Apple Inc v. LBT IP I LLC

1. Case Identification

• Case #: IPR2020-01193
• Patent #: 8,421,619
• Filed: July 22, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): LBT IP I LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Portable Electronic Tracking Device and Method
• Brief Description: The ’619 patent discloses a portable electronic device that uses accelerometer circuitry to monitor movement and processor circuitry to detect specific motion patterns. The device generates alerts based on these patterns and employs a power-saving mode that activates or deactivates signaling circuitry, such as GPS, when the device is detected to be in a substantially stationary position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miranda-Knapp and Miller - Claims 1, 5-6, 8-11, 15-16, and 18-20 are obvious over Miranda-Knapp in view of Miller.

• Prior Art Relied Upon: Miranda-Knapp (Patent 6,940,407) and Miller (Application # 2006/0119508).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miranda-Knapp teaches the core elements of a portable tracking device, including an accelerometer to detect motion, a processor to analyze motion patterns (e.g., a dropped phone) and generate alerts, and a GPS module for location tracking. Petitioner contended that Miranda-Knapp also teaches basic power management. To satisfy the claimed limitation of activating and deactivating signaling circuitry based on a stationary position, Petitioner asserted that Miller teaches a method for conserving battery power by halting the scanning operations of a GPS receiver when an accelerometer detects the device is stationary. The combination of Miranda-Knapp’s system with Miller’s specific power-saving technique allegedly rendered the claims obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Miller’s explicit power-saving technique with Miranda-Knapp’s tracking system to improve battery life. Both references are directed to power conservation in portable tracking devices, making the combination a predictable solution to a well-known problem.
  • Expectation of Success: Petitioner argued that success would be reasonably expected because both references describe devices with similar architectures (accelerometer, GPS, power manager). Integrating Miller's power-saving functionality into Miranda-Knapp's device would involve routine programming well within the skill of a POSITA.

Ground 2: Obviousness over Miranda-Knapp, Miller, and Cervinka - Claims 3-4 and 12-14 are obvious over Miranda-Knapp in view of Miller in further view of Cervinka.

• Prior Art Relied Upon: Miranda-Knapp (Patent 6,940,407), Miller (Application # 2006/0119508), and Cervinka (Patent 7,053,823).
• Core Argument for this Ground:
  • Prior Art Mapping: Building on the base combination of Miranda-Knapp and Miller, Petitioner introduced Cervinka to teach the well-known technique of dead reckoning. Cervinka discloses a tracking device that uses accelerometer data to compute a current position based on the last known GPS-derived position, particularly when GPS signals are unavailable. This, Petitioner argued, satisfies the limitations of claims 3 and 12 requiring computation of location coordinates using both a received communication signal (for the last known position) and displacement data.
  • Motivation to Combine: A POSITA would add Cervinka’s dead reckoning capability to the base system to enhance its functionality and robustness. This modification would allow for continuous location tracking even in environments with poor GPS reception (e.g., indoors or in urban canyons), addressing a known limitation of GPS-only systems and providing a predictable improvement.
  • Expectation of Success: The combination would have been straightforward, as all references concern portable tracking devices with similar components. Implementing dead reckoning was a conventional technique for improving location determination.

Ground 3: Obviousness over Miranda-Knapp, Miller, and Herrero - Claims 7 and 17 are obvious over Miranda-Knapp in view of Miller in further view of Herrero.

• Prior Art Relied Upon: Miranda-Knapp (Patent 6,940,407), Miller (Application # 2006/0119508), and Herrero (Application # 2008/0266174).

• Core Argument for this Ground:

  • Prior Art Mapping: To address claims requiring receipt of signals from both a GPS satellite and a wireless communication network, Petitioner added Herrero to the base combination. Petitioner asserted that Herrero teaches using Assisted GPS (A-GPS), which leverages assistance data from a server via a wireless network to supplement signals from GPS satellites.
  • Motivation to Combine: A POSITA would combine the A-GPS teachings of Herrero to improve the performance of the tracking device. Herrero explains that A-GPS reduces the Time to First Fix (TTFF) and improves location sensitivity. This would be particularly beneficial for a device that deactivates its GPS for power savings, as it would allow for faster and more reliable location acquisition upon reactivation.
  • Expectation of Success: A reasonable expectation of success existed due to the architectural similarities between the systems and the common industry goal of improving location tracking performance in portable devices.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 2 based on the combination of Miranda-Knapp, Miller, and Vaganov, which was cited for its disclosure of a specific three-axis accelerometer structure.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a) by asserting that the co-pending district court litigation was in its early stages. Petitioner stated that the trial was scheduled for 3-4 months after the Final Written Decision (FWD) in the IPR would be due, meaning the court would not invest significant resources in invalidity analysis until after the Board's decision. Petitioner also noted that the IPR challenges a broader set of claims than those asserted in the litigation and that the petition presents a strong showing of unpatentability.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of Patent 8,421,619 as unpatentable.