Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 45
`Entered: August 27, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`K-40 ELECTRONICS, LLC,
`Petitioner,
`
`v.
`
`ESCORT, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00203
`Patent 7,999,721 B2
`_______________
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`WARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
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`

`

`IPR2013-00203
`Patent 7,999,721 B2
`
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`K-40 Electronics, LLC (“Petitioner”) filed a Petition for inter partes review
`
`of claims 1-10 of U.S. Patent No. 7,999,721 B2 (“the  ’721 patent”). Paper 1
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`(“Pet.”). Escort, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
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`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes review,
`
`on August 29, 2013, as to claims 1-10 of the ’721 patent (“challenged claims”).
`
`Paper 6 (“Dec.”).
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`After institution of inter partes review, Patent Owner filed a Response
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`(Paper 12, “PO Resp.”) and Petitioner filed a Reply (Paper 18, “Pet. Reply”). Oral
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`hearing was held on June 17, 2014. The hearing transcript has been entered in the
`
`record as Paper 44 (“Tr.”). The hearing included live oral testimony from the
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`named inventor of the ’721 patent, Steven K. Orr. Tr. 5:10–41:11.
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
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`reasons discussed below, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1-10 of the ’721 patent are unpatentable.
`
`B. Related Proceeding
`
`In addition to this Petition, we instituted inter partes review on October 11,
`
`2013 based on Petitioner’s challenges to the patentability of certain claims of
`
`Patent Owner’s U.S. Patent No. 6,670,905 (IPR2013-00240).
`
`C. The ’721 Patent
`
`The ’721 patent (Ex. 1001) is titled “Radar Detector with Navigational
`
`Function” and generally relates to a Global Positioning System (“GPS”)-enabled
`
`radar detector designed to process radar sources dynamically based on previously-
`
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`IPR2013-00203
`Patent 7,999,721 B2
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`stored geographically referenced information. Ex. 1001, Abstr. The patent
`
`explains that in the spectrum allocated by the Federal Communications
`
`Commission for police radar systems, there are increasing numbers of signals
`
`generated by other applications. Ex. 1001, col. 2, ll. 12-22. “As a result, radar
`
`detectors are increasingly generating false alarms, effectively ‘crying wolf,’
`
`reducing the significance of warnings from radar detectors.” Id. at col. 2, ll. 19-22.
`
`The patent describes a radar detector that includes technology for determining the
`
`location of the detector, and comparing this location to the location of known false
`
`alarm sources so as to vary the alarm provided by the radar detector in response to
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`false alarm sources. Id. at col. 4, ll. 21-39. Figure 1 of ’721 patent is reproduced
`
`below:
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`’721 patent, Figure 1
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`IPR2013-00203
`Patent 7,999,721 B2
`
`As shown above in Figure 1, the ’721 patent describes that vehicle 10 can be
`
`equipped with a radar detector having a GPS receiver enabled to identify its
`
`present coordinates so as to distinguish between police radar gun 18 and a false
`
`alarm radar signal from a stationary source at restaurant 16. Id. at col. 8, ll. 28-45.
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`Furthermore, the patent describes that in “location lockout” mode, the GPS-
`
`enabled radar detector can access a database and suppress all audible warnings of
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`radar signals at a particular location associated with a known source of spurious
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`police radar signals. Id. at col. 15, ll. 9-16.
`
`Claims 1 and 2 illustrate the claimed subject matter and are reproduced
`
`below:
`
`1. A navigation and police activity warning device
`comprising:
`
` a
`
` receiver section receiving signals generated in the
`context of law enforcement activity,
`
` a
`
` warning section responding to the receiver section and
`providing a warning if a received signal correlates to a law
`enforcement signal, the warning produced by the warning
`section varying in relation to a vehicle location derived from a
`position determining circuit,
`
` a
`
` navigational system providing a graphical display and
`navigational functions, the display including a display of
`navigational information including a map and stored geographic
`locations on said map for which the device stores data that is
`used by said warning section in varying the warning produced
`in response to a law enforcement signal.
`
`
`
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` 4
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`IPR2013-00203
`Patent 7,999,721 B2
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`
`2. A police warning receiver comprising:
`
` a
`
` receiver section adapted to receive electromagnetic
`signals indicative of police activity;
`
`an alert section responsive to the receiver section and
`adapted to provide an alert if a received electromagnetic signal
`correlates to a police signal;
`
` a
`
` position determining circuit generating a location
`signal; and
`
`storage for information associated with geographic
`locations.
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and/or 103 on the following specific grounds:
`
`Reference(s)
`
`Basis
`
`Claims challenged
`
`US 6,233,589 (Ex. 1002)
`(“Hoffberg”)
`US 6,204,798 (Ex. 1003)
`(“Fleming, III”)
`Fleming, III and Hoffberg
`
`§ 102
`
`1-10
`
`§ 102
`
`2-8 and 10
`
`§ 103
`
`2-10
`
`
`Pet. 19-45. We instituted inter partes review on all grounds on all
`
`challenged claims. Dec. 14.
`
`D. Claim Construction
`
`Consistent with the statute and the legislative history of the AIA, the Board
`
`will interpret claims of an unexpired patent using the broadest reasonable
`
`construction in light of the specification of the patent. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R.
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`IPR2013-00203
`Patent 7,999,721 B2
`
`§ 42.100(b). Under the broadest reasonable construction standard, claim terms are
`
`given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “providing a warning if a received signal correlates to a law
`enforcement signal”
`
`Independent claim 1 recites a “navigation and police activity warning
`
`device” comprising a “warning section,” which provides a “warning if a received
`
`signal correlates to a law enforcement signal.” Ex. 1001, col. 25, ll. 28-34.
`
`Independent claim 2 provides similar recitations regarding an alert provided by an
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`“alert section.” See Ex. 1001, col. 26, ll. 7-9. Patent Owner argues that the
`
`“warning section” in claim 1 and the “alert section” in claim 2 both require a
`
`function beyond a mere detection of a signal. PO Resp. 13. Specifically, Patent
`
`Owner argues that “warning” or “alert” section provides an alert to a signal only if
`
`a determination is made that the signal is a signal that is likely to be worth alerting,
`
`based on comparing it to the attributes of actual police signals. Id. Additionally,
`
`Patent Owner’s expert, Dr. John R. Grindon, states that claims 1 and 2 require “in
`
`addition to receiving a signal, a separate step of distinguishing that the signal
`
`correlates to a law enforcement signal, i.e. to police signals.” Ex. 2074 ¶ 19.
`
`Patent Owner cites the following statement in the Specification as support for this
`
`separate step of distinguishing that the received signal correlates to a law
`
`enforcement signal:
`
`Microwave receiver 24 and DSP 26 may utilize any of the
`techniques described above and in the above-referenced
`patents, for rejecting noise and increasing discrimination
`between actual and spurious police radar signals.
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`IPR2013-00203
`Patent 7,999,721 B2
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`PO Resp. 13 (citing Ex. 1001, col. 8, ll. 45-52) (emphasis added). Therefore, the
`
`Specification states that the numerous prior art patents incorporated by reference in
`
`the ’721 patent provide a number of known techniques for correlating a received
`
`signal to a law enforcement signal. See id.
`
`Petitioner disagrees with Patent Owner’s proposed construction and argues
`
`that it is an improper attempt to narrow the term “correlating” to techniques that
`
`are not required by the claims and are admitted to be in the prior art. Pet. Reply 8-
`
`10. Furthermore, Petitioner argues that Patent Owner deliberately side-steps
`
`defining what correlating according to “any of the techniques” entails. Id.
`
`
`
`We are not persuaded by Patent Owner’s argument that “correlates to a law
`
`enforcement signal” should be construed to mean an undefined determination
`
`made by comparing a received signal to the attributes of actual police signals. As
`
`Patent Owner stated in the Specification, there are numerous techniques known in
`
`the prior art for comparing a received signal to known characteristics of law
`
`enforcement signals. See Ex. 1001, col. 8, ll. 45-52. Furthermore, as noted by the
`
`Petitioner, Patent Owner’s expert, Dr. Grindon, stated that standard examples of
`
`correlating a received signal to a law enforcement signal include adjusting
`
`city/highway signal detection thresholds and making sure a signal is present
`
`through several sweeps. Pet. Reply 12 (citing Ex. 1019, 36:15-37:4; 37:5-18).
`
`Therefore, as generally set forth in the disclosures of standard correlation
`
`techniques incorporated into the ’721 patent by reference, correlating a received
`
`signal must be interpreted broadly as analyzing one or more characteristics of a
`
`received signal in comparison with the known characteristics of law enforcement
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` 7
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`signals.
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`IPR2013-00203
`Patent 7,999,721 B2
`
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`Accordingly, in light of the Specification and in the context of the claims,
`
`we construe “providing a warning if a received signal correlates to a law
`
`enforcement signal” as “providing a warning if a received signal correlates to one
`
`or more characteristics of a law enforcement signal.”
`
`2. “position determining circuit”
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`Claim 1 recites a “warning produced by the warning section varying in
`
`relation to a vehicle location derived from a position determining circuit.”
`
`Ex. 1001, col. 25, ll. 36 (emphasis added). Claim 2 recites a “position determining
`
`circuit generating a location signal.” Ex. 1001, col. 26, ll. 10. Patent Owner
`
`proposes that “position determining circuit” should be construed to mean “a device
`
`for receiving information related to geographic locations.” PO Resp. 22. The term
`
`“position determining circuit” is not used in the Specification, other than its
`
`recitation in the claims; thus, no special definition is given to the term in the
`
`Specification.
`
`The Specification of the ’721 patent states generally that “the invention
`
`provides a radar detector that includes technology for determining the location of
`
`the detector.” Ex. 1001, col. 4, ll. 20-22. In one embodiment, the Specification
`
`describes that “a radar detector utilizes a GPS system to determine its current
`
`position.” Id. at col. 4, ll. 32-34 (emphasis added). Therefore, the Specification
`
`provides that the “position determining circuit,” the GPS system in one
`
`embodiment, is used to determine the position of the associated police warning
`
`device. See id. The Specification further describes that “vehicle 10 is equipped
`
`with a radar detector able to identify the present coordinates and/or velocity of the
`
`vehicle, e.g. using an associated GPS receiver or alternatively a receiver of land-
`
`based signals such as LORAN [Long Range Navigation].” Id. at col. 8, ll. 34-38.
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`IPR2013-00203
`Patent 7,999,721 B2
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`Thus, the “position determining circuit” of these embodiments receives a signal
`
`from which the position of the radar detector can be determined. Furthermore,
`
`claim 2 requires that the “position determining circuit” actually generate a location
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`signal. Ex. 1001, col. 26, ll. 10-11.
`
`We determine that the “position determining circuit” must be involved in
`
`determining the position of the device, rather than merely receiving information
`
`related to geographic locations, as proposed by Patent Owner. Accordingly, in
`
`light of the Specification and in the context of the claims, we construe “position
`
`determining circuit” as “a circuit for determining a position of a device.”
`
`3. “communication circuitry”
`
`Claim 5 recites “communication circuitry for obtaining information on
`
`geographic locations that was gathered by another police warning receiver.”
`
`Ex. 1001, col. 26, ll. 22-25. Claim 10 recites “communication circuitry for
`
`obtaining said signal information from a general purpose computer.” Ex. 1001,
`
`col. 26, ll. 37-39. Patent Owner proposes that to be consistent with the
`
`Specification, the term “communication circuitry” must be interpreted to require a
`
`circuit supporting a wired, digital connection of the types that are identified in the
`
`Specification. PO Resp. 26 (emphasis added). In support of its proposed
`
`construction, Patent Owner argues that the ’721 patent describes communication
`
`with a general purpose computer via an interface connector in only one way — a
`
`wired digital connection to the police warning receiver. Id. at 23.
`
`Patent Owner’s arguments, however, are not supported by the language of
`
`the Specification. The ’721 patent discloses:
`
`The interface connector used by the receiver may take other
`forms than the known USB standard. It may use any computer
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`IPR2013-00203
`Patent 7,999,721 B2
`
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`interface standard (e.g., IEEE 488), or an automotive wiring standard,
`the J1854, CAN, BH12 and LIN standards, or others.
`
`Ex. 1001, col. 24, ll. 30-34 (emphases added).
`
`Patent Owner argues that because wired connections are the only specific
`
`examples disclosed in the ’721 patent, the term “communication circuitry” should
`
`be construed to exclude wireless interfaces. Even in cases where the specification
`
`describes only a single embodiment, we do not construe necessarily the claims as
`
`being limited to that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C.,
`
`669 F.3d 1362, 1365 (Fed. Cir. 2012) (holding that it is not enough that the only
`
`embodiment, or all of the embodiments, contain a particular limitation to limit a
`
`claim to that particular limitation.). Moreover, we decline to add limitations into
`
`the claims in the absence of a special definition set forth in the Specification.
`
`Petitioner argues that the ’721 patent does not limit the types of communication
`
`circuitry that can be used. Pet. Reply 13. We determine that because Patent
`
`Owner failed to set forth a special definition for the term “communication
`
`circuitry” in the ’721 patent Specification, we are not persuaded to limit the
`
`construction of the term to only wired communication. Accordingly, we do not
`
`adopt Patent Owner’s proposal to construe the term “communication circuitry” to
`
`be limited only to wired connections.
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`
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`A. Status of Fleming, III and Hoffberg as Prior Art
`
`II. ANALYSIS
`
`Patent Owner argues that both of the references relied upon by Petitioner,
`
`Fleming, III and Hoffberg, are not, in fact, prior art because they have been
`
`antedated by a showing of a prior invention by the sole inventor of the ’721 patent,
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`Patent 7,999,721 B2
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`Mr. Orr. PO Resp. 35. Specifically, Patent Owner argues that prior to January 27,
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`1998, the earliest effective date of Hoffberg (the effective filing date of Fleming,
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`III is Apr. 14, 1999), Mr. Orr “actually reduced to practice each of the claims of
`
`the ’721 patent.” Id. (citing Declaration of Steven K. “Steve” Orr (“Orr
`
`Declaration”), Ex. 2073 ¶ 5). In support of its allegation, Patent Owner provides a
`
`chart comparing the elements of claims 1-10 to the statements made in the Orr
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`Declaration regarding Mr. Orr’s efforts to reduce the claimed invention to practice.
`
`Id. at 36-41. From 1988 until February 14, 1997, Mr. Orr was the Manager of
`
`Advanced Technology at Cincinnati Microwave Inc. (“CMI”), the company from
`
`which Patent Owner acquired the ’721 patent, and from July 1998 until the present,
`
`Mr. Orr has been a consultant for Patent Owner. Id. ¶ 4.
`
`“In order to establish an actual reduction to practice, [a party] must establish
`
`three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process
`
`that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention
`
`would work for its intended purpose,’” and “(3) the existence of sufficient
`
`evidence to corroborate inventor testimony regarding these events.” Medichem,
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`S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v.
`
`Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’
`
`analysis is applied to determine whether the inventor’s prior conception testimony
`
`has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).
`
`As Patent Owner establishes, claims 1-10 of the ’721 patent relate to the
`
`“combination of a radar detector and [a] position[] determining circuit, e.g. a
`
`global positioning system (“GPS”) receiver.” PO Resp. 9-10; see also Ex. 1001,
`
`col. 4, ll. 40-44. In his Declaration, Mr. Orr testifies that “[p]rior to January 27,
`
`1998, I actually reduced to practice claims 1-10 of the ’721 patent.” Ex. 2073 ¶ 5.
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`Patent 7,999,721 B2
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`Mr. Orr’s testimony regarding his actual reduction to practice is based upon his
`
`work on two prototypes, one in 1992 and another in 1996. See id. ¶¶ 5-82.
`
`In evaluating the date of the actual reduction to practice, we begin with the
`
`key aspects of the claimed invention, namely claim 1’s recitation “the warning
`
`produced by the warning section varying in relation to a vehicle location derived
`
`from a position determining circuit.” Ex. 1001, col. 25, ll. 34-36. Patent Owner
`
`and Mr. Orr generally refer to this concept as the GPS lockout concept, as the
`
`device can lockout certain false alarms experienced at a particular GPS location.
`
`See Ex. 2073 ¶¶ 79-82. Furthermore, we analyze the recitation of the “position
`
`determining circuit” in claim 2.
`
`1. 1992 Prototype
`
`Mr. Orr testifies that in 1992, he created and experimented with a prototype
`
`including an Escort Passport 3100 or 3200 Radar Detector and a “position
`
`determining circuit in the form of a Lanier tape recorder to record the
`
`corresponding geographical location of the radar signal.” Id. ¶¶ 5-6. The Lanier
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`tape recorder was used by Mr. Orr to record his voice stating the geographic
`
`location of his vehicle when the radar detector encountered a radar signal sufficient
`
`for alert. Id. ¶ 6. Specifically, Mr. Orr alleges that the Lanier tape recorder in the
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`1992 prototype meets the claimed limitation of a “position determining circuit.”
`
`Id.
`
`We determine that Mr. Orr’s testimony regarding the 1992 prototype is
`
`insufficient to establish that the embodiment constructed met all the limitations of
`
`the claimed invention. See Medichem, 437 F.3d at 1169 (holding that actual
`
`reduction to practice requires “construct[ion of] an embodiment . . . that met all the
`
`limitations”) (citations omitted). As discussed above, we construe the term
`
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`Patent 7,999,721 B2
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`“positioning determining circuit” as “a circuit for determining a position of a
`
`device” (emphasis added). The Lanier tape recorder used by Mr. Orr in the 1992
`
`prototype was used merely as an electronic notepad to record the notes of Mr. Orr
`
`regarding his observations during tests with the radar detector. See Tr. 14:19-23.1
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`Mr. Orr could have performed the same task with a pen and paper. Contrary to
`
`requirements of the claimed invention, the Lanier tape recorder could not be relied
`
`upon to determine the position of the police activity warning device. Therefore,
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`the 1992 prototype fails at least to meet the limitation of a “position determining
`
`circuit,” required by the challenged claims.
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`2. 1996 Prototype
`
`With respect to the 1996 prototype, Mr. Orr provides testimony regarding
`
`test data obtained through the testing with a Rockwell NavCard and a laptop. See
`
`Ex. 2073, ¶¶ 32-76. Generally, Mr. Orr states in his Declaration that “my
`
`prototype had a position determining circuit” and an alert section that would “alter
`
`and/or not provide the alert if the location signal correlated to a location of a
`
`rejectable signal.” Id. ¶ 92. Mr. Orr further testifies that he drafted software code
`
`to demonstrate the GPS lockout concept of the claimed invention with the 1996
`
`prototype. Id. ¶ 78.
`
`The only software file in the record, however, that Patent Owner alleges
`
`existed prior to January 27, 1998 is the file titled tst4600k.bas (Ex. 2086).
`
`Tr. 35:13-21. Mr. Orr concedes that there is no software code in this tst4600k.bas
`
`file that relates to a position determining circuit. Id. at 35, l. 25–36, l. 3 (Q: “there
`
`
`1 At the oral hearing, Mr. Orr testified: “I would take the Lanier recorder and I
`would speak into it, this is the tenth event, and I would speak the words of the
`conditions that were present during that moment.” Tr. 14, ll. 19-23.
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`13
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`is nothing in this particular file, Exhibit 2086, that relates to a position determining
`
`circuit?”; A: “No.”). Mr. Orr testified that the tst4600k.bas file (Ex. 2086) is
`
`missing forty-seven lines of code that provided the functionality of the position
`
`determining circuit. Id. at 36, ll. 13-20. Mr. Orr further testified that Patent Owner
`
`was unable to recover any file containing the missing forty-seven lines of code. Id.
`
`The record includes additional software code files drafted by Mr. Orr, graph2.bas
`
`(Ex. 1010) and graph3.bas (Ex. 1011, 1012), which Mr. Orr alleged implemented
`
`the position determining circuit. Ex. 1018, 30, l. 6–31, l. 21; Ex. 1023, 28, ll.5-8.
`
`Tr. 35:6-24. The graph2.bas and graph3.bas files, however, were drafted by Mr.
`
`Orr in 2010 and later for the purposes of litigation. See id.
`
`In the analogous case of In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir.
`
`2011), the Federal Circuit affirmed the Board’s determination that the evidence
`
`provided by the patent applicant did not corroborate sufficiently the inventor’s
`
`claimed actual reduction to practice of an electronic mail system. Id. at 1291. In
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`that case, NTP argued that a Telefind E-mail Integration document (“Telefind”)
`
`would corroborate the inventor’s testimony. Id. NTP submitted Revision 2 of the
`
`Telefind document, dated after the critical date, as evidence of Revision 0 of the
`
`Telefind document, allegedly created before the critical date. Id. NTP’s inventor
`
`testified that the Telefind document was not changed significantly from Revision 0
`
`to Revision 2. The Federal Circuit rejected NTP’s argument as circular because
`
`NTP sought to corroborate the inventor’s testimony with the Telefind document,
`
`but, at the same time, attempted to corroborate the date of the Telefind document
`
`with the inventor’s testimony. Id. Similarly, here, Patent Owner attempts to
`
`corroborate Mr. Orr’s testimony regarding the reduction to practice of the GPS
`
`lockout concept and the position determining circuit with the tst4600k.bas file (Ex.
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`IPR2013-00203
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`2086), but, at the same time, attempts to corroborate the missing functionality from
`
`this file with inventor testimony regarding later versions of the file created long
`
`after the effective date of the asserted prior art.
`
`Patent Owner fails to provide any objective evidence to corroborate
`
`Mr. Orr’s testimony that he reduced to practice the GPS lockout concept and
`
`associated position determining circuit prior to January 27, 1998 other than the
`
`tst4600k.bas file (Ex. 2086), which he concedes does not incorporate the position
`
`determining circuit. See Ex. 2073, ¶¶ 79-95. For example, Mr. Orr states in his
`
`Declaration that he “used the laptop and the spacebar in the laboratory in Stage 1 to
`
`illustrate the GPS lockout concept to other CMI employees,” but failed to cite any
`
`evidence to corroborate this testimony. Id. ¶ 80. Furthermore, Mr. Orr states in his
`
`Declaration that “my prototype had a position determining circuit” and an alert
`
`section that would “alter and/or not provide the alert if the location signal
`
`correlated to a location of a rejectable signal.” Id. ¶ 92. Patent Owner fails,
`
`however, to cite to any evidence to corroborate this testimony by Mr. Orr. See id.
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`¶¶ 80, 92. Mr. Orr was questioned at the oral hearing as to whether there was any
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`evidence in the record of the successful test results or observations of the GPS
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`lockout feature that Mr. Orr alleged to have reduced to practice in his Declaration.
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`Tr. 39:15–41:5. During the hearing, Mr. Orr testified that he was not aware of any
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`documents submitted in the record by Patent Owner providing such test results or
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`observations. See id.
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`In addition to a failure to provide sufficient objective evidence supporting
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`the actual reduction to practice by the 1996 prototype of the position determining
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`circuit and the associated GPS lockout concept, Patent Owner fails to provide
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`sufficient corroborating testimony by others that witnessed Mr. Orr’s prototype
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`successfully implementing the GPS lockout concept. Specifically, Patent Owner
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`submitted testimony from four declarants, fellow employees of Mr. Orr at CMI:
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`(1) Beth Andrews (Ex. 2053), (2) Gregory Blair (Ex. 2054), (3) Jim Brandon
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`(Ex. 2055), and (4) Daniel Kindel (Ex. 2056). Ms. Andrews and Mr. Blair testified
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`only that in 1996, the GPS lockout concept was a desired feature for a future radar
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`detector product by CMI. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Neither Ms.
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`Andrews nor Mr. Blair testified, however, that they witnessed or even were aware
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`of an actual reduction to practice of a prototype demonstrating the GPS lockout
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`concept. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Mr. Kindel testified that in 1996,
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`Mr. Orr was conducting research into the benefits and feasibility of adding GPS to
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`a radar detector, but Mr. Kindel failed to state that he witnessed an actual reduction
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`to practice of such a prototype. See Ex. 2056 ¶ 3-6. Finally, Mr. Brandon testified
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`that during his time at CMI, he was aware that Mr. Orr was working on a GPS
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`enabled radar detector prototype prior to 1998 and the “purpose of this prototype
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`was to mark the locations of false radar signals.” Ex. 2055 ¶ 2-3. Mr. Brandon
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`fails, however, to state that he witnessed or even was aware of an actual reduction
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`to practice of such a prototype. See id.
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`Here, the only evidence of the successful reduction to practice of the
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`position determining circuit and the associated GPS lockout concept of the claimed
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`invention for its intended purpose prior to January 27, 1998 is the testimony of the
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`inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of
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`earlier invention alone are insufficient—an alleged date of invention must be
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`corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at
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`1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
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`1998)). We conclude that the record is lacking sufficient evidence corroborating
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`Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we
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`determine that Patent Owner has failed to prove by a preponderance of the
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`evidence its claim of reduction to practice of the challenged claims prior to January
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`27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’721 patent.
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`B. Anticipation by Hoffberg
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`Petitioner contends that claims 1-10 of the ’721 patent are anticipated by
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`Hoffberg.2 Pet. 19-38. “A claim is anticipated only if each and every element as
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`set forth in the claim is found, either expressly or inherently described, in a single
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`prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
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`631 (Fed. Cir. 1987).
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`1. Overview of Hoffberg
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`Hoffberg discloses a mobile communication device “including police radar
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`and LIDAR detectors, user output, memory, central processor, GPS receiver and
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`RF transceiver.” Ex. 1002, col. 24, ll. 29-32. The mobile communication device
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`in Hoffberg is enabled to process current location information in conjunction with
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`stored locations and associated events to determine a priority of the associated
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`events. Id. at Abstr. Figure 1 of Hoffberg is reproduced below.
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`2 US 6,252,544 B1, issued June 26, 2001 (Ex. 1002).
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`Hoffberg, Figure 1
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`
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`As shown above in Figure 1, mobile communications device 1 can include location
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`sensing system 2 for producing a location output, memory 4 for storing a set of
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`locations and associated events, and processor 6. Id. at col. 26, ll. 36-40. Mobile
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`communications device 1 in Hoffberg also includes an event detector having radar
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`detector 18 and LIDAR detector 19. Id. at col. 30, ll. 44-46. Hoffberg discloses
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`that its mobile communications device 1 can suppress false alarms by correlating
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`detecting events with false alarm events stored in memory 4. Id. at col. 29, ll. 8-11
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`(“It is noted that, in the case of ‘false alarms’, the response of the unit is to detect
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`the event, e.g., radar signal, correlate it with a stored ‘false alarm’ event, and
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`suppress an alarm or modify the alarm signal.”). “Thus, information stored in
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`memory and/or transmitted between units, may signify an important alarm or a
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`suppression of an erroneous alarm.” Id. at col. 29, ll. 11-13.
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`
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`Hoffberg discloses that its mobile communications device 1 can filter sensor
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`outputs based on present sensor outputs, past experience with a particular location
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`in question, and the experience of others at the particular location. Ex. 1002,
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`col. 28, l. 63 – col. 29, l. 4. Furthermore, Hoffberg discloses that further
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`information can be stored about a detected event in addition to the location and
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`source of the event. Id. at col. 30, ll. 20-24. For example, Hoffberg discloses that
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`“mobile police radar ‘traps’ are often relocated,” so these types of events can be
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`stored with an expiration date. Id. at col. 30, ll. 31-35.
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`2. Analysis
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`a. Claims 1-4 and 6-9
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`Petitioner contends that claims 1-4 and 6-9 are anticipated by Hoffberg.
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`Pet. 19-38. Patent Owner counters that Mr. Orr has antedated successfully
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`Hoffberg. PO Resp. 35. As discussed above, we are not persuaded by Patent
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`Owner’s attempt to prove actual reduction to practice prior to the effective date of
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`Hoffberg on January 27, 1998.
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`As to the merits of the proposed grounds of anticipation with respect to
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`independent claims 1 and 2, Patent Owner argues that Hoffberg fails to disclose the
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`correlation of a received signal to a law enforcement signal. PO Resp. 27.
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`Specifically, Patent Owner argues that “Hoffberg does not distinguish police
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`signals from other types of signals, so that a warning is provided only ‘if a received
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`signal correlates to a law enforcement signal,’ as is recited in all of the Orr claims.”
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`Id. at 28.
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`Claim 1 recites “providing a warning if a received signal correlates to a law
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`enforcement signal.” Ex. 1001, col. 25, ll. 33-34; see also id. at col. 26, ll. 8-9,
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`claim 2 (“provide an alert if a received electromagnetic signal correlates to a police
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`signal”). With respect to this limitation of claim 1, Petitioner cites to Hoffberg’s
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`disclosure of the use of a “modified commercially available radar detector, to
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`produce a serial data stream or parallel signal set.” Pet. 22 (citing Ex. 1002, col.
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`33, ll. 10-18). Patent Owner argues that Hoffberg’s disclosure is deficient because
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`the claimed “correlates” limitation requires the device to distinguish between
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`police activities and non-po