`Tel: 571-272-7822
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`
`Paper 11
`Entered: May 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00728
`Patent 7,525,484 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, JAMES A. TARTAL,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Motion for Joinder
`37 C.F.R. § 122(b)
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`IPR2016-00728
`Patent 7,525,484 B2
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`A. Background
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`I. INTRODUCTION
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`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
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`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson
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`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
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`inter partes review of claim 25 of U.S. Patent No. 7,525,484 B2 (Ex. 1002,
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`“the ’484 patent”). Concurrently, Petitioner filed a Motion for Joinder
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`(Paper 3, “Mot. for Joinder”), requesting that we join this proceeding to
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`IPR2015-01708, in which we instituted inter partes review of claims 1 and
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`51 of the ’484 patent, but declined to institute as to claim 25.
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`TracBeam, LLC (“Patent Owner”) filed a Preliminary Response
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`(Paper 9, “Prelim. Resp.”). Patent Owner also filed an Opposition to the
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`Motion for Joinder (Paper 8, “Opp. to Mot. for Joinder”). Petitioner, in turn,
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`filed a Reply in support of its Motion for Joinder. Paper 10.
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`Upon consideration of the Petition and Preliminary Response, we
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`exercise our discretion, under 35 U.S.C. § 325(d), to deny institution of inter
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`partes review as to claim 25.
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`
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`B. The ’484 Patent
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`The ’484 patent describes location systems for wireless
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`telecommunication infrastructures. Ex. 1002, Abstract. According to the
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`’484 patent, the location techniques are useful for 911 emergency calls,
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`vehicle tracking and routing, and location of people and animals. Id. at
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`Abstract, 12:11–17.
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`IPR2016-00728
`Patent 7,525,484 B2
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`Figure 4, reproduced below, illustrates an embodiment:
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`Figure 4 is an overall view of a wireless radio location network architecture.
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`Id. at 21:66–67. The network includes a plurality of mobile stations (“MS”)
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`140, a mobile switching center (“MSC”) 112, and a plurality of wireless cell
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`sites forming radio coverage area 120, each site including a fixed-location
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`base station 122 for voice and data communication with MSs 140. Id. at
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`24:41–57. The network also includes location base stations (“LBS”) 152
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`with wireless location enablement, e.g., with transponders used primarily in
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`communicating MS location related information to location center 142 (via
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`base stations 122 and MSC 112). Id. at 24:57–64. LBSs can be placed, for
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`example, in dense urban areas, in remote areas, along highways, or wherever
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`more location precision is required than can be obtained using conventional
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`wireless infrastructure components. Id. at 28:29–38.
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`IPR2016-00728
`Patent 7,525,484 B2
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`Location center 142 determines a location of a target MS 140. Id. at
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`25:8–10, 37:43–46. The system uses a plurality of techniques for locating
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`MSs, including two-way time of arrival (“TOA”), time difference of arrival
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`(“TDOA”), and Global Positioning System (“GPS”). Id. at Abstract, 9:5–23,
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`11:7–55, 66:45–50. To determine a location for a MS, the system computes
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`a first order model (also referred to as a hypothesis or estimate) for one or
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`more of the locating techniques, computes a confidence value for each
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`model indicating the likelihood that the model is correct, performs additional
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`computations on the models to enhance the estimates, and computes from
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`the models a “most likely” location for the MS. Id. at 12:62–13:20, 38:9–31.
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`The most likely location can be a composite of the estimates. Id. at 13:22–
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`30, 66:45–50.
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`Location estimates can be provided to location requesting
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`applications, such as 911 emergency, police and fire departments, taxi
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`services, etc. Id. at 8:52–60, 13:20–22, 38:32–34.
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`
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`Claim 25, the only claim challenged in the Petition, is reproduced
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`below:
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`25. A method for estimating, for each mobile station M
`of a plurality of mobile stations, an unknown terrestrial location
`(LM) for M using wireless signal measurements obtained via
`transmissions between said mobile station M and a plurality of
`fixed location terrestrial communication stations, wherein each
`of said communications stations is substantially co-located with
`one or more of a transmitter and a receiver for wirelessly
`communicating with said mobile station M, comprising:
`
`initiating a plurality of requests for information related to
`the location of said mobile station M, the requests
`provided to each of at least two mobile station
`location evaluators, wherein there is at least a first
`of the requests provided to a first of the location
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`IPR2016-00728
`Patent 7,525,484 B2
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`evaluators and a second of the requests, different
`from the first request, provided to a second of the
`location evaluators, such that when said location
`evaluators are supplied with corresponding input
`data having values obtained using wireless signal
`measurements obtained via two way wireless
`communication between said mobile station M, and
`the communication stations, each of said first and
`second
`location
`evaluators
`determine
`corresponding location information related to LM,
`and
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`wherein for at least one location L of one of the mobile
`stations, said first location evaluator and said
`second location evaluator output, respectively, first
`and second position information related to the one
`mobile station being at L wherein neither of the first
`and second position information is dependent upon
`the other;
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`obtaining a first collection of location information of said
`mobile station M, wherein the first collection
`includes first location information from the first
`location evaluator, and second location information
`from the second location evaluator;
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`determining resulting information related to the location
`LM of the mobile station M, wherein the resulting
`information
`is dependent on geographical
`information in each of the first and second location
`information; and
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`to a predetermined destination via a
`transmitting,
`communications
`network,
`the
`resulting
`information.
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`IPR2016-00728
`Patent 7,525,484 B2
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`C. Related Matters; IPR-1708
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`The ’484 patent is the subject of several lawsuits filed in the United
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`States District Court for the Eastern District of Texas. Pet. 12; Paper 6, 1–2.
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`These include TracBeam, LLC v. T-Mobile US, Inc., Case No. 6:14-cv-678
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`(E.D. Tex.) (“the ’678 litigation”), and TracBeam, LLC v. AT&T, Inc., Case
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`No. 6:11-cv-96 (E.D. Tex.) (“the ’96 litigation”). Various related patents
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`also are the subjects of these and other proceedings before the district courts
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`and the Board. Paper 6, 1–4.
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`The ’484 patent also is the subject of Apple Inc. v. TracBeam, LLC,
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`Case IPR2015-01696 (PTAB); Apple Inc. v. TracBeam, LLC, Case
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`IPR2015-01697 (PTAB); and T-Mobile US, Inc. v. TracBeam, LLC., Case
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`IPR2015-01711 (PTAB). Paper 6, 3.
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`Most pertinent to this proceeding, the ’484 patent also is the subject of
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`T-Mobile US, Inc. v. TracBeam, LLC., Case IPR2015-01708 (PTAB) (“IPR-
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`1708”). In a Decision on Institution in IPR-1708, we instituted inter partes
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`review as to claims 1 and 51, but denied institution as to claim 25 (the claim
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`challenged in the instant proceeding). IPR-1708, Paper 10 (“1708-Dec.”).
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`Petitioner seeks to join this proceeding to IPR-1708. See Mot. for Joinder.
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`In IPR-1708, as it does here, Petitioner contended that claim 25 would
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`have been obvious over Loomis1 and Wortham.2 As summarized in the
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`1708-Decision on Institution, Loomis describes a hybrid location
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`determining (“LD”) system that includes an outdoor LD unit that determines
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`location using GPS technology and a radio LD unit that determines location
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`1 Ex. 1008, U.S. Patent No. 5,936,572, issued Aug. 10, 1999.
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`2 Ex. 1009, U.S. Patent No. 6,748,226 B1, issued June 8, 2004.
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`IPR2016-00728
`Patent 7,525,484 B2
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`using FM radio technology. 1708-Dec. 9–11. In order to determine a
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`location estimate from the FM signals it receives, Loomis’s radio LD unit
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`must first know the relative phases of the FM signals. Id. at 11. For those
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`phases, the radio LD unit relies on determinations from the outdoor (GPS)
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`LD unit. Id. at 11–12. Wortham describes a differential positioning system
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`for a mobile communication (cellular telephone) network in which GPS
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`signals are evaluated at a fixed station with known (surveyed) coordinates to
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`generate correction data. The correction data are sent via the mobile
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`communication system to mobile receivers for use in correcting the GPS
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`coordinate determinations made at the mobile receivers. Id. at 12–14.
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`Petitioner argued that a skilled artisan would have modified Loomis to
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`replace its FM terrestrial location capabilities with cellular-based signals, as
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`would be transmitted by Wortham’s transmitter sites. Id. at 14.
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`In IPR-1708, Petitioner relied on Loomis to show “wherein neither of
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`the first and second position information is dependent upon the other,” as
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`recited in claim 25, arguing that Loomis’s outdoor LD and radio LD units
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`are independent of one another. IPR-1708, Paper 1, 49–50. We determined
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`that the respective position information generated by the radio LD unit and
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`outdoor LD unit are not independent, because the radio LD unit’s position
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`information depends on the outdoor LD unit’s determination of phase, which
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`depends on the outdoor LD unit’s computation of GPS coordinate position
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`information. 1708-Dec. 19–20. Accordingly, Petitioner did not demonstrate
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`a reasonable likelihood of success in showing that claim 25 would have been
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`obvious over Loomis and Wortham. Petitioner did not request rehearing of
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`that determination.
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`IPR2016-00728
`Patent 7,525,484 B2
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`D. The Asserted Grounds
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`Petitioner contends that claim 25 would have been obvious, under
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`35 U.S.C. § 103, over Loomis and Wortham. Pet. 15. Citing the same
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`references, Petitioner advances two theories as to how a skilled artisan
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`would have applied Loomis and Wortham. In the first theory, Petitioner
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`contends that a skilled artisan would have used a stationary FM signal
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`monitor, as in Loomis’s description of the prior art, rather than Loomis’s
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`outdoor LD unit, to supply phase information to the radio LD unit. Pet. 29–
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`31.3 In the second theory, Petitioner contends that Wortham describes using
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`cellular time of arrival (“TOA”) techniques, rather than GPS techniques, to
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`determine location. Id. at 31–33. According to Petitioner, a skilled artisan
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`would have swapped Wortham’s cellular TOA technique for Loomis’s FM
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`radio LD unit. Id. at 33–34.
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`Petitioner contends that its application of Loomis and Wortham
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`merely “provides further clarification on how the Loomis-Wortham
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`combination satisfies the claim limitations relied on in the Board’s prior
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`decision not to institute review of this claim,” Pet. 9, and introduces
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`“nominal additional subject matter,” id. at 10.
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`
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`E. One Year Bar Under 35 U.S.C. § 315(b) and Joinder Under 35
`U.S.C. § 315(c)
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`According to 35 U.S.C. § 315(b):
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`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date
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`3 Loomis criticizes this prior art technique (Ex. 1008, 4:9–17) and describes
`using the outdoor LD unit to remedy such deficiencies as “an important
`feature of the invention” (id. at 7:31–38).
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`IPR2016-00728
`Patent 7,525,484 B2
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`on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the
`patent. The time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection (c).
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`Patent Owner contends that the Petition is barred by Patent Owner’s
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`complaint (Ex. 2003) in the ’678 litigation, allegedly served on Petitioner on
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`August 11, 2014, more than one year prior to the March 8, 2016, filing date
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`of the Petition. Prelim. Resp. 2–5.
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`Petitioner argues that the Petition is not barred by a prior lawsuit filed
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`by Patent Owner against MetroPCS and TeleCommunication Systems, Inc.,
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`arguing that “[t]hose lawsuits were dismissed without prejudice, and thus are
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`treated as if they had never been filed.” Pet. 14. Here, Petitioner refers to
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`the ’96 litigation. Id. (citing Ex. 1019). Nevertheless, Petitioner states that
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`“Patent Owner TracBeam is currently asserting the ’484 Patent . . . against
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`Petitioner T-Mobile in” the ’678 litigation. Id. at 12. Petitioner does not
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`appear to address whether the ’678 litigation bars the Petition.
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`Petitioner also has filed a motion to join the instant Petition to IPR-
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`1708. Mot. for Joinder. Petitioner argues that the Petition is timely by
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`virtue of its Motion for Joinder. Pet. 13–14; see also 35 U.S.C. § 315(b)
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`(“The time limitation set forth in the preceding sentence shall not apply to a
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`request for joinder under subsection (c).”).
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`Joinder, however, is appropriate only when the underlying petition
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`sought to be joined warrants institution. According to 35 U.S.C. § 315(c)
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`(emphasis added):
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`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
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`IPR2016-00728
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`response, determines warrants the institution of an inter partes
`review under section 314.
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`As explained below, we have considered the Petition and the Preliminary
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`Response and determine that the Petition does not warrant the institution of
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`an inter partes review. Accordingly, we do not reach whether the Petition is
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`time barred or whether joinder otherwise would be appropriate.
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`Petitioner’s Motion for Joinder is denied as moot.
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`II. ANALYSIS
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`Institution of inter partes review is subject to Board discretion. “At
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`any time prior to institution of inter partes review, the Board may deny
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`some or all grounds for unpatentability for some or all of the challenged
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`claims. Denial of a ground is a Board decision not to institute inter partes
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`review on that ground.” 37 C.F.R. 42.108(b). In particular, “[i]n
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`determining whether to institute or order a proceeding under this chapter,
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`chapter 30, or chapter 31, the Director may take into account whether, and
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`reject the petition or request because, the same or substantially the same
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`prior art or arguments previously were presented to the Office.” 35 U.S.C.
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`§ 325(d). This is an instance in which Petitioner presents the same prior art
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`in a second petition along with arguments to correct errors in a first petition.
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`Previous panels of this Board have expressed concern with permitting
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`a petitioner to file an inadequate first petition and subsequently allowing the
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`petitioner to correct errors in the first petition through the filing of a second
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`petition. For example, in ZTE Corp. v. ContentGuard Holdings Inc., Case
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`IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12), slip op. at 5–6, a panel
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`explained:
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`IPR2016-00728
`Patent 7,525,484 B2
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`The Board is concerned about encouraging, unnecessarily, the
`filing of petitions which are partially inadequate. A decision to
`institute review on some claims should not act as an entry ticket,
`and a how-to guide, for the same Petitioner who filed an
`unsuccessful joinder motion, and is outside of the one-year
`statutory period, for filing a second petition to challenge those
`claims which it unsuccessfully challenged in the first petition.
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`Similarly, another panel denied a petition with grounds that served as
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`“second bites at the apple” and used a prior decision “as a roadmap to
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`remedy [the first petition’s] prior, deficient challenge,” explaining that
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`“[a]llowing similar, serial challenges to the same patent, by the same
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`petitioner, risks harassment of patent owners and frustration of Congress’s
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`intent in enacting the Leahy-Smith America Invents Act.” Butamax
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`Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, 2014 WL
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`5299385, at *6 (PTAB Oct. 14, 2014) (Paper 8). Patent Owner contends that
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`we should follow this guidance and deny the Petition. Prelim. Resp. 10–19.
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`We agree with Patent Owner that this is a factor that weighs against
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`institution of the Petition.
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`Petitioner (Pet. 6) contends that the Petition is justified by three
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`factors:
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`(1) the prejudice to Petitioners caused by Patent Owner’s
`assertion of an unreasonable number of claims in the co-pending
`litigation; (2) recent deposition testimony from Dr. Dennis
`Dupray, a named inventor of the ’484 Patent, that was not
`available when IPR proceedings IPR2015-01708 and IPR2015-
`01711 were filed; and (3) the public interest in adjudicating the
`validity of a clearly invalid claim and having consistent
`outcomes concerning similar sets of claimed subject matter and
`prior art.
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`As to its first factor, Petitioner argues that, in an act of gamesmanship,
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`Patent Owner asserted over 140 claims against Petitioner in the co-pending
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`district court litigation and dropped the majority of those claims only after
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`Petitioner had filed IPR2015-01708 and IPR2015-01711. Id. at 6–7.
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`Petitioner argues that “[t]his gamesmanship made it unrealistic for the initial
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`IPR petitions to proactively address every conceivable argument from the
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`Patent Owner.” Id. at 7. Patent Owner disputes Petitioner’s accusation of
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`gamesmanship and argues that it properly followed a procedure set by the
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`District Court for electing a reasonable number of claims. Prelim. Resp. 21–
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`22. Patent Owner then follows up with its own gamesmanship accusations
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`concerning the timing of Petitioner’s submissions of invalidity contentions
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`in district court. Id. at 23–24.
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`We are not persuaded by Petitioner’s argument. In IPR-1708,
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`Petitioner devoted a significant portion of its petition to addressing
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`independent claim 25 on the same prior art as asserted here. IPR-1708,
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`Paper 1, 42–53. Even if there was gamesmanship in the district court
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`litigation, Petitioner was unsuccessful as to claim 25 in IPR-1708 not
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`because it failed to anticipate an argument made by Patent Owner, but
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`because it failed to present evidence that the location determination by
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`Loomis’s radio LD unit is independent of the location determination by the
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`outdoor LD unit. 1708-Dec. 18–20.
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`For its second justification, Petitioner argues that, since filing the IPR-
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`1708 petition, Petitioner deposed Dr. Dennis Dupray, a named inventor on
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`the ’484 patent, who allegedly admitted that the limitation of claim 25 we
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`found not established was, in fact, known in the art. Pet. 7–8. According to
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`Petitioner, “Dr. Dupray’s testimony confirms the teachings of Loomis and
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`Wortham: that multiple, independent location techniques can output
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`location estimates that are independent of each other.” Id. at 8. In response,
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`Patent Owner argues that Dr. Dupray was not testifying about Loomis and
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`Wortham, the cited prior art. Prelim. Resp. 25.
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`We are not persuaded by Petitioner’s second justification. Dr. Dupray
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`testified that cell tower triangulation “may or may not be” dependent on
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`GPS “in certain circumstances” and that he believed there existed prior art
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`techniques for cell tower triangulation that were not dependent on GPS.
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`Ex. 1027, 332:5–334:12. To the extent that this testimony is relevant at all,
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`Petitioner does not explain persuasively how it bears on whether the prior art
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`references asserted by Petitioner (in the instant Petition or in the IPR-1708
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`petition) would have taught such a feature.
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`For its third justification, Petitioner argues that “it would be against
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`the public’s interest not to institute inter partes review of this clearly invalid
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`claim.” Pet. 8. Patent Owner responds that it is against public interest to
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`expend the Board’s limited resources on petitions that merely attempt to fix
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`issues that were not presented adequately in an earlier petition. Prelim.
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`Resp. 27 (citing ATopTech, Inc. v. Synopsys, Inc., Case IPR2015-00760, slip
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`op. at 8–9 (PTAB July 21, 2015) (Paper 14) (“[W]e are mindful that
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`permitting second chances without constraint undermines judicial efficiency
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`by expending the Board’s limited resources on issues that were not presented
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`adequately the first time around.”).
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`We are not persuaded by Petitioner’s third justification. In IPR-1708,
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`Petitioner failed to establish a reasonable likelihood of prevailing with
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`respect to the same prior art. While we do not reach whether the second
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`Petition demonstrates a reasonable likelihood of prevailing on that art,
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`Petitioner has not shown that claim 25 is so clearly unpatentable as to
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`undermine public interest.
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`We have considered Petitioner’s proffered justifications as well as
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`Patent Owner’s concerns regarding allowing Petitioner to correct its first
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`petition through filing a second Petition advancing the same prior art. We
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`exercise our discretion, under Section 325(d), to deny the Petition because
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`“the same or substantially the same prior art or arguments previously were
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`presented to the Office.”
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`III. CONCLUSION
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`We exercise our discretion to deny the Petition under 35 U.S.C.
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`§ 325(d). Because we deny the Petition, we deny Petitioner’s Motion for
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`Joinder as moot.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes
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`review is not instituted for claim 25 of U.S. Patent No. 7,525,484 B2; and
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`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied
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`as moot.
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`IPR2016-00728
`Patent 7,525,484 B2
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`PETITIONER:
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`Brian W. Oaks
`BAKER BOTTS, LLP
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP
`chad.walters@bakerbotts.com
`
`Ross G. Culpepper
`BAKER BOTTS, LLP
`ross.culpepper@bakerbotts.com
`
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`PATENT OWNER:
`
`Sean Luner, Esq.
`DOVEL & LUNER LLP
`sean@dovellaw.com
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`
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`Steven C. Sereboff, Esq.
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
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