• Apple Inc. v. Tracbeam, LLCInstitution denied
  PTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution

  Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15

  • Other 314aInstitution denied discretionary other

    “E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 7,764,231

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.