IP Law Daily, PATENT—Fed. Cir.: PTAB’s findings that tracking device battery patents claims were invalid mostly overturned, (Jun 9, 2023)

By Kevin M. Finson, J.D.

The Board misconstrued a claim term and expert testimony did not meet the standard to prove a prior art references’ “inherent” disclosure of a limitation.

In a consolidated appeal of five final decisions issued by the Patent Trial and Appeal Board holding that all challenged claims of five patents relating to systems for improving the battery life of portable electronic tracking devices were invalid for obviousness, U.S. Court of Appeals for the Federal Circuit has reversed three decisions, affirmed one decision, and reversed and remanded one decision. The Board erred in construing a key claim term in one patent and failed to rely on substantial evidence in finding that a prior art reference inherently discloses the “activation/reactivation” limitation found in the challenged claims of three patents. The expert testimony proffered by petitioner Apple Inc. did not meet the standard to prove a prior art references’ inherent disclosure of the limitation (LBT IP I LLC v. Apple Inc., June 9, 2023, Moore, K.).

LBT IP I, LLC (LBT) was the owner of U.S. Patents Nos. 8,497,774 (the ’774 patent); 8,542,113 (the ’113 patent); 8,102,256 (the ’256 patent); 8,421,618 (the ’618 patent); and 8,421,619 (the ’619 patent), each of which was related to systems for improving the battery life of portable electronic tracking devices. The ’113, ’256, and ’618 patents1 disclose electronic tracking devices that include location tracking circuitry (e.g., GPS circuitry) and an accelerometer to measure location coordinates without requiring GPS signaling. The ’774 patent discloses an electronic tracking device that, to conserve power, may intermittently deactivate the GPS receiver in response to a low detected battery level. The ’619 patent discloses an electronic tracking device including an accelerometer and GPS receiver. Apple, Inc. petitioned for inter partes review of each of the patents asserting obviousness over various combinations of prior art. The Patent Trial and Appeal Board held each of the challenged claims unpatentable in all five proceedings. LBT appealed, raising three challenges.

Activation/reactivation limitation. LBT first argued that the Board erred by finding that a certain prior art reference disclosed a limitation of activating and reactivating a tracking mode in response to the strength of a navigation signal which was found in the ’113, ’256, and ’618 patents. The court held that the expert testimony upon which the Board had relied was conclusory and speculative, full of qualifying language such as “presumably,” “maybe,” and “might.” The court held that the findings of obviousness on these patents were not supported by substantial evidence.

Claim construction. LBT next argued that the Board erred in construing the term “multitude” in claim 8 of the ’774 patent to include two items. Reviewing the context of the preferred embodiment and dictionary definitions, the court held that the term “multitude” could not apply to such a small number, but only to groups of more than two. The obviousness findings of the ’774 patent which relied on this construction were reversed.

Motivation to combine. LBT finally argued that that substantial evidence did not support the Board’s finding that a skilled artisan would have been motivated to combine two references as claimed in the ’619 patent. According to LBT, the proposed combinations were redundant, would result in an inoperable device, or that one of the references taught away from the combination. In each case, the court held that the Board had relied on expert testimony and as a result the findings were supported by substantial evidence.

The Federal Circuit reversed the Board’s decisions with respect to claims 1–24 of the ’618 patent, claims 8–10 of the ’256 patent, and claims 3, 9, and 11 of the ’113 patent; vacated and remanded the Board’s decision with respect to claims 8, 10, 13, and 15 of the ’774 patent; and affirmed the Board’s decision with respect to claims 1–20 of the ’619 patent.

The case is Nos. 2022-1613, 2022-1614, 2022-1615, 2022-1616 and 2022-1617.

Attorneys: Brian Sherwood Seal (Taft Stettinius & Hollister LLP) for LBT IP I LLC. Adam Prescott Seitz (Erise IP, P.A.) for Apple Inc.

Companies: LBT IP I LLC; Apple Inc.

Cases: Patent FedCirNews USPTO