UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LAIRD TECHNOLOGIES, INC. Petitioner

Transcription

1 Paper No. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LAIRD TECHNOLOGIES, INC. Petitioner v. M/A-COM TECHNOLOGY SOLUTIONS HOLDINGS, INC. Patent Owner U.S. Patent No. 6,272,349 Title: Integrated Global Positioning System Receiver Inter Partes Review No. PETITION FOR INTER PARTES REVIEW PURSUANT TO 35 U.S.C and 37 C.F.R et seq. Mail Stop Patent Board Patent Trial and Appeal Board P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS I. INTRODUCTION...1 II. MANDATORY NOTICES UNDER 37 C.F.R A. Real Party-in-Interest Under 37 C.F.R. 42.8(b)(1)...2 B. Related Matters Under 37 C.F.R. 42.8(b)(2)...2 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)...3 D. Service Information...3 III. PAYMENT OF FEES - 37 C.F.R IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a)...3 B. Challenge Under 37 C.F.R (b) and Relief Requested...4 V. OVERVIEW OF THE 349 PATENT...4 A. Brief Description...4 B. Summary of the Prosecution on the 349 Patent...5 C. Level of Ordinary Skill in the Art...6 D. Claim Construction...8 E. Effective Filing Date for Claims 3, 13 and Claims Depending Therefrom...11 VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 349 PATENT IS UNPATENTABLE...12 A. Ground 1 Obvious over Zodiac in view of Vignone...12 B. Ground 2 - Obvious over Zodiac and Vignone in view of Eberwine...31 C. Ground 3 Obvious over Zodiac, Vignone, and Eberwine in further view of Ogino (Claims 8 and 18)...42 D. Ground 4 Obvious over Zodiac and Vignone in view of Powers...45 i

3 VII. NON-REDUNDANCY GROUNDS SET FORTH...55 VIII. CONCLUSION...57 ii

4 TABLE OF AUTHORITIES CASES Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM (Oct. 25, 2012) M/A-Com Technology Solutions Holdings, Inc. v. Laird Technologies, Inc., Case No LPS (D. Del.)...2 In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007)...8 STATUTES AND RULES 37 C.F.R (b)...8 Patent Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012)...8 iii

5 EXHIBIT LIST Exhibit Description 1001 U.S. Patent No. 6,272,349 ( the 349 Patent ) 1002 Reserved 1003 Declaration of Steven H. Goldberg, Ph.D CV of Steven H. Goldberg, Ph.D Response to Office Action dated Feb. 5, 2001 for the 349 Patent 1006 Reply to EPO Communication dated June 4, 2002 for European counterpart to the 349 Patent 1007 Transcript of portions of deposition testimony of Finbarr McGrath dated April 8, Office Action dated October 3, Reserved 1010 Reserved 1011 Reserved 1012 Ogino et al. U.S. Patent No. 5,668,563 ( Ogino ) 1013 Rockwell Semiconductor Systems, Zodiac GPS Receiver Family Designer s Guide (Dec. 16, 1996) ( Zodiac ) 1014 U.S. Patent No. 5,606,732 to Vignone, Sr. ( Vignone ) 1015 Eberwine U.S. Patent No. 5,392,052 ( Eberwine ) 1016 Chuck Powers and Randy Frank, The Consumerization of the Automotive Environment: The ITS Data Bus, SAE Paper No (Aug. 6 8, 1997) ( Powers ) 1017 U.S. Provisional Application No. 60/075,549 iv

6 Exhibit Description 1018 Redline comparing the disclosure of the Provisional Application No. 60/075,549 to the disclosure of the 349 Patent v

7 I. INTRODUCTION Petitioner Laird Technologies, Inc. requests the institution of Inter Partes Review ( IPR ) of claims 1-9 and of U.S. Patent No. 6,272,349 to McGrath et al.. (Ex. 1001, the 349 Patent ) The USPTO records reflect that the 349 Patent is assigned to M/A-Com Technology Solutions Holdings, Inc. ( Patent Owner ). The claims of the 349 Patent recite a mere assemblage of known components to form a GPS receiver that may be used in a vehicle. There is nothing new about the alleged invention recited in the claims. The known components include a printed circuit board ( PCB ), an antenna, integrated circuits, electrical conductors, memory, and an electrical connector. The alleged invention was merely a consolidation of these known components. For example, a cable between the GPS antenna and the PCB is replaced with a direct connection between the GPS antenna and the PCB, allegedly bringing two components that were already connected closer together. Miniaturization was a known and well accepted trend in industry, and merely making something smaller was not a new idea. Further, the inventors do not describe any improvements to these well-known components of a GPS receiver. In addition, the 349 Patent does not purport to relate to advancements in the receiving and/or processing of GPS signals from satellites, 1

8 techniques for mounting devices on PCBs, communication techniques, nor the use of location data by other systems in vehicles. The prior art confirms this. The art is replete with examples of GPS receivers that include all of these basic building block components, and with examples of such GPS receivers integrated into other electronic systems in vehicles. II. MANDATORY NOTICES UNDER 37 C.F.R A. Real Party-in-Interest Under 37 C.F.R. 42.8(b)(1) Laird Technologies, Inc. is the real party-in-interest. Laird Technologies, Inc. is a wholly-owned subsidiary of Laird PLC. B. Related Matters Under 37 C.F.R. 42.8(b)(2) Patent Owner asserted the 349 in the litigation styled M/A-Com Technology Solutions Holdings, Inc. v. Laird Technologies, Inc., Case No LPS, U.S. District Court for the District of Delaware. In addition to this Petition, Petitioner is concurrently filing another Petition for Inter Partes Review of the claims of the 349 Patent that includes non-redundant grounds to those asserted herein. 2

9 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) LEAD COUNSEL J. Michael Jakes (Reg. No. 32,824) Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue NW Washington, D.C Tel. (202) Fax. (202) BACKUP COUNSEL Daniel A. Crowe (Reg. No. 39,644) Scott E. Yackey (Reg. No. 73,301) Bryan Cave LLP 211 N. Broadway, Suite 3600 St. Louis, Missouri Tel. (314) Fax. (314) D. Service Information Service information for lead and backup counsel is provided in the designation of lead and backup counsel, above. Please address all correspondence and service to the address of all counsel above. Petitioner consents to electronic service at the addresses provided above. III. PAYMENT OF FEES - 37 C.F.R Petitioner authorizes the USPTO to charge Deposit Account No for the petition fee set forth in 37 C.F.R (a), and for any additional fees. IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a) Petitioner certifies that the 349 Patent is available for an IPR and that Petitioner is not barred or estopped from requesting IPR. 3

10 B. Challenge Under 37 C.F.R (b) and Relief Requested Petitioner requests IPR and cancellation of claims 1-9 and on the grounds listed in the table below. In support of this Petition, Petitioner files an evidentiary declaration of Steven H. Goldberg, Ph.D. (Ex. 1003) Ground Challenged Claims Basis for Challenge 1 1-7, 9, 11-17, and (a) Zodiac and Vignone 2 1-7, 9, 11-17, and (a) Zodiac and Vignone with Eberwine 3 8 and (a) Zodiac and Vignone with Eberwine and Ogino 4 1-7, 9, 11-17, and (a) Zodiac and Vignone with Powers V. OVERVIEW OF THE 349 PATENT A. Brief Description The 349 Patent entitled Integrated Global Positioning System Receiver, issued on August 7, 2001, from an application filed on February 22, (Ex. 1001) The 349 Patent claims priority to a provisional patent application filed on February 23, This 1998 provisional patent application contains less disclosure as compared to the application of The 349 Patent is generally related to a GPS receiver having a GPS antenna, at least one integrated circuit for processing signals received by the antenna, and an electrical connector all mounted on a multilayer printed circuit 4

11 board substrate ( PCB ). The GPS receiver has an electrical connector that is capable of communicating with an electronic system of a vehicle. In a further aspect of the 349 Patent, not recited in all claims, the GPS antenna and other components are mounted on a first side of the PCB, and a radio frequency ( RF ) processing system and a digital processing system are mounted on the other side of the PCB. The RF processing system includes an RF application specific integrated circuit ( ASIC ) for downconverting the RF signal received from the GPS antenna to an intermediate frequency ( IF ). (Ex. 1001, 3:17-20, 3:43-47) The digital processing system, including a digital ASIC, receives the IF output from the RF processing system. (Id., 3:50-53) The digital ASIC calculates position, velocity and time ( PVT ) data, formats the PVT data for transmission, and reads and interprets bus data. (Id., 3:59-65) A connector is mounted directly on the PCB and supplies power to the GPS receiver and launches the determined PVT data external to the PCB. (Id., 4:8-12) B. Summary of the Prosecution on the 349 Patent The non-provisional application that led to the issuance of the 349 Patent was filed on February 22, 1999, and included five original claims. The USPTO issued an Office Action on October 3, 2000, in which the Examiner rejected pending claims 1 4 under 35 U.S.C. 102(e) as being anticipated by U.S. Patent No. 5,889,493 to Endo ( Endo ), and rejected claim 5 under 35 U.S.C. 103(a). 5

12 (Ex. 1008, pp. 2-3) The Examiner found that Endo disclosed a GPS receiver in the form of a card-type multi-layered PCB having all five of the components claimed as patentable by Patent Owner. (Id.) In response to this Office Action, Patent Owner amended independent claim 1 to include the limitations of for establishing a data communication path between the at least one integrated circuit and an electronic system of a vehicle and whereby the GPS receiver is capable of being integrated into the electronic system of the vehicle. (Ex. 1005, p. 4) Patent Owner stated that Endo s apparatus is not electrically connectable to any of the electronic components of the vehicle, and is merely held inside the vehicle and that Endo s apparatus is not capable of being integrated into the electronic system of the vehicle. (Id., p. 9) (emphasis added) Patent Owner argued that Endo has nothing to do with integration of a GPS system into a vehicle s electronics. (Id., p. 10) C. Level of Ordinary Skill in the Art A person having ordinary skill in the art ( PHOSITA ) as of the filing date is apparent from the 349 Patent and the cited art and would have been someone with a good working knowledge of electrical engineering, including hardware design or hardware/systems architecture. (Ex. 1003, 31)The person would have gained this knowledge through education in an appropriate field in combination with training or related work experience. (Id.) Thus, a PHOSITA would have a 6

13 master s degree in electrical engineering or equivalent study involving hardware design or architecture, or the equivalent, and a minimum of 2 years of professional experience in the relevant field of industry such as embedded systems and communications, or an undergraduate degree in electrical engineering or equivalent study involving hardware design or architecture, plus at least 4 years of professional experience as described above. (Ex. 1003, 31) Dr. Steven H. Goldberg undoubtedly qualifies as a person having at least ordinary skill in the art at the time of the alleged claimed invention. As set forth in his Declaration, Dr. Goldberg holds undergraduate and graduate degrees in Electrical Engineering from Washington University in St. Louis and received a Ph.D. in Electrical Engineering from the University of California at Santa Barbara in 1988, focusing his doctoral studies on signal processing for broadband communications. In addition, Dr. Goldberg has more than thirty years in industry, including working with and directing teams of engineers involved in GPS-based tracking and location systems. (See generally Ex. 1003, 2-19) Through at least Dr. Goldberg s involvement with such engineers and his long industry experience, Dr. Goldberg is in a position to understand how a PHOSITA would have understood the 349 Patent and the teachings of the prior art relied upon herein at the time of the filing of the 349 Patent. 7

14 D. Claim Construction In the USPTO, a claim in an unexpired patent receives its broadest reasonable interpretation ( BRI ) in light of the specification, i.e., a claim term gets its plain meaning unless it is inconsistent with the specification. See 37 C.F.R (b); Patent Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The terms are also given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The BRI standard is broader than the standard applied in litigation. In the following paragraphs, Petitioner explains the proper BRI for certain claim terms solely for purposes of inter partes review. Petitioner s position regarding claim scope is not to be taken as a concession regarding the appropriate scope to be given to any claim term in any court proceeding having different claim interpretation standards. 1. disposed on and on In the related litigation, Patent Owner argued that the proper meaning of disposed on and on is connected or otherwise attached to the PCB substrate. In support of its position, Patent Owner cited to 1:16-55 of the 349 Patent. The BRI of this term should be the meaning advanced by Patent Owner in the litigation asserting the 349 Patent, namely connected or otherwise attached to the PCB 8

15 substrate. (Ex. 1003, 39) Various portions of the specification of the 349 Patent teach that various components are disposed on or mounted on the PCB substrate. (See e.g., Ex. 1001, Abstract, 1:66-2:3, 2:67-3:1, 3:17-20, 3:23-29, 4:8-9, Fig. 3) 2. electronic system of a vehicle The terms an electronic system of a vehicle and the electronic system of the vehicle appear in claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, and 20 of the 349 Patent. The specification of the 349 Patent does not use this phrase or otherwise describe a single electronic system of a vehicle. As the specification fails to define or otherwise limit the term electronic system of a vehicle, a PHOSITA would have understood that an electronic system of a vehicle can mean any type of electronic system of a vehicle. (Ex. 1003, 40-43) 3. Claim Terms that Include the Preposition for In a number of the claims of the 349 Patent, an element is listed followed by the preposition for and a statement of intended function. That is, some of the claims of the 349 Patent follow this formula: component FOR function. Specifically, the terms include: (i) at least one integrated circuit... FOR processing signals (claims 1 and 11); (ii) electrical conductors FOR interconnecting (claims 1 and 11); (iii) an electrical connector... FOR establishing a data communication path (claims 1 and 11); (iv) a ROM (read only memory)... FOR storing map data (claims 5 and 15); (v) a memory... 9

16 FOR storing map data (claims 6 and 16); (vi) a fist [sic]/ first integrated circuit... FOR converting radio frequency signals... into intermediate frequency signals (claims 9 and 19); and a second integrated circuit FOR performing operations on the intermediate frequency signals... and transmitting the GPS signals (claims 9 and 19). In each of the claim limitations above where a structure is identified for performing some function, the limitation should be interpreted as not requiring that the structure actually perform the function, only that the structure is merely capable of performing the function. Thus, the BRI of the term for is capable of. (Ex. 1003, 44-45) 4. capable of being integrated into the electronic system of the vehicle This claim limitation does not require the GPS receiver to be integrated into the electronic system of the vehicle. Instead, it only requires that the GPS receiver be capable of doing so. (Ex. 1003, 47) The 349 Patent discloses an electrical connector on the PCB that provides electrical access to the at least one integrated circuit. (Ex. 1001, 1:63-65) This connector 17 supplies power from an external source (e.g., vehicle power supply[)], and reference potential to the entire receiver system 1 and launches the processed GPS information external to the PCB 2. (Ex. 1001, 4:9-12) The connector couples with an existing cable assembly in the automobile. (Ex. 1001, 10

17 4:21-22) In arguing over Endo during the prosecution of the 349 Patent, Patent Owner stated that Endo s apparatus is not electrically connectable to any of the electronic components of the vehicle, and is merely held inside the vehicle. (Ex. 1005, p. 9) (emphasis added) As argued by Patent Owner, Endo s apparatus is not capable of being integrated into the electronic system of the vehicle. (Ex. 1005, p. 9) Thus, the BRI of the term capable of being integrated into the electronic system of the vehicle is electrically connectable to any electronic system of the vehicle. (Ex. 1003, 46-48) E. Effective Filing Date for Claims 3, 13 and Claims Depending Therefrom The 349 Patent claims a priority date of February 23, 1998 based on the filing date of U.S. Provisional Application No. 60/075,549 ( the 549 Provisional ). (Ex. 1017) Dr. Goldberg compared the disclosure of the 549 Provisional to the disclosure of the 349 Patent, and opined that the 549 Provisional would not have conveyed to a PHOSITA that the applicant was in possession of the subject matter claimed in at least claims 3, 13 and claims depending therefrom (i.e., claims 4-8, 10, and 14-20) when the 549 Provisional was filed. (Ex. 1003, 49-53; see Ex. 1018) As described in more detail by Dr. Goldberg, the 549 Provisional fails to provide any description regarding a data bus in the electronic system of a vehicle, that two-way communication can occur between the GPS receiver and the data bus, diagnostics of the GPS receiver, map data, and supplying power to the 11

18 GPS receiver from the vehicle. (Ex. 1003, 50-51) For these reasons, Dr. Goldberg opined that the 549 Provisional would not have reasonably conveyed to a PHOSITA that the applicant was in possession of claims 3-8, 10, and of the 349 Patent when the 549 Provisional was filed. (Ex. 1003, 51) Thus because the 549 Provisional does not provide adequate written description support for claims 3-8, 10, and of the 349 Patent, claims 3-8, 10, and of the 349 Patent are not entitled to the priority date of the 549 Provisional. VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 349 PATENT IS UNPATENTABLE A. Ground 1 Obvious over Zodiac in view of Vignone Claims 1-7, 9, 11-17, and are obvious over Zodiac in view of Vignone. (Ex. 1003, ) The elements and limitations of method claims and 19, which allegedly cover methods of providing GPS receivers, correspond directly to the elements and limitations of apparatus claims 1-7 and 9 and, as such, Petitioner s arguments for such apparatus claims apply equally to method claims and 19. Zodiac published on December 16, 1996, and is prior art under 102(b). The Zodiac reference describes the Zodiac family of single-board GPS receivers that were manufactured and sold by Rockwell International Corporation. (Ex. 1012, p. 1-1) Rockwell advertised that these GPS receivers were designed for 12

19 high performance and maximum flexibility in a wide range of OEM configurations including handhelds, panel mounts, sensors, and in-vehicle automotive products. (Ex. 1013, p. 1-1) (emphasis added) The Zodiac GPS receivers are highly integrated digital receivers [that] incorporate two custom Rockwell devices including the Rockwell Zodiac chip set: the Gemini/Pisces MonoPac TM and the Scorpio Digital Signal Processor (DSP). (Id., p. 1-1) The Jupiter model of Zodiac GPS receivers is shown below in annotated Fig. 1-1 of Zodiac. The single-board Zodiac GPS receivers are packaged on 28 square centimeter printed circuit boards intended for harsh industrial applications and designed to use GPS antennas disposed on the printed circuit board of the Zodiac using an RF jack. (Id., pp. 1-1, 1-4) U.S. Patent No. 5,606,732 to Vignone, Sr. issued on February 25, 1997 from an application filed in the U.S. on April 26, 1994, and is prior art under 102(e). (Ex. 1014) Vignone teaches a direct connect antenna [that] includes a passive patch-type antenna mounted to a GPS receiver that eliminates the need for and use of a coaxial cable extension arrangement. (Id., Abstract) It would have been obvious to a PHOSITA to combine the patch-type antenna of Vignone with the Zodiac GPS receiver, resulting in a GPS antenna disposed on a GPS receiver that overcomes the same problems allegedly solved by the 349 Patent. (Ex. 1003, 57, ) 13

20 Zodiac describes that a passive or active antenna may be connected to the PCB of the Zodiac GPS receiver by a standard microminiature coaxial RF jack receptacle. (Ex. 1013, Fig. 1-2, pp. 1-1, 1-3, 1-4) Zodiac encourages one to use a passive antenna in close physical proximity to the GPS receiver or that the GPS antenna and the GPS receiver may be co-located. (Id., pp. 1-2, D-1) (emphasis added) Importantly, as Dr. Goldberg concludes, Vignone provides a way for a passive GPS antenna to be in close physical proximity to or co-located with the PCB of the GPS receiver. (Ex. 1003, 101) Specifically, Vignone describes a direct connect antenna [that] includes a passive patch-type antenna mounted to a GPS receiver, thereby eliminating the need for and use of a coaxial cable extension arrangement. (Ex. 1014, Abstract) (emphasis added) The GPS antenna 12 taught by Vignone is mounted to the radio receiver 14 via a two-part coaxial connector 18 and 20. (Id., 4:61-62) Dr. Goldberg describes the passive GPS antenna of Vignone is connected or otherwise attached to the PCB substrate without any intervening wires or cables by connecting one half of the two-part coaxial connector 18 of Vignone to the coaxial RF jack receptacle on the PCB substrate of the Zodiac GPS receiver. (Ex. 1003, 102) This direct connection arrangement eliminates any intervening wires or cables and addresses the signal noise and degradation issues later identified by the 349 Patent. (Id.) 14

21 Thus, the combination of Zodiac and Vignone is no more than the combination of known prior art elements according to known methods that yield predictable results, and the arrangement taught by Vignone is directly applicable to the Zodiac GPS receiver. (Id. at 103) The passive GPS antenna of Vignone could have been connected to the Zodiac GPS receiver without any modification of Zodiac or Vignone. (Id.) For these reasons, and because Zodiac and Vignone both relate to GPS receiver design and both were owned by Rockwell, Dr. Goldberg concludes that a PHOSITA would have been motivated to combine Zodiac and Vignone. (Id.) 1. Claims 1 and 11 a. Preamble - A global positioning system (GPS) receiver comprising: / A method for providing a GPS (global positioning system) receiver, the method comprising the steps of: As described more fully by Dr. Goldberg, Zodiac clearly discloses a GPS receiver. (Ex. 1003, 58) Zodiac teaches a GPS receiver that is a single-board, 12 parallel-channel receiver engine. (Ex. 1013, p. 1-1; Ex. 1003, 58) b. Limitation (a) - a printed circuit board substrate / providing a printed circuit board substrate As illustrated in below annotated Fig. 1-1 of Zodiac, the Jupiter version of the Zodiac GPS receiver family was a single-board, 12 parallel-channel GPS receiver and was packaged on 28 square centimeter printed circuit boards. (Id., 15

22 p. 1-1) Therefore, Zodiac teaches that the Jupiter GPS receiver is made on a printed circuit board substrate. (Ex. 1003, 59) (Annotated Fig. 1-1 of Zodiac, Ex. 1013) c. Limitation (b) - a GPS antenna disposed on the printed circuit board substrate, / providing a GPS antenna on the printed circuit board substrate The GPS receiver taught by Zodiac requires a GPS signal from a passive or active antenna. (Ex. 1013, p. 1-1) The GPS antenna is connected to the PCB of the Zodiac GPS receiver by a standard microminiature coaxial RF jack receptacle. (Id., Figs. 1-1, 1-2, pp. 1-3, 1-4) This standard coaxial RF jack receptacle is shown above in annotated Fig. 1-1 of Zodiac. Furthermore, Zodiac discloses that the passive GPS antenna may be in close physical proximity to the GPS receiver or that the GPS antenna and the GPS receiver may be co-located. (Id., pp. 1-2, D-1; Ex. 1003, 61) While Zodiac teaches that the GPS antenna can be in close proximity or co-located with 16

23 the PCB of the GPS receiver, Vignone discloses that a passive GPS antenna may be disposed on the PCB of the Zodiac GPS receiver by directly connecting the GPS antenna to the PCB. (Id., 61, 67) Specifically, Vignone teaches a direct connect antenna [that] includes a passive patch-type antenna mounted to a GPS receiver which eliminates the need for and use of a coaxial cable extension arrangement. (Ex. 1014, Abstract) Well before the filing date of the 349 Patent, Vignone noted that signal losses from coaxial cables can be significant in GPS receivers, seriously affecting the intensity or amplitude of the received signals, and thus the ultimate acquisition of the desired signals. (Id., 2:37-40) Furthermore, Vignone states that the mere presence of the coaxial cable... may present difficulties in certain applications, particularly if a lengthy amount of cabling is required. (Id., 2:50-54) To overcome these problems, Vignone eliminates the coaxial cable and instead uses a GPS antenna mounted to the [GPS] radio receiver 14 via a two-part coaxial connector 18 and 20. (Id., 4:61-62) Half of the coaxial connector 18, e.g., the male or female part, is defined on one surface of the antenna 12 and [t]he opposing part of the coaxial connector 20 is formed in an adjacent surface of the GPS receiver. (Id., 4:62-66) In mating the two halves of the coaxial connector, the facing surfaces of the antenna and the receiver directly abut each other such that the antenna and receiver are electrically coupled without the use of coaxial 17

24 cables. (Id., 4:66-5:2) Eliminating the coaxial cable results in reduced signal attenuation and losses, improved GPS receiver performance due to an increase in the carrier-to-noise ratio, and [reduced] system cost and complexity. (Id., 5:2-6) The direct connection of the GPS antenna and the GPS receiver as taught by Vignone is shown to the right in annotated Fig. 2. Vignone envisioned many ways to dispose the antenna onto the receiver, stating that the antenna 12 may be mounted to the GPS receiver 14 by screws or other semi-permanent devices which supplement the snap-in connection provided by the coaxial connector or an adhesive and the like may be used to secure the antenna to the GPS receiver. (Id., 6:42-45, 6:49-51) In light of the teachings of Vignone, a PHOSITA would have appreciated that a passive GPS antenna could have been attached or otherwise connected to the PCB substrate of the Zodiac GPS receiver without the use of coaxial cables. (Ex. 1003, 67) A PHOSITA would have directly connected one half of the two-part coaxial connector of Vignone to the coaxial RF jack receptacle on the PCB substrate of Zodiac such that the GPS antenna was connected or otherwise attached to the PCB substrate. (Id.) This direct connection eliminates the signal noise and other issues later identified by the 349 Patent and results in the same GPS receiver 18

25 described in the 349 Patent. (Id.) For these reasons, Vignone teaches a GPS antenna disposed on or on the PCB substrate of a GPS receiver. (Id.) d. Limitation (c) - at least one integrated circuit disposed on the printed circuit board substrate for processing signals from the GPS antenna; / providing at least one integrated circuit disposed on the printed circuit board substrate for processing signals from the GPS antenna Zodiac includes a number of integrated circuits disposed on the printed circuit board substrate that process signals from the GPS antenna. (Ex. 1003, 68) The Zodiac GPS receiver includes the Gemini/Pisces MonoPac and the Scorpio Digital Signal Processor (DSP) of the Rockwell custom Zodiac chipset. (Ex. 1013, p. 1-1) Annotated Fig. 1-2 from Zodiac below illustrates the internal architecture of the Zodiac, highlighting these integrated circuits. 19

26 (Annotated Fig. 1-2 of Zodiac, Ex. 1013) The description of the Zodiac GPS receiver and the image of the Jupiter GPS receiver as shown in Figure 1-1 of Zodiac, necessarily teaches a PHOSITA that the Zodiac GPS receiver includes integrated circuits disposed on the PCB. (Ex. 1013, 69) These integrated circuits process signals from the GPS antenna, as demonstrated by the described functions of the Gemini/Pisces MonoPac and the Scorpio DSP and confirmed by Dr. Goldberg. (Id., 69-71) The Gemini/Pisces MonoPac TM contains all the RF downconversion and amplification circuitry, and presents [intermediate frequency] sampled data to the Scorpio device. (Id., p 1-2) The Scorpio device contains an integral microprocessor and all the required GPS specific signal processing hardware. (Id., p. 1-2) The Scorpio DSP outputs serial data containing the calculated GPS data. (Id., Fig. 1-2, pp. 5-8, 5-11) A PHOSITA would have understood downconversion, 20

27 amplification and calculation of position, velocity, and time to be processing signals from the GPS antenna. (Ex. 1003, 70) As Zodiac describes integrated circuits as processing signals from the GPS antenna, this limitation is clearly met. (Id., 70-71) e. Limitation (d) - electrical conductors for interconnecting the GPS antenna and the at least one integrated circuit; / providing electrical conductors on the printed circuit board substrate for interconnecting the GPS antenna and the at least one integrated circuit For the signals from the GPS antenna to be processed by the integrated circuits on Zodiac, electrical conductors must necessarily connect the GPS antenna and the integrated circuits. (Ex. 1003, 72) Therefore, at the time of the filing of the 349 Patent, a PHOSITA would have understood that the PCB substrate necessarily included electrical conductors that would be used for interconnecting the GPS antenna and the Gemini/Pisces MonoPac. (Id.) Accordingly, a PHOSITA would have understood that electrical conductors interconnect the GPS antenna and the at least one integrated circuit of the Zodiac GPS receiver. (Id.) f. Limitation (e) - [providing] an electrical connector [disposed] on the printed circuit board substrate for establishing a data communication path between the at least one integrated circuit and an electronic system of a vehicle, Under the BRI standard, the GPS receiver of claim 1 only requires an electrical connecter mounted to the PCB that is capable of establishing a data 21

28 communication path between the at least one integrated circuit and an electronic system of a vehicle. Zodiac clearly discloses such a connector - a 2x10 pin-field I/O [input/output] connector on the PCB substrate is shown in annotated Fig. 1-1 (above) and the image from Appendix F of Zodiac below. (Ex. 1013, pp. 1-4, F-2) Zodiac s connector provides the hardware interface for its two serial data ports and the means by which power is provided to the Zodiac GPS receiver. (Ex. 1003, 73) The Zodiac GPS receivers contain two independent serial ports, one of which is configured for primary input and output data flow using the National Marine Electronics (NMEA-0183) format or Rockwell binary message format. (Ex. 1013, p. 1-2) (emphasis added) These serial ports allow the Zodiac GPS receiver to both send and receive data. (Ex. 1003, 74) As Dr. Goldberg explains, the NMEA standard was a serial data specification for communicating data between various electronics and is commonly used in the automotive and aircraft industries. (Id.) Thus, based on the use of the NMEA-0183 serial data format, a PHOSITA would have understood that 22

29 the Zodiac GPS receiver may be integrated into an electronic system of a vehicle. (Id.) Consequently, the electrical connector on the GPS receiver disclosed by Zodiac is capable of establishing a data communication path with an electronic system of a vehicle. (Ex. 1003, 75) g. Limitation (f) - whereby the GPS receiver is capable of being integrated into the electronic system of the vehicle. The 349 Patent does not describe any further structure (other than the five elements listed above) for accomplishing this limitation. In other words, the presence of the electrical connector allows the GPS receiver to be integrated into an electronic system of the vehicle. (Ex. 1003, 77) Thus, Zodiac s teaching of a 2x10 pin-field connector, the serial communication of data in the NMEA-0183 format, and the use of the Zodiac GPS receiver in automotive environments, as described above, would have been understood by a PHOSITA as enabling the GPS receiver to be integrated into an electronic system of a vehicle. (Id.) In light of the foregoing reasons, claims 1 and 11 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id., 78) 2. Claims 2 and 12 Claims 2 and 12 depend from claims 1 and 11, respectively, and recite that said at least one integrated circuit processes high frequency signals. As described 23

30 above, the Zodiac GPS receiver includes the Gemini/Pisces MonoPac integrated circuit that contains all the RF downconversion and amplification circuitry, and presents sampled data to the Scorpio device. (Ex. 1013, p 1-2) Zodiac teaches an integrated circuit for processing high frequency signals because the Gemini/Pisces MonoPac down converts the RF signal to an intermediate frequency IF signal. Thus, claims 2 and 12 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Ex. 1003, 79) 3. Claims 3 and 13 Claims 3 and 13 depend from claims 1 and 11, respectively, and recite that the at least one integrated circuit transmits and receives data to and from a data bus in the electronic system of the vehicle through the electrical connector. As described above, Zodiac describes a GPS receiver having two independent serial ports, one of which is configured for primary input and output data flow using the National Marine Electronics Association (NMEA-0183) format or Rockwell binary message format. (Ex. 1013, p. 1-2) As illustrated above in annotated Fig. 1-2, this serial data is shown as being transmitted between the Scorpio DSP integrated circuit and the OEM host interface. (Ex. 1003, 80) Because Zodiac teaches that the serial data can be in the NMEA-0183 and/or Rockwell proprietary formats and that the Zodiac GPS receiver can be used in automotive environments, a PHOSITA would have necessarily understood that the Zodiac GPS receiver can send serial 24

31 data to and receive serial data from a data bus in an electronic system of a vehicle. (Id.) The Zodiac GPS receiver also supports numerous output and input binary messages which are listed in Table 5-4 of Zodiac. (Ex. 1013, p. 5-7) Binary messages are transmitted and received across the host port serial I/O interface (RS- 232) of the Zodiac GPS receiver. (Id., p. 5-7) Dr. Goldberg provides detailed examples of these input and output messages. (Ex. 1003, 81-82) Dr. Goldberg also explains that the Zodiac GPS receiver receives certain initialization data by serial input messages. (Id., 84) For a GPS receiver installed in an automobile, this [initialization] information is constantly changing as time progresses and the vehicle moves from location to location and thus is required when the onboard data sources are old or invalid. (Ex. 1013, p. 6-1) A PHOSITA would have understood that this initialization data could be provided from an electronic system of a vehicle through a data bus as sent from various sources such as dead reckoning systems, speedometers, odometers, etc., all of which were available prior to the filing of the 349 Patent. (Ex. 1003, 84) Thus, Zodiac teaches at least one integrated circuit that can transmit and receive data to and from a data bus in an electronic system of a vehicle through an electrical connector and, claims 3 and 13 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id., 85) 25

32 4. Claims 4 and 14 Claims 4 and 14 depend from claims 3 and 13, respectively, and recite that the electrical connector is a plug-in connector which can be plugged into the electronic system of the vehicle. The Zodiac GPS receiver includes a 2x10 pinfield I/O connector on the PCB substrate as shown in annotated Fig. 1-1 and the image from Appendix F of Zodiac above, both of which depict a plug-in type connector. (Ex. 1013, pp. 1-4, F-2) A PHOSITA would have understood that the pin-field connector described by Zodiac could be plugged into an electronic system of a vehicle via a corresponding socket. (Ex. 1003, 86) Thus, claims 4 and 14 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id., 87) 5. Claims 5 and 15 Claims 5 and 15 depend from claims 4 and 14, respectively, and further recite a ROM (Read Only Memory) disposed on [/on] the printed circuit board substrate for storing map data to be used with signals processed by the at least one integrated circuit. As shown in annotated Fig. 1-1 above, the Zodiac GPS receiver has memory disposed on the printed circuit board substrate. (Ex. 1003, 88) This memory includes static random access memory ( SRAM ), conventional read-only memory ( ROM ), and electrically erasable programmable read-only memory ( EEPROM ), as shown in annotated Fig. 1-2 of Zodiac (above). (Id.) 26

33 Zodiac describes the use of these memory chips, all of which store various types of map data. For example, the onboard EEPROM is useful for long-term storage of data such as [i]mportant data in EEPROM that helps to minimize TTFF [Time-To-First-Fix] includ[ing] satellite almanac, last known position, and frequency standard parameters. (Ex. 1013, p. 6-1) The Time-To-First-Fix is the time required by the GPS receiver to calculate a position solution. (Ex. 1003, 90; Ex. 1013, p. A-9) Additionally, static RAM is used to store all firmware variables manipulated by the GPS receiver. (Ex. 1013, p. 6-1) Satellite ephemeris, last position, and frequency standard parameters are important data that helps to minimuze [sic] TTFF. (Id., p. 6-1) Satellite almanac and frequency standard parameters can also be stored on the on-board ROM. (Ex. 1013, p. 6-1) According to Dr. Goldberg, a PHOSITA would have necessarily understood last known position to be an example of map data. (Ex. 1003, 90) As stated above, [t]his data can assist in reducing the Time-To-First-Fix, and therefore Zodiac teaches that this map data can be used with signals processed by the at least one integrated circuit. (Id.) Accordingly, claims 5 and 15 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id.) 6. Claims 6 and 16 Claims 6 and 16 depend from claims 3 and 13, respectively, and further recite a memory disposed on [/on] the printed circuit board substrate for storing 27

34 map data to be used with signals processed by the at least one integrated circuit. As discussed in the previous section, Zodiac teaches a memory mounted on the printed circuit board substrate that is capable of storing map data to be used with signals processed by the at least one integrated circuit. Therefore, claims 6 and 16 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Ex. 1003, 91) 7. Claims 7 and 17 Claims 7 and 17 depend from claims 6 and 16, respectively, and recite that power to the GPS receiver is supplied from the electronic system of the vehicle. As described by Dr. Goldberg, the Zodiac GPS receiver required conditioned DC power, shown as Prime Power in annotated Fig. 1-2 (above) of Zodiac. (Ex. 1013, pp. 1-1, 1-3; Ex. 1003, 92) Zodiac further teaches that by accepting an external voltage to maintain power to the Static Random-Access Memory (SRAM) and Real-Time Clock (RTC) the Time-To-First-Fix for the Zodiac GPS receiver can be minimized. (Ex. 1013, p. 1-2) Furthermore, the Zodiac Development Kit is described as including a 12 VDC automotive power adapter. (Id., p. 2-1) Consequently, Zodiac teaches that the GPS receiver is for in-vehicle automotive products and it receives power from an external source of power, which, therefore, a PHOSITA would have understood as an electronic system of a 28

35 vehicle. (Ex. 1003, 94) Therefore, claims 7 and 17 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id.) 8. Claims 9 and 19 Claims 9 and 19 contain similar limitations that said at least one integrated circuit includes a first integrated circuit for converting radio frequency signals from the GPS antenna into intermediate frequency signals, and a second integrated circuit for performing operations on the intermediate frequency signals to produce GPS signals, and transmitting the GPS signals to the electronic system of the vehicle. As discussed in detail by Dr. Goldberg, Zodiac teaches that a first integrated circuit converts RF signals from the GPS antenna into IF signals. (Ex. 1003, 95) Specifically, the Gemini/Pisces MonoPac TM contains all the RF downconversion and amplification circuitry, and presents sampled data to the Scorpio device. (Ex. 1013, p 1-2) Zodiac also describes a second integrated circuit for receiving the intermediate frequency signals and performing further processing in order to produce GPS signals, which are then transmitted to the electronic system of the vehicle. (Ex. 1003, 96) Specifically the Scorpio device contains an integral microprocessor and all the required GPS specific signal processing hardware. (Ex. 29

36 1013, p. 1-2) The output of the Scorpio DSP is serial data containing GPS data, i.e., position, velocity, and time data. (Id., Fig. 1-2, pp. 5-8, 5-11) Thus, Zodiac teaches a first integrated circuit ( Gemini/Pisces MonoPac) for converting RF signals from the GPS antenna into IF signals and a second integrated circuit ( Scorpio DSP) for producing GPS signals and transmitting the GPS signals to an electronic system of a vehicle. (Ex. 1003, 97) Therefore, claims 9 and 19 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id.) 9. Claim 20 Claim 20 depends from claim 19 and recites receiving, through the electrical connector, data from the data bus in the electronic system of the vehicle; and initiating a diagnostic check up operation on the GPS receiver responsive to said data. This limitation is shown by Zodiac s built-in test command. (Ex. 1003, 98) Zodiac recites that the Zodiac GPS receiver can be commanded to execute a BIT [Built-In Test] at any time while in Rockwell binary mode. (Ex. 1013, p. 6-16) When directed to execute the built-in test routine, such as by receipt of the binary Perform Built-In Test Command message (Message 1300), the Zodiac GPS receiver performs the test and returns the results in the corresponding output message (Built-In Test Results Message 1100). (Id., pp. 6-16, 5-7) 30

37 The purpose of the Built-In Test functionality of the Zodiac GPS receivers was to test the components on the Zodiac GPS receiver. (Ex. 1003, 99) A device failure indicator in the BIT Results Message is valid for all devices installed on the board. (Ex. 1013, p. 6-16) The ROM, RAM, EEPROM, Scorpio DSP, Real- Time Clock (RTC), and host and auxiliary serial ports can all be tested by the Built-In Test. (Id., p. 6-16) Defects in these components may be indicated by failed status messages. (Id., p. 6-16) As explained by Dr. Goldberg, a PHOSITA would have understood that the Zodiac GPS receiver can receive data from an electronic system of a vehicle and can initiate a diagnostic check up operation on the GPS receiver responsive to said data. (Ex. 1003, 100) Therefore, claim 20 would have been obvious to a PHOSITA over Zodiac in view of Vignone. (Id.) B. Ground 2 - Obvious over Zodiac and Vignone in view of Eberwine Claims 1-7, 9, 11-17, and would have been obvious over Zodiac and Vignone in view of Eberwine. (Ex. 1003, 104) As discussed above, the combination of Zodiac and Vignone meets all the limitations of such claims. That is, the combination of Zodiac and Vignone discloses an integrated GPS receiver having a GPS antenna, integrated circuits for processing signals from the GPS antenna, and a connector capable of establishing a data communication path with an electronic system of a vehicle, each of which are disposed on a single printed 31

38 circuit board. (Id., 107) Additionally, the connector taught by Zodiac includes a 2x10 pin-field connector that implements the hardware for the RS-232 interface, thus enabling the Zodiac GPS receiver to transmit and receive serial data. (Id.) However, to the extent the combination of Zodiac and Vignone is found not to disclose certain claim limitations, Eberwine discloses such missing limitations. U.S. Patent No. 5,392,052 to Eberwine issued on February 21, 1995, and thus published more than one year before the 349 Patent s earliest-recited priority of February 23, (Ex. 1015) Eberwine is prior art under 102(b). Eberwine discloses a position reporting emergency location system which detects and reports in-flight data relative to an aircraft to aid in rescue efforts if an aircraft emergency occurs. (Id., 1:6-10) Although focusing on aircraft, Eberwine indicates that the system is also suitable for land or water vessels. (Id., 1:10-11) It is also noted that the 349 Patent states that the GPS receiver may be mounted in other vehicles beyond automobiles. (Ex. 1001, 4:31-32) The Eberwine system includes a complete GPS receiver (self contained antenna and associated processing hardware, with data port) which utilizes signals received from satellites of the Navstar GPS system for providing data representative of a present craft position, time identification, and velocity information to a master control CPU when the GPS receiver and the CPU are interconnected for an interactive relationship by a serial data bus interface. (Id., 2:26-34) (emphasis added) The Navstar GPS 32

39 system 200 provides for transmission of signals which are received by a GPS receiver 203 in the aircraft 201 and are translatable by a CPU in the GPS receiver 203 to its position in latitude, longitude, and altitude on a real time basis as well as velocity, current time and heading. (Id., 5:17-25) It would have been obvious to a PHOSITA to combine the GPS receiver taught by Zodiac with the position reporting emergency location system taught by Eberwine. (Ex. 1003, ) For example, Eberwine describes a position reporting emergency system that includes a GPS receiver connected to, or integrated with, a master controller on an aircraft. (Id., 133) Eberwine does not describe the internal components of the GPS receiver; however, the combination of Zodiac and Vignone provides an integrated GPS receiver having an antenna disposed on a substrate, associated processing hardware and a data port. (Id.) Dr. Goldberg explains that, because Eberwine teaches the use of a complete or selfcontained GPS receiver, a PHOSITA would have necessarily looked to a selfcontained GPS receiver such as one formed by the combination of Zodiac having the antenna of Vignone. (Id.) The combination of Zodiac and Vignone with Eberwine is no more than the combination of known prior art elements according to known methods that yield predictable results. (Id., 134) 33

40 1. Claims 1, 2, 4, 5, 6, 9, 11, 12, 14, 15, 16, and 19 As described above in greater detail, the combination of Zodiac and Vignone discloses the limitations of claims 1-7, 9, 11-17, 19 and 20. That is, the combination of Zodiac and Vignone discloses an integrated GPS receiver comprising a GPS antenna, integrated circuits for processing signals from the GPS antenna, and a connector capable of establishing a data communication path with an electronic system of a vehicle, each of which are disposed on a single printed circuit board. To the extent Zodiac is not considered to disclose the electronic system of a vehicle or the capable of being integrated into the electronic system aspects as recited in claims 1 and 11, Eberwine clearly meets these limitations. Eberwine describes an aircraft that includes a master controller means 204 which receives and is pre-programmed and processes and transmits various data. (Ex. 1015, 6:9-11) Eberwine also teaches that a GPS receiver can be integrated with a master controller means over the RS-232 interface. (Id., 6:27-30) The master controller means is programmed to communicate with a GPS Receiver means 203 (via an interface 3), as well as other devices via other interfaces. (Id., 6:12-14) The integrated GPS receiver referenced by Eberwine contains dedicated on-board processors, and is coupled to the master controller means 204 via the serial interface cable means 3. (Id., 6:27-30) For at least these reasons, a PHOSITA 34

41 would have understood that the master controller means of Eberwine is equivalent to an electronic system of the vehicle as recited in claims 1 and 11 of the 349 Patent. (Ex. 1003, 108) Eberwine references an integrated GPS receiver with a GPS antenna, onboard processors, and a data port that receives signals from the Navstar GPS Navigation System 200 (See FIG. 9) to ascertain present position, heading, velocity, and time data. (Ex. 1015, 6:30-33) This digital data is transferred to the master control means utilizing an inter-processor message communications protocol specified by the GPS manufacturer (i.e., an NMEA 0183 version 2.0 compatible language). (Id., 6:36-39) The serial cable interface 3, or data bus, which connects the GPS receiver to the master controller means 204, conforms to the RS-232-C interface and supports a data rate of 9600 baud, synchronous, full duplex. (Id., 6:39-43) The serial interface cable means 3 consists of data and data flow control signals conforming to the Electronic Industries Association (EIA) RS- 232-C interface specification at a data rate of 9600 baud, synchronous, full duplex. (Id., 6:27-43) Accordingly, a PHOSITA would have been motivated to use the type of GPS receiver taught by the combination of Zodiac and Vignone as the complete GPS receiver (self contained antenna and associated processing hardware, with data port) referenced in Eberwine. (Id., 2:27-28; Ex. 1003, 110) By connecting 35