Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 58
`Entered: July 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00199
`Patent 6,771,970 B1
`
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`
`Paper 58
`Entered: July 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00199
`Patent 6,771,970 B1
`
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`
`I. INTRODUCTION
`
`A. Background
`
`In a May 9, 2014 Decision (Paper 18, “Dec.”), we instituted inter
`
`partes review of claim 18 of U.S. Patent No. 6,771,970 B1 (“the ’970
`
`Patent”).
`
`Following institution, LocatioNet Systems Ltd. (“Patent Owner”) filed
`
`a Response (Paper 35, “PO Resp.”) and Wavemarket, Inc. d/b/a Location
`
`Labs (“Petitioner”) filed a Reply (Paper 39, “Pet. Reply”). Petitioner relies
`
`upon the Declaration of Craig Rosenberg Ph.D. (Ex. 1020) in support of its
`
`Reply.
`
`Patent Owner filed a Motion to Exclude certain of Petitioner’s
`
`evidence. Paper 43 (“PO Mot. Excl.”). Petitioner filed an Opposition
`
`(Paper 48, “Pet. Opp.”), and Patent Owner filed a Reply (Paper 51, “PO
`
`Reply Opp.”).
`
`We heard oral argument on February 10, 2015. Paper 55 (“Tr.”).
`
`
`
` Patent Owner filed a Request for Rehearing (Paper 57, “Req. Reh’g”)
`
`of our Final Written Decision (Paper 56, “Final Dec.”) of May 7, 2015 in
`
`which claim 18 of the ’970 Patent was determined to be unpatentable.
`
`II. STANDARD OF REVIEW
`
`In its request for rehearing, the dissatisfied party must identify,
`
`specifically, all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was addressed previously.
`
`37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
`
`petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
`
`2
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`
`III. DISCUSSION
`
`
`
`Patent Owner argues the Board misapprehended or overlooked the
`
`intrinsic evidence supporting the proper claim construction for the terms
`
`“map database,” and “map engine for manipulating said map database.”
`
`Req. Reh’g. 1. Patent Owner also argues the Board misapprehended or
`
`overlooked the evidentiary standard for admissible expert testimony. Id.
`
`Intrinsic Evidence for Claim Construction
`
`Patent Owner argues the Board, in rendering the Final Written
`
`Decision, misapprehended or overlooked intrinsic evidence against our
`
`construction of “map database,” and “map engine for manipulating said map
`
`database,” that is overly broad and unreasonable. Req. Reh’g 2–8.
`
`Specifically, Patent Owner argues that we misapprehended or overlooked
`
`the ’970 Patent’s disclosure of numerous functions performed using the
`
`claimed “map database,” including the following:
`
`supplying “street names derived from map databases” (Ex.
`1001 at 5:45-50), “correlating between maps stored in the
`database (5)” (id. at 4:15-20), “the step of correlating the
`location of each remote platform with a map database” (id. at
`3:21-25), “access said map database for correlating map to said
`location information, so as to obtain correlated location
`information” (id. at 9:1-3).
`
`Req. Reh’g 3 (citing PO Resp.10–11; PO Mot. for Observations 11–13;
`
`Tr.14, ll. 8–24, 19, ll. 14–19).
`
`We are not persuaded by Patent Owner’s argument that our claim
`
`construction is unreasonably broad due to a failure to construe “map
`
`database” and “map engine for manipulating said map database,” in
`
`accordance with the alleged disclosures of the ’970 Patent. It is well-settled
`
`3
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`that it is improper to import limitations from the specification into the
`
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`The ’970 Patent does not disclose, explicitly or implicitly, that the
`
`map database performs the functions of deriving street names, and
`
`correlating between maps and location and/or positioning information. In
`
`contrast to Patent Owner’s arguments, the ’970 Patent discloses “[i]t may be
`
`linked to an SMS (simple messaging service) server (140) and supply
`
`locations as coordinates, street names derived from map databases or other
`
`location data available to mobile telephones (141), pagers (142), etc.”
`
`Ex. 1001, col. 5, ll. 45–53. The pronoun “it” refers to the subject of the
`
`preceding sentence––location determination system 1. Id. at col. 5, ll. 43–
`
`45. The ’970 Patent also discloses the following: (1) “map server (4) is
`
`capable of correlating between maps stored in the database (5) and
`
`positioning information,” (id. at col. 4, ll. 17–20 (emphasis added)); and (2)
`
`“the at least one mobile platform location system being adapted to receive
`
`said mobile platform location information and access said map database for
`
`correlating map to said location information, so as to obtain correlated
`
`location information,” (id. at col. 8, l. 66–col. 9, l. 3 (emphasis added)). In
`
`other words, the map server (4) and at least one mobile platform location
`
`system are the subjects of the aforementioned sentences that perform the
`
`correlating between maps and positioning and/or location information.
`
`Lastly, the ’970 Patent discloses “[s]tep (e) may further comprise the step of
`
`correlating the location of each remote platform with a map database and
`
`transmitting a map having marked said remote platform location(s) to said
`
`subscriber.” Id. at col. 3, ll. 21–24. This sentence is written in passive
`
`voice; it does not include a subject.
`
`4
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`
`
`Patent Owner also argues that we misapprehended or overlooked the
`
`described functionality of the “map engine” in the ’643 Application. Req.
`
`Reh’g 5. Specifically, Patent Owner contends the ’643 Application
`
`“explains that the ‘integrated map engine’ operating on the Company Device
`
`(41) is not only used to extract a map from the map database, but is also used
`
`to correlate the location data with the desired map stored in the map
`
`database.” Id.; see id. at 6. Patent Owner asserts the ’643 Application
`
`discloses the following: (1) “Each of the specified Company Devices ((41)
`
`to (44)) is associated with a map database (not shown) and a known per se
`
`map engine for accessing the map database and is capable of correlating
`
`between maps and the positioning information received from the vehicle’s
`
`tracking unit” (id. at 5–6 (quoting Ex. 1002, 4, ll. 1–4)); and (2) “The latter
`
`[i.e., Company Device (41)] correlates the so received location data with
`
`the desired map (as defined in input (63)) as extracted from the map
`
`database using its integrated map engine” (id. at 6 (quoting Ex. 1002, 5, ll.
`
`4–7)). Patent Owner concludes “[i]t is clear that the verb of the sentence
`
`(i.e., correlates) is performed by the Company Device (41) using its
`
`[Company Device (41)’s] integrated map engine.” Id. Patent Owner further
`
`contends the ’970 Patent and the language of claim 18 is consistent with the
`
`alleged disclosure of the ’643 Application. Id. at 6–8 (quoting Ex. 1001, col.
`
`4, ll. 15–20, col. 8, ll. 59–61).
`
`
`
`Similar to our discussion above addressing “map database”, we are
`
`not persuaded by Patent Owner’s arguments because the ’643 Application,
`
`and ’970 Patent do not disclose, explicitly or implicitly, that the map engine
`
`performs the function of correlating the location data with map(s). Contrary
`
`to Patent Owner’s arguments, the ’643 Application discloses Company
`
`5
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`Device 41 as having an integrated map engine that performs the extraction
`
`of the desired map from the database, but discloses that Company Device 41
`
`performs the correlation of the location data with the desired map. Ex. 1002,
`
`4, ll. 1–5, 5, ll. 2–7. We also are not persuaded that the ’970 Patent is
`
`consistent with the alleged disclosure of the ’643 Application because, as
`
`explained above, the ’970 Patent discloses the map server (4) and at least
`
`one mobile platform location system perform the correlating between maps
`
`and positioning and/or location information. Ex. 1001 col. 4, ll. 17–20, col.
`
`8, l. 66–col. 9, l. 3.
`
`
`
`For the foregoing reasons, we are not persuaded that we
`
`misapprehended or overlooked the intrinsic evidence in applying the
`
`broadest reasonable construction to “map database,” and “map engine for
`
`manipulating said map database.”
`
`Admissibility of Expert Testimony
`
`
`
`Patent Owner argues we misapprehended or overlooked Sundance,
`
`Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008), and
`
`Morpho Detection, Inc. v. Smiths Detection, Inc., No. 211cv498, 2012 WL
`
`6004085 at *1–2 (E.D. Va. Nov. 30, 2012) cited by Patent Owner to support
`
`its argument that Dr. Rosenberg’s testimony should be excluded as not
`
`admissible. Req. Reh’g 8–9 (citing PO Mot. to Exclude 2–5; PO Reply
`
`Opp. 1–2; Tr. 29, l. 3–30, l. 14). In the Final Written Decision, we
`
`determined Dr. Rosenberg was qualified as an expert based at least on Dr.
`
`Rosenberg’s experience, in particular, over four years of experience as
`
`founder and CEO of WhereWuz, a technology company focusing on
`
`location tracking applications for GPS enabled smartphones. Final Dec. 20.
`
`6
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`Patent Owner asserts, under the Federal Rules of Evidence and Federal
`
`Circuit case law, a declarant who is not qualified as a person of ordinary
`
`skill in the art cannot testify as to issues of invalidity, the substance and
`
`disclosure of the prior art, or how a person of ordinary skill in the art would
`
`understand the prior art. Req. Reh’g 8; see id. at 9–11.
`
`
`
`We considered and found unpersuasive Patent Owner’s substantially
`
`similar arguments in Patent Owner’s Motion to Exclude Evidence, and
`
`Patent Owner’s Reply to Petitioner’s Opposition. Final Dec. 18–19; see PO
`
`Mot. Exclude 2–5; PO Reply Opp. 1–3. A request for rehearing is not an
`
`opportunity to reiterate arguments that were addressed in our Final Written
`
`Decision, and merely express disagreement.
`
`
`
`As explained in the Final Written Decision, Patent Owner does not
`
`direct us to binding authority sufficient to support its argument that in order
`
`for expert testimony to be admissible, the expert must be a person of
`
`ordinary skill in the art. Final Dec. 19. Specifically, Sundance is binding
`
`authority; however, Sundance does not support fully Patent Owner’s
`
`arguments. The court in Sundance held, in the context of the admissibility
`
`of a testimony by a technically unqualified patent attorney, “it was an abuse
`
`of discretion to permit a witness to testify as an expert on the issues of
`
`noninfringement or invalidity unless that witness is qualified as an expert in
`
`the pertinent art.” Sundance, 550 F.3d at 1363.
`
`
`
`We also are not persuaded by Patent Owner’s argument that SEB S.A.
`
`v. Montgomery Ward & Co., 594 F.3d 1360(Fed. Cir. 2010)) is inapposite
`
`because the testimony offered in SEB did not relate to any issue of invalidity
`
`or the prior art. Req. Reh’g 9 (citing Final Dec. 19). Patent Owner does not
`
`explain adequately why the admissibility of testimony related to
`
`7
`
`
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`infringement (see SEB, 594 F.3d at 1373) is distinct from the admissibility
`
`of testimony related to invalidity or the prior art. See Req. Reh’g. 9.
`
`Similarly, we are not persuaded that Mytee Prods., Inc. v. Harris Research,
`
`Inc., 439 F. App’x 882, 887 (Fed. Cir. 2011)(non-precedential) also is not
`
`pertinent because the proffered level of ordinary skill in the art in Mytee is
`
`that of an ordinary layman with average intelligence. Id. Patent Owner does
`
`not explain sufficiently why Mytee is inapplicable based on the proffered
`
`level of ordinary skill in the art. See id.
`
`
`
`For all of the foregoing reasons, we are not persuaded that we
`
`misapprehended or overlooked the Federal Rules of Evidence and Federal
`
`Circuit case law regarding the admissibility of expert testimony.
`
`IV. DECISION ON REHEARING
`
`Petitioner’s request for rehearing is denied.
`
`
`
`8
`
`
`
`
`
`9
`
`IPR2014-00199
`Patent 6,771,970 B1
`
`PETITIONER:
`
`Mark L. Hogge
`Scott W. Cummings
`DENTONS US LLP
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
