Docket No.: 2212665.00120US9
`Filed on behalf of K/S HIMPP
`By: Donald R. Steinberg, Reg. No. 37,241
`
`Yung-Hoon Ha, Reg. No. 56,368
`Haixia Lin, Reg. No. 61,318
`Christopher R. O’Brien, Reg. No. 63,208
`Vera A. Shmidt, Reg. No. 74,944
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Email:
`Don.Steinberg@wilmerhale.com
`Yung-Hoon.Ha@wilmerhale.com
`Haixia.Lin@wilmerhale.com
`Christopher.O’Brien@wilmerhale.com
`Vera.Shmidt@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`K/S HIMPP,
`Petitioner
`v.
`III HOLDINGS 4, LLC,
`Patent Owner
`
`
`Case No. IPR2017-00783
`Patent No. 9,191,756
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 2
`A.
`Real Party-in-Interest ............................................................................ 2
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2
`C.
`Lead and Back-Up Counsel ................................................................... 3
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 3
`III. PAYMENT OF FEES ..................................................................................... 4
`IV. CERTIFICATION OF GROUNDS FOR STANDING .................................. 4
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 5
`A.
`Prior Art Patents and Printed Publications ............................................ 6
`VI. SUMMARY OF THE ’756 PATENT ............................................................. 7
`A.
`Brief Description of the ’756 Patent ..................................................... 7
`B.
`Summary of the Prosecution History of the ’756 Patent ...................... 7
`C.
`The Purported Novelty of the ’756 Patent and the State of the
`Art .......................................................................................................... 9
`Level of Ordinary Skill in the Art ....................................................... 10
`D.
`VII. CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“smart phone” ...................................................................................... 11
`B.
`“communication channel” ................................................................... 13
`VIII. OVERVIEW OF PRIOR ART REFERENCES ............................................ 14
`A. Waters .................................................................................................. 14
`B. Anderson ............................................................................................. 16
`
`i
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`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`Teller .................................................................................................... 16
`C.
`Rajann .................................................................................................. 17
`D.
`IX. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’756 PATENT IS UNPATENTABLE .................... 18
`A. Ground 1: Claims 1-5, 7, 9-10, 12-14, and 18-20 Are Rendered
`Obvious by the Combination of Waters and Anderson ...................... 18
`1.
`The law of obviousness ............................................................. 18
`2.
`Claim 1 is obvious over Waters and Anderson ........................ 19
`3.
`Claim 2 is obvious over Waters and Anderson ........................ 30
`4.
`Claim 3 is obvious over Waters and Anderson ........................ 31
`5.
`Claim 4 is obvious over Waters and Anderson ........................ 34
`6.
`Claim 5 is obvious over Waters and Anderson ........................ 36
`7.
`Claim 7 is obvious over Waters and Anderson ........................ 37
`8.
`Claim 9 is obvious over Waters and Anderson ........................ 38
`9.
`Claim 10 is obvious over Waters and Anderson ...................... 39
`10. Claim 12 is obvious over Waters and Anderson ...................... 40
`11. Claim 13 is obvious over Waters and Anderson ...................... 41
`12. Claim 14 is obvious over Waters and Anderson ...................... 42
`13. Claim 18 is obvious over Waters and Anderson ...................... 43
`14. Claim 19 is obvious over Waters and Anderson ...................... 47
`15. Claim 20 is obvious over the combination of teachings of
`Waters and Anderson ................................................................ 48
`B. Ground 2: Claim 8 is Rendered Obvious by the Combination of
`Waters, Anderson, and Rajann ............................................................ 49
`
`ii
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`

`

`1.
`
`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`“The smart phone of claim 7, wherein a rate of the tones
`is increased as a signal strength of the communication
`channel increases.” .................................................................... 49
`C. Ground 3: Claims 11 and 16-17 Are Rendered Obvious by the
`Combination of Waters, Anderson, and Teller ................................... 51
`1.
`Claim 11 is obvious over Waters, Anderson, and Teller .......... 51
`2.
`Claim 16 is obvious over Waters, Anderson, and Teller .......... 56
`3.
`Claim 17 is obvious over Waters, Anderson, and Teller .......... 58
`D. Ground 4: Claims 6 and 15 Are Rendered Obvious by the
`Combination of Waters, Anderson, Teller, and Rajann ...................... 59
`1.
`Claim 6 is obvious over Waters, Anderson, Teller, and
`Rajann ....................................................................................... 59
`Claim 15 is obvious over Waters, Anderson, Teller, and
`Rajann ....................................................................................... 62
`CONCLUSION .............................................................................................. 62
`
`2.
`
`X.
`
`
`iii
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq., K/S
`
`HIMPP (“Petitioner”) respectfully requests inter partes review of claims 1-20 of
`
`U.S. Patent 9,191,756 (EX1001, the “’756 patent”), filed on December 7, 2012 and
`
`issued on November 17, 2015, and which is currently assigned to III Holdings 4,
`
`LLC (“Patent Owner”). The present Petition should be granted because there is a
`
`reasonable likelihood that Petitioner will prevail with respect to at least one of the
`
`claims challenged herein. For the reasons detailed in the Petition, Petitioner
`
`respectfully requests that claims 1-20 of the ’756 Patent be judged unpatentable
`
`and canceled.
`
`The ’756 patent is directed to systems and methods for locating a lost
`
`hearing aid. ’756 patent (EX1001) at Abstract, 1:14-15. Hearing aids are small
`
`and expensive to replace. Id. at 1:32-37.
`
`The ’756 patent recites three main steps for locating a hearing aid: (1)
`
`establish a communication channel between a smart phone and a hearing aid (e.g.,
`
`via a short range wireless protocol such as BLUETOOTH®); (2) monitor the
`
`communication channel; and (3) periodically store data related to the location of
`
`the smartphone as the hearing aid’s last location while the communication channel
`
`is open. Id. at 2:3:22, 6:2-17 (claim 1).
`
`1
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`During prosecution of the ’756 patent, Applicants argued that the prior art
`
`did not disclose storing time/location of the smart phone as the last known location
`
`of the hearing aid while the communication channel was open or in response to
`
`establishing the communication channel. ’756 FH (EX1002) at 7-9, 12-13.
`
`However, this step and the other limitations of the ’756 patent claims were well-
`
`known for locating lost items before the alleged priority date of January 6, 2012.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures.
`
`A. Real Party-in-Interest
`Petitioner K/S HIMPP is a real party-in-interest. For purposes of this
`
`Petition and for the avoidance of disputes, Petitioner identifies HIMPP members
`
`and affiliates GN Hearing A/S (formerly GN Resound A/S) and GN Store Nord
`
`A/S; IntriCon Corporation; Sivantos GmbH and Sivantos Inc.; Sonova Holding AG
`
`and Sonova AG (formerly Phonak AG); Starkey Laboratories, Inc. (aka Starkey
`
`Hearing Technologies); Widex A/S; and William Demant Holding A/S as
`
`additional real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any other matters related to the ’756 patent.
`
`2
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
`C. Lead and Back-Up Counsel
`Petitioner provides the following designation of counsel: Lead counsel is
`
`Donald R. Steinberg Reg. No. 37,241 and back-up counsel is Yung-Hoon Ha Reg.
`
`No. 56,368; Haixia Lin Reg. No. 61,318; Christopher R. O’Brien Reg. No. 63,208;
`
`and Vera A. Shmidt Reg. No. 74,944.
`
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`E-mail:
`Don.Steinberg@wilmerhale.com
`
`
`
`
`
`Yung-Hoon.Ha@wilmerhale.com
`
`Haixia.Lin@wilmerhale.com
`
`Christopher.O’Brien@wilmerhale.com
`
`Vera.Shmidt@wilmerhale.com
`
`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
`
`60 State Street, Boston MA 02109
`
`Telephone: 617-526-6000
`
`
`
`Fax: 617-526-5000
`
`Petitioner consents to email delivery of all documents on lead and backup
`
`counsel.
`
`3
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by
`
`37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
`
`No. 080219. Any additional fees that might be due are also authorized.
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies that the ’756 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified herein. Neither Petitioner
`
`nor any privy of Petitioner has filed any civil actions challenging the validity of
`
`any claim of the ’756 patent or previously requested IPR of the ’756 patent.
`
`Petitioner certifies that it files this petition for IPR more than nine months after
`
`the ’756 patent was granted and less than one year after the date on which
`
`Petitioner or any privy of Petitioner was served with a complaint alleging
`
`infringement of the ’756 patent.
`
`4
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`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Petitioner requests cancellation of claims 1-20 of the ’756 patent (“the
`
`challenged claims”) as unpatentable under 35 U.S.C. §103. 1 This Petition,
`
`supported by the accompanying Declaration of Dr. Robert K. Morrow (“Morrow
`
`Decl.”) (EX1003), demonstrates a reasonable likelihood that the challenged claims
`
`are not patentable and that Petitioner will prevail with respect to at least one
`
`challenged claim. See 35 U.S.C. § 314(a).
`
`Specifically, Petitioner requests institution of an inter partes review of the
`
`challenged claims on the grounds set forth below and requests that each of the
`
`challenged claims be cancelled.
`
`Ground
`1
`
`Basis
`’756 Patent Claims
`1-5, 7, 9-10, 12-14, and 18-20 Obvious over Waters and Anderson
`
`2
`
`3
`
`4
`
`8
`
`11 and 16-17
`
`6 and 15
`
`Obvious over Waters, Anderson, and
`Rajann
`
`Obvious over Waters, Anderson, and
`Teller
`
`Obvious over Waters, Anderson,
`Teller, and Rajann
`
`
`1 The ’756 patent issued from a patent application filed prior to enactment of the
`
`America Invents Act (“AIA”). Accordingly, pre-AIA statutory framework applies.
`
`5
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`A.
`Prior Art Patents and Printed Publications
`Pursuant to Rules 42.22(a) and 42.104(b)(1)-(2), Petitioner’s challenge is
`
`based on the following prior art patents and publications:
`
`EX1006 – U.S. Patent Publication No. 2003/0008659 (“Waters”). Waters
`
`was published on January 9, 2003.
`
`EX1007 – U.S. Patent No. 5,721,783 (“Anderson”). Anderson was issued on
`
`February 24, 1998.
`
`EX1008– U.S. 8,810,392 (“Teller”). Teller was filed on February 2, 2011,
`
`issued on August 19, 2014, and claims the benefit of two February 4, 2010
`
`provisional applications.
`
`EX1009 – U.S. Patent Publication No. 2010/0273452 (“Rajann”). Rajann
`
`was published on October 28, 2010.
`
`The claims of the ’756 patent have an effective date no earlier than January
`
`6, 2012, which is the filing date of the provisional application to which the ’756
`
`patent claims priority. None of the references above was considered during
`
`prosecution of the ’756 patent. All of the above-identified references, except
`
`Teller, were published more than one year prior to January 6, 2012 and are prior art
`
`under 35 U.S.C. §102(b). Teller has a filing date of February 2, 2011 and is a
`
`§102(e) reference.
`
`6
`
`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
`VI. SUMMARY OF THE ’756 PATENT
`A. Brief Description of the ’756 Patent
`The ’756 patent is directed to a portable hand-held electronic device, such as
`
`a smart phone, capable of communicating with a hearing aid through a wireless
`
`communication channel. EX1001 at 1:66-2:5. The smart phone executes an
`
`application and periodically records its current location at the time it receives a
`
`communication signal from the hearing aid. Id. at 1:65-2:14. The last known
`
`location of the hearing aid is then inferred from the location of the smart phone at
`
`the last time the smart phone received a signal from the hearing aid. Id. at 2:14-18.
`
`The time and location data are stored in the memory of the smart phone. Id. at
`
`2:11-13. The application allows the user to access the location of the smart phone
`
`as needed, allowing the user to determine a location where he/she may have lost
`
`the hearing aid. Id. at 1:65-2:48; Morrow Decl. (EX1003) ¶31.
`
`B.
`Summary of the Prosecution History of the ’756 Patent
`The ’756 patent application, U.S. App. No. 13/708,140 (“the ’140
`
`application”) was filed on December 7, 2012 and claims priority to U.S. App. No.
`
`61/583,902, filed on January 6, 2012. The ’140 application was initially filed with
`
`20 claims, including three independent claims. The application issued as the ’756
`
`patent with 20 claims, including independent claims 1, 12, and 18. Portions of the
`
`file history pertinent to the issues in this Petition are summarized below.
`
`7
`
`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`In a first Non-Final Office Action dated October 6, 2014, all the claims 1-20
`
`were rejected under 35 U.S.C. §101 as being directed to non-statutory subject
`
`matter. ’756 FH (EX1002) at 44-48.
`
`Applicants filed a Response on January 6, 2015 that included amendments to
`
`independent claims 1, 12, and 18 to include the word “non-transitory.” Id. at 54-61.
`
`In the Final Rejection mailed on April 6, 2015, all the claims 1-20 were
`
`rejected under 35 U.S.C. §102(e) as being anticipated by U.S. Patent No.
`
`8,526,649 (Foo, EX1004). Id. at 73-82. Foo relates to using a smart phone to
`
`enhance audio signals used by a hearing aid. Foo (EX1004) at Abstract, 2:25-29.
`
`Foo does not directly relate to using a smart phone to locate a hearing aid. Morrow
`
`Decl. (EX1003) ¶36. Rather, Foo relates to providing various notification signals
`
`to a hearing aid using a processing device, such as a smart phone. Foo (EX1004)
`
`at 2:54-67, 2:25-29. The Examiner did not cite any art other than Foo during
`
`prosecution. See ’756 FH (EX1002).
`
`Applicants filed a Response on July 6, 2015, canceling claim 8 and adding
`
`new claim 21. ’756 FH (EX1002) at 90-103. Applicants alleged that Foo does not
`
`disclose:
`
` “periodically store data related to the location of the smart phone as
`
`the last known location of the hearing aid while the communication
`
`channel is open” as recited in claims 1-11 and 21 (issued as claim 8)
`
`8
`
`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
` “periodically store the location as a last known location of the hearing
`
`aid, while the communication channel remains open” as recited in
`
`claims 12–17.
`
` “storing time data and location data in a non-transitory computer
`
`readable storage medium of the smart phone in response to
`
`establishing the communication channel” as recited in claims 18-20.
`
`Id.
`
`On July 17, 2015, the Examiner issued a Notice of Allowance, noting that
`
`Foo does not teach the three elements identified above. Id. at 109-115.
`
`C. The Purported Novelty of the ’756 Patent and the State of the Art
`According to the ’756 patent, “hearing aids are expensive, small, and easy to
`
`lose … losing a hearing aid is a common occurrence.” ’756 patent (EX1001) at
`
`1:33-40. The purported novelty of the ’756 patent appears to be the use of a hand
`
`held electronic device “configured to communicate with the hearing aid” through a
`
`wireless communication channel (such as BLUETOOTH®), while executing a
`
`locator application to monitor/store the electronic device location to locate a
`
`misplaced hearing aid. Id. at 1:66-2:13, 2:61-62. Morrow Decl. (EX1003) ¶39.
`
`However, the concept of monitoring/storing the location of items with hand
`
`held electronic devices using wireless communications such as BLUETOOTH®
`
`9
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`was not novel at the time of application for the ’756 patent. Morrow Decl.
`
`(EX1003) ¶40.
`
`For example, Waters and Teller both disclose using a mobile
`
`telecommunications device to monitor/store the location of a variety of items using
`
`wireless communications such as BLUETOOTH® to aid with locating those items.
`
`Waters (EX1006) at Abstract, ¶0010; Teller (EX1008) at Abstract, 5:59-6:11.
`
`Moreover, BLUETOOTH® was in use with hearing aids prior to the ’756 patent’s
`
`alleged priority date. See, e.g., Teller (EX1008) at 5:59-64, 13:43-46 (disclosing
`
`the use of the hearing aid as a monitoring device using BLUETOOTH® and other
`
`methods of wireless communication); Klemmensen (EX1010) at ¶0005 (disclosing
`
`pairing hearing aid accessories based on “Bluetooth technology”). Morrow Decl.
`
`(EX1003) ¶41.
`
`D. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) of the ’756 patent would have
`
`had, as of January 2012, at least a bachelor’s degree in electrical engineering,
`
`computer science, or an equivalent science/engineering degree and at least two
`
`years of experience in wireless technologies and systems, including experience
`
`with short-range wireless protocols, or would have at least four years of experience
`
`in electronic system design. Morrow Decl. (EX1003) ¶30.
`
`10
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`
`VII. CLAIM CONSTRUCTION
`In an IPR, the terms in the challenged claims should be given their plain
`
`meaning under the broadest reasonable interpretation standard. Cuozzo Speed
`
`Technologies, LLC v. Lee, 136 S. Ct. 2131, 2145-46 (2016). If the specification
`
`sets forth an alternate definition of a term with reasonable clarity, deliberateness,
`
`and precision, the patentee’s lexicography governs. In re Paulsen, 30 F.3d 1475,
`
`1480 (Fed. Cir. 1994). Petitioner adopts this standard for this proceeding, but
`
`reserves the right to pursue different constructions in a district court, where
`
`different claim construction standards apply.
`
`Should Patent Owner contend that a claim has a construction different from
`
`its broadest reasonable interpretation, the appropriate course is for Patent Owner to
`
`seek to amend the claim to expressly correspond to its contentions in this
`
`proceeding. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
`
`Any claim terms not included in this section have their broadest reasonable
`
`meaning in light of the specification as commonly understood by those of ordinary
`
`skill in the art.
`
`A.
`“smart phone”
`Claims 1-11 and 18-20 recite this term. This term should be construed as a
`
`mobile device that integrates computing capabilities, including a memory that
`
`stores applications and a processor that runs a variety of software applications, and
`
`11
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`cellular telephone capabilities. This construction is consistent with how the term
`
`was understood in 2012. American Heritage Dictionary (EX1011) 1652 (5th ed.
`
`2011) (defining “smart phone” as “A cell phone that includes features of a PDA,
`
`such as applications for reading and sending e-mail, maintaining a calendar, and
`
`browsing the web.”); Barron’s Dictionary of Computer and Internet Terms
`
`(EX1012) 457 (11th ed. 2013) (defining “smart phone” as “a cellular telephone
`
`that includes the functions of a PDA (a general-purpose pocket-sized computer),
`
`such as web browsing, Wi-Fi wireless access, a camera, and a music player.”).
`
`Morrow Decl. (EX1003) ¶43. See also I. Sager, Before IPhone and Android Came
`
`Simon, the First Smartphone (June 29, 2012) (EX1013) at 2 (“Simon was the first
`
`smartphone. Twenty years ago, it envisioned our app-heavy mobile lives,
`
`squeezing the features of a cell phone, pager, fax machine, and computer into an
`
`18-ounce black brick.”); T. Martin, The evolution of the smartphone (July 29, 2014)
`
`(EX1014) at 13 (“The term ‘smartphone’ would not be coined until [1997], when
`
`Ericsson released … Penelope. … Through the turn of the century, other
`
`manufacturers began mashing up PDA functionality with cell phones.”); B. Kasoff,
`
`A Closer Look: The Evolution of the Smart Phone (September 19, 2014) (EX1016)
`
`(describing various smartphone released between 1994-2012, including 1999
`
`Qualcomm pdQ Smartphone that “Integrated Palm PDA and internet connectivity”
`
`12
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`and 2000 Ericsson R380 that “Combined mobile phone and PDA functions, limited
`
`web browsing and resistive touchscreen”). Morrow Decl. (EX1003) ¶43.
`
`The ’756 specification discloses, “Embodiments of a system are described
`
`below that include a portable or hand held electronic device (such as a cell phone,
`
`smart phone, personal digital assistant (PDA), tablet computer, or other portable
`
`computing system) that is configured to communicate with the hearing aid.” ’756
`
`patent (EX1001) at 1:66-2:3. The ’756 patent does not define a “smart phone.”
`
`Morrow Decl. (EX1003) ¶44.
`
`Petitioner’s proposed construction is consistent with the specification of
`
`the ’756 patent, the plain and ordinary meaning of the term “smart phone”, and
`
`captures the factors that are necessary to determine whether a device could be
`
`considered a smart phone in 2012: the integration of computing capabilities,
`
`including a memory that stores applications and a processor that runs a variety of
`
`software applications, and cellular telephone capabilities in the same device.
`
`Morrow Decl. (EX1003) ¶45.
`
`B.
`“communication channel”
`Claims 1-20 recite this term. “Communication channel” should be construed
`
`as communication links or connections using a wireless communication protocol,
`
`including (but not limited to) BLUETOOTH®. Morrow Decl. (EX1003) ¶46.
`
`13
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`

`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`The ’756 patent describes a BLUETOOTH® communication channel as
`
`within the scope of the claimed “communication channel.” ’756 patent (EX1001)
`
`at 2:14-15 (“[t]he electronic device communicates with the hearing aid via a short
`
`range wireless protocol (such as Bluetooth®)”); 2:58-62 (“Electronic device 120
`
`includes a transceiver 148 … Transceiver 148 is a radio frequency transceiver
`
`configured to communicate with hearing aid 102 through a short range wireless
`
`communication channel, such as a Bluetooth®.”). However, neither the ’756
`
`specification or claims limit the communication channel to any particular protocol.
`
`Morrow Decl. (EX1003) ¶47.
`
`Accordingly, the proposed construction is consistent with the specification
`
`of the ’756 patent and with the ordinary use of the term. Id. at ¶48.
`
`VIII. OVERVIEW OF PRIOR ART REFERENCES
`A. Waters
`Waters relates
`
`to a mobile communications device (e.g., a PDA
`
`incorporating a mobile telephone) having a long range cellular transceiver, and a
`
`short range telecommunications transceiver that can communicate, for example,
`
`via BLUETOOTH®, with a variety of other personal devices. Waters (EX1006) at
`
`¶¶0010, 0075, 0077. The mobile communications device monitors the presence of
`
`the members with which it is in communication (e.g., members of the piconet) and
`
`keeps an activity log of the presence of the items and its own location. Id. at
`
`14
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`

`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`¶¶0082-0083. The “activity log may be time-stamped and location stamped.” Id.
`
`at ¶0022. Morrow Decl. (EX1003) ¶49.
`
`Waters discloses that the location of the mobile communication device may
`
`be stored as the last known location of another device with which it is in
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`communication. Id. at ¶0024 (“If direct piconet connection is made between a first
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`device which has no inherent self-location abilities and another, second, device
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`which does know its own location [e.g., a PDA/mobile phone], then the first device
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`may assume itself to be at the same, known, location as the second device.”).
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`With Waters’ device, “creation of the activity logs of the piconet devices
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`preferably occurs automatically … when the devices form a piconet.” Id. at ¶0025.
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`Morrow Decl. (EX1003) ¶50.
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`The activity log of Waters may be used to locate a misplaced item. Id. at
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`¶0035 (“a piconet telecommunications device … in which the controller is capable
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`of receiving a request to search for a missing item of known identity and upon
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`such request is adapted to screen the activity log to identify historic piconets
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`known to the device to have contained the missing item and the positional location
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`of the historic piconet which last contained the missing item, the device being
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`adapted to communicate the last, piconet-known to the device, location of the
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`missing item to the user.”); id. at ¶0095 (“When person 10 realises [sic] that they
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`do not have their glasses, at say 10.45 pm, they enter a ‘find glasses G1’
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`command into their device 10. This then tries to find the glasses.”). Morrow Decl.
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`(EX1003) ¶51.
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`B. Anderson
`Anderson relates to a hearing aid which communicates wirelessly with a
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`remote processor unit, or RPU. Anderson (EX1007) at Abstract. The system of
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`Anderson can be used to assist users in the “location of misplaced hearing aid
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`system components.” Id. at 1:16-17, 3:1-2. Anderson discloses searching for a
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`misplaced hearing aid using an RPU: “if an earpiece is misplaced, the user
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`manually activates (using, for example, the keyboard 946) a search mode program
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`(i.e., a … program that indicates on the display 954 that communication has been
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`established with an earpiece) in the RPU and observes the RPU display 954 while
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`moving around searching for the earpiece.” Id. at 22:3-8. Morrow Decl. (EX1003)
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`¶52.
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`C. Teller
`Teller relates to using wireless monitoring devices to monitor the presence
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`of a variety of items using wireless communication channels or sensing technology,
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`such as BLUETOOTH®. Teller (EX1008) at Abstract, 5:57-6:11. The monitoring
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`device of Teller can “alert a user who has or is about to misplace, forget, lose, or
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`otherwise have an item removed from the user’s presence.” Id. at 5:57-59. The
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`monitoring device “may provide the location coordinates of the monitoring device
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`when the monitoring device last sensed the item.” Id. at 13:10-12. The monitoring
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`device “may communicate with servers or other computing devices via a mobile
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`telecommunications network or other wireless telecommunications network …
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`using any known standard.” Id. at 8:45-50. If the monitoring device loses contact
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`with a particular item, it first attempts to re-establish communication before
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`alerting the user: “two attempts to detect an item are made … before an alert is
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`generated for the user.” Id. at 12:7-8. Morrow Decl. (EX1003) ¶¶53-55.
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`D. Rajann
`Rajann relates to systems and methods for “facilitating location of a targeted
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`wireless communications device (WCD).” Rajann (EX1009) at Abstract. Rajann
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`discloses that the WCD may “establish[] a communication link with a searching
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`entity through, Bluetooth.” Id. at ¶0043. In addition, Rajann incorporates the
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`ability to “zero-in on the location of the misplaced wireless device within the
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`uncertainty zone” by using an “audible and/or graphic output [that] may represent
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`a ‘getting hotter’ or ‘getting colder’ indication, e.g., such as increasingly frequent
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`beeping when the searching device is moving nearer to the misplaced device.” Id.
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`Morrow Decl. (EX1003) ¶56.
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`U.S. Patent No. 9,191,756
`Petition for Inter Partes Review
`IX. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’756 PATENT IS UNPATENTABLE
`A. Ground 1: Claims 1-5, 7, 9-10, 12-14, and 18-20 Are Rendered
`Obvious by the Combination of Waters and Anderson
`As detailed in the discussion below, Waters and Anderson describe or
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`suggest each and every element of claims 1-5, 7, 9-10, 12-14, and 18-20, and
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`render these claims obvious.
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`1.
`The law of obviousness
`As reiterated by the Supreme Court in KSR International Co. v. Teleflex Inc.
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`(KSR), 550 U.S. 398 1385 (2007), the framework for the objective analysis for
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`determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere
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`Co., 383 U.S. 1 (1966). Obviousness is a question of law based on underlying
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`factual inquiries. The factual inquiries enunciated by the Court are as follows:
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`(A) Determining the scope and content of the prior art; and
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`(B) Ascertaining the differences between the claimed invention and the prior
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`art; and
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`(C) Resolving the level of ordinary skill in the pertinent art.
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`Id. at 17-18.
`In determining obviousness, it is often necessary to look at “interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 418.
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`“[W]hen a patent simply arranges old elements with each performing the
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`same function it had been known to perform and yields no more than one would
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`expect from such an arrangement, the combination is obvious.” Id. at 417. Further,
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`“if a technique has been used to improve one device, and a POSA would recognize
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`that it would improve similar devices in the same way, using the technique is
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`obvious unless its actual application is beyond that person’s skill.” Id. at 401.
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`2.
`
`Claim 1 is obvious over Waters and Anderson
`a.
`“A smart phone comprising:”
`Waters teaches a smart phone. Waters (EX1006) at ¶00772 (“FIG. 2 shows a
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`device 30 suitable for use with the network 26. The device 30 is a personal digital
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`assistant, PDA, (instead of a mobile telephone as shown in FIG. 1) and has a
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`control processor 32, a battery 34, a display screen 36, a microphone 38, a speaker
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`40, a key pad 42, a mouse (or cursor-pointing device) 44, a short range
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`telecommunications transceiver (emits and receives) 46, and a longer range cellular
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`transceiver 48. Transceiver 48 has cellular telephone capability and the PDA
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`incorporates a mobile telephone … Transceiver 48 is also connected to a GPS
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`
`2 All emphasis herein added unless otherwise indicated.
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`global positioning satellite) unit 49 which can fix the location of the PDA.”).
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`Morrow Decl. (EX1003) ¶58. As discussed in the claim construction section VII.A,
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`a smart phone should be construed as a mobile device that integrates computing
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`capabilities, including a memory that stores applications and a p