• Wavemarket Inc. D/B/A Location Labs v. Locationet Systems Ltd.Rehearing denied
  PTAB · Jul 29, 2015 · IPR2014-00199 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended evidence supporting a different construction or exclusion of Dr. Rosenberg’s testimony.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “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.” slip op. at 4

  • ExcludeMotion to exclude, deniedDenied

    “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.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “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. 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.” slip op. at 6

  Claim construction
  Patents in suitUS 6,771,970

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