PTAB

IPR2015-01694

Apple Inc v. TracBeam LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Location Determination for Cellular Phones
  • Brief Description: The ’327 patent discloses a network-based location system that employs cellular geolocation. The system uses measurements from wireless signals communicated between mobile stations and a network of base stations to determine the location of the mobile stations.

3. Grounds for Unpatentability

Ground 1: Obviousness under 35 U.S.C. §103 - Claims 1-6, 13-19, 24-25, 28, 31-33, 47, 50, 54-55, 60-62, 65-67, 69, 72, 74, 76, and 80 are obvious over PCT ’307 in view of FCC 99-245.

  • Prior Art Relied Upon: PCT ’307 (International Publication No. WO 98/10307) and FCC 99-245 (FCC Third Report and Order, Oct. 6, 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that PCT ’307, which is the publication of the ’327 patent’s parent application, discloses nearly all elements of the challenged claims. Specifically, PCT ’307 teaches a system for locating mobile stations using a plurality of different location techniques (determiners) based on signals between the mobile device and network base stations. However, PCT ’307 lacks disclosure of location determination using GPS signals received directly by the mobile device handset. Petitioner asserted that FCC 99-245 supplies this missing element. FCC 99-245 explicitly discusses the technological advancement and regulatory approval of handset-based location solutions, including the use of upgraded handsets with GPS capability to meet E911 requirements. For example, independent claim 1 requires using plural "location determiners," and dependent claim 47 recites a technique using signals received at the communication device from "non-terrestrial signal transmitting stations." Petitioner contended PCT ’307 teaches the base system of plural determiners, and FCC 99-245 teaches the specific use of GPS-in-handsets as an additional, viable determiner.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine the teachings of the references due to clear market and regulatory pressures. FCC 99-245 identified a design need to improve location services for E911 compliance and explicitly sanctioned handset-based GPS solutions as a permissible and effective technology. A POSITA would combine the GPS-in-handset technology of FCC 99-245 with the multi-determiner location system of PCT ’307 to improve overall accuracy and reliability, particularly in situations like rural areas where network-based triangulation is less effective but GPS satellite visibility is good.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. FCC 99-245 described handset-based GPS as a rapidly maturing technology, with manufacturers like Qualcomm already planning to incorporate it into handsets. The combination represented the application of a known technique (GPS location) to a known system (the multi-faceted location system of PCT ’307) to yield predictable results.

4. Key Claim Construction Positions

  • "Location Determiners" and "Communication Device": Petitioner argued that for the invalidity grounds to apply, key claim terms must be interpreted broadly. The term "location determiners" as used in independent claims 1 and 60 should be construed to encompass a wide variety of location techniques, including handset-based GPS receivers. This interpretation is allegedly supported by dependent claim 47, which explicitly recites receiving signals at a "communication device" from "non-terrestrial" sources. Petitioner contended that this broad construction, which encompasses GPS-enabled handsets, is what the Patent Owner asserts in related litigation but is unsupported by the original patent application.

5. Key Technical Contentions (Beyond Claim Construction)

  • Invalid Priority Claim: The central technical contention of the petition is that the ’327 patent is not entitled to its claimed priority date of September 8, 1997. Petitioner argued that the parent application (published as PCT ’307) lacks written description support for claims broad enough to cover GPS receivers within mobile handsets, as required by 35 U.S.C. §112.
  • Teaching Away and Broadening During Prosecution: Petitioner asserted that the parent application not only failed to disclose GPS-in-handsets but actively "taught away" from it, describing "fundamental problems" with such an approach. The petition detailed a prosecution history where the claims were significantly broadened to include handset-based satellite location techniques only after the FCC issued new rules and reports (such as FCC 99-245) between 1999 and 2002 that validated and encouraged handset-based GPS solutions.
  • Effective Filing Date: Because the subject matter of the challenged claims was allegedly added years after the original filing, Petitioner argued the patent’s effective filing date is its actual filing date of September 30, 2002. This later date makes PCT ’307 (published in 1998) and FCC 99-245 (published in 1999) available as prior art for an obviousness challenge under §103.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-6, 13-19, 24-25, 28, 31-33, 47, 50, 54-55, 60-62, 65-67, 69, 72, 74, 76, and 80 of the ’327 patent as unpatentable.