Gordon * Howard Associates, Inc.v.Lunareye, Inc.

Patent Trial and Appeal Board

Feb 2, 2016

10008893 (P.T.A.B. Feb. 2, 2016)

Trials@uspto.gov Paper 37
571-272-7822 Entered: February 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GORDON * HOWARD ASSOCIATES, INC.,
Petitioner,

v.

LUNAREYE, INC.,
Patent Owner.
____________

Case IPR2014-01213
Patent 6,484,035 B2
____________

Before MICHAEL W. KIM, GEORGIANNA W. BRADEN, and
J. JOHN LEE, Administrative Patent Judges.

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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INTRODUCTION
On July 29, 2014, Gordon * Howard Associates, Inc. (“GH”) filed a
Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–24 of
U.S. Patent No. 6,484,035 B2 (Ex. 1002, “the ’035 patent”). Patent Owner
LunarEye, Inc. (“LunarEye”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). An inter partes review of claims 1–24 was instituted on
February 3, 2015. Paper 11 (“Inst. Dec.”). After institution, LunarEye filed
a Patent Owner Response (Paper 17, “PO Resp.”), and GH filed a Petitioner
Reply1 (Paper 28, “Pet. Reply”). In addition, GH filed a Motion to Seal
requesting that Exhibit 1028 be sealed.2 Paper 30 (“Mot. Seal”). An oral
hearing was held on September 15, 2015. Paper 35 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As
discussed below, GH has shown by a preponderance of the evidence that
claims 1–24 of the ’035 patent are unpatentable.
A. Related Proceedings
The ’035 patent is at issue in a pending district court case involving
the same parties in this proceeding, Lunareye, Inc. v. Gordon Howard
Associates, Inc., No. 9:13-cv-91 (E.D. Tex.). Pet. 1; Paper 4, 2.
Additionally, the ’035 patent is the subject of Gordon * Howard Associates,

1 GH filed both a confidential Petitioner Reply (Paper 29), and a redacted
Petitioner Reply (Paper 28), in which confidential information is redacted.
The redacted information was not relied on for this Decision. Thus, all
citations to the Petitioner Reply refer to the redacted version.
2 GH filed both confidential and redacted versions of the Motion to Seal
(Paper 30 (redacted); Paper 31 (confidential)) and Exhibit 1028. All
citations to the Motion refer to the redacted version.
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Inc. v. LunarEye, Inc., Case IPR2014-00712 (“712 IPR”), in which a Final
Written Decision was issued on September 28, 2015, determining that claim
3 of the ’035 patent is unpatentable under 35 U.S.C. § 103(a). See 712 IPR,
Paper 43. LunarEye filed a Notice of Appeal of that decision on November
24, 2015. 712 IPR, Paper 45.
B. The ’035 Patent
The ’035 patent relates to a “triggerable location-reporting apparatus,”
where the apparatus transmits its location information in response to a
“trigger signal.” Ex. 1002, Abstract. The Summary of the Invention states:
In general, in one aspect, the invention features a triggerable
location-reporting apparatus comprising a trigger signal, a GPS
processor coupled to the trigger signal, a position signal
carrying position information generated by the GPS processor
in response to the trigger signal, a telemetry transmitter coupled
to the position signal, and a telemetry transmit signal
transmitted by the telemetry transmitter, the telemetry transmit
signal carrying the position information.
Id. at 2:1–9. In addition, the apparatus may include a controller configured
to switch on and off the power signals to the GPS processor and telemetry
transmitter. Id. at 2:10–19. The specification indicates that this “power
management” by the controller limits power drain. Id. at 6:23–40.
Further, the specification describes a “data selector” operating such
that certain bits of location data from a GPS device are not included in the
data signal transmitted by the apparatus—for example, “only the bits
representing latitude, longitude, velocity and heading . . . are included in the
data to transmit signal” while “the bits representing height and current time
are discarded.” Id. at 7:4–15; see id. at Figs. 6, 7. Additionally, the
specification states that “it may be desirable to change the order that the
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various portions of the information are transmitted.” Id. at 7:15–17. Thus,
in sum, the data selector selects the data to be transmitted and arranges it
into the desired order. Id. at 7:18–20.
C. Challenged Claim
Claims 1–4, 10, and 17 are independent claims. Claim 3 is illustrative
of the challenged claims:
3. A triggerable location-reporting apparatus comprising:
a location-signal generating device configured to produce a
location signal including location data when enabled;
a data selecting device for selecting less than all of the location
data to include in the location signal;
a telemetry transmitter coupled to the data selecting device
configured to transmit the location signal when enabled; and
an enable controller configured to enable the location signal
generating device and the telemetry transmitter when it receives
a trigger signal and to disable the location-signal generating
device and the telemetry transmitter after the telemetry
transmitter transmits the location signal;
wherein the data selecting device reorders the selected location
data.
D. Instituted Ground of Unpatentability
This inter partes review was instituted on the following grounds of
unpatentability (Inst. Dec. 27):
Claim(s) Basis Prior Art
1, 2 35 U.S.C. § 103(a) Mohan,3 Oncore,4 and Roach5

3 U.S. Patent No. 6,121,922, issued Sept. 19, 2000 (Ex. 1006).
4 Motorola, Oncore User’s Guide, Revision 7.0, May 1996 (Ex. 1007).
5 U.S. Patent No. 5,526,401, issued June 11, 1996 (Ex. 1008).
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Claim(s) Basis Prior Art
3–24 35 U.S.C. § 103(a) Mohan and Lewis6
3, 21 35 U.S.C. § 103(a) Mohan, Oncore, and Lewis
ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted, Cuozzo Speed
Techs. LLC v. Lee, 84 U.S.L.W. 3218 (U.S. 2016). Only those terms in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999).
In the Decision on Institution, certain claim terms were construed
preliminarily as follows:
Claim Term Claim Construction
location data
data generated by the location-signal
generating device, which may include, but is
not limited to, GPS data such as latitude,
longitude, height, velocity, heading, and time
data selector / data selecting
device
device capable of selecting location data to
include in the location signal
reorders arranges into the desired order for transmission

6 U.S. Patent No. 5,587,715, issued Dec. 24, 1996 (Ex. 1009).
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Inst. Dec. 7–9. During trial, the parties did not dispute the above
construction of “location data,” nor was any conflicting evidence presented.
Thus, after considering the record anew, we maintain the same construction
for this Decision, and we incorporate our previous analysis set forth in the
Decision on Institution. See id. at 7. The parties, however, raised certain
issues relating to the terms “data selector”/“data selecting device” and
“reorders,” which are addressed in more detail below.
1. Data Selector / Data Selecting Device
LunarEye argues that the “data selector” of claim 1, and the “data
selecting device” of claims 3–24, must be further construed to exclude any
device that is located physically inside of a GPS receiver. PO Resp. 20–26;
see Ex. 2031 ¶ 15 (Declaration of Joseph C. McAlexander III). According
to LunarEye, the specification of the ’035 patent distinguishes between the
claimed data selecting device and a GPS receiver, and a “Motorola®
OncoreTM GPS receiver” in particular.7 Id. GH disagrees the specification
compels such a limitation. Pet. Reply 1–5.
The record evidence does not support LunarEye’s position. LunarEye
relies on the specification’s descriptions of certain embodiments. For
example, Figure 2 of the ’035 patent is a block diagram depicting certain
features of an embodiment of the claimed invention, including Global
Positioning Satellite System Receiver 48 (“GPS Receiver 48”) and
Controller 36. Ex. 1002, Fig. 2, 5:49–6:8; see PO Resp. 20–21 & n.48. As
an initial matter, LunarEye does not identify anything in Figure 2 or its

7 We note that many of the challenged claims recite a “location-signal
generating device,” which is not limited necessarily to a GPS receiver, much
less a particular brand or model of GPS receiver.
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accompanying description requiring that GPS Receiver 48 and Controller 36
be physically distinct components. Even if there was such a requirement,
however, “a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions
of embodiments in the specification is unpersuasive for the same reason.
See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s
proffered expert relying on descriptions of embodiments for opinion that
data selecting device is external to GPS receiver). Merely describing a
narrower embodiment does not constitute the clear disclaimer required to
apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
In addition, LunarEye also contends the claim language itself
indicates the recited GPS receiver (or location-signal generating device) and
data selector are physically distinct components. PO Resp. 22. LunarEye
asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first,
and that the data selector operates on that output of the GPS receiver to
produce “selected GPS data.” Id. at 22–23. According to LunarEye, this
claim language requires that the GPS receiver and data selector be “distinct,”
i.e., physically separate. See id. at 20–22. The claim language, however,
does not support LunarEye’s position. Although claims 1 and 2 recite the
GPS receiver and data selector separately and recite distinct functions for
each, nothing in those claims indicates these structures must be physically
separated or precludes one being housed physically within the other,
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particularly under their broadest reasonable interpretation. LunarEye does
not present any compelling evidence indicating otherwise.
With respect to the “data selecting device” of claims 3–24, LunarEye
contends those claims, and claim 3 in particular, specify that the location-
signal generating device produces a location signal including location data
first, and the recited data selecting device must be outside of the location-
signal generating device because it operates on the output of the location-
signal generating device, i.e., after the location signal is produced. Id. at 23–
26. Again, the claim language does not compel a conclusion that these
structures must be physically separated, however, and LunarEye does not
identify any persuasive evidence compelling such an interpretation.
Further, claims 3–24 (as well as claim 1) are apparatus claims, not
method claims, and recite a series of components with their functions rather
than claiming steps of a process. Moreover, claim 3 recites that the location-
signal generating device is configured to “produce a location signal
including location data,” and that a function of the data selecting device is
“selecting less than all of the location data to include in the location signal”
(emphasis added).8 Thus, the claim does not, “as a matter of logic or
grammar,” mandate that the data selecting device act after the location-

8 LunarEye also appears to assert that the location signal recited with respect
to the data selecting device actually is not the same location signal produced
by the location-signal generating device, but rather a second location signal
required by the claim. See PO Resp. 24 (discussing a district court order
purportedly describing such an interpretation). This argument is not
supported by the claim language or the specification—claim 3 only recites
one “location signal.” We rejected the same argument in the 712 IPR, where
LunarEye provided more extensive explanation of this argument, and we
adopt the same analysis here. See 712 IPR, Paper 43, 8–9.
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signal generating device produces the location signal. See Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001).
To the contrary, the language of claim 3 indicates the data selecting device
may participate during the production of the location signal by the location-
signal generating device, because the data selecting device selects location
data to include in “the” location signal (i.e., the same “location signal
including location data” as that produced by the location-signal generating
device, from which it derives its antecedent basis). See Pet. Reply 4. Thus,
the claim language does not preclude the data selecting device from being
located within—or, indeed, being a part of—the location-signal generating
device. LunarEye does not identify any disclosure in the specification
indicating that it is important for the data selecting device to act after the
location-signal generating device produces the location signal, or
disclaiming any particular order in which those components may operate.
See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003).
Based on the complete record, the broadest reasonable interpretation
of the claim terms “data selector” and “data selecting device” is “device
capable of selecting location data to include in a location signal.”
Furthermore, the term does not preclude the data selector/data selecting
device from being located physically within the GPS receiver or location-
signal generating device.
2. Reorders / Reordering
LunarEye argues the preliminary construction set forth in the Decision
on Institution—“arranges the selected location data into the desired order for
transmission”—is incorrect because it does not require the selected location
data to be in a preexisting order. See PO Resp. at 27–31 (arguing the
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asserted prior art references fail to teach the “reorders” limitation because
they do not disclose a preexisting order). According to LunarEye, “the
‘reordering’ as call[ed] for in the claims of the ’035 patent requires ordered
location data in a location signal before it is processed by the data selector/
data selecting device.” PO Resp. 30.
GH contends the preliminary construction is correct,9 and that the
term “reorders” does not require the data to be in an initial order before
reordering. Pet. Reply 6–8. Primarily, GH relies on a claim differentiation
argument, noting that claim 21 recites, “wherein the data selecting device
reorders the selected location data comprises rearranging the location data.”
Id. at 7–8. Relying on Mr. McAlexander’s testimony, GH contends
“rearranging” should be understood as “changing the position” whereas
“reordering” should be construed as “arranges into a desired order for
transmission.” Id. (quoting Ex. 1023, 126:5–127:3).
Our preliminary construction of “reorders” in the Decision on
Institution (Inst. Dec. 8–9), as “arranges the selected location data into the
desired order for transmission,” was based primarily on the ’035 patent
specification, which describes the reordering function:
An example of the data selector function is illustrated in FIGS.
6 and 7. The Motorola® GT Plus OncoreTM GPS family of
chips produces an digital output signal 86 containing bits
representing the latitude, longitude, height, velocity, and
heading of the apparatus 12 and the current time, as shown in
FIG. 6. . . . Preferably, only the bits representing latitude,
longitude, velocity and heading 88 are included in the data to

9 In its Petition, GH proposed that this term be construed as “alters or
altering the format of a signal that comprises location data, such as by
rearranging the location date or omitting a portion of the location data.” Pet.
27.
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transmit signal 56, as shown in FIG. 7. . . . Further, it may be
desirable to change the order that the various portions of the
information are transmitted. For example, it may be desirable
to send the heading portion first. The data selector selects the
data to be transmitted and arranges it into the desired order.
Ex. 1002, 7:4–20 (emphasis added). We concluded, “the specification
explains that reordering the selected location data encompasses arranging the
data received from the location-signal generating device (e.g., a GPS device)
into the order desired for transmission.” Inst. Dec. 9.
Under the broadest reasonable interpretation standard, claim terms
generally are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the patent’s
specification. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). The ordinary meaning of the term “reorders”—as contrasted
with “orders”—indicates a change in order. The specification supports this
understanding of the term, stating that “it may be desirable to change the
order that the various portions of the information are transmitted.” Ex.
1002, 7:15–17 (emphasis added).
We acknowledge GH’s claim differentiation argument but decline to
adopt the broader interpretation advanced by GH. The Federal Circuit has
indicated that claim differentiation cannot overcome a construction
compelled by either the claim language or the specification. Marine
Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012);
Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1329 (Fed. Cir.
2001). Also, we note that GH does not identify any intrinsic evidence
supporting the distinction it draws between reordering and rearranging,
relying instead on the extrinsic testimony of LunarEye’s expert. Pet. Reply
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7–8. Consequently, GH’s evidence is not persuasive in light of the plain
meaning of the term “reorders” and the specification’s description of
reordering as changing order.
Therefore, based on the parties’ arguments and evidence developed
since the Decision on Institution, we now determine the broadest reasonable
interpretation of “reorders” is “changes the order into the desired order for
transmission,” such as the order of selected GPS or location data.10
B. Alleged Unpatentability Under § 103
GH contends claims 1 and 2 of the ’035 patent are obvious in light of
the teachings of Mohan, Oncore, and Roach; claims 3–24 are obvious in
light of the teachings of Mohan and Lewis; and claims 3 and 21 are obvious
in light of the teachings of Mohan, Oncore, and Lewis. Pet. 11–22. Based
on the complete record, GH has shown by a preponderance of the evidence
that claims 1–24 are unpatentable for the reasons explained below.
1. Mohan
Mohan discloses a tracking system using a miniaturized geographic
position determination and communications module. Ex. 1006, Abstract.
The tracking system includes “GPS receiver 520,” which produces a signal
comprising “[g]eographic position data such as latitude, longitude and
altitude.” Id. at 3:5–15, Fig. 1. This geographic position data is then
transmitted over a network via “communications transmitter/receiver 540.”
Id. Additionally, Mohan teaches that position information may be

10 On this record, it is unnecessary to resolve whether this claim term
requires in every instance that the selected location data be placed first in an
initial order before being reordered into a different order, because the
asserted prior art sufficiently teaches changing the order from an initial order
to a different order, as explained below.
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transmitted in response to activation of a panic function or a request from a
remote location. Id. at 2:15–19. The system of Mohan also includes a
power management subsystem:
Upon activation, the system enters a full power mode state as
shown at node 206, then enters an “acquire GPS position” state
as shown at node 202. When a positioning signal is received,
as indicated by symbol 203, the system remains in this state, as
indicated by loop line 205, until a geographic fix has been
determined. At this point, the system enters a ready state and a
communications link is opened, as shown at node 208. The
system remains in this state until a link has been established, at
which point a ready condition is entered, and identification and
position information are transmitted according to node 210, as
shown by symbol 211.
Id. at 5:10–20 (emphases added); see id. at Fig. 3. After the system reports
the position information, the communications link is closed and the system
enters a “low-power mode.” Id. at 5:44–48. Mohan’s claims recite “a
controller operative to . . . cause the global positioning satellite receiver to
receive and decode a signal . . . containing information relating to the
geographic position of the module, cause the communications transceiver to
communicate the information to a remote location, and disable the global
positioning satellite receiver and communications transceiver when not in
use.” Id. at 7:29–39.
2. Oncore
The Oncore reference is a user’s guide to Motorola’s Oncore GPS
receiver products.11 Ex. 1007, 1.1. Oncore discloses that GPS signals from
GPS satellites are routed to a “position processor (microprocessor [MPU])

11 GH asserts Oncore is a printed publication that was publicly available as
early as May 1996, relying on Oncore and the Declaration of Art Sepin (Ex.
1011). LunarEye does not dispute that Oncore is applicable prior art.
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section.” Id. at 3.2. The MPU decodes and processes satellite data and
measurements used to compute position and velocity. Id. According to
Oncore, the Motorola GPS receiver transmits autonomous position, velocity,
heading, satellite tracking status, and time information in “three different,
user selectable I/O protocols.” Id. at 1.1; see id. at 5.1–5.2.
Oncore provides further information regarding each available I/O
protocol. One of them is the “NMEA-0183 standard format,” which
includes several “NMEA output messages.” Id. at 5.7. A user can enable or
disable each output message independently. Id. Thus, more than one output
message can be enabled and transmitted. See also id. at 5.8 (discussing “the
case where more than one output message is scheduled during the same one
second interval”). One such message is the “GPGGA” message, which
includes certain data fields in the following order: UTC of position fix (i.e.,
time), latitude, longitude, GPS quality indicator, number of satellites being
used, HDOP, antenna height, geoidal separation, age of differential data, and
differential reference station ID. Id. at 6.149. Another such message is the
“GPGLL” message, which includes only latitude, longitude, and UTC of
position fix (i.e., time), in that order. Id. at 6.153. The GPGLL message
does not include several of the data fields included in the GPGGA message,
such as antenna height, and includes time in a different order relative to
latitude and longitude. Compare id. at 6.153, with id. at 6.149.
3. Roach
Roach is directed to a “data message system” operating on a cellular
mobile radiotelephone (CMR) system. Ex. 1008, 9:2–6, 9:22–30. A
“typical” and “conventional” CMR system is described, including “mobile
switching center (MSC) 24” that communicates with “cell 12,” which
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comprises a particular geographic radio service area wherein cellular devices
communicate with the system. Id. at 9:31–54. The patent further discloses
“cellular communications device 34” transmitting “selected data” to MSC
24, which receives the data message via “cellular network control channel
38.” Id. at 9:55–10:12. Control channel 38 includes a forward control
channel and a “reverse control channel (RECC).” Id. at 10:12–16. Cellular
device 34 can use the reverse control channel to communicate with the
network and, ultimately, MSC 24. Id. at 10:18–30.
The data messages disclosed in Roach are formatted as an
identification signal, which is normally transmitted by a cellular device to
identify itself to the CMR system when it first connects to the system. Id. at
6:40–47. This format includes a mobile telephone number and an
“electronic serial number (ESN).” Id. at 6:47–49. The selected data within
the data message is transmitted in the data field normally representing the
ESN. Id. at 6:49–53. The mobile telephone number, also known as a
“Mobile Identification Number (MIN)” (id. at 12:57–60), is used in the
process of registering a cellular device with the CMR network. Id. at 13:30–
39. The data message system of Roach can adapt the identification signal
format to substitute data relating to a data message into the data field
normally reserved for the MIN. Id. at 18:16–26.
4. Lewis
Lewis is directed to an apparatus and method of determining
accurately the position of an object. Ex. 1009, Abstract. The apparatus
includes “vehicle tracking unit 14,” which comprises “ground GPS receiver
48 for receiving and processing the GPS signals received from the satellites
12,” and formats and transmits signals via “modem 74” and “cellular
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transceiver 52.” Ex. 1009, 9:19–25, 10:53–56. Receiver 48 may be
“adapted to receive and process GPS signals” as well as producing outputs
in the NMEA-0183 standard format. Id. at 9:25–36. For example, Lewis
describes formatting output messages as a “$GPGGA” message that
includes, for example, fields for time, latitude, longitude, number of
participating satellites, a data quality indicator, horizontal or position
dilution, antenna altitude, ellipsoid separation between satellites, etc. Id. at
9:36–52. Lewis also describes output messages that include only “vehicle
location, speed and direction of movement” (id. at 10:4–8), or “a start-of-
header preamble, a start-of-text command, the message text in the form of
the vehicle location and time data, and an end-of-text suffix” (id. at 11:45–
56). See also id. at 9:52–58 (describing a “$GPVTG” message that includes
simply vehicle direction and speed).
5. Claims 1 and 2: Mohan, Oncore, and Roach
GH contends the combination of Mohan, Oncore, and Roach renders
claims 1 and 2 unpatentable as obvious. Pet. 11–16. In particular, GH
asserts that Mohan teaches a GPS receiver that receives a position signal
(i.e., GPS signals) and communicates geographic position information (i.e.,
GPS data) when activated. Id. at 30–31 (citing Ex. 1006, 2:15–19, 5:10–15).
Also, GH submits that Oncore also teaches the recited GPS receiver by
disclosing the Oncore GPS receiver that processes satellite data (i.e., GPS
signals) and outputs NMEA messages containing GPS data. Id. at 33–34
(citing Ex. 1007, 3.2, 5.7).
According to GH, Mohan also teaches the “trigger signal” and “enable
controller” limitations of claim 1, as well as the similar “trigger” and
“enabling”/“disabling” limitations of claim 2. See Pet. 50–56. Specifically,
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GH relies on Mohan’s discussion of its power management system, in which
the system enters a full power mode to receive, process, and transmit
position information when activated by, for example, a request from a
remote location. See id. (citing Ex. 1006, 2:15–19, 4:43–5:49, Figs. 1, 3).
With respect to the recited “cellular network transmitter” limitations
of claims 1 and 2, GH argues Roach provides the necessary teachings in its
disclosure of cellular devices operating on a CMR network. See Pet. 43–48.
For example, GH identifies Roach’s description of the use of MIN and ESN
data fields to transmit data, and its disclosure of reverse control channels, as
teaching the recited formatting and transmitting functions of the cellular
network transmitter of claims 1 and 2. See id. (citing Ex. 1008, 9:3–7, 9:23–
31, 10:7–30, 13:30–39, 17:66–18:5).
LunarEye does not dispute that Mohan, Oncore, and Roach teach the
above limitations of claims 1 and 2. Based on evidence presented, we find
that the record supports GH’s contention that the combination of Mohan,
Oncore, and Roach teaches each of these limitations, as set forth in GH’s
analysis described above.
For the recited “data selector” and related limitations of claim 1, and
the corresponding limitations of claim 2, GH relies on the teachings of
Oncore. See Pet. 37–38. Considering the full record after trial, we conclude
GH has shown sufficiently that Oncore’s teachings would have led a person
of ordinary skill to a device, like the Oncore MPU, capable of selecting a
subset of GPS location data to include in an output signal in the form of an
NMEA output message—for example, including latitude, longitude, and
time for a “GPGLL” message, but not antenna height or other fields used in
a “GPGGA” message. Id.; see Ex. 1010 ¶¶ 84–86; Ex. 1007, 5.7–5.8, 6.149,
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6.153. Furthermore, we conclude the record as a whole indicates a person of
ordinary skill would have found it obvious in light of Oncore to change the
order of the data fields for one NMEA message to construct a different
NMEA message—for example, changing the order of time, then latitude,
then longitude, such as in a GPGGA message, to the different order of
latitude, then longitude, then time, such as in a GPGLL message. Pet. 56–
57; Ex. 1010 ¶¶ 87–88; Ex. 1007, 5.7–5.8, 6.149, 6.153. Thus, GH has
shown sufficiently that Oncore teaches the data selector and related
limitations of claim 1, and the corresponding limitations of claim 2.
LunarEye disputes GH’s contentions regarding Oncore, but its
arguments are unpersuasive. First, LunarEye argues GH relies improperly
on functions performed by components of Oncore’s GPS receiver because a
person of ordinary skill would not consider those disclosures applicable to
the recited data selector, which LunarEye contends must be a physically
separate device. See PO Resp. 20–26. As discussed earlier, however, the
premise of LunarEye’s argument—that a data selector must be physically
distinct from the GPS receiver—is not commensurate with the full scope of
the claims, which include no such limitation when given their broadest
reasonable interpretation.
Similarly, LunarEye’s assertion that the Oncore GPS receiver cannot
be the recited data selector, because it does not receive or further process its
own output signal, also is unpersuasive. See id. at 22–26. Claim 1 only
requires that the GPS receiver produce GPS data, and that the data selector
select less than all of that data to produce selected GPS data; claim 2 is
similar. It is undisputed that Oncore’s GPS receiver includes components
that receive signals from GPS satellites that are then processed to yield GPS
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data. See Ex. 1007, 3.1–3.2; Tr. 26:20–27:6. Oncore discloses that the data
is then “routed to the position processor [MPU],” and ultimately output to a
transmitter as an NMEA message. Ex. 1007, 3.2, 5.7–5.8; see Tr. 27:8–12.
LunarEye contends that the processing and routing of the GPS data to the
MPU does not constitute “producing GPS data” because that data is not
made directly available “to the outside world.” Tr. 27:13–22. The only
evidence LunarEye presents to support such a narrow interpretation of
claims 1 and 2, in fact, pertains to other claims that instead recite
“produc[ing] a location signal” (emphasis added). See PO Resp. 23 (citing
Ex. 2006, 36:22–37:21 (testimony regarding claim 3)); Tr. 27:23–29:912
(citing Ex. 1002, 7:6 (describing a GPS chip that “produces an [sic] digital
output signal 86”)). At bottom, LunarEye has not provided a persuasive
basis to find that processing satellite signals to yield GPS data and route it to
a processor, as disclosed in Oncore, does not constitute producing GPS data
within the meaning of claims 1 and 2.
Lastly, LunarEye contends Oncore does not teach reordering the
selected GPS data as required by claims 1 and 2. PO Resp. 26–33.
According to LunarEye, Oncore does not disclose any initial order of the
location data received by the GPS receiver. Id. LunarEye argues that when
Oncore discusses generating multiple different NMEA messages, each
message is constructed separately from the original, unordered data; thus,
the data is ordered for each output message in the first instance, rather than
reordered. PO Resp. 32–33; Tr. 30:14–31:2. In an obviousness analysis,

12 At the oral hearing, LunarEye’s counsel acknowledged that it is not
“readily disputable” that processing satellite data to yield GPS data to
provide it to Oncore’s MPU would be “produc[ing] GPS data in some
sense.” Tr. 28:18–29:9.
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however, we consider not only the express disclosures of the asserted prior
art references, but also 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). Here, the record indicates that a person of ordinary
skill would have had at least a bachelor’s degree in electrical or computer
engineering and familiarity with GPS and communications technology, such
as that gained from five years of professional experience in the design and
implementation of GPS technology. See Ex. 1010 ¶¶ 37–40 (Dr. James M.
Janky’s testimony on level of ordinary skill); Ex. 2031 ¶¶ 8–9 (Mr.
McAlexander’s testimony adopting Dr. Janky’s description of the level of
ordinary skill). Considering the level of ordinary skill and the evidence of
record, we find that Oncore would have taught or suggested to an ordinary
artisan a device that changes the order of selected location data from one
order (e.g., an NMEA message) to another order (e.g., a different NMEA
message). See Ex. 1023, 94:17–96:6 (LunarEye’s proffered expert testifying
that selecting less than all the data and reordering into the desired
arrangement was “already known” and within the ability of a person of
ordinary skill).
In conclusion, considering all of the parties’ arguments and the full
record, GH has shown sufficiently that the combination of Mohan, Oncore,
and Roach teaches or suggests each limitation of claims 1 and 2.
6. Claims 3–24: Mohan and Lewis
GH contends the combination of Mohan and Lewis renders claims 3–
24 unpatentable as obvious. Pet. 16–19. In particular, GH explains that
Lewis teaches the recited “location-signal generating device” limitations of
independent claims 3, 4, 10, and 17 in its discussion of a vehicle tracking
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unit with a GPS receiver that can output signals in the form of NMEA
sentences containing various data fields, such as latitude, longitude, vehicle
speed, and vehicle direction (heading). Id. at 35–36 (citing Ex. 1009, 9:25–
58). GH also asserts that those disclosures of Lewis further teach the related
limitations recited in dependent claims 8, 9, 13, and 18. Id. at 36–37.
According to GH, Lewis also teaches the “telemetry transmitter”
limitations of claims 3, 4, 10, and 17 in its discussion of the vehicle tracking
unit’s cellular transceiver, which transmits the NMEA messages via a
cellular communications system. Id. at 48–49 (citing Ex. 1009, 9:20–58,
11:20–24, Fig. 2A).
With respect to the recited “enable controller” and its related
limitations, GH identifies Mohan as teaching the recited features. Id. at 51–
55. Specifically, GH relies on Mohan’s disclosures regarding its power
management system, discussed above, which controls whether the GPS
receiver and the communications transceiver are active or disabled (in a low-
power state) in response to a trigger signal. Id. at 51–52 (citing Ex. 1006,
2:15–19, 3:16–20, 4:43–5:49, Figs. 1, 3). Based on this evidence, GH
argues applying Mohan’s power management scheme to the vehicle tracking
unit of Lewis teaches the “enable controller” and related limitations of
claims 3, 4, 10, and 17, as well as the related limitations of claims 5 and 11.
Id. at 53–55.
LunarEye does not dispute that Mohan and Lewis teach the above
limitations of claims 3–24. Based on evidence presented, we find that the
record supports GH’s contention that Mohan and Lewis teach each of these
limitations, as set forth in GH’s analysis described above.
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GH further contends that Lewis teaches the recited “data selecting
device” and related limitations of claims 3, 4, 10, and 17, as well as related
limitations recited in their dependent claims. Pet. 39–42. According to GH,
the fact that the GPS receiver disclosed in Lewis can be configured to output
multiple messages with different data fields, as discussed earlier (and as
similar to Oncore), indicates that less than all of the available GPS data is
selected and that some of the data may be discarded. Id. (citing Ex. 1009,
9:25–58, 11:45–55). Based on these teachings, GH argues Lewis teaches all
of the various permutations of selected and/or discarded data fields recited in
the challenged claims. Id. Further, GH identifies “modem 74” of Lewis as
teaching the “data selecting device” performing the selecting and discarding,
noting that Lewis indicates modem 74 is involved in “formatting” the signals
output from the GPS receiver that are ultimately transmitted by the vehicle
tracking unit. Id. at 39 (citing Ex. 1009, 10:53–56). In addition, based on
the same teachings of Lewis regarding various possible output messages,
GH argues Lewis teaches reordering (and rearranging) of the GPS/location
data because the disclosed messages feature data fields in different orders.
Id. at 58–59.
LunarEye disputes that Lewis teaches a data selecting device because,
according to LunarEye, modem 74 of Lewis does not select or reorder data
and, instead, merely performs other formatting functions such as modulation
and demodulation of the output signal. PO Resp. 33–44. According to
LunarEye, the NMEA messages described in Lewis are constructed by the
GPS receiver, and the substance of those messages are unaltered by modem
74, which is merely a “pass-through” device. Id.
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Based on the full record after trial, we find that the evidence presented
supports GH’s position and that Lewis teaches the data selecting device
recited in the challenged claims, including the recited selection/discarding
functions and reordering/rearranging functions, as set forth in GH’s analysis
discussed above. LunarEye’s arguments to the contrary are unpersuasive
because they focus unduly on whether modem 74 in isolation performs the
functions of the recited data selecting device. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . .” In re Keller,
642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. Thus, whether modem 74 of Lewis in isolation itself satisfies
completely the data selecting device limitations of the challenged claims is
not the relevant inquiry.
Based on the identified teachings of Lewis as a whole and the level of
skill possessed by ordinary artisans, we find that the record supports GH’s
position that Lewis teaches or suggests to a person of ordinary skill a device
capable of selecting location data to include in the location signal (i.e., a
“data selecting device,” as properly construed), and which is capable of
changing the order (i.e., “reordering”) of the selected data into the desired
order for transmission.13 As noted earlier, we consider not only the express
disclosures of the asserted prior art references, but also the “inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,

13 Indeed, we note that LunarEye admits that the GPS receiver of Lewis
includes components that can construct the variety of NMEA and other
output messages disclosed in Lewis. See PO Resp. 34–36, 38–39.
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550 U.S. at 418. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421. Here, the evidence presented
indicates these limitations would have been within the level of skill and
creativity of ordinary artisans. See Ex. 1023, 94:17–96:6 (LunarEye’s
proffered expert testifying that selecting less than all the data and reordering
into the desired arrangement was “already known” and within the ability of a
person of ordinary skill).
In conclusion, considering all of the parties’ arguments and the full
record, GH has shown sufficiently that the combination of Mohan and Lewis
teaches or suggests each limitation of claims 3–24.
7. Claims 3 and 21: Mohan, Oncore, and Lewis
GH contends the combination of Mohan, Oncore, and Lewis renders
claims 3 and 21 unpatentable as obvious. Pet. 19–22. Its arguments are
substantially similar to its arguments discussed above regarding the
combination of Mohan and Lewis. See id. GH further argues that Oncore
teaches the limitations relating to a GPS receiver (i.e., a location-signal
generating device), the data selecting device limitations, and the reordering
limitations, based on the same teachings it relied on for its asserted
combination of Mohan, Oncore, and Roach. See id. at 33–35, 37–39, 42–43,
56–58, 60. Similarly, LunarEye relies on the same arguments against
Oncore that it advanced for the previous asserted ground including Oncore.
PO Resp. 45. For essentially the same reasons discussed above with respect
to the previous two grounds of unpatentability, we find that the full record
after trial supports GH’s contention that the combination of Mohan, Oncore,
and Lewis teaches or suggests each limitation of claims 3 and 21.
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8. Reasons to Combine
GH asserts that a person of ordinary skill would have been motivated
to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH
argues that both Mohan and Oncore are directed to GPS receiver technology,
and that combining them would have involved a simple substitution that
would achieve predictable results. Id. at 12. GH also contends that one of
ordinary skill in the art would have been motivated by Oncore’s discussion
of the advantages of its GPS receiver technology, and that applying that
technology in combination with Mohan would have amounted to nothing
more than the use of a prior art element for its established function to obtain
its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts
that combining Roach with Mohan would have involved a simple
substitution with predictable results, which would have amounted to the use
of Roach’s prior art cellular communications system for its established
function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6–
30). In addition to the prior art references, GH also relies on the Declaration
of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96–
102. We have considered Dr. Janky’s testimony, including his underlying
analysis and reasoning, and find it credible. Based on all of the evidence
presented, including Dr. Janky’s testimony, GH has articulated sufficient
reasoning with rational underpinning to support the conclusion that one of
ordinary skill would have had reason to combine the teachings of Mohan,
Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at
418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
With respect to its asserted combination of Mohan and Lewis, GH
contends a person of ordinary skill would have been motivated to apply
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Mohan’s teachings regarding its power management system to the vehicle
tracking system of Lewis, because it would yield the predictable results of
preserving and conserving power, and it would have been nothing more than
a predictable use of Mohan’s prior art technology according to its
established functions. Pet. 18–19. GH notes that both Mohan and Lewis are
directed to GPS systems, and asserts that ordinary artisans would have
recognized that Mohan’s power management system would improve the
GPS technology of Lewis in the same way. Id. In addition to the
disclosures of Mohan and Lewis, GH also relies on the testimony of Dr.
Janky, which we find credible and which supports GH’s position. See
Ex. 1010 ¶¶ 134–35. Based on the evidence of record, including Dr. Janky’s
testimony, GH has articulated sufficient reasoning with rational
underpinning to support the conclusion that one of ordinary skill would have
had reason to combine the teachings of Mohan and Lewis in the manner
advanced by GH. See KSR, 550 U.S. at 418.
Finally, with respect to its asserted combination of Mohan, Oncore,
and Lewis, GH asserts that applying Oncore’s GPS receiver technology to
the GPS system of Lewis would have been a simple substitution yielding
predictable results; that a person of ordinary skill would have recognized the
benefits associated with Oncore’s GPS receiver technology, as disclosed in
Oncore; and that the combination would have amounted to simply using
Oncore’s prior art technology for its established function to obtain its stated
benefits. Pet. 20–21. GH also contends applying Mohan’s power
management technology to Lewis also would have amounted to the use of
prior art technology for its intended purpose to obtain its known benefits. Id.
at 21. Dr. Janky’s credible testimony on these issues supports GH’s
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contentions. See Ex. 1010 ¶¶ 160–63. Based on the evidence presented,
including Dr. Janky’s testimony, GH has articulated sufficient reasoning
with rational underpinning to support the conclusion that one of ordinary
skill would have had reason to combine the teachings of Mohan, Oncore,
and Lewis in the manner advanced by GH. See KSR, 550 U.S. at 418.
We have considered LunarEye’s counterarguments but conclude they
are unpersuasive. LunarEye argues that the asserted prior art references
teach away from the combinations advanced by GH. PO Resp. 45–57.
Specifically, LunarEye contends Mohan states that a device constructed
according to its teachings should conform to certain size constraints to
achieve adequate miniaturization. Id. at 48–52. The GPS device described
in Oncore14 are too large and are, thus, incompatible with Mohan, according
to LunarEye. Id. This argument is unpersuasive, however, because none of
the claims of the ’035 patent require miniaturization, nor do they include any
limitations restricting the size of the claimed apparatus or any recited
component device. LunarEye does not identify any portion of Mohan that
criticizes, discredits, or otherwise discourages combining Mohan and
Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS
device does not teach away from non-miniaturized devices. See id.; In re
Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” Keller, 642

14 LunarEye does not argue that the GPS device of Lewis, or the
communications devices of Roach, are incompatible with Mohan’s
purported size restrictions.
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F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be
incorporated physically into the Mohan GPS device is inapposite, because
the challenged claims do not recite any limitations on size.
Next, LunarEye argues Oncore and Lewis teach away from the
invention of the ’035 patent because they each teach the use of NMEA
messages compliant with the NMEA standard. PO Resp. at 53–54.
According to LunarEye, the NMEA standard is incompatible with the
invention of the ’035 patent because “the teachings of the ’035 patent are
directed to non-standard, proprietary data communications.” Id.
LunarEye’s argument is unpersuasive, however, because the challenged
claims do not recite any requirement of “non-standard, proprietary data
communications.” LunarEye does not identify sufficient support for such a
narrow reading of the claim, and LunarEye fails to explain persuasively why
such a requirement should be read into the claims. See Am. Acad. of Sci.,
367 F.3d at 1369 (describing the benefits of an embodiment is insufficient to
import limitations from that embodiment into the claims).
The final teaching away argument presented by LunarEye fails for
similar reasons. LunarEye asserts that Oncore teaches GPS receivers with
antennae that are too large and consume too much power for the GPS
devices disclosed in Mohan. PO Resp. 55–57. The challenged claims,
however, do not include any limitations on antenna size, nor do they include
any limitations reciting particular levels of antenna power consumption.15

15 Although the ’035 patent discusses the importance of managing power
consumption, the specification describes the use of a controller to manage
power, not limiting the claimed invention to using only antennae with
particular power consumption restrictions. See, e.g., Ex. 1002, 6:23–40.
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In sum, LunarEye’s allegations of teaching away are not supported by
the record. We also disagree with LunarEye’s assertion that GH’s positions
regarding reasons to combine the asserted prior art references are conclusory
and meritless. See PO Resp. 57–59. To the contrary, they are supported by
a preponderance of the record evidence.
CONCLUSION
Based on the evidence and arguments, GH has demonstrated by a
preponderance of the evidence that claims 1 and 2 of the ’035 patent are
obvious in light of Mohan, Oncore, and Roach; claims 3–24 are obvious in
light of Mohan and Lewis; and claims 3 and 21 are obvious in light of
Mohan, Oncore, and Lewis.
MOTION TO SEAL
GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final
Written Decision, we consider GH’s Motion to Seal as a motion to expunge
Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028
was not relied on for this Decision. Consequently, GH’s motion is granted,
and Exhibit 1028 will be expunged.
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ORDER
Accordingly, it is:
ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held
unpatentable under 35 U.S.C. § 103; and
FURTHER ORDERED that Exhibit 1028 is expunged from the
record.
This is a final written decision. Parties to the proceeding seeking
judicial review of this Decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Rodney B. Carroll
Jerry C, Harris, Jr.
Ryan D. Jenlink
J. Robert Brown, Jr.
CONLEY ROSE, P.C.
rcarroll@dfw.conleyrose.com
jcharris@dfw.conleyrose.com
rjenlink@dfw.conleyrose.com
rbrown@dfw.conleyrose.com

PATENT OWNER:
Matthew S. Compton, Jr.
Christopher M. Faucett
Stephen W. Abbott
PREBEG, FAUCETT & ABBOTT PLLC
mcompton@pfalawfirm.com
cfaucett@pfalawfirm.com
sabbott@pfalawfirm.com