Apple Inc v. TracBeam LLC

1. Case Identification

• Case #: IPR2015-01696
• Patent #: 7,525,484
• Filed: August 12, 2015
• Petitioner(s): Apple Inc.
• Patent Owner(s): TracBeam, LLC
• Challenged Claims: 25-28, 31, 36-43, 45, 47-51, 55-57, 60-61, 63, and 72

2. Patent Overview

• Title: Location Determination for Cellular Phones
• Brief Description: The ’484 patent discloses a network-based location system that uses wireless signal measurements from transmissions between mobile stations and communication stations to determine the mobile station's location. The system is designed to use multiple location estimation techniques to improve accuracy.

3. Grounds for Unpatentability

Ground 1: Claims 25-28, 31, 36-42, 45, 47-51, 55-57, 60-61, 63, and 72 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 parent application to the ’484 patent, discloses the core elements of the challenged claims, including a network-based system for locating mobile stations using multiple location estimators based on wireless signal measurements. However, PCT ’307 explicitly criticized handset-based GPS as having “fundamental problems.” Petitioner asserted that FCC 99-245, published after PCT ’307, remedies this deficiency by disclosing and encouraging the use of handset-based location solutions, including those with GPS capability, to meet E911 requirements. FCC 99-245 specifically discussed technological advances making GPS-in-handset solutions viable alternatives to purely network-based approaches.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), reviewing the network-based system of PCT ’307, would have been motivated to incorporate the handset-based GPS technology discussed in FCC 99-245. Petitioner argued this motivation arose from a clear design need and market pressure, explicitly identified by the FCC, to improve location accuracy (especially in rural areas) and comply with evolving E911 mandates. The combination would have integrated a known, increasingly favored location technology (handset GPS) into an existing location framework to enhance its capabilities.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both references concerned the same field of cellular location technology, and combining them represented the predictable use of prior art elements (a network location system and a handset location technology) according to their established functions to yield a predictable result of improved location determination.

Ground 2: Claim 43 is obvious over PCT ’307 in view of FCC 99-245 and Stilp.

• Prior Art Relied Upon: PCT ’307, FCC 99-245, and Stilp (Patent 5,327,144).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of PCT ’307 and FCC 99-245 from Ground 1 and addressed the additional limitation of dependent claim 43, which recites displaying location information. Petitioner argued that the primary combination taught a location system that could incorporate GPS handsets but did not explicitly teach displaying the location on the mobile handset itself (PCT ’307 disclosed a display on a mobile base station). Stilp, which issued in 1994, disclosed a cellular telephone with a map display.
  • Motivation to Combine: A POSITA would have been motivated to add the handset display taught by Stilp to the location system of PCT ’307/FCC 99-245. This addition was argued to be a simple and obvious improvement, providing the significant benefit of allowing the user of the handheld device to view their own location on a map, a known feature in the art.
  • Expectation of Success: Integrating a display on a handset was a well-understood and conventional feature. A POSITA would have reasonably expected that adding the known display functionality from Stilp to the handset-based location system would work for its intended purpose.

4. Key Claim Construction Positions

• Petitioner argued that the challenged claims must be given their broadest reasonable interpretation, which encompasses handset-based location technologies, including GPS. This interpretation was central to Petitioner's entire case.
• For example, terms like “wireless signal measurements obtained via transmissions between said mobile station…and communication stations” were argued to be broad enough to cover the transmission of GPS data, received by the handset from satellites, to a network base station. Petitioner contended that this broad construction was necessary because the Patent Owner asserted this scope in related litigation and the prosecution history showed a clear intent to broaden the claims beyond the original disclosure to cover such handset-based GPS systems.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: The petition’s central argument was that the ’484 patent was not entitled to the September 8, 1997 filing date of its parent application (published as PCT ’307). Petitioner argued the challenged claims, as broadly construed to cover GPS in handsets, lacked written description support in the parent application.
• Rationale for Invalidity: The parent application not only failed to disclose GPS receivers in mobile handsets but actively disparaged the concept, citing “fundamental problems.” Petitioner asserted that the Patentee only added new matter to the specification and broadened the claims in the continuation (which became the ’484 patent) after the FCC’s 1999 rule changes (FCC 99-245) made handset-based GPS a viable and encouraged technology.
• Effect of Invalidity: Because the claims allegedly lacked written description support in the parent, Petitioner argued the effective filing date for all challenged claims was the filing date of the continuation application: January 26, 2001. This later date made the parent’s own publication, PCT ’307 (published March 12, 1998), and FCC 99-245 (published October 6, 1999) available as prior art under 35 U.S.C. §102(b).

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 25-28, 31, 36-43, 45, 47-51, 55-57, 60-61, 63, and 72 of the ’484 patent as unpatentable.