PTAB

IPR2015-01700

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 ’153 patent discloses a network-based system for determining the location of a wireless mobile station. The system uses various location estimators that process measurements from wireless signals communicated between mobile stations and a network of base stations.

3. Grounds for Unpatentability

Ground 1: Obviousness over PCT '307 and FCC 99-245 - Claims 1-3, 6-7, 15, 17-18, 20-21, 23-24, 27-29, 32-33, 35-39, and 42 are obvious over PCT '307 in view of FCC 99-245.

  • Prior Art Relied Upon: PCT ’307 (WO 98/10307) and FCC 99-245 (Third Report and Order in CC Docket No. 94-102).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that PCT ’307, which is the published version of the ’153 patent’s parent application, discloses all elements of the challenged claims except for those specifically reciting the use of GPS or other non-terrestrial signals received by the mobile station itself. Petitioner argued that the parent application explicitly taught away from handset-based GPS. The secondary reference, FCC 99-245, was cited to supply the missing elements. FCC 99-245, a public order from the Federal Communications Commission, explicitly discussed and encouraged the development of handset-based location solutions, including those using GPS, to meet E911 requirements. It disclosed using plural location techniques, including network-based, handset-based, and hybrid solutions.
    • Motivation to Combine: A POSITA would combine the network-based location system of PCT ’307 with the handset-based GPS technology of FCC 99-245 due to clear regulatory and market pressures. FCC 99-245 itself established the need for improved location technologies to support E911 services and identified handset-based GPS as a promising, officially sanctioned option. This provided a strong motivation to integrate GPS capabilities into existing location systems to improve accuracy and reliability, particularly in scenarios like rural areas where network-based methods might be less effective.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success. FCC 99-245 noted that manufacturers like Qualcomm were already developing and planning to incorporate GPS-based location technology into handsets. This indicated that the technology was considered feasible and that combining it with network-based systems was a predictable path for improving location services.

4. Key Claim Construction Positions

  • "wireless mobile station": Petitioner argued that this term must be construed broadly to encompass GPS-equipped handsets. This construction was asserted to be necessary for the claims to have their intended scope and is central to the invalidity argument. Petitioner supported this position by pointing to the prosecution history of the continuation application that led to the ’153 patent, where the patentee allegedly broadened the claims and amended the specification to embrace handset-based GPS technologies that were disclaimed in the parent application. The patentee’s attempt to re-characterize a vehicle-mounted "mobile base station" (which could contain a GPS receiver) as a "mobile station" was cited as evidence of this intent to broaden the term to cover devices with integrated GPS.

5. Key Technical Contentions (Beyond Claim Construction)

  • Denial of Priority Date: The central technical contention of the petition was that the challenged claims of the ’153 patent were not entitled to the September 8, 1997 filing date of the parent application (PCT ’892, published as PCT ’307). Petitioner argued that the parent application lacked written description support for claims covering GPS-equipped handsets. To the contrary, the parent application explicitly criticized handset-based GPS, citing "fundamental problems" with the approach.
  • Petitioner contended that the specification was amended and the claims were broadened to cover handset-based GPS only years later, after FCC rule changes (including FCC 99-245) made such technology a viable and government-encouraged solution for E911 location services. Consequently, Petitioner argued the effective filing date of the challenged claims is the filing date of the continuation application, January 14, 2008. This later date renders both PCT ’307 and FCC 99-245 valid prior art references against the challenged claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 6-7, 15, 17-18, 20-21, 23-24, 27-29, 32-33, 35-39, and 42 of the ’153 patent as unpatentable.