eBay Inc v. Locata LBS LLC

1. Case Identification

• Case #: IPR2014-[Not Specified]
• Patent #: 6,259,381
• Filed: April 4, 2014
• Petitioner(s): eBay Inc.
• Patent Owner(s): Empire IP, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method and Device for Triggering an Event in a Roving Apparatus
• Brief Description: The ’381 patent discloses a method for triggering events in a GPS-equipped roving apparatus. An event is triggered when the apparatus's position falls within a predefined area and also meets at least one other specified triggering criterion, such as direction of travel or change in distance from a point of interest. The patent describes handling event triggers in overlapping predefined areas.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over Fast in view of Buss.

• Prior Art Relied Upon: Fast (Patent 5,497,149) and Buss (Patent 5,539,395).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that independent claims 1 and 7 were obvious over the combination. Fast was cited for teaching a wearable GPS security beacon that triggers events (e.g., alarms) based on the device’s presence within, or absence from, a variety of predefined and potentially overlapping zones (e.g., a "SCHOOL ZONE" encompassing a "PLAYGROUND zone"). Buss was cited for disclosing a portable GPS-enabled paging device that alerts a user to nearby points of interest (e.g., retail stores) and can filter messages based on the user's direction of travel, sparing the user from alerts for locations they have already passed. The combined system, Petitioner asserted, would provide the location-based alerting in overlapping zones from Fast with the point-of-interest and direction-based filtering from Buss, thereby teaching all limitations of the independent claims. Dependent claims were allegedly met by inherent capabilities or simple modifications, such as triggering an event upon an increase in distance from a point (leaving a "disallowed zone" in Fast).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the systems to enhance a personal security beacon (Fast) with commercially valuable information about points of interest along the user's path (Buss). Adding Buss's functionality would provide useful, filtered alerts while maintaining the safety features of Fast, such as transmitting emergency notifications.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success as both Fast and Buss disclose portable, GPS-based devices performing similar functions of location tracking and event triggering, making their integration straightforward.

Ground 2: Claims 1-12 are obvious over Schilit in view of Small and Kamiya.

• Prior Art Relied Upon: Schilit (a 1994 IEEE Workshop paper), Small (Patent 5,642,303), and Kamiya (EP 0 672 890 B2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination teaches a system with more granular, hierarchical zones. Schilit disclosed a context-aware handheld computer that triggers events based on location (e.g., entering a specific room). Small was cited for teaching a similar system using beacons to define zones, explicitly disclosing nested or hierarchical zones (e.g., a "WORK" zone containing a smaller "MY OFFICE" zone) where events can be triggered for either or both zones. Kamiya, acknowledged in the ’381 patent's background, was cited for teaching a vehicle navigation system using a metaphorical "torch beam" to alert a user to points of interest that fall within a cone projected forward from the vehicle's heading. Petitioner argued the combination of Schilit and Small taught the overlapping and hierarchical zones of the claims, while Kamiya taught the direction- and heading-based triggering criteria recited in dependent claims 3, 4, 9, and 10.
  • Motivation to Combine: A POSITA would combine Schilit and Small to create more granular and robust location-aware applications for work environments. A POSITA would then incorporate Kamiya's "torch beam" method to enhance the system's functionality for outdoor or automotive use, preventing irrelevant alerts for points of interest the user is moving away from.
  • Expectation of Success: Success would be expected because the references address complementary aspects of location-aware computing. Combining Schilit's and Small's indoor location-triggering with Kamiya's established outdoor, direction-based navigation filtering was presented as a predictable and logical design choice.

Ground 3: Claims 1-12 are obvious over Fast in view of Dimitriadis and Kamiya.

• Prior Art Relied Upon: Fast (Patent 5,497,149), Dimitriadis (Patent 5,664,948), and Kamiya (EP 0 672 890 B2).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a combination tailored to a vehicular context. Fast again provided the foundational teaching of a security beacon with overlapping zones. Dimitriadis was cited for disclosing a GPS-enabled device within a vehicle that presents advertisements as the vehicle approaches points of interest (e.g., retail stores). Kamiya again supplied the "torch beam" concept for direction-based filtering. The combined system would be a vehicle-integrated security and notification system that uses location, overlapping zones, and direction of travel to trigger events. This combination was argued to meet the "arming area" concept of the ’381 patent, where the system is active within a primary zone (e.g., a HOME zone).
  • Motivation to Combine: A POSITA would be motivated to apply Fast's security features to the vehicular system of Dimitriadis to safeguard against losing a beacon (by integrating it into the car) and for applications like monitoring teen drivers. Kamiya would be added to filter alerts, making the system more user-friendly by not bothering the driver with notifications for locations they have already passed or are not heading toward.
  • Expectation of Success: Petitioner argued it would have been obvious to integrate these known GPS technologies. Combining a security application (Fast) with a vehicle-based information system (Dimitriadis) and then refining it with a known directional filtering technique (Kamiya) represented a predictable implementation.

4. Key Claim Construction Positions

• "Increase in distance from a predetermined point": Petitioner argued this phrase should be broadly construed to include any triggering that occurs responsive to the roving apparatus moving away from a point of interest, not just when a specific tolerance amount is exceeded.
• "Bearing ... falls within a predetermined range of bearings": As the patent does not define "bearing," Petitioner proposed this should be construed based on the specification's figures to mean the apparatus approaching a point of interest from within a given "window of entry."
• "Bearing ... relative to the heading of the roving apparatus": Petitioner argued this phrase, also not explicitly defined, should be construed in line with the patent's discussion of the Kamiya reference to mean that the point of interest is located inside a "cone or torch beam" of directions emanating from the roving apparatus and centered on its direction of travel.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 of the ’381 patent as unpatentable.