• Apple Inc. v. Tracbeam, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01700 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Apple had not shown a reasonable likelihood that claims 1–3, 6, 7, 15, 17, 18, 20, 21, 23, 24, 27–29, 32, 33, 35–39, and 42 were obvious over PCT ’307 …

  RulingsInstitution decision

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

    “LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” 35 U.S.C. § 314(a).” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “1. Whether the ’153 Patent is Entitled to the Filing Date of the ’367 Application Petitioner asserts that the challenged claims are not entitled to priority because “they lack written description support.” Pet. 33. In particular, Petitioner contends that PCT ’892, published as PCT ’307, “does not contain any disclosure whatsoever of a GPS handset.” Id. at 36. Patent Owner points out correctly that the challenged claims do not recite expressly “GPS handset.” Prelim. Resp. 8. However, even assuming that the claims encompass a GPS handset, we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “GPS receiver in a mobile base station 152 [is] separate from the mobile station 140.” Pet. 37 (citing Ex. 1002 ¶¶ 35–38). Mr. Judge testifies that “one of ordinary skill in the art would have understood the disclosure of GPS in the ’892 application as applying to use of GPS only in base stations, not GPS in mobile stations or handsets.” Ex. 1003 ¶ 37. Mr. Judge acknowledges that PCT ’307 describes (1) “use of a GPS receiver in a mobile base station” and (2) use of “the included GPS” to determine “the mobile station’s location.” Id. ¶ 35. Mr. Judge, however, testifies “if the inventors had contemplated and were in possession of GPS in a mobile station or handset, one of skill in the art would have expected them to have similarly included such disclosure in the application as was included for GPS in the mobile base station.” Id. ¶ 37. We are not persuaded by Mr. Judge’s testimony, which is conclusory and does not disclose sufficiently the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight to Mr. Judge’s testimony regarding, for example, the expectation of one of ordinary skill in the art in light of the disclosure of PCT ’307 considered in its entirety. As Patent Owner points out, Mr. Judge and the Petition also do not consider sufficiently the “definitions” section of PCT ’307, which we are persuaded is highly relevant to understanding what PCT ’307 discloses. Prelim. Resp. 15.” slip op. at 7

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,032,153
• Apple Inc. v. Tracbeam, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01694 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–6, 13–19, 24, 25, 28, 31–33, 47, 50, 54, 55, 60–62, 65–67, 69, 72, 74, 76, and 80 were obvious over …

  RulingsInstitution decision

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

    “Patent Owner, TracBeam, LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” 35 U.S.C. § 314(a).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “2. Analysis For the purposes of this Decision, we are not persuaded that any of the terms identified by Petitioner requires express construction, because even if we were to adopt Petitioner’s proffered positions on claim construction, Petitioner has not met its burden to show that it is reasonably likely to succeed in showing that the challenged claims are unpatentable. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,298,327

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