Trials@uspto.gov
`571-272-7822
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`Paper 62
`Entered: November 3, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`POLARIS WIRELESS, INC.,
`Petitioner,
`
`v.
`
`TRUEPOSITION, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00323
`Patent 7,783,299 B2
`____________
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`Paper 62
`Entered: November 3, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`POLARIS WIRELESS, INC.,
`Petitioner,
`
`v.
`
`TRUEPOSITION, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00323
`Patent 7,783,299 B2
`____________
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2013-00323
`Patent 7,783,299 B2
`
`
`I.
`
`BACKGROUND
`
`A.
`
`Introduction
`
`Polaris Wireless, Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 111–114 of U.S. Patent No. 7,783,299 B2 (Ex.
`
`1001, “the ’299 patent”). Paper 1 (“Pet.”). Petitioner relies upon the
`
`following prior art references:
`
`July 1, 1999
`
`WO 99/33303
`
`Zell
`July 11, 2000
`Abbadessa U.S. Patent 6,088,587
`Havinis
`U.S. Patent 6,167,266 Dec. 26, 2000
`
`Ex. 10071
`Ex. 1011
`Ex. 1012
`
`TruePosition, Inc. (“Patent Owner”) timely filed a Patent Owner Preliminary
`
`Response. Paper 6 (“Prelim. Resp.”). On November 15, 2013, the Board
`
`instituted trial for claims 111–114 on the following grounds of
`
`unpatentability:
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Zell
`
`§ 102(b)
`
`Abbadessa and Havinis
`
`§ 103(a)
`
`111–114
`
`111–114
`
`Paper 9 (“Dec.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response.
`
`Paper 21 (“PO Resp.”). Petitioner subsequently filed a Reply to the
`
`Response. Paper 30 (“Reply”). Petitioner filed a Motion to Exclude (Paper
`
`39; “Pet. Mot.”), to which Patent Owner filed an Opposition (Paper 47; “PO
`
`
`
`1 Although Zell is Exhibit 1007, Zell is written in French. Accordingly, all
`citations to Zell in this Decision will be to Exhibit 1008, which is a certified
`English language translation of Zell.
`
`2
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`IPR2013-00323
`Patent 7,783,299 B2
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`Opp.”). Petitioner then filed a Reply (Paper 51; “Pet. Reply”). Patent
`
`Owner filed a Motion to Exclude (Paper 38; “PO Mot.”), to which Petitioner
`
`filed an Opposition (Paper 48; “Pet. Opp.”). Patent Owner then filed a
`
`Reply (Paper 50; “PO Reply”). An oral hearing was held on July 15, 2014.
`
`The transcript of the hearing has been entered into the record. Paper 61.
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a).
`
`Petitioner has shown by a preponderance of the evidence that claims
`
`111–114 of the ’299 patent are unpatentable.
`
`Petitioner’s Motion to Exclude is dismissed.
`
`Patent Owner’s Motion to Exclude is dismissed-in-part and denied-in-
`
`part.
`
`B.
`
`Related Proceedings
`
`Both Petitioner and Patent Owner indicate that the ’299 patent was
`
`asserted against Petitioner in a co-pending district court case captioned
`
`TruePosition, Inc. v. Polaris Wireless, Inc., Case No. 1:12-cv-00646
`
`(D. Del.). Pet. 3; Paper 23, 2.
`
`C.
`
`The ’299 patent
`
`The subject matter of the ’299 patent relates to locating wireless
`
`devices, also called mobile stations (“MS”), such as those used in analog or
`
`digital cellular systems, personal communications systems, enhanced
`
`specialized mobile radios, and other types of wireless communications
`
`systems. Ex. 1001, 1:23–28. The ’299 patent discloses that wireless
`
`location systems have been installed in more than 40,000 Base Transceiver
`
`Stations (BTS), providing emergency location coverage for wireless
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`Patent 7,783,299 B2
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`subscribers across the continental United States. Ex. 1001, 1:62–67.
`
`According to the ’299 patent, widespread deployment of these systems can
`
`reduce emergency response time, save lives, and save enormous costs
`
`because of the reduced use of emergency response resources. Ex. 1001, 2:6–
`
`9. In addition, the ’299 patent discloses that surveys and studies have
`
`concluded that various wireless applications, such as location sensitive
`
`billing, fleet management, and others, will have great commercial value in
`
`coming years. Ex. 1001, 2:9–12.
`
`Early work related to wireless location systems used time difference
`
`of arrival techniques to locate cellular telephones. Ex. 1001, 1:39–43. Over
`
`time, the cellular industry has increased the number of air interface protocols
`
`available for use by wireless telephones, increased the number of frequency
`
`bands in which wireless or mobile telephones may operate, and expanded
`
`the number of terms that refer or relate to mobile telephones to include
`
`“personal communications services,” “wireless,” and others. Ex. 1001,
`
`1:51–57.
`
`Air interface protocols use two categories of channels, where a
`
`channel is defined as one of multiple transmission paths within a single link
`
`between points in a wireless network. Ex. 1001, 2:19–22. A channel may
`
`be defined by frequency, by bandwidth, by synchronized time slots, by
`
`encoding, by shift keying, by modulation scheme, or by any combination of
`
`these parameters. Ex. 1001, 2:22–24. The first channel category, called a
`
`control or access channel, is used to convey information about the wireless
`
`telephone or transmitter, for initiating or terminating calls, or for transferring
`
`intermittent data. Ex. 1001, 2:25–28. The second channel category, known
`
`4
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`Patent 7,783,299 B2
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`as a voice or traffic channel, typically conveys voice or data
`
`communications over an air interface. Ex. 1001, 2:33–35.
`
`There are some difficulties in integrating wireless location services
`
`with certain air interface protocols. For example, one protocol, Code-
`
`Division Multiple Access (“CDMA”), uses both frequency and code
`
`separation. Ex. 1001, 3:7–9. Because adjacent cell sites may use the same
`
`frequency sets, CDMA must operate under very careful power control,
`
`producing a situation known to those skilled in the art as the near-far
`
`problem, making it difficult for most methods of wireless location to achieve
`
`an accurate location. Ex. 1001, 3:9–13. In another example, networks that
`
`use Global System for Mobile Communications (“GSM”) protocol also
`
`present a number of potential problems to existing wireless location systems.
`
`Ex. 1001, 4:8–9. GSM networks use encryption on the traffic channel and
`
`use temporary nicknames (Temporary Mobile Station Identifiers (TMSID))
`
`for security reasons, making it difficult to identify properly a desired MS in
`
`order to trigger or task wireless location systems. Ex. 1001, 4:11–15.
`
`Furthermore, an MS connected to GSM networks does not transmit signals
`
`to regional receivers except during call setup, voice/data operation, and call
`
`breakdown, reducing the number of opportunities to detect the MS.
`
`Ex. 1001, 4:15–21.
`
`To solve these and other problems, methods and systems are disclosed
`
`that are employed by a wireless location system (WLS) for locating a
`
`wireless device operating in a geographic area served by a wireless
`
`communications system. Ex. 1001, 4:39–42. According to the ’299 patent,
`
`an exemplary method includes monitoring a set of signaling links of a
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`Patent 7,783,299 B2
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`wireless communications system, and detecting at least one predefined
`
`signaling transaction occurring on at least one predefined signaling link.
`
`Ex. 1001, 4:42–46. Some examples of predefined signaling transactions are
`
`a called-number trigger, idle mobile location trigger, lists of all mobile
`
`devices recently in set of cells trigger, background location of all subscribers
`
`in set of cells trigger, and smart proximity identification trigger. Ex. 1001,
`
`4:66–5:4. “Then, in response to the detection of the at least one predefined
`
`network transaction, at least one predefined location service is triggered.”
`
`Ex. 1001, 4:46–48.
`
`D.
`
`Illustrative Claim
`
`Each of claims 111 to 114 is an independent claim. Independent
`
`claim 111 is reproduced as follows:
`
`111. A method for use by a wireless location system
`(WLS) for locating a wireless device operating in a geographic
`area served by a wireless communications system, comprising:
`monitoring a set of predefined signaling links of the
`wireless communications system, wherein said predefined
`signaling links include at least an Abis link between a base
`transceiver station (BTS) and a base station controller (BSC),
`wherein said monitoring comprises passively monitoring said
`set of predefined links such that the operation of said wireless
`device and said wireless communications system is unaffected
`by said monitoring;
`detecting at least one predefined network transaction
`involving a predefined trigger occurring on said Abis link,
`wherein said predefined network transaction comprises at least
`one of a mobile origination
`transaction and a mobile
`termination transaction; and
`
`6
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`Patent 7,783,299 B2
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`in response to the detection of said at least one
`predefined network transaction involving a predefined trigger,
`initiating at least one predefined location service.
`
`Ex. 1001, 49:47–66.
`
`II.
`
`ANALYSIS
`
`For the challenged claims, Petitioner has to prove unpatentability by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e). In patent law, “the
`
`name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
`
`(Fed. Cir. 1998). Therefore, we begin with claim construction, and then
`
`follow with specific analysis of the prior art.
`
`A.
`
`Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). 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 disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1.
`
`Trigger
`
`Each of claims 111 to 114 recites some form of trigger. For example,
`
`independent claims 111 and 113 each recite “predefined trigger,” and
`
`independent claims 112 and 114 each recite “dialed digit trigger” and
`
`“Mobile Station Identification (MSID) trigger.” Petitioner proposes
`
`construing “trigger” as “an indicium . . . that directly and but-for causes an
`
`action.” Pet. 15. Patent Owner proposes construing “trigger” as limited to
`
`7
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`IPR2013-00323
`Patent 7,783,299 B2
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`“location services,” because the claim context and Specification limit
`
`“triggers” to “location triggers.” PO Resp. 5–6. Petitioner counters that
`
`adopting Patent Owner’s construction would render, improperly, superfluous
`
`“initiating at least one predefined location service,” as recited in each of
`
`claims 111–114. Reply 1.
`
`The Specification discloses the following concerning “trigger”:
`
`More particularly, but not exclusively, the present invention
`relates to the use of prescribed network message sequences in
`initiating, or triggering, location-based service applications
`and re-use of existing radio interface parameters within such
`message sequences to provide low-accuracy location or to allow
`tuning of specialized receivers for high accuracy location for a
`particular subscriber.
`
`Ex. 1001, 1:28–35 (emphasis added).
`
`The use of encryption on the traffic channel and the use of
`temporary nicknames (Temporary Mobile Station Identifiers
`(TMSID)) for security render radio network monitors of limited
`usefulness for triggering or tasking wireless location systems.
`
`Ex. 1001, 4:11–15 (emphasis added).
`
`For example, while [U.S. Patent No. 6,782,264] describes a
`system
`that monitors communications between a base
`transceiver station and base station controller, and forwards
`mobile station (MS) information to a Wireless Location System
`for emergency call location, the advanced location-based
`services applications described herein utilize additional network
`messages as triggering events and information sources for a
`wide variety of location-based services.
`
`Ex. 1001, 7:46–53 (emphasis added).
`
`The following procedures are used for location triggering
`by the Radio Network Monitor (RNM) and/or Link Monitoring
`System (LMS). A trigger for wireless location consists of a
`transaction and a filter. If a transaction occurs and the filtering
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`IPR2013-00323
`Patent 7,783,299 B2
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`
`matches, then a location trigger is generated. Each procedure
`contains the messaging needed for determination if a potential
`location-triggering event has occurred. The description of each
`message includes the fields for filtering by the preset rules for
`positive determination of the occurrence of a location trigger.
`
`Ex. 1001, 13:6–15 (emphases added). Any of the above-described
`
`three types of triggers can be set to cause (trigger) a location
`
`estimation procedure. Ex. 1001, 22:64–66. The Specification then
`
`discloses the following concerning the content of a trigger:
`
`Advanced triggers allow for radio or network events
`(corresponding to specific messages or groups of messages
`detectable by the LMS 11 or RNM 82) to generate high and low
`accuracy location estimates. A triggering event, one that
`initiates a location estimation, may be a detection of a
`particular message or a field within a specific message.
`
`Ex. 1001, 26:36–42 (emphases added). Based on the above, we construe
`
`“trigger” as “an event, message, message field, or message sequence
`
`sufficient to initiate, cause, or task an action related to location-based
`
`services.” The “direct” and “but for” requirements in Petitioner’s proposed
`
`construction are not necessary to make sense of the claim, and are not
`
`required in the context of the Specification. Furthermore, the limiting of
`
`“trigger” to “location triggers” is appropriate in view of the fact that
`
`“trigger” is disclosed consistently in the Specification as being related to
`
`“location,” and does not render superfluous the “initiating” limitation, as a
`
`“trigger,” by itself, only need be capable of, but need not actually, “initiate”
`
`any action.
`
`9
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`Patent 7,783,299 B2
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`
`2.
`
`Network Transaction
`
`Each of claims 111 to 114 recites “network transaction.” Petitioner
`
`proposes that “network transaction” be construed as follows:
`
`“one or more messages on the signaling links of a network;” a
`genus that comprises the two subgenera: (i) Mobile Origination
`Transaction, and (ii) Mobile Termination Transaction, and the
`14 species transactions listed in Table 1 [at column 23] of the
`’299 Patent.
`
`Pet. 15. The Specification discloses the following concerning “network
`
`transaction”: “The term ‘transaction’ refers to a message or message
`
`sequence potentially useful to the advanced trigger invention.” Ex. 1001,
`
`12:66–67 (emphasis added). The Specification then discloses the following
`
`concerning the relationship between “network” and “transaction”:
`
`Advanced triggers allow for radio or network events
`(corresponding to specific messages or groups of messages
`detectable by the LMS 11 or RNM 82) to generate high and low
`accuracy location estimates. A triggering event, one that
`initiates a location estimation, may be a detection of a particular
`message or a field within a specific message. Network events
`(also called network
`transactions)
`include: (1) Mobile
`originations/terminations; (2) SMS originations/terminations;
`(3) GPRS Mobile Attach/Detach events; (4) Location/ Routing
`Update (that is, a GSM “location” update for the purposes of
`mobility and roaming as opposed to a U-TDOA location event);
`(5) Handovers; and (6) Call Releases.
`
`Ex. 1001, 26:36–47 (emphases added). We construe “network transaction”
`
`as “a message, message sequence, or group of messages detectable by a
`
`network.” Petitioner’s construction is overly restrictive. No persuasive
`
`reasoning is provided as to why the term must be regarded as a particular
`
`genus, especially a genus that includes a combination of species.
`
`10
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`
`3. Mobile Origination Transaction
`
`Independent claims 111 and 113 each recite “mobile origination
`
`transaction.” Petitioner proposes that “mobile origination transaction” be
`
`construed as follows:
`
`a subgenus of ‘network transaction[’;] a genus that consists of
`exactly the three species: Mobile Originated Call Placed,
`Mobile Originated SMS Sent, and Mobile Originated Call
`Disconnect.
`
`Pet. 16. The Specification sets forth an explicit definition of “mobile
`
`origination” as follows: “Mobile Origination is the act of a mobile device
`
`placing a call to the wireless network to begin a conversation or data
`
`session.” Ex. 1001, 23:31–33. Independent claims 111 and 113 recite that
`
`“mobile origination transaction” is a type of “network transaction.”
`
`Accordingly, we construe “mobile origination transaction” as “a message,
`
`message sequence, or group of messages that are detectable by a network,
`
`and correspond to the act of a mobile device placing a call to the wireless
`
`network to begin a conversation or data session.”
`
`Petitioner’s construction is overly restrictive. No persuasive
`
`reasoning is provided as to why the term must be regarded as a particular
`
`genus, especially a genus that includes a precise number of species.
`
`4. Mobile Termination Transaction
`
`Independent claims 111 and 113 each recite “mobile termination
`
`transaction.” Petitioner proposes that “mobile termination transaction” be
`
`construed as follows:
`
`subgenus of ‘network transaction[’;] a genus that consists of
`exactly the three species: Mobile Terminated Call Received,
`
`11
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`IPR2013-00323
`Patent 7,783,299 B2
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`Mobile Terminated SMS Received, and Mobile Terminated
`Call Disconnect.
`
`Pet. 16. The Specification sets forth an explicit definition of “mobile
`
`termination” as follows: “Mobile termination is the act of a mobile device
`
`receiving a call from the wireless network to begin a conversation or data
`
`session.” Ex. 1001, 24:62–64. Independent claims 111 and 113 recite that
`
`“mobile termination transaction” is a type of “network transaction.”
`
`Accordingly, we construe “mobile termination transaction” as “a message,
`
`message sequence, or group of messages that are detectable by a network,
`
`and correspond to the act of a mobile device receiving a call from the
`
`wireless network to begin a conversation or data session.”
`
`Petitioner’s construction is overly restrictive. No persuasive
`
`reasoning is provided as to why the term must be regarded as a particular
`
`genus, especially a genus that includes a precise number of species.
`
`5. Means for Monitoring
`
`Independent claims 113 and 114 each recite “means for monitoring a
`
`set of predefined signaling links of the wireless communications system . . .
`
`wherein said monitoring comprises passively monitoring said set of
`
`predefined links such that the operation of said wireless device and said
`
`wireless communications system is unaffected by said monitoring”
`
`(hereafter “means for monitoring”). Petitioner asserts that the recited
`
`“means for monitoring” should be construed in accordance with 35 U.S.C.
`
`§ 112, sixth paragraph, and that the corresponding structure disclosed in the
`
`Specification for the recited “means” is a computer (Link Monitoring
`
`System 11) programmed to perform the recited “monitoring” function.
`
`Petitioner also asserts that because the recited function is not described in
`12
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`IPR2013-00323
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`the Specification as implemented by a computer without software, but
`
`instead by software implemented on a general purpose computer, the
`
`corresponding structure under § 112, sixth paragraph, is not the general
`
`purpose computer, but any disclosed algorithm for performing the claimed
`
`function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d
`
`1328, 1333 (Fed. Cir. 2008) (“computer-implemented means-plus-function
`
`term is limited to the corresponding structure disclosed in the specification
`
`and equivalents thereof, and the corresponding structure is the algorithm”
`
`(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir.
`
`2005)) (internal quotation marks omitted)). The algorithm may be expressed
`
`“in any understandable terms including as a mathematical formula, in prose,
`
`or as a flow chart, or in any other manner that provides sufficient structure.”
`
`Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir.
`
`2011) (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
`
`(Fed. Cir. 2008)) (internal quotation marks omitted). Petitioner contends
`
`that the Specification does not disclose any algorithm for performing the
`
`recited “monitoring” function. Pet. 10–15; Reply 4.
`
`Independent claims 113 and 114 each further define the recited
`
`“monitoring” function as follows: “wherein said monitoring comprises
`
`passively monitoring said set of predefined links such that the operation of
`
`said wireless device and said wireless communications system is unaffected
`
`by said monitoring.”
`
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`The Specification further discloses the following concerning
`
`“monitoring”:
`
`As described in U.S. Pat. No. 6,782,264, it is possible to
`monitor the base transceiver station (BTS) to base station
`controller (BSC) link (e.g., the Abis link) for triggering
`messages and information fields. A passive network monitor,
`called the AMS (Abis Monitoring System) in the ’264 patent
`and exemplified by monitoring the GSM Abis interface, has
`been extended in accordance with the present invention and is
`now called the Link Monitoring System, or LMS. The Link
`Monitoring System (LMS) can monitor multiple cellular
`network data links simultaneously, scanning for data of
`interest, and can detect particular messages or data fields within
`messages. Setting or tasking of messages or data fields of
`interest can take place at any time.
`
`Ex. 1001, 10:32–44 (emphases added).
`
`The Link Monitoring System allows for passive, non-
`intrusive monitoring of, for example, the GSM, GSM-R, GPRS,
`and UTMS systems. In the exemplary case of a GSM system,
`the LMS can passively receive data streams from the Abis
`(BTS-BSC) interface, the A (BSC-MSC) interface, and the
`GSM MAP interface (MSC-HLR, MSC-GMLC, MSC-GMSC
`and MSC-gsmSCF). The term GSM MAP (where MAP stands
`for Mobile Application Part) is used to refer to the global SS7
`network and includes the C, D, E, F, H, Gc, Gf, Gr, Lh, and Lg
`interfaces.
`
`In the exemplary case of a GPRS system, the LMS can
`passively receive data streams from the Abis (BTS-BSC or
`BTS-PCU) interface, the Gb (PCU-SGSN) interface, and the
`GSM MAP interface (SGSN-HLR, SGSN-GMLC and SGSN-
`gsmSCF). In the exemplary case of a UMRS system, the LMS
`can passively receive data streams from the Iub (Node B-RNC)
`interface, the Iu-CS (RNC-MSC) interface, the Iu-PS (RNC-
`SGSN) interface, and the GSM MAP interface (MSC-HLR,
`
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`MSC-GMLC and MSC-gsmSCF, SGSN-HLR, SGSN-GMLC
`and SGSN-gsmSCF).
`
`The LMS can search received data for particular
`messages or data fields within messages. Setting or tasking of
`messages or data fields of interest can take place at any time.
`
`Ex. 1001, 11:5–27 (emphases added). We discern the following algorithm
`
`from the aforementioned portions of claims 113 and 114, and the
`
`Specification: (1) passively receive data streams from a set of predefined
`
`links such that the operation of said wireless device and said wireless
`
`communications system is unaffected; and (2) scan or search the data
`
`streams for data of interest, such as particular messages or data fields within
`
`messages. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
`
`Cir. 2008) (the algorithm may be expressed in “any understandable terms
`
`including as a mathematical formula, in prose, or as a flow chart, or in any
`
`other manner that provides sufficient structure” (citations omitted)).
`
`Accordingly, we construe the recited “means for monitoring” as
`
`corresponding to a computer that implements the aforementioned algorithm.
`
`6. Means for Detecting
`
`Independent claims 113 and 114 each recite “means for detecting at
`
`least one predefined network transaction involving a predefined trigger
`
`occurring on at least one of said predefined signaling links” (hereafter
`
`“means for detecting”). Petitioner asserts that the recited “means for
`
`detecting” should be construed in accordance with 35 U.S.C. § 112, sixth
`
`paragraph, and that the corresponding structure for the recited “means”
`
`should be an algorithm disclosed in the Specification for performing the
`
`recited “detecting” function implemented on a computer (Link Monitoring
`
`15
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`
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`IPR2013-00323
`Patent 7,783,299 B2
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`System 11). Petitioner contends that the Specification does not disclose any
`
`algorithm for performing the recited “detecting” function. Pet. 10–15;
`
`Reply 4.
`
`The Specification discloses the following concerning “detecting”:
`
`The Link Monitoring System (LMS) can monitor multiple
`cellular network data links simultaneously, scanning for data of
`interest, and can detect particular messages or data fields
`within messages. Setting or tasking of messages or data fields
`of interest can take place at any time. When a match occurs,
`the LMS may be further triggered to perform a pre-set action,
`such as a write to storage memory or forwarding of the
`triggering message and (or) data fields to another system node.
`
`Ex. 1001, 10:39–47 (emphases added).
`
`The LMS can search received data for particular
`messages or data fields within messages. Setting or tasking of
`messages or data fields of interest can take place at any time.
`When a match occurs, the LMS is further triggered to perform a
`pre-set action, normally a write to storage memory or
`forwarding of the triggering message and (or) data fields to
`another system node.
`
`Ex. 1001, 11:25–32 (emphasis added).
`
`The term “filter” refers to pre-set rules in the LMS for analysis
`of the monitored data within the transaction. Filters can
`include MS identification, cell identification, location area
`codes, or differences between the monitored and expected pre-
`set information.
`
`Ex. 1001, 13:1–5 (emphasis added). We discern the following algorithm
`
`from the aforementioned portions of the Specification: (1) setting a
`
`predefined trigger, the predefined trigger including particular messages or
`
`data fields within messages; and (2) matching or filtering-out a network
`
`transaction having the predefined trigger. Accordingly, we construe the
`
`16
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`
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`IPR2013-00323
`Patent 7,783,299 B2
`
`recited “means for detecting” as corresponding to a computer that
`
`implements the aforementioned algorithm.
`
`7. Means for Initiating
`
`Independent claims 113 and 114 each recite “means for initiating at
`
`least one predefined location service in response to the detection of said at
`
`least one predefined network transaction involving a predefined trigger”
`
`(hereafter “means for initiating”). Petitioner asserts that the recited “means
`
`for initiating” should be construed in accordance with 35 U.S.C. § 112, sixth
`
`paragraph, and that the corresponding structure for the recited “means”
`
`should be an algorithm disclosed in the Specification for performing the
`
`recited “initiating” function implemented on a computer (Link Monitoring
`
`System 11). Petitioner contends that the Specification does not disclose any
`
`algorithm for performing the recited “initiating” function. Pet. 10–15; Reply
`
`4.
`
`The Specification discloses the following concerning “initiating”:
`
`A triggering event, one that initiates a location estimation, may
`be a detection of a particular message or a field within a
`specific message.
`
`Ex. 1001, 26:39–42.
`
`A NULL value SMS may be sent to the mobile or the asset
`finder location services application can initiate an ATI message
`to the GMLC to initiate the location process.
`
`Ex. 1001, 28:50–53 (emphasis added).
`
`If the received LAI code differs from that stored on the SIM,
`then the MS has entered another location area and initiates a
`location update procedure to report the change to the Mobile
`Switching Center (MSC).
`
`Ex. 1001, 34:21–25 (emphasis added).
`
`17
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`
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`IPR2013-00323
`Patent 7,783,299 B2
`
`
`At step 842, the mobile can initiate a location update
`transaction with the wireless network. The LMS will detect the
`location update event at step 843 and will collect and deliver
`mobile identity data, the CGI, and RF channel to location to a
`location application, for example.
`
`Ex. 1001, 35:8–12 (emphases added).
`
`A mobile can then initiate a network transaction at step 920.
`The LMS can then detect the transaction at step 925 and collect
`the MSID, Cell, and radio information from the transaction
`messaging and store that information into memory at step 930.
`
`Ex. 1001, 42:37–41 (emphases added). We discern this algorithm from the
`
`aforementioned portions of the Specification: (1) collecting and storing
`
`device information; and (2) sending the device information to a location
`
`application. Accordingly, we construe the recited “means for initiating” as
`
`corresponding to a computer that implements the aforementioned algorithm.
`
`B.
`
`Principles of Law
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference.
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`
`2001). While the elements must be arranged or combined in the same way
`
`as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`
`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`
`(Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “A
`
`reference anticipates a claim if it discloses the claimed invention such that a
`
`skilled artisan could take its teachings in combination with his own
`
`knowledge of the particular art and be in possession of the invention.” In re
`
`18
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`
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`IPR2013-00323
`Patent 7,783,299 B2
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`Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301
`
`F.2d 929, 936 (CCPA 1962)) (internal quotation marks and emphasis
`
`omitted). In the context of anticipation, “it is proper to take into account not
`
`only specific teachings of the reference but also the inferences which one
`
`skilled in the art would reasonably be expected to draw therefrom.” In re
`
`Preda, 401 F.2d 825, 826 (CCPA 1968).
`
`Similarly, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418 (2007). A prima facie case of obviousness is established
`
`when the prior art itself would appear to have suggested the claimed subject
`
`matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048,
`
`1051 (CCPA 1976). The level of ordinary skill in the art may be reflected
`
`by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`We analyze the instituted grounds of unpatentability in accordance
`
`with the above-stated principles.
`
`C.
`
`Alleged Anticipation by Zell
`
`Petitioner asserts that claims 111–114 are unpatentable under
`
`35 U.S.C. § 102(b) as anticipated by Zell, and relies on Declarations of
`
`Dr. Tarun Kumar Bhattacharya. Pet. 35–41; Reply 4–12 (citing Exs. 1005,
`
`1037). Patent Owner disagrees with Petitioner’s assertions, and relies on the
`
`Declaration of Dr. Oded Gottesman. PO Resp. 6–29 (citing Ex. 2014).
`
`19
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`IPR2013-00323
`Patent 7,783,299 B2
`
`
`1. Whether Zell is Prior Art
`
`Zell has a publication date of July 1, 1999. The ’299 patent issued
`
`from U.S. Patent Application No. 11/150,414 (Ex. 1034, “the ’414
`
`application”), which has a filing date of June 10, 2005. Patent Owner asserts
`
`that Zell is not prior art to claims 111–114 of the ’299 patent under
`
`35 U.S.C. § 102(b), because claims 111–114 claim
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