Research in Motion Corporationv.NXP B.V.

Patent Trial and Appeal Board

Sep 19, 2014

09780739 (P.T.A.B. Sep. 19, 2014)

Trials@uspto.gov Paper 24
571.272.7822 Filed: September 19, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BLACKBERRY CORPORATION,
Petitioner,
v.
NXP B.V.,
Patent Owner.
_____________

Case IPR2013-00233
Patent 6,501,420 B2
_______________

Before JENNIFER S. BISK, TRENTON A. WARD, and
BRIAN P. MURPHY, Administrative Patent Judges.

WARD, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Blackberry Corporation (“Petitioner”) filed a Petition for inter partes
review of claim 3 of U.S. Patent No. 6,501,420 B2 (“the  ’420 patent”).
Paper 1 (“Pet.”). NXP B.V. (“Patent Owner”) timely filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). On October 1, 2013, pursuant to 35
U.S.C. § 314, we instituted inter partes review, as to claim 3 of the
’420 patent. Paper 9 (“Dec.”).
After institution of trial, Patent Owner filed a Response (Paper 15,
“PO Resp.”) and Petitioner filed a Reply (Paper 16, “Pet. Reply”). Oral
hearing was held on June 2, 2014. The hearing transcript has been entered
in the record as Paper 23 (“Tr.”).
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 claim 3 of the ’420 patent is
unpatentable.
B. Related Proceedings
In addition to this petition, on September 30, 2013, we instituted inter
partes review based on Petitioner’s challenges to the patentability of certain
claims of Patent Owner’s U.S. Patent No. 5,639,697 (IPR2013-00232). Our
Final Decision in that proceeding is being entered concurrently with this
Decision. The ’420 patent is the subject of litigation between the parties
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titled NXP B.V. v. Research In Motion Ltd., Case No. 6:12-cv-498 (M.D.
Fla.).
C. The ’420 Patent
The ’420 patent (Ex. 1001) is titled “Mobile Cellular Telephone
Comprising a GPS Receiver” and generally relates to a mobile cellular
telephone with a Global Positioning System (“GPS”) receiver arranged to
power up in response to direct interaction between the user and the mobile
phone. Ex. 1001, Abstr. The ’420 patent explains that for a mobile
telephone with a GPS receiver, the power consumption of the GPS receiver
during GPS signal acquisition, tracking, and navigation can be high; thus, it
is preferable that the GPS receiver is powered up only when required. Id. at
col. 1, ll. 18–23. Figure 1 of the ’420 patent is reproduced below:

’420 patent, Figure 1
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As shown above in Figure 1, the ’420 patent describes mobile cellular
telephone 100 comprising a communications transmitter and receiver 102
connected to communication antenna 101, communications microprocessor
103, and GPS receiver 105. Ex. 1001, col. 2, l. 60–col. 3, l. 5. The ’420
patent describes that the GPS receiver may be arranged to power up in
response to the user selecting a particular web site, for example, a web site
associated with a location-based service, whereby the call location is
determined in anticipation of a request from that web site. Id. at col. 2,
ll. 40–45.
Claim 3 is reproduced below:
3. An internet enabled, mobile cellular telephone
comprising a communications transmitter and receiver
arranged for two-way communication with a base station,
and a GPS receiver, wherein the GPS receiver is arranged
to power up in response to a user selecting a particular
web site.
D. Grounds of Unpatentability
In the Institution Decision, we instituted an inter partes review of
claim 3, the only challenged claim, on the following grounds:
Reference(s) Basis
Koss
1
and O’Neill
2
§ 103
Koss and Sheynblat
3
§ 103

1
US 6,731,612 B1 (Ex. 1004) (“Koss”)
2
US 6,141,570 (Ex. 1005) (“O’Neill”)
3
US 6,314,308 B1 (Ex. 1006) (“Sheynblat”)
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Reference(s) Basis
Jessup
4
and O’Neill § 103
Jessup and Sheynblat § 103
Dec. 18.
E. Claim Construction
The Board interprets claims using the broadest reasonable
construction in light of the specification of the patent in which they appear.
See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
14, 2012); 37 C.F.R. § 42.100(b). There is a “heavy presumption” that a
claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
Petitioner does not argue that any of the claim terms in the challenged
claims should take on meanings other than their ordinary and customary
meanings. See Pet. 7–8. Patent Owner argues that that the plain and
ordinary meaning of the words in their common usage applies, taken in the
context of the ’420 patent. PO Resp. 9.
Specifically, Patent Owner argues that the plain and ordinary meaning
of the claim 3 term “power up,” is that the power supplied to something is
increased. Id. (citing Ex. 2006 ¶ 46). During the hearing, Petitioner
acknowledged that “selectively increasing or adding power to the component
is the broadest reasonable interpretation” of “power up.” Tr. 7:3–11. We
determine that both proposed constructions are substantially equivalent.

4
US 7,330,883 B1 (Ex. 1007) (“Jessup”)
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Furthermore, the Specification uses the term “power up” to describe
providing power to the GPS receiver. Ex. 1001, Abstr. (“a GPS receiver
(105, 106) arranged to power up in response to direct interaction between a
user and the mobile phone (100) after the telephone has been switched on.”).
Accordingly, in light the Specification and in the context of the claims, we
construe “power up” to mean increasing the power supplied.

II. ANALYSIS
A. Obviousness of Claim 3 Over Koss and O’Neill
1. Overview of Koss (Ex. 1004)
Koss discloses a hyperlink browsing system that includes a plurality
of mobile hyperlink browsers that communicate wirelessly with a plurality
of servers having geographically-dependent information content. Ex. 1004,
Abstr. Koss discloses that the hyperlink browsers have access to positioning
receivers that generate the geographic coordinates of the locations of the
browsers, such that the hyperlink browsers can include the geographic
coordinates when submitting HTTP requests. Ex. 1004, Abstr.
Specifically, Koss discloses a mobile computer including a
positioning receiver, i.e., a GPS receiver that generates geographic
coordinates of the mobile computer and its user. Ex. 1004, col. 3, ll. 24–28.
According to Koss, a user of the mobile computer can select a hyperlink,
such that the mobile computer obtains the current geographic coordinates of
the mobile computer’s GPS receivers, and sends an HTTP request to a
hyperlinked content network including the embedded GPS location
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parameters. Ex. 1004, col. 5, ll. 39–48. More particularly, Koss discloses
sending HTTP requests for web sites along with the embedded GPS location
information of the mobile computer sending the request. Id.
2. Overview of O’Neill (Ex. 1005)
O’Neill discloses a wireless telephone having a wireless
communication transceiver, a GPS receiver, and a controller, wherein the
controller adapts intelligently its GPS data maintenance schedule according
to a unique set of indicators derived from the wireless telephone’s operating
conditions. Ex. 1005, Abstr. Figure 1 of O’Neill is reproduced below.

O’Neill, Figure 1
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As illustrated above in Figure 1, O’Neill discloses wireless telephone 10
having wireless communication transceiver 16, GPS receiver 18, control
processor 22, and switch 40 controlled by processor 22 to control power to
GPS receiver 18. Ex. 1005, col. 4, ll. 1–4, 17–18. O’Neill discloses that
control processor 22 operates to “provide an efficient use of battery power to
maintain the freshness of short-term and long-term information, while
conserving battery energy for primary telecommunication functions.” Id. at
col. 4, ll. 17–22 (emphasis added). Specifically, O’Neill discloses that
control processor 22 is responsive to operating conditions of wireless
telephone 10, which affect the GPS data maintenance schedule by
lengthening the schedule, delaying an individual measurement, or obtaining
information immediately. Id. at col. 4, ll. 30–34. For example, “when the
wireless telephone 10 is about to make or receive a call or initiate some geo-
location feature, the GPS receiver 18 anticipates and executes a fresh short-
term information update.” Id. at col. 4, ll. 48–51. Thus, O’Neill discloses
selectively activating the GPS receiver to conserve battery energy. Id.
3. Analysis
Petitioner contends that claim 3 is obvious over Koss in view of
O’Neill. Pet. 15–23. Petitioner argues that Koss teaches the required
“internet enabled, mobile cellular telephone comprising a communications
transmitter and receiver arranged for two-way communication with a base
station, and a GPS receiver” by disclosing a mobile computer, which may be
a hand-held device, including a positioning receiver, i.e., a GPS receiver that
generates geographic coordinates of the mobile computer and its user.
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Pet. 16–20 (citing Ex. 1004, col. 3, ll. 24–30). Furthermore, Petitioner
argues that Koss discloses that the user can select a particular web site by
disclosing that the user can send an HTTP request with embedded GPS
location parameters. Pet. 19–20 (citing Ex. 1004, col. 5, ll. 34–48).
Additionally, Petitioner argues that O’Neill teaches intelligent maintenance
of power consumption by a GPS receiver by acquiring GPS location
information based on the user’s activity. Pet. 22 (citing Ex. 1005, col. 4,
ll. 48–51, col. 5, ll. 37–44).
Petitioner’s expert, Dr. Michael Caloyannides, states that power
conservation was known to be a pervasive issue in the cellular telephone art
and combining the teachings of Koss with the selective powering up of the
GPS receiver taught in O’Neill would have been well-recognized in the art
as a power conservation technique. Ex. 1009 ¶ 54. Therefore, Petitioner
argues that it would have been obvious to modify the teachings of Koss to
include O’Neill’s teachings regarding powering up the GPS receiver, in
response to a user selecting a particular web site. Pet. 23–24. We agree
with Petitioner’s assertions.
Patent Owner makes several arguments in response to Petitioner’s
assertions. First, Patent Owner argues that Koss is not in the same field as
the ’420 patent because Koss teaches a mobile computer that can be used
with a cellular telephone and not the “internet enabled, mobile cellular
telephone” recited in claim 3. PO Resp. 10. Petitioner disagrees and argues
that Koss does, in fact, teach an “internet enabled, mobile cellular
telephone.” Pet. Reply 3. Specifically, Petitioner responds that Koss
discloses generally that the “invention relates to mobile Web browsers, and
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to the utilization of GPS-generated geographical information in conjunction
with such Web browsers.” Id. (quoting Ex. 1004, col. 1, ll. 5–7) (internal
quotation marks omitted). Furthermore, Petitioner cites to Koss’s disclosure
that “the invention is implemented . . . by a mobile computer that is
particularly adapted for the automotive, handheld, or other mobile
environments” and that “those skilled in the art will appreciate that the
invention may be practiced with other computer system configurations,
including hand-held devices . . . .” Id. (emphases added) (quoting Ex. 1004,
col. 2, ll. 1–24) (internal quotation marks omitted). In view of the cited
disclosures from Koss regarding hand-held mobile computers, we are not
persuaded by Patent Owner’s argument that Koss is directed to a different
field than the ’420 patent.
Patent Owner further argues that because Koss discloses that its
mobile computer is to be used with a cellular telephone, the mobile
computer itself cannot be a cellular telephone. PO Resp. 11. Petitioner
counters that the portion of Koss cited by Patent Owner for this argument
also states that the communications device may be “some other type of
communications adapter using digital cellular technology.” Pet. Reply 4
(emphasis added) (quoting Ex. 1004, col. 3, ll. 39–40) (internal quotation
marks omitted). We agree with Petitioner that one of ordinary skill would
have understood that a mobile computer using digital cellular technology
could have been a handheld cellular telephone. Id. (citing col. 1, ll. 13-16;
Ex. 1010 ¶ 33). Mobile cellular telephones, moreover, were well known in
the art as of the ’420 patent’s priority filing date. Ex. 1001, col. 1, ll. 9-12,
col. 2, ll. 65-67; Ex. 1010 ¶ 33. In addition to disclosing the use of other
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digital cellular technology, Koss discloses that its “mobile computer 20 has a
wireless communicator interface.” Ex. 1004, col. 3, ll. 35–36. Therefore,
we determine that the disclosure in Koss encompasses an “internet enabled,
mobile cellular telephone,” as recited in claim 3.
Second, Patent Owner argues that Koss’s mobile computer 20 is not
subject to GPS receiver power conservation concerns that arise in mobile
cellular telephones, because it is a large mobile computer with substantial
battery capacity. PO Resp. 13. Thus, Patent Owner argues that one of
ordinary skill in the art seeking to conserve energy in an “internet enabled,
mobile cellular telephone” would not look to Koss. Id. Patent Owner argues
that one of ordinary skill in the art would not have combined Koss with
O’Neill, because power consumption would have been a concern only for
the wireless phone with GPS receiver described in O’Neill, not for Koss’s
large mobile computer with substantial battery capacity. PO Resp. 16–17.
Patent Owner’s argument that Koss discloses only large mobile
computers with substantial battery capacity is contrary to the express
disclosure in Koss that its mobile computer may be a “hand-held device[].”
Ex. 1004, col. 2, ll. 1–24. Furthermore, as Patent Owner’s counsel conceded
during the oral hearing, all mobile devices under certain circumstances have
power conservation concerns, including laptop mobile computers. Tr. 24:6–
8 (“Would you agree that all mobile devices have some sort of concern with
power conservation? Mr. Schaeffer: Under certain circumstance[s], yes.”).
Therefore, we determine that one of ordinary skill in the art looking at Koss
would realize that power consumption is a concern for the mobile computer
device. Furthermore, O’Neill expressly discloses, “it is common practice to
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operate a GPS receiver in a stand-by mode of readiness” in an “effort to
preserve battery energy.” Ex. 1005, col. 2, ll. 7–11. Accordingly, we are
not persuaded by Patent Owner’s argument that one of skill in the art would
not have had a reason to combine Koss and O’Neill.
Third, Patent Owner argues that, contrary to the requirements of
claim 3, O’Neill discloses powering up the GPS receiver every time the user
presses a button on the keypad. PO Resp. 17 (citing Ex. 1005, col. 5, ll. 37–
44). Thus, Patent Owner argues that “there is no suggestion in O’Neill of
selectively powering up the GPS receiver only for certain key sequences
input by the user that correspond to a particular website (or phone number).”
PO Resp. 18 (emphasis added). We note that Patent Owner’s arguments are
not commensurate with the scope of claim 3. Claim 3 recites, “wherein the
GPS receiver is arranged to power up in response to a user selecting a
particular web site.” Contrary to Patent Owner’s arguments, claim 3 does
not require the user to enter “certain key sequences” to power up the GPS
receiver, id. (emphasis added), but merely to power up the GPS receiver in
“response to a user selecting a particular web site.”
Petitioner’s challenge relies upon the disclosure in O’Neill that power
can be conserved by a control processor, which can actuate a GPS receiver
to acquire new position information based upon manipulation of the keypad
by the user. Pet. 22 (citing Ex. 1005, col. 5, ll. 37–44). Petitioner provides
that it would have been obvious to combine this teaching from O’Neill to
modify the teaching of Koss to include powering up the GPS receiver in
response to the user sending an HTTP request with embedded GPS
locations. Pet. 23–24. Patent Owner counters that this combination would
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not suggest all the features of claim 3, because the combination lacks the
functionality of claim 3 in which the GPS receiver is powered up in response
to a user selecting a particular web site. PO Resp. 20.
Patent Owner’s arguments are not responsive fully to the combination
as proposed by Petitioner. Specifically, Petitioner relies upon Koss, not
O’Neill, for teaching that a GPS location is acquired from the GPS receiver
in response to a user selecting a particular web site. For this teaching,
Petitioner cites to the following disclosure in Koss:
Step 302 comprises allowing a user to select a hyperlink from
the rendered hyperlinked content. Step 304 comprises
obtaining current geographical coordinates of the mobile
computer from the computer’s GPS receiver.
Pet. 19–20 (emphasis omitted) (quoting Ex. 1004, col. 5, ll. 34–48).
Petitioner further proposes in its challenge that O’Neill’s teaching of power
conservation in activation of the GPS receiver be combined with this
disclosure from Koss regarding acquiring GPS location information when
the user selects a particular web site. Pet. 23–24. Accordingly, we are
persuaded Petitioner has established sufficiently that the combination of
Koss and O’Neill teaches a GPS receiver “arranged to power up in response
to a user selecting a particular web site,” as recited in claim 3.
For the reasons stated above, we conclude that Petitioner has shown
by a preponderance of the evidence that claim 3 would have been obvious
over Koss and O’Neill.

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B. Obviousness of Claim 3 Over Koss and Sheynblat
1. Overview of Sheynblat (Ex. 1006)
Sheynblat discloses power management in cellular telephones with
integrated GPS receivers. Ex. 1006, col. 1, ll. 5–8. More specifically,
Sheynblat discloses a portable cellular transceiver comprising a GPS
receiver and a power detection circuit for monitoring a power level of a
battery. Ex. 1006, Abstr. Sheynblat discloses that “activation of a single
button of the portable cellular transceiver causes the selective application of
power to GPS receiver circuitry and selective application of power to
communication circuitry.” Ex. 1006, col. 2, ll. 26–29. For example,
Sheynblat discloses that an emergency call be placed by the user, such that
“[i]n placing the emergency telephone call, the power control circuitry 112
provides power to the telephone circuitry 102 and the position circuitry 104
of the portable cellular telephone 100.” Ex. 1006, col. 4, ll. 43–47.
2. Analysis
Petitioner contends that claim 3 is obvious over Koss and Sheynblat.
Pet. 24–28. As discussed above for the asserted ground based on Koss and
O’Neill, Petitioner argues that Koss teaches the required “internet enabled,
mobile cellular telephone comprising a communications transmitter and
receiver arranged for two-way communication with a base station, and a
GPS receiver” by disclosing mobile computer 20 including positioning
receiver 49, i.e., a GPS receiver that generates geographic coordinates of
mobile computer 20 and its user. Pet. 24–25. Additionally, Petitioner
argues that Sheynblat teaches “selective application of power to GPS
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receiver circuitry.” Pet. 25–26 (emphasis and internal quotation marks
omitted) (quoting Ex. 1006, col. 2, ll. 24–29).
Petitioner’s expert, Dr. Caloyannides, states that power conservation
was known to be a pervasive issue in the cellular telephone art and
combining the teachings of Koss with the selective powering up of the GPS
receiver taught in Sheynblat would have been well recognized in the art as a
power conservation technique. Ex. 1009 ¶ 62. Petitioner argues that
Sheynblat recognizes that by selectively powering up the GPS receiver when
a position fix is needed, as determined by user activity, battery power can be
conserved. Pet. 27 (citing Ex. 1006, col. 1, ll. 5–8, col. 2, ll. 24–29; Ex.
1009 ¶ 62). Therefore, Petitioner argues that it would have been obvious to
modify the teachings of Koss to include the teachings from Sheynblat
regarding powering up the GPS receiver in response to a user selecting a
particular web site. Pet. 27. We are persuaded by Petitioner’s arguments
and supporting evidence.
We address Patent Owner’s responsive arguments in turn. First,
Patent Owner repeats the same arguments against Koss as in the previous
challenge, namely, that Koss teaches a mobile computer and that a cellular
phone is not a part of that mobile computer. PO Resp. 21. For the same
reasons discussed above, we are not persuaded by Patent Owner’s
arguments.
Second, Patent Owner argues that Sheynblat cannot be properly
combined with Koss because Sheynblat is not concerned with increasing the
time period during which a cellular telephone can operate. PO Resp. 22.
Patent Owner argues that Sheynblat merely discloses reserving power for an
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emergency call by a GPS-enabled cellular telephone so than an emergency
call can always be made. PO Resp. 23. In short, Patent Owner argues that
Sheynblat does not teach conserving power but rather reserving power. PO
Resp. 23–24.
Petitioner counters that Sheynblat expressly discloses the need for
power conservation in a GPS enabled cellular telephone by disclosing that
“integration of a GPS receiver” is “likely to increase the power consumption
of the telephone device” and the “telephone designer must focus particular
effort on decreasing the power requirements.” Pet. Reply 13 (emphasis and
internal quotation marks omitted) (quoting Ex. 1006, col. 1, ll. 30–38).
Petitioner further argues that Sheynblat’s disclosure of placing the telephone
in a low-power mode to conserve battery power and selectively powering up
the GPS receiver would have taught a person of ordinary skill in the art a
power conservation technique. Pet. Reply 14. We are not persuaded by
Patent Owner’s attempt to draw a distinction between conserving power and
reserving power, as both are focused on reducing the power consumed by
the GPS-enabled cellular telephone. Furthermore, we find that Petitioner’s
proposed combination of Koss and Sheynblat provides a sufficiently
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citation and internal quotation marks omitted). A person of
ordinary skill in the art would have relied upon selectively powering up the
GPS receiver, as shown in Sheynblat, to modify the Koss disclosure of a
mobile cellular telephone user selecting a particular web site.
For the reasons stated above, we conclude that Petitioner has shown
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by a preponderance of the evidence that claim 3 would have been obvious
over Koss and Sheynblat.
C. Obviousness of Claim 3 Over Jessup and O’Neill
1. Overview of Jessup (Ex. 1007)
Jessup is titled “System and Method for Sending Local Information
from a Wireless Browser to a Web Server,” and discloses a system for using
a wireless browser to send local information from a wireless handset to a
web server. Ex. 1007, Abstr. Figure 1 of Jessup is reproduced below.

Jessup, Figure 1
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As shown above in Figure 1, Jessup discloses handset 100 that includes
processor 104, transceiver 122, and position determination system 134 that
uses a GPS system to determine location. Id. at col. 4, ll. 4–5, col. 5, ll. 13–
22. Jessup further discloses a method for requesting information across a
network in which the user initiates a request for information, and the system
acquires the position of the handset if the request requires the handset
location. Id. at col. 6, ll. 44–50. For example, Jessup discloses that the
handset user can select a web service, the handset then determines if the user
has selected a web service requiring local information, and, if so, the
“browser will acquire the current GPS data from position determination
device 134” and include it in the URL request. Id. at col. 8, ll. 45–47, col. 9,
ll. 5–13.
2. Analysis
Petitioner contends that claim 3 is obvious over Jessup and O’Neil.
Pet. 28–37. Petitioner argues that Jessup teaches the required “internet
enabled, mobile cellular telephone comprising a communications transmitter
and receiver arranged for two-way communication with a base station, and a
GPS receiver” by disclosing handset 100 with position determination system
134 that uses GPS. Pet. 29–30 (citing Ex. 1007, col. 5, ll. 16–23).
Furthermore, Petitioner argues that Jessup teaches that the user can select a
web service that requires location information, and the browser will acquire
the current GPS data from position determination device 134 and include
that location information in the web service request. Pet. 32–33 (citing
Ex. 1007, col. 8, l. 36 – col. 9, l. 11). Additionally, Petitioner argues that
O’Neill teaches intelligent maintenance of power consumption by a GPS
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receiver by acquiring GPS location information based on the user’s activity.
Pet. 35–36 (citing Ex. 1005, col. 4, ll. 48–51, col. 5, ll. 37–44).
Petitioner’s expert, Dr. Caloyannides, states that power conservation
was known to be a pervasive issue in the cellular telephone art and
combining the teachings of Jessup with the selective powering up of the
GPS receiver taught in O’Neill would have been well recognized in the art
as a power conservation technique. Ex. 1009 ¶ 79. Petitioner further argues
that it would have been obvious to modify the teachings of Jessup to include
the teachings from O’Neill regarding powering up the GPS receiver in
response to a user selecting a particular web site. Pet. 36–37. We agree
with Petitioner.
Patent Owner disputes Petitioner’s challenge by arguing that the
combination of Jessup and O’Neill cannot teach claim 3 because Jessup does
not teach controlling the GPS receiver’s power and O’Neill does not teach
the functionality recited in claim 3. PO Resp. 30–31. Specifically, Patent
Owner argues that O’Neill teaches that the GPS receiver is powered on
every time the users presses the keypad, instead of selectively powering up
the GPS receiver only for certain key sequences. PO Resp. 31. Patent
Owner’s arguments against this combination are the same as those addressed
above against the combination of Koss and O’Neill. Just as with Koss and
O’Neill, Patent Owner’s arguments here are not responsive fully to the
combination as proposed by Petitioner.
More particularly, Petitioner relies upon Jessup, not O’Neill, for the
teaching that a GPS location is acquired from the GPS receiver in response
to a user selecting a particular web site:
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In step 204, the system determines whether the request requires
the handset location or position. If position information is
required, the method proceeds from step 204 to step 212, where
system 134 acquires the position of handset 130. If system 134
is situated in hands-free unit 132, unit 132 provides the position
data to handset 130 for transmission to server 136 over wireless
network 140 (step 214).
Ex. 1007, col. 6, ll. 44–54, Fig. 3 (emphases added); see Pet. 31–32.
Petitioner further proposes in its challenge that O’Neill’s teachings of power
conservation in activation of the GPS receiver be combined with Jessup’s
teachings regarding acquiring GPS location information when the user
selects a particular web site. Accordingly, we are persuaded that Petitioner
has established sufficiently that the combination of Jessup and O’Neill
teaches that “the GPS receiver is arranged to power up in response to a user
selecting a particular web site,” as recited in claim 3.
For the reasons stated above, we conclude that Petitioner has shown
by a preponderance of the evidence that claim 3 would have been obvious
over Jessup and O’Neill.
D. Obviousness of Claim 3 Over Jessup and Sheynblat
Petitioner contends that claim 3 is obvious over Jessup and Sheynblat.
Pet. 37–41. As discussed above for the asserted ground based on Jessup and
O’Neill, Petitioner argues that Jessup teaches the required “internet enabled,
mobile cellular telephone comprising a communications transmitter and
receiver arranged for two-way communication with a base station, and a
GPS receiver” by disclosing handset 100 with position determination system
134 that uses GPS. Pet. 37–38 (referring to Pet. 29–30). Additionally,
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Petitioner argues that Sheynblat teaches “selective application of power to
GPS receiver circuitry.” Pet. 39 (emphasis and internal quotation marks
omitted) (quoting Ex. 1006, col. 2, ll. 24–29). Petitioner argues that
Sheynblat recognizes that by selectively powering up the GPS receiver when
a position fix is needed, as determined by user activity, battery power can be
conserved. Pet. 40 (citing Ex. 1006, col. 1, ll. 5–8, col. 2, ll. 24–29;
Ex. 1009 ¶ 87).
Petitioner’s expert, Dr. Caloyannides, states that power conservation
was known to be a pervasive issue in the cellular telephone art and
combining the teachings of Jessup with the selective powering up of the
GPS receiver taught in Sheynblat would have been well recognized in the art
as a power conservation technique. Ex. 1009 ¶ 87. Therefore, Petitioner
argues that it would have been obvious to modify the teachings of Jessup to
include the teachings from Sheynblat regarding powering up the GPS
receiver in response to a user selecting a particular web site. Pet. 40.
Similar to the argument against the combination of Koss and
Sheynblat, Patent Owner argues that Sheynblat cannot be combined properly
with Jessup, because Sheynblat does not teach conserving power, but rather
reserving power. PO Resp. 34. Patent Owner argues that, contrary to the
requirements of claim 3, combining Jessup and Sheynblat would teach a
cellular phone that suspends operation when battery power drops below a
threshold level and when an emergency call is made, using that reserved
battery power to activate the cellular phone’s GPS receiver. PO Resp. 35.
Patent Owner argues, therefore, that the combination of Jessup and
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Sheynblat would not result in a cellular phone that powers up the GPS
receiver in response to a user selecting a particular web site. Id.
Similar to its arguments with respect to the combination of Koss and
Sheynblat, Patent Owner’s arguments are not responsive fully to the
combination of Jessup and Sheynblat proposed by Petitioner. First,
Petitioner relies upon Jessup for its disclosure that a GPS location is
acquired from the GPS receiver in response to a user selecting a particular
web site. Pet. 31–32 (citing Ex. 1007, col. 6, ll. 44–50), 38. Second,
Petitioner relies upon Sheynblat for GPS power conservation, namely, that
Sheynblat expressly discloses the need for power conservation in a GPS
enabled cellular telephone by disclosing that “integration of a GPS receiver”
is “likely to increase the power consumption of the telephone device” and
the “telephone designer must focus particular effort on decreasing the power
requirements.” Pet. 39; Pet. Reply 13 (citing Ex. 1006, col. 1, ll. 30–38).
Petitioner further argues that Sheynblat’s disclosure of placing the telephone
in a low-power mode to conserve battery and selectively powering up the
GPS receiver would have taught a person of ordinary skill in the art a power
conservation technique. Pet. 40. We are not persuaded by Patent Owner’s
attempt to draw a distinction between teachings regarding conserving energy
and reserving energy. Furthermore, we find that Petitioner’s proposed
combination of Jessup and Sheynblat provides a sufficiently “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness,” KSR, 550 U.S. at 418 (citation and internal quotation marks
omitted), as a person of ordinary skill in the art would have relied upon
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selectively powering up the GPS receiver, as shown in Sheynblat, to modify
Jessup’s disclosure of a user selecting a particular web site.
For the reasons stated above, we conclude that Petitioner has shown
by a preponderance of the evidence that claim 3 would have been obvious
over Jessup and Sheynblat.

III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that:
A. Claim 3 would have been obvious over Koss and O’Neill;
B. Claim 3 would have been obvious over Koss and Sheynblat;
C. Claim 3 would have been obvious over Jessup and O’Neill; and
D. Claim 3 would have been obvious over Jessup and Sheynblat.

IV. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claim 3 of U.S. Patent No. 6,501,420 B2 is unpatentable; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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Petitioner:
Robert C. Mattson, Lead Counsel
W. Todd Baker, Backup Counsel
Thomas Fisher, Backup Counsel
OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, LLP
cpdocketMattson@oblon.com
cpdocketbaker@oblon.com
cpdocketfisher@oblon.com

Patent Owner:
David L. Schaeffer, Lead Counsel
Ethan Andelman, Backup Counsel
NXP SEMICONDUCTORS
david.schaeffer@nxp.com
ethan.andelman@nxp.com