Apple Inc v. TracBeam LLC

1. Case Identification

• Case #: IPR2015-01702
• Patent #: 7,764,231
• Filed: August 12, 2015
• Petitioner(s): Apple Inc.
• Patent Owner(s): Tracbeam, LLC
• Challenged Claims: 1, 3, 6-7, 11, 17-18, 20, 24-25, 27, 39-40, 72, 78, 81, 155, 162, 165, and 215

2. Patent Overview

• Title: Location Determination for Cellular Telephones
• Brief Description: The ’231 patent relates to a network-based system for determining the location of a mobile station. The system uses measurements from wireless signals communicated between mobile stations and a network of base stations to provide geographical location estimates.

3. Grounds for Unpatentability

Ground 1: Obviousness over Green and Hashimoto - Claims 1, 3, 7, 11, 17-18, 40, 72, 78, and 81 are obvious over Green in view of Hashimoto.

• Prior Art Relied Upon: Green (Patent 5,926,133) and Hashimoto (Patent 6,999,779).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Green taught a network-based system for determining the location of cellular phones using one or more techniques (e.g., Time of Arrival, Angle of Arrival) and noted that the system could be augmented with a GPS receiver in the handset (“rover”). Hashimoto taught a position information management system where a portable terminal includes multiple location determination means (e.g., GPS, telephone) and selects between them based on precision. Petitioner asserted that the combination of Green and Hashimoto disclosed the core limitations of the independent claims, including using multiple location estimation determiners (one cellular-based, one satellite-based) and selecting between or combining their outputs.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Green’s framework for using multiple location techniques with Hashimoto’s method for intelligently selecting among different location sources. This combination would be a straightforward way to improve the overall accuracy, coverage, and reliability of the location system, yielding predictable results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these known location technologies, as both references operated in the same field and addressed the common goal of improving mobile device location accuracy.

Ground 2: Obviousness over Green, Hashimoto, and Hilsenrath - Claim 6 is obvious over Green and Hashimoto in further view of Hilsenrath.

• Prior Art Relied Upon: Green (Patent 5,926,133), Hashimoto (Patent 6,999,779), and Hilsenrath (Patent 6,026,304).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that dependent claim 6 recites using a "pattern recognition location technique." While Green and Hashimoto provided the base system, Hilsenrath specifically disclosed a location estimation technique based on recognizing a pattern of signal characteristics.
  • Motivation to Combine: A POSITA seeking to improve the versatility of the base system from Green and Hashimoto would be motivated to incorporate other known location techniques. Hilsenrath's pattern recognition method represented a well-known alternative for location finding, and its inclusion would be an obvious design choice to enhance the system's performance.

Ground 3: Obviousness over Green, Hashimoto, and Sheffer - Claims 25, 27, 155, 162, 165, and 215 are obvious over Green and Hashimoto in further view of Sheffer.

• Prior Art Relied Upon: Green (Patent 5,926,133), Hashimoto (Patent 6,999,779), and Sheffer (Patent 5,844,522).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended these claims contain limitations related to determining a "likelihood" of the mobile station being at a specific location. Sheffer taught a mobile telephone location system that calculates location estimates and assigns "confidence factors" to them, which is particularly useful for emergency response systems.
  • Motivation to Combine: A POSITA developing a location system for applications like E911, as contemplated by the art, would be motivated to incorporate Sheffer’s confidence/likelihood analysis. This would provide more useful and reliable information to emergency responders by indicating the quality of a given location estimate, which was a known goal in the field.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Green and Hashimoto with Krasner (Patent 6,208,290) for claims reciting hybrid GPS techniques dependent on terrestrial receiver locations, and with PCT '785 (WO 97/23785) for claims reciting the use of map data to identify a likely roadway.

4. Key Claim Construction Positions

• Petitioner argued that the challenged claims must be construed to encompass the use of GPS receivers in mobile handsets. This construction was central to the petition's invalidity arguments.
• This position was based on claim language added during prosecution, such as receiving a "signal from at least one non-terrestrial wireless transmitter... to M" (mobile station). Petitioner contended this language was intentionally added to broaden the claims beyond the original disclosure, which focused on network-based location methods and criticized handset-based GPS as impractical.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was that the ’231 patent is not entitled to the priority date of its provisional applications (filed in 1996).
• Petitioner argued that the provisional applications lacked written description support for the finally issued claims, specifically because the provisionals taught a system that intentionally avoided using GPS in handsets. The challenged claims, however, explicitly recite receiving satellite signals at the mobile station.
• Consequently, Petitioner argued the effective filing date of the patent is its actual PCT filing date of September 8, 1997. This assertion was critical, as it rendered the primary prior art references, including Green (filed July 1997) and Hashimoto (filed July 1997), valid intervening prior art under 35 U.S.C. §102(e).

6. Relief Requested

• Petitioner requested institution of inter partes review and cancellation of claims 1, 3, 6-7, 11, 17-18, 20, 24-25, 27, 39-40, 72, 78, 81, 155, 162, 165, and 215 of the ’231 patent as unpatentable.