PTAB

IPR2020-01189

Apple Inc v. LBT IP I LLC

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1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Adjusting Refresh Rate of Location Coordinates of a Tracking Device
  • Brief Description: The ’774 patent describes a portable electronic tracking device, such as a GPS receiver, with methods to extend battery life. The technology allows a user to select between different operating modes that trade higher location update rates for shorter battery life, and includes features that automatically reduce power consumption by deactivating components in response to a low battery level.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sakamoto - Claims 1, 4-6, 8, 10, 13, and 15 are obvious over Sakamoto.

  • Prior Art Relied Upon: Sakamoto (Japanese Application # JP 2004-37116A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sakamoto, which describes a GPS positioning system for a portable terminal, teaches all key limitations of the challenged claims. Sakamoto’s terminal includes a battery control unit that monitors the "remaining battery level" and a positioning control unit that switches between a "high sensitivity positioning mode" (GPS continuously on) and a "normal sensitivity positioning mode" (GPS intermittently on) to conserve power. Petitioner asserted this maps directly to the ’774 patent’s claimed battery monitor and local battery power adjustment mechanism. The different modes in Sakamoto, selectable by a user or triggered automatically by a low battery level, were argued to constitute the claimed "updated set of network communication signaling protocols" responsive to user input or battery status. Dependent claims were also allegedly taught, such as a display for battery warnings (claim 4) and a power-off "sleep mode" (claim 5).
    • Motivation to Combine (for §103 grounds): The argument relied on combining teachings from two embodiments within Sakamoto itself. Petitioner contended a POSITA would combine them because Sakamoto expressly states they use the same hardware configurations, and combining their respective methods would be an obvious way to further improve power savings—a stated goal of the reference.
    • Expectation of Success (for §112 grounds): A POSITA would have a high expectation of success in combining Sakamoto’s embodiments, as it would primarily involve routine programming on the disclosed common hardware platform.

Ground 2: Obviousness over Sakamoto in view of Applicant Admitted Prior Art (AAPA) - Claims 1, 4-6, 8, 10, 13, and 15 are obvious over Sakamoto in view of AAPA.

  • Prior Art Relied Upon: Sakamoto and Applicant Admitted Prior Art from the ’774 patent specification.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented contingently, in the event Sakamoto was found not to teach "predicting an estimated remaining battery charge life." Petitioner pointed to the ’774 patent’s own specification, which states that predicting battery charge life can be done by "standard techniques" known to those skilled in the art. This admission constitutes the AAPA. Sakamoto provides the base tracking device with all other claimed features.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the "standard technique" of predicting battery life with Sakamoto's device to improve its functionality. Providing a user with a warning based on remaining time (life) is more useful than a warning based on a raw charge level, representing a predictable improvement to Sakamoto's user interface.
    • Expectation of Success (for §103 grounds): Success was expected because the modification involved implementing a known, "standard technique" through simple calculations on data (e.g., battery level, current draw) already monitored by Sakamoto's system.

Ground 3: Obviousness over Sakamoto in view of Hayasaka - Claims 1, 4-6, 8, 10, 13, and 15 are obvious over Sakamoto in view of Hayasaka.

  • Prior Art Relied Upon: Sakamoto and Hayasaka (Patent 5,845,142).
  • Core Argument for this Ground:
    • Prior Art Mapping: This contingent ground addressed potential deficiencies in Sakamoto regarding the "automatic sleep mode" of claim 5. Hayasaka taught a portable communication terminal that monitors battery capacity and automatically inhibits communication when the power level is insufficient for a transmission. Petitioner argued this inhibition of both sending and receiving constitutes a "sleep mode" where communication rates are set to a minimal level (zero). This mode persists until Hayasaka determines the battery has been sufficiently recharged to support communication, mapping to the claimed functionality.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Hayasaka's more sophisticated sleep mode with Sakamoto's device to improve its power management, a goal shared by both references. Hayasaka's method prevents the device from attempting transmissions with insufficient power, which could lead to errors, thus improving reliability and user experience over Sakamoto's simpler fixed-threshold power-off mode.
    • Expectation of Success (for §103 grounds): The combination was portrayed as a straightforward application of a known power-saving technique from one portable electronic device to another, with a high expectation of success.

4. Key Technical Contentions (Beyond Claim Construction)

  • "Circuitry" as a Design Choice: Petitioner argued that a POSITA would have found it obvious and a matter of mere design choice to implement the functions of the claimed "processor circuitry" and "transceiver circuitry" using any combination of hardware, software, or firmware. Therefore, prior art disclosing these functions performed by processors executing software should be considered to teach the "circuitry" limitations.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that a trial in the co-pending district court litigation was scheduled for approximately 3-4 months after the Final Written Decision in the IPR would be due. It was further argued that the district court had not yet invested substantial resources in invalidity analysis, as claim construction was not complete and invalidity contentions had not been served. Petitioner also contended that the challenged claims and invalidity grounds in the IPR were not fully coextensive with those in the litigation, and that the petition presented a strong case for unpatentability.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1, 4, 5, 6, 8, 10, 13, and 15 of the ’774 patent as unpatentable.