Trials@uspto.gov
` 571.272.7822
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`Paper 24
`Filed: September 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`BLACKBERRY CORPORATION,
`Petitioner,
`
`v.
`
`NXP B.V.,
`Patent Owner.
`_____________
`
`Case IPR2013-00233
`Patent 6,501,420 B2
`_______________
`
`
`Before JENNIFER S. BISK, TRENTON A. WARD, and
`BRIAN P. MURPHY, Administrative Patent Judges.
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`WARD, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
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`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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` 571.272.7822
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`
`
`Paper 24
`Filed: September 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BLACKBERRY CORPORATION,
`Petitioner,
`
`v.
`
`NXP B.V.,
`Patent Owner.
`_____________
`
`Case IPR2013-00233
`Patent 6,501,420 B2
`_______________
`
`
`Before JENNIFER S. BISK, TRENTON A. WARD, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
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`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2013-00233
`Patent 6,501,420 B2
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`A. Background
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`I.
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`INTRODUCTION
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`Blackberry Corporation (“Petitioner”) filed a Petition for inter partes
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`review of claim 3 of U.S. Patent No. 6,501,420 B2 (“the ’420 patent”).
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`Paper 1 (“Pet.”). NXP B.V. (“Patent Owner”) timely filed a Preliminary
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`Response. Paper 7 (“Prelim. Resp.”). On October 1, 2013, pursuant to 35
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`U.S.C. § 314, we instituted inter partes review, as to claim 3 of the
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`’420 patent. Paper 9 (“Dec.”).
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`After institution of trial, Patent Owner filed a Response (Paper 15,
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`“PO Resp.”) and Petitioner filed a Reply (Paper 16, “Pet. Reply”). Oral
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`hearing was held on June 2, 2014. The hearing transcript has been entered
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`in the record as Paper 23 (“Tr.”).
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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
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`the reasons discussed below, we determine that Petitioner has shown by a
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`preponderance of the evidence that claim 3 of the ’420 patent is
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`unpatentable.
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`B. Related Proceedings
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`In addition to this petition, on September 30, 2013, we instituted inter
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`partes review based on Petitioner’s challenges to the patentability of certain
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`claims of Patent Owner’s U.S. Patent No. 5,639,697 (IPR2013-00232). Our
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`Final Decision in that proceeding is being entered concurrently with this
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`Decision. The ’420 patent is the subject of litigation between the parties
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`IPR2013-00233
`Patent 6,501,420 B2
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`titled NXP B.V. v. Research In Motion Ltd., Case No. 6:12-cv-498 (M.D.
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`Fla.).
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`C. The ’420 Patent
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`The ’420 patent (Ex. 1001) is titled “Mobile Cellular Telephone
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`Comprising a GPS Receiver” and generally relates to a mobile cellular
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`telephone with a Global Positioning System (“GPS”) receiver arranged to
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`power up in response to direct interaction between the user and the mobile
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`phone. Ex. 1001, Abstr. The ’420 patent explains that for a mobile
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`telephone with a GPS receiver, the power consumption of the GPS receiver
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`during GPS signal acquisition, tracking, and navigation can be high; thus, it
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`is preferable that the GPS receiver is powered up only when required. Id. at
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`col. 1, ll. 18–23. Figure 1 of the ’420 patent is reproduced below:
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`’420 patent, Figure 1
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`IPR2013-00233
`Patent 6,501,420 B2
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`As shown above in Figure 1, the ’420 patent describes mobile cellular
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`telephone 100 comprising a communications transmitter and receiver 102
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`connected to communication antenna 101, communications microprocessor
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`103, and GPS receiver 105. Ex. 1001, col. 2, l. 60–col. 3, l. 5. The ’420
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`patent describes that the GPS receiver may be arranged to power up in
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`response to the user selecting a particular web site, for example, a web site
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`associated with a location-based service, whereby the call location is
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`determined in anticipation of a request from that web site. Id. at col. 2,
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`ll. 40–45.
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`Claim 3 is reproduced below:
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`telephone
`internet enabled, mobile cellular
`3. An
`comprising a communications transmitter and receiver
`arranged for two-way communication with a base station,
`and a GPS receiver, wherein the GPS receiver is arranged
`to power up in response to a user selecting a particular
`web site.
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`D. Grounds of Unpatentability
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`In the Institution Decision, we instituted an inter partes review of
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`claim 3, the only challenged claim, on the following grounds:
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`Reference(s)
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`Koss1 and O’Neill2
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`Koss and Sheynblat3
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`Basis
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`§ 103
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`§ 103
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`1 US 6,731,612 B1 (Ex. 1004) (“Koss”)
`2 US 6,141,570 (Ex. 1005) (“O’Neill”)
`3 US 6,314,308 B1 (Ex. 1006) (“Sheynblat”)
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`IPR2013-00233
`Patent 6,501,420 B2
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`Reference(s)
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`Jessup4 and O’Neill
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`Jessup and Sheynblat
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`Basis
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`§ 103
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`§ 103
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`Dec. 18.
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`E. Claim Construction
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`The Board interprets claims using the broadest reasonable
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`construction in light of the specification of the patent in which they appear.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
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`14, 2012); 37 C.F.R. § 42.100(b). There is a “heavy presumption” that a
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`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`Petitioner does not argue that any of the claim terms in the challenged
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`claims should take on meanings other than their ordinary and customary
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`meanings. See Pet. 7–8. Patent Owner argues that that the plain and
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`ordinary meaning of the words in their common usage applies, taken in the
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`context of the ’420 patent. PO Resp. 9.
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`Specifically, Patent Owner argues that the plain and ordinary meaning
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`of the claim 3 term “power up,” is that the power supplied to something is
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`increased. Id. (citing Ex. 2006 ¶ 46). During the hearing, Petitioner
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`acknowledged that “selectively increasing or adding power to the component
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`is the broadest reasonable interpretation” of “power up.” Tr. 7:3–11. We
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`determine that both proposed constructions are substantially equivalent.
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`4 US 7,330,883 B1 (Ex. 1007) (“Jessup”)
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`IPR2013-00233
`Patent 6,501,420 B2
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`Furthermore, the Specification uses the term “power up” to describe
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`providing power to the GPS receiver. Ex. 1001, Abstr. (“a GPS receiver
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`(105, 106) arranged to power up in response to direct interaction between a
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`user and the mobile phone (100) after the telephone has been switched on.”).
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`Accordingly, in light the Specification and in the context of the claims, we
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`construe “power up” to mean increasing the power supplied.
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`II. ANALYSIS
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`A. Obviousness of Claim 3 Over Koss and O’Neill
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`1. Overview of Koss (Ex. 1004)
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`Koss discloses a hyperlink browsing system that includes a plurality
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`of mobile hyperlink browsers that communicate wirelessly with a plurality
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`of servers having geographically-dependent information content. Ex. 1004,
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`Abstr. Koss discloses that the hyperlink browsers have access to positioning
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`receivers that generate the geographic coordinates of the locations of the
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`browsers, such that the hyperlink browsers can include the geographic
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`coordinates when submitting HTTP requests. Ex. 1004, Abstr.
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`Specifically, Koss discloses a mobile computer including a
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`positioning receiver, i.e., a GPS receiver that generates geographic
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`coordinates of the mobile computer and its user. Ex. 1004, col. 3, ll. 24–28.
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`According to Koss, a user of the mobile computer can select a hyperlink,
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`such that the mobile computer obtains the current geographic coordinates of
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`the mobile computer’s GPS receivers, and sends an HTTP request to a
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`hyperlinked content network including the embedded GPS location
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`parameters. Ex. 1004, col. 5, ll. 39–48. More particularly, Koss discloses
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`sending HTTP requests for web sites along with the embedded GPS location
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`information of the mobile computer sending the request. Id.
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`2. Overview of O’Neill (Ex. 1005)
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`O’Neill discloses a wireless telephone having a wireless
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`communication transceiver, a GPS receiver, and a controller, wherein the
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`controller adapts intelligently its GPS data maintenance schedule according
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`to a unique set of indicators derived from the wireless telephone’s operating
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`conditions. Ex. 1005, Abstr. Figure 1 of O’Neill is reproduced below.
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`O’Neill, Figure 1
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`As illustrated above in Figure 1, O’Neill discloses wireless telephone 10
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`having wireless communication transceiver 16, GPS receiver 18, control
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`processor 22, and switch 40 controlled by processor 22 to control power to
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`GPS receiver 18. Ex. 1005, col. 4, ll. 1–4, 17–18. O’Neill discloses that
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`control processor 22 operates to “provide an efficient use of battery power to
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`maintain the freshness of short-term and long-term information, while
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`conserving battery energy for primary telecommunication functions.” Id. at
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`col. 4, ll. 17–22 (emphasis added). Specifically, O’Neill discloses that
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`control processor 22 is responsive to operating conditions of wireless
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`telephone 10, which affect the GPS data maintenance schedule by
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`lengthening the schedule, delaying an individual measurement, or obtaining
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`information immediately. Id. at col. 4, ll. 30–34. For example, “when the
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`wireless telephone 10 is about to make or receive a call or initiate some geo-
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`location feature, the GPS receiver 18 anticipates and executes a fresh short-
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`term information update.” Id. at col. 4, ll. 48–51. Thus, O’Neill discloses
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`selectively activating the GPS receiver to conserve battery energy. Id.
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`3. Analysis
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`Petitioner contends that claim 3 is obvious over Koss in view of
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`O’Neill. Pet. 15–23. Petitioner argues that Koss teaches the required
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`“internet enabled, mobile cellular telephone comprising a communications
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`transmitter and receiver arranged for two-way communication with a base
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`station, and a GPS receiver” by disclosing a mobile computer, which may be
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`a hand-held device, including a positioning receiver, i.e., a GPS receiver that
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`generates geographic coordinates of the mobile computer and its user.
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`Pet. 16–20 (citing Ex. 1004, col. 3, ll. 24–30). Furthermore, Petitioner
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`argues that Koss discloses that the user can select a particular web site by
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`disclosing that the user can send an HTTP request with embedded GPS
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`location parameters. Pet. 19–20 (citing Ex. 1004, col. 5, ll. 34–48).
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`Additionally, Petitioner argues that O’Neill teaches intelligent maintenance
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`of power consumption by a GPS receiver by acquiring GPS location
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`information based on the user’s activity. Pet. 22 (citing Ex. 1005, col. 4,
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`ll. 48–51, col. 5, ll. 37–44).
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`Petitioner’s expert, Dr. Michael Caloyannides, states that power
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`conservation was known to be a pervasive issue in the cellular telephone art
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`and combining the teachings of Koss with the selective powering up of the
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`GPS receiver taught in O’Neill would have been well-recognized in the art
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`as a power conservation technique. Ex. 1009 ¶ 54. Therefore, Petitioner
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`argues that it would have been obvious to modify the teachings of Koss to
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`include O’Neill’s teachings regarding powering up the GPS receiver, in
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`response to a user selecting a particular web site. Pet. 23–24. We agree
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`with Petitioner’s assertions.
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`Patent Owner makes several arguments in response to Petitioner’s
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`assertions. First, Patent Owner argues that Koss is not in the same field as
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`the ’420 patent because Koss teaches a mobile computer that can be used
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`with a cellular telephone and not the “internet enabled, mobile cellular
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`telephone” recited in claim 3. PO Resp. 10. Petitioner disagrees and argues
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`that Koss does, in fact, teach an “internet enabled, mobile cellular
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`telephone.” Pet. Reply 3. Specifically, Petitioner responds that Koss
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`discloses generally that the “invention relates to mobile Web browsers, and
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`to the utilization of GPS-generated geographical information in conjunction
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`with such Web browsers.” Id. (quoting Ex. 1004, col. 1, ll. 5–7) (internal
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`quotation marks omitted). Furthermore, Petitioner cites to Koss’s disclosure
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`that “the invention is implemented . . . by a mobile computer that is
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`particularly adapted for the automotive, handheld, or other mobile
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`environments” and that “those skilled in the art will appreciate that the
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`invention may be practiced with other computer system configurations,
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`including hand-held devices . . . .” Id. (emphases added) (quoting Ex. 1004,
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`col. 2, ll. 1–24) (internal quotation marks omitted). In view of the cited
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`disclosures from Koss regarding hand-held mobile computers, we are not
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`persuaded by Patent Owner’s argument that Koss is directed to a different
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`field than the ’420 patent.
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`Patent Owner further argues that because Koss discloses that its
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`mobile computer is to be used with a cellular telephone, the mobile
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`computer itself cannot be a cellular telephone. PO Resp. 11. Petitioner
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`counters that the portion of Koss cited by Patent Owner for this argument
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`also states that the communications device may be “some other type of
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`communications adapter using digital cellular technology.” Pet. Reply 4
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`(emphasis added) (quoting Ex. 1004, col. 3, ll. 39–40) (internal quotation
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`marks omitted). We agree with Petitioner that one of ordinary skill would
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`have understood that a mobile computer using digital cellular technology
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`could have been a handheld cellular telephone. Id. (citing col. 1, ll. 13-16;
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`Ex. 1010 ¶ 33). Mobile cellular telephones, moreover, were well known in
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`the art as of the ’420 patent’s priority filing date. Ex. 1001, col. 1, ll. 9-12,
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`col. 2, ll. 65-67; Ex. 1010 ¶ 33. In addition to disclosing the use of other
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`digital cellular technology, Koss discloses that its “mobile computer 20 has a
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`wireless communicator interface.” Ex. 1004, col. 3, ll. 35–36. Therefore,
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`we determine that the disclosure in Koss encompasses an “internet enabled,
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`mobile cellular telephone,” as recited in claim 3.
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`Second, Patent Owner argues that Koss’s mobile computer 20 is not
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`subject to GPS receiver power conservation concerns that arise in mobile
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`cellular telephones, because it is a large mobile computer with substantial
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`battery capacity. PO Resp. 13. Thus, Patent Owner argues that one of
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`ordinary skill in the art seeking to conserve energy in an “internet enabled,
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`mobile cellular telephone” would not look to Koss. Id. Patent Owner argues
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`that one of ordinary skill in the art would not have combined Koss with
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`O’Neill, because power consumption would have been a concern only for
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`the wireless phone with GPS receiver described in O’Neill, not for Koss’s
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`large mobile computer with substantial battery capacity. PO Resp. 16–17.
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`Patent Owner’s argument that Koss discloses only large mobile
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`computers with substantial battery capacity is contrary to the express
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`disclosure in Koss that its mobile computer may be a “hand-held device[].”
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`Ex. 1004, col. 2, ll. 1–24. Furthermore, as Patent Owner’s counsel conceded
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`during the oral hearing, all mobile devices under certain circumstances have
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`power conservation concerns, including laptop mobile computers. Tr. 24:6–
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`8 (“Would you agree that all mobile devices have some sort of concern with
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`power conservation? Mr. Schaeffer: Under certain circumstance[s], yes.”).
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`Therefore, we determine that one of ordinary skill in the art looking at Koss
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`would realize that power consumption is a concern for the mobile computer
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`device. Furthermore, O’Neill expressly discloses, “it is common practice to
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`operate a GPS receiver in a stand-by mode of readiness” in an “effort to
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`preserve battery energy.” Ex. 1005, col. 2, ll. 7–11. Accordingly, we are
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`not persuaded by Patent Owner’s argument that one of skill in the art would
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`not have had a reason to combine Koss and O’Neill.
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`Third, Patent Owner argues that, contrary to the requirements of
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`claim 3, O’Neill discloses powering up the GPS receiver every time the user
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`presses a button on the keypad. PO Resp. 17 (citing Ex. 1005, col. 5, ll. 37–
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`44). Thus, Patent Owner argues that “there is no suggestion in O’Neill of
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`selectively powering up the GPS receiver only for certain key sequences
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`input by the user that correspond to a particular website (or phone number).”
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`PO Resp. 18 (emphasis added). We note that Patent Owner’s arguments are
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`not commensurate with the scope of claim 3. Claim 3 recites, “wherein the
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`GPS receiver is arranged to power up in response to a user selecting a
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`particular web site.” Contrary to Patent Owner’s arguments, claim 3 does
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`not require the user to enter “certain key sequences” to power up the GPS
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`receiver, id. (emphasis added), but merely to power up the GPS receiver in
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`“response to a user selecting a particular web site.”
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`Petitioner’s challenge relies upon the disclosure in O’Neill that power
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`can be conserved by a control processor, which can actuate a GPS receiver
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`to acquire new position information based upon manipulation of the keypad
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`by the user. Pet. 22 (citing Ex. 1005, col. 5, ll. 37–44). Petitioner provides
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`that it would have been obvious to combine this teaching from O’Neill to
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`modify the teaching of Koss to include powering up the GPS receiver in
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`response to the user sending an HTTP request with embedded GPS
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`locations. Pet. 23–24. Patent Owner counters that this combination would
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`not suggest all the features of claim 3, because the combination lacks the
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`functionality of claim 3 in which the GPS receiver is powered up in response
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`to a user selecting a particular web site. PO Resp. 20.
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`Patent Owner’s arguments are not responsive fully to the combination
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`as proposed by Petitioner. Specifically, Petitioner relies upon Koss, not
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`O’Neill, for teaching that a GPS location is acquired from the GPS receiver
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`in response to a user selecting a particular web site. For this teaching,
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`Petitioner cites to the following disclosure in Koss:
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`Step 302 comprises allowing a user to select a hyperlink from
`the rendered hyperlinked content. Step 304 comprises
`obtaining current geographical coordinates of the mobile
`computer from the computer’s GPS receiver.
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`Pet. 19–20 (emphasis omitted) (quoting Ex. 1004, col. 5, ll. 34–48).
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`Petitioner further proposes in its challenge that O’Neill’s teaching of power
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`conservation in activation of the GPS receiver be combined with this
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`disclosure from Koss regarding acquiring GPS location information when
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`the user selects a particular web site. Pet. 23–24. Accordingly, we are
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`persuaded Petitioner has established sufficiently that the combination of
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`Koss and O’Neill teaches a GPS receiver “arranged to power up in response
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`to a user selecting a particular web site,” as recited in claim 3.
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`For the reasons stated above, we conclude that Petitioner has shown
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`by a preponderance of the evidence that claim 3 would have been obvious
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`over Koss and O’Neill.
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`B. Obviousness of Claim 3 Over Koss and Sheynblat
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`1. Overview of Sheynblat (Ex. 1006)
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`Sheynblat discloses power management in cellular telephones with
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`integrated GPS receivers. Ex. 1006, col. 1, ll. 5–8. More specifically,
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`Sheynblat discloses a portable cellular transceiver comprising a GPS
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`receiver and a power detection circuit for monitoring a power level of a
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`battery. Ex. 1006, Abstr. Sheynblat discloses that “activation of a single
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`button of the portable cellular transceiver causes the selective application of
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`power to GPS receiver circuitry and selective application of power to
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`communication circuitry.” Ex. 1006, col. 2, ll. 26–29. For example,
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`Sheynblat discloses that an emergency call be placed by the user, such that
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`“[i]n placing the emergency telephone call, the power control circuitry 112
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`provides power to the telephone circuitry 102 and the position circuitry 104
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`of the portable cellular telephone 100.” Ex. 1006, col. 4, ll. 43–47.
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`2. Analysis
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`Petitioner contends that claim 3 is obvious over Koss and Sheynblat.
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`Pet. 24–28. As discussed above for the asserted ground based on Koss and
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`O’Neill, Petitioner argues that Koss teaches the required “internet enabled,
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`mobile cellular telephone comprising a communications transmitter and
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`receiver arranged for two-way communication with a base station, and a
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`GPS receiver” by disclosing mobile computer 20 including positioning
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`receiver 49, i.e., a GPS receiver that generates geographic coordinates of
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`mobile computer 20 and its user. Pet. 24–25. Additionally, Petitioner
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`argues that Sheynblat teaches “selective application of power to GPS
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`receiver circuitry.” Pet. 25–26 (emphasis and internal quotation marks
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`omitted) (quoting Ex. 1006, col. 2, ll. 24–29).
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`Petitioner’s expert, Dr. Caloyannides, states that power conservation
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`was known to be a pervasive issue in the cellular telephone art and
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`combining the teachings of Koss with the selective powering up of the GPS
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`receiver taught in Sheynblat would have been well recognized in the art as a
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`power conservation technique. Ex. 1009 ¶ 62. Petitioner argues that
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`Sheynblat recognizes that by selectively powering up the GPS receiver when
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`a position fix is needed, as determined by user activity, battery power can be
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`conserved. Pet. 27 (citing Ex. 1006, col. 1, ll. 5–8, col. 2, ll. 24–29; Ex.
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`1009 ¶ 62). Therefore, Petitioner argues that it would have been obvious to
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`modify the teachings of Koss to include the teachings from Sheynblat
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`regarding powering up the GPS receiver in response to a user selecting a
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`particular web site. Pet. 27. We are persuaded by Petitioner’s arguments
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`and supporting evidence.
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`We address Patent Owner’s responsive arguments in turn. First,
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`Patent Owner repeats the same arguments against Koss as in the previous
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`challenge, namely, that Koss teaches a mobile computer and that a cellular
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`phone is not a part of that mobile computer. PO Resp. 21. For the same
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`reasons discussed above, we are not persuaded by Patent Owner’s
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`arguments.
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`Second, Patent Owner argues that Sheynblat cannot be properly
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`combined with Koss because Sheynblat is not concerned with increasing the
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`time period during which a cellular telephone can operate. PO Resp. 22.
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`Patent Owner argues that Sheynblat merely discloses reserving power for an
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`emergency call by a GPS-enabled cellular telephone so than an emergency
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`call can always be made. PO Resp. 23. In short, Patent Owner argues that
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`Sheynblat does not teach conserving power but rather reserving power. PO
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`Resp. 23–24.
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`Petitioner counters that Sheynblat expressly discloses the need for
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`power conservation in a GPS enabled cellular telephone by disclosing that
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`“integration of a GPS receiver” is “likely to increase the power consumption
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`of the telephone device” and the “telephone designer must focus particular
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`effort on decreasing the power requirements.” Pet. Reply 13 (emphasis and
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`internal quotation marks omitted) (quoting Ex. 1006, col. 1, ll. 30–38).
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`Petitioner further argues that Sheynblat’s disclosure of placing the telephone
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`in a low-power mode to conserve battery power and selectively powering up
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`the GPS receiver would have taught a person of ordinary skill in the art a
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`power conservation technique. Pet. Reply 14. We are not persuaded by
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`Patent Owner’s attempt to draw a distinction between conserving power and
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`reserving power, as both are focused on reducing the power consumed by
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`the GPS-enabled cellular telephone. Furthermore, we find that Petitioner’s
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`proposed combination of Koss and Sheynblat provides a sufficiently
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`“articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007) (citation and internal quotation marks omitted). A person of
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`ordinary skill in the art would have relied upon selectively powering up the
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`GPS receiver, as shown in Sheynblat, to modify the Koss disclosure of a
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`mobile cellular telephone user selecting a particular web site.
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`For the reasons stated above, we conclude that Petitioner has shown
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`by a preponderance of the evidence that claim 3 would have been obvious
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`over Koss and Sheynblat.
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`C. Obviousness of Claim 3 Over Jessup and O’Neill
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`1. Overview of Jessup (Ex. 1007)
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`Jessup is titled “System and Method for Sending Local Information
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`from a Wireless Browser to a Web Server,” and discloses a system for using
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`a wireless browser to send local information from a wireless handset to a
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`web server. Ex. 1007, Abstr. Figure 1 of Jessup is reproduced below.
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`Jessup, Figure 1
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`As shown above in Figure 1, Jessup discloses handset 100 that includes
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`processor 104, transceiver 122, and position determination system 134 that
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`uses a GPS system to determine location. Id. at col. 4, ll. 4–5, col. 5, ll. 13–
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`22. Jessup further discloses a method for requesting information across a
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`network in which the user initiates a request for information, and the system
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`acquires the position of the handset if the request requires the handset
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`location. Id. at col. 6, ll. 44–50. For example, Jessup discloses that the
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`handset user can select a web service, the handset then determines if the user
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`has selected a web service requiring local information, and, if so, the
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`“browser will acquire the current GPS data from position determination
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`device 134” and include it in the URL request. Id. at col. 8, ll. 45–47, col. 9,
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`ll. 5–13.
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`2. Analysis
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`Petitioner contends that claim 3 is obvious over Jessup and O’Neil.
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`Pet. 28–37. Petitioner argues that Jessup teaches the required “internet
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`enabled, mobile cellular telephone comprising a communications transmitter
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`and receiver arranged for two-way communication with a base station, and a
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`GPS receiver” by disclosing handset 100 with position determination system
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`134 that uses GPS. Pet. 29–30 (citing Ex. 1007, col. 5, ll. 16–23).
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`Furthermore, Petitioner argues that Jessup teaches that the user can select a
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`web service that requires location information, and the browser will acquire
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`the current GPS data from position determination device 134 and include
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`that location information in the web service request. Pet. 32–33 (citing
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`Ex. 1007, col. 8, l. 36 – col. 9, l. 11). Additionally, Petitioner argues that
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`O’Neill teaches intelligent maintenance of power consumption by a GPS
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`receiver by acquiring GPS location information based on the user’s activity.
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`Pet. 35–36 (citing Ex. 1005, col. 4, ll. 48–51, col. 5, ll. 37–44).
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`Petitioner’s expert, Dr. Caloyannides, states that power conservation
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`was known to be a pervasive issue in the cellular telephone art and
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`combining the teachings of Jessup with the selective powering up of the
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`GPS receiver taught in O’Neill would have been well recognized in the art
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`as a power conservation technique. Ex. 1009 ¶ 79. Petitioner further argues
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`that it would have been obvious to modify the teachings of Jessup to include
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`the teachings from O’Neill regarding powering up the GPS receiver in
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`response to a user selecting a particular web site. Pet. 36–37. We agree
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`with Petitioner.
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`Patent Owner disputes Petitioner’s challenge by arguing that the
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`combination of Jessup and O’Neill cannot teach claim 3 because Jessup does
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`not teach controlling the GPS receiver’s power and O’Neill does not teach
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`the functionality recited in claim 3. PO Resp. 30–31. Specifically, Patent
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`Owner argues that O’Neill teaches that the GPS receiver is powered on
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`every time the users presses the keypad, instead of selectively powering up
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`the GPS receiver only for certain key sequences. PO Resp. 31. Patent
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`Owner’s arguments against this combination are the same as those addressed
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`above against the combination of Koss and O’Neill. Just as with Koss and
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`O’Neill, Patent Owner’s arguments here are not responsive fully to the
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`combination as proposed by Petitioner.
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`More particularly, Petitioner relies upon Jessup, not O’Neill, for the
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`teaching that a GPS location is acquired from the GPS receiver in response
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`to a user selecting a particular web site:
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`In step 204, the system determines whether the request requires
`the handset location or position. If position information is
`required, the method proceeds from step 204 to step 212, where
`system 134 acquires the position of handset 130. If system 134
`is situated in hands-free unit 132, unit 132 provides the position
`data to handset 130 for transmission to server 136 over wireless
`network 140 (step 214).
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`Ex. 1007, col. 6, ll. 44–54, Fig. 3 (emphases added); see Pet. 31–32.
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`Petitioner further proposes in its challenge that O’Neill’s teachings of power
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`conservation in activation of the GPS receiver be combined with Jessup’s
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`teachings regarding acquiring GPS location information when the user
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`selects a particular web site. Accordingly, we are persuaded that Petitioner
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`has established sufficiently that the combination of Jessup and O’Neill
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`teaches that “the GPS receiver is arranged to power up in response to a user
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`selecting a particular web site,” as recited in claim 3.
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`For the reasons stated above, we conclude that Petitioner has shown
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`by a preponderance of the evidence that claim 3 would have been obvious
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`over Jessup and O’Neill.
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`D. Obviousness of Claim 3 Over Jessup and Sheynblat
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`Petitioner contends that claim 3 is obvious over Jessup and Sheynblat.
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`Pet. 37–41. As discussed above for the asserted ground based on Jessup and
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`O’Neill, Petitioner argues that Jessup teaches the required “internet enabled,
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`mobile cellular telephone comprising a communications transmitter and
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`receiver arranged for two-way communication with a base station, and a
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`GPS receiver” by disclosing handset 100 with position determination system
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`134 that uses GPS. Pet. 37–38 (referring to Pet. 29–30). Additionally,
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`Petitioner argues that Sheynblat teaches “selective application of power to
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`GPS receiver circuitry.” Pet. 39 (emphasis and internal quotation marks
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`omitted) (quoting Ex. 1006, col. 2, ll. 24–29). Petitioner argues that
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`Sheynblat recognizes that by selectively powering up the GPS receiver when
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`a position fix is needed, as determined by user activity, battery power can be
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`conserved. Pet. 40 (citing Ex. 1006, col. 1, ll. 5–8, col. 2, ll. 24–29;
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`Ex. 1009 ¶ 87).
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`Petitioner’s expert, Dr. Caloyannides, states that power conservation
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`was known to be a pervasive issue in the cellular telephone art and
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`combining the teachings of Jessup with the selective powering up of the
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`GPS receiver taught in Sheynblat would have been well recognized in the art
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`as a power conservation technique. Ex. 1009 ¶ 87. Therefore, Petitioner
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`argues that it would have been obvious to modify the teachings of Jessup to
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`include the teachings from Sheynblat regarding powering up the GPS
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`receiver in response to a user selecting a particular web site. Pet. 40.
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`Similar to the argument against the combination of Koss and
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`Sheynblat, Patent Owner argues that Sheynblat cannot be combined properly
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`with Jessup, because Sheynblat does not teach conserving power, but rather
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`reserving power. PO Resp. 34. Patent Owner argues that, contrary to the
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`requirements of claim 3, combining Jessup and Sheynblat would teach a
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`cellular phone that suspends operation when battery power drops below a
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`threshold level and when an emergency call is made, using that reserved
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`battery power to activate the cellular phone’s GPS receiver. PO Resp. 35.
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`Patent Owner argues, therefore, that the combination of Jessup and
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`Sheynblat would not result in a cellular phone that powers up the GPS
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`receiver in response to a user selecting a particular web site. Id.
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`Similar to its arguments with respect to the combination of Koss and
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`Sheynblat, Patent Owner’s arguments are not responsive fully to the
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`combination of Jessup and Sheynblat proposed by P
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