Google LLC v. Geoscope Technologies Pte Ltd

1. Case Identification

• Case #: IPR2023-01211
• Patent #: 8,786,494
• Filed: August 10, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Geoscope Technologies PTE. LTD.
• Challenged Claims: 1, 4, 25, 26, 35

2. Patent Overview

• Title: Method to modify calibration data used to locate a mobile unit
• Brief Description: The ’494 patent discloses a method for determining a mobile station's location, particularly in an indoor environment, by modifying observed network measurement data. The modified data is then compared to a pre-existing database of calibration data (or "fingerprints") to identify the location.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 4 by Shkedi

• Prior Art Relied Upon: Shkedi (Patent 7,706,811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shkedi anticipates every limitation of claims 1 and 4. Shkedi taught a "Signal-Comparison Based Location-Determining Method" which involved: (1) providing a database of previously gathered signal strength measurements for a region; (2) collecting currently observed signal strength measurements from a mobile device; (3) modifying the observed data by normalizing it using the "strongest signal"; and (4) comparing the modified data with the database to determine the device's location. Petitioner asserted this process directly maps to the method of claim 1. For claim 4, Shkedi was alleged to disclose building its database using non-uniform grid points, such as by recording data at various user-selected locations or extrapolating from them to "fill in the map."

Ground 2: Anticipation of Claims 1, 4, 25, 26, and 35 by Zhu

• Prior Art Relied Upon: Zhu ("Indoor/outdoor location of cellular handsets based on received signal strength," 2005 IEEE 61st Vehicular Technology Conference).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Zhu's system for locating cellular handsets anticipates all challenged claims. Zhu described creating an RF Map Database (calibration data) and collecting Network Measurement Reports (NMRs) from a handset (observed data). Zhu explicitly taught modifying the observed data by "normalizing the RSS vector," which involved subtracting the "average dBm-power of all received channels." This use of an average value was argued to meet the limitations of claim 25. The final location was determined by comparing the modified data to the database, anticipating claims 1 and 25. For claims 4 and 26, Zhu's database was built from "clusters or paths" of measured points and interpolation, constituting non-uniform grid points. For claim 35, Zhu described using signals from base stations both "inside the measurement area" and in the "neighborhood," which Petitioner argued meets the limitation of using a transmitter that is not a member of the primary wireless network.

Ground 3: Claims 25, 26, and 35 are obvious over Shkedi in view of Zhu and Spain

• Prior Art Relied Upon: Shkedi (Patent 7,706,811), Zhu (2005 IEEE paper), and Spain (Application # 2003/0064735).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground asserted that even if not anticipated, the claims would have been obvious. Shkedi provided the primary framework for a location-finding method using a database and modifying observed data. Shkedi broadly disclosed using "mathematical normalizations." Zhu provided a specific, known method of normalization: determining an average value of signal characteristics and using it to modify observed data.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) seeking to improve the accuracy of Shkedi's system would combine it with Zhu's well-known averaging technique for normalization. This would have been a simple substitution of one known normalization method for another to achieve a more robust result, rendering claim 25 obvious. For claim 26, if Shkedi were found not to teach non-uniform grid points, a POSITA would look to a reference like Spain, which explicitly taught using interpolation to create non-uniform grid points to improve the accuracy of a fingerprint database. For claim 35, Shkedi already taught using signals from surrounding networks, making the limitation obvious.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining known methods for improving accuracy (Zhu's averaging, Spain's interpolation) with a known location-determination framework (Shkedi) would predictably enhance performance.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 4 and 26 are obvious over Zhu in view of Spain, and claim 35 is obvious over Zhu in view of Laitinen (a 2001 IEEE paper on GSM location). These grounds relied on similar rationales of combining known techniques to improve accuracy.

4. Key Claim Construction Positions

• "calibration data": Petitioner proposed construing this term as "modified or unmodified network measurement data associated with a geographic location." This construction, asserted to be consistent with a Markman order in related litigation, is crucial because it clarifies that the database itself can contain data that has already been modified (e.g., normalized), aligning with the teachings of references like Shkedi.
• "observed network measurement data": Proposed as "measurement data from a network measurement report (i.e., a report used in cellular networks which provides the results of a measurement from a mobile device on one or more cells)." This anchors the claim term to standard industry practice and aligns with the data disclosed in references like Zhu's NMRs.
• "grid point": Proposed as "a point associated with representative calibration data for an area." This construction supports the argument that non-uniform, interpolated, or clustered data points, as taught by Zhu and Spain, fall within the scope of the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either §314(a) (Fintiv) or §325(d) would be inappropriate.
• Fintiv Factors (§314(a)): Petitioner contended that the factors weigh in favor of institution, arguing that: (1) it will seek a stay in the parallel district court litigation; (2) the court's trial date has not been set and is unlikely to precede the IPR's Final Written Decision (FWD); (3) investment in the parallel litigation is minimal as expert discovery is incomplete; and (4) the petition presents a compelling case on the merits.
• Prior Art and Arguments (§325(d)): Petitioner argued that the primary prior art references (Shkedi, Zhu, Laitinen, and Spain) were neither considered nor substantively discussed by the USPTO during the original prosecution. It asserted this represents a "material error" by the examiner and that the art is not cumulative to what was previously considered. Therefore, the Board should not exercise its discretion to deny the petition on these grounds.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, 25, 26, and 35 of Patent 8,786,494 as unpatentable.