K40 Electronics, LLCv.ESCORT INC.

Patent Trial and Appeal Board

Aug 27, 2014

12195147 (P.T.A.B. Aug. 27, 2014)

Trials@uspto.gov Paper 45
Tel: 571-272-7822 Entered: August 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
K-40 ELECTRONICS, LLC,
Petitioner,
v.
ESCORT, INC.,
Patent Owner.
_______________

Case IPR2013-00203
Patent 7,999,721 B2
_______________

Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
K-40 Electronics, LLC (“Petitioner”) filed a Petition for inter partes review
of claims 1-10 of U.S. Patent No. 7,999,721 B2 (“the  ’721 patent”). Paper 1
(“Pet.”). Escort, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes review,
on August 29, 2013, as to claims 1-10 of the ’721 patent (“challenged claims”).
Paper 6 (“Dec.”).
After institution of inter partes review, Patent Owner filed a Response
(Paper 12, “PO Resp.”) and Petitioner filed a Reply (Paper 18, “Pet. Reply”). Oral
hearing was held on June 17, 2014. The hearing transcript has been entered in the
record as Paper 44 (“Tr.”). The hearing included live oral testimony from the
named inventor of the ’721 patent, Steven K. Orr. Tr. 5:10–41:11.
The Board has 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. For the
reasons discussed below, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1-10 of the ’721 patent are unpatentable.
B. Related Proceeding
In addition to this Petition, we instituted inter partes review on October 11,
2013 based on Petitioner’s challenges to the patentability of certain claims of
Patent Owner’s U.S. Patent No. 6,670,905 (IPR2013-00240).
C. The ’721 Patent
The ’721 patent (Ex. 1001) is titled “Radar Detector with Navigational
Function” and generally relates to a Global Positioning System (“GPS”)-enabled
radar detector designed to process radar sources dynamically based on previously-
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stored geographically referenced information. Ex. 1001, Abstr. The patent
explains that in the spectrum allocated by the Federal Communications
Commission for police radar systems, there are increasing numbers of signals
generated by other applications. Ex. 1001, col. 2, ll. 12-22. “As a result, radar
detectors are increasingly generating false alarms, effectively ‘crying wolf,’
reducing the significance of warnings from radar detectors.” Id. at col. 2, ll. 19-22.
The patent describes a radar detector that includes technology for determining the
location of the detector, and comparing this location to the location of known false
alarm sources so as to vary the alarm provided by the radar detector in response to
false alarm sources. Id. at col. 4, ll. 21-39. Figure 1 of ’721 patent is reproduced
below:

’721 patent, Figure 1
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As shown above in Figure 1, the ’721 patent describes that vehicle 10 can be
equipped with a radar detector having a GPS receiver enabled to identify its
present coordinates so as to distinguish between police radar gun 18 and a false
alarm radar signal from a stationary source at restaurant 16. Id. at col. 8, ll. 28-45.
Furthermore, the patent describes that in “location lockout” mode, the GPS-
enabled radar detector can access a database and suppress all audible warnings of
radar signals at a particular location associated with a known source of spurious
police radar signals. Id. at col. 15, ll. 9-16.
Claims 1 and 2 illustrate the claimed subject matter and are reproduced
below:
1. A navigation and police activity warning device
comprising:

a receiver section receiving signals generated in the
context of law enforcement activity,

a warning section responding to the receiver section and
providing a warning if a received signal correlates to a law
enforcement signal, the warning produced by the warning
section varying in relation to a vehicle location derived from a
position determining circuit,

a navigational system providing a graphical display and
navigational functions, the display including a display of
navigational information including a map and stored geographic
locations on said map for which the device stores data that is
used by said warning section in varying the warning produced
in response to a law enforcement signal.

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2. A police warning receiver comprising:

a receiver section adapted to receive electromagnetic
signals indicative of police activity;

an alert section responsive to the receiver section and
adapted to provide an alert if a received electromagnetic signal
correlates to a police signal;

a position determining circuit generating a location
signal; and

storage for information associated with geographic
locations.

Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. §§ 102 and/or 103 on the following specific grounds:
Reference(s) Basis Claims challenged
US 6,233,589 (Ex. 1002)
(“Hoffberg”)
§ 102 1-10
US 6,204,798 (Ex. 1003)
(“Fleming, III”)
§ 102 2-8 and 10
Fleming, III and Hoffberg § 103 2-10

Pet. 19-45. We instituted inter partes review on all grounds on all
challenged claims. Dec. 14.
D. Claim Construction
Consistent with the statute and the legislative history of the AIA, the Board
will interpret claims of an unexpired patent using the broadest reasonable
construction in light of the specification of the patent. See Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R.
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§ 42.100(b). Under the broadest reasonable construction standard, claim terms are
given their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re Translogic
Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. “providing a warning if a received signal correlates to a law
enforcement signal”
Independent claim 1 recites a “navigation and police activity warning
device” comprising a “warning section,” which provides a “warning if a received
signal correlates to a law enforcement signal.” Ex. 1001, col. 25, ll. 28-34.
Independent claim 2 provides similar recitations regarding an alert provided by an
“alert section.” See Ex. 1001, col. 26, ll. 7-9. Patent Owner argues that the
“warning section” in claim 1 and the “alert section” in claim 2 both require a
function beyond a mere detection of a signal. PO Resp. 13. Specifically, Patent
Owner argues that “warning” or “alert” section provides an alert to a signal only if
a determination is made that the signal is a signal that is likely to be worth alerting,
based on comparing it to the attributes of actual police signals. Id. Additionally,
Patent Owner’s expert, Dr. John R. Grindon, states that claims 1 and 2 require “in
addition to receiving a signal, a separate step of distinguishing that the signal
correlates to a law enforcement signal, i.e. to police signals.” Ex. 2074 ¶ 19.
Patent Owner cites the following statement in the Specification as support for this
separate step of distinguishing that the received signal correlates to a law
enforcement signal:
Microwave receiver 24 and DSP 26 may utilize any of the
techniques described above and in the above-referenced
patents, for rejecting noise and increasing discrimination
between actual and spurious police radar signals.
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PO Resp. 13 (citing Ex. 1001, col. 8, ll. 45-52) (emphasis added). Therefore, the
Specification states that the numerous prior art patents incorporated by reference in
the ’721 patent provide a number of known techniques for correlating a received
signal to a law enforcement signal. See id.
Petitioner disagrees with Patent Owner’s proposed construction and argues
that it is an improper attempt to narrow the term “correlating” to techniques that
are not required by the claims and are admitted to be in the prior art. Pet. Reply 8-
10. Furthermore, Petitioner argues that Patent Owner deliberately side-steps
defining what correlating according to “any of the techniques” entails. Id.
We are not persuaded by Patent Owner’s argument that “correlates to a law
enforcement signal” should be construed to mean an undefined determination
made by comparing a received signal to the attributes of actual police signals. As
Patent Owner stated in the Specification, there are numerous techniques known in
the prior art for comparing a received signal to known characteristics of law
enforcement signals. See Ex. 1001, col. 8, ll. 45-52. Furthermore, as noted by the
Petitioner, Patent Owner’s expert, Dr. Grindon, stated that standard examples of
correlating a received signal to a law enforcement signal include adjusting
city/highway signal detection thresholds and making sure a signal is present
through several sweeps. Pet. Reply 12 (citing Ex. 1019, 36:15-37:4; 37:5-18).
Therefore, as generally set forth in the disclosures of standard correlation
techniques incorporated into the ’721 patent by reference, correlating a received
signal must be interpreted broadly as analyzing one or more characteristics of a
received signal in comparison with the known characteristics of law enforcement
signals.
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Accordingly, in light of the Specification and in the context of the claims,
we construe “providing a warning if a received signal correlates to a law
enforcement signal” as “providing a warning if a received signal correlates to one
or more characteristics of a law enforcement signal.”
2. “position determining circuit”
Claim 1 recites a “warning produced by the warning section varying in
relation to a vehicle location derived from a position determining circuit.”
Ex. 1001, col. 25, ll. 36 (emphasis added). Claim 2 recites a “position determining
circuit generating a location signal.” Ex. 1001, col. 26, ll. 10. Patent Owner
proposes that “position determining circuit” should be construed to mean “a device
for receiving information related to geographic locations.” PO Resp. 22. The term
“position determining circuit” is not used in the Specification, other than its
recitation in the claims; thus, no special definition is given to the term in the
Specification.
The Specification of the ’721 patent states generally that “the invention
provides a radar detector that includes technology for determining the location of
the detector.” Ex. 1001, col. 4, ll. 20-22. In one embodiment, the Specification
describes that “a radar detector utilizes a GPS system to determine its current
position.” Id. at col. 4, ll. 32-34 (emphasis added). Therefore, the Specification
provides that the “position determining circuit,” the GPS system in one
embodiment, is used to determine the position of the associated police warning
device. See id. The Specification further describes that “vehicle 10 is equipped
with a radar detector able to identify the present coordinates and/or velocity of the
vehicle, e.g. using an associated GPS receiver or alternatively a receiver of land-
based signals such as LORAN [Long Range Navigation].” Id. at col. 8, ll. 34-38.
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Thus, the “position determining circuit” of these embodiments receives a signal
from which the position of the radar detector can be determined. Furthermore,
claim 2 requires that the “position determining circuit” actually generate a location
signal. Ex. 1001, col. 26, ll. 10-11.
We determine that the “position determining circuit” must be involved in
determining the position of the device, rather than merely receiving information
related to geographic locations, as proposed by Patent Owner. Accordingly, in
light of the Specification and in the context of the claims, we construe “position
determining circuit” as “a circuit for determining a position of a device.”
3. “communication circuitry”
Claim 5 recites “communication circuitry for obtaining information on
geographic locations that was gathered by another police warning receiver.”
Ex. 1001, col. 26, ll. 22-25. Claim 10 recites “communication circuitry for
obtaining said signal information from a general purpose computer.” Ex. 1001,
col. 26, ll. 37-39. Patent Owner proposes that to be consistent with the
Specification, the term “communication circuitry” must be interpreted to require a
circuit supporting a wired, digital connection of the types that are identified in the
Specification. PO Resp. 26 (emphasis added). In support of its proposed
construction, Patent Owner argues that the ’721 patent describes communication
with a general purpose computer via an interface connector in only one way — a
wired digital connection to the police warning receiver. Id. at 23.
Patent Owner’s arguments, however, are not supported by the language of
the Specification. The ’721 patent discloses:
The interface connector used by the receiver may take other
forms than the known USB standard. It may use any computer
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interface standard (e.g., IEEE 488), or an automotive wiring standard,
the J1854, CAN, BH12 and LIN standards, or others.
Ex. 1001, col. 24, ll. 30-34 (emphases added).
Patent Owner argues that because wired connections are the only specific
examples disclosed in the ’721 patent, the term “communication circuitry” should
be construed to exclude wireless interfaces. Even in cases where the specification
describes only a single embodiment, we do not construe necessarily the claims as
being limited to that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C.,
669 F.3d 1362, 1365 (Fed. Cir. 2012) (holding that it is not enough that the only
embodiment, or all of the embodiments, contain a particular limitation to limit a
claim to that particular limitation.). Moreover, we decline to add limitations into
the claims in the absence of a special definition set forth in the Specification.
Petitioner argues that the ’721 patent does not limit the types of communication
circuitry that can be used. Pet. Reply 13. We determine that because Patent
Owner failed to set forth a special definition for the term “communication
circuitry” in the ’721 patent Specification, we are not persuaded to limit the
construction of the term to only wired communication. Accordingly, we do not
adopt Patent Owner’s proposal to construe the term “communication circuitry” to
be limited only to wired connections.

II. ANALYSIS
A. Status of Fleming, III and Hoffberg as Prior Art
Patent Owner argues that both of the references relied upon by Petitioner,
Fleming, III and Hoffberg, are not, in fact, prior art because they have been
antedated by a showing of a prior invention by the sole inventor of the ’721 patent,
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Mr. Orr. PO Resp. 35. Specifically, Patent Owner argues that prior to January 27,
1998, the earliest effective date of Hoffberg (the effective filing date of Fleming,
III is Apr. 14, 1999), Mr. Orr “actually reduced to practice each of the claims of
the ’721 patent.” Id. (citing Declaration of Steven K. “Steve” Orr (“Orr
Declaration”), Ex. 2073 ¶ 5). In support of its allegation, Patent Owner provides a
chart comparing the elements of claims 1-10 to the statements made in the Orr
Declaration regarding Mr. Orr’s efforts to reduce the claimed invention to practice.
Id. at 36-41. From 1988 until February 14, 1997, Mr. Orr was the Manager of
Advanced Technology at Cincinnati Microwave Inc. (“CMI”), the company from
which Patent Owner acquired the ’721 patent, and from July 1998 until the present,
Mr. Orr has been a consultant for Patent Owner. Id. ¶ 4.
“In order to establish an actual reduction to practice, [a party] must establish
three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process
that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention
would work for its intended purpose,’” and “(3) the existence of sufficient
evidence to corroborate inventor testimony regarding these events.” Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v.
Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’
analysis is applied to determine whether the inventor’s prior conception testimony
has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).
As Patent Owner establishes, claims 1-10 of the ’721 patent relate to the
“combination of a radar detector and [a] position[] determining circuit, e.g. a
global positioning system (“GPS”) receiver.” PO Resp. 9-10; see also Ex. 1001,
col. 4, ll. 40-44. In his Declaration, Mr. Orr testifies that “[p]rior to January 27,
1998, I actually reduced to practice claims 1-10 of the ’721 patent.” Ex. 2073 ¶ 5.
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Mr. Orr’s testimony regarding his actual reduction to practice is based upon his
work on two prototypes, one in 1992 and another in 1996. See id. ¶¶ 5-82.
In evaluating the date of the actual reduction to practice, we begin with the
key aspects of the claimed invention, namely claim 1’s recitation “the warning
produced by the warning section varying in relation to a vehicle location derived
from a position determining circuit.” Ex. 1001, col. 25, ll. 34-36. Patent Owner
and Mr. Orr generally refer to this concept as the GPS lockout concept, as the
device can lockout certain false alarms experienced at a particular GPS location.
See Ex. 2073 ¶¶ 79-82. Furthermore, we analyze the recitation of the “position
determining circuit” in claim 2.
1. 1992 Prototype
Mr. Orr testifies that in 1992, he created and experimented with a prototype
including an Escort Passport 3100 or 3200 Radar Detector and a “position
determining circuit in the form of a Lanier tape recorder to record the
corresponding geographical location of the radar signal.” Id. ¶¶ 5-6. The Lanier
tape recorder was used by Mr. Orr to record his voice stating the geographic
location of his vehicle when the radar detector encountered a radar signal sufficient
for alert. Id. ¶ 6. Specifically, Mr. Orr alleges that the Lanier tape recorder in the
1992 prototype meets the claimed limitation of a “position determining circuit.”
Id.
We determine that Mr. Orr’s testimony regarding the 1992 prototype is
insufficient to establish that the embodiment constructed met all the limitations of
the claimed invention. See Medichem, 437 F.3d at 1169 (holding that actual
reduction to practice requires “construct[ion of] an embodiment . . . that met all the
limitations”) (citations omitted). As discussed above, we construe the term
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“positioning determining circuit” as “a circuit for determining a position of a
device” (emphasis added). The Lanier tape recorder used by Mr. Orr in the 1992
prototype was used merely as an electronic notepad to record the notes of Mr. Orr
regarding his observations during tests with the radar detector. See Tr. 14:19-23.
1

Mr. Orr could have performed the same task with a pen and paper. Contrary to
requirements of the claimed invention, the Lanier tape recorder could not be relied
upon to determine the position of the police activity warning device. Therefore,
the 1992 prototype fails at least to meet the limitation of a “position determining
circuit,” required by the challenged claims.
2. 1996 Prototype
With respect to the 1996 prototype, Mr. Orr provides testimony regarding
test data obtained through the testing with a Rockwell NavCard and a laptop. See
Ex. 2073, ¶¶ 32-76. Generally, Mr. Orr states in his Declaration that “my
prototype had a position determining circuit” and an alert section that would “alter
and/or not provide the alert if the location signal correlated to a location of a
rejectable signal.” Id. ¶ 92. Mr. Orr further testifies that he drafted software code
to demonstrate the GPS lockout concept of the claimed invention with the 1996
prototype. Id. ¶ 78.
The only software file in the record, however, that Patent Owner alleges
existed prior to January 27, 1998 is the file titled tst4600k.bas (Ex. 2086).
Tr. 35:13-21. Mr. Orr concedes that there is no software code in this tst4600k.bas
file that relates to a position determining circuit. Id. at 35, l. 25–36, l. 3 (Q: “there

1
At the oral hearing, Mr. Orr testified: “I would take the Lanier recorder and I
would speak into it, this is the tenth event, and I would speak the words of the
conditions that were present during that moment.” Tr. 14, ll. 19-23.
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is nothing in this particular file, Exhibit 2086, that relates to a position determining
circuit?”; A: “No.”). Mr. Orr testified that the tst4600k.bas file (Ex. 2086) is
missing forty-seven lines of code that provided the functionality of the position
determining circuit. Id. at 36, ll. 13-20. Mr. Orr further testified that Patent Owner
was unable to recover any file containing the missing forty-seven lines of code. Id.
The record includes additional software code files drafted by Mr. Orr, graph2.bas
(Ex. 1010) and graph3.bas (Ex. 1011, 1012), which Mr. Orr alleged implemented
the position determining circuit. Ex. 1018, 30, l. 6–31, l. 21; Ex. 1023, 28, ll.5-8.
Tr. 35:6-24. The graph2.bas and graph3.bas files, however, were drafted by Mr.
Orr in 2010 and later for the purposes of litigation. See id.
In the analogous case of In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir.
2011), the Federal Circuit affirmed the Board’s determination that the evidence
provided by the patent applicant did not corroborate sufficiently the inventor’s
claimed actual reduction to practice of an electronic mail system. Id. at 1291. In
that case, NTP argued that a Telefind E-mail Integration document (“Telefind”)
would corroborate the inventor’s testimony. Id. NTP submitted Revision 2 of the
Telefind document, dated after the critical date, as evidence of Revision 0 of the
Telefind document, allegedly created before the critical date. Id. NTP’s inventor
testified that the Telefind document was not changed significantly from Revision 0
to Revision 2. The Federal Circuit rejected NTP’s argument as circular because
NTP sought to corroborate the inventor’s testimony with the Telefind document,
but, at the same time, attempted to corroborate the date of the Telefind document
with the inventor’s testimony. Id. Similarly, here, Patent Owner attempts to
corroborate Mr. Orr’s testimony regarding the reduction to practice of the GPS
lockout concept and the position determining circuit with the tst4600k.bas file (Ex.
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2086), but, at the same time, attempts to corroborate the missing functionality from
this file with inventor testimony regarding later versions of the file created long
after the effective date of the asserted prior art.
Patent Owner fails to provide any objective evidence to corroborate
Mr. Orr’s testimony that he reduced to practice the GPS lockout concept and
associated position determining circuit prior to January 27, 1998 other than the
tst4600k.bas file (Ex. 2086), which he concedes does not incorporate the position
determining circuit. See Ex. 2073, ¶¶ 79-95. For example, Mr. Orr states in his
Declaration that he “used the laptop and the spacebar in the laboratory in Stage 1 to
illustrate the GPS lockout concept to other CMI employees,” but failed to cite any
evidence to corroborate this testimony. Id. ¶ 80. Furthermore, Mr. Orr states in his
Declaration that “my prototype had a position determining circuit” and an alert
section that would “alter and/or not provide the alert if the location signal
correlated to a location of a rejectable signal.” Id. ¶ 92. Patent Owner fails,
however, to cite to any evidence to corroborate this testimony by Mr. Orr. See id.
¶¶ 80, 92. Mr. Orr was questioned at the oral hearing as to whether there was any
evidence in the record of the successful test results or observations of the GPS
lockout feature that Mr. Orr alleged to have reduced to practice in his Declaration.
Tr. 39:15–41:5. During the hearing, Mr. Orr testified that he was not aware of any
documents submitted in the record by Patent Owner providing such test results or
observations. See id.
In addition to a failure to provide sufficient objective evidence supporting
the actual reduction to practice by the 1996 prototype of the position determining
circuit and the associated GPS lockout concept, Patent Owner fails to provide
sufficient corroborating testimony by others that witnessed Mr. Orr’s prototype
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successfully implementing the GPS lockout concept. Specifically, Patent Owner
submitted testimony from four declarants, fellow employees of Mr. Orr at CMI:
(1) Beth Andrews (Ex. 2053), (2) Gregory Blair (Ex. 2054), (3) Jim Brandon
(Ex. 2055), and (4) Daniel Kindel (Ex. 2056). Ms. Andrews and Mr. Blair testified
only that in 1996, the GPS lockout concept was a desired feature for a future radar
detector product by CMI. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Neither Ms.
Andrews nor Mr. Blair testified, however, that they witnessed or even were aware
of an actual reduction to practice of a prototype demonstrating the GPS lockout
concept. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Mr. Kindel testified that in 1996,
Mr. Orr was conducting research into the benefits and feasibility of adding GPS to
a radar detector, but Mr. Kindel failed to state that he witnessed an actual reduction
to practice of such a prototype. See Ex. 2056 ¶ 3-6. Finally, Mr. Brandon testified
that during his time at CMI, he was aware that Mr. Orr was working on a GPS
enabled radar detector prototype prior to 1998 and the “purpose of this prototype
was to mark the locations of false radar signals.” Ex. 2055 ¶ 2-3. Mr. Brandon
fails, however, to state that he witnessed or even was aware of an actual reduction
to practice of such a prototype. See id.
Here, the only evidence of the successful reduction to practice of the
position determining circuit and the associated GPS lockout concept of the claimed
invention for its intended purpose prior to January 27, 1998 is the testimony of the
inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of
earlier invention alone are insufficient—an alleged date of invention must be
corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at
1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
1998)). We conclude that the record is lacking sufficient evidence corroborating
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Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we
determine that Patent Owner has failed to prove by a preponderance of the
evidence its claim of reduction to practice of the challenged claims prior to January
27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’721 patent.
B. Anticipation by Hoffberg
Petitioner contends that claims 1-10 of the ’721 patent are anticipated by
Hoffberg.
2
Pet. 19-38. “A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a single
prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
1. Overview of Hoffberg
Hoffberg discloses a mobile communication device “including police radar
and LIDAR detectors, user output, memory, central processor, GPS receiver and
RF transceiver.” Ex. 1002, col. 24, ll. 29-32. The mobile communication device
in Hoffberg is enabled to process current location information in conjunction with
stored locations and associated events to determine a priority of the associated
events. Id. at Abstr. Figure 1 of Hoffberg is reproduced below.

2
US 6,252,544 B1, issued June 26, 2001 (Ex. 1002).
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Hoffberg, Figure 1
As shown above in Figure 1, mobile communications device 1 can include location
sensing system 2 for producing a location output, memory 4 for storing a set of
locations and associated events, and processor 6. Id. at col. 26, ll. 36-40. Mobile
communications device 1 in Hoffberg also includes an event detector having radar
detector 18 and LIDAR detector 19. Id. at col. 30, ll. 44-46. Hoffberg discloses
that its mobile communications device 1 can suppress false alarms by correlating
detecting events with false alarm events stored in memory 4. Id. at col. 29, ll. 8-11
(“It is noted that, in the case of ‘false alarms’, the response of the unit is to detect
the event, e.g., radar signal, correlate it with a stored ‘false alarm’ event, and
suppress an alarm or modify the alarm signal.”). “Thus, information stored in
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memory and/or transmitted between units, may signify an important alarm or a
suppression of an erroneous alarm.” Id. at col. 29, ll. 11-13.
Hoffberg discloses that its mobile communications device 1 can filter sensor
outputs based on present sensor outputs, past experience with a particular location
in question, and the experience of others at the particular location. Ex. 1002,
col. 28, l. 63 – col. 29, l. 4. Furthermore, Hoffberg discloses that further
information can be stored about a detected event in addition to the location and
source of the event. Id. at col. 30, ll. 20-24. For example, Hoffberg discloses that
“mobile police radar ‘traps’ are often relocated,” so these types of events can be
stored with an expiration date. Id. at col. 30, ll. 31-35.
2. Analysis
a. Claims 1-4 and 6-9
Petitioner contends that claims 1-4 and 6-9 are anticipated by Hoffberg.
Pet. 19-38. Patent Owner counters that Mr. Orr has antedated successfully
Hoffberg. PO Resp. 35. As discussed above, we are not persuaded by Patent
Owner’s attempt to prove actual reduction to practice prior to the effective date of
Hoffberg on January 27, 1998.
As to the merits of the proposed grounds of anticipation with respect to
independent claims 1 and 2, Patent Owner argues that Hoffberg fails to disclose the
correlation of a received signal to a law enforcement signal. PO Resp. 27.
Specifically, Patent Owner argues that “Hoffberg does not distinguish police
signals from other types of signals, so that a warning is provided only ‘if a received
signal correlates to a law enforcement signal,’ as is recited in all of the Orr claims.”
Id. at 28.
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Claim 1 recites “providing a warning if a received signal correlates to a law
enforcement signal.” Ex. 1001, col. 25, ll. 33-34; see also id. at col. 26, ll. 8-9,
claim 2 (“provide an alert if a received electromagnetic signal correlates to a police
signal”). With respect to this limitation of claim 1, Petitioner cites to Hoffberg’s
disclosure of the use of a “modified commercially available radar detector, to
produce a serial data stream or parallel signal set.” Pet. 22 (citing Ex. 1002, col.
33, ll. 10-18). Patent Owner argues that Hoffberg’s disclosure is deficient because
the claimed “correlates” limitation requires the device to distinguish between
police activities and non-police activities. PO Resp. 27.
We are not persuaded by Patent Owner’s arguments because they are not
commensurate with the scope of the claims. As discussed above, we construe the
claim 1 phrase of “providing a warning if a received signal correlates to a law
enforcement signal,” as “providing a warning if a received signal correlates to one
or more characteristics of a law enforcement signal.” The ’721 patent
Specification describes that this correlation may be implemented based on “any of
the techniques” described in the many patents incorporated by reference in the
Specification. Ex. 1001, col. 8, ll. 45-52. Therefore, the correlate limitation
recited in claims 1 and 2 can involve many prior art techniques, such as those
disclosed in Hoffberg.
For example, Petitioner argues that Hoffberg discloses the use of a
“commercially available radar detector.” Pet. Reply 15 (citing Ex. 1002, col. 33,
ll. 9-15). More particularly, Hoffberg discloses “an event sensor is provided, such
as a police radar and laser speed detection system (e.g., “radar detector”)” to detect
signals and determine whether they correlate to a law enforcement signal.
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Ex. 1002, col. 33, ll. 9-15. We determine, therefore, that Hoffberg discloses the
claimed correlating limitation.
Based on the evidence presented, we conclude that Petitioner has established
by a preponderance of evidence that Hoffberg discloses all limitations of
independent claims 1 and 2. Patent Owner does not address dependent claims 3-4
and 6-9 with separate, specific arguments against the anticipation challenge based
on Hoffberg. PO Resp. 27-30. As to dependent claims 3-4 and 6-9, Petitioner
provides sufficient evidence to show that Hoffberg discloses the additional recited
limitations in those claims. Pet. 30-32, 33-36. For example, Petitioner argues that
the claim 3 limitation that the information associated with geographic locations
includes information identifying rejectable signals at a geographic location is met
by Hoffberg’s disclosure that “further information is also stored, such as a time of
the event, its character or nature, and other quantitative or qualitative aspects.”
Pet. 30 (quoting Ex. 1002, col. 18, l. 64–col. 19, l. 4 (emphasis omitted)). In a
further example, Petitioner argues that the claim 6 requirement that aid information
comprises a geographic location visited by a vehicle carrying said receiver is met
by Hoffberg’s disclosure that with respect to false alarm identification “[t]he
memory stores information describing the event as well as the location of the
event.” Pet. 33 (quoting Ex. 1002, col. 22, ll. 18-20 (emphasis omitted)).
For the foregoing reasons, we conclude that Petitioner has established by a
preponderance of evidence that claims 1-4 and 6-9 are anticipated by Hoffberg.
b. Claims 5 and 10
Petitioner contends that claims 5 and 10 are anticipated by Hoffberg.
Pet. 32-33, 37-38. Claim 5 recites “communication circuitry for obtaining
information on geographic locations that was gathered by another police warning
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receiver.” Ex. 1001, col. 26, ll. 22-25. Petitioner argues that the limitations of
claim 5 are met by Hoffberg’s disclosure of a device that includes a “radio
frequency transceiver for transmitting event data and receiving event data” and that
information regarding false alarm radar signals may be “transmitted between
units.” Pet. 32-33 (quoting Ex. 1002, col. 27, ll. 49-55; col. 28, l. 57–col. 29, l. 13
(emphasis omitted)). Claim 10 similarly recites “communication circuitry for
obtaining said signal information from a general purpose computer.” Ex. 1001,
col. 26, ll. 37-39. Petitioner argues that the limitations of claim 10 are met by
Hoffberg’s disclosure of a device that receives signal information from a “central
repository of event data,” such as an online database. Pet. 37 (quoting Ex. 1002,
col. 24, ll. 4-11 (emphasis omitted)). We agree and conclude that Petitioner has
established by a preponderance of evidence that Hoffberg discloses these
limitations.
Patent Owner argues that Hoffberg fails to anticipate claims 5 and 10
because the “communication circuitry” recited in each claim must be a wired
digital connection suitable for use with a host computer. PO Resp. 29-30. Patent
Owner further argues that Hoffberg discloses only a radio frequency transceiver for
transmitting event data to, and receiving event data from, a database server remote
from mobile communications device 1 and, thus, fails to disclose a wired digital
connection. Id. As discussed above, we do not adopt Patent Owner’s proposed
construction that “communication circuitry” be limited only to wired connections.
Accordingly, we conclude that Hoffberg’s radio frequency transceiver for
transmitting event data and receiving event data meets the limitation of
“communication circuitry for obtaining information on geographic locations that
was gathered by another police warning receiver,” recited in claim 5.
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Patent Owner additionally argues that Hoffberg’s disclosure of internet-
connected computers and database servers do not disclose the “general purpose
computer” recited in claim 10. Patent Owner fails, however, to provide a proposed
construction of “general purpose computer” nor does Patent Owner identify any
functionality required by the “general purpose computer” recited in claim 10 that is
not met by the disclosure in Hoffberg. See PO Resp. 30 (citing Ex. 2074 ¶ 23).
For the foregoing reasons, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 5 and 10 are anticipated by Hoffberg.
C. Anticipation by Fleming, III
1. Overview of Fleming, III
Fleming, III
3
discloses a radar detector for alerting an operator of a motor
vehicle to an incoming police radar signal. Ex. 1003, Abstr. “Upon detection of
an incoming radar signal, the radar detector can utilize the position, velocity,
and/or heading data from the global positioning system receiver to determine
whether to generate an alert.” Id. (emphasis added). Figure 1 of Fleming, III is
reproduced below.

3
US 6,204,798 B1, issued Mar. 20, 2001 (Ex. 1003).
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Fleming, III, Figure 1
As shown above in Figure 1, Fleming, III discloses a radar detector having a
detector circuit to collect radar signals from an antenna, a microprocessor to
process those signals, and an alert circuit to communicate information regarding
detected radar signals to the operator of a motor vehicle. Id. at col. 2, ll. 25-29, 50-
53. The radar detector in Fleming, III also includes a GPS receiver, which can be
used to calculate the location, velocity, and heading of the radar detector. Id. at
col. 3, ll. 10-22.
Fleming, III further discloses that the storage device contains code that
commands the microprocessor to determine whether to generate an alert based
upon the position, velocity, and heading data received from the GPS receiver. Ex.
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1003, col. 3, ll. 30-36. “By utilizing the above method, many false alarms may be
eliminated.” Id. at col. 3, ll. 44-45. Thereby, Fleming, III discloses a method by
which the user of the radar detector can program certain locations as false alarm
locations. See id. at col. 3, ll. 53-60. Fleming, III discloses that “if an operator of a
motor vehicle approaches a microwave automatic door opener, then the operator
can depress an ‘ignore radar’ button,” and the “radar detector would store the
position of the radar detector and possibly the frequency and the signal strength of
the incoming radar signal in the program storage device of FIG. 1.” Id. at col. 3,
ll. 55-60 (emphasis added). Alternatively, Fleming, III discloses that the radar
detector user can hold down a “mute” button to designate a particular location as a
false alarm location. Id. at col. 3, ll. 63-65. Furthermore, the radar detector can
access a database containing position, frequency, and signal strength for specific
geographic regions identified by others as false alarm locations. Id. at col. 3, l. 65–
col. 4, l. 5.
2. Analysis
a. Claims 2-4 and 6-8
Petitioner contends that claims 2-4 and 6-8 are anticipated by Fleming, III.
Pet. 38-45. Patent Owner counters that Mr. Orr has antedated successfully the
Fleming, III reference. PO Resp. 35. As discussed above, we are not persuaded by
Patent Owner’s attempt to prove actual reduction to practice prior to effective date
of Fleming, III.
As to the merits of the proposed grounds of anticipation with respect to
independent claim 2, Patent Owner argues, similar to its arguments for Hoffberg,
that Fleming, III fails to disclose the correlation of a received signal to a law
enforcement signal. PO Resp. 27. Specifically, Patent Owner argues that although
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Fleming discloses a detector circuit that “collects the signals from the antenna,
detects the incoming signals, and distinguishes valid radar signals from electrical
noise,” Fleming, III fails to disclose identifying a correlation between a signal and
law enforcement signals. Id. at 28-29 (quoting Ex. 1003, col. 2, ll. 26-29).
Patent Owner’s arguments fail, however, to acknowledge that Fleming, III
discloses that the purpose of its detector circuit is to identify a correlation between
a received signal and law enforcement signals. For example, in the Fleming, III
paragraph quoted by Patent Owner, Fleming, III discloses that a microprocessor
can control the detector circuit “so that radar signals in the different frequency
bands allocated to police radar signals are detected” and that the detector circuit
can identify the strength, presence, and frequency of incoming radar signals.
Ex. 1003, col. 2, ll. 30-49. As Petitioner points out, Fleming, III also discloses
operating the radar detector in different modes, such as city and highway modes, to
improve signal correlation. Pet. Reply 13-14 (citing Ex. 1003, col. 3, ll. 24-28).
Additionally, Petitioner argues that Fleming, III discloses only activating the alert
circuit after it has been verified that the signal strength of the detected radar signal
exceeds a predetermined value. Id. (citing Ex. 1003, col. 2, l. 59–col. 3, l. 9). In
view of the disclosures in Fleming, III, we are not persuaded by Patent Owner’s
arguments that Fleming, III fails to disclose the correlation of a received signal to a
law enforcement signal.
Based on the evidence presented, we conclude that Petitioner has established
by a preponderance of evidence that Fleming, III discloses all limitations of
independent claim 2. Patent Owner’s does not address dependent claims 3-4 and
6-8 with separate, specific arguments against the challenge of anticipation by
Fleming, III. PO Resp. 27-30. As to dependent claims 3-4 and 6-8, Petitioner
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provides sufficient evidence to show that Fleming, III discloses the additional
recited limitations in those claims. Pet. 42-44. For the foregoing reasons, we
conclude that Petitioner has established by a preponderance of evidence that claims
2-4 and 6-8 are anticipated by Fleming, III.
b. Claims 5 and 10
Petitioner contends that claims 5 and 10 are anticipated by Fleming, III.
Pet. 43, 45. Claim 5 recites “communication circuitry for obtaining information on
geographic locations that was gathered by another police warning receiver.” Ex.
1001, col. 26, ll. 22-25. Petitioner argues that the limitations of claim 5 are met by
Fleming, III’s disclosure of a radar detector device that can eliminate many false
alarms, in part, by accessing a database, with stored data about a specific
geographic region via a cellular phone coupled to the microprocessor of the radar
detector device. Pet. 43 (citing Ex. 1003, col. 3, l. 65–col. 4, l. 5). Claim 10
similarly recites “communication circuitry for obtaining said signal information
from a general purpose computer.” Ex. 1001, col. 26, ll. 37-39. Petitioner argues
that the limitations of claim 10 are met by the same Fleming, III disclosure
regarding a database and the Fleming, III disclosure that the database could be
stored on an external storage device. Pet. 45 (citing Ex. 1003, col. 6, ll. 13-16).
Patent Owner argues that Fleming, III fails to anticipate claims 5 and 10
because the “communication circuitry” recited in each claim must be a digital
connection suitable for use with a host computer. PO Resp. 29-30. As discussed
above, we do not adopt Patent Owner’s proposed construction that
“communication circuitry” be limited only to wired connections. Accordingly, we
determine that the disclosure in Fleming, III of radar detector device
communicating to a database via a cellular phone to obtain false alarm information
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meets the limitations of “communication circuitry for obtaining information on
geographic locations that was gathered by another police warning receiver,” recited
in claim 5, and “communication circuitry for obtaining said signal information
from a general purpose computer,” recited in claim 10.
For the foregoing reasons, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 5 and 10 are anticipated by Fleming, III.
D. Obviousness Over Fleming, III and Hoffberg
Petitioner contends that claims 2-10 are obvious in view of Fleming, III and
Hoffberg. Pet. 45-49. More particularly, Petitioner argues that it would have been
obvious to combine the intelligent radar detector of Fleming, III with the LIDAR
detector of Hoffberg to reach the claimed invention, as both references are directed
to suppressing or modifying warnings to incoming signals that may be confused
with law enforcement signals. Pet. 45 (citing Ex. 1007 ¶¶ 68-69).
Patent Owner argues that Petitioner’s obviousness challenge is insufficient
because Petitioner’s expert fails to describe how the resulting combined system of
Fleming, III and Hoffberg would be implemented. PO Resp. 34. Specifically,
Patent Owner argues that Fleming, III fails to disclose the correlation of a received
signal to a law enforcement signal and, thus, the Fleming, III algorithms do not
perform the limitations of the ’721 patent claims. Id. As discussed above, we
determine that Fleming, III does, in fact, disclose the correlation of a received
signal to a law enforcement signal. Therefore, we are not persuaded by this
argument against the combination of Fleming, III and Hoffberg. Furthermore, we
determine that Petitioner’s contention that the references are directed to similar
devices for the similar purpose of suppressing or modifying warnings to incoming
signals provides a sufficiently articulated reasoning with rational underpinning for
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combining Fleming, III and Hoffberg. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Based on the evidence presented, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 2-10 are unpatentable
as obvious over Fleming, III and Hoffberg.

III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of the
evidence that (1) claims 1-10 are anticipated by Hoffberg, (2) claims 2-8 and 10
are anticipated by Fleming, III, (3) claims 2-10 are obvious over Fleming, III and
Hoffberg.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
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.

IV. ORDER
Accordingly, it is hereby:
ORDERED that claims 1-10 of U.S. Patent No. 7,999,721 are unpatentable.

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For PETITIONER:

Greg Gardella
Scott McKeown
Michael Kiklis
OLBON SPIVAK
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com
CPDocketKiklis@oblon.com

For PATENT OWNER:

Thomas W. Humphrey
John Paul Davis
WOOD HERRON & EVANS, LLP
thumphrey@whe-law.com
jdavis@whe-law.com