Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 60

Preliminary Invalidity and Non-Infringement Contentions by GOOGLE, INC.. (Attachments: # 1 Exhibit A)(Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
CIVIL ACTION
NO. 1:10-cv-11571-RWZ

v.
GOOGLE INC.,
Defendant.

GOOGLE INC.,
Counterclaim-Plaintiff,
v.
SKYHOOK WIRELESS, INC.,
Counterclaim-Defendant.

GOOGLE INC.’S FIRST AMENDED PRELIMINARY INVALIDITY CONTENTIONS
Pursuant to the Parties’ Joint Statement filed on December 7, 2010 and Local Rule 16.6,
defendant Google Inc. (“Google”) hereby serves its First Amended Preliminary Invalidity
Disclosures for U.S. Patent Numbers 7,414,988 (“‘988 patent”), 7,433,694 (“‘694 patent”),
7,474,897 (“‘897 patent”), and 7,305,245 (“‘245 patent”) (collectively, “patents-in-suit”) on
plaintiff Skyhook Wireless, Inc. (“Skyhook”).
PRELIMINARY STATEMENT, RESERVATION OF RIGHTS,
AND GENERAL OBJECTIONS
1.

This preliminary disclosure is directed to invalidity issues only and does not

address non-infringement, unenforceability, or claim construction issues. Google reserves all
rights with respect to such issues.
2.

These Preliminary Invalidity Contentions are preliminary and are based on

Google’s current knowledge, understanding, and belief as to the facts and information available

A/74480254.3

as of the date of these contentions. Discovery in this action is ongoing, Skyhook has not
produced all requested documents concerning the inventions claimed, and Google has not
completed its investigation, discovery, or analysis of information related to this action. While
Google has made a good-faith effort to provide a comprehensive list of prior art relevant to this
case, Google reserves the right to amend, supplement, or materially modify its prior art list and
invalidity contentions as discovery progresses. This reservation of rights includes the right to
supplement prior art under 35 U.S.C. §§ 102(a), (b), (c), (d), (e), (f), and (g), 103, 112 and based
on information Google may learn during discovery in this case.
3.

Google provides these First Amended Preliminary Invalidity Contentions prior to

any claim construction ruling by the Court with respect to the claims of the ‘988, ‘694, ‘897, and
‘245 patents asserted by Skyhook in its Infringement Contentions. Any invalidity analysis
depends, ultimately, upon claim construction, which is a question of law reserved for the Court.
Google reserves the right to amend, supplement, or materially modify its prior art list and
invalidity contentions after the claims have been construed by the Court. Google also reserves
the right to amend, supplement, or materially modify its prior art list and invalidity contentions
based on any claim construction positions that Skyhook may take in this case and as it discovers
additional information. Google also reserves the right to assert that a claim is indefinite, not
enabled, or fails to meet the written description requirement during or after the claim
construction process, including based on any claim construction position Skyhook may take or
based on any claim construction the Court may adopt in this case.
FIRST AMENDED PRELIMINARY INVALIDITY CONTENSIONS
I.

IDENTIFICATION OF PRIOR ART
Skyhook accuses several of Google’s products of infringing claims 1-3 of the ‘988 patent,

claims 1 and 2 of the ‘694 patent, claims 1-4 of the ‘897 patent, and claims 1, 2, 4-6, 8 of the

A/74480254.3

2

‘245 patent (collectively, the “Asserted Claims”). See Plaintiff Skyhook Wireless Inc.’s
Preliminary Infringement Disclosure at 2-4. The Asserted Claims of the ‘988, ‘694, ‘897, and
‘245 patents are invalid for at least the reasons discussed herein.
In addition to the prior art identified in the ‘988, ‘694, ‘897, and ‘245 patents, and
particularly in the background of the invention sections of each patent and prosecution histories,
at least the prior art references identified below are relevant to the invalidity of the ‘988, ‘694,
‘897, and ‘245 patents as either prior art under 35 U.S.C §§ 102 or 103. These references alone,
or in combination, render each asserted claim of the ‘988, ‘694, ‘897, and ‘245 patents invalid
under 35 U.S.C. § 102 and/or 35 U.S.C. § 103.

Prior Art Reference

1. Wolf-Dietrich Ambrosch et al., “The
Intelligent Network: A Joint Study by
Bell Atlantic, IBM and Siemens, Chapter
9. ERS Service Description,” pp. 162177. (GSHFED_0002162-2179)
2. U.S. Patent No. 4,310,726 to Asmuth
(GSHFED_0002180-2189)
3. Paramvir Bahl et al., “RADAR: An InBuilding RF-based User Location and
Tracking System,” Microsoft Research,
(2000. GSHFED_0002203-2212)
4. Paramvir Bahl et al. “A Software
System for Locating Mobile Users:
Design, Evaluation, and Lessons,”
Microsoft Research, University of
California at San Diego, 2000.
(GSHFED_0000002190-2202)
5. U.S. Patent No. 7,440,755 to
Balachandran et al. (GSHFED_00022132229)

A/74480254.3

Filing/Priority
Date

3

Jan. 12, 1982

§§ 102(b) & (e)
§ 102(b)

2000

Jun. 17, 2003

§ 102(b)

2000

Feb. 4, 1980

Issue/
Publication
Date
1989

Applicability

§ 102(b)

Oct. 21, 2008

§§ 102(b) & (e)

Prior Art Reference

6. Ezekiel S. Bhasker et al., “Employing
User Feedback for Fast, Accurate, LowMaintenance Geolocationing,”
Department of Computer Science and
Engineering, University of California,
San Diego, 2004.
(GSHFED_0002230-2239)
7. Per Bjorndahl, et al., “CME20 - A
Total Solution for GSM Networks,”
Ericsson Review No., 3, 1991, pp. 72-79.
(GSHFED_0002240-2247)
8. Bluesoft, Inc., Aeroscout, available at
least as early as August, 2003 (see
http://replay.waybackmachine.org/20030
802052607/http://bluesoftinc.com/wlan.asp, last accessed April 14,
2011). (GSHFED_0002248)
9. Eloise Brackenridge, “The New Urban
Infrastructure: Cities and
Telecommunications,” University of
Texas at Austin, Center for Research on
Communication, Technology and
Society, pp. 77-100.
(GSHFED_0002249-2276 )
10. Mary Buccafurno, “The Philadelphia
Story,” TE&M Special Report 911, pp.
68-72. (GSHFED_0002277-2280)
11. California Legislature Senate
Committee on Energy and Public
Utilities and Joint Committee on Fire,
Police, Emergency and Disaster Services,
Joint Interim Hearing on The 911
Emergency Response System - An
Overview of its Effectiveness, Los
Angeles California, 1990.
(GSHFED_0002281-2387)
12. U.S. Patent No. 5,379,337 to Castillo
et al. (GSHFED_0002388-2554)

A/74480254.3

Filing/Priority
Date

§ 102(b)

Aug. 2003

§§ 102(a) & (b)

1985

§ 102(b)

Dec. 15, 1987

§ 102(b)

Nov. 21, 1990

4

§§ 102(a) & (b)

1991

Aug. 16, 1991

Issue/
Publication
Date
2004

Applicability

§ 102(b)

Jan. 3, 1995

§§ 102(b) & (e)

Prior Art Reference

13. Paul Castro, et al., “A Probabilistic
Room Location Service for Wireless
Networked Environments” Ubicomp
2001: Ubiquitious Computing, Intl.
Conference Atlanta, GA, Sept. 30-Oct. 2,
2001, pp. 19-34 (2001).
(GSHFED_0002555-2564)
14. U.S. Patent No. 5,161,180 to Chavous
(GSHFED_0002565-2577)
15. Yatin Chawathe et al., “A Case Study
in Building Layered DHT Applications,”
Intel Research Seattle, University of
California, San Diego, Intel Research
Berkeley, ICSI, 2005.
(GSHFED_0002578-2592)
16. Yu-Chung Cheng et al., “Accuracy
Characterization for Metropolitan-scale
Wi-Fi Localization” University of
California, San Diego; Intel Research
Seattle; Microsoft Corporation, 2005.
(GSHFED_0002593-2605)
17. U.S. Patent No. 4,924,491 to
Compton et al. (GSHFED_00026062613)
18. U.S. Patent No. 3,881,060 to Connell
et al. (GSHFED_0002614-2627)
19. Kay Connelly et al., “A Toolkit for
Automatically Construction Outdoor
Radio Maps” Proceedings of the Intl.
Conference on Information Technology:
Coding and Computing (ITCC 2005).
(GSHFED_0002628-2634)
20. U.S. Patent No. 5,043,736 to Darnell
et al. (GSHFED_0002635-2650)
21. Thomas Dayharsh et al., “Update on
the National Emergency Number 911,”
IEEE Transactions on Vehicular
Technology, Vol. VT-28, No. 4,
November, pp. 292-297, 1979.
(GSHFED_0002651-2656)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2001

§ 102(b)

Nov. 3, 1992

§§ 102(b) & (e)

2005

§ 102(a)

Jan. 2005

§ 102(a)

Nov. 18, 1988

May 8, 1990

§§ 102(b) & (e)

June 4, 1973

Apr. 29, 1975

§§ 102(b) & (e)

2005

§ 102(b)

Aug. 27, 1991

§§ 102(b) & (e)

Nov. 1979

§ 102(b)

Oct. 19, 1990

Jul. 27, 1990

5

Applicability

Prior Art Reference

22. Edgar S. Delong, Jr., “Making 911
even better” Telephony Integrating Voice
and Data Communications, An Intertec
Publication, pp. 60-63, (1987)
(GSHFED_0002657-2662)
23. Ernest DeNigris, et al., “Enhanced
911: emergency calling with a plus” Bell
Laboratories Record, pp. 74-79. (March,
1980) (GSHFED_0002663-2668)
24. U.S. Patent No. 5,235,633 to
Dennison et al. (GSHFED_00026692686)
25. U.S. Patent No. 7,116,988 to Dietrich
et al. (GSHFED_0002687-2706)
26. U.S. Patent No. 7,433,696 to Dietrich
et al. (GSHFED_0002707-2727)
27. U.S. Patent No. 5,389,935 to
Drouault et al. (GSHFED_00027282734)
28. U.S. Patent No. 5,119,504 to
Durboraw, III
(GSHFED_0002735-2740)
29. Wayne Eckerson, “Users test toll-free
net access options,” Management
Strategies, Network World, pp. 17-18,
December 30, 1991/January 6, 1992.
(GSHFED_0002741-2742)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
Dec. 14, 1987

§ 102(b)

1980

§ 102(b)

Dec. 26, 1991

Aug. 10, 1993

§§ 102(b) & (e)

Mar. 16, 2004

Oct. 3, 2006

§§ 102(e)

May 18, 2004

Oct. 7, 2008

§§ 102(a) & (e)

Mar. 23, 1994

Feb. 14, 1995

§§ 102(b) & (e)

Jul. 19, 1990

June 2, 1992

§§ 102(b) & (e)

December 30,
1991/January
6, 1992

§ 102(b)

6

Applicability

Prior Art Reference

Filing/Priority
Date

A/74480254.3

7

§ 102(b)

2003

30. Ekahau, Inc., Ekahau Positioning
Engine 2.1, available at least as early as
October, 2003 (see
http://replay.waybackmachine.org/20031
008125411/http://www.ekahau.com/prod
ucts/,
http://replay.waybackmachine.org/20031
004002510/http://www.ekahau.com/prod
ucts/positioningengine/,
http://replay.waybackmachine.org/20031
011143106/http://www.ekahau.com/prod
ucts/positioningengine/epe20_features.ht
ml,
http://replay.waybackmachine.org/20031
011193911/http://www.ekahau.com/prod
ucts/positioningengine/epe20_specificati
ons.html,
http://replay.waybackmachine.org/20031
208195116/http://www.ekahau.com/prod
ucts/positioningengine/epe20_requiremen
ts.html, and
http://replay.waybackmachine.org/20031
217181553/http://www.ekahau.com/prod
ucts/positioningengine/epe20_casestudies
.html, last accessed April 14, 2011).
(GSHFED_0002743,
GSHFED_0002747-2754)
31. Ekahau, Inc., Ekahau Site Survey 1.0,
available at least as early as October,
2003 (see
http://replay.waybackmachine.org/20031
008125411/http://www.ekahau.com/prod
ucts/,
http://replay.waybackmachine.org/20030
807204446/http://www.ekahau.com/prod
ucts/sitesurvey/, and
http://replay.waybackmachine.org/20030
801080918/http://www.ekahau.com/prod
ucts/sitesurvey/ess10_why.html, last
accessed April 14, 2011).
(GSHFED_0002743,
GSHFED_0002744-2745,
GSHFED_0002746)

Issue/
Publication
Date
2003

Applicability

§ 102(b)

Prior Art Reference

32. Ekahau, Inc., Ekahau Client 3.0,
available at least as early as October,
2003 (see
http://replay.waybackmachine.org/20031
008125411/http://www.ekahau.com/prod
ucts/,
http://replay.waybackmachine.org/20031
004002735/http://www.ekahau.com/prod
ucts/client/, and
http://replay.waybackmachine.org/20030
929003821/http://www.ekahau.com/prod
ucts/client/ReleaseNotes3_0.html, last
accessed April 14, 2011).
(GSHFED_0002755,
GSHFED_0002756, GSHFED_00027572760)
33. Eiman Elnahrawy, et al., “Using
Area-based Presentations and Metrics for
Localization Systems in Wireless LANs”
Proceedings of the 29th Annual IEEE
Intl. Conference on Local Computer
Networks, IEEE Computer Society Press
LCN’04, (2004).
(GSHFED_0002761-2769)
34. JP04-035345 to Emi
(GSHFED_0002770-2776)
35. U.S. Patent No. 5,095,505 to
Finucane et al. (GSHFED_00027772801)
36. WO 03/021851 to Gray et al.
(GSHFED_0002822-2854,
GSHFED_0010519-10538)
37. U.S. Patent No. 6,674,403 to Gray, et
al. (GSHFED_0002802-2821)
38. U.S. Patent No. 7,257,411 to Gwon et
al. (GSHFED_0002855-2877)
39. Dean Harvey et al., “Call Center
Solutions” Intelligent Networking:
Business Communications Systems,”
AT&T Technical Journal, Vol. 70, No. 5
(Sept./Oct. 1991)
(GSHFED_0002878-2888)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2003

§ 102(b)

Nov. 2004

§ 102(a)

May 28, 1990

Feb. 2, 1992

§§ 102(b) & (e)

May 17, 1991

Mar. 10, 1992

§§ 102(b) & (e)

Sept. 5, 2002

Mar. 13, 2003

§§ 102(b) & (e)

Sept. 5, 2002

Jan. 6, 2004

Dec. 27, 2002

Aug. 14, 2007

§§ 102(a), (b)
& (e)
§§ 102(b) & (e)

1991

§102(b)

8

Applicability

Prior Art Reference

40. Ahmad Hatami et al., “A
Comparative Performance Evaluation of
RSS-Based Positioning Algorithms Used
in WLAN Networks,” 2005 IEEE
Wireless Communications and
Networking Conference, IEEE
Communications Society, WCNC Vol. 4,
(March 13-17, 2005).
(GSHFED_0002889-2896)
41. Charles Head, “Intelligent Network:
A Distributed System,” IEEE
Communications Magazine, pp. 16-20,
(December 1988).
(GSHFED_0002897-2901)
42. Jeffrey Hightower et al., “A Survey
and Taxonomy of Location Systems for
Ubiquitous Computing,” University of
Washington, 2001.
(GSHFED_0002902-2930)
43. William Honig et al., “The Realities
of Service Creation on Switching
Systems Through Attached Processors,”
XII International Switching Symposium,
Vol. VI, pp. 51-54, (May 27-June 1,
1990). (GSHFED_0002931-2934)
44. Paul Hunter, “The Sources of
Innovation in New Jersey Bell Switching
Services” Master of Science Thesis,
Massachusetts Institute of Technology,
(June 1991). (GSHFED_0002935-3039)
45. Chris Hurley et al., “War Driving
Drive, Detect, Defend A Guide to
Wireless Security,” Syngress Publishing,
Inc., 2004
(GSHFED_0003040-3554)
46. Ming-Hui Jin et al., “802.11-based
Positioning System for Context Aware
Applications,” GLOBECOM, IEEE
2003. (GSHFED_0003555-3559)
47. U.S. Patent No. 7,389,114 to Ju et al.
(GSHFED_0003560-3575)

A/74480254.3

Filing/Priority
Date

§102(b)

Aug. 24, 2001

§ 102(b)

1990

§102(b)

June, 1991

§102(b)

2004

§§ 102(a) & (b)

2003

9

§ 102(a)

1988

Feb. 11, 2004

Issue/
Publication
Date
2005

Applicability

§ 102(b)

June 17, 2008

§§ 102(e)

Prior Art Reference

48. Jong Hee Kang et al., “Extracting
Places from Traces of Locations,” Dept.
of Computer Science and Engineering,
University of Washington, WMASH ‘04,
pp. 110-118, (October 1, 2004).
(GSHFED_0003576-3584)
49. C. A. Kent et al., “Position
Estimation of Access Points in 802.11
Wireless Network,” Lawrence Livermore
National Laboratory, 2004.
(GSHFED_0003585-3594)
50. John Krumm et al., “The NearMe
Wireless Proximity Server,” UbiComp
2004, LNCS 3205, pp. 283-300, (2004).
(GSHFED_0003595-3612)
51. Robert K. Kwan, “GLOBALSTAR:
Linking the World via Mobile
Connections,” IEEE Intl. Symposium on
Personal, Indoor & Mobile Radio
Communications, pp. 318-323, (Sept. 2425, 1991). (GSHFED_0003613-3618)
52. Anthony LaMarca et al., “Place Lab:
Device Positioning Using Radio Beacons
in the Wild,” Intel Research Seattle; Intel
Research Cambridge; UC San Diego;
University of Washington; Information
School, University of Washington, 2004.
(GSHFED_0003637-3656)
53. Anthony LaMarca et al., “Place Lab:
Device Positioning Using Radio Beacons
in the Wild,” PERVASIVE 2005, LNCS
3468, pp. 116-133, (2005).
(GSHFED_0003619-3636)
54. U.S. Patent No. 7,412,246 to Lewis et
al. (GSHFED_0003657-3663)
55. U.S. Patent Application Publication
No. 2009/0017841 to Lewis et al.
(GSHFED_0003664-3670)
56. U.S. Patent No. 7,130,642 to Lin
(GSHFED_0003671-3684)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
Oct. 1, 2004

Applicability

§§ 102(a), (b),
& (e)

Jan. 21, 2004

§§ 102(a) & (b)

2004

§ 102(a) & (b)

1991

§102(b)

2004

§§ 102(a) & (b)

2005

§§ 102(a)

Oct. 6, 2003

Aug. 12, 2008

§§ 102(b) & (e)

Jul 8, 2008

Jan. 15, 2009

§§ 102(b) & (e)

Mar. 2, 2004

Oct. 31, 2006

§§ 102(a) & (e)

10

Prior Art Reference

57. Konrad Lorincz et al., “MoteTrack: A
Robust, Decentralized Approach to RFBased Location Tracking,” LoCA 2005,
LNCS 3479, pp. 63-82, (2005).
(GSHFED_0003685-3705)
58. U.S. Patent No. 7,519,372 to
MacDonald et al.
(GSHFED_0003706-3728)
59. Bernard J.T. Mallinder, “The Final
Countdown to GSM,” 1991 Pan
European Digital Cellular Radio
Conference, Acropolis Conference
Center, Nice, France.
(GSHFED_0003729-3740)
60. U.S. Patent No. 5,353,023 to Mitsugi
(GSHFED_0003741-3772)
61. WO 05/004527 to Moeglein et al.
(GSHFED_0003773-3843)
62. U.S. Patent No. 5,235,630 to Moody
et al. (GSHFED_0003844-3850)
63. European Pat. App. EP1359714A2 to
Moore et al. (GSHFED_0003851-3867)
64. U.S. Patent No. 6,664,925 to Moore
et al. (GSHFED_0003868-3881)
65. Netstumbler Blog Posting,
“Wardriving as a Proxy for Wi-Fi GPS
Location” (available at
http://www.netstumbler.org/news/wardri
ving-as-a-proxy-for-wi-fi-gps-locationt10762.html, May 11, 2004 - May 17,
2004, last accessed April, 13, 2004)
(GSHFED_0003882-3888)
66. Newbury Networks, Newbury
Networks’ LocaleServer, available at
least as early as October, 2004 (see
http://replay.waybackmachine.org/20041
010054718/http://www.newburynetworks
.com/products/coretech.php, last accessed
April 14, 2011). (GSHFED_0003890)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2005

§§ 102(a) & (b)

Apr. 14, 2009

§§ 102(b) & (e)

Feb. 5-6 1991

§ 102(b)

Jun. 25, 1992

Oct. 4,1994

§§ 102(b) & (e)

June 28, 2004

Jan. 13, 2005

§§ 102(a) & (e)

Apr. 17, 1991

Aug. 10, 1993

§§ 102(b) & (e)

May 2, 2003

Nov. 5, 2003

§§ 102(b) & (e)

May 2, 2002

Dec. 16, 2003

§§ 102(b) & (e)

May 11, 2004 May 17, 2004

§§ 102(a) & (b)

2004

§ 102(b)

Apr. 3, 2002

11

Applicability

Prior Art Reference

67. Newbury Networks, LocalePoints,
available at least as early as October,
2004 (see
http://replay.waybackmachine.org/20041
009170934/http://www.newburynetworks
.com/products/coretech.php?localepoints,
, last accessed April 14, 2011).
(GSHFED_0003889)
68. U.S. Patent No. 7,299,058 to Ogino
(GSHFED_0003891-3903)
69. U.S. Patent No. 7,672,675 to Pande et
al. (GSHFED_0003904-3924)
70. Pango, PanGo Proximity Platform,
available at least as early as October,
2003 (see
http://replay.waybackmachine.org/20031
002102757/http://pangonetworks.com/pr
oximity.htm and
http://replay.waybackmachine.org/20031
002103310/http://pangonetworks.com/pr
oducts.htm, last accessed April 14, 2011).
(GSHFED_0003927,
GSHFED_0003926)
71. Pango, PanGo Mobile Applications
Suite, available at least as early as
August, 2003 (see
http://replay.waybackmachine.org/20030
825161534/http://www.pangonetworks.c
om/mobile.htm and
http://replay.waybackmachine.org/20031
002103310/http://pangonetworks.com/pr
oducts.htm, last accessed April 14, 2011).
(GSHFED_0003925,
GSHFED_0003926)
72. U.S. Patent No. 5,414,432 to Penny et
al. (GSHFED_0003929-3941)
73. Canadian Pat. App. No. 2,056,203 to
Reading et al. (GSHFED_0003942-3969)
74. European Pat. App. EP0493896A2 to
Reading et al. (GSHFED_0003970-3986)
75. U.S. Patent No. 4,757,267 to Riskin
(GSHFED_0003987-4023)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2004

§ 102(b)

Aug. 11, 2005

Nov. 20, 2007

§ 102(e)

Sep. 10, 2002

Mar. 2, 2010

§§ 102(b) & (e)

2003

§ 102(b)

2003

§ 102(b)

Apr. 22, 1993

May 9, 1995

§§ 102(b) & (e)

Nov. 26, 1991

July 1, 1992

§§ 102(b) & (e)

Dec. 5, 1991

July 8, 1992

§§ 102(b) & (e)

June 17, 1987

July 12, 1988

§§ 102(b) & (e)

12

Applicability

Prior Art Reference

76. Michael Robinson et al., “Received
Signal Strength Based Location
Estimation of a Wireless LAN Client,”
2005 IEEE Wireless Communications
and Networking Conference, IEEE
Communications Society, WCNC Vol. 4,
(March 13-17, 2005).
(GSHFED_0004024-4029)
77. Siddhartha Saha et al., “Location
Determination of a Mobile Device Using
IEEE 802.11b Access Point Signals,”
2003 IEEE Wireless Communications
and Networking Conference, IEEE
Communications Society, pp. 1987-1992,
(March 16-20, 2003).
(GSHFED_0004030-4036)
78. Bill N. Schilit et al., “Challenge:
Ubiquitous Location-Aware Computing
and the “Place Lab” Initiative,” Dept. of
Computer Science and Engineering,
University of Washington, WMASH ‘03,
pp. 29-35, (Sept. 19, 2003).
(GSHFED_0004041-4047)
79. Bill N. Schilit et al., “Bootstrapping
the Location-enhanced Word Wide
Web,” Intel Research Seattle; University
of Washington; University of California
at San Diego; University of California at
Berkeley, 2003.
(GSHFED_0004037-4040)
80. U.S. Patent No. 7,426,197 to Schotten
et al. (GSHFED_0004048-4062)
81. U.S. Patent No. 7,373,154 to Sharony
et al. (GSHFED_0004063-4069)
82. U.S. Patent No. 7,319,878 to
Sheynblat et al. (GSHFED_00040844100)
83. U.S. Patent Application Publication
No. 07/0077945A1 to Sheynblat
(GSHFED_0004070-4083)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2005

§ 102(a)

2003

§ 102(b)

2003

§ 102(b)

2003

§ 102(b)

Oct. 7, 2005

Sept. 16, 2008

§§ 102(e)

Dec. 7, 2006

May 13, 2008

Oct. 21, 2004

Jan. 15, 2008

§§ 102(a), (b),
& (e)
§§ 102(a) &(e)

Aug. 24, 2005

Apr. 5, 2007

§ 102(e)

13

Applicability

Prior Art Reference

84. Peter Shipley, “Open WLANs the
early results of war Driving,” DEFCON9
Conference 802.11b War Driving
Presentation (GSHFED_0004101-4139)
85. Peter Shipley, “802.11b War Driving
and LAN Jacking,” DEFCON 9
Conference, Las Vegas, Nevada, USA,
July 13-15 2001, (available at
http://www.defcon.org/html/links/dcarchives/dc-9-archive.html, last accessed
April 13, 2011), video and transcript.
(GSHFED_0004140-4188)
86. U.S. Patent No. 6,134,448 to Shoji et
al. (GSHFED_0004189-4198)
87. U.S. Patent No. 5,334,974 to Simms
et al. (GSHFED_0004199-4217)
88. Sue Spielman and Philip Brittan,
“Java and GIS, Part 1: Intro to GIS,”
February 16, 2004 available at
http://today.java.net/pub/a/today/2004/02
/16/gis.html, last accessed April 14, 2011
(GSHFED_0004218-4221)
89. Sue Spielman and Simon Brown,
“Java and GIS, Part 2: Mobile LBS,”
April 1, 2004 available at
http://today.java.net/pub/a/today/2004/04
/01/gis.html, last accessed April 14, 2011
(GSHFED_0004222-4227)
90. David Sterling et al. “The Iridium
System - A Revolutionary satellite
Communications System Developed with
Innovative Applications of Technology,”
IEEE Communications Society, pp.
0436-0440, MILCOM ‘91 (1991).
(GSHFED_0004228-4232)
91. U.S. Patent No. 7,242,950 to
Suryanarayana et al.
(GSHFED_0004233-4242)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
July 13-15,
2001

Applicability

§ 102(b)

July 13-15,
2001

§ 102(b)

Mar. 3, 1997

Oct. 17, 2000

§§ 102(b) & (e)

Feb. 6, 1992

Aug. 2, 1994

§§ 102(b) & (e)

Feb. 16, 2004

§§ 102(a) & (b)

Apr. 1, 2004

§ 102(a)

1991

§ 102(b)

Jul. 10, 2007

§§ 102(b) & (e)

Feb. 18, 2003

14

Prior Art Reference

92. Ali Taheri, et al., “Location
Fingerprinting on Infrastructure 802.11
Wireless Local Area Networks (WLANs)
using Locus,” 29th Conference on Local
Computer Networks, IEEE
Communications Society, (Nov. 16-18,
2004). (GSHFED_0004243-4251)
93. Texas Advisory Commission on
Intergovernmental Relations,
“Implementing 9-1-1 Systems in Texas:
Legal and Institutional Background”
(GSHFED_0004252-4312)
94. U.S. Patent No. 6,484,034 to
Tsunehara et al.
(GSHFED_0004313-4331)
95. U.S. Patent No. 6,990,351 to
Tsunehara et al.
(GSHFED_0004332-4341)
96. Bob Wallace, “Domino’s delivers
using new call routing service,” Network
World, Vol. 8, Number 32.
(GSHFED_0004342-4343)
97. U.S. Patent No. 7,130,646 to Wang
(GSHFED_0004344-4358)
98. U.S. Patent No. 5,136,636 to
Wegrzynowicz
(GSHFED_0004359-4367)
99. WO 04/002185A1 to Wood et al.
(GSHFED_0004368-4397)
100. Alexandra Workman et. al.,
“International Applications of AT&T’s
Intelligent Network Platforms,” AT&T
Technical Journal, 1991, Volume 70, No.
34, pp. 44-57. (GSHFED_0004398-4413)
101. JP03-235562 to Yoshihiro et al.
(GSHFED_000 4414-4424
)
102.Balanchandran, A., Woelker, G.M.,
and Bahl P., “Wireless hotspots: current
challenges and future directions,” In
proceedings of WMASH 2003, pp 1-9.
(GSHFED_0009010-9018)

A/74480254.3

Filing/Priority
Date

Issue/
Publication
Date
2004

§ 102(b)

June, 1987

§ 102(b)

Aug. 29, 2001

Nov. 19, 2002

§§ 102(b) & (e)

Feb. 19, 2002

Jan. 24, 2006

§§ 102(b) & (e)

Aug. 12, 1991

§ 102(b)

Feb. 14, 2003

Oct. 31, 2006

§§ 102(b) & (e)

Feb. 7, 1991

Aug. 4, 1992

§§ 102(b) & (e)

June 19, 2003

Dec. 31, 2003

§§ 102(b) & (e)

1991

§ 102(b)

Oct. 21, 1991

§§ 102(b) & (e)

Sept. 2003

§§ 102(a) & (b)

Feb. 13, 1990

15

Applicability

Prior Art Reference

Filing/Priority
Date

103. Battiti, R., Lo Cigno, R., Sabel, M.,
et al. “Wireless LANs: From
WarChalking to open access networks.”
Mobile Networks & Applications 10 (3):
275-287. (GSHFED_0009019-9031)
104. Byers, S., Kormann, D., “802.11B
Access Point Mapping.”
Communications of the ACM, Vol. 46,
No. 5, pp. 41-46 (May 2003).
(GSHFED_0009102-9107)
105. Frederickson, G. N.,
“Approximation Algorithms for Some
Postman Problems.” J. ACM 286, 3 (Jul.
1979), 538-554.
(GSHFED_0009113-9129)
106. Henderson, T., Kotz, D. and
Abyzov, I., “The changing usage of a
mature campus-wide wireless network.”
Proceeding of MobiCom 2004, pp 187201. (GSHFED_0009159-9173)
107. Kirtner, J.L. and Anderson, H. R.,
“The application of land use cover data to
wireless communication system design,”
In proceedings of the ESRI User
Conference, 1998.
(GSHFED_0009209-9224)
108. Letchner, J., Fox, D. and LaMarca,
A., “Large-Scale Localization from
Wireless Signal Strength,” Proceedings
of the National Conference on Artificial
Intelligence (AAAI 2005).
(GSHFED_0009278-9283)
109. Papadimitriou, C. H., (1967) “On
the complexity of edge traversing.”
JACM 23, 3 (July 1976), 544-554.
(GSHFED_0009297-9307)
110. U.S. Patent No. 7,116,988 to
Mar. 16, 2004
Dietrich et al. (GSHFED_0002687-2706)
111. U.S. Patent No. 7,525,484 to Dupray Sept. 9, 1996
et al. (GSHFED_0010987-11147)

A/74480254.3

16

Issue/
Publication
Date
June 2005

Applicability

§ 102(a)

May 2003

§§ 102(a) & (b)

July 1979

§§ 102(a) & (b)

Sept. 2004

§ 102(a)

1998

§§ 102(a) & (b)

2005

§ 102(a)

July 1976

§§ 102(a) & (b)

Oct. 3, 2006

§ 102(e)

April 28, 2009
(app. pub’d
Sep. 20, 2001)

§§ 102(a), (b),
& (e)

Prior Art Reference

112. U.S. Patent No. 7,764,231 to Karr et
al. (GSHFED_0011148-11324)

Filing/Priority
Date
Sept. 9, 1996

113. U.S. Patent App. Pub. No.
Sept. 5, 2002
2003/0043073 (Gray et al.)
(GSHFED_0009308-9325)
114. J.I. Hong, et al., Privacy and
Security in the Location-enhanced World
Wide Web, In Proceedings of Fifth
International Conference on Ubiquitous
Computing: Ubicomp 2003 (Workshop
on Ubicomp Communities: Privacy as
Boundary Negotiation), 2003.
(GSHFED_0008423-8427)
115. William G. Griswold, et al.,
ActiveCampus: Experiments in
Community-Oriented Ubiquitous
Computing, Computer, v.37 n.10, p.7381, October 2004.
(GSHFED_0008437-8445)
116. U.S. Patent No. 6,990,428 to Kaiser July 28, 2003
et al. (GSHFED_0010900-10924)
117. C. Komar & C. Ersoy, “Location
Tracking and Location Based Service
Using IEEE 802.11 WLAN
Infrastructure,” European Wireless 2004,
Feb. 24-27, 2004.
GSHFED_0010980-10986
118. U.S. Patent No. 6,664,925 to Moore May 2, 2002
et al. (GSHFED_0010505-10518)
119. Anthony La Marca, et al., Finding
Yourself: Experimental location
technology relies on Wi-Fi and cellphone
signals instead of orbiting satellites, IEEE
Spectrum at 51-54, December 2004.
(GSHFED_0008428-8430)
120. Anthony La Marca, et al., Place
Lab’s First Step: A Location-Enhanced
Conference Guide, UbiComp 2003,
Seattle, 2003. (GSHFED_0008431-8433)
121. A. LaMarca, et al., “PlaceLab:
Bootstrapping Where-ware” (2003).
(GSHFED_0008456-8474)

A/74480254.3

17

Issue/
Publication
Date
July 27, 2010
(app. pub’d
Mar. 12, 1998)
March 6, 2003

§§ 102(a), (b),
& (e)

2003

§§ 102(a) & (b)

October 2004

§ 102(a)

Jan. 24, 2006

§§ 102(a) & (e)

Feb. 24-27,
2004

§ 102(a)

Dec. 16, 2003

§§ 102(a), (b)
& (e)
§ 102(a)

December
2004

Applicability

§§ 102(a), (b)
& (e)

2003

§§ 102(a) & (b)

2003

§ 102(a)

Prior Art Reference

Filing/Priority
Date

122. U.S. Patent App. Pub. No.
June 20, 2003
2004/0072577 (Myllymaki et al.)
(GSHFED_0010925-10935)
123. Bill Schilit, Location Enhanced Web
Services, University of Washington, CSE
Colloquia - 2004 Series, Intel Research,
Seattle, 2003. (Video and Transcript).
(GSHFED_0010945-10979,
GSHFED_0009032-9089)
124. U.S. Pat. No. 6,754,488 to Won et
Mar. 1, 2002
al. (GSHFED_0010936-10944 )
125. U.S. Pat. No. 7,155,239 to Zeng et
May 28, 2004
al. (GSHFED_0010665-10675)

Issue/
Publication
Date
Apr. 15, 2004

Applicability

§§ 102(a) & (e)

2003

§§ 102(a) & (b)

June 22, 2004

§§ 102(a) & (e)

Dec. 26, 2006
(app. pub’d
Dec. 1, 2005)

§ 102(a) & (e)

In addition, the prior art references identified in the ‘988, ‘694, ‘897, and ‘245 patents are
relevant to the invalidity of one or more patents-in-suit as either prior art under 35 U.S.C §§ 102
and/or 103. Those references include, but are not limited to, the following:
Prior Art Reference

126. U.S. Patent No. 4,415,771
(Martinez) (GSHFED_0010444-10458)
127. U.S. Patent No. 5,315,636 (Patel)
(GSHFED_0010459-10474)
128. U.S. Patent No. 5,564,121 (Chow, et
al.) (GSHFED_0010475-10480)
129. U.S. Patent No. 5,940,825 (Castelli,
et al.) (GSHFED_0010481-10496)
130. U.S. Patent No. 6,272,405 (Kubota,
et al.) (GSHFED_0010497-10504)
131. U.S. Patent No. 6,678,611
(Khavakh, et al.)
(GSHFED_0010539-10572)
132. U.S. Patent No. 6,799,049 (Zellner,
et al.) (GSHFED_0010573-10584)
133. U.S. Patent No. 6,862,524 (Nagda,
et al.) (GSHFED_0010585-10609)
134. U.S. Patent No. 6,888,811 (Eaton, et
al.) (GSHFED_0010610-10624)

A/74480254.3

Filing/Priority
Date
April 3, 1981

Issue/
Publication
Date
Nov. 1983

June 28, 1991

May 1994

Aug. 18, 1994

Oct. 1996

Oct. 4, 1996

Aug. 1999

July 8, 1999

Aug. 2001

Sept. 27, 2002

Jan. 2004

Dec. 19, 2000

Sept. 2004

§§ 102(a) & (e)

May 9, 2003

March 2005

§§ 102(a) & (e)

Sept. 24, 2001

May 2005

§§ 102(a) & (e)

18

Applicability

§§ 102(a), (b)
& (e)
§§ 102(a), (b)
& (e)
§§ 102(a), (b)
& (e)
§§ 102(a), (b)
& (e)
§§ 102(a), (b)
& (e)
§§ 102(a), (b)
& (e)

Prior Art Reference

135. U.S. Patent No. 6,978,023 (Dacosta)
(GSHFED_0010625-10642 )
136. U.S. Patent App. Pub. No.
2003/0125045 (Riley, et al.)
(GSHFED_0000476-509)
137. U.S. Patent App. Pub. No.
2003/0146835 (Carter)
(GSHFED_0000510-527)
138. U.S. Patent App. Pub. No.
2003/0225893 (Roese, et al.)
(GSHFED_0000528-560)
139. U.S. Patent App. Pub. No.
2004/0019679 (E, et al.)
(GSHFED_0000561-588)
140. U.S. Patent App. Pub. No.
2004/0039520 (Khavakh, et al.)
(GSHFED_0000589-626)
141. U.S. Patent App. Pub. No.
2004/0058640 (Root, et al.)
(GSHFED_0000627-636)
142. U.S. Patent App. Pub. No.
2004/0087317 (Caci)
(GSHFED_0000637-660)
143. U.S. Patent App. Pub. No.
2004/0124977 (Biffar)
(GSHFED_0000661-675)
144. U.S. Patent App. Pub. No.
2004/0205234 (Barrack, et al.)
(GSHFED_0000676-699)
145. U.S. Patent App. Pub. No.
2005/0020266 (Backes, et al.)
(GSHFED_0000700-787)
146. U.S. Patent App. Pub. No.
2005/0037775 (Moeglein, et al.)
(GSHFED_0000788-818)
147. U.S. Patent App. Pub. No.
2005/0108306 (Martizano Catalasan)
(GSHFED_0000819-838)
148. U.S. Patent App. Pub. No.
2005/0164710 (Beuck)
(GSHFED_0000839-852)

A/74480254.3

Filing/Priority
Date
Mar. 25, 2003

Issue/
Publication
Date
Dec. 2005

Mar. 12, 2002

July 2003

§§ 102(a), (b)
& (e)

Feb. 21, 2003

Aug. 2003

§§ 102(a), (b)
& (e)

Feb. 28, 2003

Dec. 2003

§§ 102(a), (b)
& (e)

July 24, 2002

Jan. 2004

§§ 102(a), (b)
& (e)

Aug. 28, 2003

Feb. 2004

§§ 102(a), (b)
& (e)

Sept. 19, 2003

March 2004

§§ 102(a) & (e)

Oct. 20, 2003

May 2004

§§ 102(a) & (e)

Mar. 6, 2001

July 2004

§§ 102(a) & (e)

Dec. 31, 2003

Oct. 2004

§§ 102(a) & (e)

Feb. 18, 2004

Jan. 2005

§§ 102(a) & (e)

June 25, 2004

Feb. 2005

§§ 102(a) & (e)

Dec. 7, 2004

May 2005

§§ 102(a) & (e)

Jan. 22, 2004

July 2005

§§ 102(a) & (e)

19

Applicability

§§ 102(a) & (e)

Prior Art Reference

Filing/Priority
Date

149. U.S. Patent App. Pub. No.
Apr. 17, 2003
2005/0192024 (Sheynblat)
(GSHFED_0000853-877)
150. U.S. Patent App. Pub. No.
Mar. 31, 2004
2005/0227711 (Orwant, et al.)
(GSHFED_0000878-895)
151. U.S. Patent App. Pub. No.
Oct. 21, 2004
006/0009235 (Sheynblat, et al.)
(GSHFED_0000896-913)
152. “Delta Encoding,” Wikipedia,
retrieved from
http://en.wikipedia.org/wiki/Delta_encodi
ng, 2006.
(GSHFED_0001835-1839)
153. Griswold, et al., “ActiveCampus-Sustaining Educational Communities
through Mobile Technology.” UCSD
CSE Technical Report #CS200-0714,
2002. (GSHFED_0001840-1858)
154. Hellebrandt, M., et al., “Estimating
Position and Velocity of Mobile in a
Cellular Radio Network,” IEEE
Transactions on Vehicular Technology,
vol. 46, No. 1, Feb. 1997.
(GSHFED_0001862-1868)
155. Hazas, M., et al., “Location-Aware
Computing Comes of Age,” IEEE, vol.
37, Feb. 2004. (GSHFED_00018591861)
156. “Huffman Coding”, Wikipedia,
retrieved from
http://en.wikipedia.org/wiki/Huffman_co
ding, 2006.
(GSHFED_0001869-1878)
157. Kawabata, K., “Estimating Velocity
Using Diversity Reception,” IEEE, 1994.
(GSHFED_0001882-1885)
158. Kim, M., et al., “Risks of using AP
locations discovered through war
driving,” Lecture Notes in Computer
Science, vol. 3968, 2006.
(GSHFED_0001886-1900)

A/74480254.3

20

Issue/
Publication
Date
Sept. 2005

Applicability

§§ 102(a) & (e)

Oct. 2005

§§ 102(a) & (e)

Jan. 2006

§§ 102(a) & (e)

2006

§ 102(a)

2002

§§ 102(a) & (b)

Feb. 1997

§§ 102(a) & (b)

Feb. 2004

§§ 102(a) & (b)

2006

§ 102(a)

1994

§§ 102(a) & (b)

2006

§ 102(a)

Prior Art Reference

Filing/Priority
Date

II.

§ 102(a)

Aug. 2004

§ 102(a)

1962

§§ 102(a) & (b)

2004

§§ 102(a) & (b)

2005

§ 102(a)

Sept. 1992

159. Kirsner, S., “One more way to find
yourself,” The Boston Globe, May 23,
2005. Retrieved from www.boston.com.
(GSHFED_0001901-1903)
160. Krumm, J., et al., “LOCADIO:
Inferring Motion and Location from WiFi Signal Strengths,” First Annual
International Conference on Mobile and
Ubiquitous Systems: Networking and
Services, Aug. 2004.
(GSHFED_0001904-1913)
161. Kwan, M., “Graphic Programming
Using Odd or Even Points,” Chinese
Math. 1, 1962. (GSHFED_00019141920)
162. LaMarca, A., et al., “Place Lab:
Device Positioning Using Radio Beacons
in the Wild,” Intel Corporation, 2004.
(GSHFED_0001921-1938)
163. LaMarca, A., et al., “Self-Mapping
in 802.11 Location Systems,” Intel
Corporation, 2005.
(GSHFED_0001939-1956)
164. “Terminal Equipment and Protocols
for Telematic Services: Information
Technology-Digital Compression and
Coding of Continuous-Tome Still
Images—Requirements and Guidelines,”
International Telecommunication Union,
Sep. 1992. (GSHFED_0001970-2155)

Issue/
Publication
Date
May 23, 2005

Applicability

§§ 102(a) & (b)

ANTICIPATION
A.

The ‘988 and ‘694 Patents

The ‘988 patent is directed to a “Wi-Fi location server” that includes a “database of WiFi access points.” Similarly, the ‘694 patent is directed to “[a] database of Wi-Fi access points.”
The ‘988 and ‘694 patents purport on their face to claim priority to provisional patent application
no. 60/623,108 filed on October 29, 2004, however, numerous elements disclosed and claimed in

A/74480254.3

21

the ‘988 and ‘694 patents are not disclosed in the ‘108 provisional application. All of the claims
of the ‘988 and ‘694 patents are anticipated by several prior art references. For example, and
without limitation, all of the Asserted Claims of the ‘988 patent and the ‘694 patent are
anticipated by U.S. Patent Nos. 7,130,646 (“Wang ‘646 patent”), and 7,257,411 (“Gwon ‘411
patent”), as well as by the PlaceLab project/initiative, and the multiple references describing
PlaceLab (including, but not limited to, references 52, 78, 79, 114, 119, 120, 121, and 123).
Attached hereto as Exhibit A is a chart setting forth a detailed correspondence between the
asserted claims of the ‘988 and ‘646 patent and certain of these anticipating references.
B.

The ‘897 patent and ‘245 Patents

The ‘897 and ‘245 patents are directed to “a method of calculating the position of WiFienabled devices,” and “[a] method of locating a user-device having a Wi-Fi radio,” respectively.
The ‘245 patent also purports on its face to claim priority to the ‘108 provisional application,
however, numerous elements disclosed and claimed in the ‘245 patent are not disclosed in the
provisional application. The ‘897 patent purports on its face to claim priority to provisional
patent application no. 60/654,811 filed on February 22, 2005, and is a continuation-in-part of the
‘245 patent, however, elements disclosed and claimed in the ‘897 patent are not disclosed in the
‘108 nor ‘811 provisional applications nor the ‘245 patent.
The Asserted Claims, claims 1 - 4 of the ‘897 patent and claims 1, 2, 4-6 and 8 of the
‘245 patent, are anticipated by for example, and without limitation, at least the following
references as shown by the charts attached hereto as Exhibit A: the Wang ‘646 patent, the Gwon
‘411 patent, as well as by the PlaceLab project/initiative and the multiple references describing
PlaceLab. U.S. Patent App. Pub. No. 2003/0043073 (“Gray et al.”) (issued as U.S. Patent No.
6,674,403 to Gray, et al.) anticipates the asserted claims of the ‘245 patent. In addition, U.S.
Patent No. 7,440,755 (“Balachandran ‘755 patent”), U.S. Patent No. 7,389,114 (“Ju ‘114
A/74480254.3

22

patent”), U.S. Patent No. 6,664,925 to Moore et al. (“Moore ‘925 patent”), U.S. Patent No.
7,155,239 to Zeng et al. (“Zeng ‘239 patent”), “802.11-based Positioning System for Context
Aware Applications” by Ming-Hui Jin, and “Location Tracking and Location Based Service
Using IEEE 802.11 WLAN Infrastructure” by C. Komar et al. (“Komar”) each anticipate the
‘897 patent.
III.

OBVIOUSNESS
A.

The ‘988 and ‘694 Patents

As discussed above, the ‘988 patent is directed to a “Wi-Fi location server” that includes
a “database of Wi-Fi access points,” and the ‘694 patent is directed to “[a] database of Wi-Fi
access points.” There are many disclosures in the prior art of a server having a database of Wi-Fi
access points, or a database of such Wi-Fi access points. The calculation of the locations of WiFi access points, the adding of such access points to a database, and the updating of the database
over time were all well known concepts before the earliest filing date of any of the patents-insuit.
The background of the invention section in each of the patents describes anticipatory
prior art, but the inventors attempt to describe distinctions over the prior art that relate to the
manner of collecting Wi-Fi access points by systematically driving according to a Chinese
Postman algorithm, and describe this required systematic manner of collecting data as providing
“reference symmetry” and avoiding “arterial bias” in determining the location of access points.
As discussed in connection with deficiencies under 35 U.S.C. § 112, the “reference
symmetry” and “avoid arterial bias” limitations are unclear, render the boundaries or scope of the
claims uncertain and indefinite, and lack support in the specification. However, notwithstanding
the presence of these and other indefinite terms in the claims, it is clear that the prior art has
completely anticipated creating databases of Wi-Fi access points with location information

A/74480254.3

23

obtained from traversing an area (whether in a systematic fashion or not), including but not
limited to driving all the way around a block or building to identify more accurately the location
of access points within the building(s). The prior art describes all of these features in many
individual prior art references identified in the tables of prior art above. In addition, many of the
references go into detail on certain features found in the claims. None of the asserted claims in
the ‘988 and ‘694 patents represents a new combination of old elements or limitations, or any
new elements beyond what is taught in individual references identified in this pleading or
identified in references taken individually or together.
For example, in addition to the prior art described as anticipating the asserted claims of
the ‘988 and ‘694 patents, all asserted claims of the ‘988 and ‘694 patents are rendered obvious,
and therefore invalid under 35 U.S.C. § 103, by at least the following references taken alone or
in combination with other references in the tables of prior art, including the anticipatory
references: the Balachandran ‘755 patent, the Ju ‘114 patent, the Gwon ‘411 patent, the Wang
‘646 patent, “MoteTrack: A Robust, Decentralized Approach to RF-Based Location Tracking”
(2005) by Konrad Lorincz et al. (“Lorincz”), Place Lab: Device Positioning Using Radio
Beacons in the Wild” (2005) by Anthony LaMarca (“LaMarca”) and the Shipley references
“Open WLANs the early results of war driving” and “802.11b War Driving and LAN Jacking”.
It would have been well within the grasp of a person of ordinary skill in the art at the time
of the alleged invention to combine these references. The Wang ‘646 patent discloses a method
of determining the location of a wireless device based on information provided by an access
point in a wireless local area network. The position of the access point is determined and then
used in the identification of the wireless device’s location. The Lorincz reference likewise
discloses an approach to computing location, also relying on a database of location information

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for access points in target areas, and a clustering algorithm to determine a centroid of the data.
The LaMarca reference discloses a radio beacon based approach to location, which also utilizes a
database of location information and recognizes war-driving as one method of gathering location
information. Additional references describe gathering location information for Wi-Fi and other
access points, including those described in the anticipation section and in the tables above. The
Peter Shipley references describe the effectiveness of war driving and driving all the way around
a building for improving the accuracy of Wi-Fi access point location measurement. These
references, standing alone or in combination with each other, with the anticipatory references, or
with other references within the tables of prior art that teach all or the remaining elements of the
asserted claims of the ‘988 and ‘694 patents, demonstrate that the asserted claims are obvious
under 35 U.S.C. § 103.
Attached hereto as Exhibit A are illustrative charts detailing the correspondence between
the asserted claim elements and, respectively, the Wang ‘646 patent, the Lorincz reference, and
the LaMarca reference. Each of these references renders the claims obvious alone or in
combination with other prior art identified herein.
In addition, “A Toolkit for Automatically Construction Outdoor Radio Maps” by Kay
Connelly et al. (“Connelly”), “Extracting Places from Traces of Locations” by Jong Hee Kang et
al. (“Kang”), “Location Determination of a Mobile Device Using IEEE 802.11b Access Point
Signals” by Siddhartha Saha et al. (“Saha”), the Gwon ‘114 patent, the Balachandran ‘755
patent, EP 1,359,714, and CA 2,056,203, for example, are prior art as set forth above and render
the ‘988 and ‘694 patents invalid under 35 U.S.C. § 103 alone or in combination with each other
or other prior art identified herein. All of the references identified in the tables of prior art

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constitute references under at least 35 U.S.C. § 103. Further citations to prior art under § 103 are
found in Exhibit A.
B.

The ‘897 and ‘245 Patents

The ‘897 and ‘245 patents, as discussed above, relate to a method of determining the
location a Wi-Fi enabled device. The claimed methodologies use signal strength information
received from Wi-Fi access points, and the calculated location for those Wi-Fi access points. At
the time of the filing of the patents-in-suit, it was well known in the art that the location of a
device could be determined using triangulation and other calculation techniques using signal
strength and other information received from access points, such as Wi-Fi access points, cellular
towers, Loran towers, and other access points. Many of the references identified in the tables of
prior art detail such location determining techniques and several anticipatory references have
been specifically identified and illustratively charted herein that show correlation between these
references and the asserted claim elements. Any of these anticipatory references, standing alone
or in combination with other references may also be used to demonstrate the obviousness of the
invention.
As noted above with respect to the ‘988 and ‘694 patents, the inventors’ disclosed and
claimed methodologies for gathering the data about Wi-Fi access points that are used to calculate
the locations of those Wi-Fi access points were well known and in use at the time of the alleged
invention. Plaintiff cannot, therefore, differentiate the claims of the ‘897 or ‘245 patents based
on those data-gathering methodologies.
Additional illustrative charts showing how various references within the tables of prior
art references show the presence of the elements and limitations of the Asserted Claims of the
‘897 and ‘245 patents are shown in the charts attached at Exhibit A. Any prior art reference in
the tables may be used to demonstrate the obviousness of the asserted claims of the ‘897 or ‘245
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patents in combination with the knowledge of one of ordinary skill in the art, in combination
with one of the anticipatory references, or in combination with one or more other references
describing the remaining elements of the asserted claims. All of the references identified in the
tables of prior art constitute references under at least 35 U.S.C. § 103. The references show the
scope and content of the prior art. In addition to the charted references, additional examples
include:
•

Bluesoft, Inc.’s Aeroscout, Ekahau’s Positioning Engine 2.1, Site Survey 1.0, and
Client 3.0, PanGo’s Proximity Platform and Mobile Applications Suite, and
Newbury Networks’ LocaleServer and LocalePoints products, for example, as
well as other references in the table, provide location-based database servers with
recorded position information for determining the location of a Wi-Fi enabled
device by referencing the location of the device in relation to known access
points. Each reference also provides client applications for use on mobile
devices, where the applications would record signal strength information of
detected access points, and then access the provided server to determine location
based on various number of access points and different location equations and
algorithms.

•

WO 03/021851 to Gray et al. and WO 04/002185A1 to Wood et al., for example,
as well as other references in the table, describe, inter alia, a database of Wi-Fi
access points, calculating the signal strength of the messages received by Wi-Fi
access points to determine location of a wireless device, adding records for
newly-discovered Wi-Fi access points to a database, using predefined rules to
determine whether an observed Wi-Fi access point should be included or

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excluded from a set of Wi-Fi access points, based on the number of Wi-Fi access
points within range, choosing a corresponding location determination algorithm
from a plurality of location determination algorithms, updating of access point
location, filtering data collected, and filtering data used in positioning.
•

“Java and GIS”,” Parts 1 and 2 by Spielman et al., for example, as well as other
references in the table, describe, inter alia, using a handset to contact a remote
location server for information about location device location, based on signal
strength readings from the device.

•

Chris Hurley et al., “War Driving Drive, Detect, Defend A Guide to Wireless
Security”,” for example, as well as other references in the table, describes, inter
alia, methods of driving an area to collect information about the locations of WiFi access points, filtering the collected information, and adding information about
previously known and newly discovered access points to a database.

•

U.S. Patent No. 7,373,154 to Sharony et al. and U.S. Patent No. 7,426,197 to
Schotten et al., for example, as well as other references in the table, describe, inter
alia, a method and apparatus for determining a location of a wireless device
within an environment. The device receives identifying information from a
transponder. The references disclose a location database that may be stored in the
memory of the wireless device. They also disclose a coverage map associated
with each radio receiver that records signal strength data defined out to a
threshold signal strength level.

•

U.S. Patent No. 7,116,988 to Dietrich et al. and U.S. Patent No. 7,433,696 to
Dietrich et al., for example, as well as other references in the table, describe, inter

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alia, methods, apparatuses, and systems directed to a wireless node location
mechanism that uses a signal strength weighting metric to improve the accuracy
of estimating the location of a wireless node based on signals detected among a
plurality of radio transceivers. They also teach maintaining a database of strength
signals and wireless node identifiers, and a RF physical model of the coverage
area associated with the environment.
•

U.S. Patent No. 7,319,878 to Sheynblat et al., for example, as well as other
references in the table, describe, inter alia, a method for determining the position
of a base station in a wireless communication network. Sheynblat also discloses a
database of location information that can be updated, a calibration system, and the
use of GPS, CDMA and Advanced Forward Link Trilateration.

•

U.S. Patent No. 7,299,058 to Ogino, for example, as well as other references in
the table, describe, inter alia, a method for determining the position of a radio
device by calculating error degradation quantities on varying distances.

•

U.S. Patent No. 6,664,925 to Moore et al., for example, as well as other references
in the table, describe, inter alia, the use of strength signal measurements for
locating a mobile computer connected to a wireless access point in a computer
network. Moore also teaches compiling a database of access point locations.

Further citations to prior art under § 103 are found in Exhibit A.

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IV.

ADDITIONAL BASES FOR INVALIDITY
A.

The patents-in-suit are invalid for failure to comply with the definiteness
requirement of 35 U.S.C. § 112, ¶ 2.

The following patent claims are invalid under 35 U.S.C. § 112, ¶ 2 because they fail to
particularly point out and distinctly claim the subject matter which applicant regards as the
invention:
•

Claims 1 - 3 of the ‘988 patent;

•

Claims 1 and 2 of the ‘694 patent;

•

Claims 1 - 4 of the ‘897 patent; and

•

Claims 1, 2, 4 - 6, and 8 of the ‘245 patent.

Specifically, the following terms are indefinite within the meaning of § 112, ¶ 2, because
one skilled in the art would not understand the bounds of the claims in which they appear when
read in light of the specification:
1.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings have reference
symmetry relative to other Wi-Fi access points in the target area” (‘988, claim 1);

2.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point … so that the calculation of the position of the WiFi access point avoids arterial bias in the calculated position information” (‘988,
claim 1);

3.

“avoids arterial bias” (‘988, claim 1) and “avoid arterial bias” (‘694, claim 1);

4.

“logic” associated with the “computer implemented logic to add records to the
database for newly-discovered Wi-Fi access points” (‘988 patent, claim 1);

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5.

“logic” associated with the “computer logic including logic to recalculate position
information for Wi-Fi access points previously stored in the database to utilize
position information for the newly-discovered readings of previously stored Wi-Fi
access points” (‘988 patent, claim 1);

6.

“logic” associated with the “computer-implemented clustering logic to identify
position information based on error prone GPS information” (‘988 patent,
claim 2);

7.

“logic” associated with the “the clustering logic includes logic to determine a
weighted centroid position for all position information reported for an access
point” (‘988 patent, claim 3);

8.

“logic” associated with the “the clustering logic includes … logic to identify
position information that exceeds a statistically-based deviation threshold amount
away from the centroid position and excludes such deviating position information
from the database and from influencing the calculated positions of the Wi-Fi
access points” (‘988 patent, claim 3);

9.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings avoid arterial bias in
the calculated position information of the Wi-Fi access point” (‘694 patent, claim
1);

10.

“wherein the database records for substantially all Wi-Fi access points in the
target area provide reference symmetry within the target area” (‘694 patent, claim
1);

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11.

“said chosen algorithm being suited for the number of identified Wi-Fi access
points” (‘245 patent, claim 1);

12.

“using the recorded location information for each of the observed WiFi access
points in conjunction with predefined rules to determine whether an observed
WiFi access point should be included or excluded from a set of WiFi access
points” (‘897 patent, claim 1); and

13.

“rules to determine a reference point and to compare the recorded location
information for each of the observed WiFi access points to the reference point”
(‘897 patent, claim 3).

Because each asserted independent claim is indefinite and therefore invalid, all claims
depending from them are also indefinite and invalid.
In addition, claim 1 of the ‘988 is indefinite and invalid under 35 U.S.C. § 112, ¶ 2
because it impermissibly recites both apparatus and method limitations. Claim 1 of the ‘694
patent is invalid for the same reason. Claim 1 in each patent is directed to a database (an
apparatus), which includes “substantially all Wi-Fi access points in the target area.” In both
patents, the calculated position information must be “obtained from recording multiple readings
of the Wi-Fi access point.” Both patents thus claim a database of Wi-Fi access points and a
method of keeping that database up-to-date to include substantially all access points in the target
area.
To date, the court has not construed the asserted claims of the patents-in-suit. Google
reserves the right to supplement or amend its preliminary indefiniteness contentions as
appropriate.

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B.

The patents-in-suit are not enabled.

The following patent claims are not enabled under 35 U.S.C. § 112, ¶ 1 because the
specification does not teach a person having ordinary skill in the art how to make and use the full
scope of the claimed invention without undue experimentation:
•

Claims 1 - 3 of the ‘988 patent;

•

Claims 1 and 2 of the ‘694 patent;

•

Claims 1 - 4 of the ‘897 patent; and

•

Claims 1, 2, 4 - 6, and 8 of the ‘245 patent.

Specifically, the specifications of the patents-in-suit do not enable the following claim
elements:
1.

“computer implemented logic to add records to the database for newly-discovered
Wi-Fi access points” (‘988 patent, claim 1);

2.

“computer logic including logic to recalculate position information for Wi-Fi
access points previously stored in the database to utilize position information for
the newly-discovered readings of previously stored Wi-Fi access points” (‘988
patent, claim 1);

3.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings have reference
symmetry relative to other Wi-Fi access points in the target area” (‘988, claim 1);

4.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point … so that the calculation of the position of the WiFi access point avoids arterial bias in the calculated position information” (‘988,
claim 1);

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5.

“computer-implemented clustering logic to identify position information based on
error prone GPS information” (‘988 patent, claim 2);

6.

“the clustering logic includes logic to determine a weighted centroid position for
all position information reported for an access point” (‘988 patent, claim 3);

7.

“the clustering logic includes … logic to identify position information that
exceeds a statistically-based deviation threshold amount away from the centroid
position and excludes such deviating position information from the database and
from influencing the calculated positions of the Wi-Fi access points” (‘988 patent,
claim 3);

8.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings avoid arterial bias in
the calculated position information of the Wi-Fi access point” (‘694 patent, claim
1);

9.

“the database records for substantially all Wi-Fi access points in the target area
provide reference symmetry within the target area” (‘694 patent, claim 1);

10.

“using the recorded location information for each of the observed WiFi access
points in conjunction with predefined rules to determine whether an observed
WiFi access point should be included or excluded from a set of WiFi access
points” (‘897 patent, claim 1);

11.

“the predefined rules include rules to determine a reference point and to compare
the recorded location information for each of the observed WiFi access points to
the reference point” (‘897 patent, claim 3);

12.

“WiFi access points having a recorded location within a predefined threshold
distance of the reference point are included in the set” (‘897 patent, claim 3);

13.

“WiFi access points having a recorded location in excess of the predefined
threshold distance of the reference point are excluded from the set” (‘897 patent,
claim 3); and

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14.

“based on the number of Wi-Fi access points identified via received messages,
choosing a corresponding location-determination algorithm from a plurality of
location-determination algorithms, said chosen algorithm being suited for the
number of identified Wi-Fi access points” (‘245 patent, claim 1).

C.

The patents-in-suit lack the written description required by 35 U.S.C. § 112,
¶ 1.

The following patent claims do not comply with the written description requirement of 35
U.S.C. § 112, ¶ 1 because the disclosure of the pertinent application does not convey to those
skilled in the art that the inventors invented what is claimed, i.e., that they had possession of the
claimed subject matter, as of the filing date:
•

Claims 1 - 3 of the ‘988 patent;

•

Claims 1 and 2 of the ‘694 patent;

•

Claims 1 - 4 of the ‘897 patent; and

•

Claims 1, 2, 4 - 6, and 8 of the ‘245 patent.

Specifically, the written description requirement is not met as to the following claim
elements:
1.

“computer implemented logic to add records to the database for newly-discovered
Wi-Fi access points” (‘988 patent, claim 1);

2.

“computer logic including logic to recalculate position information for Wi-Fi
access points previously stored in the database to utilize position information for
the newly-discovered readings of previously stored Wi-Fi access points” (‘988
patent, claim 1);

3.

“computer-implemented clustering logic to identify position information based on
error prone GPS information” (‘988 patent, claim 2);

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4.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings have reference
symmetry relative to other Wi-Fi access points in the target area” (‘988, claim 1);

5.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point … so that the calculation of the position of the WiFi access point avoids arterial bias in the calculated position information” (‘988,
claim 1);

6.

“the clustering logic includes logic to determine a weighted centroid position for
all position information reported for an access point” (‘988 patent, claim 3);

7.

“the clustering logic includes … logic to identify position information that
exceeds a statistically-based deviation threshold amount away from the centroid
position and excludes such deviating position information from the database and
from influencing the calculated positions of the Wi-Fi access points” (‘988 patent,
claim 3);

8.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings avoid arterial bias in
the calculated position information of the Wi-Fi access point” (‘694 patent, claim
1);

9.

“the database records for substantially all Wi-Fi access points in the target area
provide reference symmetry within the target area” (‘694 patent, claim 1);

10.

“using the recorded location information for each of the observed WiFi access
points in conjunction with predefined rules to determine whether an observed
WiFi access point should be included or excluded from a set of WiFi access
points” (‘897 patent, claim 1);

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11.

“the predefined rules include rules to determine a reference point and to compare
the recorded location information for each of the observed WiFi access points to
the reference point” (‘897 patent, claim 3);

12.

“WiFi access points having a recorded location within a predefined threshold
distance of the reference point are included in the set” (‘897 patent, claim 3);

13.

“WiFi access points having a recorded location in excess of the predefined
threshold distance of the reference point are excluded from the set” (‘897 patent,
claim 3);

14.

“calculating the signal strength of the messages received by the Wi-Fi access

15.

points” (‘245 patent, claim 1); and
“choosing a corresponding location-determination algorithm from a plurality of
location-determination algorithms, said chosen algorithm being suited for the
number of identified Wi-Fi access points” (‘245 patent, claim 1).

D.

The patents-in-suit are invalid for failure to comply with the best mode
requirement.

Google is informed and believes, and on that basis alleges, that the inventors of each
patent-in-suit possessed a best mode for practicing the invention at the time each application was
filed, and that the written description of each patent does not disclose the best mode for
practicing the invention known to the inventors such that a person of ordinary skill in the art
could practice it. Google is therefore informed and believes, and on that basis alleges, that the
following patent claims are invalid for failure to comply with the best mode requirement of 35
U.S.C. § 112, ¶ 1:
•

Claims 1 - 3 of the ‘988 patent;

•

Claims 1 and 2 of the ‘694 patent;

•

Claims 1 - 4 of the ‘897 patent; and

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•

Claims 1, 2, 4 - 6, and 8 of the ‘245 patent.

Specifically, Google is informed and believes, and on that basis alleges, that the best
mode requirement is not met as to the following claim limitations:
1.

“computer implemented logic to add records to the database for newly-discovered
Wi-Fi access points” (‘988 patent, claim 1);

2.

“computer logic including logic to recalculate position information for Wi-Fi
access points previously stored in the database to utilize position information for
the newly-discovered readings of previously stored Wi-Fi access points” (‘988
patent, claim 1);

3.

“computer-implemented clustering logic to identify position information based on
error prone GPS information” (‘988 patent, claim 2);

4.

“the clustering logic includes logic to determine a weighted centroid position for
all position information reported for an access point” (‘988 patent, claim 3);

5.

“the clustering logic includes … logic to identify position information that
exceeds a statistically-based deviation threshold amount away from the centroid
position and excludes such deviating position information from the database and
from influencing the calculated positions of the Wi-Fi access points” (‘988 patent,
claim 3);

6.

“recording multiple readings of the Wi-Fi access point at different locations
around the Wi-Fi access point so that the multiple readings avoid arterial bias in
the calculated position information of the Wi-Fi access point” (‘694 patent, claim
1);

7.

“using the recorded location information for each of the observed WiFi access
points in conjunction with predefined rules to determine whether an observed
WiFi access point should be included or excluded from a set of WiFi access
points” (‘897 patent, claim 1);

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8.

“the predefined rules include rules to determine a reference point and to compare
the recorded location information for each of the observed WiFi access points to
the reference point” (‘897 patent, claim 3);

9.

“WiFi access points having a recorded location within a predefined threshold
distance of the reference point are included in the set” (‘897 patent, claim 3);

10.

“WiFi access points having a recorded location in excess of the predefined
threshold distance of the reference point are excluded from the set” (‘897 patent,
claim 3); and

11.

“choosing a corresponding location-determination algorithm from a plurality of
location-determination algorithms, said chosen algorithm being suited for the
number of identified Wi-Fi access points” (‘245 patent, claim 1).

* * *
Google reserves its right to supplement or amend its contentions based upon further
investigation, discovery, the Court’s claim construction rulings, or as otherwise warranted.

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Dated: October 7, 2011

GOOGLE, INC.
By its attorneys,
/s/ Susan Baker Manning
Jonathan M. Albano, BBO # 013850
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
Boston, MA 02110-1726, U.S.A.
617.951.8000
William F. Abrams
[e-mail]
BINGHAM McCUTCHEN LLP
1900 University Avenue
East Palo Alto, CA 94303-2223
650.849.4400
Robert C. Bertin
[e-mail]
Susan Baker Manning
[e-mail]
BINGHAM McCUTCHEN LLP
2020 K Street, NW
Washington, DC 20006-1806
202.373.6000

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Certificate of Service
I hereby certify that this document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
and paper copies will be sent to those indicated as non-registered participants, by U.S. Mail, on
October 7, 2011.

/s/ Susan Baker Manning
Susan Baker Manning

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