Apple Inc v. Geoscope Technologies Pte Ltd

1. Case Identification

• Case #: IPR2024-00255
• Patent #: 7,561,104
• Filed: December 1, 2023
• Petitioner(s): Apple Inc.
• Challenged Claims: 1-4 and 6-11

2. Patent Overview

• Title: METHOD TO MODIFY CALIBRATION DATA USED TO LOCATE A MOBILE UNIT
• Brief Description: The ’104 patent describes methods for estimating the location of a mobile unit in a wireless network. The techniques generally involve providing a database of pre-gathered "calibration data," collecting current "network measurement data" from the mobile unit, modifying the observed data to account for environmental factors, and then comparing the modified data with the calibration database to determine the unit's location.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 4, and 6-11 are obvious over Bhattacharya and Zeng.

• Prior Art Relied Upon: Bhattacharya (Application # 2006/0211376) and Zeng ("Handoff in Wireless Mobile Networks," a 2002 book chapter).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Bhattacharya disclosed a location estimation system fundamentally similar to the ’104 patent. Bhattacharya’s system estimates a wireless terminal's location by receiving signal-strength measurements, calibrating (modifying) them, and comparing them to an "Expected Signal-Strength Database" (the claimed calibration database). However, Bhattacharya only briefly mentioned implementing a "mobile-assisted hand-off process" in a "well-known fashion" without providing details. Petitioner argued that Zeng supplied these missing details. Zeng taught standard handoff techniques where the network makes a handoff decision based on signal strength measurements from a mobile station, such as determining if the current signal is weaker than a neighboring signal.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) implementing Bhattacharya’s system would have been motivated to consult a reference like Zeng to implement the "well-known" handoff process that Bhattacharya referenced. The motivation was to improve service when a wireless terminal is near a cell boundary—a known issue in the art. Combining Zeng's detailed handoff logic with Bhattacharya's location system would allow a network switching center to both manage handoffs and forward the same signal-strength data to the location system for position estimation, creating a more robust and efficient system.
  • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success because combining the references involved applying a conventional handoff decision-making process (Zeng) to a known location estimation framework (Bhattacharya), using standard signal-strength data common to both.

Ground 2: Claims 1-4 and 6-11 are obvious over Bhattacharya, Zeng, and Spain.

• Prior Art Relied Upon: Bhattacharya (Application # 2006/0211376), Zeng ("Handoff in Wireless Mobile Networks," a 2002 book chapter), and Spain (Application # 2006/0240843).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Bhattacharya and Zeng combination by adding Spain to provide further implementation details. Petitioner argued that while Bhattacharya disclosed using expected signal-strength functions that are a "function of time" to account for atmospheric and meteorological changes, it failed to describe how to populate its database to account for such variables. Spain, which shared the same assignee and overlapping inventors as Bhattacharya, allegedly solved this. Spain taught populating a "location-trait database" that explicitly accounted for "calendrical time" and "environmental conditions" when storing expected signal values. This provided the specific mechanism for implementing the time- and condition-dependent database that Bhattacharya’s system required.
  • Motivation to Combine: A POSITA seeking to implement Bhattacharya's time-dependent location system would have been motivated to look for known techniques to build the corresponding database. Spain was presented as a natural source for these details, given the common inventive entity and subject matter. It offered a direct, compatible solution for populating a database with the precise types of time- and environment-dependent data that Bhattacharya's system relied upon for accurate pattern matching.
  • Expectation of Success: Success was predictable because the combination merely involved integrating Spain's specific database population techniques into the broader, known framework of Bhattacharya and Zeng.

4. Key Claim Construction Positions

• Petitioner argued for adopting constructions from a related district court proceeding. Key constructions included:
  • "calibration data": "modified or unmodified network measurement data associated with a geographic location"
  • "observed network measurement data": "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)"
• Both parties in the related litigation had stipulated that the method steps of claim 1 must occur in a specific order: "collecting" (limitation 1.4) must occur before "modifying" (1.6), which in turn must occur before "comparing" (1.7).

5. Arguments Regarding Discretionary Denial

• Against §325(d) Denial: Petitioner argued denial was unwarranted under the Advanced Bionics framework. Although Spain was cited in an Information Disclosure Statement (IDS) during prosecution of the ’104 patent, neither Bhattacharya nor Zeng were before the Examiner. Petitioner asserted that the Examiner's review of the art was not substantive and that the new combination of references presented arguments and art not previously considered. Specifically, the Examiner’s reasons for allowance stated that the prior art lacked a teaching of determining which of two signals has a greater magnitude and modifying data based on it, a limitation Petitioner contended was directly taught by the handoff logic in Zeng.
• Against §314(a) Denial (Fintiv): Petitioner argued the Fintiv factors strongly favored institution. A parallel district court case had already concluded, with the relevant claims found invalid under §101, and was now on appeal. Consequently, there was no scheduled trial date that could precede a Final Written Decision (FWD). Furthermore, Petitioner contended there was no overlap in the issues, as the IPR focused on obviousness under §103, while the district court decision was based on patentable subject matter under §101. Finally, Petitioner asserted the merits of the petition were compelling, which weighs heavily in favor of institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 6-11 of the ’104 patent as unpatentable.