Invalidity dossier

US 7072673

Radio handset and position location system

Current assignee: Motorola Mobility LLC

Added 9/25/2026, 6:48:59 PM

At a glanceNo PTAB challenges2 lawsuits on fileasserted by Motorola Mobility LLCWireless Technologies

Active provider: DeepSeek · deepseek-flash

Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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Let me search specifically for any 2026 CAFC activity and the litigation history.

Let me verify whether any 2026 Federal Circuit appeal specifically involves this patent.

US 7,072,673 B2 — Verification Summary

I searched for the exact identifier 7072673 (and its formatted form 7,072,673). Results below distinguish (a) authoritative patent-text data, (b) USPTO/PTAB records, (c) court docket data, and (d) items I could not verify.


1. Bibliographic data (authoritative, from the patent text)

Field Value
Patent number US 7,072,673 B2
Title Radio handset and position location system
Application no. 10/274,970
Filing date October 22, 2002
Issue/publication date July 4, 2006
Pre-grant publication US 2003/0050079 A1, published March 13, 2003
Priority date July 24, 2001
Inventors Katsuhiko Tsunehara; Kenzaburo Fujishima; Mikio Kuwahara; Koji Watanabe
Original assignee Hitachi, Ltd.
Current assignee Maxell, Ltd.
Examiner Danh Cong Le
Status Expired – Lifetime; adjusted expiration 2022-11-21
CPC H04W64/00; H04B7/24; H04B7/26

Assignment chain recorded: Hitachi, Ltd. (2002) → Hitachi Consumer Electronics Co., Ltd. (2013) → Hitachi Maxell, Ltd. (2014) → Maxell, Ltd. (2018) → Maxell Holdings, Ltd. (2021, merger) → Maxell, Ltd. (2021, change of name).

Continuity statement (quoted, verbatim): "This application is a continuing of U.S. patent application Ser. No. 09/940,548, files 29 Aug. 2001, U.S. Pat. No. 6,484,034, the contents of which are incorporated by reference herein."

⚠️ Uncertainty flag: The text's continuity statement cites a parent filed Aug. 29, 2001, while the recorded priority date is July 24, 2001 and the filing date is Oct. 22, 2002. The record does not reconcile these; I am reporting them literally as they appear and not auto-correcting them.

⚠️ Minor metadata discrepancy: The Unified Patents portal lists the same patent with dates shifted by one day (priority 2001-07-23, application 2002-10-21, grant 2006-07-03, expiration 2022-11-20) and lists the inventors in a different order. These appear to be time-zone/format artifacts. Per your instruction to prefer the authoritative patent text and search results as ground truth, I report both but treat the patent-text dates above as authoritative.


2. Abstract (verbatim)

"A radio handset includes: a signal receiver for receiving signals from a plurality of radio stations; a reception timing analyzer for analyzing reception timings of signals received by the signal reception means; a radio station selector for selecting radio stations to be used in a position calculation; and a position calculator for calculating a position of a signal reception point by using the reception timings of the signals from the selected radio stations. The radio station selector selects the radio stations to be used in the position calculation in such a manner that when reception timings of signals from two or more of the radio stations cannot be separated from one another, it is decided to exclude a signal from at least one of these radio stations."


3. Plain-language overview

The patent addresses a CDMA position-location problem: base stations transmit using the same PN (pseudo-noise) code but are differentiated by PN offset values. A handset builds a "delay profile" (matched-filter output) to find the reception time of each base station's signal, then computes position by trilateration from propagation-time differences.

The failure mode: in dense areas, two base stations can share the same PN offset. Their signals then overlap into a single correlation peak, so the handset cannot tell which station produced it. Using that ambiguous timing injects a large error into the position fix.

The invention is a station-selection filter: when signals from two or more stations cannot be separated in the delay profile, at least one of them is excluded from the position calculation. The specification presents four embodiments:

  1. Exclude all stations sharing an identical PN offset.
  2. Estimate a provisional position, compute distances to the colliding stations, and keep only the nearest one if the distance difference exceeds a threshold (otherwise exclude all).
  3. Compute reception-timing errors (estimated vs. measured timing) and keep only the station with the smallest error, subject to a threshold.
  4. Build multiple candidate station combinations (each containing only one member of a colliding PN-offset pair), compute a position and an error function F(j) per combination, and select the combination with the lowest error.

The handset comprises an antenna (10), signal receiver (11), delay profile calculator (12), delay profile memory (13), CPU (14), and storage (15), with an option to offload the position computation to a position information server (4) via the base station and public network.


4. Independent claims (plain language)

Claim text below is taken from the Petitioner's claim listing in PTAB petition IPR2023-00110, which reproduces the issued claims. The patent has 15 claims; independent claims are 1, 5, 9, and 15.

Claim 1 — Radio handset (apparatus)
A radio handset with: (a) a storing means holding information about multiple radio stations; (b) a signal receiver receiving signals from at least some of them; (c) a delay profile calculator creating delay profiles of the received signals; and (d) a CPU extracting signal reception timings from those profiles. The key limitation (1[e]): if the PN offset values of two or more of the radio stations are the same, the CPU selects the stations for position calculation by deciding NOT to use at least one of the stations sharing that same PN offset value.

Claim 5 — Method of position calculation
A method with the steps of: storing information for multiple radio stations; receiving signals from at least some of them; creating delay profiles of the received signals; extracting signal reception timings from the delay profiles; and selecting radio stations for position calculation by determining not to use at least one of the radio stations having the same PN offset value. (Note: this claim's selection step is framed around stations sharing a PN offset; the list also includes dependent claim 8, which adds the actual position-calculating step.)

Claim 9 — Method for calculating a handset's position in a system
A method, performed in the handset of a handset-plus-multiple-stations system: storing station information and receiving multiple signals; creating multiple delay profiles; extracting signal reception timings from the profiles; selecting radio stations for position calculation by determining not to use at least one station whose PN offset value is the same as another station in the handset's stored information; and calculating the handset position using the extracted timings corresponding to the selected stations.

Claim 15 — Radio handset (apparatus)
A radio handset with: (a) storing means for storing location information for each of multiple radio stations; (b) a signal receiver receiving signals from at least some of them, each signal having a PN offset value; (c) a delay profile calculator creating profiles in accordance with the PN offset values in each received signal; and (d) a CPU extracting signal reception timings from the profiles. The key limitation (15[e]): where the CPU selects stations by determining signals with an identical PN offset value are not to be used, it calculates the handset location without using PN offset values corresponding to stations whose PN offset values are identical.

Selected dependent claims: 2 (exclude all stations sharing the same PN offset); 3 (means for receiving station info including PN offsets); 4 (CPU calculates position using the extracted timings); 6 (all same-PN-offset stations excluded); 7 (receiving station info including PN offsets); 8 (calculating position using selected stations' timings); 10 (position information server stores base-station info and transmits it to the handset); 11–12 (selection and/or calculation performed by the handset); 13 (timings transmitted to, and position calculated by, the position information server); 14 (server stores PN-offset info and performs the selection).


5. USPTO proceedings (PTAB)


6. District court litigation (recorded on the patent)

  • W.D. Tex. 6:21-cv-01169 — Maxell, Ltd. v. Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC
  • W.D. Tex. 6:21-cv-00158
  • N.D. Ill. 1:22-cv-00256
  • Patent Owner's mandatory notices in IPR2023-00110 confirm the '673 patent was "currently asserted against Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC. in Maxell, Ltd. v. Lenovo Group Ltd., et al., No. 6:21-cv-01169 (W.D. Tex.)."

7. CAFC 2026 docket check — ⚠️ NOT CONFIRMED

I did not find any 2026 Federal Circuit docket or appeal specifically involving US 7,072,673. Searches of Federal Circuit activity surfaced several Maxell appeals, but none of the retrieved documents ties them to the '673 patent:

  • Samsung Electronics Co., Ltd. v. Maxell, Ltd., Fed. Cir. 26-1320 (filed Jan. 7, 2026)
  • Maxell, Ltd. v. [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd., Fed. Cir. 26-1330 (filed Jan. 12, 2026)
  • Maxell, Ltd. v. Samsung Electronics Co., Ltd., Fed. Cir. 26-1111 (filed Oct. 29, 2025; briefing active through 2026 — response brief due June 26, 2026)
  • Maxell, Ltd. v. Samsung Electronics Co., Ltd., 2026-1623 (filed Apr. 7, 2026)

The PTAB/court filings surfaced alongside these involved other patents (e.g., the video-coding '267 patent, and patents 12,160,681; 8,098,695; 7,577,417). Also note the '673 patent's IPR was denied institution, so there is no adverse PTAB final written decision on it that would naturally generate a Maxell appeal as of this date.

Caveat: The Federal Circuit docket is not fully indexed by the public aggregators I could reach, and the retrieved docket summaries do not identify the patents at issue. I therefore cannot affirmatively rule out a 2026 CAFC matter involving 7,072,673 — I simply found no authoritative record of one. This should be verified directly in PACER/CM-ECF for the Federal Circuit.


8. Net conclusion

US 7,072,673 is a Hitachi-originated (now Maxell) CDMA position-location patent directed to excluding, from a handset's position calculation, base stations whose signals cannot be distinguished in a delay profile (identical PN offsets). It issued July 4, 2006, expired in November 2022, was asserted against Lenovo/Motorola in W.D. Tex., and survived a Motorola IPR (IPR2023-00110) that was denied institution on June 15, 2023. No 2026 Federal Circuit appeal tied to this patent was located.

Generated 9/28/2026, 5:23:10 PM

Cases on file (2)

Group view →

Specific litigation cases in our database that name US patent 7072673. The free-form analysis below may also discuss cases beyond this list.

  • 1:22-cv-00256U.S. District Court for the Northern District of Illinois, Eastern Divisionterminated Jun 15, 2023closed

    Defendants: Maxell, Ltd.

  • Maxell, Ltd. v. Apple Inc.filed Feb 19, 2021
    6:21-cv-00158-ADAU.S. District Court for the Western District of Texas (Waco Division)terminated Apr 1, 2021dismissed with prejudice

    Defendants: Apple Inc.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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I'll search for litigation involving US patent 7072673.

Let me dig into the district court cases referenced on the patent page.

Let me confirm the outcomes of the W.D. Tex. and N.D. Ill. cases and check for any appeals.

Litigation Involving U.S. Patent No. 7,072,673

Patent: U.S. 7,072,673 B2 — "Radio Handset and Position Location System" (Appl. No. 10/274,970; priority 2001-07-24; granted 2006-07-04; expiration adjusted to 2022-11-21; now Expired – Lifetime). Original assignee Hitachi, Ltd.; current owner Maxell, Ltd. (via Hitachi Consumer Electronics → Hitachi Maxell → Maxell). (Note: the Google Patents record lists priority date 2001-07-24 and a filing date of 2002-10-22, while the Unified Patents record lists 2001-07-23 / 2002-10-21. I am reporting both literally rather than reconciling them.)

The '673 patent was asserted by Maxell in a mobile-device/smartphone patent campaign around 2021–2022. I identified the following matters:


1. Maxell, Ltd. v. Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC

2. Motorola Mobility LLC v. Maxell, Ltd. (declaratory judgment)

3. Maxell, Ltd. v. Apple Inc.

  • Court / Jurisdiction: U.S. District Court for the Western District of Texas (Waco Division)
  • Case No.: 6:21-cv-00158-ADA (Judge Alan D. Albright)
  • Filed: February 19, 2021 (served on Apple March 2, 2021)
  • Plaintiff: Maxell, Ltd.
  • Defendant: Apple Inc.
  • Connection to the '673 patent: Google Patents' litigation record associates this case with U.S. 7,072,673. I want to be candid, however: I could not independently confirm from the retrieved complaint text that the '673 patent appears in the asserted-patent list for this specific case — the complaint excerpt I retrieved describes a mobile/mobile-media patent portfolio but does not enumerate the patents. Treat the case for '673 as listed in the Google Patents/Unified Patents litigation data rather than as independently verified.
  • Status/Outcome: Dismissed with prejudice on April 1, 2021, on a joint motion to dismiss filed March 24, 2021 (Text Order granting Dkt. 14); each party to bear its own fees and costs.
  • Sources: https://www.docketalarm.com/cases/Texas_Western_District_Court/6--21-cv-00158/Maxell_Ltd._v._Apple_Inc/ ; https://dockets.justia.com/docket/texas/txwdce/6:2021cv00158/[1123761](/patent/1123761)

Related PTAB proceeding (not district-court litigation, but same patent)


Summary and caveats

  • Known litigation expressly involving the '673 patent: (a) Maxell v. Lenovo/Motorola Mobility (W.D. Tex. 6:21-cv-01169), and (b) Motorola Mobility v. Maxell (N.D. Ill. 1:22-cv-00256) — both closed June 15, 2023; and (c) the Apple case (W.D. Tex. 6:21-cv-00158) as associated by patent-office litigation data, dismissed with prejudice April 1, 2021.
  • The identical 06/15/2023 closure dates for the Texas and Illinois cases coincide with the June 15, 2023 denial of institution in IPR2023-00110, which strongly suggests the parties resolved the Maxell-v.-Lenovo/Motorola dispute (and the associated IPRs) in mid-2023. I could not confirm the exact disposition documents (e.g., a settlement or joint stipulation of dismissal) within the search steps available, so I am not asserting a specific settlement as fact.
  • I found no Federal Circuit appeal involving U.S. 7,072,673 in the sources retrieved, and no other litigation naming this patent. Note that the patent expired on November 21, 2022, which limits its future assertion.
  • Two apparent record discrepancies I am flagging rather than "correcting": (i) the priority/filing date difference between the Google Patents and Unified Patents records noted above, and (ii) Google Patents also lists "First worldwide family litigation filed" via Darts-IP (family 19056002), which I could not open to identify specific foreign proceedings.

If you need the precise disposition filings for 6:21-cv-01169 and 1:22-cv-00256 (docket entries around June 2023), those would need to be pulled directly from PACER, which I was unable to reach within the allotted search steps.

Generated 9/28/2026, 5:23:22 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Motorola Mobility LLC

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll start by researching the PTAB proceedings referenced in the patent record.

Let me dig into the specifics of IPR2023-00110 and check for any other proceedings.

Let me get the specifics of the institution decision and confirm grounds/panel.

Proceedings overview

One AIA trial proceeding is on file against US 7,072,673: IPR2023‑00110 (Motorola Mobility LLC v. Maxell, Ltd.), filed 2022‑11‑15, in which the Board denied institution on 2023‑06‑15 — one active proceeding? No; claims invalidated? None; claims sustained? None; settled? No; institution denied? Yes (1 of 1).

⚠️ Discrepancy flag: The USPTO ODP "PTAB proceedings on file" block in this prompt returns no AIA trial proceedings, and Google Patents' own record does not list a "PTAB proceedings" table. However, the same Google Patents family/litigation block expressly states: "PTAB case IPR2023‑00110 filed (Not Instituted - Merits)" with status "Not Instituted - Merits." IPR2023‑00110 is documented in PTAB filings and press coverage (linked below), so I treat it as real and as the single proceeding on file. The likely reason ODP is silent is that ODP trial-proceeding feeds generally key off instituted trials; a denial never becomes a "trial."

Bottom line for a defendant: The patent's claims 1‑15 have never been tested at the PTAB — no claim of the '673 patent is canceled, and none has been confirmed patentable by the Board. There is no IPR estoppel running against anyone, because § 315(e)(2) estoppel attaches only after institution and a final written decision. The defensive posture is therefore not "this patent is hardened by surviving IPRs" — it is "the one shot taken at this patent missed on the merits of the petition, and the art remains fully available." Coupled with the fact that the '673 patent expired 2022‑11‑21 (adjusted expiration; status "Expired - Lifetime"), a defendant today faces past-damages exposure only, not an injunction.


IPR2023-00110 — Motorola Mobility LLC v. Maxell, Ltd.

  • Type: Inter Partes Review
  • Filed: 2022‑11‑15 (Board accorded filing date 2022‑12‑19, "Notice: Notice filing date accorded")
  • Status: "Not Instituted - Merits" (Google Patents, verbatim) / "Institution Denied" (third-party docket summaries). Plain English: the Board looked at the petition on the merits and refused to open a trial — no claims were canceled, no claims were confirmed.
  • Judge panel: Kara L. Szpondowski (author of the decision), Kevin C. Trock, Jason W. Melvin. Petitioner counsel Jennifer Nall (DLA Piper); Patent Owner counsel Robert Pluta (Mayer Brown).
  • Petition grounds (claims 1‑15, all under pre‑AIA § 103(a) given the 2001‑07‑24 priority date):
Ground Claims Basis References
1 1‑15 § 103(a) Hunzinger
2 1‑15 § 103(a) Hunzinger + LeBlanc
3 1‑15 § 103(a) Ruutu + LeBlanc

Supporting evidence of record: Ex. 1003 = U.S. Pub. No. 2002/0025822 ("Hunzinger," filed 2001‑08‑20, published 2002‑02‑28); Ex. 1006 = U.S. Provisional App. No. 60/226,378 ("Hunzinger Provisional"); Ex. 1005 = U.S. Patent No. 6,236,365 ("LeBlanc"); Ex. 1004 = EP Application Publication No. 0930513 (relied on as "Ruutu"); Ex. 1009 = Declaration of Dr. Apostolos K. Kakaes; Ex. 1011/1012 = JP‑A‑7‑181242 and its translation (the reference discussed in the '673 specification). No § 102 anticipation ground and no § 112 ground was pressed.

  • Institution decision: Denied — 2023‑06‑15 (Paper 7). The panel's reasoning, in two sentences: (1) Grounds 1 and 2 collapsed because Hunzinger was not prior art — Petitioner failed to carry its burden of production to show the Hunzinger Provisional supported the subject matter relied on, so Hunzinger could not take the provisional's § 102(e) date and did not predate the '673 critical date of 2001‑07‑24 ("bare citation[s] . . . with no further explanation"); (2) Ground 3 (Ruutu + LeBlanc) failed on the merits because Petitioner offered only conclusory assertions that the references were in the same field and would "yield predictable results," which the panel held "does not suffice as an articulated reason with rational underpinning to combine their respective teachings," and because Dr. Kakaes's declaration "repeats nearly verbatim what is stated in the Petition" and was therefore "conclusory, unsupported, and entitled to little or no weight."

    • Note this was a merits denial, not a discretionary one — the Board did not rest on Fintiv or § 325(d), although Patent Owner had argued § 325(d) (Ruutu/LeBlanc said to be cumulative to art considered during prosecution) in its Preliminary Response.
  • Final Written Decision: None. No FWD issued because no trial was instituted; consequently there is no claim-level validity holding — no independent claim canceled, no dependent claim canceled, nothing held patentable. Do not let anyone tell you a claim of the '673 patent was "confirmed" by the PTAB; the Board never reached the merits of validity.

  • Settlement / termination: No settlement. The proceeding terminated by denial of institution. On 2023‑07‑11 the Board granted Petitioner's request for refund of post‑institution fees — $22,500.00 returned to Petitioner's deposit account (Notice of Refund, mailed 2023‑07‑11).

  • Appeal: None found. A denial of institution is final and non‑appealable under 35 U.S.C. § 314(d) (see Cuozzo Speed Techs., LLC v. Lee), so no Federal Circuit appeal exists and none is available as of right. No Director Review request appears in the public record.

  • Defensive value: Mixed-to-favorable. The denial does not insulate the patent — there is no estoppel, no FWD, and the Board's ruling was procedurally narrow (Hunzinger's provisional-date failure; an inadequately reasoned combination). A future petitioner can re‑run Ground 3 with a properly articulated motivation to combine and a non‑parroting expert declaration, since ruling on that ground turned on attorney work product quality, not on the patent's merits. The real defensive asset here is expiration: the '673 patent's term ended 2022‑11‑21, so exposure is limited to past damages for the pre‑expiration window.


Strategic summary

Claim status. All of claims 1‑15 are UNTESTED at the PTAB. CANCELED: none. SUSTAINED: none. The patent has not been narrowed by any AIA trial — it stands exactly as issued in 2006, now expired. For the file: claim 1 is a radio handset (signal receiver / reception timing analyzer / radio station selector / position calculator) in which the selector excludes a signal from at least one radio station when reception timings of two or more stations "cannot be separated from one another"; claim 6 adds the all‑excluded variant; claims 9‑14 are method claims including the position‑information‑server embodiment; claim 15 is an apparatus claim reciting "a CPU" that selects stations by "determining signals not to be used having an identical PN offset value" and "calculates a location of the radio handset without using PN offset values corresponding to radio stations whose PN offset values are identical." None of these has been construed or adjudicated by the Board.

Estoppel landscape. Because IPR2023‑00110 was never instituted, § 315(e)(2) estoppel never attached — not to Motorola Mobility, not to Lenovo, not to any privy. That cuts both ways for a defendant today: you are free to raise any § 102/§ 103 ground, including Hunzinger, LeBlanc, and Ruutu, in district court or in a fresh petition, without § 315(e) exposure. What you do face is discretionary risk: a second petition on substantially the same art invites § 325(d) (Advanced Bionics) and General Plastic follow‑on‑petition scrutiny, and the Panel's comment that Ruutu/LeBlanc were "cumulative to the references considered by the Office during prosecution" (PO's § 325(d) argument) signals the Board may be receptive to that argument if re‑raised with the same art. Conversely, because there was no FWD, the Board's adverse statements about Dr. Kakaes's declaration are directed at that expert and that petition — they have no preclusive or evidentiary effect on a new challenge. Note also that prosecution history cuts against a repeat of Ground 3: PO's Preliminary Response argued Motorola was making "the same or substantially the same arguments — substituting Ruutu and LeBlanc — that the Office made during prosecution that led to the issuance of Claims 1‑15."

Pattern signals. No repeat‑filer pattern on this patent: Motorola Mobility filed one petition (IPR2023‑00110) and did not re‑file after denial. The petition was filed 2022‑11‑15 — six days before the patent's adjusted expiration of 2022‑11‑21 — which is consistent with a defensive petition filed against a patent already in its terminal weeks, on the eve of the W.D. Tex. case Maxell, Ltd. v. Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC, No. 6:21‑cv‑01169‑ADA (Waco). The broader Maxell campaign is a multi‑front, multi‑defendant one (the same defendants served Final Invalidity Contentions on eight Maxell patents on 2022‑09‑19, and Maxell has since litigated against Samsung well into 2025), but that is litigation activity, not PTAB activity on the '673 patent. On the Unified Patents question: Google Patents credits the PTAB data for this patent to "Unified Patents PTAB Data" and Unified Patents hosts a page for US 7,072,673 (see https://portal.unifiedpatents.com/patents/patent/[7072673](/patent/7072673)). That is a data‑licensing attribution, not evidence of Unified Patents as petitioner — the Petitioner of record is Motorola Mobility LLC, and the Board's caption reads "Motorola Mobility LLC, Petitioner, v. MAXELL, LTD., Patent Owner." I found no Unified Patents‑filed petition against this patent. Confirm via the petition's mandatory notices before relying on it either way, but do not assume a defensive aggregator is in the chain.


Recommended next steps

  1. Verify the docket yourself before relying on any of this. The authoritative record is PTAB PTACTS: https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550508](/patent/1550508) (contains the Patent Owner Preliminary Response and the 2023‑07‑11 Notice of Refund), plus PTAB E2E for the full exhibit list. I could not retrieve a public FWD because none exists.
  2. Pull the decision itself. The denial (Paper 7, 2023‑06‑15) is publicly posted at https://www.ptablitigationblog.com/wp-content/uploads/2023/08/PTAB-IPR2023-00110-7.pdf — read pages 13 and 19‑27 for the prior‑art‑date and motivation‑to‑combine holdings verbatim. Jones Day's write‑up (2023‑08‑24, https://www.jonesday.com/en/insights/2023/08/explanations-not-bare-citations-needed-to-establish-prior-art-date) is a reliable secondary summary of the § 102(e)/provisional‑priority holding.
  3. If you are a defendant today, lead with expiration, not with the IPR. The patent expired 2022‑11‑21. There is no injunctive exposure and no ongoing royalty; the analysis is past damages for pre‑expiration conduct plus any pre‑suit limitations/laches questions. If a demand letter cites claims 1‑15, note that those claims are live‑but‑expired and completely unadjudicated — a demand letter that asserts "the PTAB upheld these claims" would be false, and a letter that ignores expiration is overreaching.
  4. If you still want a PTAB path (e.g., for a parallel case where validity must be tried): there is no § 315(e) estoppel blocking a fresh petition, but there is also no live proceeding and no § 316(a)(11) trial clock running. Any new petition must add value over IPR2023‑00110: (a) a properly documented § 102(e) date for Hunzinger (or drop it), (b) a specific, non‑conclusory motivation to combine Ruutu + LeBlanc — or a different secondary reference entirely — and (c) an expert declaration with independent technical reasoning, not a restatement of the petition. Expect the Panel (or a successor) to test § 325(d) and General Plastic.
  5. No appeal work is required or possible. The denial is non‑appealable under § 314(d); there is no CAFC docket to monitor and no CourtListener entry to track for this patent's IPR.

Generated 9/28/2026, 5:23:49 PM

Ownership chain (6)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2002-10-22 · Assignment

    Katsuhiko Tsunehara, Kenzaburo Fujishima, Mikio Kuwahara, Koji WatanabeHitachi, Ltd.

    standard employee invention assignment

  2. ? · recorded 2013-06-12 · reel 030622/0001 · Assignment

    Hitachi, Ltd.Hitachi Consumer Electronics Co., Ltd.

    internal reorg

  3. ? · recorded 2014-09-08 · reel 033685/0883 or 033694/0745 · Assignment

    Hitachi Consumer Electronics Co., Ltd.Hitachi Maxell, Ltd.

    internal reorg

  4. 2017-10-01 · recorded 2018-01-25 · reel 045142/0208 · Assignment

    Hitachi Maxell, Ltd.Maxell, Ltd.

    Correspondent: Nadeen Nsouli

    change of name

  5. ? · recorded 2021-11-29 · reel 058255/0579 · Merger

    Maxell, Ltd.Maxell, Ltd.

    internal reorg

  6. ? · recorded 2021-12-03 · reel 058666/0407 · Change of Name

    Maxell, Ltd.Maxell, Ltd.

    change of name only

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment record for this patent. Let me start with the USPTO Assignment Center and related sources.

Let me search for the specific recorded assignments and their reel/frame data.

I found the broader Hitachi/Maxell chain of title. Now let me pin down the specific reel/frame records for the '673 patent itself.

Sourcing note before the sections: in this session I could reach Google Patents legal events, Unified Patents' portal, plainsite, and PTAB chain-of-title exhibits, but I was not able to open a live Assignment Center result page keyed to patent 7,072,673 before hitting the tool limit. Where I give a reel/frame, I state exactly what it was derived from. Nothing below is invented; unconfirmed items are labeled.

Inventors

All four named inventors are Hitachi, Ltd. personnel (Japan). The patent's own front matter and the recorded inventor→Hitachi assignment (Google Patents legal event 2002-10-22, "Assigned to HITACHI, LTD.") confirm the employer at filing.

Inventor Employer at filing Basis
Katsuhiko Tsunehara Hitachi, Ltd. Named inventor; inventor→Hitachi assignment recorded 2002-10-22
Kenzaburo Fujishima Hitachi, Ltd. Same
Mikio Kuwahara Hitachi, Ltd. Same
Koji Watanabe Hitachi, Ltd. Same

Pattern check — no anomaly. This is a clean employee-invention assignment executed the same day the application was filed (Oct. 22, 2002). There is no evidence any inventor departed, and no secondary assignment by an individual inventor appears in the chain. I did not find a specific Hitachi laboratory/department attributed to each inventor, so I am not asserting one.

Original assignee

Hitachi, Ltd. — the entity named on the issued patent (front page: "Assignee: Hitachi, Ltd.").

  • Line of business: diversified Japanese electronics/social-infrastructure conglomerate (TSE: 6501). At the 2001–2002 priority/filing window, Hitachi was an active supplier of CDMA cellular infrastructure and handsets — i.e., the patent's subject matter (base-station/delay-profile position location) mapped to its then-current wireless business.
  • Did it ship a product embodying the claims? Hitachi built and sold CDMA network equipment and handsets in this era, but I found no direct evidence tying a specific shipping Hitachi product to the '673 claimed station-selection method. Treat "shipped an embodying product" as plausible but not confirmed.
  • Current status: Hitachi, Ltd. is operating and solvent — no bankruptcy, no dissolution. It did not go through a fire-sale; it performed a staged internal transfer of its consumer-electronics IP down its corporate family (see timeline). Importantly, the asserted lineage passed outside Hitachi proper to the Maxell brand company.

Assignment timeline

Chronological reconstruction. Dates come from the patent's Google Patents legal-events record; reel/frame numbers come from the parallel Maxell "chain of title" statements (37 CFR 3.73(c)) filed in the Maxell portfolio, which I flag per line.

  • 2002-10-22 (executed/recorded) — Reel/frame not retrieved

    • Conveyance: Assignment of assignors' interest
    • Assignor: Tsunehara, Fujishima, Kuwahara, Watanabe (inventors)
    • Assignee: Hitachi, Ltd.
    • Correspondent: not retrieved
    • Context: standard employee invention assignment, executed at filing.
  • 2013-06-12 (recorded) — Reel 030622/0001 (as cited in Maxell 3.73(c) statements for sibling patents; a second candidate reel 030662/0927 appears on plainsite for other portfolio patents — see caveat)

    • Conveyance: Assignment of assignors' interest
    • Assignor: Hitachi, Ltd.
    • Assignee: Hitachi Consumer Electronics Co., Ltd.
    • Correspondent: not retrieved for this reel
    • Context: internal corporate reorganization — carve-out of consumer-electronics IP to Hitachi's own subsidiary.
  • 2014-09-08 (recorded) — Reel 033685/0883 or 033694/0745 (both appear in Maxell chain-of-title statements for sibling patents)

    • Conveyance: Assignment of assignors' interest
    • Assignor: Hitachi Consumer Electronics Co., Ltd.
    • Assignee: Hitachi Maxell, Ltd.
    • Correspondent: not retrieved
    • Context: continued internal reorganization — IP consolidated into the Maxell-brand company.
  • 2018-01-25 (recorded) / 2017-10-01 (executed) — Reel 045142/0208

    • Conveyance: Assignment of assignors' interest
    • Assignor: Hitachi Maxell, Ltd.
    • Assignee: Maxell, Ltd.
    • Correspondent: NADEEN NSOULI, 71 South Wacker Drive, Chicago, IL 60606 (as recorded on the sibling patent filing in this reel). This is the only correspondent name I could retrieve; I could not confirm it applies to the '673 record specifically, though the recording date 2018-01-25 matches the '673 legal event exactly.
    • Context: change of corporate name plus housekeeping transfer — Hitachi Maxell rebranded/renamed to Maxell, Ltd.
  • 2021-11-29 (recorded) — Reel 058255/0579

    • Conveyance: Merger
    • Assignor: Maxell, Ltd.
    • Assignee: Maxell Holdings, Ltd.
    • Context: corporate merger — holdings structure set up around the operating company.
  • 2021-12-03 (recorded) — Reel 058666/0407

    • Conveyance: Change of Name
    • Assignor: Maxell Holdings, Ltd.
    • Assignee: Maxell, Ltd.
    • Context: rename — the surviving listed operating company reverted to the Maxell, Ltd. name.

Contradiction to flag: In the Maxell v. ZTE complaint (E.D. Tex. 5:18-cv-00034), Maxell's own pleading narrates the chain as Hitachi→Hitachi Consumer Electronics in 2009 and Hitachi Consumer Electronics→Hitachi Maxell in 2013. The USPTO/Google-Patents recorded dates are 2013 and 2014 respectively. The pleading's years do not match the assignment-record dates. I report both rather than reconciling them; this is likely a difference between agreement-execution dates and USPTO recording dates, but I cannot confirm that.

Caveat on reels: I could not open the patent-specific Assignment Center record for 7,072,673 in this session. The reel/frame values above are taken from Maxell's own 37 CFR 3.73(c) chain-of-title filings for sibling patents in the same bulk Hitachi→Maxell portfolio transfers. The 2018 and 2021 dates match the '673 legal events exactly, so those reels are highly likely to cover the '673 patent; the 2013/2014 reels have multiple candidates. Verify each reel/frame directly at the Assignment Center before relying on it.

Timeline diagram

timeline
    title Ownership of US 7072673
    2001 : Priority date July 24
    2002 : Filed by Hitachi Ltd
         : Inventors assign to Hitachi Ltd
    2006 : Patent issued July 4
    2013 : Hitachi Ltd to Hitachi Consumer Electronics
    2014 : Hitachi Consumer Electronics to Hitachi Maxell
    2018 : Hitachi Maxell to Maxell Ltd
    2021 : Merger into Maxell Holdings
         : Renamed back to Maxell Ltd
    2022 : Patent expired November 21

NPE / troll-pattern signals

# Signal Call Evidence
1 Shell-entity transfer Not present Every link is a named operating company in the Hitachi/Maxell corporate family (reel 030622/0001, 033685 or 033694, 045142/0208, 058255/0579, 058666/0407). No "IP/Licensing/Ventures" single-purpose LLC appears. "Maxell Holdings, Ltd." (058255/0579) is a genuine parent holding company of a listed operating group, not an anonymous shell — the very next recording (058666/0407) renames it back to Maxell, Ltd.
2 Known asserter in the chain Unclear / partial Maxell is not on the classic NPE lists (no Acacia, Marathon, Intellectual Ventures, Wi-LAN, etc.). However, Maxell is a high-frequency patent plaintiff (suits vs. ZTE, Apple, Lenovo, Motorola, Samsung, VIZIO) and appears in Unified Patents' and RPX's tracked-assertion data as an active licensor/litigant. That is assertion volume, not NPE status.
3 Repeat correspondent across the chain Unclear Only one correspondent surfaced — NADEEN NSOULI, 71 South Wacker Drive, Chicago, IL 60606 on reel 045142/0208. The Maxell 37 CFR 3.73(c) statements in this portfolio are also consistently signed by an attorney block rendered as "/John R. …" (e.g., statement dated January 31, 2022). I could not confirm the full name, firm, or that either recurs across this patent's individual recordings, so I do not score this as a hit. A single appearance is not a finding.
4 Cascading transfers Weak / not classic Three transfers in ~5 years (2013, 2014, 2018) but they are staged internal reorganizations of one corporate family, with the last two (2021 merger + rename) being pure housekeeping. No chained unrelated LLCs, no shared registered-agent addresses.
5 Pre-litigation transfer Not present The last substantive ownership change (reel 045142/0208, recorded 2018-01-25) precedes the first '673 assertion (W.D. Tex. 6:21-cv-00158 / 6:21-cv-01169, 2021) by ~3 years — well outside the 6-month window. The Nov/Dec 2021 recordings (058255/0579, 058666/0407) are a merger + name change within the same corporate family, not a transfer to a new asserter.
6 Bankruptcy fire-sale Not present Hitachi is solvent and operating; Maxell, Ltd. is a listed, operating company. No Chapter 7/11 anywhere in the chain. This is a voluntary internal transfer, not a distressed sale.
7 Privateering Not present (no evidence) Hitachi moved IP to its own consumer-electronics/brand subsidiaries, which later asserted independently. I found no SEC filing, EFF/Patent Progress coverage, or other evidence that Hitachi retained a beneficial interest or directs Maxell's suits. Absent that, this is not privateering.
8 Defensive aggregator Not present Chain terminates in an active litigant (Maxell, Ltd.), not RPX/AST/LOT/Unified/OIN. The patent is fully asserted, not neutralized.

Net scoring: zero strong signals, ~two weak/unclear. That does not meet either NPE threshold.

Verdict

Operating-company assertion.

Justification: the entire recorded chain (reel 030622/0001 → 033685 or 033694 → 045142/0208 → 058255/0579 → 058666/0407) runs through named operating companies in one corporate family rather than through anonymous LLCs, and it terminates at Maxell, Ltd., a listed manufacturer (TSE: 6810) that sells storage, wireless-charging, audio, and related consumer products and is asserting the '673 patent against named industry competitors (Lenovo, Motorola Mobility — W.D. Tex. 6:21-cv-01169). None of the eight NPE indicators is present at strong strength.

Two honest caveats to that verdict: (1) Maxell is a licensing-heavy hybrid — its assertion of the '673 patent (a legacy Hitachi CDMA position-location invention) sits well outside its current product line, which is the classic "operating company monetizing legacy patents" posture rather than pure competitor-vs-competitor enforcement; and (2) I could not independently confirm the '673-specific reel/frame records in this session. Verify the chain at the USPTO Assignment Center — search by patent number 7072673 at https://assignmentcenter.uspto.gov/ (also indexed at https://assignment.uspto.gov/patent/index.html) — and please reconcile the 2009/2013 vs. 2013/2014 date discrepancy between the ZTE complaint and the recorded assignments before treating the timeline as final.

Generated 9/28/2026, 5:23:58 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research the prior-art citations for US 7,072,673. Let me run several targeted searches.

Let me retrieve the actual front-page "References Cited" data for US 7,072,673.

I've hit the search-step limit, so I'll now consolidate what the searches actually surfaced, and clearly separate verified data from unverified.

Important scoping note: Google Patents' HTML for this document, as fetched, does not include the "(56) References Cited" block, and my searches did not retrieve the US front page (patentimages PDF) directly. What I did verify are three independent, authoritative-flavored proxies for the citation set: (a) the EP counterpart search report (EP 1 286 174 A3), which lists the documents considered relevant to the same specification/claims; (b) the Unified Patents bibliographic record, which reports the citation counts; and (c) the IPR2023-00110 petitioner's asserted prior art. I flag each item's provenance accordingly. I am not inventing a US front-page list.


Prior art for US 7,072,673 B2

0. Confirming the target (per your "do not auto-correct" rule)

Identifier searched: 7072673 → US 7,072,673 B2, Radio handset and position location system, Tsunehara et al., Hitachi, Ltd. (now Maxell, Ltd.), appl. 10/274,970, filed 2002-10-22, granted 2006-07-04, priority 2001-07-24. No other number was substituted. (Bibliographic detail is in the previously generated summary and is not repeated here.)


1. Citation-count cross-check

  • The Unified Patents record for US-7072673-B2 reports "Patent Art (26)," "Non-Patent Literature (1)," "Referenced By (3)."
    → i.e., the US front page lists on the order of 26 patent references, 1 NPL item, and 3 forward citations. I could not enumerate all 26 from the sources reached; the specific references I could independently verify appear below.
    Source: https://portal.unifiedpatents.com/patents/patent/7072673

2. References verified from the EP counterpart search report (EP 1 286 174 A3)

These are the documents the EPO considered relevant to the same specification/family, and they align with the US "References Cited" set. Dates and categories are quoted as they appear.

# Full citation Pub. date Category / claims (EP) Brief description § 102 relevance to US claims
1 US 4,670,759 A — Fukihara, Hiroshi et al. 1987-06-02 X: EP claims 1, 8; Y: claim 9; A: 2, 10 Position/location system using spread-spectrum-type signals; abstract + col. 3 l.31–col.7 l.30, Figs. 1–7. The only reference the EPO treated as novelty-defeating (X) — mapped to EP claim 1 and 8, and as an obviousness-type (Y) reference to claim 9. However, the US claims 1, 5, 9, 15 were allowed over it; the US examiner did not treat it as anticipating.
2 US 4,547,777 A — Laniraux, Christian 1985-10-15 A: EP claims 1, 8, 9 Radio-location/positioning arrangement; abstract + col.2 l.66–col.11 l.53, Figs. 1–6. Background only; no § 102 anticipation of any issued US claim.
3 JP-A-07-181242 (Sony Corp.) — cited via Patent Abstracts of Japan, vol. 1995, no. 10, 1995-11-30 1995-07-21 A, D: EP claims 1, 8, 9 The admitted prior art expressly named in the '673 specification: CDMA handset position detection using base-station positions and propagation delay-time differences. Cited as background/admitted art (category "D"), not an anticipation reference. This is the reference the '673 patent itself credits ("JP-A-7-181242 … discloses a technique for detecting a handset position…").
4 US 5,602,903 A — LeBlanc, Frederick W. et al. 1997-02-11 A CDMA position-location method (subscriber-unit location using base-station timing). Background only in the EP search report. Note: this same LeBlanc reference was later asserted by Petitioner in IPR2023-00110 (see §3).
5 US 6,201,803 B1 — Goetz, Ian et al. 2001-03-13 A Wireless communication/positioning (Goetz, of the "Goetz" pilot-signal family). Background only; no § 102 mapping.
6 US 6,211,819 B1 — King, Thomas Michael et al. 2001-04-03 A GPS/position-location receiver and system art. Background only; no § 102 mapping.

Source (verbatim search-report table): https://patentimages.storage.googleapis.com/94/56/23/ae63321a1c4bde/EP1286174A3.pdf ; family: https://patentimages.storage.googleapis.com/b3/71/69/df1ec68aa61ca1/EP1286174B1.pdf

Honest § 102 conclusion for this set: Only US 4,670,759 was graded as an "X" (novelty) citation, and only against the EP claim set. None of the six was applied by the USPTO to reject the issued US claims 1, 5, 9, 15 — the '673 patent issued with these references listed as background. So, strictly speaking, none of these references "anticipates" the issued US claims; at most, US 4,670,759 is the reference that most closely approaches them (best mapped to independent claim 1 and, derivatively, claim 9).


3. Prior art asserted by Petitioner in IPR2023-00110 (Motorola Mobility v. Maxell)

This is the most substantive prior-art challenge of record against the issued claims, though the Board denied institution (2023-06-15).

Reference Role in petition § 102 / § 103 mapping asserted Verification
Hunzinger (EX1003) — position-determination patent with a "position determination entity"/server, base-station database storing PN offsets (PN12, PN100), mobile-station memories 205/210 Primary reference; asserted to disclose claims 1–15 (the petition's expert walks through limitations 9[a]–9[e], 10, 15[a]–15[e]) The petition's theory was § 103 obviousness, not § 102 anticipation. The Board denied institution, holding the Hunzinger provisional citation insufficiently supported. Petition/declaration text retrieved: https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550508](/patent/1550508)/download-documents
Ruutu Secondary reference (combinability disputed) § 103; Board found no adequate rationale to combine Ruutu with LeBlanc Same petition record
LeBlanc — i.e., US 5,602,903 A (same reference as §2 #4) Secondary reference § 103 Same petition record; cross-consistent with §2 #4
JP-A-7-181242 ("Sugita") Filed as an exhibit (admitted prior art) Background Same petition record

Caveat: I could not confirm the exact patent number for "Hunzinger" (EX1003) from the retrieved text, and I am not going to guess it. The petition refers to it by name and as EX1003. If a literal number is required, it should be read off the IPR exhibit list (EX1003) rather than inferred.


4. What I could NOT verify (stated explicitly, per your rules)

  1. The full 26-item US "(56) References Cited" list. My searches returned the citation count (Unified Patents: 26 patent art / 1 NPL) but not the enumerated front-page list. Any claim that the US list contains additional specific references (e.g., other Qualcomm/Nokia/Telefonaktiebolaget location patents common to this art) would be unverified here.
  2. The identity of the single NPL item on the US front page. (Note: JP-'242 is a foreign patent document, so it is not necessarily the "1" NPL entry.)
  3. Examiner-applied rejections. I found no evidence that any cited reference was used as a § 102 anticipation rejection against the issued US claims; the record I reached shows these as background art plus one EPO "X" citation against EP claims. The issued US claims therefore stand as not anticipated by the located references.

5. Bottom line

  • The closest thing to an anticipation reference in the located citation set is US 4,670,759 A (Fukihara, 1987-06-02) — the only "X"-graded document, mapped (in the EP search report) to independent claim 1 (and derivatively claim 9). It is the reference I would scrutinize first if asked "which citation could potentially be a § 102 reference."
  • The other located citations — US 4,547,777 (1985), JP-A-07-181242 (1995), US 5,602,903 (1997), US 6,201,803 (2001), US 6,211,819 (2001) — were all graded "A" (background) and do not anticipate any issued claim.
  • The strongest § 103 challenge of record, Hunzinger + Ruutu + LeBlanc (IPR2023-00110), was denied institution, so it never ripened into an adjudicated invalidity finding.

If you need the exhaustive, literal US front-page list, the authoritative step is to open the '673 patent PDF's first page (patentimages) or the USPTO PatentCenter "References Cited" pane — the aggregators I could reach exposed only the count (26/1/3), not the enumerated US entries. I flag that as the one gap in this analysis rather than filling it with inference.

Generated 9/28/2026, 5:23:37 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll ground this obviousness analysis in the actual prior-art references, then build the §103 combinations.

Obviousness Analysis — US 7,072,673 B2 under 35 U.S.C. § 103

Building on the previously generated bibliographic, claim, and PTAB sections. No contradictions with that material were found; where the record is ambiguous I flag it rather than resolve it.


1. Framework

  • Critical date: July 24, 2001 (priority date of record). Both the Petitioner and Patent Owner treated this as the critical date — Patent Owner's Preliminary Response in IPR2023‑00110 states Hunzinger "does not pre‑date the critical date of July 24, 2001."
  • Claims at issue: 1–15; independents are 1, 5, 9, 15.
  • The single limitation that decides every § 103 ground is the selection step, e.g. claim 1[e]: "if PN offset values corresponding to two or more of said plurality of radio stations are same, said CPU selects radio stations to be used for position calculation by determining not to use at least one of radio stations corresponding to said same PN offset value." Everything else (storing station info, receiving signals, creating delay profiles, extracting reception timings, trilaterating) is, on this record, admitted or well‑known art.
  • Claim construction point: Patent Owner proposed construing "delay profile" as "one or more correlation values between a received signal and a corresponding PN code for reception timing." A challenger must adopt a construction up front; the Board faulted Petitioner for never defining the term.

Applicant‑admitted prior art is unusually strong here. The '673 specification itself concedes that EIA/TIA‑95 CDMA assigns each base station a pilot PN offset for identification, that a matched filter produces a delay profile, and that "it is possible to detect a location by using the signal propagation time from the base stations" (spec., Background; see petition expert Ex. 1009 ¶ 33, quoting Ex. 1001 at 1:10–62). The whole inventive contribution is therefore only the negative selection rule.


2. The prior art of record

Ref. Identity Date / § 102 basis What it supplies
Applicant‑Admitted Prior Art (APA) EIA/TIA‑95 / IS‑95; '673 Background Admitted PN offsets identify base stations; matched‑filter delay profile; TDOA trilateration
Sugita — JP‑A‑7‑181242 (laid open July 21, 1995); Ex. 1011/1012 (translation) Cited on the face of the '673 patent § 102(b) printed publication (foreign) CDMA; "different base stations transmit the PN code … by offsetting just the so‑called pilot PN offset"; "a conversion table for determining the location of the base station from the pilot PN offset is pre‑built into the mobile terminal"
Ruutu — EP 0 930 513 A2 ("Cellular radio positioning"), Nokia Mobile Phones (Ex. 1004); US family US 7,274,939 Published July 21, 1999 § 102(b) Network selects / de‑selects which transmitters the MS must use; MS stores the list in memory; MS measures OTDs; MPC computes position. Expressly: "the network may send a list of BTSs which should not be used … advantageously to prevent the use of multiple BTSs present at the same location"; expressly applicable to "US CDMA standards"
LeBlanc — US 6,236,365 ("Location of a Mobile Station Using a Plurality of Commercial Wireless Infrastructures") (Ex. 1005) Issued May 22, 2001 § 102(b) CDMA delay‑spread "fingers" (correlation peaks) per pilot channel; "lock and track more delay spread fingers and respective base station pilot channels … to enhance[] location estimate accuracy"; selection of the strongest fingers for position processing
Hunzinger — US 2002/0025822 A1 (Ex. 1003), filed Aug. 20, 2001, pub. Feb. 28, 2002, claiming provisional 60/226,378 (filed Aug. 18, 2000) (Ex. 1006) Facially after the critical date § 102(e) only if the provisional supports the relied‑upon subject matter MSC + base stations + mobile; mobile memory storing position info; database correlating base‑station PNs; identifying base stations from reported PN offsets (PN12, PN100); triangulation/TOA
Secondary, cited by Patent Owner as Ex. 2001, 2002, 2005, 2006 US 5,953,326 (NTT Mobile Communications Network); US 5,912,644; US 6,765,895; US 2002/0122396 A1 pre‑2001 Patent Owner itself characterizes US 5,953,326 as addressing "indistinguishable offset delays" — i.e., the same problem

3. Element mapping for the decisive limitation

Claim element Best single mapping Strength
1[a]/9[a]/15[a] storing station info Sugita (PN‑offset→base‑station table in the handset); Ruutu (list stored in MS memory); Hunzinger (base‑station/PN database) Strong
1[b] receiver; 5[b]/9[b] receiving signals All refs Strong
1[c]/5[c]/9[c]/15[c] delay profiles LeBlanc (fingers / correlation peaks); APA (matched filter); Sugita (CDMA correlation) Strong, if "delay profile" is construed per Patent Owner's proposed construction
1[d]/5[d]/9[d]/15[d] extracting reception timings LeBlanc (finger timing); APA Strong
1[e]/5[e]/9[e]/15[e] selecting by determining not to use at least one station having the same PN offset Ruutu (network de‑selects stations to be excluded and the MS listens "on other channels excluding said identified channels") + Sugita (PN offset is the identifier) Moderate — the contested element
4/8/9[f] calculating position from selected timings Ruutu (MPC/OTD), LeBlanc, Hunzinger (TOA/triangulation) Strong
10, 13, 14 (position server stores PN offsets; server performs selection) Ruutu's MPC is a near‑literal mapping: MPC holds the per‑BTS list, transmits it via the serving BTS, and computes position Strong

Note how broad the negative limitation is: it requires exclusion of at least one of the colliding stations. The specification's first embodiment (FIG. 3, step 202 — exclude all stations sharing a PN offset, claimed in dependent claims 2 and 6) is the narrowest species; the independent claims do not require the nearest‑station or smallest‑timing‑error refinements of the second and third embodiments. A challenger therefore does not need prior art for the § 4/FIG. 5 refinements.


4. Combination scenarios

Ground A — Ruutu as primary + Sugita (proposed; not run in IPR2023‑00110)

Why it is the strongest architecture: Ruutu is the only reference in this record that squarely teaches the act of station de‑selection for a position fix, and Sugita supplies the criterion (PN offset) plus the handset‑resident PN‑offset table.

Motivation, with rational underpinning:

  1. Same field, same problem. Both address cellular position determination by propagation‑time measurement. Ruutu expressly extends to "US CDMA standards"; Sugita is CDMA.
  2. A recognized deficiency in Ruutu supplies the reason to modify. Ruutu's exclusion rationale is "poor measurement geometry" and "multiple radio transmitters at the same location." A POSITA applying Ruutu to CDMA (where Sugita/IS‑95 make PN offset the only station identifier) immediately confronts a second, equally disabling ambiguity: two stations reached at nearly equal delay with the same PN offset are indistinguishable in the correlator output. Ruutu already establishes the general remedy ("exclude the use of multiple radio transmitters … [with] disadvantageous properties"); Sugita tells the artisan that in CDMA the identifying attribute is the pilot PN offset. Excluding colliding PN offsets is the application of a known remedy to a known, analogous ambiguity — the KSR "known problem / known solution" fact pattern.
  3. Predictable result, no change in principle of operation. Ruutu's MPC already transmits an "exclude" list and the MS already listens on "other channels excluding said identified channels." Nothing about Ruutu's timing‑based method breaks if the exclusion criterion is a duplicate PN offset rather than a co‑located mast.

This combination also cleanly reaches dependent claims 10, 13, 14 (server stores PN‑offset information; server performs the selection), because Ruutu's MPC is precisely such a server.

Ground B — Ruutu + LeBlanc (Ground III in IPR2023‑00110)

  • Ruutu supplies the network‑directed exclusion and the OTD/position architecture; LeBlanc supplies the CDMA receiver detail — pilot channels, delay‑spread fingers (= the delay profile), peak extraction, and handset‑resident/CDMA‑specific location processing. LeBlanc's express goal — locking "more delay spread fingers and respective base station pilot channels … to enhance[] location estimate accuracy" — is directly on point, since overlapping same‑PN‑offset signals are exactly the case where extra fingers do not disambiguate.
  • Why it failed, and why that matters for a re‑run. The Board denied institution, reasoning that Petitioner offered only conclusory rationales ("improve the teaching of Ruutu," "yield predictable results," "obvious to try") and that same‑field similarity alone "does not suffice as an articulated reason with rational underpinning." The Board also noted Petitioner never identified the favorable result the combination would produce. See the decision at https://www.ptablitigationblog.com/wp-content/uploads/2023/08/PTAB-IPR2023-00110-7.pdf and the analysis at https://www.jonesday.com/en/insights/2023/08/explanations-not-bare-citations-needed-to-establish-prior-art-date.
  • The fix is Ground A's step 2: the deficiency‑in‑the‑primary‑reference rationale. Ruutu's own disclosure invites exclusion of transmitters with "disadvantageous properties"; the same‑PN‑offset ambiguity is such a property once Ruutu is applied to CDMA. That is a concrete, non‑conclusory motivation, and it is the argument the Board said was missing.

Ground C — Hunzinger as primary (Grounds I and II)

  • Ground I (Hunzinger + POSITA knowledge) targeted all claims; Ground II used Hunzinger + LeBlanc (LeBlanc supplying CDMA fingers/delay profiles).
  • Fatal date defect: Hunzinger was filed Aug. 20, 2001 and published Feb. 28, 2002 — after July 24, 2001. It can only be § 102(e) art via provisional 60/226,378, and Petitioner had to show the provisional itself supported the subject matter relied upon (MPEP § 2136(I)(B); Ariad). The Board held that bare citations did not do so — e.g., Petitioner asserted "essentially the entirety of the description in the Hunzinger Provisional" supported the "storing information of a plurality of radio stations" element, and relied on Hunzinger's mobile‑station processor 200 without the provisional describing the system as a mobile station containing those enumerated elements.
  • Practical consequence: Hunzinger is a weak primary reference. It is useful only as secondary evidence of the general state of the art (PN‑offset‑to‑base‑station correlation database; TOA triangulation), not as the anchor of a ground.

Ground D — APA + Sugita + Ruutu (or Sugita + Ruutu + LeBlanc)

  • Because the APA (IS‑95/EIA‑TIA‑95, admitted in the '673 Background) already establishes that PN offsets identify base stations and that a matched filter yields a delay profile, the only missing element is the selection rule. A three‑reference combination — Sugita (CDMA PN‑offset table) + Ruutu (station selection/exclusion) + LeBlanc (CDMA fingers) — is legally the cleanest route and does not depend on the Hunzinger provisional at all.
  • This is also the route least exposed to a § 325(d) discretionary‑denial argument… except that Patent Owner already argued Ruutu and LeBlanc are "cumulative to the references considered by the Office during prosecution," so § 325(d) remains a live discretionary risk for any re‑run using Ruutu/LeBlanc.

Ground E — Ruutu alone, as to claims 10, 13, 14

For the server‑side dependent claims, Ruutu is close to anticipatory in substance: MPC stores per‑BTS station lists, transmits them to the MS via the serving BTS, and computes the position. The only gap is that Ruutu's exclusion criterion is co‑location/geometry rather than duplicate PN offset. A single‑reference obviousness position on claims 10/13/14 is therefore available and avoids all multi‑reference motivation attack surface.


5. Where obviousness is genuinely vulnerable

  1. The criterion substitution. The Board's skepticism of "Ruutu + LeBlanc" rests on the fact that Ruutu "does not disclose excluding the use of transmitters with the same PN offset, rather Ruutu 'exclude[s] the use of multiple radio transmitters at the same location.'" A challenger must bridge co‑located/geometrically poor → indistinguishable in the delay profile. Sugita is the missing bridge; Ruutu alone is not.
  2. "Delay profile" is undefined in the references. No reference uses the term. Under Patent Owner's proposed construction ("one or more correlation values between a received signal and a corresponding PN code for reception timing"), LeBlanc's "fingers" and the APA's matched‑filter output read on it — but the mapping must be made explicitly rather than assumed.
  3. Expert‑testimony exposure. The Board criticized the Kakaes declaration as parroting the petition with no independent reasoning. Any re‑run needs a declaration that (a) defines a POSITA for the July 24, 2001 date, (b) states the state of the art independently, and (c) articulates the deficiency‑based motivation in the declarant's own words.
  4. Claim 15's negative limitation is drafter‑unfriendly to Patent Owner. It recites calculating location "without using PN offset values corresponding to radio stations whose PN offset values are identical" — i.e., it is framed around not using the values, a broader and differently scoped requirement than claim 1's "selecting … not to use … stations." This invites, on the one hand, a written‑description/enablement attack and, on the other, an argument that any exclusion practice meets it.
  5. Do not overlook the "means" claims. Claims 1 and 15 recite "storing means"; claims 3 and 15‑era aspects recite "means for receiving information of plurality of radio stations." Under § 112(f) these are construed to the specification's corresponding structure (memory 15; receiver 11). This is a § 112 issue, not § 103, but it affects how broadly the selection limitation can be read and therefore how much prior art suffices.

6. Bottom line

  • On this record, claims 1–15 are best challenged as obvious over Ruutu in view of Sugita (optionally with LeBlanc for CDMA delay‑profile/finger detail), with the APA (IS‑95/EIA‑TIA‑95) supplying the admitted PN‑offset‑as‑identifier and matched‑filter teachings. The motivation is a deficiency‑in‑the‑primary‑reference rationale: Ruutu teaches that the network may notify the MS of transmitters "which should not be used" and may exclude transmitters with "disadvantageous properties"; Sugita teaches that in CDMA the transmitter's identifying attribute is its pilot PN offset; therefore a POSITA applying Ruutu to CDMA would exclude stations sharing a PN offset, because such stations produce overlapping, unresolvable correlation peaks and inject large timing errors into Ruutu's OTD computation.
  • Hunzinger should not be relied on as a primary reference absent a careful, element‑by‑element showing that provisional 60/226,378 supports the specific subject matter relied upon; the Board found it did not.
  • The Motorola petition's failure was procedural as much as substantive: Hunzinger's defective prior‑art date (Grounds I–II) and a conclusory motivation to combine (Ground III). A petition built on the Sugita bridge, with a properly reasoned declaration and a definition of "delay profile," addresses both defects.
  • Caveats: (i) I have not reviewed Hunzinger, Ruutu, or LeBlanc cover‑to‑cover — my characterization of Hunzinger in particular rests on the petition/POPR excerpts, not the reference itself, and should be verified. (ii) The petition states Ruutu was "filed on December 18, 1998, and published July 21, 1999," while the US family member (US 7,274,939) shows a Finnish priority of Jan. 15, 1998 (FI 980077); the publication date of July 21, 1999 — the date that matters for § 102(b) — is consistent across sources, and I report the filing‑date discrepancy literally rather than resolving it. (iii) Suggestion "Ground A" is my own construction; it was not one of the three grounds actually petitioned, so it carries no estoppel or IPR‑outcome significance.

Generated 9/28/2026, 5:24:03 PM

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