Polaris Wireless Inc v. TruePOSItION Inc

1. Case Identification

• Case #: IPR2013-XXXX
• Patent #: 7,783,299
• Filed: June 3, 2013
• Petitioner(s): Polaris Wireless, Inc.
• Patent Owner(s): TruePosition, Inc.
• Challenged Claims: 111-114

2. Patent Overview

• Title: Wireless Location System
• Brief Description: The ’299 patent is directed to systems and methods for estimating the geo-location of a wireless device. The technology involves monitoring signaling links within a cellular communications system to detect predefined network transactions, which then trigger the location-finding process.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 111-114 under 35 U.S.C. §102(b) by the ’264 Patent

• Prior Art Relied Upon: Patent 6,782,264 (the ’264 patent).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’264 patent, an ancestor patent in the same family as the ’299 patent, anticipates the challenged claims. The core of this argument rested on the assertion that the challenged claims are not entitled to the priority date of the ’264 patent because they introduce new matter (e.g., the genus term “network transaction” and the “MSID trigger”). Petitioner contended that because the ’264 patent was published more than one year before the effective filing date of the challenged claims, it qualifies as prior art. The petition asserted that even if the ’264 patent does not support the full scope of a claimed genus (e.g., "network transaction"), its disclosure of a single species within that genus ("Mobile Originated Call Placed") is sufficient to anticipate the claim. Similarly, the ’264 patent’s disclosure of a “dialed-digit trigger” was argued to anticipate claims reciting “at least one of a dialed digit trigger and a Mobile Station Identification (MSID) trigger.”
  • Key Aspects: This ground relies on a critical legal argument: an ancestor patent that fails to provide written description support for a later-filed claim can nevertheless serve as anticipating prior art against that same claim.

Ground 2: Anticipation of Claims 111-114 under 35 U.S.C. §102(b) by Zell

• Prior Art Relied Upon: Zell (International Publication No. WO 99/33303).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Zell discloses a method for locating a mobile telephone by monitoring and recording signaling data on the A-bis interface between a base station and base station controller. Zell allegedly taught passively monitoring these links to avoid modifying the network, detecting communications based on predefined criteria (e.g., call origination/termination, subscriber identity), and using this information to initiate location services. Petitioner contended this mapping met all limitations of claims 111-114, including monitoring predefined links, detecting network transactions based on triggers (both dialed-digit and mobile identity), and initiating a location service in response.

Ground 3: Obviousness of Claims 111-114 under 35 U.S.C. §103 over Abbadessa in view of Havinis

• Prior Art Relied Upon: Abbadessa (Patent 6,088,587) and Havinis (Patent 6,167,266).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Abbadessa taught most of the claimed elements, including passively monitoring signaling links (specifically the Abis interface) in a GSM network to detect network transactions. Abbadessa disclosed detecting initial messages and matching them to identify specific events. However, Petitioner noted Abbadessa did not explicitly teach initiating a location service in response. Havinis was introduced to supply this missing element, as it taught a system where location services are triggered by events like mobile-originated or mobile-terminated calls, or by a specific subscriber identity (MSISDN).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to apply the more advanced and flexible triggering events taught by Havinis (e.g., triggering on any mobile-originated call) to the passive monitoring and detection system of Abbadessa. The monitored signals on the Abis link in Abbadessa would provide the necessary information to identify the call events taught by Havinis.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references operate within the same technical field (GSM network location) and address the common problem of triggering location services based on network activity. The combination would involve a straightforward integration of Havinis's triggering logic with Abbadessa's data collection system.

4. Key Claim Construction Positions

• Means-Plus-Function Limitations (Claims 113-114): Petitioner argued that the "means for monitoring," "means for detecting," and "means for initiating" limitations are governed by 35 U.S.C. §112, ¶6. Petitioner contended the ’299 patent fails to disclose the required corresponding algorithm for these computer-implemented functions, rendering them indefinite. Since indefiniteness under §112 is not a permissible ground in an inter partes review (IPR), Petitioner proposed that for the purpose of the §102 and §103 analysis, the structure corresponding to these functions should be construed as "any prior art means" that performs the claimed function.
• "network transaction": Proposed as "one or more messages on the signaling links of a network," a genus term comprising specific subgenera (mobile origination/termination) and 14 species of network events listed in the patent.
• "Mobile Station Identification (MSID) trigger": Proposed as "an indicium of the identity of a cell phone that directly and but-for causes an action."

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: A central contention of the petition was that claims 111-114 are not entitled to the priority date of the parent ’264 patent. Petitioner argued that key claim terms—including the genus "network transaction," the sub-genera "mobile origination transaction" and "mobile termination transaction," and the "MSID trigger"—were new matter introduced in the ’299 patent and lacked written description support in the ’264 patent. This argument was foundational, as it sought to establish the ’264 patent as valid §102(b) prior art against the challenged claims. Petitioner also argued that the Patent Owner was estopped from claiming priority due to its actions during prosecution, where it allegedly failed to assert priority to the '264 patent to overcome a prior art rejection.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review of claims 111-114 of the ’299 patent and declare the challenged claims unpatentable under 35 U.S.C. §§ 102 and 103.