Ikorongo Technology LLC

Patent Trials and Appeals Board

May 10, 2021

IPR2021-00058 (P.T.A.B. May. 10, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Date: May 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
IKORONGO TECHNOLOGY LLC and IKORONGO TEXAS LLC,
Patent Owner.

IPR2021-00058
Patent RE47,704 E

Before BRYAN F. MOORE, SHARON FENICK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)
I. INTRODUCTION
Google LLC (“Petitioner”) filed a Petition requesting inter partes
review of claims 33–41, 43, and 45–48 (“the challenged claims”) of
U.S. Patent No. RE47,704 E (Ex. 1001, “the ’704 patent”). Paper 1 (“Pet.”).
Patent Owners Ikorongo Technology LLC and Ikorongo Texas LLC (“Patent
Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). After an
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2
order granting authorization (Paper 10), Petitioner filed a reply to the
Preliminary Response (Paper 11) and Patent Owner filed a sur-reply
(Paper 13). We have jurisdiction under 35 U.S.C. § 314.
Upon consideration of the Petition, Preliminary Response, and
additional briefing, Petitioner has failed to demonstrate a reasonable
likelihood that it would prevail in showing the unpatentability of at least one
challenged claim of the ’704 patent. Accordingly, Petitioner’s request to
institute inter partes review is denied.
II. BACKGROUND
A. Related Matters and Real Parties in Interest
Petitioner and Patent Owner state that the ’704 patent was asserted in:
Ikorongo Texas LLC v. Samsung Electronics Co., Case 6:20-cv-00259-ADA
(W.D. Tex.); Ikorongo Texas LLC v. Lyft, Inc., Case 6:20-cv-00258-ADA
(W.D. Tex.); Ikorongo Texas LLC v. LG Electronics, Inc., Case 6:20-cv-
00257-ADA (W.D. Tex.); Ikorongo Texas LLC v. Bumble Trading Inc.,
Case 6:20-cv-00256-ADA (W.D. Tex.); and Ikorongo Texas LLC v. Uber
Technologies, Inc., Case 6:20-cv-00843-ADA (W.D. Tex.). Pet. 86–87;
Paper 4, 1; Paper 6, 1.
Patent Owner additionally states that the ’704 patent is a reissue of
Patent No. 7,080,139, and a reissue application of that patent is currently
pending. Paper 4, 1; Paper 6, 1. Additionally, Patent Owner notes that two
other reissue patents of Patent No. 7,080,139 are the subjects of pending IPR
petitions: IPR2020-01379 (institution denied), IPR2021-00127, and
IPR2021-00084. Paper 4, 1–2; Paper 6, 1.
Petitioner identifies itself, LG Electronics Inc., LG Electronics
U.S.A., Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
America as the real parties in interest. Pet. 82 n.1, 86. Patent Owner
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identifies Ikorongo Technology LLC and Ikorongo Texas LLC as the real
parties in interest. Paper 4, 1; Paper 6, 1.
B. Overview of the ’704 Patent
The ’704 patent is titled “Method and Apparatus for Selectively
Sharing and Passively Tracking Communication Device Experiences,” and
reissued on November 5, 2019, from U.S. Reissue Application No.
14/577,746, filed December 19, 2014. Ex. 1001, codes (10), (21), (22), (45),
(54). The ’704 patent is a reissue of U.S. Patent No. 7,080,139 B1 (“the
’139 patent”), issued July 18, 2006, and filed April 24, 2001. Id. at code
(64).
The ’704 patent generally relates to “methods and devices for sharing
communication device usage experiences, including computer usage
experiences.” Ex. 1001, 1:63–67. The ’704 patent summarizes the
invention as follows:
A common theme among aspects of the present invention is
collecting data regarding a user’s computer usage experience and
sharing that data. So-called “buddies” identified on buddy lists
of instant messaging products can share selected aspects of their
computer usage experiences. Administrative tools and processes
can be provided to set up selective collection and sharing of data.
Collection tools and processes operate on a variety of computer
usage activities and user responses to their computer usage
experiences. Processing tools and methods filter, integrate and
correlate the collected data. Display tools and processes make
portions of the data accessible on a predefined basis, such as
according to defined rights of buddies. Aggregation tools and
processes assemble statistics about user experiences across
different bases, such as buddy lists, categories of users, and all
service participants.
Id. at 2:57–3:5.
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According to the ’704 patent, certain embodiments include a “visited
location database (‘VLD’),” which “stores . . . information for locations
visited by users or participants carrying portable [location-aware] devices.”
Ex. 1001, 3:42–44. The VLD may “store geographic information regarding
the location, such as geo-coded data,” visited by location-aware devices. Id.
at 3:58–61. Certain embodiments also include “[a]ccess control lists
(‘ACLs’),” which identify “buddies” and control their access to visited
geographic location data stored in the VLD. Id. at 4:18–21. The ACL and
VLD may interoperate to enable users to control who may have access to
geographic information visited by the users’ location-aware devices. Id. at
4:18–26, 6:59–7:2 (“When sharing is on, rights defined in the ACL provide
access for buddies to the user’s activity.”), 15:65–16:56. The location-aware
devices may rely on “Bluetooth, GPS or any other location detection
technology,” and interact with a “location network directory,” which
“contains information such as the devices’ location address, location
description, a timestamp, and user ID.” Id. at 17:14–38.
According to the ’704 patent, sharing of communication device user
experiences with buddies “may depend on registration by a user with a
registration server” (id. at 18:6–25) and rely upon “a registration server and
a tracking server” (id. at 20:33–41).
C. Illustrative Claim
Of the challenged claims, claims 33, 46, and 48 are independent.
Claim 33, reproduced below, is illustrative of the claimed subject matter:
33. A method of operation of a location-aware cellular phone
device comprising:
sending registration information to a registration server from the
location-aware cellular phone device;
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enabling access to one or more lists of other users to identify one
or more other users with whom visited geographic location
data is to be shared;
enabling definition of access rights for the one or more other
users to access the visited geographic location data;
collecting the visited geographic location data for geographic
locations visited by the location-aware cellular phone device
using a client-side application, the visited geographic location
data comprising a plurality of the geographic locations visited
by the location-aware cellular phone device, each geographic
location visited time-stamped with a time of visit, the
geographic locations visited automatically and passively
recorded by the location-aware cellular phone device using a
satellite-based location-fixing protocol and a detection
network directory; and
reporting information indicating the visited geographic location
data collected.
Ex. 1001, 22:44–67.
D. Evidence Relied Upon
Reference Date Exhibit
Callegari US 2003/0055983 A1 Mar. 20, 2003 1005
Friedman US 6,714,791 B2 Mar. 30, 2004 1009
Eschenbach US 6,373,429 B1 Apr. 16, 2002 1010
Petitioner also relies upon the Declaration of David Hilliard Williams
(Ex. 1003).
E. Prior Art and Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
33–41, 43, 45–48 103 Callegari

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
’704 Patent is a reissue of a patent with a filing date before March 16, 2013,
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Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
46, 47 103 Callegari, Friedman
33–41, 43, 45–48 103 Callegari, Eschenbach
46, 47 103 Callegari, Friedman, Eschenbach
III. ANALYSIS
A. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)). This burden never shifts to
the patent owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
A claim is unpatentable as obvious if “the differences between” the
claimed subject matter “and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2012). The question of obviousness is resolved on the
basis of underlying factual determinations, including: (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and (4) objective
evidence of nonobviousness. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17–18 (1966).

the effective date of the relevant amendments, the pre-AIA versions of
§§ 102 and 103 apply. 35 U.S.C. § 100(i)(2).
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B. Level of Ordinary Skill in the Art
Petitioner contends that one of ordinary skill in the art:
would have had either: (1) a Bachelor of Science degree in
Electrical Engineering or an equivalent field, with at least three
years of academic or industry experience in the wireless mobile
location industry or comparable industry experience; or (2) a
Master of Science degree in Electrical Engineering or an
equivalent field, with at least two years of academic or industry
experience in the same field. With more education, less
experience is needed to attain an ordinary level of skill in the art.
Similarly, more experience can substitute for formal education.
Pet. 26–27 (internal citations omitted) (citing Ex. 1003 ¶¶ 37–40). Patent
Owner does not present an alternative definition. Prelim. Resp. 26.
We find this articulation sufficiently reasonable in light of the subject
matter involved in the ’704 patent, and adopt it for our decision.
C. Claim Construction
Neither Petitioner nor Patent Owner propose any claim terms for
construction. Pet. 27 (citing Ex. 1003 ¶¶ 41–42); Prelim. Resp. 26. We do
not find that the construction of any terms are necessary for this decision.
See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.”).
D. Callegari’s Availability as Prior Art to the ’704 Patent
1. Parties’ Positions
Callegari is a published patent application, US 2003/005593 A1,
published on March 20, 2003, which claims priority to three provisional
applications filed on March 19, 2001. Ex. 1005, codes (10), (43), (60).
The parties dispute whether Callegari qualifies as prior art to the
’704 patent. Petitioner and Patent Owner each agree that the earliest
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Patent RE47,704 E
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possible priority date for the ’704 patent is April 24, 2001, the filing date of
the application that issued as the ’139 patent. Pet. 3; Prelim. Resp. 2 n.4.
While not expressly conceding that this should be the priority date accorded
for the ’704 patent, Petitioner does not present any arguments that another
date is the proper priority date.
Petitioner asserts that Callegari qualifies as prior art under 35 U.S.C.
§ 102(e), on the basis of the provisional patent applications to which it
claims priority. Pet. 11. Petitioner provides a chart that purports to show the
support in one of the provisional applications (US 60/277,187 (“the ’187
provisional”), Ex. 1007) for claim 1 of Callegari2. Id. at 4–10.
Additionally, where Callegari is used in Petitioner’s arguments
regarding unpatentability, citations are given to the ’187 provisional
(Ex. 1007). See, e.g., Pet. 28–43 (argument that claim 33 of the ’704 patent
is unpatentable over Callegari). For example, in its discussion of Callegari’s
teachings relevant to the preamble of claim 33, Petitioner cites “Callegari,
¶¶[0006]-[0007], [0009]-[0011]; Ex-1007, 15, 19-20; Williams, ¶119” and
“Callegari, ¶¶[0024], [0044], [0050], [0057]-[0058]; Ex-1007, 5, 9, 15, 17-
18, 23-24, 29-30, and Fig. 3; Williams, ¶119.” In the next sentence related
to the preamble, Petitioner cites paragraph 44 of Callegari a second time and

2 Petitioner describes support for claim 1 in “the provisional applications”
(Pet. 3 (emphasis added)); provides a chart with one column for Callegari’s
claim 1 and one for “Provisional Applications” (id. at 4); and concludes that
“Callegari is . . . entitled to the filing date of its provisional applications”
(id. at 11 (emphasis added)). However, with the exception of noting the
priority claim in Callegari to the other two provisional applications (id. at 3),
Petitioner only refers to the ’187 provisional in its arguments, and thus we
understand Petitioner’s arguments to relate only to support provided by the
’187 provisional.
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additionally cites paragraph 35 of Callegari, providing the additional citation
“See also Ex-1007, 6-7, 15, 17-18, and 23.” Id. at 28–29.
Patent Owner argues that Petitioner has not met its burden to establish
that Callegari qualifies as prior art. Patent Owner cites the Manual of Patent
Examining Procedure (“MPEP”)’s discussion of “two distinct requirements”
for determining that a published patent application’s effective date may be
based on a prior application from which it claims priority. Prelim. Resp. 18–
23 (quoting MPEP § 2136; citing MPEP § 2136.03; Amgen Inc. v. Sanofi,
872 F.3d 1367, 1380 (Fed. Cir. 2017); In re Giacomini, 612 F.3d 1380 (Fed.
Cir. 2010)). These two requirements are (1) “the prior applications must
properly support the subject matter used to make the rejection in compliance
with pre-AIA 35 U.S.C. §112, first paragraph, or 35 U.S.C. §112(a)”; and
(2) one claim of that application be supported by the written description of
the relied upon provisional application. Id. at 19 (quoting MPEP § 2136).
Patent Owner argues that Petitioner has not shown that the ’187 provisional
supports the subject matter that Petitioner relies upon in its arguments of
unpatentability based on Callegari.
Patent Owner acknowledges the citations provided by Petitioner to the
’187 provisional included in the Petition, but contends that “the Petition
provides no argument or explanation as to how the cited pages or figures
allegedly teach or suggest” the subject matter of the challenged claims.
Prelim. Resp. 21–22, 27–28. Patent Owner describes this as an approach
that is “deficient on its face” and constitutes “an improper request of the
Board to peruse each unexplained ’187 provisional string cite and try to
piece together a coherent argument on Petitioner’s behalf.” Id. at 28–30.
Patent Owner contends that, in fact, Petitioner has relied on “new disclosure
in Callegari that is not supported by any of the provisional applications.” Id.
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at 22; see also id. at 30–48 (Patent Owner’s arguments that the citations to
the ’187 provisional do not teach or suggest elements of the challenged
claims, including arguments that relied-upon elements of Callegari do not
find 35 U.S.C. §112 support in the ’187 provisional).
2. Analysis
As stated above, Dynamic Drinkware instructs us that the burden of
persuasion is on the petitioner to prove unpatentability by a preponderance
of the evidence, and that burden never shifts to the patentee. Dynamic
Drinkware, 800 F.3d at 1378–79. Additionally, Dynamic Drinkware
describes that the burden of production, for the purposes of establishing a
priority date for asserted prior art, rests on the Petitioner, and that once
Petitioner meets that burden, the burden of the production shifts to the patent
owner to establish that its claimed invention is entitled to an earlier priority
date than the asserted reference. Dynamic Drinkware, 800 F.3d at 1379–
1380; see In re Magnum Oil Tools, Intl., 829 F.3d 1364, 1375 (describing
the shift in burden of production to patentee as warranted because “the
patentee affirmatively seeks to establish a proposition not relied on by the
patent challenger and not a necessary predicate for the unpatentability claim
asserted”). Thus, our determination here is whether Petitioner has met the
burden of production of establishing a priority date for Callegari which
would support its assertions of unpatentability.
A reference patent or published patent application can be entitled to
the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C.
102(e) prior art purposes on two conditions. First, the provisional
application must provide sufficient support for at least one claim in the
reference patent or published patent application. See Dynamic Drinkware,
800 F.3d at 1382 (“A provisional application’s effectiveness as prior art
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depends on its written description support for the claims of the issued patent
of which it was a provisional.”); Ex parte Mann, 2016 WL 7487271, at *6
(PTAB Dec. 21, 2016) (discussing whether Dynamic Drinkware requires
“support in the provisional . . . for all claims, any claim, or something in
between.”).
Second, the provisional application must provide sufficient support
for the subject matter relied upon for prior art purposes in the reference
patent or published patent application. See In re Giacomini, 612 F.3d at
1383 (“[A]n applicant is not entitled to a patent if another’s patent discloses
the same invention, which was carried forward from an earlier U.S.
provisional application or U.S. non-provisional application.”); Dynamic
Drinkware, 800 F.3d at 1377, 1381–82 (acknowledging that the Board found
Petitioner failed to show the Raymond provisional application supported
subject matter relied upon in the Raymond reference, but affirming the
Board by also determining that “[n]owhere” does Petitioner show the
Raymond provisional application supported claims of the Raymond patent
(i.e., the first condition discussed above)); Ex parte Mann, 2016 WL
7487271, at *5 (explaining that “[t]his subject matter test is in addition to the
comparison of claims required by Dynamic Drinkware,” and that “absurd
results would be reached if a subject matter test were not required”);
Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., IPR2018-00345,
Paper 10 at 25–26 (PTAB July 2, 2018) (agreeing with Patent Owner that
Petitioner’s “barebones analysis” in its Petition is insufficient to show “how
the [provisional underlying the asserted reference] provides support for the
subject matter relied upon [in the asserted reference]”).
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This two-prong requirement to show entitlement to the benefit of a
provisional application’s filing date in the prior art context also is expressly
embodied in the MPEP:
The pre-AIA 35 U.S.C. 102(e) date of a reference that did
not result from, nor claimed the benefit of, an international
application is its earliest effective U.S. filing date, taking into
consideration any proper benefit claims to prior U.S. applications
under 35 U.S.C. 119(e) or 120. For all benefit claims, the prior
application(s) must properly support the subject matter used to
make the rejection in compliance with pre-AIA 35 U.S.C. 112,
first paragraph or 35 U.S.C. 112(a). See MPEP § 2136.02. In
addition, for benefit claims under 35 U.S.C. 119(e), at least one
claim of the potential reference must be supported by the written
description of the relied upon provisional application in
compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35
U.S.C. 112(a), in order for the potential reference to be usable as
prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon
provisional application’s filing date.
MPEP § 2136(I) (9th ed. rev. 10.2019 June 2020) (emphases added); see
MPEP § 2136.03(III) (explaining that prior art effect under § 102(e) requires
(1) “at least one of the claims in the reference patent . . . is supported by the
written description of the provisional application”; and (2) the “provisional
application must also describe . . . the subject matter relied upon in the
reference patent or publication to make the rejection”); MPEP § 2136,
Examples 2, 4, and 7.
Therefore, in order to determine whether Callegari should receive the
benefit of the priority date of the ’187 provisional, we examine whether the
Petition sufficiently shows that the ’187 provisional supports the subject
matter relied upon in Callegari.
As noted above, where Callegari is used in Petitioner’s arguments
regarding unpatentability, citations are given to the ’187 provisional.
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However, this is the only way in which the Petition addresses the question of
support by the ’187 provisional for the portions of Callegari used by the
Petitioner in arguing unpatentability. While the Petition does contain a
description of how Callegari’s claim 1 is allegedly supported by the
disclosure of the ’187 provisional (the first condition discussed above), there
is no discussion of any alleged relationship between these disclosures and
the elements of the challenged claims. Thus, the only place we might find
the required support for the subject matter used from Callegari is these
citations.
The issue, then, is whether these citations to the ’187 provisional
sufficiently support the subject matter relied upon in Callegari (the second
condition discussed above), and thus, support a determination that Petitioner
demonstrates a reasonable likelihood that it will prevail in showing the
unpatentability of at least one challenged claim of the ’704 patent. In a case
in which a provisional application is shown to have identical or nearly-
identical disclosure to the portions of an application or patent relied upon,
this may be enough. See, e.g., Unified Patents, Inc. v. Longhorn HD LLC,
IPR2020-00879, Paper 10 at 15–16 (PTAB Nov. 12, 2020) (institution
decision) (“adequate showing” to support priority where Petitioner “provides
parallel citations . . . to demonstrate that the relevant disclosures of [a patent]
were carried over from the provisionals [to which the patent claimed
priority]”).
However, in this case, the citations provided are not sufficient. For
example, the Petition contends, with reference to the first element of claim
33 (“sending registration information to a registration server from the
location-aware cellular phone device”), that Callegari teaches the
registration server in its presence server, which communicates with a
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consumer device during a subscription process. Pet. 29–30 (citing Ex. 1005
(Callegari) ¶¶ 25, 50, Fig. 5B; Ex. 1007 (the ’187 provisional), 9, 29, 33,
Fig. 7; Ex. 1003 (Petitioner’s expert’s declaration) ¶ 122).
The cited paragraphs of Callegari are reproduced below:
[Paragraph 25] A “user” refers to any person, business
enterprise or other entity that communicates with, and/or
subscribes to, a service that implements the methods and/or
systems described herein.
. . .
[Paragraph 50] The presence server 30 selects the
appropriate protocol or format for the device interface 35 by
receiving an indication of the type of consumer device 20. The
indication of the type of consumer device 20 may be set-up by
the user, may be received de novo along with the indication of
the second user’s location, or may be “looked up” on a subscriber
list that identifies the user, the consumer device 20 and
appropriate format or protocol. Such a list may be contributed to
directly by the user via configuration parameters applied when
the user subscribes to a service for contacting the presence server
30 as illustrated in FIG. 4. Alternatively, the list may be obtained
from another service provider, for example, a mobile
communication service or LSP that equips the user with the
consumer device 20.
Ex. 1005 ¶¶ 25, 50. Figure 5B is reproduced below:

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The cited pages 9, 29, and 33 of the ’187 provisional are varied in
their content, but do not define a user (as paragraph 25 of Callegari does), or
describe a presence server, the selection of a device interface protocol or
format, or a subscriber list (as paragraph 50 of Callegari does). Figure 7 of
the ’187 provisional relates to a “service chooser/preferences interface,”
through which “[u]sers (or merchants) subscribe to [services].” While this
may, in itself, relate to the claim limitation at issue, it is unclear how this, or
any cited portions of the ’187 provisional, relate to the cited portions of
Callegari. While in haec verba recitation is not necessary to determine
whether an inventor had possession of the claimed subject matter as of the
filing date, the disclosure must do more than “merely render[] the invention
obvious.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351–
52 (Fed. Cir. 2010) (en banc).
Here, the relationship between the cited portions of the two
documents is unclear. The Petition describes only the content of Callegari,
and does not explain sufficiently the significance of the citations to the
’187 provisional. Indeed, some more obvious relationships exist between
the two documents – for example, cited page 33 of the ’187 provisional
appears to be closely related to the disclosure of Callegari at paragraphs
105–111. Ex. 1005 ¶¶ 105–111; Ex. 1007, 33. Similarly, cited page 9 of the
’187 provisional appears to be related to disclosures at paragraphs 9–11 and
60 of Callegari. Ex. 1005 ¶¶ 9–11, 60; Ex. 1007, 9. However, these
paragraphs of Callegari were not cited by the Petitioner. As Patent Owner
argues, determining the significance of the ’187 citations would require us to
“play archaeologist with the record,” and we decline to do so. DeSilva v.
DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (quoted at Prelim. Resp.
28).
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For these reasons, we determine that Petitioner has not shown that the
cited portions of Callegari are entitled to the priority date of the ’187
provisional, and therefore, on this record, that Callegari does not qualify as
prior art to the ’704 patent.
E. Reliance on Callegari in the Asserted Grounds
Each ground asserted in the Petition relies on Callegari as a reference.
The independent claims challenged are claims 33, 46, and 48. Petitioner
asserts that these independent claims are obvious in view of Callegari alone.
Pet. 28–43, 58–62. Petitioner also asserts that claim 46 is obvious in view of
a combination of Callegari and Friedman, in which Callegari is relied on for
all elements of claim 46, excepting the “registration server,” for which
Petitioner relies on Friedman’s “portal server performing registration
functions.” Id. at 63–70.
Petitioner additionally asserts that the independent claims are obvious
in view of a combination of Callegari and Eschenbach. Id. at 71–78. In this
ground, Callegari is relied upon for all claim elements, with the exception of
the use of “a satellite-based location-fixing protocol and a detection network
directory” (as recited in each of claims 33, 46, and 48), for which Petitioner
relies on Eschenbach’s differential global positioning system. Id. Petitioner
also asserts that claim 46 is obvious in view of a combination of Callegari,
Friedman, and Eschenbach, relying on Callegari for all claim elements
except for the registration server and the use of a satellite-based location-
fixing protocol and detection network directory, for which Petitioner relies
on Friedman and Eschenbach, respectively. Id. at 78–79.
For the balance of the challenged claims, under each combination,
Petitioner relies in part on arguments made with respect to the independent
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claim from which these additional claims depend. Id. at 43–58, 62–63, 66,
74–75, 79–80.
As each of the asserted grounds relies in whole or in part on Callegari,
and we have determined that Callegari has not been shown to be prior art to
the ’704 patent, Petitioner has failed to demonstrate a reasonable likelihood
that it would prevail in showing the unpatentability of at least one
challenged claim of the ’704 patent.
F. 35 U.S.C. §§ 314(a) and 325(d)
Because we deny institution upon consideration of the merits of
Petitioner’s challenges, Patent Owner’s arguments that we should exercise
our discretion under 35 U.S.C. § 314(a) or § 325(d) to deny institution are
moot.
IV. CONCLUSION
For the foregoing reasons, we do not institute an inter partes review.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to the challenged claims of
the ’704 patent; and
FURTHER ORDERED that no inter partes review is instituted.
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FOR PETITIONER:
Erika Arner
Kara Specht
Umber Aggarwal
Bradford Schulz
FINNEGAN, HENDERSON, FARABOW,
GARRETT, & DUNNER LLP
erika.arner@finnegan.com
kara.specht@finnegan.com
umber.aggarwal@finnegan.com
bradford.schulz@finnegan.com

FOR PATENT OWNER:
Howard Wisnia
WISNIA PC
howard@wisnialaw.com

Derek Gilliland
SOREY, GILLILAND & HULL LLP
derek@soreylaw.com