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, and 35

2. Patent Overview

• Title: Method to Modify Calibration Data Used to Locate a Mobile Unit
• Brief Description: The ’494 patent discloses methods for determining the location of a mobile device, particularly in indoor environments, by modifying observed network measurement data before comparing that data to a pre-gathered database of calibration signals to improve accuracy.

3. Grounds for Unpatentability

Ground 1: Anticipation over Shkedi - Claims 1 and 4 are anticipated by Shkedi under 35 U.S.C. §102.

• Prior Art Relied Upon: Shkedi (Patent 7,706,811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shkedi discloses every element of claims 1 and 4. Shkedi’s "Signal-Comparison Based Location-Determining Method" describes creating a database of signal strength measurements at known locations (calibration data), collecting new signal measurements from a mobile device (observed data), modifying the observed data, and comparing the modified data to the database to determine location. Specifically, Petitioner asserted that Shkedi teaches modifying the observed data by normalizing it—dividing the signal strengths of weaker signals by the "strongest signal"—which directly corresponds to the "modifying" step of claim 1. For dependent claim 4, Petitioner contended that Shkedi's database, built from various user-selected locations, inherently comprises data for non-uniform grid points.

Ground 2: Anticipation over Zhu - Claims 1, 4, 25, 26, and 35 are anticipated by Zhu under 35 U.S.C. §102.

• Prior Art Relied Upon: Zhu ("Indoor/outdoor location of cellular handsets based on received signal strength," 2005 IEEE).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zhu, which describes a Received Signal Strength (RSS) technique for locating handsets, anticipates all challenged claims. Zhu discloses creating an RF map database (calibration data), collecting Network Measurement Reports (NMRs) from a handset, and comparing them. Petitioner asserted Zhu teaches modifying the observed NMR data by first calculating an "averaged-NMR vector" and then normalizing it by subtracting the "average dBm-power of all received channels" to generate relative signal strengths before comparison, satisfying the limitations of independent claims 1 and 25. For claims 4 and 26, Petitioner pointed to Zhu’s disclosure that its measured data points "tend to cluster along paths" and are thus non-uniform, and that Zhu further uses interpolation to generate additional non-uniform grid points. For claim 35, Petitioner argued that Zhu’s test environment explicitly included transmitters both inside the primary measurement area and other transmitters providing coverage from outside the area, which are "not a member of said wireless network."

Ground 3: Obviousness over Shkedi, Zhu, and Spain - Claims 25, 26, and 35 are obvious over Shkedi in view of Zhu and Spain under 35 U.S.C. §103.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Shkedi provides the foundational method for location determination but may not explicitly detail modifying data using an average value as required by claim 25. Zhu, however, was argued to clearly teach this specific technique by calculating and subtracting the "average dBm-power of all received channels" for normalization. Combining these teachings renders claim 25 obvious. For claim 26, to the extent Shkedi is found not to disclose non-uniform grid points, Spain explicitly teaches improving fingerprint database accuracy by interpolating between sampled locations to generate such points. For claim 35, Petitioner argued Shkedi itself discloses that a mobile phone can measure signals from different networks (e.g., cellular and WiFi), thus receiving signals from transmitters not part of the primary network.
  • Motivation to Combine: A POSITA would combine Zhu’s averaging technique with Shkedi’s system because both references share the goal of improving location accuracy through signal normalization. Applying Zhu’s known averaging method would have been a simple substitution of one known normalization technique for another to achieve a predictable improvement. Similarly, a POSITA would integrate Spain's interpolation method into Shkedi's database to enhance its accuracy and density, a common objective in the field.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining these known techniques for their intended purposes would predictably improve the accuracy of the location-finding system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 4 and 26 over Zhu in view of Spain, claim 35 over Zhu in view of Laitinen, and claim 4 over Shkedi in view of Spain, which relied on similar motivations to improve accuracy and combine known techniques.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions consistent with a Markman Order from related district court litigation. These constructions were presented as critical to the invalidity arguments.
• "calibration data": proposed as "modified or unmodified network measurement data associated with a geographic location."
• "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)."
• "grid point": proposed as "a point associated with representative calibration data for an area."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under either §314(a) or §325(d).
• Regarding discretionary denial under Fintiv, Petitioner contended that the factors weigh in favor of institution. It was argued that the trial date in the parallel litigation had not yet been scheduled and was unlikely to precede the statutory deadline for a Final Written Decision (FWD), and that investment in the litigation was not yet substantial.
• Regarding §325(d), Petitioner asserted that the primary references relied upon in the petition—Shkedi, Zhu, and Spain—were not considered or substantively discussed during the original prosecution of the ’494 patent. Petitioner argued these references are not cumulative to the previously considered art and that their omission constituted a material error by the examiner, warranting institution.

6. Relief Requested

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