipation by
Elliot of the remaining elements of claim 18 as it did at the time of our
Decision to institute inter partes review. Accordingly, the preponderance of
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the evidence of record supports a finding that Petitioner has set forth how the
remaining limitations of claim 18 are described by Elliot. See Pet. 30–33.
Based on our review of the record before us, we are persuaded that
Petitioner has shown by a preponderance of the evidence that Elliot
anticipates claim 18.
C. Petitioner’s Motion to Exclude Evidence
Petitioner moves to exclude certain portions of Dr. Mandayam’s
Declaration (Ex. 2016), and Exhibits 2017 through 2019 in their entirety.
Paper 42. We do not rely on the aforementioned Exhibits in reaching our
Decision. Accordingly, we dismiss Petitioner’s Motion to Exclude Evidence
as moot.
D. Patent Owner’s Motion to Exclude Evidence
Patent Owner moves to exclude Dr. Rosenberg’s Declaration (Ex.
1020) in its entirety as inadmissible under Federal Rules of Evidence
(“FRE”) 402, 403, 702, 703 and 37 C.F.R. § 42.65. PO Mot. Exclude 1.
Patent Owner asserts Dr. Rosenberg’s Declaration is inadmissible for the
following reasons:
because it fails to assist a trier of fact to understand or
determine a fact in issue, is based upon insufficient facts or
information, is not the product of reliable principles and
methods, does not reliably apply the principles and methods to
the facts of this case, and/or its probative value is substantially
outweighed by the risk of prejudice and/or confusion.
Id. (citing FRE 402, 403, 702, 703).
Patent Owner argues that Exhibit 1020 is inadmissible under FRE 702
because Dr. Rosenberg is not qualified as a person of ordinary skill in the
art. PO Mot. Excl. 2–5 (citing Sundance, Inc. v. DeMonte Fabricating Ltd,
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550 F3d 1356. 1358 (Fed. Cir. 2008); see PO Reply to Opp. 1–3 (citing
Morpho Detection, Inc. v. Smiths Detection, Inc., No. 2:11-cv-498, 2012 WL
6004085, *1–2 (E.D. Va. Nov. 30, 2012)). Specifically, Patent Owner
argues that Dr. Rosenberg’s degrees in Industrial Engineering and Human
Factors and completion of core engineering coursework do not meet the
qualifications of a person of ordinary skill in the art set forth by either Patent
Owner’s expert or Petitioner’s expert. PO Mot. Excl. 2–4 (citing Ex. 1020,
3; Ex. 1013, 6; Ex. 2016, 5; Ex. 2021, 1). Patent Owner also argues that Dr.
Rosenberg’s work experience in “user interface design and software
architecture” does not constitute work experience in “client-server systems,
networking technologies and applications, data translations systems, and
wireless and Internet communication protocol.” PO Mot. Excl. 4 (citing Ex.
1020, 2–5; Ex. 1013, 6).
Federal Rule of Evidence 702 permits a witness qualified as an expert
by knowledge, skill, experience, training, or education to testify in the form
of an opinion if a) the expert’s knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue, (b) the testimony is
based upon sufficient facts or data, (c) the testimony is the product of
reliable principles and methods, and (d) the witness has applied the
principles and methods reliably to the facts of the case.
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. We agree that “there is
no requirement imposed by the FRE that an expert’s qualifications perfectly
match the field of the patent at issue.” Pet. Opp. 6 (citing SEB S.A. v.
Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)); see also
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Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed.
Cir. 2011) (non-precedential) (upholding district court’s admission of
testimony of an expert who “had experience relevant to the field of the
invention,” despite admission that he was not a person of ordinary skill in
the art). We also are persuaded by Petitioner’s arguments that Dr.
Rosenberg’s experience is adequate to establish his technical expertise. Pet.
Opp. 7 (citing Ex. 1020 ¶¶ 5, 6, 8; Ex. 1020, 23). In particular, and germane
to the ’970 Patent, we note Dr. Rosenberg has over four years of experience
serving as the founder and CEO of a technology company WhereWuz which
focuses on location tracking applications for GPS enabled smartphones. See
Pet. Opp. 7; Ex. 1020 ¶ 8.
Patent Owner also contends that Dr. Rosenberg’s Declaration is
inadmissible under FRE 402, 403, 702, and 703 because Dr. Rosenberg’s
opinions: (1) are conclusory, (2) fail to apply any relevant and reliable
analysis to the facts of the case, (3) do not disclose the underlying facts in
many instances, (4) are not a product of reliable principles and methods
applied to the facts of this case; and (5) lack any probative value. PO Mot.
Excl. 5–6. Patent Owner asserts Dr. Rosenberg’s opinion is not a product of
reliable principles and methods because Dr. Rosenberg fails to identify
definitions for “database,” “manipulating,” or “map engine for manipulating
said map database,” and does not explain what a person of ordinary skill in
the art would understand the claim terms to mean in the relevant context.
Id.; see PO Reply Opp. 3–5. Patent Owner also contends Dr. Rosenberg’s
Declaration lacks any probative value because Dr. Rosenberg lacks the
qualifications of a person of ordinary skill in the art, and has failed to apply
any relevant and reliable analysis to the facts of the case. PO Mot. Excl. 6.
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Patent Owner’s arguments addressing Dr. Rosenberg’s testimony in
this regard goes to the weight to be given to Dr. Rosenberg’s testimony, not
to its admissibility. See 37 C.F.R. § 42.65(a). It is within our discretion to
assign the appropriate weight to the testimony offered by Dr. Rosenberg.
See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
Board was well within its discretion to give more weight to one item of
evidence over another “unless no reasonable trier of fact could have done
so.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”). We are capable of determining the appropriate weight to be
given to Dr. Rosenberg’s testimony without risk of being prejudiced,
confused, or misled by Dr. Rosenberg’s testimony.
Accordingly, Patent Owner’s Motion to Exclude is denied because
Patent Owner has not demonstrated that Dr. Rosenberg’s Declaration is
inadmissible.
E. Patent Owner’s Observations
Patent Owner’s observations are directed to the cross-examination
testimony of Dr. Rosenberg (Ex. 2022), who was deposed after Petitioner
filed its Reply. We have considered Patent Owner’s observations and
Petitioner’s response addressing whether certain portions of Dr. Rosenberg’s
cross-examination testimony: (1) contradict or undermine the testimony in
the Dr. Rosenberg’s Declaration (Ex. 1020) and the arguments in
Petitioner’s Reply, (2) call into question the analysis utilized by Dr.
Rosenberg in rendering his opinion; and (3) support the arguments in Patent
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Owner’s Response. See PO Mot. Obs. 2–13; Pet. Resp. Obs. 2–15. We
have accorded Dr. Rosenberg’s testimony the appropriate weight, but Patent
Owner’s observations do not change our findings or conclusions.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claim 18
is unpatentable. Petitioner’s Motion to Exclude Evidence is dismissed as
moot. Patent Owner’s Motion to Exclude Evidence is denied.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claim 18 of the ’970 Patent is determined to be
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that because this is a Final Written Decision,
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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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