U.S. International Trade Commission

Publication 4133 March 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-596

Certain GPS Chips, Associated 

Software and Systems, and Products 

Containing Same
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4133 March 2010

In the Matter of

Investigation No. 337-TA-596

Certain GPS Chips, Associated 

Software and Systems, and Products 

Containing Same


patent”); 7,091,904 (“the ‘904 patent”); and 7,132,980 (“the 980 patent”). The complaint named 

as respondent Global Locate, Inc. of San Jose, California (“Global Locate”). The complaint and 

notice of investigation were later amended to include one additional claim of the ‘904 patent. 

Subsequently, the investigation was terminated with respect to the ‘904 patent, the ‘980 patent, 

and certain claims of the ‘2 16 and the ‘363 patents, and the complaint and notice of investigation 

were amended to add Broadcom, Inc. of Imine, California (“Broadcom”) as a respondent to the 

investigation. 

On March 13,2008, the Commission determined not to review an ID issued by the ALJ 

granting in part SiRF’s motion for summary determination that it had satisfied the importation 

requirements of 19 U.S.C. 0 1337. On March 20,2008, the Commission further determined not 

to review an ID issued by the ALJ granting SiRF’s motion for summary determination that it had 

satisfied the economic prong of the domestic industry requirement. 

On June 13,2008, the ALJ issued his final ID finding no violation of section 337 by 

respondents Global Locate and Broadcom. The ID included the ALJ’s recommended 

determination on remedy and bonding. In the subject ID, the ALJ found that Global Locate’s 

products do not infringe asserted claims 1,6, 10- 12, 17-1 9, 64,65, 69, 70,72, or 73 of the ‘21 6 

patent. The ALJ also found that the asserted claims are not invalid as anticipated by any prior 

art. The ALJ further found that SiRF failed to prove that a domestic industry exists for articles 

protected by the ‘2 16 patent. In addition, the ALJ found that Global Locate’s products do not 

infringe asserted claims 7,8, 10-12, 16, and 18-20 of the ‘363 patent. The ALJ also found that 

the asserted claims of the ‘363 patent are invalid as anticipated by each of the GPS Builder 

System and the First GPS system. The ALJ further found that SiRF has established that a 

domestic industry exists for articles protected by the ‘363 patent. 

On June 27,2008, SiRF filed a petition for review seeking review of the ALJ’s ID with 

respect to the ‘216 patent. Also on June 27,2008, Global Locate filed a contingent petition for 

review, seeking review of certain aspects of the ALJ’s findings concerning both the ‘2 16 and 

‘363 patents. On July 7,2008, Global Locate filed an opposition to SiRF’s petition for review 

and SiRF filed a response to Global Locate’s contingent petition for review. Also on July 7, 

2008, the Commission Investigative Attorney filed a response to both SiRF’s petition and Global 

Locate’s contingent petition. 

Having examined the record of this investigation, including the ALJ’s final ID, the 

petitions for review, and the responses thereto, the Commission has determined not to review the 

subject ID. 

2 
The authority for the Commission’s determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. 0 1337), and in section 210.42(h) of the 

Commission’s Rules of Practice and Procedure (1 9 C.F.R. 

By order of the Commission. 

Acting Secretary to the Commission 

Issued: August 14,2008 

3 
CERTAIN GPS CHIPS, ASSOCIATED SOFTWARE AND 

SYSTEMS, AND PRODUCTS CONTAINING SAME 

337-TA-596 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DECISION NOT TO REVIEW A FINAL DETERMINATION FINDING NO 

VIOLATION OF SECTION 337 has been served by hand upon the Commission 

Investigative Attorney Kevin Baer, Esq., and the following parties as indicated, on 

August 15, 2008 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT SiRF 

TECHNOLOGY, INC.: 

Alan H. MacPherson, Esq. 

Edward C. Kwok, Esq. 

Steven M. Levitan, Esq. 

MacPHERSON KWOK CHEN & HEID LLP 

2033 Gateway Place, Suite 400 

San Jose, CA 95 1 10 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(b)Via First Class Mail 

( )Other: 

P-408-3 92-925 0 

F-408-392-9262 

Helen Li, Esq ( ) Via Hand Delivery 

Diana M. Rutowski, Esq. (Yia Overnight Mail 

ORRICK HERRINGTON & SUTCLIFFE, LLP ( Via First Class Mail 

1000 Marsh Road ( )Other: 

Menlo Park, CA 94025 

P-650-6 14-7400 

F-650-614-7401 
Page 2 - Certificate of Service 

F. David Foster, Esq. 

Thomas Tso, Esq. 

MILLER & CHEVALIER CHARTERED 

655 Fifteenth Street, NW 

Suite 900 

Washington, DC 20005-5701 

P-202-626-5800 

F-202-626-08 5 8 

William L. Anthony, Jr., Esq. 

Fabio E. Marino, Esq. 

Bas de Blank, Esq. 

ORRICK HERRINGTON & SUTCLIFFE, LLP 

1000 Marsh Road 

Menlo Park, CA 94025 

P-650-6 14-7400 

F-650-614-7401 

Clarie Merrin, Esq. 

T. Vann Pearce, Esq. 

ORRICK HERRINGTON & SUTCLIFFE, LLP 

Washington Harbour 

3050 K Street, NW 

Washington, DC 20007-5 135 

P-202-339-8400 

F-202-339-8500 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(flia First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

($Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(Mia First Class Mail 

( )Other: 
Page 3 - Certificate of Service 

ON BEHALF OF RESPONDENT GLOBAL LOCATE, 

INC.: 

James L. Quarles, 111, Esq. 

Michael D. Esch, Esq. 

James M. Dowd, Esq. 

WILMER CUTLER PICKERING HALE AND 

DORR LLP 

1875 Pennsylvania Avenue, NW 

Washington, DC 20006 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

( &a First Class Mail 

( )Other: 

P-202-663-6420 

F-202-663-6363 

William F. Lee, Esq. ( ) Via Hand Delivery 

WILMER CUTLER PICKERING HALE AND DORR ( ) Via Overnight Mail 

LLP (4Via First Class Mail 

60 State Street ( )Other: 

Boston, MA 02109 

P-617-526-6000 

F-617-526-5000 

Robert J. Grunther, Jr., Esq. 

S. Calvin Walden, Esq. 

Paul B. Keller, Esq. 

WILMER CUTLER PICKERING HALE AND DORR 

LLP 

399 Park Avenue 

New York, NY 10022 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

UVia First Class Mail 

( ) Other: 

P-212-230-8800 

F-2 12-230-8888 

APPEARANCES 

For Complainant SiRF Technology, Inc.: 

F. David Foster, Esq. 

Miller & Chevalier Chartered 

655 Fifteenth St., NW, Suite 900 

Washington, DC 20005 

Alan H. MacPherson, Esq. 

MacPherson Kwok Chen & Heid LLP 

2033 Gateway Place, Suite 400 

San Jose, CA 95 1 10 

For Respondent Global Locate, Inc.; Broadcom, Corporation: 

James L. Quarles, Esq. 

Michael D. Esch, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

1875 Pennsylvania Ave., NW 

Washington, DC 20006 

William F. Lee, Esq. 

Donald R. Steinberg, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

60 State St. 

Boston, MA 02 109 

Mark D. Selwyn, Esq. 

Joseph F. Haag, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

1 1 17 California Ave. 

Palo Alto, CA 94304 

ITC Staff: 

Kevin Baer, Esq. 

T. Spence Chubb, Esq. 

Office of Unfair Import Investigation 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

1 
TABLE OF CONTENTS 

PAGE 

OPINION ................................................................... 1 

I . ProcedwalHistory ....................................................... 1 

11 . Jurisdiction Including Parties And Importation ................................. 3 

111 . Overview Of The Technology .............................................. 4 

IV . ‘216Patent ............................................................. 8 

A . Undisputed Facts Relating To The ‘2 16 Patent ........................... 8 

B . Experts .......................................................... 9 

C . Person Of Ordinary Skill In The Art ................................... 9 

D . ClaimsInIssue .................................................... 9 

E . ClaimConstruction ............................................... 13 

1 . The Claimed Term “Segment Of A Signal” ...................... 21 

2 . Claimed Terms “Separate And Distinct Periods of 

Time” And “Segments Representing Separate And 

Distinct Periods of Time” .................................... 24 

3 . The Claimed Term “Pseudo-Noise” ............................ 26 

4 . The Claimed Term “Hypothesis” ............................... 28 

5 . The Claimed Term “Correlation Data” .......................... 37 

6 . The Claimed Term “Combiner” ................................ 39 

7 . The Claimed Term “Code Phase Difference” ..................... 44 

8 . The Claimed Term “Doppler Shift” ............................. 47 

.. 

I1 
F . Infringement ..................................................... 49 

1 . AccusedProducts ........................................... 51 

a . 1 ........................................ 52 

Complainant Has Not Established Infringement ................... 55 

G . Validity ......................................................... 67 

H . Domestic Industry ................................................ 68 

v . ‘363Patent ............................................................ 70 

A . Undisputed Facts Relating To The ‘363 Patent .......................... 70 

B . Experts ......................................................... 71 

C . Person Of Ordinary Skill In The Art .................................. 71 

D . Claims In Issue ................................................... 71 

E . ClaimConstruction ............................................... 73 

1 . The Claimed Phrase “tracker” ................................. 73 

2 . The Claimed Phrase “positioning information” .................... 78 

3 . The Claimed Phrase “user interface” ............................ 81 

4 . The Claimed Phrase “operating system interface” .................. 84 

2 . 

5 . The Claimed Phrase “tracker interface function” .................. 86 

6 . The Claimed Phrase “command delivery function” ................. 89 

7 . ...... 92 

F . Infringement ..................................................... 97 

1 . AccusedProducts ........................................... 97 

2 . Complainant Has Not Established Infringement ................... 98 

The Claimed Phrase “user interface message delivery function” 
G . Validity ........................................................ 115 

The GPS Builder System .................................... 116 

The FirstGPS System ....................................... 136 

H . Domestic Industry ............................................... 143 

VI . Remedy ............................................................. 152 

VI1 . Bond ................................................................ 164 

VI11 . Additional Findings .................................................... 167 

CONCLUSIONS OF LAW .................................................... 168 

ORDER ................................................................... 169 

1 . 

2 . 

iv 
CBr 

CDX 

CFF 

CORFF 

COSFF 

CRBr 

CRFWF 

CRSFF 

CX 

JX 

RBr 

RDX 

Rx 

RFF 

ROCFF 

ROSFF 

RRBr 

RRCFF 

RRSFF 

SBr 

ABBREVIATIONS 

Complainant’s Post-hearing Brief 

Complainant’s Demonstrative Exhibit 

Complainant’s Proposed Finding 

Complainant’s Objection To Respondents’ Proposed Finding 

Complainant’s Objection To Staffs Proposed Finding 

Complainant’s Post-hearing Reply Brief 

Complainant’s Proposed Rebuttal Finding to RFF 

Complainant’s Proposed Rebuttal Finding To SFF 

Complainant’s Exhibit 

Joint Exhibit 

Respondents’ Post-hearing Brief 

Respondents’ Demonstrative Exhibit 

Respondents’ Exhibit 

Respondents’ Proposed Finding 

Respondents’ Objection To Complainant’s Proposed Finding 

Respondents’ Objection To Staff s Proposed Finding 

Respondents’ Post-hearing Reply Brief 

Respondents’ Proposed Rebuttal Finding To CFF 

Respondents’ Proposed Rebuttal Findings To SFF 

Staffs Post-hearing Brief 

V 
SRBr Staffs Post-hearing Reply Brief 

SFF Staffs Proposed Finding 

sx Staffs Exhibit 

Tr. Transcript Of Pre-hearing Conference and Hearing 

vi 
OPNION 

I. Procedural History 

On March 13,2007, the Commission instituted an investigation under section 337 of the 

Tariff Act of 1930, 19 U.S.C. 0 1337, based on a complaint filed by SiRF Technology, Inc. of 

San Jose, California (SiRF), alleging a violation of section 337 in the importation, sale for 

importation, and sale within the United States after importation of certain GPS chips, associated 

software and systems, and products containing same by reason of infringement of certain claims 

of U.S. Patent Nos., 6,304,216 (‘216 patent), 7,043,363 (‘363 patent), 7,091,904 (‘904 patent) 

and 7,132,980 (‘980 patent).’ 72 Fed. Reg. 11378 (Mar. 13,2007). The complainant named 

Global Locate, Inc. of San. Jose, California (Global Locate) as the only respondent. 

On July 5,2007, the Commission permanently assigned this investigation to the 

undersigned. 

On July 24,2007, Order No. 18 extended the target date for completion of the 

investigation from June 13,2008, which had been set by Order No. 3, to October 13,2008, which 

meant that the final initial determination should be filed no later than June 13,2008. On August 

15, 2007, the Commission determined not to review Order No. 18. 

A November 16,2007 ID granted a motion to add, as a respondent, Broadcom 0 

Corporation (Broadcom), which had acquired Global Locate during the pendency of the 

’ Complainant subsequently withdrew the allegations with regard to the ‘904 and ‘980 

patents. Complainant has also withdrawn allegations of certain previously asserted patent 

claims. See November 1 1,2007 and January 24,2008, IDS granting complainant’s motions to 

terminate with respect to certain patent claims. The Commission determined not to review those 

IDS. 
investigation.2 The Commission determined not to review said ID. 

A February 26,2008 ID (Order No. 36) found that complainant had established the 

importation requirement of Section 337 for certain accused products.’ A February 27,2008 ID 

(Order No. 37) found that complainant had satisfied the economic prong of the domestic industry 

requirement for the ‘216 patent and ‘363 patent. The Commission determined not to review both 

IDS. 

A telephone conference was held on March 1 1 , 2008 and the prehearing conference was 

held on March 13, 200lI4 Thereafter, a five day evidentiary hearing was held on March 13, 14, 

17, 18 and 19,2008. In issue are alleged infringement of claims 1, 6, 10-12, 17-19, 64-65, 69-70 

and 72-73 of the ‘2 16 patent and of claims 7,8, 10, 1 1 , 12, 16, 18, 19 and 20 of the ‘363 patent. 

Post Hearing submissions have been filed.5 

Unless otherwise noted respondents in this ID will be referred to as “Global Locate.” 

’ Order No. 36 in particular €ound that the respondents’ { 

} products have been imported into the United 

States, sold for importation or sold within the United States by or on behalf of respondents, and 

that the following downstream products containing respondents’ chips have been imported into 

the United States: { 

1 

At the prehearing conference Motion No. 596-76 in limine as it was related to a Dr 4 

Michalson was denied. (Tr. at 39.) 

5 Complainant SiRF filed its initial post-hearing brief and proposed findings of fact on 

April 7,2008. Since said filings complainant filed a corrected post-hearing brief and corrected 

proposed findings. In a letter dated April 23,2008, to the administrative law judge, complainant 

attached a list of the “inadvertent errors.” Said letter represented that said errors seek to correct 

typographical errors, and/or erroneous citations to supporting evidence; and that respondents and 

the staff were apprised of SiRF’s intent to submit those errata in a letter dated April 15,2008 (3 

days before the parties’ rebuttal briefs and rebuttal findings of fact were due), and did not express 

any objection. 

2 
The matter is now ready for a final decision.6 

The Final Initial and Recommended Determinations are based on the record compiled at 

the hearing and the exhibits admitted into evidence. The administrative law judge has also taken 

into account his observation of the witnesses who appeared before him during the hearing. 

Proposed findings of fact submitted by the parties not herein adopted, in the form submitted or in 

substance, are rejected as either not supported by the evidence or as involving immaterial matters 

and/or as irrelevant. Certain findings of fact included herein have references to supporting 

evidence in the record. Such references are intended to serve as guides to the testimony and 

exhibits supporting the finding of fact. They do not necessarily represent complete summaries of 

the evidence supporting said findings. 

11. Jurisdiction Including Parties And Importation 

The private parties in this investigation are complainant SiW and respondents Global 

Locate and Broadcom. FF 1-4. The Commission has subject matter jurisdiction over this 

investigation because SiRF has alleged violation by respondents of Section 337 in connection 

with the importation of certain GPS chips, pursuant to 19 U.S.C. 6 1337. Amgen. Inc. v. US. 

Int’l Trade Comm’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990). Moreover, Order No. 36 found that 

SiRF has satisfied the importation requirement of 19 U.S.C. 5 1337(a)(l)(B). In addition, the 

Commission has personal jurisdiction over respondents in this investigation because respondents 

have participated fully in said investigation, including participation in discovery and motion 

On May 20,2008, the administrative law judge in his Order No. 44 granted the joint 

motion of the private parties to reopen the record to admit into evidence RX-112, RX-113, RX252, RX-434, CX-479 and CX-485. On April 4,2008 complainant also filed an unopposed 

motion for leave to modi@ its exhibit list. Said motion is granted. 

3 
practice. See Certain Audible Alarm Devices For Divers, Inv. No. 33’7-TA-365, Initial 

Determination, 1995 ITC LEXIS 66, *3 (Feb. 2, 1995). 

111. Overview Of The Technology 

Pursuant to a joint stipulation of the private parties responding to educational Order No. 

3 1 and which has been identified as SX-2, the following has been stipulated to as an overview of 

the technology involved in this investigation. 

1. History of GPS 

The terrn “GPS” is the abbreviation for Global Positioning System, a 

satellite-based positioning and timing system which includes low-Earth-orbit 

satellites, ground stations, and a large and rapidly growing number of receivers. 

Currently, more than thirty GPS satellites are in orbit around the Earth. 

2. Technical Underpinnings of GPS 

The GPS satellites are constantly in motion around the Earth at a distance 

of approximately 10,900 nautical miles, and orbit the Earth in approximately 12 

hours. The system is designed such that, at any given time, at least four GPS 

satellites are potentially visible to a GPS receiver on the ground at any location on 

the Earth. 

Each GPS satellite broadcasts a radio signal that is detected by the GPS 

receivers. Each GPS satellite has an atomic clock, and continually transmits 

messages containing the current time at the start of the signal, parameters to 

calculate the location of the satellite (the “ephemeris”), and the general system 

health (the “almanac”). All of this infomation is transmitted on a signal on which 

a unique code associated with the transmitting satellite is superimposed. For 

civilian GPS applications, the unique code is called the Coarse/Acquisition 

(,‘C/A”) code, which belongs to a class of codes used in communication known as 

pseudo-random noise (PRN) codes, based on their appearance in the signal energy 

spectrum. Each C/A code is a 1023-bit digital pattern (the bits of the C/A code 

are also referred to as “chips”), and each satellite transmits its code repeatedly. It 

takes a satellite one millisecond to transmit its C/A code once. The signals from 

the GPS satellites travel at a known speed - the speed of light through space (ix., 

outside of the Earths atmosphere), and slightly slower through the atmosphere. A 

GPS receiver uses the measured arrival time to compute the distance from the 

receiver to each satellite, from which the receiver estimates its position using 

4 
geometry and trigonometry. 

The estimated distance from the ground-based receiver to a satellite is 

called the “pseudorange.” Using the pseudoranges from the visible satellites 

along with the estimated orbital positions of the satellites (called “ephemeris 

data”), which also is broadcast by the GPS satellites in their navigation messages, 

a GPS receiver can accurately determine its own position using the principles of 

trilateration. The ephemeris data can be obtained either by decoding directly from 

the satellite signal, or from an aiding source, such as a cellular telephone service 

provider. 

A GPS satellite broadcasts its signal at very low power. (It has been 

described as a “5-watt light bulb, 1 1,000 miles away.”) As a result, the GPS 

signals are difficult to distinguish from other radio-frequency (“RF”) noise 

impinging on the GPS receiver. In order for a GPS receiver to determine the 

pseudoranges discussed above, therefore, the GPS receiver must be a 

sophisticated signal processor, able to distinguish the low-power GPS signals 

from other radio-frequency noise. These signal processors typically include both 

analog and digital electronic circuits, as well as software. 

3. The GPS Signal 

The GPS signal broadcast by each satellite is a “direct sequence spread 

spectrum” (“DSSS”) signal combining a carrier signal, the PRN code signal, and a 

“navigation data bit” signal. The “navigation data bit” signal provides the GPS 

ephemeris data and other information. The carrier signal is a radio signal at a 

specific frequency that is modified (“m~dulated”)~ by both the PRN code and the 

navigation data bit signal. In GPS, while all of the satellites transmit on the same 

frequency, as mentioned above, each satellite transmits a unique PRN code. This 

PRN code is the signature that uniquely identifies a satellite from all other GPS 

satellites. At the receiver, the “modulation” is reversed, to retrieve the PRN code 

signal and the “navigation data bit” signal from the carrier signal. 

4. The Doppler shift 

When GPS signals are received by a user, each signal can have a slightly 

different frequency due to the Doppler effect, also called “Doppler shift.” A 

familiar example of a Doppler shift is an approaching fire engine with its siren 

going. As the fire engine approaches the listener, the sound of the siren appears to 

rise in frequency, even though the frequency of the sound transmitted by the fire 

In a DSSS signal, the modulation does not modify the frequency of the carrier signal. 7 

The modulation modifies the “phase” of the signal. 

5 
engine is not changing. After the fire engine passes the listener, the frequency of 

the siren appears (to the listener) to go down in frequency. Because the fire 

engine is in motion, first toward the listener and then away from the listener, the 

frequency of the sound wave from the siren is shifted by the motion of the fire 

engine, relative to the stationary listener. 

5. GPS Receiver 

Currently, a typical GPS receiver may be implemented in one or more 

integrated circuits. A GPS receiver typically includes an analog signal processing 

portion in a radio-frequency circuit (an “RF Front End”) and a digital signal 

processing portion in a baseband circuit (a “Baseband Processor”). In a GPS 

receiver, the RF Front End receives the GPS signal, filters and amplifies the 

signal, and converts the resulting signal into a digital format. The resulting digital 

signal, which is sometimes referred to as the “baseband signal,” is sent to the 

Baseband Processor. 

After receiving the baseband signal from the RF Front End, the Baseband 

Processor must identify the visible satellite sending the signal, and estimate the 

distance between the receiver and this satellite. The Baseband Processor does this 

for the signal from each of several visible satellites. Each estimate is based on the 

time information extracted from the received signal. In order to make the distance 

estimate, the Baseband Processor must detect the unique PRN code broadcast by 

each satellite. To “acquire” a satellite, the Baseband Processor has to roughly 

identify the signal transit time (hence the distance) from the satellite to the 

receiver and the shift in the frequency of the carrier signal due to the Doppler 

shift. To synchronize to the start of the GPS signal, the Baseband Processor tests 

a large number of hypothetical signals, loosely termed “hypotheses,” which are 

constructed from selected combinations of possible PEN codes, code phases and 

Doppler values. Once the Baseband Processor has determined which hypothesis 

is most likely correct based on correlation of the received signal with the 

hypotheses, the satellite associated with the PRN code is then said to have been 

“acquired.” 

6. Correlation 

Correlation, mentioned above, is a computational method of checking the 

received signals against the hypotheses to determine which hypothesis is most like 

the received signal being examined. Loosely speaking, the received signal and the 

hypotheses are compared to see if they are “lined up.” 

When the hypothesis and the received signal are properly lined up, if all of 

the values of samples in the received signal and the hypothesis are either 1 or - 1, 

6 
multiplying two samples with the same value results in a “1 ” and multiplying 

samples with different values results in a “- 1 .77 Adding together results for the 

signal and an incorrect hypothesis would result in a much lower number, generally 

zero. The answer with the highest value is considered a match between a 

hypothesis and the received signal, and indicates which hypothesis is likely to be 

the correct one, as it is most like the received signal. 

7. Acquisition 

As part of the process of acquiring a satellite, the receiver generates a 

replica signal according to each hypothesis the receiver makes regarding the 

received signal. For a GPS signal, the relevant parameters that determine the 

replica signal include the satellite PRN code, the code-phase, and the Doppler 

shift, Using the replica signal and the received signal, the receiver calculates a 

correlation that is summed over a period of time (the “integration time”). As 

discussed above, the correlation indicates how closely the replica signal matches 

the received GPS signal. If the replica signal matches the received signal well, the 

sum of correlations increases with integration time. The process of summing has 

also been referred to by those of ordinary skill in the art at various times as 

accumulation or integration. When the correlation reaches a minimum threshold 

level for a given hypothesis, the receiver has “acquired” the GPS signal. 

Further processing may include making pseudorange measurements, and 

decoding additional information modulated on the received GPS signals. When 

GPS signals from multiple satellites have been detected, the receiver’s position 

may be determined. 

The ability to detect a given GPS signal is affected by both the strength of 

the received signal and the noise in the environment. A weak signal typically 

requires a long integration time for the correlation to reach the threshold. 

Similarly, a noisy environment also requires a long integration time for the 

correlation to reach the threshold. 

8. Tracking a satellite 

Once a satellite has been “acquired” the process of “tracking” it can begin. 

During the tracking period, the GPS receiver and the satellite move relative to 

each other. The GPS receiver estimates the Doppler shift of the GPS signals, and 

the GPS receiver can track the GPS signals by making minor adjustments to the 

previous correct hypothesis to compensate for the relative movement during this 

tracking period. This allows the GPS receiver to make corrections to its location 

calculations. 

7 
Satellite acquisition and tracking require numerous cdmputation steps for 

hypothesis testing. As discussed above, one part of hypothesis testing is to 

calculate a “correlation,” between the received GPS signal and a replica of a 

hypothetical GPS signal. 

In order to perform these correlations effectively, Baseband Processors 

take advantage of the benefits of parallel processing, with satellite acquisition and 

tracking are often performed in dedicated parts of the Baseband Processor. 

IV. ‘216 Patent 

A. Undisputed Facts Relating To The ‘216 Patent 

The private parties in SX-2 stipulated to the following regarding the ‘21 6 patent: 

The Gronemeyer ‘2 16 Patent discloses a method and apparatus for 

detecting signals, including GPS signals. The Gronemeyer ‘2 16 Patent discloses a 

technique that allows a signal to be processed over a period of time when the 

signal being received is interrupted by noise during part of the time period (e.g., 

during transmission of a cellular telephone). 

As discussed above [SX-21, to detect a signal transmitted from a satellite, 

the receiver must be able to distinguish the signal from surrounding RF noise. 

Under low signal or high noise conditions, the receiver must accumulate 

correlation data for additional time to distinguish the signal from RF noise. The 

‘21 6 patent teaches a technique for combining correlation data generated from two 

separate and distinct segments of the received satellite signal. The Gronemeyer 

‘2 16 patent informs that: 

Moreover, it is difficult to combine segments of samples captured 

over different periods of time because each is subject to a different 

code phase which must be accounted for before the segments can 

be combined, and these code phases are unknown. In an effort to 

increase the signal to noise ratio of the received signal, prior art 

receivers either forgo operation during times in which the received 

signal is weak, or to extend the sampling period beyond the limits 

imposed by the external constraints. In certain applications, such as 

the case of a GPS receiver integrated with a mobile wireless phone, 

extension of the sampling window is not usually feasible since it 

would subject the received signal to unacceptable interference from 

the phone’s transmitter. In such applications, the practical effect is 

to forgo operation of the GPS receiver when the received signal is 

weak. 

8 
The Gronemeyer ‘2 16 Patent allows for combining of correlation data 

from different segments, even when intervening input data sample segments are 

interrupted by noise in the environment, or when a significant time has elapsed 

between these segments resulting from, for example, an interruption to allow 

transmission by a wireless telephone transmitter, to cause a consequential code 

phase difference. 

In addition to the foregoing, the ‘216 patent, entitled “Signal Detector Employing 

Correlation Analysis of Non-Uniform and Disjoint Sample Segments,” issued on October 16, 

2001, based on an application filed on March 30, 1999. Steven Gronemeyer is the named 

inventor and he assigned the invention to his employer, Conexant Systems, which was 

subsequently acquired by SiRF. (CX-1.) 

B. Experts 

Chris Gregory Bartone was qualified as complainant’s expert in the area of GPS 

technology. (Tr. at 581.) 

Michael Braasch was qualified as respondents’ expert in the design and operation of GPS 

receivers. (Tr. at 1874.) 

C. Person Of Ordinary Skill In The Art 

As of March 30, 1999, the filing date of the ‘216 patent, a person of ordinary skill in the 

art relevant to the ‘216 patent would have held at least a Bachelor’s degree in electrical 

engineering (or had an equivalent academic background) and would have had at least a couple of 

years experience in GPS receiver design. (Braasch, Tr. at 1875, Bartone, Tr. at 588-90.) 

D. Claims In Issue 

Complainant has put in issue claims 1,6, 10, 11, 12, 17, 18, 19,64,65,69,70,72 and 73 

of the ‘2 16 patent. They read: 

9 
1. A signal detector comprising: 

a receiver for receiving a first segment of a signal, and a second 

segment of the signal, the first and second segments 

representing separate and distinct periods of time, and the 

signal comprising a signal of interest perturbed by noise or 

pseudo-noise; 

a correlator coupled to the receiver for deriving first correlation 

data, representative of the correlation between the first segment 

and a hypothesis, and second correlation data representative of 

the correlation between the second segment and the hypothesis; 

and a combiner coupled to the correlator for determining a 

parameter difference between the first and second correlation 

data, for adjusting a selected one of the first and second 

correlation data responsive to the parameter difference, and 

combining the adjusted data with the other of the first and 

second correlation data to obtain cumulative correlation data 

useful for detecting the signal of interest or a parameter of the 

signal of interest. 

6. The signal detector of claim 1 in which the parameter difference 

is a code phase difference, and the combiner is configured to adjust 

the selected one of the first and second correlation data responsive 

to the code phase difference. 

IO. A signal detector comprising: 

a receiver for receiving a first segment of a signal and a second 

segment of the signal, the signal representative of a plurality of 

signals of interest, each signal of interest representative of a 

repeating PN code modulated onto a carrier signal, and the first 

and second segments representing separate and distinct periods 

of time; 

a correlator coupled to the receiver for deriving first correlation 

data representative of the correlation between the first segment 

and a combined PN code and code phase hypotheses, and 

second correlation data representative of the correlation 

between the second segment and the combined PN code and 

code phase hypothesis; and 

a combiner coupled to the correlator for determining a code phase 

10 
difference between portions of the first and second correlation 

data corresponding to the PN code hypothesis, for adjusting a 

selected one of the portions of the first and second correlation 

data responsive to the code phase difference, and combining 

the adjusted data with the other portion to obtain cumulative 

correlation data useful for detecting a signal of interest or a 

parameter of a signal of interest. 

1 1. The signal detector of claim 10 in which the correlator is 

configured to derive correlation data representative of the 

correlation between a segment and a plurality of code, code phase, 

and Doppler shift hypotheses. 

12. A GPS receiver including either of the signal detectors of 

claims 1 and 10. 

17. A method for detecting a signal comprising: 

receiving a first segment of a signal and a second segment of the 

signal, the signal representative of a plurality of signals of 

interest, each signal of interest representative of a repeating PN 

code modulated onto a carrier signal, the first and second 

segments representing separate and distinct periods of time; 

deriving first correlation data representative of the correlation 

between the first segment and a combined PN code and code 

phase hypothesis, and second correlation data representative of 

the correlation between the second segment and the combined 

PN code and code phase hypothesis; 

determining a code phase difference between portions of the first 

and second correlation data corresponding to the PN code 

hypothesis; 

adjusting a selected one of the portions of the first and second 

correlation data responsive to the code phase difference; and 

combining the adjusted data with the other portion to obtain 

cumulative correlation data useful for detecting a signal of 

interest or a parameter of a signal of interest. 

18. The method of claim 17 further comprising successively 

combining the cumulative correlation data with correlation data 

from successive segments until the presence and code phase of a 

11 
signal of interest can be accurately and reliably detected. 

19. The method of claim 1 7 further comprising deriving correlation 

data representative of the correlation between a segment and a 

plurality of code, code phase, and Doppler shift hypotheses. 

64. A method for detecting signals of interest, comprising the steps 

Of: 

receiving a first segment of a signal of interest; 

receiving a second segment of the signal of interest; 

deriving a first correlation data representative of the correlation 

between the first segment and a hypothesis; 

deriving a second correlation data representative of the correlation 

determining a parameter difference between the first aid the second 

selecting one of tbe first and the second correlation data; 

adjusting the selected correlation data in response to the parameter 

difference to determine an adjusted data; and 

combining the adjusted data with the non-selected correlation data 

to determine a cumulative correlation data useful for detecting 

the signal of interest. 

between the second segment and the hypothesis; 

correlation data; 

65. The method of claim 64, wherein the period of time for the first 

segment and the time period for the second segment are separate, 

nonoverlapping time periods. 

69. The method of claim 64, wherein the correlation data is 

representative of the correlation between the first segment and a 

plurality of code, code phase, and Doppler shift hypotheses, and 

between the second segment and the plurality of code, code phase, 

and Doppler shift hypotheses. 

70. The method of claim 69, wherein a first portion of the first 

correlation data corresponds to a Doppler shift hypothesis and a 

second portion of the second correlation data corresponds to the 

Doppler shift hypothesis, and a code phase difference is 

determined from a time period between the beginning of the first 

segment and the Doppler shift hypothesis corresponding to the first 

12 
portion, and between the beginning of the second segment and the 

Doppler shift hypothesis corresponding to the second portion. 

72. The method of claim 64, wherein the receiving step receives at 

least one global positioning system (GPS) signal. 

73. The method of claim 64, wherein the parameter difference is a 

code phase difference. 

E. Claim Construction 

Claim construction is a question of law. Markman v. Westview Instruments, Inc.,52 F.3d 

967,979 (Fed. Cir. 1995) (en banc), aff d, 517 U.S. 370 (1996) (Markman); see Cvbor Corp. v. 

FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998). In construing claims, a court should 

look to intrinsic evidence consisting of the language of the claims, the specification and the 

prosecution history as it “is the most significant source of the legally operative meaning of 

disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996) (Vitronics); see Bell Atl. Network Servs., Inc. v. Covad Commc’n. Group, Inc., 262 F.3d 

1258, 1267 (Fed. Cir. 2001). Claim construction is a matter of resolution of disputed meanings 

and technical scope, to clarify and, when necessary, to explain what the patentee covered by the 

claims” See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). 

The claims themselves “provide substantial guidance as to the meaning of particular 

claim terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (Phillips), citing 

Vitronics, 90 F.3d at 1582. It is essential to consider a claim as a whole when construing each 

term, because the context in which a term is used in a claim “can be highly instructive.” In 

construing claims, the administrative law judge should first look “to the words of the claims 

themselves . . . to define the scope of the patented invention.” Vitronics., 90 F.3d at 1582; see 

13 
generally Phillips, 41 5 F.3d at 13 12-1 3. Claim terms “are generally given their ordinary and 

accustomed meaning.” Vitronics, 90 F.3d at 1582. Moreover, each term of a claim should be 

given its own meaning. See Merck & Co. v. Teva Pham., USA. Inc., 395 F.3d 1364, 1372 (Fed. 

Cir. 2005), cert. denied 546 U.S. 972 (2005). (Merck & Co.) (“A claim construction that gives 

meaning to all the terms of the claim is preferred over one that does not do SO.”). 

In Pause Technology, Inc. v. T.V., Inc., 419 F.3d 1326 (Fed. Cir. 2005) the Court stated: 

. . . in clarifying the meaning of claim terms, courts are free to use 

words that do not appear in the claim so long as “the resulting 

claim interpretation . . . accord[s] with the words chosen by the 

patentee to stake out the boundary of the claimed property.” cf. 

Renishaw PLC v. Marposs Societa Der Azioni, 158 F.3d 1243, 

1248 (Fed. Cir. 1998) (noting that ‘a‘[w]ithout any claim term 

susceptible to clarification . . . there is no legitimate way to narrow 

the property right”). 

__. Id. at 1333. Also, claim terms are presumed to be used consistently throughout the patent, such 

that the usage of the term in one claim can often illuminate the meaning of the same term in other 

claims. Research Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005) 

(Research Plastics). 

The ordinary meaning of a claim term may be determined by reviewing a variety of 

sources, which may include the claims themselves, dictionaries and treatises, the written 

description, the drawings and the prosecution history. Ferguson BeauregardLogic Controls v. 

Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). “Dictionaries ... are often useful to assist 

in understanding the commonly understood meaning of words and have been used both by our 

court and the Supreme Court in claim interpretation.” Phillips, 415 F.3d at 1322. The use of a 

dictionary, however, may extend patent protection beyond what should properly be afforded by a 

14 
patent. Also, there is no guarantee that a term is used in the same way in a treatise as it would be 

by a patentee. Id. Moreover, the presumption of ordinary meaning will be “rebutted if the 

inventor has disavowed or disclaimed scope of coverage, by using words or expressions of 

manifest exclusion or restriction, representing a clear disavowal of claim scope.” ACTV. Inc. v. 

Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003). 

The presence of a specific limitation in a dependent claim raises a presumption that the 

limitation is not present in the independent claim. Phillips, 4 15 F.3d at 13 15. This presumption 

is especially strong when the only difference between the independent and dependant claims is 

the limitation in dispute. SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 

(Fed. Cir. 2003). Moreover, “claim differentiation takes on relevance in the context of a claim 

construction that would render additional, or different, language in another independent claim 

superfluous.” AllVoice Computing PLC v. Nuance Commc’ns. Inc., 504 F.3d 1236,2007 U.S. 

App. LEXIS 23949, at “23 (Fed. Cir. 2007). In addition, a claim construction that gives meaning 

to all the terms of a claim is preferred over one that does not do so. See Merck & Co. 395 F.3d.at 

1372; Alza Corn. v. Mylan Labs. Inc., 391 F.3d 1365, 1370 (Fed. Cir. 2004) (&a) (affirming 

the district court’s rejection of both parties’ claim construction where those constructions meant 

that “the inclusion of the word ‘base’ in the claims would be redundant”). Differences between 

the claims are helpful in understanding the meaning of claim terms. Phillips, 415 F.3d at 1314. 

The preamble of a claim may be significant in interpreting a claim. Thus, “a claim 

preamble has the import that the claim as a whole suggests for it.” Bell Commc’ns Research, Inc. 

v. Vitalink Commc’ns Corp., 55 F.3d 615,620,34 U.S.P.Q.2d 1816, 1820 (Fed. Cir. 1995). If 

said preamble, when read in the context of an entire claim, recites limitations of the claim, or if 

15 
the claim preamble is “necessary to give life, meaning, and vitality” to the claim, then the claim 

preamble should be construed as if in the balance of the claim. Kropa v. Robie, 187 F.2d 150, 

152 (CCPA 1951) (Kropa); see also Rowe v. Dror, 112 F.3d 473,478 (Fed. Cir. 1997) (Rowe); 

Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 568 F.2d 1251, 1257 (Fed. Cir. 1989) 

(Corning Glass). Indeed, when discussing the “claim” in such a circumstance, there is no 

meaningful distinction to be drawn between the claim preamble and the rest of the claim, for only 

together do they comprise the “claim.” If, however, the body of the claim fully and intrinsically 

sets forth the complete invention, including all of its limitations, and the preamble offers no 

distinct definition of any of the claimed invention’s limitations, but rather merely states, for 

example, the purpose or intended use of the invention, then the preamble may have no 

significance to claim construction because it cannot be said to constitute or explain a claim 

limitation. See Rowe, 112 F.3d at 478; Corning Glass, 868 F.2d at 1257; Kropa, 187 F.2d at 152. 

In atnev Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999) 

(Pitnev Bowes), the preamble statement that the patent claimed a method of or apparatus for 

“producing on a photoreceptor an image of generated shapes made up of spots” was not merely a 

statement describing the invention’s intended field of use. Instead, the Court found that said 

statement was intimately meshed with the ensuing language in the claim; and that, for example, 

both independent claims concluded with the clause “whereby the appearance of smoothed edges 

are given to the generated shapes.” Id. Because this was the first appearance in the claim body of 

the term “generated shapes,” the Court found that the term could only be understood in the 

context of the preamble statement “producing on a photoreceptor an image of generated shapes 

made up of spots.” Id. Similarly, the Court found that the tern “spots” was initially used in the 

16 
preamble to refer to the elements that made up the image of generated shapes that were produced 

on the photoreceptor; that the term “spots” then appeared twice in each of the independent 

claims; and that the claim term “spots” referred to the components that together made up the 

images of generated shapes on the photoreceptor and was only discernible from the claim 

preamble. Id. The Court concluded that in such a case, it was essential that the preamble and the 

remainder of the claim be construed as one unified and internally consistent recitation of the 

claimed invention. Id. 

The specification of a patent “acts as a dictionary” both “when it expressly defines terms 

used in the claims” and “when it defines terms by implication.” Vitronics, 90 F.3d at 1582. For 

example, the specification “may define claim terms by implication such that the meaning may be 

found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1323, quoting 

-- Iredto Access, Inc. v. Echostar Satellite Corn., 383 F.3d 1295, 1300 (Fed. Cir. 2004). 

Importantly, a person of ordinary skill in the art is deemed to read the claim term not only in the 

context of the particular claim in which the disputed term appears, but in the context of the entire 

patent, including the specification. Phillips, 41 5 F.3d at 13 14. Whatever ambiguity may exist 

with respect to the claim language may be resolved by an examination of the specification. 

Teleflex, Inc. v. Ficosa N. Am. Cog., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The specification 

may assist in resolving ambiguity where the ordinary and accustomed meaning of the words used 

in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the 

words alone.”) 

A patentee may deviate from the conventional meaning of a particular claim term by 

making the intended meaning of a particular claim term clear (1) in the specification or (2) during 

17 
the patent’s prosecution history. Lear Siegler, Inc. v. Aeroquip Cog., 733 F.2d 881, 889 (Fed. 

Cir. 1984). If using a definition that is contrary to the definition given by those of ordinary skill 

in the art, however, the patentee’s specification must communicate a deliberate and clear 

preference for the alternate definition. Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 1368 

(Fed. Cir. 2003), citing Apple Computers, Inc. v. Articulate Sys., Inc., 234 F.3d 14,21 n.5 (Fed. 

Cir. 2000). In ascribing to an alternative definition rather than the ordinary meaning, the intrinsic 

evidence must “clearly set forth” or “clearly redefine” a claim term so as to put one reasonably 

skilled in the art on notice that the patentee intended to so redefine the claim term. Bell Atl, 

Network Servs., Inc. v. Covad Communs. Group. Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). 

The prosecution history, including “the prior art cited,” is “part of the ‘intrinsic 

evidence.”’ Phillips, 41 5 F.3d at 13 17. The prosecution history “provides evidence of how the 

inventor and the PTO understood the patent.” Id. Thus, the prosecution history can often inform 

the meaning of the claim language by demonstrating how an inventor understood the invention 

and whether the inventor limited the invention in the course of prosecution, making the claim 

scope narrower than it would be otherwise. Vitronics, 90 F.3d at 1582-83; see also Chimie v. 

PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the 

prosecution history in construing a claim is to exclude any interpretation that was disclaimed 

during prosecution”), quoting ZMI Corp. v. Cardiac Resuscitator Cop, 844 F.2d 1576, 1580 

(Fed. Cir. 1988); Southwall Techs., Inc. v. Cardinal IG Co., F.3d 1570, 1576 (Fed. Cir. 1995); 

-- see also Verizon Servs. COT. v. Vonage Holdings Corp., 503 F.3d 1295, 1306 (Fed. Cir. 2007), 

citing Microsoft Cop v. Multi-tech Svs., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We have 

held that a statement made by the patentee during prosecution history of a patent in the same 

18 
family as the patent-in-suit can operate as a disclaimer.”) The prosecution history includes any 

reexamination of the patent. Intermatic Inc. v. Lamson & Sessions Co., 273 F.3d 1355, 1367 

(Fed. Cir. 2001). 

In addition to the intrinsic evidence, the administrative law judge may consider extrinsic 

evidence when interpreting the claims. Extrinsic evidence consists of all evidence external to the 

patent and the prosecution history, including inventor testimony and expert testimony. This 

extrinsic evidence may be helpful in explaining scientific principles, the meaning of technical 

terms, and terms of art. See Vitronics, 90 F.3d at 1583; Markman, 52 F.3d at 980. However, 

“[elxtrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose 

of varying or contradicting the terms of the claims.” Markxnan: 52 F.3d at 98 1. Also, the Federal 

Circuit has viewed extrinsic evidence in general as less reliable than the patent and its 

prosecution history in determining how to read claim terms. Phillips, 4 15 F.3d at 13 18. In 

addition, while extrinsic evidence may be useful, it is unlikely to result in a reliable interpretation 

of patent claim scope unless considered in the context of the intrinsic evidence. Phillips, 41 5 

F.3d at 1319. 

In Nystrom v. Trex Company 424 F.3d 1 136 (Fed. Cir. 2005), the Court stated: 

. . . as explained in Phillips, Nystrom is not entitled to a claim 

construction divorced from the context of the written description 

and prosecution history. The written description and prosecution 

history consistently use the term “board” to refer to wood decking 

materials cut from a log. Nystrom argues repeatedly that there is 

no disavowal of scope of the written description or prosecution 

history. Nystrom’s argument is misplaced. Phillips, 415 F.3d at 

1321 (“The problem is that if the district court starts with the broad 

dictionary definition in every case and fails to hlly appreciate how 

the specification implicitly limits that definition, the error will 

systematically cause the construction of the claim to be unduly 

19 
expansive.”). What Phillips now counsels is that in the absence of 

something in the written description andlor prosecution history to 

provide explicit or implicit notice to the public- i.e., those of 

ordinary skill in the art- that the inventor intended a disputed term 

to cover more than the ordinary and customary meaning revealed 

by the context of the intrinsic record, it is improper to read the term 

to encompass a broader definition simply because it may be found 

in a dictionary, treatise, or other extrinsic source. Id. 

_. Id. at 1144, 1145. In Free Motion Fitness Inc. v. Cybex Int’l Inc., 423 F.3d 1343 (Fed. Cir. 

2005), the Court concluded that: 

under Phillim, the rule that “a court will give a claim term the full 

range of its ordinary meaning”, Rexnord Corp. v. Laitram Corp., 

274 F.3d 1336, 1342 (Fed.Cir. 2001), does not mean that the term 

will presumptively receive its broadest dictionary definition or the 

aggregate of multiple dictionary definitions. Phillips, 41 5 F.3d at 

1320- 1322. Rather, in those circumstances, where references to 

dictionaries is appropriate, the task is to scrutinize the intrinsic 

evidence in order to determine the most appropriate definition. 

- Id. at 1348, 1349. In Network Commerce, Inc. v. Microsoft COT. 422 F.3d 1353 (Fed. Cir. 

2005), the Corn concluded: 

As we recently reaffirmed in Phillips, “conclusory, unsupported 

assertions by experts as to the definition of a claim term are not 

useful to a court.” Phillips, 415 F.3d at 13 18. Here [expert] 

Coombs does not support his conclusion [the “download 

component” need not contain the boot program] with any 

references to industry publications or other independent sources. 

Moreover, expert testimony at odds with the intrinsic evidence 

must be disregarded. a. (“[A] court should discount any expert 

testimony that is clearly at odds with the claim construction 

mandated by . . . the written record of the patent.” (internal 

quotations and citation omitted). That is the case here. 

- Id. at 1361. 

Patent claims should be construed so as to maintain their validity. However, that maxim 

is limited to cases in which a court concludes, after applying all the available tools of claim 

20 
construction, that the claim is still ambiguous. Phillim, 41 5 F.3d at 1327. If the only reasonable 

interpretation renders the claim invalid, then the claim should be found invalid. See, e.g., Rhine 

v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). 

1. The Claimed Term “Segment Of A Signal” 

Complainant argued that the claimed term “segment of a signal” is a “set of samples of 

the signal, or a portion of the signal.” (CBr at 22.) 

Respondents Global Locate argued that a “segment of a signal” is “a portion of a signal.” 

(RBr at 18.) 

The staff agreed with respondents and argued that a “segment of a signal” is “a portion of 

a signal.” (SBr at 16.) 

Asserted claims 1, 10, 17, and 64 of the ‘216 patent include the phrase “segment of a 

signal.” For example, the first element of claim 1 recites “a receiver for receiving a first segment 

of a signal, and a second segment of the signal, the first and second segments representing 

separate and distinct periods of time ...” (CX-1 at 19:30-33 (emphasis added).)’ 

It is undisputed among the parties that a “segment of a signal” is at least “a portion of a 

signal.” (CBr at 22; RBr at 18; SBr at 16.) Moreover, the specification confirms that a 

“segment” of a signal is indeed a portion of the signal that the receiver is configured to receive. 

’ In claims 10, 13, and 17 the term in issue is recited in “a receiver for receiving a first 

segment of a signal and a second segment of the signal, . . . the first and second segments 

representing separate and distinct periods of time.” In claim 22, said term is recited in “means 

for receiving a signal of interest comprising a first segment and a second segment of the signal of 

interest, each segment representing a distinct period of time.” In claim 43, said term is recited in 

“a receiver configured to detect a first segment of a signal of interest and a second segment of the 

signal of interest, and the first segment and the second segment representing distinct periods of 

time.” In claims 64 and 84, said term is recited in “receiving a first segment of a signal of 

interest; receiving a second segment of the signal of interest.” 

21 
Thus, the specification repeatedly describes capturing sample “segments” of a continuously 

transmitted GPS satellite signal. Describing the signal capture process, for example, the 

specification states: 

In accordance with the purpose of the invention as broadly 

described herein, there is provided a signal detector configured to 

combine the results of performing correlation analysis on segments 

of samples of the received signal that may have non-uniform 

lengths and that may have been obtained over different and 

non-overlapping periods of time. 

*** 

The GPS processor sends out data capture commands to the 

sampling circuitry and the matched filter directs the sampling 

circuitry to capture a segment of samples, and directs the matched 

filter. to process the segment of samples. 

*** 

As illustrated [in Fig. 21, the signal detector comprises a receiver 

30 configured to receive segments of a signal. The segments may 

be of nonuniform-length and may be disjoint and separated by 

arbitrary periods of time. The signal may comprise a signal of 

interest perturbed by noise. 

*** 

The RF receiver section 72 [of Fig. 41 demodulates the received 

signal to obtain a baseband signal which is provided to the 

sampling circuitry 74 over signal line 86. The sampling circuitry 

74 provides, responsive to timing signals produced by the timing 

circuitry 76, a segment of samples of the baseband signal taken 

over a defined sampling window. The segment of samples is 

provided to the matched filter 82 over signal line 88. The matched 

filter 82 processes the segment of samples in accordance with a 

plurality of PN code, Doppler shift, and code phase hypotheses. 

*** 

The GPS processor 84 issues data capture commands on signal line 

22 
92 to the sampling circuitry 74 and the matched filter 82 directs the 

sampling circuitry 74 to capture a segment of samples, and directs 

the matched filter 82 to process the segment of samples. 

(CX-1 at 3:66-4:4; 4:40-44, 6: 1-5; 6:67-7-10; 7-3 1-36.) 

Based on the foregoing, the administrative law judge finds that the claimed term in issue 

should be construed to mean “a portion of a signal.” 

Regarding complainant’s argument that a “segment of a signal” could also be “a set of a. 

samples of the signal,” complainant bases its construction on the following passage from the 

specification (a portion of which is reproduced supra): 

In accordance with the purpose of the invention as broadly 

described herein, there is provided a signal detector configured to 

combine the results of performing correlation analysis on segments 

of samples of the received signal that may have non-uniform 

lengths and that may have been obtained over different and 

non-overlapping periods of time. In one embodiment, the segments 

are obtained during sampling windows of arbitrary length and at 

arbitrary times, and the results of processing the segments are 

successively combined until a threshold signal to noise ratio has 

been achieved. 

(CX-1 at 3:66-4:9) (emphasis added) (CBr at 23.) Complainant argued that said passage 

demonstrates that “segments of samples of the received signal” is the same as “segment of a 

signal.” Contrary to complainant’s argument, the administrative law judge finds that the passage 

cited, supra, merely indicates that the segments of the signal that are subject to the correlation 

analysis are samples of the signal, (i.e. “segments of samples of the received signal”) and not the 

entire signal. The administrative law judge finds that said passage does not define a single 

“segment of a signal” to mean the “set of samples of the signal.” 

23 
2. Claimed Terms “Separate And Distinct Periods of Time” And “Segments Representing 

Separate And Distinct Periods of Time” 

Complainant argued that the claimed term “separate and distinct periods of time” should 

be construed to mean “unique time periods.” (CBr at 23.) 

Respondents Global Locate argued that the phrase “segments representing separate and 

distinct periods of time” should be construed to mean “two portions of the signal captured during 

non-overlapping time periods that are set apart by a portion of intervening signal.” (RBr at 19.) 

The staff agreed with respondents. (SBr at 16-17.) 

The claimed terms in issue appear in asserted claims 1, 10 and 17. (CX-1.) The parties 

agree that the “separate and distinct periods of time” limitation requires that the segments of the 

signals are captured during non-overlapping periods of time. (CBr at 23-24; RBr at 20.) The 

dispute between the parties is whether the “separate and distinct periods of time” limitation 

requires that the signal segments be set apart by a portion of intervening signal, i.e. whether the 

claims cover the situation where the captured signal segments are abutting. (See CBr at 24; RBr 

at 19.) 

The analysis begins with the language of the claims, which requires that the first and 

second segments not only represent “distinct periods of time,” but also represent “separate” time 

periods. Thus, the administrative law judge finds that the claims include two requirements, y&. 

the periods of time must be both “separate” and “distinct.” See Merck & Co., supra. The 

administrative law judge finds that to limit “separate and distinct periods of time” to only 

“unique time periods,” as complainant proposed, would ignore the independent meanings of 

“separate” and “distinct.” 

24 
In addition an examination of a pair of non-asserted claims in the ‘2 16 patent is found to 

provide further context. In independent claim 22, the claim language requires that “each [signal] 

segment representls] a distinct period of time.” (CX-1 at 21 :36 (emphasis added).) In claim 23, 

which is dependent on claim 22, there is a further requirement that “the time period for the first 

segment and the time period for the second segment are separate, nonoverlamina time periods.” 

(Td. at 21 :5 1-53 (emphasis added).) The administrative law judge finds that claim 23, by using 

the terms “separate” and “nonoverlapping” together to describe both of the time periods, implies 

that the terms “separate” and “nonoverlapping” should each be given their own independent 

meanings. See Merck, 395 F.3d at 1372. If “distinct” means that time periods are unique and 

“nonoverlapping” means that the time periods do not overlap, the administrative law judge finds 

that “separate” must have a meaning that is different from “unique” and “overlapping.” 

Otherwise, “separate” has no meaning in the context of claim 23 and would effectively be read 

out of the claim. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (rejecting 

a claim construction that would read claim elements out of the claim). 

The administrative law judge finds that the specification describes the problem to be 

solved, i.e. when a receiver is only able to capture small segments of signals over intermittent 

periods of time. (CX-1 at 2:43-3:15.) The specification gives the example of a mobile wireless 

phone with an integrated GPS receiver. (a at 2:46-5 1 .) The GPS receiver may only be able to 

capture signal segments while the phone is not transmitting. (Id.) This an example of how 

“external constraints limit the size and occurrence of the sampling period.” (Id. at 2:45-46.) 

To solve that problem, the specification teaches how to combine the small signal 

segments captured over different periods of time. (a generally CX- 1 .) The specification 

25 
explains that the signal samples may be “obtained over different and non-overlapping periods of 

time.” (Id. at 4:4.) In describing the “Field of the Invention,” the specification states that the 

signal segments of the “invention” are “separated in time:’’ 

This invention relates to the field of signal detection using 

correlation analysis, and more specifically, to correlation analysis 

in which the results of analyzing segments of samples semrated in 

time and possibly having non-uniform lengths are combined to 

achieve a greater effective signal to noise ration (SNR). 

(Id. at 1 :9-14 (emphasis added).) Further, the administrative law judge finds that the 

specification & describes the situation where the captured signal segments to be combined are 

separated by an intervening portion of signal. Moreover, the administrative law judge finds 

nothing in the specification which suggests that a receiver could capture first and second signal 

segments that are abutting. To the contrary, the administrative law judge finds that the 

specification is focused only on solving the problem of detecting a signal of interest when the 

receiver can only capture signal segments that are not abutting, and resolves any potential 

ambiguity found in the phrase “separate and distinct.” 

Based on the foregoing, the administrative law judge construes “segments representing 

separate and distinct periods of time” to mean “two portions of the signal captured during nonoverlapping time periods that are set apart by a portion of intervening signal.” 

3. The Claimed Term “Pseudo-Noise” 

Complainant argued that the term “pseudo-noise” should be construed to mean “a noise 

that has a statistical distribution that is different from ideal thermal or white noise.” (CBr at 3 1 .) 

Respondents Global Locate argued that the term “pseudo-noise” should be construed to 

mean “a digital signal other than the signal of interest.” (RBr at 26.) 

26 
The claimed term “pseudo-noise7’ is found in asserted claim 1. The term appears in the 

phrase “the signal comprising a signal of interest perturbed by noise or pseudo-noise.” (CX-1 at 

19:33-34 (emphasis added).) The context of the term in the claim language demonstrates that 

“pseudo-noise” is part of the received signal that is not the signal of interest. 

The administrative law judge finds that said understanding is confirmed by the 

specification, which explains that each GPS satellite transmits its own unique signal, and the 

receiver receives a signal made up of a mixture of the transmissions from various satellites: 

Each satellite transmits a signal modulated with a unique 

pseudo-noise (PN) code. Each PN code comprises a sequence of 

1023 chips which are repeated every millisecond consistent with a 

chip rate of 1.023 MHZ. Each satellite transmits at the same 

frequency. For civil applications, the frequency is known as L1 

and is 1575.42 MHZ. The GPS receiver receives a signal which is 

a mixture of the transmissions of the satellites that are visible to the 

receiver. 

(CX-1 at 1 :22-29.) Contained within the “mixture of the transmission^'^ are the signal of interest 

and the noise or pseudo-noise, which in this case are the signals transmitted by the other 

satellites. The administrative law judge therefore construes “pseudo-noise” to mean “a signal 

other than the signal of interest.” 

The administrative law judge rejects complainant’s proposed construction for multiple 

reasons. Complainant ignored the intrinsic evidence when arguing its position, instead choosing 

to rely solely on the opinion of its expert. Additionally, complainant’s proposed construction 

contains terms that are neither found nor explained in the specification, such as “statistical 

distribution” and “ideal thermal or white noise.” Complainant however fails to explain what 

these technical terms mean or why the evidence mandates their inclusion in the construction of 

27 
“pseudo-noise.” Complainant’s construction also fails to accomplish the goal of clarifying the 

claim language. See US. Surgical Coy., sunra. 

Respondents, in support of their proposed construction, which specified that the signal be 

a digital signal, argued that the ‘2 16 specification discloses that “[elach satellite transmits a 

signal modulated with a unique pseudo-noise (PN) code” (CX-1 at 1 :22-23); that “[elach PN 

code comprises a sequence of 1023 chips which are repeated every millisecond consistent with a 

chip rate of 1.023 MHz;” that a “GPS receiver receives a signal which is a mixture of the 

transmissions of the satellites that are visible to the receiver;” (CX-1 at 1:27-29); and that “in 

accordance with a spread spectrum environment, the signal may comprise the combination of 

multiple signals of interest each encoded using one of a plurality of pseudo-noise (PN) codes. In 

this case, other signals appear as noise to a particular signal of interest.” (CX-1 at 6:6-10.) (RBr 

at 26-7.) However, respondents have cited no language in the ‘2 16 patent whereby the psuedonoise as claimed must be limited to digital signals.’ 

4. The Claimed Term “Hypothesis” 

Complainant argued that the claimed term “hypothesis” should be construed to mean “a 

quantity characterized by one or more predicted parametric values of interest, such as PN code, 

Doppler shift and code phase.” (CBr at 19.) 

Respondents Global Locate argued that the tern “hypothesis” should be construed to 

mean “a signal generated by the receiver representing a theory of how the transmitted positioning 

signal would appear under a given set of parameters (G, PN code. Doppler shift, and/or code 

Respondents have argued that ““[lo issue” turns on the construction of the claimed term 9 

“psuedo-noise”. On this point the staff in its post hearing brief and reply brief did not propose a 

construction for “psuedo-noise.” 

28 
phase.)” (FU3r at 32.) 

The staff did not offer a construction for the claimed term but instead argued that 

regardless of the specific construction proposed by complainant and respondents, the same 

hypothesis must be tested against each of the claimed first and second signal segments received. 

(SBr at 12.) 

The term “hypothesis” is found in asserted claims 1, 10, 1 1, 17, 19,64,65,69, and 70. 

For example, the term appears in claim 1 as follows: 

a correlator coupled to the receiver for deriving first correlation 

data, representative of the correlation between the first segment 

and a hypothesis, and second correlation data representative of the 

correlation between the second segment and the hypothesis 

(CX-1 at 19:35-39 (emphasis added).) 

The parties have two areas of dispute with regard to “hypothesis.” First, they dispute 

whether “a hypothesis” used to derive the first correlation data must be identical to “the 

hypothesis” used to derive the second correlation data.” Respondents and the staff argued that “a 

hypothesis” must be identical to “the hypothesis” (RBr at 13-15; SBr at 12), while complainant 

argued that “a hypothesis” does not need to be identical to “the hypothesis.” (CRBr at 20.) 

Respondents Global Locate rely heavily on an antecedent basis argument, stating that 

“the hypothesis” must be identical to “a hypothesis” as a matter of “hornbook patent law.” 

(RRBr at 14.) The use of antecedent basis, while not provides a strong argument 

lo While claim 1 is used as an example, the other asserted claims are drafted similarly in 

terms of antecedent basis. 

l1 See Micromocessor Enhancement Corn. v. Texas Instruments Inc., 520 F.3d 1367, 

1375-76 (FT. Cir. 2008). 

29 
for finding that the hypotheses are identical. 

1348, 1356 (Fed. Cir. 2003) (“[Ilt is a rule of law well established that the definite article ‘the’ 

particularizes the subject which it precedes. It is a word of limitation as opposed to the indefinite 

or generalizing force of ‘a’ or ‘an.’ ” (citations omitted)). 

Warner-Lambert Co. v. Apotex Corn., 3 16 F.3d 

The claims require that the same hypothesis must be tested against each of the first and 

second segments of the received signal. Moreover all the asserted ‘216 claims have this 

requirement. Claims 10 and 17 require “deriving first correlation data representative of the 

correlation between the first segment and a combined PN code and code phase hypotheses and 

second correlation data representative of the correlation between the second segment and the 

combined PN code and code phase hypothesis.” (CX-1 at 20:3-26,20:59-21: 13 (emphasis 

added).) Claim 64 recites “deriving a first correlation data representative of the correlation 

between the first segment and a hypothesis; deriving a second Correlation data representative of 

the correlation between the second segment and the hypothesis.” (CX-1 at 23:63-67 (emphasis 

added) .) 

The administrative law judge finds that the claims thus require, for example, that if the 

hypothesis tested against the first segment of received signal is that the signal has the unique PN 

code of satellite number 1, that the receiver began capturing the signal at the first bit of the 

repeating 1023 bit code (e.g., a code phase beginning at the first bit), and that the Doppler 

frequency shift of the received signal is zero kilohertz, then the hypothesis tested against the 

second segment must also be that the signal’s PN code is that of satellite number 1, the code 

phase begins at the first bit, and the Doppler shift is zero kilohertz. Thus, the administrative law 

judge finds that changing any one of the parameters that comprised the hypothesis tested against 

30 
the first segments before testing it against the second segment would violate the requirement that 

“the hypothesis” be tested against the second segment. 

The administrative law judge finds that an examination of the specification confirms that 

the hypotheses must be identical consistent with the use of “a hypothesis” and “the hypothesis” 

in the language of the asserted claims. In describing the combining process, the specification 

clearly shows that the correlation takes place between the signal segments and the same 

hypotheses. The correlation results are stored in arrays that correspond to the different possible 

PN code, code phase, and Doppler shift hypotheses. (CX-1 at 4:28-36.) The arrays are arranged 

with the each row corresponding to the possible Doppler shift hypotheses and each column 

corresponding to the possible code phase hypotheses. (Id.) There is a different array for every 

possible PN code hypothesis. (Id) When the correlation data in the arrays is combined, it is done 

by row, and done in a way to match the same PN code and Doppler shift hypotheses. Thus the 

specification states: 

Numeral 120 identifies one of the arrays in the plurality of 

cumulative correlation arrays which are maintained. The particular 

array which is identified is the one corresponding to PN code 

hypothesis Pni. These arrays are assumed to have been initially set 

equal to the correlation arrays derived from a first segment of 

samples. Numeral 122 identifies the corresponding one of the 

arrays in the plurality of correlation arrays which are derived from 

a second set of samples. Again, this array corresponds to the PN 

code hypothesis Pni. In one implementation, the first segment of 

samples is obtained during a first time period, and the second set of 

samples is obtained during a subsequent non-consecutive time 

period. 

The row 124 from array 122 is combined with the row 126 from 

array 120 in the manner shown. Both rows are assumed to 

correspond to the same Doppler shift hypothesis, DPi. 

31 
(CX-1 at 8:32-45 (emphasis added).) In addition, the ‘216 specification teaches that correlation 

results should be “grouped” by the hypothesis used to generate them, and that only those results 

generated by the same hypothesis should be combined. Thus it states: 

[Tlhe correlation arrays for a segment are grouped by PN code 

hypothesis, and by Doppler shift hypothesis for a given PN code 

hypothesis. The result is that each grouping corresponds to a 

particular combination of PN code hypothesis and Doppler shift 

hypothesis. In this embodiment, the correlation arrays are 

combined one grouping at a time. 

(CX-1 at 753-59 (emphasis added).) The specification also discusses the accumulation of two 

separate segments of signal by reference to Figure 13. Thus, the specification states that “the 

process begins at step 370, in which _a PN code hypothesis is selected.” (CX-1 at 17:42-44 

(emphasis added).) IdentifLing the correlation results to be combined, the patent states that “in 

step 372, the cumulative correlation array for the selected PN code hypothesis is obtained, and in 

step 374, the incremental correlation array for the selected PN code hypothesis is obtained.” 

(CX-1 at 1 7:44-46.)12 Hence, the administrative law judge finds that the specification reinforces 

the reading of the plain claim language that the hypotheses are identical. 

Based on the foregoing, the administrative law judge rejects the complainant’s proposed 

construction, which allows for a change in the hypothesis between signal segments and finds that 

l2 As further support for the argument that the two hypotheses must be identical, the only 

equation disclosed in the specification for calculating the code phase difference would not work 

if the Doppler shift hypotheses used to generate the correlation data for the two signals were 

different. (See RFF 587 (undisputed); CX-1 at 5: 16-27.) A construction that renders the claimed 

invention inoperable must “be viewed with extreme skepticism.” Talbert Fuel Sys. Patents Co. v. 

Unocal Corp., 275 F.3d 1371,1376 (Fed. Cir. 2002), vacated and remanded on other mounds, 

537 US. 802 (2002). 

32 
“a hypothesis” used to derive the first correlation data must be identical to “the hypothesis” used 

to derive the second correlation data. 

Complainant appears to agree with respondents and staff when it states that “SiW does 

not disagree with the fact that the same hypothesis must be tested against each of the claimed 

first and second signals received.” (CRBr at 20.) Yet, complainant argued that the specification 

makes clear that the hypothesis used in the correlation with the first signal segment can be 

different from the hypothesis used in the correlation with the second segment. While 

complainant presented multiple arguments in an attempt to support its position, the 

administrative law judge finds that none of them succeeded in overcoming the plain language of 

the claims and the clear descriptions in the specification requiring that the hypotheses used in the 

correlation process be the same for the first signal segment and second signal segment. 

Complainant also argued that the specification supports the use of non-identical 

hypotheses in deriving the first and second correlation data and relied on the following: 

In one implementation, for each segment of samples, the matched 

filter outputs correlation data derived by correlating various 

combinations of PN code, Doppler shift and code phase hypotheses 

with the segment of samples. According to this implementation, 

the correlation data can be grouped into groupings which 

correspond to various combinations of specific hypotheses and 

ranges of hypotheses. In one implementation example, the 

correlation data comprises a plurality of arrays, wherein each array 

corresponds to a PN code hypothesis, each row of an array 

corresponds to a Doppler shift hypothesis, each column of an array 

corresponds to a code phrase hypothesis, and each entry in the 

array is a measure of the degree to which the combined PN code, 

Doppler shift, and code phrase hypothesis corresponding to the 

entry correlates to the samples. 

33 
(CX-1 at 4:22-35.) (emphasis added by complainant.) (CRBr at 20.) Complainant’s emphasized 

statement, however, which states that “the correlation data can be grouped into groupings which 

correspond to various combinations of specific hypotheses and ranges of hypotheses,” does not 

describe the use of different hypotheses to derive the first and second correlation data. To the 

contrary the administrative law judge finds that the statement describes the groupings of 

correlation data after the correlation takes place. The administrative law judge finds that this is 

clear when the specification, supra, states that the “correlation data can be grouped[ .]” (Id. 

(emphasis added).) Thus, the passage explains that the correlation data may be grouped to 

correspond to various combinations of hypotheses and ranges of hypotheses. The administrative 

law judge finds nothing in the quoted passage, supra, which provides support for complainant’s 

argument that a range of hypotheses may be used when deriving the correlation data. 

The second dispute among the parties relates to whether a hypothesis is a quantity or a 

signal. Complainant argued that a hypothesis is a quantity (CBr at 19) while respondents argued 

that a hypothesis is a signal. (RBr at 32.) 

The administrative law judge finds that the specification describes three different kinds of 

hypotheses: a PN code hypothesis, a code phase hypothesis, and a Doppler shift hypothesis. It is 

undisputed, as established by the joint stipulation regarding technology (SX-2), that with respect 

to the GPS receiver: 

After receiving the baseband signal from the RF Front End, the 

Baseband Processor must identi@ the visible satellite sending the 

signal, and estimate the distance between the receiver and this 

satellite. The Baseband Processor does this for the signal from 

each of several visible satellites. Each estimate is based on the 

time information extracted from the received signal. In order to 

make the distance estimate, the Baseband Processor must detect the 

34 
unique PFW code broadcast by each satellite. To “acquire” a 

satellite, the Baseband Processor has to roughly identify the signal 

transit time (hence the distance) from the satellite to the receiver 

and the shift in the frequency of the carrier signal due to the 

Doppler shift. To synchronize to the start of the GPS signal, the 

Baseband Processor tests a large number of hypothetical sipnals, 

loosely termed “hypotheses,” which are constructed from selected 

combinations of possible PRN codes, code phases and Doppler 

values. Once the Baseband Processor has determined which 

hypothesis is most likely correct based on correlation of the 

received signal with the hyuotheses, the satellite associated with 

the PRN code is then said to have been “acquired.” 

(emphasis added). As is seen Erom the foregoing a hypothesis is a signal generated by the 

receiver. Therefore, the administrative law judge construes “hypothesis” to mean “a signal 

generated by the receiver characterized by one or more predicted parametric values of interest, 

such as PN code, Doppler shift and code phase.” 

SiW argued that respondents’ construction is somehow inconsistent with Figure 8. (CBr 

at 20.) However, SiRF’s expert Bartone testified: 

Q. 

out of the Doppler shift generator, right? 

One thing we know is there is an arrow labeled 188 corning 

A. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

Yes. 

And that arrow is. the patent says, is a signal line, right? 

If it says that. yes, I would believe that. 

Well, if you need to check, it is at column 10, line 34. 

No, that’s okay. 

That line. that signal line 188 sends a signal, right? 

- Yes. 

It sends a signal generated by the receiver, right? 

35 
Q. 

A. Yes. 

Q. 

A signal representing a theory about Doppler, right? 

There is also line 90. Do you see that arrow? 

A. Yes. 

Q. 

column 10, line 59. 

That’s also a signal line, right? If you need to check, it is at 

A. I’m sorry, which column? 

Q. Column 10, line 59, sir. 

A. 

Q. 

A. Yes. 

Yes, he uses that line and calls it a signal line. 

So line 90 of figure 8 is a signal line, right? 

Q. 

A. 

QA. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

And it transmits a signal, right? 

Yes. 

A signal generated by the receiver, right? 

Yes. 

A signal representing a theory about PN code, right? 

Yes. 

There is also an arrow between box 192 and 194, right? 

Yes. 

And that’s a signal line, right? 

Yes. 

36 
Q. It sends a signal, right? 

A. From 192 to 194, yes. 

Q. And that signal represents a theory about code phase, right? 

A. That’s part of the information within that signal. 

(Tr. at 1266-1268 (emphasis added).) Thus as to Figure 8, Bartone conceded that the Doppler 

shift hypothesis is a signal generated by a receiver and applied on signal line 188 representing a 

theory of how the transmitted positioning signal is affected by Doppler; that the PN code 

hypothesis is applied as a signal generated by a receiver and applied on signal line 90 

representing a theory of what the transmitted positioning signal’s PN code will be; and that the 

PN code phase hypothesis is applied as a signal generated by a receiver on the signal line 

between boxes 192 and 194, and represents a theory of what the transmitted positioning signal’s 

PN code phase will be. 

5. The Claimed Term “Correlation Data” 

Complainant argued that the claimed term “correlation data” should be construed to mean 

“the correlation function and the parameter values of the correlation function.” (CBr at 24.) 

Respondents Global Locate argued that the claimed term “correlation data” should be 

construed to mean “the numerical result of mathematically comparing a segment of received 

signal against a hypothesis.” (RBr at 28.) 

The staff agreed with respondents. (SBr at 18- 19.) 

The claimed term “correlation data” appears in asserted claims 1 , 10, 17- 19, 64,69, and 

70. The context in which “correlation data” appears in the claims provides guidance as to its 

meaning. For example, claim 1 recites: 

37 
a correlator coupled to the receiver for deriving first correlation 

-- data, representative of the correlation between the first segment 

and a hvpothesis, and second correlation data representative of the 

correlation between the second segment and the hypothesis 

(CX-1 at 19:35-39 (emphasis added).) The administrative law judge finds that the claim 

language makes clear that the “correlation data” must be the data that represents the correlation 

between a signal segment and a hypothesis. See Phillips, 415 F.3d at 1314 (“[Tlhe context in 

which a term is used in the asserted claim can be highly instructive.”). Further, in reciting “a 

correlator coupled to the receiver for derivina first correlation data,” (CX-1 at 19:35-36 

(emphasis added)) the claim language explains that the correlation data is derived, meaning it is 

the result of the correlation. 

The specification also explains that the correlation data is the result of the correlation 

between a signal segment and a hypothesis. The “Summary of the Invention” section begins by 

stating: 

In accordance with the purpose of the invention as broadly 

described herein, there is provided a signal detector configured to 

combine the results of performing correlation analysis on segments 

of samples of the received signal that may have non-uniform 

lengths and that may have been obtained over different and 

non-overlapping periods of time. 

(CX-1 at 3:66-4:4.) The “Summary of the Invention” section goes on to state: 

In one implementation, for each segment of samples, the matched 

filter outputs correlation data derived by correlating various 

combinations of PN code, Doppler shift and code phase hvotheses 

with the segment of samples. 

(Id. at 4:22-25 (emphasis added).) In fact, the parties agree that the specification teaches that 

correlation data is the output derived from the correlation between a signal segment and a 

38 
hypothesis. (RFF 536-37 (undisputed).) Moreover, the parties are in agreement on the meaning 

of “correlation.” The parties jointly stated that “correlation” means “a computational method of 

checking the received signals against the hypotheses to determine which hypothesis is most like 

the received signal being examined.” (SX-2, at 5.) 

Based on the foregoing, the administrative law judge construes “correlation data” to mean 

“the numerical result from the computational method of checking the received signals against the 

hypotheses to determine which hypothesis is most like the received signal.” 

6. The Claimed Term “Combiner” 

Complainant argued that the claimed term “combiner” should be construed to mean “a 

device which combines correlation data with cumulative correlation data accumulated for 

previous segments.” (CBr at 21 .) 

Respondents Global Locate argued that the term “combiner” should be construed to mean 

“a device that performs the determining, adjusting and combining features recited in the claim.” 

(RBr at 39.) 

The staff agreed with respondents and argued that the term “combiner” should be 

construed to mean “a device that performs the determining, adjusting and combining features 

recited in the claim.” (SBr at 13.) 

The claimed term “combiner” appears in independent claims 1 and 10. In each claim, the 

“combiner” is defined by the functions that it performs, namely determining, adjusting, and 

combining. For example, claim 1 recites: 

a combiner coupled to the correlator for determining a parameter 

difference between the first and second correlation data, for 

adjusting a selected one of the first and second correlation data 

39 
responsive to the, parameter difference, and Combining the adjusted 

data with the other of the first and second correlation data to obtain 

cumulative correlation data useful for detecting the signal of 

interest or a parameter of the signal of interest. 

(CX-1 at 19:39-47 (emphasis added).) The administrative law judge finds that the claim 

language itself provides guidance as to what the term “combiner” means. See Phillips, 41 5 F.3d 

at 13 14 (“Quite apart from the written description and the prosecution history, the claims 

themselves provide substantial guidance as to the meaning of particular claim terms.”) Thus the 

administrative law judge finds that to a person of ordinary skill in the art, the plain meaning of 

the term “combiner,” as that term is used in the ‘216 patent’s asserted claims, is a device that 

must perform each of the determining, adjusting, and combining functions recited in the claim. 

Further, the administrative law judge finds that the specification discloses that the 

combiner is the device that performs the claimed functions of determining, adjusting, and 

combining. Thus, the specification explains the device that performs the determining, adjusting 

and combining on correlation results is “GPS processor 84” which “combines these correlation 

arrays as additional segments are captured.” (CX-1 at 759-62.) In performing the combiner 

steps, GPS processor 84 uses “an algorithm that accounts for the differing code phases between 

the segments even though the actual code phases are unkno~n.” (CX-1 at 85-7.) 

The ‘216 specification further confirms that a “combiner” performing each of the 

“determining,” “adjusting,” and “combining” actions is what the ‘2 16 inventor had in mind for 

his claimed invention. Thus, the problem the inventor was attempting to solve was the difficulty 

of combining correlation data from “segments of samples captured over different periods of time 

because each is subject to a different code phase which must be accounted for before the 

40 
segments can be combined, and these code phases are unknown.” (CX-1 at 2:59-63.) The ‘216 

solution is to combine Correlation data for different segments “using an algorithm that allows for 

the differing code phases between the segments to be accounted for even though the actual code 

phases are unknown.” (CX-1 at 4:63-66.) The claimed “combiner” executes that algorithm. 

Thus, the specification states that “the code phase difference is determined from the following 

equation: ACP= [(FpN + D) x AT] modulo 1 mS” (CX-1 at 5: 16-1 8), and “[tlhis code phase 

difference is then used to combine the rows for the correlation arrays.” (CX-1 at 5:44-45.) 

Similarly, in describing the “Correlation Process,” the specification explains the 

combining process is comprised of “determining,” “adjusting” and “combining” steps. (CX- 1 at 

8: 10-2 1 .) It states that “the code phase difference corresponding to a row is derived from the 

total time offset between the start of the first segment and the start of the second segment, and the 

Doppler shift hypothesis corresponding to a row.” (CX-1 at 8: 13-1 6.) Thus, the combiner 

determines a parameter difference between the first and second correlation data. ‘The 

specification further states that “[a] circular shift of the row for the second segment is then 

performed, with the amount of the shift being derived from the code phase difference which has 

been determined.” (CX- 1 at 8: 17- 19.) Hence, the combiner adjusts the second correlation data 

responsive to the parameter difference it has determined. Finally, the specification states that 

“[tlhe entries in the shifted row are then added to the corresponding entries of the corresponding 

row in the cumulative array.’’ (CX-1 at 8:19-21.) Thus the combiner combines the adjusted data 

with the unadjusted data. 

41 
The administrative law judge further finds that the specification repeatedly and 

consistently teaches that the way to combine a first correlation data with a second correlation data 

is by this three step, “determining,” “adjusting,” “combining” process: 

As indicated by identifying numeral 132 [in Fig. 61, the code phase 

difference, ACP, defining the code phase difference between the 

start of the first and second segments is determined. The row 124 

obtained from array 122 is then circularly shifted by an amount 

derived from ACP. Such is indicated by identifying numeral 134. 

The entries in the shifted row are then added to corresponding 

entries in row 126. 

*** 

In step 354 [of Fig. 121, the code phase difference, ACP, between 

the two portions is determined.. . . In step 356, the portion of the 

incremental correlation data obtained in step 352 is adjusted 

responsive to the code phase difference between the two portions 

determined in step 354.. . . In step 358, the portion of the 

cumulative correlation data obtained in step 350 is updated with 

the adjusted data determined in step 358. 

*** 

[I]n step 378 (Fig. 13A), the code phase difference, ACP, for the 

selected Doppler shift hypothesis is determined.. . . In step 3 80, the 

corresponding row of the incremental array obtained in step 374 is 

circularly shifted by an amount derived from the code phase 

difference determined in step 378.. . . Then, in step 3 82, the shifted 

row from step 380 is added element by element to the 

corresponding row in the cumulative array. 

(CX-1 at 851-58, 175-29, 17:48-60.) See also: 

This code phase difference is then used to combine the rows for the 

correlation arrays. In the implementation example, the row of 

correlation data for the second segment is circularly shified by the 

code phase difference. Then, the shifted row is added to the 

corresponding row of cumulative correlation data, one data 

element at a time. This process is then repeated for each of the 

rows of each of the arrays for the second segment. The result is a 

42 
plurality of cumulative correlation arrays which combine the 

results of the first and second segments. 

*** 

In one embodiment, a plurality of cumulative correlation arrays are 

maintained, which are initially set equal to the correlation arrays 

derived from a first segment of samples. The correlation arrays for 

a second segment of samples are then combined with the 

cumulative correlation arrays one row at a time. According to this 

embodiment, the code phase difference corresponding to a row is 

derived from the total time offset between the start of the first 

segment and the start of the second segment, and the Doppler shift 

hypothesis corresponding to the row. A circular shift of the row 

for the second segment is then performed, with the amount of the 

shift being derived from the code phase difference which has been 

determined. The entries in the shifted row are then added to the 

corresponding entries of the corresponding row in the cumulative 

arrays. 

(CX-1 at 5: 44-53, 8:7-21 (emphasis added).) In view of the foregoing the administrative law 

judge finds that the specification is consistent with the plain language of the claims. 

Based on the foregoing, the administrative law judge therefore finds that the term 

“combiner” should be construed to mean “a device that performs the determining, adjusting and 

combining features recited in the claim.” 

Complainant argued that the construction offered by respondents is improper because it is 

circular, i.e., “if one replaces the term ‘combiner’ in the relevant claims with respondents’ 

construction, then each of the components of this claim element following the word ‘combiner’ 

will appear twice because the word ‘combiner’ will be replaced by the very language which 

follows this word in this claim element.” (CBr at 22.) However, the administrative law judge 

finds that the “combiner” in the ‘216 patent is defined by the claimed functions that it performs. 

43 
Hence, the administrative law judge finds that a proper construction must include the claimed 

functions. 

Complainant’s proposed construction for “combiner” does reflect a passage in the 

specification describing the combiner. (& CX-1 at 6: 19-22.) However, the administrative law 

judge finds that complainant’s proposed construction fails to provide the full context of the 

functions that the combiner must perform, thus improperly reading out the three functional 

limitations imposed by the claim language. See Bicon, 441 F.3d at 951 (rejecting a claim 

construction that would read claim elements out of the claim). 

Further, by taking the construction directly from the specification, the administrative law 

judge finds that the complainant’s construction improperly imports a limitation from the 

specification into the claims. Phillips, 41 5 F.3d at 1323 (“[Allthough the specification often 

describes very specific embodiments of the invention, we have repeatedly warned against 

confining the claims to those embodiments”). He finds nothing in the claim language that 

requires correlation data to be combined with cumulative correlation data for previous segments. 

To the contrary, the claim language in claim 1 only requires that first and second correlation data 

be combined to obtain cumulative correlation data. (See CX- 1 at 19:44-47) (“combining the 

adjusted data with the other of the first and second correlation data to obtain cumulative 

correlation data”). 

7. The Claimed Term “Code Phase Difference” 

Complainant argued that the claimed term “code phase” should be construed to mean “the 

delay, in terms of chips or fractions of chips, that a satellite transmission experiences as it travels 

44 
between the satellite’s transmitter to the GPS receiver.” (CBr at 27.) Complainant argued that 

“code phase difference” should be construed as “the difference in code phase.” (CRBr at 27.) 

Respondents Global Locate argued that the term “code phase difference” should be 

construed to mean “a difference in the correlation data resulting from the correlations being 

performed against signal segments that begin at different points in a repeating code.” (RBr at 53.) 

The staff argued that it is not clear whether the private parties actually dispute the 

claimed term in issue. However, the staff further argued that respondents’ construction of “code 

phase difference” is correct. (SBr at 17.) 

The claimed term “code phase difference” appears in asserted claims 6, 10, 15, 16,70, 

and 73. For example, in independent claim 1 0, “code phase difference” appears in the following 

context: 

a combiner coupled to the correlator for determining a code phase 

difference between portions of the first and second correlation data 

corresponding to the PN code hypothesis 

(CX- 1 at 20: 18-2 1 (emphasis added).) The administrative law judge finds that a person of 

ordinary skill in the art would understand from the plain language of the claims that there is a 

code phase difference between first and second correlations data due to the fact that the first and 

second signal segments are captured during “separate and distinct periods of time.” (a CX-1 at 

20: 3 -26.) 

Referring to the specification, the “Background of the Invention” section describes the 

problem that the inventor was trying to solve, y&. allowing a receiver to connect with a satellite 

when the receiver can only capture samples of the signal being transmitted by the satellite on an 

intermittent basis. (See venerallv CX-1 at I : 1 7-3: 15.) The specification teaches how to combine 

45 
these signal segments in order for the receiver to connect with the appropriate satellite. (& 

generally CX-1.) Because the signal transmitted by the satellite is a periodic signal, and because 

the signal segments are captured by the receiver at intermittent times, the administrative law 

judge finds that one of the signal segments must be adjusted before it can be combined with the 

other signal segment. Thus the specification states: 

Moreover, it is difficult to combine segments of samples captured 

over different periods of time because each is subject to a different 

code phase which must be accounted for before the segments can 

be combined, and these code phases are unknown. 

*** 

This code phase difference is then used to combine the rows for the 

correlation arrays. In the implementation example, the row of 

correlation data for the second segment is circularly shifted by the 

code phase difference. Then, the shifted row is added to the 

corresponding row of cumulative correlation data, one data 

element at a time. This process is then repeated for each of the 

rows of each of the arrays for the second segment. The result is a 

plurality of cumulative correlation arrays which combine the 

results of the first and second segments. 

(CX-1 at 2:59-62; 5:44-53.) To accomplish the foregoing, the administrative law judge finds that 

the receiver must calculate the difference in the signal segments that results from the signal 

segments being captured during “separate and distinct periods of time.” (Id.) Said difference is 

called the “code phase difference,” and the specification provides an example equation of how to 

calculate the code phase difference. (Zd. at 5: 16-6 1 .) The administrative law judge therefore finds 

that the term “code phase difference” should be construed to mean “a difference in the 

correlation data resulting from the correlations being performed against signal segments that 

begin at different points in a repeating code.” 

46 
Complainant first construes “code phase” and then argues that “code phase difference” 

should mean “the difference in code phase.”I3 The administrative law judge finds that this 

approach is incorrect, as “code phase difference” has a specific and separate meaning (as 

described supra) from the definition of “code phase” offered by complainants. Thus, he finds 

that the concepts of “code phase” and “code phase difference” are different because “code phase” 

relates to the delay caused by the signal traveling from the satelllite to the receiver while “code 

phase difference” relates to the difference between the captured signal segments based on the fact 

that they were captured during separate and distinct time periods. (See CX-1 at 1: 42-45,2:59-62 

and 5:44-53.) 

Further, the administrative law judge finds that complainant takes its proposed 

construction directly from the “Background of the Invention” section, and thus improperly limits 

the claims to GPS satellites. He finds such a construction is contrary to the plain language of the 

claims. See Phillips, 4 15 F.3d at 1323. 

8. The Claimed Term “Doppler Shift” 

Complainant argued that the claimed term “Doppler shift” should be construed to mean 

“a frequency shift in the satellite transmission caused by relative movement between the satellite 

and the receiver along the line-of-sight (LOS).” (CBr at 30.) 

l3 Contrary to complainant’s assertion, the term “code phase” appears without modifying 

terms in asserted claims 1 8. (CX-1 at 2 1 : 17.) Otherwise, “code phase” appears as part of “code 

phase difference” (see, e.g., id. at 19:57-60 (claim 6)) or it appears when describing a code phase 

hypothesis. (See, e.g, id. at 20:27-30 (claim 11)) 

47 
Respondents Global Locate argued that the term “Doppler shift” should be construed to 

mean “an effective change in the frequency of a received signal due to the relative velocity of a 

transmitter with respect to the receiver.” (RBr at 58.) 

The staff agreed with respondents and argued that the term “Doppler shift” should be 

constructed to mean “an effective change in the frequency of a received signal due to the relative 

velocity of a transmitter with respect to the receiver.” (SBr at 18.) 

The claimed term “Doppler shift” appears in asserted claims 1 1, 19,69, and 70. 

The administrative law judge finds that a person of ordinary skill in the art would not 

limit the asserted claims containing “Doppler shift” to GPS,’or even generic satellite systems. To 

the contrary, the claims are related to either a “signal detector,” a “method for detecting a signal,” 

or a “method for detecting signals of interest.” Other claims in the ‘21 6 patent, such as claims 12 

and 72, are expressly limited to GPS, demonstrating that the patentee intended for the broader 

claims to cover more than just GPS. 

Referring to the specification of the ‘2 16 patent, it describes “Doppler shift” as follows: 

The Doppler shift (DS) is a frequency shift in the satellite 

transmission caused by relative movement between the satellite 

and the receiver along the line-of-sight (LOS). 

(CX-1 at 1 :64-66.) “Doppler shift” is defined more generally in relevant technical dictionaries. 

- See, G, IEEE Standard Dictionary of Electrical and Electronics Terms 287 (4‘h ed. 1988) 

(defining “Doppler shift” as “[tlhe magnitude of the change in the observed frequency of a wave 

due to the Doppler effect. The unit is the hertz” and “Doppler effect” as “[tlhe effective change 

of frequency of a received signal due to the relative velocity of a transmitter with respect to 

receiver”). The specification’s explanation of “Doppler shift” is consistent with the IEEE 

48 
dictionary definition. While the specification describes the “Doppler shift” in the context of 

satellite systems, the specification is not limited to satellite systems. Thus, it notes that signal 

detector may be used in a variety of applications, only one of which is GPS: 

It is contemplated that the foregoing signal detector can be 

beneficially employed in a variety of applications, such as in a GPS 

receiver 70. 

*** 

While the discussion here has focused on GPS, the invention can 

be applied to any system using correlation methods for detecting 

signals. 

(CX-1 at 6:60-62. 19:6-8.) 

Based on the foregoing the administrative law judge finds that the more general 

dictionary definition is appropriate. The administrative law judge therefore construes “Doppler 

shift’, to mean “the magnitude of an effective change in the frequency of a received signal due to 

the relative velocity of a transmitter with respect to the re~eiver.”’~ 

F. Infringement 

The unfair acts covered under Section 337 include “all forms of infringement, including 

direct, contributory, and induced infringement.’’ Certain Home Vacuum Packaging Machines, 

Inv. No. 337-TA-496, Order No. 44,2004 ITC LEXIS 202 * 2 n.2 (March 3,2004). There must 

be a preponderance of evidence to establish infringement. See Kao Corn. v. Unilever United 

States, Inc, 441 F.3rd 963 (Fed. Cir. 2006). A determination of patent infringement encompasses 

a two-step analysis. Advanced Cardiovascular Systems, Inc. v. Scimed Life Systems, Inc., 261 

l4 The administrative law judge finds that the reference to “magnitude” is supported both 

by the IEEE dictionary definition, supra, and the specification. (& CX-1 at 1:64-2:40.) 

49 
F.3d 1329, 1336 (Fed. Cir. 2001) (Scimed). First, the court determines the scope and meaning of 

the patent claims asserted, and then properly construed claims are compared to the allegedly 

infringing device. Id. “Literal infringement of a claim exists when each of the claim limitations 

reads on, or in other words is found in, the accused device.” Allen Engineering COT. v. Bartell 

Indus., 299 F.3d 1336, 1345 (Fed. Cir. 2002). 

Under the doctrine of equivalents, “a product or process that does not literally infringe 

upon the express terms of a patent claim may nonetheless be found to infringe if there is 

equivalence between the elements of the accused product or process and the claimed elements of 

the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,21 

(1 997). Equivalency may be determined using the “triple identity test,” thus, “focusing on the 

function served by a particular claim element, the way that element serves that function, and the 

result . . . obtained by that element . . . .” Id. at 39. Regardless of the linguistic framework of the 

test used, the “essentially inquiry” is: “[dloes the accused product or process contain elements 

identical or equivalent to each claimed element of the patented invention?” Id. at 40. 

Direct infringement includes the making, using, selling, offering for sale and importing 

into the United States an infringing product, without authority. 35 U.S.C. 0 271(a). To prove 

direct infringement, the plaintiff must establish by a preponderance of the evidence that one or 

more claims of the patent read on the accused device either literally or under the doctrine of 

equivalents. Scimed, 261 F.3d at 1336. 

A person may also infringe a patent claim indirectly, although direct infringement is a 

necessary element of induced and contributory infringement. DSU Med. COT. v. JMS Co., 471 

F.3d 1293, 1303 (Fed. Cir. 2006) (DSU Med. Corp.). Section 271 (b) of the Patent Act provides 

50 
that “[wlhoever actively induces infringement of a patent shall be liable as an infringer.” To 

establish liability for induced infringement, “a patent holder must prove that once the defendants 

knew of the patent, they actively and knowingly aided and abetted another’s direct infringement.” 

- Id. However, “[tlhe mere knowledge of possible infringement by others does not amount to 

inducement; specific intent and action to induce infringement must be proven.” Id. 

Additionally, 35 U.S.C. 3 271(c) provides that: 

[wlhoever offers to sell or sells within the United States . . . a 

component of a patented machine, manufacture, combination or 

composition . . . constituting a material part of the invention, 

knowing the same to be especially made or especially adapted for 

use in an infringement of such patent, and not a staple article of 

commodity of commerce suitable for substantial noninfringing use, 

shall be liable as a contributory infringer. 

Thus, *‘[i]n order to succeed on a claim of contributory infringement, in addition to proving an 

act of direct infringement, plaintiff must show that defendant knew that the combination for 

which its components were especially made was both patented and infringing, and that 

defendant’s components have no substantial non-infringing uses.” Cross Med. Prods., Inc. v. 

Medtronic Sofamor Danek. Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005). 

1. Accused Products 

Complainant argued that the following devices directly infringe asserted claims 1,6, 10- 

12, 17-19,64-65,69-70, and 72-73 of the ‘216 patent: { 

} (CBr at 1 1 - 13 .) While complainant 

l5 { 

(undisputed).) 

} (CFF 598,603 

} (CFF 649 (undisputed).) 

51 
did not allege that said { 

that importation is imminent and that the { 

13- 1 5 .) Complainant also argued that respondents are liable for inducement and contributory 

infringement. (Id. at 43-44,70-74.) 

} has been imported into the United States, complainant argued 

} incorporates the{ } (CBr at 

Respondents argued that cornplainant has failed to demonstrate that any of the accused 

products infringe the asserted claims of the ‘216 patent, either directly or indirectly. (RBr at 59.) 

Respondents also argued that the { 

used, offered for sale, sold or imported into the United States. (RBr at 59.) 

} does not infringe because it has never been made, 

The staff argued that none of the accused devices have been proven to infringe any of the 

asserted claims of the ‘216 patent. (SBr at 29-30.) The staff fwther argued that the { 1 

should not be included in this investigation because it is still in development. (SBr at 32-33.) 

a. { 1 

c 

} (RFF 398 

(undisputed).) The { 

product available to customers. (Tr. at 1437-39.) Complainant argued that because the 

importation of the { 

13-14.) However Charles Abraham, the director of engineering for the GPS business unit at 

Broadcom, testified that the { 

} project has not been completed, and there is no final, finished 

} is imminent, the Commission has jurisdiction over it. (CBr at 

1 product is not complete: 

{ 1 

{ 

52 
(Tr. at 1437-1438 (emphasis added).) Abraham explained that “tapeout” is a term of art in the 

chip industry that signifies when a chip design is given to the manufacturer to produce test chips: 

Q. What do you mean by tapeout? 

A. Well, tapeout is a term in the chip industry. It is a milestone 

in a project where a version of a chip is given to a manufacturing 

partner to build samples of the chip. So in this case when we say 

tapeout the test chip, then sometime later we would obtain back 

these test chips at Broadcom and we could start to test them. 

(Tr. at 1438.) 

Moreover it is undisputed that after tapeout, Broadcom engineers will test the chips and 

make any necessary design changes (Abraham, Tr. at 1438-39); that once changes are made, 

another version of the chip will be taped out (M.); and that there is no known date when the 

{ 1 will be available for sale. Thus, Abraham testified: 

Q. And do you now know when the chip will even be -- do you 

now know when the chip will be available for sale to customers? 

A. 

project goes, how well the initial test chip works, what type of 

changes have to be made. 

No, I don’t know that. Of course it depends on how the 

(Id.) 

Section 337 only prohibits “[tlhe importation into the United States, the sale for 

importation, or the sale within the United States after importation” of infringing articles. 19 

53 
U.S.C. 5 1337(a)(l)(B) (2008). Nevertheless, “Section 337 is a remedial statute which 

authorizes the Commission to ‘prevent unfair acts in their incipiency.”’ Certain Low-Nitrosamine 

Trifluralin Herbicides, Inv. No. 337-TA-245, Order No. 23 (Sept. 4, 1986) (citation omitted) 

(Herbicides). Thus, it has been found that “the imminent importation by a party respondent in an 

ongoing investigation of a new product which is alleged to infringe complainant’s patent and to 

have the tendency to injure the domestic industry, clearly falls within the Commission’s 

jurisdiction.” (emphasis added). However, based on the record the administrative law judge 

finds that the design of the { } has not yet been finalized. 

Complainant has the burden of establishing a violation of Section 337 by a preponderance 

of the evidence. The administrative law judge finds nothing in the record contrary to the 

testimony of Abraham. Thus, he finds that any infringement analysis is premature at this point 

because the design of the { 1 is subject to change. Therefore, the administrative law 

judge finds that the { } should not be included in this investigation. 

In Order No. 23 of Herbicides, cited by complainant, the respondents admitted that the 

product at issue had already been manufactured, and that importation was imminent: 

I.Pi.Ci. made known to Lilly its intention to manufacture and 

export to the United States trifluralin purified by the process as 

early as July, and Lilly has had full discovery of that 

process ... I.Pi.Ci. has further attested that trifluralin purified by the 

(C) process has been manufactured in Italy, and is in inventory, 

ready for imminent shipment to the United States. 

(emphasis added). In Amrren, Inc. v. Int’l Trade Comm’n, the Court found that the Commission 

had jurisdiction when the accused product had been imported into the United States for FDA 

approval, and sale of the product was imminent. 519 F.3d 1343, 1350-52 (Fed. Cir. 2008). In 

54 
Certain Apparatus for the Continuous Production of Copper Rod, the Commission found that 

jurisdiction existed when the respondents had entered into a contract to sell the accused product 

in the United States and the product had already been partially imported. Inv. No. 337-TA-89, 

214 U.S.P.Q. 892 (1980) (“[Respondents] have entered into a contract for sale of a continuous 

copper rod system to be used [in the United States]. The proposed importation of the system is 

occurring, with a significant portion already imported.”) 

In contrast to the authority cited by complainant, there has been no contract for sale of the 

{ 

respondents that the importation of the { 

}, no importation or partial importation of the { } and no assertion from 

} is imminent. 

Complainant argued that respondents promoted the { } to potential customers. 

1 (CRBr at 33.) Complainant, however, cites no authority for the proposition that the { 

should be included in this investigation due to the mere promotion of it in the United States. 

Complainant further argued that the { } incorporates the accused { 1 

(CBr at 14-15.) However, { 

- 

} (Abraham, Tr. at 1436-1437.) 

2. Complainant Has Not Established Infringement 

Complainant argued that there is direct infringement because the accused devices meet, 

inter alia, the “separate and distinct periods of time” and “a hypothesis”/“the hypothesis” claim 

limitations. (CBr at 44-9.) 

55 
Regarding the “separate and distinct periods of time” limitation, complainant argued that 

the accused devices meet the claim limitation because they { 

} (CRBr at 42-43.) 

Respondents argued that complainant failed to prove that the accused devices meet the 

“separate and distinct periods of time” limitation found in claim 1. (RBr at 72-75.) 

The staff took no position on this claim element. 

The administrative law judge has found in Section IV.E.2, supra, that the claim language 

“segments representing separate and distinct periods of time” requires “two portions of the signal 

captured during non-overlapping time periods that are set apart by a portion of intervening 

signal.” (emphasis added). Complainant argued that because the accused devices { 

} they meet the “separate and distinct” 

limitation. (CRBr at 42-43.) However, { 

} Thus the administrative law judge finds that they cannot meet the “separate 

and distinct” limitation as construed by the administrative law judge because { 

1 

Complainant argued that even under respondents’ construction of “separate and distinct 

periods of time,” the { } meets the claim limitation. 

(CRBr at 42-43.) Complainant in support argued that { 

during “separate and distinct periods of time.” (Id.) The 

administrative law judge finds that complainant’s argument goes against the plain language of 

the claim construction, as accepting complainant’s argument would read out the “separate and 

distinct” limitation from the claim language. 

56 
Regarding the “a hypothesis”/”the hypothesis” limitation, complainant argued that the 

accused devices meet this limitation. (CBr at 46-48; CRBr at 45-46.) 

Respondents argued that complainant failed to prove that the accused devices meet the “a 

hypothesis”/“the hypothesis” limitation, in that complainant’s infringement theory requires that 

the first and second correlation data are not derived using identical hypotheses. (RBr at 72-75, 

77.) 

The staff argued that the evidence does not show that the same hypothesis is used for each 

correlation, and thus, the accused devices do not literally infringe. (SBr at 29.) 

The administrative law judge has found in Section IV.E.4, supra, that the second element 

of claim 1 requires that identical hypotheses are used to derive the first correlation data and 

second correlation data. Complainant’s expert Rartone admitted during the hearing that under 

his theory of infringement, the hypotheses used to derive the first and second correlation data 

would not be identical: 

57 
'5 8 
{ 1 

(Tr. at 1271-74 (emphasis added).) The administrative law judge finds that Bartone’s 

infringement theory requires that { 

] Bartone also testified that changing the NCO settings 

results in a change of one of the parameters of the hypothesis. Hence, the administrative law 

judge finds that the first and second correlation data would not have been derived using identical 

hypotheses. Thus, he finds that complainant has failed to establish, by a preponderance of the 

evidence, that the accused devices contain the “a hypothesis”/”the hypothesis” limitation. 

Complainant also argued that the accused devices infringe the asserted claims because 

they operate in an “infringing manner.” (CMr at 34-42.) Specifically, Bartone’s infringement 

opinion is based on the accused devices performing { 

1 Complainant argued that the modes in question are enabled in the 

accused devices, and even if they aren’t, the accused devices still infringe because they are 

capable of operating in such modes. (CRBr at 34-42.) Because complainant contends that the 

modes in question are relevant to its infringement argument, it is complainant’s burden to 

demonstrate that each of the accused devices performs said modes. Centricut, LLC v. Esab 

Grow, Inc., 390 F.3d 1361, 1367 (Fed. Cir. 2004) (“The patentee has the burden of proving 

infringement by a preponderance of the evidence”). 

Respondents argued that the accused devices are incapable of { 

1 (RBr at 59-69.) 

59 
Respondents therefore claim that on this basis alone, the accused devices do not infringe the 

asserted claims of the ‘2 16 patent. (@) 

The staff argued that the evidence demonstrates that the accused devices are incapable of 

} (SBr at 30.) 

} (CBr at 51-52; CRBr at 34-38.) 

Respondents argued that { 

} (RBr at 65-67.) 

The staff argued that the accused devices are not capable of { 

{ } (Tr. at 1543.) 

During the hearing, Sergei Podshivalov, the Senior Software Manager for the GPS business unit 

} (SBr at 30.) 

at Broadcom, testified that none of the accused devices are capable of { 1: 

{ 

1 

(Tr. at 1543-44.) 

Podshivalov explained that for all accused devices except the { }, the chip is 

programmed { } (Tr. at 1547.) Furthermore, because customers receive only a 

60 
compiled version of the software used to program the chips, the software cannot be modified to 

{ } (Tr. at 1555-56.) { 

} (Tr. at 1452, 1558-59.) { 

} (Tr. at 1558-59.) Thus for all accused 

devices, { 

} The administrative law judge finds the testimony of Podshivalov credible and further 

finds nothing in the record to establish that the accused devices are capable of { 

1 

In attempting to rebut the testimony of Podshivalov, complainant relies on the deposition 

testimony of John Pavan, a hardware engineer at Broadcom. Pavan’s testimony explains how the 

hardware on the accused devices would { } (& JX-14C at 131-134, JX-15C at 

147-148.) Respondents do not dispute that the accused devices { 

} (RBr at 61-65.) However, the administrative law 

judge finds that what Pavan’s testimony fails to rebut is the testimony from Podshivalov 

explaining that { 

} (CRBr at 38-40.) 

Complainant further argued that respondents only demonstrated that { 

1 (Id.) 

l7 The administrative law judge also finds from Pavan’s testimony that he is not familiar 

with all of the details of the software for the accused devices. Pavan does not work on the 

software, and when asked who does, Pavan identified Podshivalov. (JX-14C at 41- 42.) 

61 
Respondents argued that { 

f (RBr at 65-67.) 

The staff argued that the accused devices are not capable of { } (SBr at 30.) 

{ 

f 

Complainant argued that { f 

(RBr at 63; lUU3r at 38-39.) The administrative law judge finds that this assertion is directly 

contradicted by Podshivalov’s credible testimony that { 

1 

{ 

This software file is part of respondents’ Global Locate Library (GLL), which is the 

software library that is provided to customers with the accused devices. (Tr. at 1458-59.) 

l9 In addition, Podshivalov provided an alternative basis { 

(See Tr. at 1571-72.) 

62 
(Tr. at 1562 (emphasis added).) 

{ 

} (RFF 1212 (undisputed).) The complainant contends that { 

} is relevant as to whether the accused devices meet the “combining the adjusted data with 

the other of the first and second correlation data” limitation found in certain ‘2 16 patent claims. 

(& CBr at 64.) 

Complainant argued that { 

} thus allowing the receiver to combine adjusted correlation 

data with non-adjusted correlation data. (CBr at 64; CRBr at 4 1 .) 

Respondents argued that { 

} (Rbr at 68-69.) Because complainant 

alleges that { } constitutes “adjusting” correlation data as recited in the 

‘2 16 patent claims, respondents argued that { 

combined with unadjusted data as required by the claims. (Id.) 

} adjusted data cannot be 

The staff argued that the accused devices do not use { ] (SBr at 

30.) 

63 
Podshivalov testified that the accused devices { 

1: 

1 

1 

(Tr. at 1575-76 (emphasis added).) Podshivalov also testified that { 

64 
(Tr. at 1 576-77 (emphasis added).) Having observed Podshivalov, the administrative law judge 

finds his testimony credible. Thus, he finds that { 

1 

Complainant argued that Podshivalov admitted that { 

} (CRBr at 41 .) However, what Podshivalov stated was that { 

1 (Tr. at 1581.) 

Complainant also argued that Serge La Porte, another one of respondents’ employees, 

testified that { I 

(CRBr at 41 .) Reviewing the cited portion of La Porte’s deposition testimony, the administrative 

law judge finds that La Porte did not state what complainant claims he stated. The cited portion 

of La Porte’s testimony concerns { 

1 

I 

1 

(JX-SC at 146:9-21.) Therefore, the administrative law judge finds that La Porte’s testimony 

does nothing to rebut or contradict the testimony of Podshivalov demonstrating that the accused 

65 
devices do not { 1 as assumed by complainant and its expert 

Bartone. 

Complainant argued that even if the accused devices do not { 1 

they infringe because they are capable of operating in these modes. (CRl3r at 34-35.) As found 

supra the accused devices are not capable of { 

1 

Even if the accused devices were capable of { 1 this would not be 

enough to prove infringement. Complainant’s argument is based on the Federal Circuit’s 

decision in Intel v. United States lnt’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991) (w) 

where the court held that the accused device “need only be capable of operating” in an infringing 

mode to infringe. As respondents argued, the holding in &eJ was based on the specific claim 

language present in the case, namely the phrase “programmable selection means.” Subsequent 

Federal Circuit decisions have distinguished 

v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 13 1 1 (Fed. Cir. 2005) (distinguishing Intel 

based on the permissive “programmable” claim language); Fantasy Sports Properties, Inc. v. 

Sportsline.com, Inc., 287 F.3d 1108, 11 17-18 (Fed. Cir. 2002) (“I&eJ...does not stand for the 

proposition ... that infringement may be based upon a finding that an accused product is merely 

capable of being modified in a manner that infringes the claims of a patent.”) Because the claims 

at issue do not have the permissive claim language found in m, the case is readily 

on this basis. See, e.%., Cross Med. Prods., Inc. 

66 
distinguishable and does not mandate a finding of infringement if it was to be found that the 

accused devices are capable of { 1 

The administrative law judge therefore finds that the complainant has failed to establish, 

by a preponderance of the evidence, that the accused devices directly infringe any of claims 1,6, 

10-12, 17-19,64-65,69-70,72, and 73. 

Because the complainant has failed to prove any underlying direct infringement, the 

administrative law judge finds that the complainant has failed to establish indirect infringement, 

whether through inducement or contributory infringement. DSU Med. COT. supra. 

G. Validity 

Respondents argued that as “construed by SiRF,” the asserted claims are invalid on the 

ground that each of “Kaplan, Krasner, and Harmes” anticipates the asserted claims “as construed 

by SiRF”. Respondents further argued that the “prior art” renders the ‘216 patent obvious “under 

SiRF’s claim construction.” (RBr at 94-107.) 

The staff argued that “[gliven that SiRF’s claim construction are incorrect,” respondenrs’ 

invalidity assertions fail to address validity under a “correct claim construction.” (SBr at 38.) 

Respondents have limited their assertions of invalidity to apply only under complainant 

SiRF’s proposed claim constructions. The administrative law judge has rejected SiRF’s claim 

2o The complainant failed to address the doctrine of equivalents in its post-hearing 

briefing, and complainant’s expert Bartone failed to provide any particularized testimony on the 

doctrine of equivalents. The administrative law judge therefore finds that complainant has failed 

to meet its burden in proving that any of the accused devices infringe under the doctrine of 

equivalents. Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. 

Cir. 1996) (requiring “particularized testimony and linking argument as to the ‘insubstantiality of 

the differences’ between the claimed invention and the accused device or process’’ to prove 

infringement under the doctrine of equivalents). 

67 
constructions. Thus he finds that respondents have not established, by clear and convincing 

evidence, that the asserted claims of the ‘2 16 patent are invalid over any prior art. 

H. Domestic Industry 

To invoke the protection afforded by Section 337, a complainant must show by a 

preponderance of the evidence that a domestic industry exists or is in the process of being 

established within the United States. The domestic industry requirement has two prongs: an 

“economic” prong and a “technical” prong. 

Complainant has satisfied the economic prong of the domestic industry requirement. 

Section I, supra. 

The “technical” prong requires that the activities alleged to constitute a domestic industry 

actually utilize the intellectual property at issue. In the context of a patent-based investigation, 

the technical prong is satisfied if a complainant demonstrates that it is practicing at least one 

claim of a patent-in-issue. The test for claim coverage for purposes of the domestic industry 

requirement is the same as that for infringement. The technical prong of the domestic industry 

can be satisfied either literally or under the doctrine of equivalents. Certain Excirner Laser 

Systems for Vision Correction Surgery and Components Thereof and Methods for Performing 

Such Surgery, Inv. No. 337-TA-419, Order No. 43, 1999 ITC LEXIS 245, “7 (July 30, 1999). 

The complainant, however, is not required to show that it practices any of the claims asserted to 

be infringed, as long as it can establish that it practices at least one claim of an asserted patent. 

Certain Point of Sale Terminals and Components Thereof, Inv. No. 337-TA-524, Order No. 40, 

2005 ITC LEXIS 374, “26 (Apr. 11,2005). 

68 
Complainant argued that it has established that { } satisfies 

the technical prong of the domestic industry requirement; { 

} and that { 

1 meets every limitation of claim 1 of the ‘216 patent. (CBr at 75-9, CRRFF 222.) 

Respondents argued that { } does not practice the ‘216 claims. (RBr at 

90.) 

The staff argued that the evidence does not show that complainant SiW practices the 

‘2 I6 patent under “a proper claim construction;” and that similar to the infringement issues, the 

evidence fails to show that SiRF’s products determine a parameter difference, and thereafter 

adjust one or the other of correlated data before combining such correlations. (SBr at 34.) 

The administrative law judge has found that complainant failed to establish that the 

accused device contain the “a hypothesis”/the hypothesis” limitation. For the same reasons as 

found with respect to non-infringement, the administrative law judge finds that complainant has 

not established that its { 

limitation. Thus as respondents expert testified: 

} contains at least the “a hypothesis”/ “the hypothesis” 

{ 

69 
(Tr. at 1974-75.) 

V. ‘363 Patent 

A. Undisputed Facts Relating To The ‘363 Patent 

The private parties in SX-2 stipulated to the following regarding the ‘363 patent: 

The Yamamoto ‘ 363 Patent discloses a host-based positioning 

system. In a host-based GPS system, the baseband circuitry that 

detects satellite signals communicates with a GPS library of 

programs that execute on a host processor connected to the 

baseband circuitry via a hardware interface. 

The Yamamoto ‘363 Patent discloses a GPS receiver that allocates 

the GPS receiver functions between “GPS tracker hardware” and a 

host device. The GPS tracker hardware includes hardware that 

reads signals from GPS satellites, and sends the resulting 

measurement data to the host device for position calculation. A 

processor in the host device executes functions provided in a GPS 

library, i.e. GPS-related software that interfaces with the GPS 

tracker hardware, and performs positioning functions (e.g., 

calculates position fixes), and interfaces with an application with 

an application program. The GPS librqry is accessible by 

application programs running on the host device over a user 

interface. 

Host CPUs have developed to the point where they now possess 

the capacity to handle non-time-critical functions in a shared 

processing environment. In some applications, the dedicated DSP 

of contemporary GPS chips may handle real-time acquisition and 

tracking operation functions, while the host CPU handles non-realtime calculations such as position fixes. 

70 
The Yamamoto ‘363 patent therefore provides a positioning system 

that uses a tracker interface function to receive positioning 

information over a tracker hardware interface, determines a 

position from this positioning information, and delivers the 

position to a user program using a user interface message deliver 

function. 

In addition to the foregoing, the ‘363 patent, entitled “Host Based Satellite Positioning 

Systems,” issued on May 9,2006, based on an application filed on October 10,2002. Clifford 

Yamamoto, Sebastian Norris, Ashutosh Pande, Nikola Bulatovic, and Stefan Witanis are the 

named inventors and assigned the invention to SiRF. (CX-2.) 

B. Experts 

Chris Gregory Bartone was qualified as complainant’s expert in the area of GPS 

technology. (Tr. at 58 1 .) 

William Michalson was qualified as respondents’ expert in the field of GPS technology 

and computer architecture. (Tr. at 1630.) 

C. Person Of Ordinary Skill In The Art 

As of 2002, a person of ordinary skill in the art relative to the ‘363 patent would be a 

person who had at least a Bachelor of Science in electrical engineering or electrical and computer 

engineering, and about two years of experience in the design of hardware and software 

architectures for software radios or for global positioning system receivers. (Michalson, Tr. at 

1633.) 

I). Claims In Issue 

complainant has put in issue claims 7, 8, 10, 1 1, 12, 16, 18, 19 and 20 of the ‘363 patent. 

They read: 

71 
7. The system of claim 4, wherein the positioning engine 

communication function is a command delivery function. 

8. A method in a positioning system comprising a tracker hardware 

interface, the method comprising the steps of calling a tracker interface 

function to receive positioning information from a tracker hardware 

interface; determining a position from the positioning information using a 

positioning engine; and calling a user interface message delivery function 

to communicate the position to a user application. 

10. The method of claim 8, wherein the positioning system further 

comprises a user interface, and further comprising the step of receiving a 

positioning engine start message from the user interface. 

1 1. The method of claim 8, wherein the positioning system further 

comprises a user interface, and further Comprising the step of receiving a 

user command for the positioning engine from the user interface. 

12. The method of claim 8, wherein the positioning system further 

comprises a user interface, and further comprising the step of receiving a 

positioning engine stop message from the user interface. 

16. A computer-readable medium containing instructions that cause a 

positioning system having a tracker hardware interface to perform a 

method comprising the steps of: calling a tracker interface function to 

receive positioning information from a tracker hardware interface; 

determining a position from the positioning information using a 

positioning engine; and calling a user interface message delivery function 

to communicate the position to a user application. 

1 8. The computer-readable medium of claim 16, wherein the 

positioning system further comprises a user interface, and further 

comprising the step of receiving a positioning engine start message from 

the user interface. 

19. The computer-readable medium of claim 16, wherein the 

positioning system further comprises a user interface, and further 

comprising the step of receiving a user command for the positioning 

engine from the user interface. 

20. The computer-readable medium of claim 16, wherein the 

positioning system further comprises a user interface, and further 

72 
comprising the step of receiving a positioning engine stop message from 

the user interface. 

(CX-2.) 

Claim 7 is a dependent claim which depends on claim 4 which claim 4 depends on claim 

1. Claims 1 and 4 read: 

1. A system for processing positioning signals, the system comprising: 

a tracker hardware interface for receiving positioning information; a 

memory comprising a GPS library comprising a user interface, a tracker 

interface, and an operating system interface, the tracker interface 

comprising at least one tracker interface function for communicating over 

the tracker hardware interface; and a processor for running the tracker 

interface function. 

4. The system of claim 1, wherein the user interface comprises at least 

one positioning control function and at least one positioning engine 

communication function. 

(CX-2.) 

E. Claim Construction 

Applicable Law. See Section IV.E, supra 

1. The Claimed Phrase “tracker” 

Complainant argued that the claimed phrase “tracker” need not be construed alone as it 

appears only in certain phrases in the claims, but if a construction is needed, “tracker” is properly 

construed as “a device that supports acquisition and tracking of the signal of a positioning 

satellite (e.g., a GPS satellite) and sends measurement data to a host device for position 

calculation.” (CBr at 95.) Complainant further argued that this construciton is supported by the 

intrinsic evidence, as stated in the CX-2 at 4:4-7, “The tracker hardware 104 acquires and tracks 

SPS satellites and sends raw measurement data to the host 102 for position calculation.” (CBr at 

73 
95.) Complainant also argued that its construction does not require specific hardware, but 

instead focuses on what the tracker does. (CBr at 95-96.) 

Respondents argued that a person of ordinary skill in the art would interpret a tracker to 

be a device that acquires and “tracks.” (RBr at 109.) It is argued that the very purpose of 

“tracking” is to maintain alignment between a replica signal and an incoming signal from a 

satellite once acquisition has occurred. (RBr at 1 10.) Respondents argued that the specification 

of the ‘363 patent repeatedly states that the “tracker” must do more than merely “acquire” a GPS 

satellite. (RBr at 110.) Thus, respondents argued that the plain and ordinary meaning of a 

“tracker” to a person of ordinary skill in the art is a device that synchronizes to the code of a 

positioning satellite through use of a feedback loop. (RBr at 109.) 

The staff argued that the claims require a “tracker hardware interface for receiving 

positioning information,” and thus determining the structure with which the interface interacts is 

necessary. (SBr at 20.) The staff argued that neither claim construction offered by the private 

parties is correct, but a correct construction of tracker is “a device that acquires data from a GPS 

satellite and sends navigation information to a processor,” which is supported by the 

specification at CX-2 at 3 :48-49 (“the host 102 receives and processes navigation information 

from the hardware tracker”). (SBr at 20.) The staff further argued that respondents’ proposed 

definition imports limitations not found in the claims or otherwise defined in the specification, 

while complainant’s proposed construction is also too narrow by attempting to limit the claims to 

require “measurement data” to be sent to the host device. (SBr at 21 .) 

The claimed phrase “tracker” appears in one of the following phrases: “tracker interface,” 

“tracker hardware interface” or “tracker interface function” in asserted independent claim 8 of the 

74 
‘363 patent, from which asserted dependent claims 10, 11, and 12 depend, and asserted 

independent claim 16, from which asserted dependent claims 18, 19, and 20 depend, as well as, 

-- inter alia, nonasserted independent claim 1, from which asserted dependent claim 7 ultimately 

depends. Thus, the claimed phrase “tracker” is relevant to each of the asserted claims. The 

independent claims of the ‘363 patent read: 

1. A system for processing positioning signals, the system 

comprising: a tracker hardware interface for receiving positioning 

information; a memory comprising a GPS library comprising a user 

interface, a tracker interface, and an operating system interface, the 

tracker interface comprising at least one tracker interface function 

for communicating over the tracker hardware interface; and a 

processor for running the tracker interface function. 

8. A method in a positioning system comprising a tracker hardware 

interface, the method comprising the steps of calling a tracker 

interface function to receive positioning information from a tracker 

hardware interface; determining a position from the positioning 

information using a positioning engine; and calling a user interface 

message delivery function to communicate the position to a user 

application. 

16. A computer-readable medium containing instructions that 

cause a positioning system having a tracker hardware interface to 

perform a method comprising the steps of: calling a tracker 

interface function to receive positioning infomation from a tracker 

hardware interface; determining a position from the positioning 

information using a positioning engine; and calling a user interface 

message delivery function to communicate the position to a user 

application. 

(CX-2 at 41:61-42:3,42:19-27,4253-62 (emphasis added).) Thus, while the claimed term 

“tracker” does not appear alone, the plain language of the claimed phrases listed, supra, require a 

tracker be involved with communicating positioning information, although the features of a 

tracker are not explicitly defined by any of the claims.. 

Regarding the specification, the abstract of the ‘363 patent states: 

75 
Methods and systems consistent with the present invention provide 

a host based positioning system. The host based positioning system 

includes a tracker hardware interface that connects to a dedicated 

hardware space vehicle tracker. The tracker hardware interface 

receives positioninp information from the space vehicle tracker. 

The host based positioning system also includes a memory that 

includes a GPS library having a user interface, a tracker interface, 

and an operating system interface. A processor runs functions 

provided by the interfaces. 

(CX-2 at Abstract (emphasis added).) Also, the specification discloses that the “invention relates 

to satellite positioning systems.” (CX-2 at 1 : 16.) The specification further discloses: 

In one example implementation, a host based SPS system may 

include a host processing system that connects through a tracker 

hardware interface to a dedicated hardware space vehicle tracker. 

The host processing system may also include a memory that 

includes a SPS library having a user interface, positioning engine, a 

tracker interface and an operating system interface. A processor in 

the host processing system runs the positioning engine and the 

functions provided by the interfaces. 

The tracker hardware interface receives positioning information 

from the space vehicle tracker. Through functions in the tracker 

interface, the positioning information is communicated to the 

positioning engine. In turn, the positioning engine may determine a 

position and communicate the position to a user application 

through functions provided in the user interface. 

(CX-2 at 2:6-22 (emphasis added).) Hence, a “tracker” must be capable of sending positioning 

information about a “space vehicle.” The specification also discloses: 

A typical satellite positioning system (“SPS”) system has 

approximately 12 satellites that may be visible at any one time to a 

wireless device. SPS means any system utilizing satellites and/or 

land-based communications devices for providing or enabling the 

determination of a location of the wireless device on the earth, for 

example but not limited to: the global positioning system (“GPS”) 

known as NAVSTAR, GLONASS, LORAN, Shoran, Decca, or 

TACAN. Although many of the interface functions below make 

reference to GPS, those functions are not limited to use with GPS, 

but, generally, are equally applicable in other SPS environments. 

76 
*** 

The tracker hardware 104 acquires and tracks SPS satellites and 

sends raw measurement data to the host 102 for position 

calculation. 

(CX-2 at 2:66-3:10,4:4-7.) Thus, the “space vehicle” disclosed in the specification is a satellite, 

and the data that the tracker must send to the host is “positioning information.” Hence, the 

administrative law judge finds that, for the purpose of the ‘363 patent, a tracker is construed as “a 

device that acquires data from a satellite and transmits positioning information.” 

Regarding respondents’ argument that a “tracker” must “do more than just acquire, but 

also separately track,” and must be a device that synchronizes to the code of a positioning 

satellite through use of a feedback loop, the administrative law judge finds that how a tracker 

gathers positioning information and transmits it is beyond that which the claims require. 

Regarding complainant’s argument that a “tracker” sends measurement data to a host 

device for position calculation, as stated, supra, the features of a “tracker” are not explicitly 

defined by any of the claims. The claims require, and the specification of the ‘363 patent 

discloses, that the tracker sends positioning information to the host (or the positioning system) 

through the “tracker hardware interface.” (a CX-2 at 41 :63-64 (first element of claim 1); CX-2 

at 42:21-22 (first element of claim 8); CX-2 at 42:57-58 (first element of claim 16).) The 

specification further discloses: 

The host 102 connects through the hardware tracker interface 1 IO 

and the interface connection 126 to the tracker hardware 104 . 

(CX-2 at 332-34 (emphasis added).) Thus, the “tracker” does not itself send positioning 

information directly to the host. 

77 
2. The Claimed Phrase “positioning information” 

Complainant argued that the proper construction of the claimed phrase in issue 

“positioning information” is “data derived from a positioning signal that may be used for position 

calculation.” (CBr at 98.) Specifically, complainant argued that claims 8 and 16 recite 

“determining a position from the positioning information,” which requires that positioning 

information contain that data which is necessary for position calculation. (CBr at 98.) 

Complainant further argued that the claims and specification define positioning information as an 

intermediate result and not an actual position because it is this positioning information which is 

used to calculate position; for example, the ‘363 patent discloses that the positioning information 

used for position calculation is information derived from a satellite’s positioning signal. (CBr at 

98; see also CX-2 at 4:2-7.) 

’ Respondents argued that a person of ordinary skill in the art .c~ould understand the term 

“positioning information” in the context of the claims to mean output data from a tracker, as the 

language of claims 1, 8, and 16 teaches that the “positioning information” is data received by a 

“tracker hardware interface.” (RBr at 1 14.) Respondents further argued that the “positioning 

information” must be data that is received from the tracker hardware through the interface. (RBr 

at 114.) Respondents also argued that the only two examples of “tracker hardware” in the ‘363 

patent, the “GSP2e and GSP2e,”2’ { 

1 (RBr at 114-15.) Finally, respondents argued that nothing in the ‘363 patent refers to 

2’ The administrative law judge finds that the second occurrence of GSP2e should be 

GSP2t, as respondents cite to RFF 291 and 849, in the text, which discuss GSP2t. 

78 
“data derived fi-om a positioning signal,” as SiRF’s proposed construction would have it. (RBr at 

115.) 

The staff argued that the specification uses the term “positioning information” loosely to 

mean different things, and lacks a “precise” definition. (SBr at 23 .) The staff further argued that 

unasserted dependent claim 2 and asserted claim 8 each require that a “position” be calculated 

from the positioning information, and that the specification uses “position” to mean the location 

of the GPS device, which can be calculated using many different types of data, including the raw 

measurement data or more processed data such as a multitude of pseudoranges determined from 

raw measurement data pertaining to multiple satellites. (SBr at 23.) 

The term “positioning information” appears in each of independent claims 1, 8, and 16 of 

the ‘363 patent, and is thus relevant to each of the asserted claims in issue. Claim 1 of the ‘363 

patent recites “[a] system for processing positioning signals, the system comprising: a tracker 

hardware interface for receiving positioning information.” (CX-2 at 4 1 :6 1-64.) Claim 8 of the 

‘363 patent contains the limitation “determining a position from the positioning information 

using a positioning engine.” (CX-2 at 42:24-25.) Claim 16 of the ‘363 patent contains the same 

limitation as stated, supra, for claim 8. (CX-2 at 42:59-60.) Thus, the claims make a distinction 

between a position and “positioning information.” 

The parties have agreed to the following: 

The Yamamoto ‘363 Patent discloses a GPS receiver that allocates 

the GPS receiver functions between “GPS tracker hardware” and a 

host device. The GPS tracker hardware includes hardware that 

reads signals from GPS satellites, and sends the resulting 

measurement data to the host device for position calculation. 

79 
(SX-2 at 8 (emphasis added).) Further, the parties agreed that the specification of the ‘363 patent 

discloses that the tracker acquires and tracks GPS satellites and sends raw measurement data to 

the host for position calculation. (CFF 1 195 (undisputed).) Thus, the specification discloses: 

Turning next to FIG. 2, that figure shows one example of an 

implementation of the tracker hardware 104. The tracker hardware 

104 acquires and tracks SPS satellites and sends raw measurement 

data to the host 102 for position calculation. 

(CX-2 at 4:3-7 (emphasis added).) Hence, the “positioning information” must comprise, &r 

al& measurement data, and the position of the satellite is determined by the host, not the tracker 

hardware itself. The ‘363 patent also incorporates the U.S. Patent No. 6,430,503 (the ‘503 

patent) by reference. (CX-2 at 1 :45-49.) While the ‘503 patent does not specifically define the 

claimed phrase “positioning information,” the ‘503 patent does disclose measurement data that is 

used to calculate a position. For example: 

In one embodiment, the intermediate measurement data includes 

the carrier phase, code phase and Doppler data. 

*** 

Such intermediate measurement data may also include the 

pseudo-range to each satellite and the navigation message from 

each satellite being tracked. Other relevant data include Doppler 

offsets and carrier phase. 

(RX-44 at 2:16-18, 3:3 1-35 (emphasis added).) Based on the foregoing, the administrative law 

judge finds that the claimed phrase “positioning information” is construed as “data comprising 

measurement information such as the carrier phase, code phase, Doppler data, and pseudoranges.” 

80 
3. The Claimed Phrase “user interface” 

Complainant argued that the claimed phrase “user interface” should be construed as “an 

interface to the positioning system including platform-independent functions that can be called 

by a user program.” (CBr at 99.) Complainant also argued that the specification of the ‘363 

patent defines the user interface to include a set of functions that can be invoked to allow a user 

program to start and stop the GPS engine, and to send and receive messages to and from a GPS 

engine (CBr at 99); that the interfaces described in the ‘363 patent are very specific interfaces 

used for specific purposes, such as platform independence (CBr at 99); that the ‘363 patent seeks 

to incorporate its solution “in many electronic devices designed by numerous manufacturers,” 

- i.e., platform independence (CBr at 100); and that the ‘363 patent at 3:22-24 explicitly notes that 

the preferred embodiment can be run on any OS platform. (CBr at 100.) 

Respondents argued that a person of ordinary skill in the art would understand the term 

“user interface” in the context of the claims to mean an interface to a user program. and that the 

phrase is so common that there should be no need for construction. (RBr at 1 15 .) Thus, 

respondents argued that claims 8 and 16 require “calling a user interface message delivery 

function to communicate the position to a user application.” (RBr at 1 15 citing CX-2 at 42:26-27, 

42:6 1-62.) Respondents, regarding complainant’s construction, further argued that nothing in the 

‘363 specification, claims, or file history requires that the user interface include 

“platform-independent functions.” (RBr at 1 16.) Respondents also argued that a person of 

ordinary skill in the art would understand that an interface to a user program is a “user interface” 

regardless of whether it contains platform dependent or platform-independent functions, or 

whether those functions are called by the user program. (RBr at 116.) 

81 
The staff argued that respondents’ claim construction, which it argued is based on the 

plain and ordinary meaning of the term, is correct. (SBr at 23.) The staff further argued that 

complainant’ s construction improperly attempts to insert additional limitations that cannot be 

found in the claims such as “platform-independent” and requiring that the user interface be 

“called by a user program,” which elements are not found anywhere in the claim language. (SBr 

at 23 .) The staff also argued that complainant incorrectly argued that the specification “explicitly 

defines” the term (CBr at 45), because the portion of the specification cited by complainant 

unambiguously states that it is describing “one exemplary implementation,” which, staff argued, 

should not, in this case, be considered an explicit definition. (SBr at 23.) The staff further argued 

that complainant’s argument that the purpose of the patent was to provide a platformindependent solution to problems in the prior art is not supported in the claim language itself. 

(SBr at 23.) 

The claimed phrase “user interface” appears in independent claims I, 8, and 16, and thus 

is relevant to each of the asserted claims. Unasserted claim 1 requires “a memory comprising a 

GPS library comprising a user interface. . .7’ (CX-2 at 41 :65-66.) Unasserted claim 4, which 

depends from claim 1 , reads: 

The system of claim 1 , wherein the user interface comprises at 

least one positioning control function and at least one positioning 

engine communication function. 

(CX-2 at 42:9-11.) Asserted claim 7 further requires: 

The system of claim 4, wherein the positioning engine 

communication function is a command delivery function. 

82 
(CX-2 at 42: 17- 1 8 (emphasis added).) Thus, the plain language of the claims shows that a “user 

interface” is an interface between a user and the system. Some of the claims in issue also require 

that the user interface have certain specific hctions, “command delivery function.” 

As regards the specification, it discloses: 

Through functions in the tracker interface, the positioning 

information is communicated to the positioning engine. In turn, the 

positioning engine may determine a position and communicate the 

position to a user application through functions provided in the 

user interface. 

(CX-2 at 2: 16-22 (emphasis added).) Further, the specification discloses, in Table 6, “one 

exemplary implementation of the user interface” through defining what functions are made 

available by the user interface. (CX-2 at 6:2 1-43.) Thus, the claimed phrase “user interface” is 

never precisely defined in the specification, except in terns of what functions may be available. 

The claims in issue, however, require that the user interface have certain specific functions that 

may differ for each claim, and no asserted claim requires that every fiinction listed in Table 6 be 

available. For example, as shown, supra, claim 7 requires that the positioning engine 

communication function be a command delivery function. As another example, asserted claim 

12 states: 

12. The method of claim 8, wherein the positioning system further 

comprises a user interface, and further comprising the step of 

receiving a positioning engine stop message from the user 

interface. 

(CX-2 at 42:39-42 (emphasis added).) Therefore, the administrative law judge finds that the 

specification, far from redefining user interface, supports a plain language definition. Based on 

the foregoing, the administrative law judge finds that “user interface” would be construed by a 

person of ordinary skill in the art, as “an interface between the system and a user.” 

83 
Complainant argued that the interfaces described in the ‘363 patent are very specific 

interfaces used for specific purposes, such as platform independence, and that the plain language 

is too general and does not take into account the specification. As found, supra, the specification 

supports the plain language definition. The specification describes several functions that may be 

used in a user interface. Thus, while the user interface described in a particular claim may 

specify certain functions that are platform independent, or functions that are used for specific 

purposes, the administrative law judge finds that the claimed phrase “user interface,” itself, 

should not be limited to any specific functions. Otherwise, he finds that the construction of “user 

interface” per se would be ambiguous. 

4. The Claimed Phrase “operating system interface” 

Complainant argued that the claimed phrase “operating system interface” should be 

construed as “an interface of the GPS library including platform-independent hnc tions for 

obtaining operating system services (a, time service).” (CBr at 101 .) Specifically, complainant 

argued that, in the same way that “user interface” is defined as a collection of functions, the 

specification of the ‘363 patent defines “operating system interface” as a set of functions callable 

from the GPS library to request operating system services. (CBr at 101 .) In further support, 

complainant argued that the ‘363 patent specifically states that numerous operating systems can 

run on the positioning system described in the patent, further evidencing platform independence, 

and that { 

} (CBr at 101.) 

Respondents argued that the claimed phrase “operating system interface” is simple and 

descriptive, and requires no construction, as a person of ordinary skill in the art would understand 

84 
said claimed phrase in the context of the claims to mean just what it says: an interface to an 

operating system. (RBr at 116.) In support, respondents pointed to Figure 3 of the ‘363 patent, 

which shows an “OS Interface 308” interfacing between the GPS Library 124 and the Operating 

System / BIOS 120, where OS refers to an “Operating System.” (RBr at 116-1 17.) 

The staff argued that respondents’ proposed claim construction, which is based on the 

plain and ordinary meaning of the term, is correct. (SBr at 24.) The staff further argued that 

complainant is attempting to interpose claim elements that are not found in the claim term, and 

cites to the “one exemplary implementation” as support for complainant’s construction. (SBr at 

24.) 

The claimed phrase “operating system interface” appears in unasserted independent claim 

1, from which claim 7 ultimately depends. No other claim in the patent requires an operating 

system interface. Unasserted claim 1 requires “a memory comprising a GPS library comprising . 

. . an operating system interface. . .” (CX-2 at 41 :65-67.) No claim, asserted or unasserted, 

requires that any specific function be made available by an operating system interface, nor does 

any claim require any particular operating system, which may require certain functions be 

available to implement the invention. Thus, the plain language of the claims shows that a 

“operating system interface” is an interface between the claimed system and an operating system 

which is not claimed. 

Referring to the specification, it discloses: 

The host processing system may also include a memory that 

includes a SPS library having a user interface, positioning engine, a 

tracker interface and an operating system interface. 

85 
(CX-2 at 2:9-12.) Figure 3 of the ‘363 patent also illustrates that the operating system interface is 

part of the system disclosed, and communicates with an operating system that is not claimed. 

(a CX-2 at Fig. 3.) The specification further discloses, in Table 6, one exemplary 

implementation of the operating system interface 308, which implementation includes several 

functions. (CX-2 at 6:21-23,44-58.) As shown, supra, the specification describes the claimed 

phrase in issue in terms of what functions may be available, but the administrative law judge 

finds no claim, asserted or unasserted, which requires that any specific function be made 

available by an operating system interface. Also, neither the claims nor the specification require 

any particular operating system. In fact, the specification discloses: 

The Operating System Interface functions are operating system 

dependent and are implemented in the open source forkat 

available from SiRF Technology, Inc. The functions include 

Thread, mutex and semaphore functions. 

(CX-2 at 26:65-67.) Thus, far from requiring any specific “platform-independent functions.” as 

argued by complainant, the administrative law judge finds that the specification contemplates 

that the available functions could change and, indeed, could be changed for any particular 

implementation, as per the reference to “open source.” (Id.) Moreover, no specific functions, 

whether dependent or independent, are required by the claim language. Based on the foregoing, 

the administrative law judge finds that the claimed phrase “operating system interface” is 

construed as “an interface between the system and an operating system.” 

5. The Claimed Phrase “tracker interface function” 

Complainant argued that the claimed phrase “tracker interface function” should be 

construed as “a function provided to allow communication between the tracker hardware and the 

host processor.” (CBr at 102.) Complainant further argued that claim 1 recites that the “tracker 

86 
interface function” is for “communicating over the tracker hardware interface” and that a 

“processor” runs “the tracker interface function” and thus, that it is evident that the plain 

meaning of the term “tracker interface function” is a function provided to allow communication 

between the tracker hardware and the host processor. (CBr at 102- 103 .) Complainant further 

argued that its construction is supported by the specification of the ‘363 patent, which 

specifically characterizes a tracker interface function as a function that allows messages to be 

exchanged between the tracker hardware and various programs that run on the host processor. 

(CBr at 103.) Complainant also argued that the ‘363 patent specifies that its tracker interface 

functions allow communication between the tracker hardware and user programs/position library, 

both of which are run by the host CPU, and that the tracker interface in { 

1 (CBr at 103.) 

Respondents argued that a person of ordinary skill in the art would understand the term 

“tracker interface function” in the context of the claims to mean a function for communication 

over the tracker hardware interface. (RBr at 1 18.) Respondents further argued that nothing in the 

plain language of the term “tracker interface function” or in the specification limits this function 

to one used to communicate with a 

The staff argued that respondents’ construction of the claimed phrase in issue is correct, 

as it is based on the plain meaning of the term, and that complainant’s proposed interpretation 

improperly inserts a requirement that the communication is limited to a communication between 

the tracker hardware and the host processor. (SBr at 25.) 

22 Respondents represented that no issue in this investigation is dependent on the 

construction of “tracker interface function.” (RBr at 1 19.) 

87 
The claimed phrase “tracker interface function” appears in each of independent claims 1, 

8, and 16 of the ‘363 patent. The administrative law judge has found, supra, that a tracker is “a 

device that acquires data from a satellite and sends positioning information to a host.” 

Unasserted claim 1 of the ‘363 patent requires: 

a memory comprising a GPS library comprising a user interface, a 

tracker interface, and an operating system interface, the tracker 

interface comprising at least one tracker interface function for 

communicating over the tracker hardware interface; and a 

processor for running the tracker interface function. 

(CX-2 at 41 :65-42:3 (emphasis added).) Claims 8 and 16 require “calling a tracker interface 

function to receive positioning information from a tracker hardware interface. . .” (CX-2 at 

42:21-22; CX-2 at 4257-58.) Thus, the plain language of the claims shows that a tracker 

interface function” is “a function performed by an interface between a tracker and the system.” 

Several of the claims also require that the tracker interface function perform a specific action; for 

example, receiving positioning information from a tracker hardware interface. 

Referring to the specification, it discloses: 

The tracker hardware interface receives positioning information 

from the space vehicle tracker. Through functions in the tracker 

interface, the positioning information is communicated to the 

positioning engine. 

*** 

The tracker interface 306 provides for communication between the 

tracker hardware 104 and the host 102 and, to that end, may load 

and call the operating system 120 serial communication drivers. 

(CX-2 at 2: 15-1 8,4:49-52 (emphasis added).) Thus, the specification discloses that 

communication is the purpose of the tracker hardware interface. Although Table 6 in the ‘363 

Specification lists several specific functions in one exemplary implementation of the tracker 

88 
interface (CX-2 at 6:21-22, 59-67), Table 114 shows that those functions in Table 6 facilitate 

general communications, not what information is communicated. Based on the foregoing, the 

administrative law judge finds that the specification supports the plain language construction for 

this claimed phrase, Viz., “a function for the purpose of communication performed by an 

interface between a tracker and the system.” 

6. The Claimed Phrase, “command delivery function” 

Complainant argued that the claimed phrase “command delivery function” should be 

construed as “a function called by a user program to send at least one of a plurality of different 

commands to a GPS engine.” (CBr at 104.) Complainant further argued that the ‘363 patent 

utilizes an input function and an output function to communicate commands and messages, 

respectively, & CX-2 at 8:9-12 (Table 12) describes GPS-Output() as “receives a data from the 

GPS engine” and GPS-Input() as “send commands to the GPS engine.” (CBr at 104.) Thus, 

complainant argued, the ‘363 patent clearly describes the “command delivery” input function as 

being directional. (CBr at 105.) Complainant also argued that the GPS-Input() function can send 

many different commands, where CX-2 at 12:1-34 (Table 24) and CX-2 at 13:42-65 (Table 28) 

list various identifiers that can be used to send different commands. (CBr at 105.) Hence 

complainant argued that the GPS __ Input() command is a command delivery function capable of 

sending a command from among a plurality of different commands. (CBr at 105 .) 

Respondents argued that the claimed phrase in issue is simple and self descriptive, and 

that a person of ordinary skill in the art would understand the said claimed phrase, “command 

delivery function,” in the context of the claims, to mean a function used to deliver a command. 

(RBr at 1 19.) Respondents further argued that the phrases “command delivery function,” 

89 
“command delivery,” and “delivery function” are not used in the specification and are not 

discussed in the prosecution history. (RBr at 1 19.) Respondents also argued that, although the 

GPS-Input function can be used to “send commands to the GPS engine” (CX-2 at 8:ll-12 (Table 

12)), this example in no way restricts or narrows the scope of the claim term “command delivery 

function,” and the ‘363 patent makes clear that the GPS-Input and GPS-Output functions are but 

one exemplary implementation of the user interface 304 and that the description of an 

implementation of the invention does not limit the invention to the precise form disclosed. (RE3r 

at 120.) 

The staff argued that respondents’ claim construction is correct, as it is based on the plain 

and ordinary meaning of the words found in the claims. (SBr at 26.) 

The claimed phrase in issue appears in dependent claim 7, which reads: 

7. The system of claim 4, wherein the positioning engine 

communication function is a command delivery function. 

(CX-2 at 42: 17-1 8 (emphasis added).) Unasserted claim 4 reads: 

4. The system of claim 1, wherein the user interface comprises at 

least one positioning control function and at least one positioning 

engine communication function. 

(CX-2 at 42:9-11 (emphasis added).) Thus, the plain language of the claims indicates that a 

“command delivery function” is a positioning engine communication function, which is a 

specific function of the user interface used to deliver a command. The administrative law judge 

has construed “user interface,” supra, as “an interface between the system and a user.” Thus, the 

“command delivery function” must be a function that communicates a command between the 

user and the positioning engine. Also, claim 4 discloses a distinction between a ‘‘control’’ and a 

“communications” function. In fact, claims 5 and 6 read: 

90 
5. The system of claim 3,[231 wherein the positioning control 

function comprises a positioning engine start function. 

6. The system of claim 4, wherein the positioning control function 

comprises a positioning engine stop function. 

(CX-2 at 42:12-15.) Hence, claims 5 and 6 disclose specific control functions. 

Regarding the specification excepting the claims, the precise phrases “command delivery 

function, ” “command delivery,” and “delivery function” are not disclosed therein. However, the 

specification discloses: 

The user or GPS interface includes a GPS control interface and a 

GPS communication interface. The GPS control Interface functions 

allow a user program to start and stop the GPS engine using the 

functions shown in Table 1 1. 

(CX-2 at 7:44-47.) The two functions listed in Table 11 are GPS-Start() and GPS-Stop(). (CX-2 

at 7:49-54 (Table 1 l).) The specification further discloses: 

The GPS communication interface functions allow a user program 

to send and receive messages to and from the GPS engine using the 

functions shown in Table 12. 

(CX-2 at 8:l-3,) The two functions listed in Table 12 are GPS-Output() and GPS-Input(). (CX2 at 8:5-14 (Table 12).) As seen, supra, unasserted claim 4, from which asserted claim 7 

depends, makes a distinction between a positioning control function and a positioning engine 

communication function, and unasserted claims 5 and 6 describe said control functions as 

“positioning engine start function” and “positioning engine stop function.” Thus, the 

administrative law judge finds that the functions GPS __ Start() and GPS - Stop are positioning 

23 Claim 5 purports to depend from claim 3, but its language, viz. “wherein the 

positioning control function comprises . . .” has no antecedent support in either claim 3 or claim 

1, from which claim 3 depends. Said language does have antecedent support in claim 4. Thus, 

the administrative law judge reads claim 5 as depending on claim 4, and not on claim 3. 

91 
control fmctions, while GPS-Output() and GPS-Input() are positioning engine communication 

functions. The ‘363 patent discloses that the functions in Table 6 of the ‘363 patent show “one 

exemplary implementation of the user interface 304.” (RFF 979 (undisputed).) Each of 

GPS-Output() and GPS-Input() are disclosed therein. (CX-2 at 6:30-33 (Table 6).) The 

specification further discloses: 

The GPS Output function retrieves a message from [the1 

positioning engine. There are no return values. The function is 

called by the positioning engine whenever any message is sent out. 

*** 

The GPS Input function sends a command to the GPS engine. The 

function may be called by the client program to send a command to 

the GPS receiver. 

(CX-2 at 10:66-67, 1 1 :65-67 (emphasis added).) Thus, the function GPS-Output() does not meet 

the requirement of sending a command, while the function GPS-Input() does. Hence, 

GPS-Input() is an example of a function that meets all criteria of a “command delivery function.” 

The administrative law judge however finds nothing in the specification that supports a 

command being sent from the engine to the user. Based on the foregoing, the administrative law 

judge finds that a “command delive-y function” is “a function that communicates a command 

from the user to the positioning engine.” 

7. The Claimed Phrase “user interface message delivery function” 

Complainant argued that the claimed phrase “user interface message delivery function” 

should be construed as “a function called by a GPS engine to output at least one of a plurality of 

different messages from the GPS engine to a user program.” (CBr at 106.) Complainant also 

argued that the specification of the ‘363 patent describes a user interface message delivery 

function as the GPS-Output() function, which function is called by the positioning engine and is 

92 
used to send a message, selected from a list of messages, to a user application program. (CBr at 

106.) Thus, complainant argued that a “user interface message delivery function” is called by a 

GPS engine to send messages to a user program. (CBr at 106.) Specifically, complainant argued 

that the ‘363 patent, CX-2 at 10:66-11:2, states that “The GPS __ Output function retrieves a 

message from positioning engine. . . . The function is called by the positioning engine” and at 

CX-2 at 4:45-49 that “The positioning engine 302 calls a function provide by the user program 

122 (e.g., GPS-Output) to deliver positioning messages . . . to the user program 122.” Thus, 

complainant argued, as there is no description or even an indication of the “user interface 

message delivery fkction” GPS-OuputO being sent to the GPS engine, the ‘363 patent clearly 

describes the “user interface message delivery” output function as being directional and in the 

opposite direction as the input function. Complainant further argued that its construction takes 

into account that it is a call-back function. (CBr at 107.) Complainant argued that the 

specification clearly defines the output function as a call-back function. (CBr at 108.) Finally, 

complainant argued that the “user interface message delivery function” is capable of delivering a 

message from a number of different messages, as described in the specification of the ‘363 patent 

as per Table 22 (CX-2 at 11 :5-34) and Table 27 (CX-2 at 13:1-40), which list various identifiers 

that can be used to send messages via GPS-Output. (CBr at 108.) 

Respondents argued that a person of ordinary skill in the art would understand the term 

“user interface message delivery function” in the context of the claims to mean a function used to 

deliver a message. (RBr at 120.) Respondents also argued that the terms “user interface message 

delivery function,” “interface message delivery function,” and “message delivery function” are 

not used in the specification, and are not discussed in the prosecution history. (RBr at 12 1 .) 

93 
Respondents further argued that the ‘363 patent makes clear that the GPS-Input and GPS-Output 

functions are but “one exemplary implementation of the user interface 304” (RFF 979) and that 

the description of an implementation of the invention does not limit the invention to the precise 

form disclosed. (RBr at 12 1 .) Respondents, in addition, argued that unasserted claim 9 of the 

‘363 patent provides: “The method of claim 8, wherein the user interface message delivery 

function is provided by the user application.” and likewise that claim 17 is a similar dependent 

claim from claim 16. (RBr at 122.) Hence, respondents argued, the view that the “user interface 

message delivery function” of claim 8 can only be provided by the user application renders claim 

9 redundant. (RBr at 122.) Thus, respondents argued, because claim 8 must be broader than 

claim 9, the “user interface message delivery function” of claim 8 can be in either the user 

application or GPS engine, and therefore that the “user interface message delivery function” can 

be called by either the user application or the GPS engine. (RBr at 122.) 

The staff argued that respondents’ construction of the claimed phrase, which it argued i? 

based on the plain and ordinary meaning of the words found in the claim, is correct. (SBr at 27.) 

The staff argued that nothing in the claims require the GPS engine to make the call, and nothing 

requires that a plurality of different messages be included with the function. (SBr at 27.) The 

staff further argued that the plain language does not support such a construction, especially when 

the tern is read in context of the broader claim element: “calling a user interface message 

delivery function to communicate the position to a user application.” Thus, the staff argued, the 

claim element, as a whole, provides that it encompasses a simple delivery function that merely 

provides the position information, and that a plurality of commands is not needed. (SBr at 27.) 

The claimed phrase “user interface message delivery function” is found in asserted 

94 
independent claim 8 and unasserted dependent claim 9, as well as independent asserted claim 16 

and unasserted dependent claim 17. Thus, the limitation containing the claimed phrase in issue 

in both claims 8 and 16 reads “calling a user interface message delivery function to 

communicate the position to a user application.” (CX-2 at 42:26-27, 61-62 (emphasis added).) 

The relevant portions of claims 9 and 17 read “wherein the user interface message delivery 

function is provided by the user application.” (CX-2 at 42:28-30,63-64 (emphasis added).) 

Thus, the plain language of the claims requires that the function at issue be a part of a user 

interface and be able to communicate the position information to user application. The 

administrative law judge has construed “user interface,” supra, as “an interface between the 

system and a user.” Therefore, the plain language of the claims reads that said function is a 

function that communicates a message between a user and the system. In the context of claims 8 

and 16, that message is a position, and thus the question remains as to whether the function is 

restricted to only communicating a position. 

Regarding the specification, it discloses that: 

The positioning engine 302 calls a function providerdl by the user 

program 122 (e.g.., GPS Output) to deliver positioning messages 

(e.g., position updates and other synchronous and asynchronous 

data) to the user program 122 . 

(CX-2 at 4:46-49 (emphasis added).) Thus, the specification discloses GPS-Output as an 

example of a function that delivers the position to the user application. The specification also 

discloses that the user application can call the GPS-Input() function to send a variety of types of 

messages to the GPS engine. (CX-2 at 8:l-14.) Moreover, the administrative law judge has 

found, supra, that both GPS - Output and GPS-Input are “ positioning engine communication 

functions.” Specifically, Table 24 of the ‘363 patent lists the GPS-Input function as having 

95 
“messages.” (CX-2 at 12:l-34 (Table 24).) The ‘363 patent also discloses that inputs of both the 

GPS-Input and GPS-Output functions are messages. (See. e.&, CX-2 at 8:l-14, 10:66-67, 12:64- 

67.) Thus, the administrative law judge finds that either of the functions GPS - Input or 

GPS __ Output can satisfy the plain language of the claims as regards “user interface message 

delivery function,” and that said finding does not contradict his earlier finding, supra, that 

GPS-Input is also be a command delivery function. Hence, the specification supports the plain 

language of the claims, and that said function is not restricted to only communicating position 

information. Based on the foregoing, the administrative law judge finds that the claimed phrase 

“user interface message delivery function” is construed as “a function that communicates a 

message between a user and the system.” 

Regarding complainant’s argument that said function must be called by the GPS engine, 

neither claim 8 nor claim 9 requires that any particular component of the system call said 

function. Although said function is construed as being a component of the user interface, the 

administrative law judge has construed “user interface,” supra, as “an interface between the 

system and a user.” Thus, any component of the system could call the function. Further, the 

specification shows several components that could, theoretically, interface with the user 

interface. Fig. 3, for example, shows that User Programs 122, through Users Tasks 310, 

communicates with the GPS Library through the User Interface 304; and each of the GPS Engine 

302, Tracker Interface 306, and OS Interface 308 could also directly interact with the User 

Interface 304. Moreover, the administrative law judge has found, supra, that both GPS-Input and 

GPS-Output are user interface message delivery functions, and the specification describes one as 

being called by the user program and the other as being called by the GPS engine. 

96 
F. Infringement 

Applicable Law. See Section IV.F, supra. 

1. Accused Products 

Complainant accuses respondents’ { 

} chips and their associated software of indirect infringement of claims 7, 8, and 

10-12, and direct infringement of claims 16 and 18-20 of the ‘363 patent. (CBr at 11 1 .) 

Specifically, complainant argued that the { 

} (CBr at 1 11 .) Complainant also accused each of these 

products of contributory infringement of the ‘363 patent. (CBr at 1 1 1 .) Complainant argued that 

respondents produce the accused chips incorporated in the accused devices, as well as the GLI, 

host software run on the host processors of the accused products. (CBr at 1 1 1 .) 

Respondents and the staff disputed that the { } is a product, as it is still in 

development. (RBr at 5.) 

The administrative law judge has found, in Section 1V.F. 1 .a, supra, that the { 1 

is not an accused product in this investigation. Thus, the administrative law judge finds the 

accused products in isssue are the { 

97 
2. Complainant Has Not Established Infringement 

Claim 7 reads: ‘‘The system of claim 4, wherein the positioning engine communication 

function is a command delivery function.” (CX-2 at 42: 17-1 8.) Complainant argued that the 

requirement of claim 7, viz. wherein the positioning engine communcation function is a 

command delivery function, is satisfied by respondents’ { 

(CBrat 

125.) 

Respondents argued that the accused products lack numerous elements of claim 7, as the 

Global Locate baseband chips and the GLL software do not contain “a tracker hardware 

interface,” “a memory,” or a “processor” as required by claim 1 of the ‘363 patent, from which 

claim 7 depends. (RBr at 138.) Respondents further argued that the accused chips and the GLL 

software cannot directly infringe claim 1 of the ‘363 patent, as the chips and software must be 

added to components of the devices manufactured by Global Locate or Broadcorn’s customers. 

(RBr at 138.) Thus, respondents argued that Global Locate also cannot directly infiinge claim 7. 

(RBr at 138.) 

The staff argued that respondents’ non-infringement argument concerning the “command 

delivery function” claim element is based on an incorrect claim construction advocated by 

complainant, and fails to address the correct claim construction; and that the evidence shows that 

the Global Locate systems call a user interface to communicate the positioning information. (SBr 

at 32.) 

98 
Claim 7 depends from claims 1 and 4 of the ‘363 patent. Complainant admitted that it is 

not accusing respondents’ chips of direct infringement of claim 7. (CBr at 110.) However, 

complainant later argued that the “Accused Devices and Accused Products meet every limitation 

of, and thus literally infringe, all of the asserted claims.” (CBr at 125.) It is a fact that 

complainant’s expert Bartone testified that respondents’ chip products do not infringe claim 1 ’ 

which is a requirement for the products to infringe claim 7. Thus, he testified: 

Q. 

products infringe directly claim 1 ? 

Do you have an opinion as to whether Global Locate’s 

A. The products? 

Q. Baseband chips and the software. Do you have that in mind? 

A. Yeah, yeah. 

Q. Do those products directly infringe claim 1? 

A. No. 

(Tr. at 1086-1087.) Even more specifically, complainant’s expert Bartone testifed that the 

accused chip products do not contain a memory, a tracker hardware interface, or a processor: 

{ 

99 
1 

(Tr. at 1084-1 085 (emphasis added).) 

Based on the foregoing, the administrative law judge finds that the accused chip products 

do not directly infringe claim 7 of the ‘363 patent. 

Complainant has also accused several third-party devices that include certain of 

respondents’ chips of infringing claim 7, viz. { 

1 In order to infringe claim 7, said accused devices must practice not 

only the limitation of claim 7, but also the limitations of claims 1 and 4, from which claim 7 

depends. Specifically, the language of claim 4 requires “at least one positioning communication 

0 

100 
function” and “at least one positioning control function,” and further requires that both functions 

be a part of the user interface. The administrative law judge has construed “user interface,” 

supra, as “an interface between the system and a user.” Complainant argued, with regard to 

claim 7, that: 

(RBr at 172 (Exhibit A).) Neither complainant in its post hearing briefs nor complainant’s expert 

Bartone opined on whether or not any specific accused device uses { } that 

complainant is depending on to prove infringement of claim 7.24 In an attempt to show such a 

link, complainant, in its proposed finding of facts, points to certain evidence in the record that 

purportedly links the technical document CX- 19C, which describes respondents’ GL.L functions, 

24 Complainant has not pointed to any testimony by its expert Bartone that articulates an 

opinion on direct infringement of claims 1,4, or 7; even in response to a proposed finding of fact 

by respondents in which they stated that “Dr. Bartone did not testify or otherwise offer an 

opinion regarding infringement of claim 1,4, or 7 of the ‘363 patent.” (RFF 1369 (internal 

citation omitted).) Instead, complainant points to portions of discussions about claim 8 (see 

CRRFF 1369, CRRFF 1369B, CRRFF 1369C), claim 11 (E CRRFF 1369D), claim 16 (E 

CWF 1369A), and a portion of cross examination on claim 4 that appears to be concerning 

claim construction that does not even mention an accused product (see CRRFF 1369E). In its 

rebuttal brief, however, complainant does state that: 

Respondents’ contention that Dr. Bartone did not testify to this at 

the Hearing is simply wrong. Dr. Bartone specifically identified 

(Bartone, Tr. 1177:2-1179:6; CRRFF 1369F.) 

{ 1 

(RRBr at 87.) Even that testimony, however, does not link said function to any specific accused 

device. 

101 
including { 

judge’s construction of “user interface,” supra, and his finding that the respondents’ chip 

products, alone, cannot directly infiinge claims 1,4, and 7, the administrative law judge finds 

that, to establish infringement by a preponderance of the evidence, complainant must prove that a 

3 to certain accused devices. Based on the administrative law 

specific accused device implements and uses { 3 

Respondents admitted that “[tlhe software that Broadcom supplies to its customers for 

GPS products is known as the Global Locate Library or GLL” and further admitted that CX-19C 

is a document that describes the GLL APIs. (RFF 389 (undisputed); RRCFF 1264.) The parties 

agreed that an API is an application programming interface. (RFF 1838 (undisputed).) The 

administrative law judge finds nothing in the document itself, however, that discusses any 

specific end product. (& generally, CX-l9C.) { 

3 

102 
1 

(JX-7C at 55-56.) Even ignoring that the cited testimony is regarding CX-676C, which is a 

different document than CS- 19C, said testimony specifically states that { 

} Thus, complainant has not shown a 

direct 1 link between { 

103 
1 

(JX-17C at 1 1 1 .) Again, the cited testimony fails to mention any specific function or any specific 

products. Thus, the administrative law judge finds that complainant has failed to show any 

connection between { 1 

{ 

Based on the foregoing, the administrative law judge finds that complainant has not 

shown, by a preponderance of the evidence, that any of the accused devices have a user interface 

that implements { 

infringement. 

} which function complainant depends to prove 

Moreover, the administrative law judge has found, supra, that a “command delivery 

function” is “a function that communicates a cormnand from the user to the positioning engine.” 

Said function is a “positioning engine communication function,” which is distinct from a 

“positioning control function,” such as functions used to start and stop the positioning engine. 

Thus, the administrative law judge finds that the key distinction between these types of functions, 

- i.e., positioning control functions and positioning engine communication functions, is that 

control functions are essential to the operation of the positioning engine, whereas communication 

functions are concerned with either modifying the operation of or monitoring the position engine. 

Thus, starting and stopping the positioning engine are examples of control functions, as per Table 

11 of the specification (E CX-2 at 7:44-54), whereas providing status information, as do both 

104 
GPS-Output (CX-2 at 13 : 1-40 (Table 27)) and GPS-Input (CX-2 at 13 :43-67 (Table 28)), or 

setting non-essential parameters, such as the message rate, as does GPS-Input (CX-2 at 14:36-60 

(Table 30), are examples of communication functions. 

Complainant has relied only on CX-19C and its expert Bartone’s explaination of such. 

CX-19C discloses: 

{ 

(CX-19C at GL-596 000582.) { 

1 

(CX-19C at GL-596 000609 (emphasis added).) { 

} Based on the foregoing, the administrative law judge finds that the 

function on which complainant relies for infringement, viz. { } is a positioning control 

function and not a positioning engine communciation function. Thus, the administrative law 

judge finds that Complainant has not established, by a preponderance of the evidence, that the 

accused products have a “command delivery function” as required by claim 7. 

105 
Based on the foregoing, the administrative law judge finds that complainant has not 

shown, by a preponderance of the evidence, that the accused products (chips or devices), practice 

claim 7 of the ‘363 patent. 

Referring to claims 8 and 16, complainant argued that claim 8 is a method claim that 

recites a single apparatus limitation, Viz. a tracker hardware interface; and that each accused 

product contains such an interface. (CBr at 112.) Thus, complainant argued that { 

} (CBr at 112.) 

Respondents argued that complainant has not establish that any accused product infringes 

the ‘363 patent, as the accused products work in a fundamentally different way and employ a 

fundamentally different structure from what is claimed in the asserted ‘363 patent claims. (FBr at 

123 .) Respondents further argued that no accused baseband chip is a “tracker” or outputs 

“positioning information,” as required by each asserted claim (KBr at 123); that in an attempt to 

avoid the prior art, complainant’s expert Bartone construed the terms “command delivery 

function” from claim 7 and “user interface message delivery function” from claims 8 and 16 

narrowly, and these narrow constructions do not read on the accused products (RBr at 123); and 

that it was undisputed at the hearing that none of respondents’ products, by themselves, directly 

infringe any asserted claim of the ‘363 patent. (RBr at 123 .) 

106 
The staff argued that respondents dispute only a few elements and essentially base their 

non-infringement positions on claim construction arguments, including claim constructions 

offered by complainant, which constructions respondents have argued are incorrect. (SBr at 30- 

3 1 .) The staff further argued that the evidence shows that the accused chips and software, as 

used in the accused devices, directly infringe the method claims and computer-readable medium 

claims. (SBr at 3 1 .) 

Complainant does not accuse any of respondents’ chips of direct infringement. (CBr at 

110.) Thus, only the accused devices, viz. { 

1 are in issue with 

respect to claim 8. The following two claimed phrases, however, appear in both claims 8 and 16: 

“calling a tracker interface hnction to receive positioning information from a tracker hardware 

interface” and “calling a user interface message delivery function to communicate the position to 

a user application.” 

Referring to the first phrase, Viz. “calling a tracker interface function to receive 

positioning information from a tracker hardware interface,” as found regarding claim 

construction, supra, the claims do not require a particular tracker, but rather that a tracker be “a 

device that acquires data from a satellite and transmits positioning information.” Thus, a tracker 

hardware interface is an interface between the tracker hardware and the system at issue, which 

definition the parties agreed. The parties agreed that the accused baseband chips { 

1 (RFF 1454, 1455 (undisputed).) Moreover, 

107 
respondents’ expert Michalson specifically testified that the accused products { 

1 

1 

(Tr. at 1697-1698 (emphasis added).) Complainant, however, must show that the claim 

requirement “calling a tracker interface function to receive positioning information from a tracker 

108 
hardware interface” occurs. Hence, complainant must show that each of the accused devices calls 

a tracker interface function in order to receive the positioning information. 

Complainant has argued that the accused products satisfy the limitation of “calling a 

tracker interface function to receive positioning information from a tracker hardware interface” 

by 

1 (CFF 1314 citing Tr. at 987-988.) The CX-19C also used by 

complainant in support, describes { 

} (CX-19C at GL-596 000582.) { 

1 (CX-19C at GL-596 

00063 1 (emphasis added).) { 

1 

c 

1 

(CX-19C at GL-596 000582 (emphasis added).) Thus, the administrative law judge finds that the 

mere reference to the CX- 19C document is insufficient to show that the accused products use { 

} For example, nothing in CX- 19C discusses 

any details regarding specific end products or implementations (see, generally, CX-1 9C). Also 

any particular “target device,” i.e. accused device, { 

2s As found, sums, respondents admit that “[tlhe software that Broadcom supplies to its 

customers for GPS products is known as the Global Locate Library or GLL” and further admit 

that CX-19C is a document that describes the GLL APIs. (RFF 389 (undisputed); RRCFF 1264.) 

109 
1 

(CX-19C at GL-596 00063 1 .) Complainant referenced CX-311C and CFF 322-330 as showing 

how { 

} (RBr at 114.) The 

administrative law judge, however, finds that each of complainant’s proposed findings of fact 

that purport to relate to the issue, Viz. CFF 322-330, do not provide sufficient information to 

support complainant’s contention. For example, CFF 322,325,330, and 331 merely confirm 

that data is sent to the ASIC. Regarding CX-3 1 1, complainant pointed out no explaination 

beyond the bare document reference. However, the administrative law judge notes that { 

} (CX-3 11 

at 6-7.) Therefore, the additional step of showing how said function might be used to facilitate 

the positioning system receiving positioning information remains unexplained. Hence, the 

administrative law judge finds that complainant has not shown, by a preponderance of the 

evidence, that said limitation in issue is practiced by the accused third party devices. Moreover, 

{ 

} (CX-19C at GL-596 000582 { 

} CX- 19C at GL-596 00063 1 .) Thus, the administrative law judge finds 

that complainant has not shown, by a preponderance of the evidence, that the accused chip 

products { } to receive position information, as required by the limitation 

110 
of “calling a tracker interface function to receive positioning information from a tracker hardware 

interface .” 

Referring to the claimed phrase, “calling a user interface message delivery function to 

communicate the position to a user application,” the administrative law judge has found, supra, 

that the claimed phrase “user interface message delivery function” is construed as “a function 

that communicates a message between a user and the system.” In the context of the claimed 

phrase at issue, said message must be the “position.” Complainant relies on one of { 

} In the CX- 19C document, 

{ 3 

(CX-19G at GL-596 000636.) { 

{ 

3 

3 

(CX-19C at GL-596 000637.) { 

} Moreover, complainant admits as such in their post hearing brief. (CBr at 116.) 

Communicating to the user application that a position is available is not the same as 

communicating the actual position. Complainant appears to argue that { 

} (CBr at 116.) { 

3 

111 
(CX-19C at GL-596 000587.) { 

1 Hence, the administrative law judge finds that 

complainant has not shown, by a preponderance of the evidence, that said limitation is practiced 

by any of the accused products, whether chip or device. 

Based on the foregoing, the administrative law judge finds that complainant has not 

shown, by a preponderance of the evidence, that the accused products, whether chip or device, 

practice the limitations of claims 8 or 16. 

Referring to claims 10, 1 1, 12, 18, 19, and 20, each of said claims depend from asserted 

independent claim 8 or 16. The administrative law judge has found that complainant has not 

shown, by a preponderance of the evidence, that the accused products practice either claim 8 or 

16. Thus, the administrative law judge finds that complainant has likewise not shown, by a 

preponderance of the evidence, that the accused products practice any of said dependent claims 

10, 11, 12, 18, 19, and 20. 

Regarding the doctrine of equivalents, complainant, in its proposed findings of fact, does 

not include any proposed facts regarding the doctrine of equivalents. Complainant does, in its 

post hearing brief, give a general argument as regards the doctrine of equivalents, consisting of 

mostly conclusory statements with no reference to any testimony at the hearing. In fact, the only 

sentence with any evidentary support whatsoever is: 

{ 

} (CFF 396,1312, 1348,1350.) 

(CBr at 13 1-32.) Said citation tends to show that the accused devices { 

1 which the administrative law judge finds is insufficient to show that 

112 
any particular element is infringed under the doctrine of equivalents. In its rebuttal brief, 

complainant argued that: 

Infringement by the doctrine of equivalents is a legal standard. Dr. 

Bartone presented explicit detailed testimony as to how the 

Accused Devices and Accused Products meet each limitation of the 

asserted claims. Should the Court determine that “tracker” is a 

limitation of the asserted claims, for the reasons set forth in SiRF’s 

Post-Hearing Brief at pp. 13 1 - 132, SiW submits that the function, 

way, result test for infringement under the doctrine of equivalents 

is fully supported by Dr. Bartone’s testimony. 

(RBr at 93.) Essentially, complainant here is admitting that its expert witness Bartone’s 

testimony did not include any analysis of the function, way, result test for infringement under the 

doctrine of equivalents. 

complainant’s rebuttal responses to respondents’ proposed findings of fact likewise 

attempt to use Bartone’s testimony for literal infringement to support an argument for 

infringement under the doctrine of equivalents. For example, in response to RFF 137 1. which 

reads “SiRF presented no evidence at the hearing in this investigation regarding infringement 

under the doctrine of equivalents for any claim element of the ‘363 patent. (Bartone, Tr. at 

9775-1 01 0:9.)”, complainant argued: 

Mischaracterizes record; record supports opposite 

conclusion - the evidence presented at the hearing is sufficient to 

demonstrate infringement under the doctrine of equivalents; 

misleading; irrelevant - the question of infringement under the 

doctrine of equivalents is a legal conclusion, not a factual one, and 

arguments relating to infringement under the doctrine of 

equivalents can be made based on evidence presented at the 

hearing. 

113 
(CORFF 1371 .) Thus, Complainant appears to be arguing that underlying facts for literal 

infringement are identical to underlying facts for doctrine of equivalents. As the administrative 

law judge stated in reference to testimony by Bartone about the ‘2 16 patent during the hearing: 

JUDGE LUCKERN: As far as a difference between literal 

infringement and doctrine of equivalents, there is a huge 

difference. You know that. I mean, there is a way, meanings, 

whatever it is. He may not understand the law. I don’t expect him 

to do it. He is not a lawyer. He is doing a great job but there is a 

big difference as to whether somebody literally infringes or 

infringes by the doctrine of equivalents. 

(Tr. at 650.) Reference is also made to Texas Instruments, Inc. v. Cwress Semiconductor Corn., 

90 F.3d 1558, 1567 (Fed. Cir. 1996) (requiring “particularized testimony and linking argument as 

to the ‘insubstantiality of the differences’ between the claimed invention and the accused device 

or process” to prove infringement under the doctrine of equivalents). Based on the foregoing, the 

administrative law judge finds that complainant has failed to adequately address the doctrine of 

equivalents in its post-hearing submissions, and that complainant’s expert Bartone failed to 

provide any particularized testimony regarding the doctrine of equivalents with respect to the 

‘363 patent. ‘Thus, the administrative law judge finds that complainant has not established, by a 

preponderance of the evidence, that the accused products infringe under the doctrine of 

equivalents. 

Because complainant has failed to prove any underlying direct infringement, the 

administrative law judge finds that complainant has failed to establish indirect infringement, 

whether through inducement or contributory infringement. DSU Med. Cog., supra. 

114 
G. Validity 

A patent is presumed valid, and respondents have the burden of proving invalidity by 

clear and convincing evidence. 35 U.S.C. 5 282; Iron Grip Barbell Co. v. USA Sports, Inc., 392 

F.3d 1317, 1320 (Fed. Cir. 2004); Strvker COT. v. Davol Inc., 234 F.3d 1252, 1259 (Fed. Cir. 

2000). Clear and convincing evidence has been described as evidence which proves in the mind 

of the trier of fact “an abiding conviction that the truth of [the] factual contentions [is] ‘highly 

probable.”’ Intel COT. v. United States Int’l Trade Comm’n, 946 F.2d 821, 829-30 (Fed. Cir. 

1991) (quoting Colorado v. New Mexico, 467 U.S. 3 10,3 16 (1 984)). 

A patent claim is invalid as anticipated if “the invention was patented or described in a 

printed publication in this or a foreign country, before the invention thereof by the applicant for 

patent, or . . . patented or described in a printed publication in this or a foreign country more than 

one year prior to the date of the application for patent in the United States.” 35 U.S.C. 9 

102(a)-(b). Anticipation requires that a single prior art reference discloses each and every 

limitation of the claimed invention. Scherine; COT. v. Geneva Phams:, 339 F.3d 1373, 1379-80 

(Fed. Cir. 2003). Anticipation is a question of fact. SmithKline Beecham Corp. v. Apotex 

Cop, 403 F.3d 1331, 1342-43 (Fed. Cir. 2005). 

To anticipate, a prior art reference must also describe the claimed invention sufficiently to 

have placed it in possession of a person of ordinary skill in the field of the invention, and be 

“enabling.” Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000). An enabling 

reference contains a description detailed enough to allow one skilled in the art to make and use 

the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. 

Cir. 1993). 

115 
For a reference to anticipate a claim under the doctrine of “inherent anticipation,” the 

evidence “must make clear that the missing descriptive matter is necessarily present in the thing 

described in the reference, and that it would be so recognized by persons of ordinary skill.” 

Robertson, 169 F.3d 743,745 (Fed. Cir. 1999) (quoting Cont’l Can Co. v. Monsanto Co., 948 

F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities 

or possibilities. The mere fact that a certain thing result from a given set of circumstances is 

not sufficient.” Cont’l Can, 948 F.2d at 1269 (citations omitted) (emphasis added). 

Respondents argued that each of the GPS Builder System, sold by SEC Plessey 

Semiconductors and the FirstGPS System of Trimble Navigation Limited contain “all limitations 

from all asserted claims of the ‘363 patent.” (RBr at 142.) 

1. GPS Builder System 

Regarding whether or not the GPS Builder System is prior art, the parties agreed that the 

‘363 patent was filed on October 10,2002. (RFF 1800 (undisputed).) The parties agreed that the 

GPS Builder system was publicly available at least as early as 1995. (RFF 1867 (undisputed).) 

The parties agreed that a GPS Builder system was sold to respondents’ expert Michalson in 1995 

with documentation. (RFF 1866, 1868. (undisputed).) Michalson used the GPS Builder system 

from 1995 to about 2001, and had graduate students also working with it. (RFF 1872, 1873 

(undisputed).) Complainant’s expert Bartone was aware of the GPS Builder system, and that 

certain students were working with it in 1998. (RFF 1874, 1875 (undisputed).) Based on the 

foregoing, the administrative law judge finds that the GPS Builder system is prior art to the ‘363 

under at least 35 U.S.C. 63 102(a) and (b). 

116 
Referring to claim 7, respondents argued, regarding the claim requirement of a “command 

delivery function,” that even under complainant’s expert Bartone’s improperly narrow claim 

interpretation, at least the track function of the GPS Builder was a “command delivery function” 

because it received input parameters that selected the channel number and the satellite pseudorandom noise (PRN) number being tracked; and that this function met Bartone’s claim 

interpretation for “command delivery function” because it was “a function called by a user 

program to send at least one of a plurality of different commands to a GPS engine.” (RBr at 149- 

150.) 

Complainant argued that respondents’ expert Michalson only provided conclusory 

statements and quotes about functions in the GEC Plessey GPS Builder, and did not demonstrate 

how those functions satisfied SiRF’s constructions of the terms. (CBr at 145.) Complainant 

further argued that, under SiRF’s construction, Michalson testitied only that the GPS Builder 

track function meets the “command delivery function” limitation. (CBr at 146.) Cornplainant 

also argued that the GPS Builder track function does not meet complainant’s construction of the 

term “command delivery function” because the GPS Builder track function is not capable of 

delivering at least one of a plurality of different commands like the “command delivery function” 

set forth in the Yamamoto ‘363 patent. (CBr at 146.) 

The staff argued that the evidence shows that the GEC Plessey Semiconductors’ GPS 

Builder System anticipates the asserted claims of the ‘363 patent and that the system was on sale 

for more than one year before the date of the ‘363 patent’s application. (SBr at 40.) The staff 

argued that complainant disputes only a few claim elements, including the “command delivery 

117 
function” of claim 7, but relies on complainant’s incorrect claim construction to argue that the 

command delivery function must be capable of delivering multiple commands. (SBr at 4 1 .) 

In order to anticipate claim 7 of the ‘363 patent, the GPS Builder system must anticipate 

each limitation of claims 1,4, and 7. The preamble of claim 1 recites: “A system for processing 

positioning signals, the system comprising: . . .” (CX-2 at 4151-62.) RX-98 is entitled, “GPS 

Builder 12 Channel GPS Development Kit,” and has a copyright date of August 1994. (RFF 

1879, 1880 (undisputed).) Said document discloses: 

There are many applications which use the Global Positioning 

System (GPS) so understanding how to design products with this 

capability is now crucial. To help satisfy this need, GEC Plessey 

Semiconductors offer GPS Builder - a development kit which can 

provide a fully functional demonstration of a 12 channel GPS 

receiver when installed in a 486 DX PC and coupled to an external 

antenna, which is also provided in the kit. GPS Builder is a 

prototyping aid for basic GPS receiver design and is based on the 

GP 10 1 O/GP 1020 chipset. Included in the kit is the necessary 

software both in executable format and full source code to help in 

further development. 

(RX-98 at GL - 596 471468.) Respondents’ expert Michalson used the GPS Builder system from 

1995 to about 2001, i.e. around 6 years. (RFF 1872 (undisputed).) Thus, Michalson testified: 

Q. 

Builder system? 

Can you describe for us the software architecture of the GPS 

A. 

it provided an interface to the operating system, the system 

operated on an operating system. It had user keyboard input and 

user display, and it would calculate navigation results. And the 

sample application they gave you would allow the user to send 

various commands to the GPS Builder positioning engine, and the 

positioning engine would deliver updated positions to the user and 

display them on screen. 

Yes. The software would reside in memory on the host. And 

118 
(Tr. at 1735.) Complainant admits that in RX-97 for the GPS Builder, Fig. 2 depicts the 

microprocessor system as outputting a navigation solution. (RFF 1924 (undisputed); see also Tr. 

at 1732-1733; RX-97 at GL-596 471435.) Michalson’s testimony stands unrebutted by 

complainant’s expert and is supported by documents in evidence. Thus, the GPS Builder was a 

GPS receiver that received satellites signals and processed those signals to derive positioning 

information. To the extent that the preamble of claim 1 may be limiting, based on the foregoing, 

the administrative law judge finds that respondents have established, by clear and convincing 

evidence, that the GPS Builder system satisfies the preamble of claim 1. 

Referring to the element of claim 1 reading “a tracker hardware interface for receiving 

positioning information” (CX-2 at 41 :63-64), the administrative law judge has found, supra, that 

a tracker is “a device that acquires data from a satellite and transmits positioning information.” 

The administrative law judge has also found that no particular kind of tracker is required by the 

claims, and that a “tracker hardware interface” is an interface between the system at issue and the 

tracker. Thus, Nichalson testified that: 

Q. 

tracker hardware interface for receiving positioning information? 

Can I have RDX-65, please. Did the GPS Builder have a 

A. 

host PC. 

Yes. The GPS Builder System had a hardware interface to the 

Q. 

Builder have a tracker? 

Under Dr. Bartone’s construction of a tracker, did the GPS 

A. Under Dr. Bartone’s construction, it did. 

Q. Under your construction and the -- I’m sorry, under the staffs 

construction of a tracker, did the GPS Builder have a tracker? 

A. 

broader than Dr. Bartone’s, it certainly would also have a tracker. 

Yeah, to the extent that the staffs construction is read to be 

119 
(Tr. at 1740.) The RX-97 document, to which Michalson refers in RDX-65, states: 

The GP 1020 is a six-channel CMOS digital correlator which has 

been designed to work with the GP 10 10 L1 -channel 

down-converter or other integrated circuits, and may be used to 

acquire and track the GPS C/A code or the GLONASS 

signals.. .The GP1020 interfaces with a microprocessor via a 16-bit 

data bus to control the acquisition and tracking processes using the 

various registers on the chip. 

(Rx-97 at GL-596 471434.) Michalson’s testimony stands unrebutted by complainant’s expert, 

and is supported by documents in evidence. Thus, the GPS Builder system comprises a tracker, 

and said tracker interfaces with the system to receive positioning information. Based on the 

foregoing, the administrative law judge finds that respondents have established, by clear and 

convincing evidence, that the GPS Builder system practiced this limitation of claim 1. 

Referring to the claim 1 recitation, “a memory comprising a GPS library comprising a 

user interface, a tracker interface, and an operating system interface, the tracker interface 

comprising at least one tracker interface function for communicating over the tracker hardware 

interface” (CX-2 at 41 :65-42:2), the administrative law judge has found, supra, that “user 

interface’’ is construed as “an interface between the system and a user;” that the claimed phrase 

“operating system interface” is construed as “an interface between the system and an operating 

system;” and that a “tracker interface hnction” is “a function for the purpose of communication 

performed by an interface between a tracker and the system.” Thus, Michalson testified: 

Q. 

have a GPS library stored in memory? 

Could I have RDX-66, please. Did the GPS Builder System 

A. Yes. A large fraction of the GPS Builder code was relegated 

to doing functions that would be associated with the GPS library. 

120 
Q. 

exhibit from which you found the information relied upon, that 

would be helpful. 

As we go through each of these, if you could summarize the 

A. 

for the software. It also talks about the full source code being 

supplied with the GPS Builder. 

Sure. The quotations refer to the requirement for disk space 

Q. And what exhibits were you referring to? 

A. I was referring to Exhibits RX-101 and RX-98. 

Q. 

GPS Builder include a user interface? 

Turn, if you would, to RDX-67. Did the GPS library of the 

A. Yes. I think there were several functions that could be 

interpreted as a user interface, citing to RX-125C, you will find a 

number of functions defined there, including GPS Builder 

function, which does initialization, a quit GPS function, which 

exits the positioning engine, and a track function, which does 

satellite selection and determines what satellites are tracked, a 

navigate function, which actually performs a navigation cycle and 

computes position. 

And we also have a citation to RX-IO 1, that, you know, 

talks about hardware IO and memory structures associated with a 

system using the GPS Builder card. 

Q. 

GPS Builder include an operating system interface? 

Turn, if we could, to RDX-68. Did the GPS library of the 

A. 

you will see that they say that it will run under MS-DOS and under 

Windows. And I have run it in both of those modes without 

difficulty. 

Yes, it did. If you look in the GPS Builder documentation, 

It also, if you refer again to RX-l25C, there are a number of 

C standard library calls to operating system functions that are used 

within the source code. 

Q. And the exhibits that you were relying upon? 

A. RX-101 mdRX-125C. 

121 
Q. 

Did the GPS librarv of a GPS Builder include a tracker interface 

function for communicating over the tracker hardware interface? 

Turn, if we could, to RDX-69 and the term ''tracker interface." 

A. Yes. There were a number of functions that were involved on 

the low level processing of that data, functions like ProcAccum, 

TakeMeas, and BufferAccwn were involved with doing things like 

reading the accumulations out of the correlator. In the case of 

BufferAccum, extracting the actual measurements from that 

correlation information and so on. Those are cited in RX-1257C. 

In terms of the tracker hardware interface element, the 

quote from RX-98 describes the interface card, the ISA bus 

interface that we had talked about being used to contribute the 

correlators. 

(Tr. at 1740-1 743 (emphasis added).) The RX-98 reference of the GPS Builder lists as a feature: 

Full Software including Source. Easily installed so you can be 

tracking in minutes! 

(RX-98 at GL-596 471468 (emphasis added).) Said document also states: 

The software core routines acquire and track satellites using each 

of the 12 independent tracking channels in the GP 1020 correlators, 

then compute a position solution from the resulting data. 

(RX-98 at GL-596 471468 (emphasis added).) Thus, the software was a GPS library as disclosed 

in the '363 patent; that is, a collection of functions for the purpose of controlling a GPS system. 

The designers guide for the GPS Builder, RX-101, states: 

1.4 MB of free hard disk space is required for installation of the 

software. 

(RX-1OlC (Designer's Guide) at GL-596 472213.) Hence, the GPS Builder system required a 

memory for operation, which memory stored the GPS library. 

Regarding a user interface, RX-98 reads in part: 

The results of this process are shown on various display screens on 

the PC monitor. 

122 
(RX-98 at GL-596 471468.) The display is updated by the “task Tdisplay in module 

DISPLAY.C,” (RX-101 at GL __ 596 472259) the purpose of which is to “generate an updated 

CRT display at regular time intervals.” (RX- 10 1 at GL-596 472259.) Thus, the GPS Builder 

system comprises a function that interfaces between the system and a user. 

As regards an operating system interface, RX-10 1 states: 

GPS Builder requires the MS-DOSTM operating system, version 5.0 

or higher. It has been executed under WindowsTM as a full-screen 

foreground DOS application with slight degradation in real-time 

performance. 

(RX-101 at GL-596 472214.) The parties agreed that Michalson ran the software for the GPS 

Builder system under the MS-DOS, Windows, and Linux operating systems. (RFF 2007,2008, 

2009 (undisputed).) The GPS Builder source code included functions such. as fprintf, rewind, 

fclose, fgets, sscanf, and fopen. (WF 20 1 1 (undisputed).) Said functions were used, inter alia, 

for the purpose of writing informaticn to storage. (RX-125 at GL-596 471767,792,800,801 .) 

For example, the function SaveAlm purports to “Save almanacs, ionosphericAJTC models, and 

current ephemerides to a disk file” and uses the fwrite function to do so. (RX-125 at GL-596 

471 792.) Thus, the GPS Builder system includes functions that communicate with the 

underlaying hardware; which is a function of the operating system. (See, e.%, CX-2 at 4:52-55 

(“The operating system interface 308 calls operating system functions for task scheduling and 

synchronization, RTC access, and storage access.”).) Hence, the administrative law judge finds 

that respondents have established, by clear and convincing evidence, that the GPS Builder system 

comprises on operating system interface. 

Regarding “the tracker interface comprising at least one tracker interface function for 

communicating over the tracker hardware interface,” the administrative law judge has found, 

123 
supra, that the GPS Builder system comprises a tracker hardware interface. The conelators are 

described as the component that acquires and tracks the positioning information, thus: 

The GP 1020 is a six-channel CMOS digital correlator 

which has been designed to work with the GP 10 10 L1 -channel 

down-converter or other integrated circuits, and may be used to 

acquire and track the GPS C/A code or the GLONASS 

signals.. .The GP 1020 interfaces with a microprocessor via a 16-bit 

data bus to control the acquisition and tracking processes using the 

various registers on the chip. 

(RX-97 at GL-596 471434.) Complainant admits that several functions of the GPS Builder 

system control or otherwise communicate with the correlators. (RFF 2023, RFF 2025, RFF 2027 

(all undisputed).) Thus, the GPS Builder system includes at least one tracker interface function. 

Based on the foregoing, the administrative law judge finds that respondents have 

established, by clear and convincing evidence, that the GPS Builder system practices this 

limitation of claim 1 of the ‘363 patent. 

Referring to the claim 1 recitation “and a processor for running the tracker interface 

function,” (CX-2 at 42:3) the administrative law judge has found, supra, that GPS Builder system 

has at least one “tracker interface function” that communicates with the correlators. RX-98 

states: 

The correlators are controlled by the host microprocessor via the 

ISA interface card. 

(RX-98 at GL-596 471468.) Thus, to be controlled by the microprocessor, the administrative 

law judge finds that there must be communication between said correlators and said 

microprocessor. Hence, said tracker interface function(s) must be run by the processor. Also, 

RX-97 states: 

124 
The very wide variety of types of GPS or GLONASS receiver need 

to operate the correlator in different ways so, to accommodate this 

and also to allow dynamic adjustment of loop parameters, the 

GP 1020 has been designed to use software for as many functions 

as possible. This flexibilitv means that the device cannot be used 

without a microprocessor closely linked to it, but as a processor is 

always needed to convert the output of the GP 1020 into useful 

information this is not a significant limitation. 

(Rx-97 at GL-596 47139.) Thus, a processor is a requirement of the GPS Builder system, and it 

is used to run a tracker interface function. 

Based on the foregoing, the administrative law judge finds that respondents have 

established, by clear and convincing evidence, that claim 1 of the ‘363 patent at issue is 

anticipated by the GPS Builder system. 

Claim 4 reads: “The system of claim 1, wherein the user interface comprises at least one 

positioning control function and at least one positioning engine communication function.” (CX-2 

at 42:9-12.) The language of claim 4, from which claim 7 depends, requires “at least one 

positioning communication function,” “at least one positioning control function,” and that both 

functions be a part of the user interface. As found, supra, the GPS Builder system comprises a 

user interface. Moreover, the administrative law judge has found, supra, that a ‘‘command 

delivery function” is “a function that communicates a command from the user to the positioning 

engine.” Said function is a “positioning engine communication function,” which is distinct from 

a “positioning control function,” such as func,tions used to start and stop the positioning engine. 

Thus, the administrative law judge has found, supra, that the key distinction between these types 

of functions, i.e., positioning control functions and positioning engine communication functions, 

is that control functions are essential to the operation of the positioning engine, whereas 

communication functions are concerned with either modifying the operation of or monitoring the 

125 
positioning engine. Hence, starting and stopping the positioning engine are examples of control 

functions, as per Table 11 of the specification (see CX-2 at 7:44-54), whereas providing status 

information, as do both GPS-Output (CX-2 at 13: 1-40 (Table 27)) and GPS - Input (CX-2 at 

13 :43-67 (Table 28)), or setting non-essential parameters such as the message rate, as does 

GPS-Input (CX-2 at 14:36-60 (Table 30), are examples of communication functions. The parties 

agreed that the GPS Builder source code included a gpsbldr function that “[initializes] the GPS 

Builder(TM) hardware and software.” (RFF 204 1 (undisputed in relevant part).) Initializing the 

system is a requirement of starting the positioning system and, thus, said function is analogous to 

a control function as described in the ‘363 patent. Moreover, the parties agreed that the GPS 

Builder source code included a quitgps function that “quits the application in a graceful way.” 

(RFF 2042 (undisputed).) Also, Michalson testified: 

Q. Let’s turn to claim 4 now. Can I have RDX-71? please. There 

is an additional limitation to claim 4. Let me ask you this question: 

Did the GPS Builder software include a “positioning control 

function”? 

A. 

contained at least two functions that you can interpret as a 

positioning engine control function. Those would be the GPS 

Builder function and the quit GPS function. 

Yes. I believe the source code, which is the RX-l25C, 

(Tr. at 1745 (emphasis added).) Thus, the GPS Builder system user interface comprises control 

functions. 

Regarding the requirement of a “positioning engine communication function,” the parties 

admitted that the GPS Builder source code included a track function that “performs a satellite 

selection process which decides which satellites should be tracked and which channels they 

should be assigned to.” (RFF 2043 (undisputed).) The parties likewise agreed that the GPS 

126 
Builder source code included a navigate function that “[performs] one navigation cycle.” (RFF 

2044 (undisputed).) Also, respondents’ expert Michalson testified: 

Q. 

communication function? 

Did the GPS Builder software include a positioning engine 

A. Yes, it did. Functions that we have identified as being 

positioning engine communications functions include the GPS 

Builder function, quit GPS function, track function, and navigate 

function, all of which are identified in the source code. 

Q. And that’s RX-l25C? 

A. Correct. 

(Tr. at 1745 (emphasis added).)26 RX-125 describes the navigation function, in part, as 

communicating “[ulpated current clock model and navigation states” after ordering the system to 

“[plerform one navigation cycle.” (RX-125 at GL-596 471 522.) The track function is described 

as: 

Inputs: Channel number, satellite PRN number, and a Doppler 

prediction for that satellite. 

Outputs: Altered channel control blocks. 

Processing: The caller periodically performs a satellite selection 

process which decides which satellites should be tracked and 

which channels they should be assigned to. This procedure updates 

the SV’s Doppler prediction in the channel control block, then if 

necessary switches the channel to a new satellite. 

(RX- 125 at GL-596 47 1533 .) Thus, the track function communicates information from the user 

regarding what satellites to track and, if necessary, “switches the channel to a new satellite.” (Id.) 

26 Although the transcript references RX-l25C, said document is not designated as 

confidential as per the most recent exhibit list. 

127 
Hence, the GPS Builder system included, inter alia, the navigation function and track function, 

which were analogous to the positioning engine communication functions described in the ‘363 

patent. 

Based on the foregoing, the administrative law judge finds that respondents have 

established, by clear and convincing evidence, that the GPS Builder system anticipates claim 4 of 

the ‘363 patent at issue. 

Claim 7 reads: “The system of claim 4, wherein the positioning engine communication 

function is a command delivery function.” (CX-2 at 42: 17- 18.) The administrative law judge has 

found, supra, that a “command delivery function is “a function that communicates a command 

from the user to the positioning engine.” Said function must also be distinct from a control 

function. The prior findings regarding claim 4, supra, show that the navigate function in the GPS 

Builder system ordered the system to perform a navigation cycle, and then communicated the 

results to the user. Likewise, the administrative law judge finds that the track function updates 

the SV’s Doppler prediction in the channel control block and then, if necessary, switches the 

channel to a new satellite. Thus, the administrative law judge finds that both the navigate and 

track functions communicate a command from the user to the positioning engine. 

Based on the foregoing, and in light of the fact that claims 1 and 4 are anticipated by the 

GPS Builder system, the administrative law judge finds that respondents have established, by 

clear and convincing evidence, that claim 7 of the ‘363 is anticipated by the GPS Builder system. 

Referring to claims 8 and 16, and regarding the claimed requirement of “calling of a user 

interface message delivery function to communicate the position to a user application,” (CX-2 at 

26-27) respondents argued that the GPS Builder source code included a navigate function that 

128 
would provide updated position data to a user application through a navstatestruc data structure. 

(RBr at 15 1-1 52.) Respondents also argued that, while complainant’s expert Bartone did not 

agree in the hearing that “the GPS engine could communicate a position to fix a user program,” 

he did admit this fact in his deposition testimony, thus impeaching his statement at the hearing. 

(RBr at 152.) Respondents further argued that, under the proper construction of this claim term, 

as proposed by respondents and the staff, there is no dispute that this limitation is met. (Id.) 

Respondents also argued that Bartone offered no opinion regarding this claim element under 

respondents’ expert Michalson’s and the staffs claim construction of “user interface message 

delivery function” and, therefore, it should be noted that the GPS Builder performed the last step 

of claims 8 and 16. (Id.) 

Complainant argued that the GPS Builder does not disclose the calling of a user interface 

message delivery function, as construed by compl~inant, because there is no function that is 

called by the GPS engine to deliver a message to a user application resulting in the 

communication of position. (CBr at 148.) Complainant also argued that the GPS Builder simply 

outputs its data to a data structure, not to a user application. (CBr at 148-49.) Complainant 

hrther argued that the navigate function in GPS Builder is not a callback function as required 

under complainant’s construction, but instead is a polling function that has to query the data 

structure to retrieve the data and, thus, does not meet the “user interface message delivery 

function” limitation of claims 8 and 16 under Complainant’s construction. (CBr at 149.) 

Cornplainant argued that claims 10-12, which depend on claim 8, and claims 18-20, which 

depend on claim 16, are also valid over GPS Builder for at least the same reasons as claims 8 and 

16. (IcJ.) 

129 
The preamble of claim 8 reads: “A method in a positioning system comprising a tracker 

hardware interface, the method comprising the steps of’ (CX-2 at 42: 19-20). The preamble of 

claim 1 6 reads: “A computer-readable medium containing instructions that cause a positioning 

system having a tracker hardware interface to perform a method comprising the steps of’ (CX-2 

at 42:53-56).27 The administrative law judge finds that the preambles in issue are substantially 

identical to the preamble and first element of claim 1 of the ‘363 patent, in that claim 1 requires a 

“positioning system” and a “tracker hardware interface,” as do claims 8 and 16. Based on the 

analysis of the preamble and first element of claim 1 with respect to anticipation by the GPS 

Builder system, the administrative law judge finds that respondents have established, by a 

preponderance of the evidence, that the preambles of claims 8 and 16 are likewise anticipated. 

The claimed phrase, “calling a tracker interface function to receive positioning 

information from a tracker hardware interface” (CX-2 at 42:21-22, 57-58) is in each of claims 8 

and 16. The administrative law judge has found, supra, in the finding of anticipation of claim 1 

of the ‘363 patent, that the GPS Builder system has a tracker interface function that 

communicates with a tracker hardware interface, and that said tracker hardware interface receives 

positioning information. Also, respondents’ expert Michalson testified: 

Q. Could I have RDX-74, again, in claim 8. Let me ask you this. 

Did the GPS Builder System perform the step of calling a tracker 

interface function to receive positioning information from a tracker 

hardware interface? 

27 The sole difference between the preambles of claims 8 and 16 is that claim 16 requires 

that a “computer-readable medium” contains instructions that cause the method to be performed. 

It has been shown in the finding of anticipation of claim 7 of the ‘363 patent by the GPS Builder 

system, supra, that the GPS Builder system is designed for use on a computer. Moreover, the 

parties agreed that respondents’ expert Michalson received the source code for the GPS Builder 

software on a floppy disk in 1995. (RFF 2103 (undisputed).) 

130 
A. 

to the ISA bus. The correlators had the lowest level positioning 

information. They had the raw correlation data. 

Yes, it did. The correlators were hardware that was interfaced 

And the only way to get that correlation data was to have 

functions in the GPS Builder software which would read that data 

from the correlators over that hardware interface. 

(Tr. at 1747 (emphasis added).) The administrative law judge finds that the correlators have 

positioning information. The GPS Builder source code included a ProAccum function that 

“[processes] correlator accumulations & emit data bits” (RFF 2023 (undisputed)), a 

BufferAccum function that “[reads] correlator accumulations, buffer, & do Costas loop.” (RFF 

21 16,2025 (undisputed)), and an SVTMCK function that was a “[rloutine to process correlator 

interrupts.” (RFF 2027,2117 (undisputed)). Thus, the GPS Builder system contained functions 

that communicated with the correlators. Based on the foregoing, the administrative law judge 

finds that respondents have established, by clear and convincing evidence, that the GPS Builder 

system practices this element of claims 8 and 16 of the ‘363 patent. 

The claimed phrase, ”determining a position from the positioning information using a 

positioning engine” (CX-2 at 42:24-25, 59-60) is in each of claims 8 and 16. The administrative 

law judge incorporates his findings regarding anticipation of the preamble of claim 1 of the ‘363 

patent, supra. Further, RX-98 for the GPS Builder states: 

The software core routines acquire and track satellites using each 

of the 12 independent tracking channels in the GP 1020 correlators, 

then compute a position solution from the resulting; data. 

(RX-98 at GL - 596 471468 (emphasis added).) Also, RX-97 for the GPS Builder states: 

The software associated with the GP1020 can be divided into two 

separate modules: one to acquire and track satellite signals to give 

pseudoranges and another to process these to give the navigation 

solution and format it in a form suitable for the user.. . 

131 
(Rx-97 at GL-596 471439.) Thus, the GPS Builder determines the positioning information 

using a positioning engine. Based on the foregoing, the administrative law judge finds that 

respondents have established, by clear and convincing evidence, that the GPS Builder system 

practiced this limitation of claims 8 and 16 of the ‘363 patent. 

The claimed phrase “calling a user interface message delivery function to communicate 

the position to a user application” (CX-2 at 42:26-27,61-62) is in each of claims 8 and 16. The 

administrative law judge has found, supra, that the claimed phrase “user interface message 

delivery function” is construed as “a function that communicates a message between a user and 

the system.” In the context of the claimed phrase at issue, said message must be the “position.” 

The administrative law judge incorporates his findings regarding anticipation of claim 4 of the 

‘363 patent, supra, in which he found that the GPS Builder system had at least one function that 

communicated between the user and the positioning engine. Further, complainant admitted that, 

in the GPS Builder system, the GPS engine could communicate a position fix to a user program. 

(RFF 2 135 (undisputed).) Complainant further admitted that position fixes are communicated 

from the GPS engine to the user program though messages in the GPS Builder system. (RFF 

2136 (undisputed).) The administrative law judge finds that his prior findings are sufficient to 

show anticipation. To the extent that a particular function is required, complainant admitted that 

the GPS Builder source code includes a navigate function that “perform[s] one navigation cycle.” 

( RFF 2137 (undisputed).) Also, respondents’ expert Michalson has testified that: 

Q. 

the navigate fimction’works? 

Can I have RDX-81? And can you explain to us briefly how 

A. Yes. The navigate function is called periodically, and when 

the navigate function is called, and this is in -- I am referring now 

to RX-125C. When the navigate function is called, it reads the 

132 
current observation from an observation data structure, processes 

that observation, and updates its current estimate of position. 

When it finishes updating its estimate of position, it 

delivers that to a navigation data structure that contains the user 

position. 

(Tr. at 1761 .) Specifically, the administrative law judge finds that the navigate function, as 

found, supra, communicated a position from the positioning engine to the user. Based on the 

foregoing, the administrative law judge finds that respondents have shown, by clear and 

convincing evidence, that the GPS Builder system practices this limitation of claims 8 and 16 of 

the ‘363 patent. 

Complainant’s expert Bartone has argued that the navigate function cannot be a “user 

interface message delivery function” because: 

And the second point that I made was that this user interface 

message delivery function does not really deliver the position -- it 

is not called by the GPS engine to deliver the positioning 

information to the user. 

So -- and the example is the navigate function. The 

navigate function has to actually go and get the information and, 

therefore, it is not a user interface message delivery function & 

have construed it. And that applies to claim 8, 10 through 12, 16, 

18 through 20. And the source of this information is RX-0125C. 

(Tr. at 21 16-2 1 17 (emphasis added).) The administrative law judge finds that, under the 

administrative law judge’s construction, which is substantially different than complainant’s 

proposed construction, the navigate function is a “user interface message delivery function.” 

Moreover, complainant has admitted, as found, supra, that position fixes are communicated from 

the GPS engine to the user program through messages in the GPS Builder system. (RFF 2136 

(undisputed).) 

133 
Complainant has also argued, generally: 

Not supported by cited evidence: RX-125C, in describing the 

navigate function, states that navigate outputs an updated current 

clock model and navigation states, not an updated position. 

(See, e.&, CORFF 2145 (emphasis in original).) Complainant cites to no expert opinion and no 

other evidence to explain its objection. Respondents’ expert Michalson has interpreted the 

navigation function as communicating a position, and his testimony is unrebutted. (See, e.&, RFF 

2 145 .) Thus the administrative law judge finds that the phrase “navigation states” may 

reasonably be interpreted as a position. 

Based on the foregoing, the administrative law judge finds that respondents have 

established, by clear and convincing evidence, that each of claims 8 and 16 are anticipated by the 

GPS Builder system. 

Claims 10 and 18, read in relevant part: “wherein the positioning system further 

comprises a user interface, and further comprising the step of receiving a positioning engine start 

message from the user interface.” (CX-2 at 42:3 1-34,4266-43:2.) The administrative law judge 

finds that claims 10 and 18 are substantively identical as regards anticipation. The administrative 

law judge incorporates his findings regarding anticipation of claim 4, supra, which analysis found 

that the GPS Builder system has a user interface comprising control functions. Further, 

complainant admitted that the GPS Builder source code includes a gpsbldr function that 

“initialize[s] the GPS Builder(TM) hardware and software.” (RFF 2 163 (undisputed).) 

Complainant further admitted that said gpsbldr function effectively started the GPS Builder 

system, and contains a positioning engine start message. (RFF 2 164,2 165 (undisputed).) Based 

on the foregoing, and in light of the administrative law judge’s findings that claims 8 and 16, the 

134 
base claims of IO and 18, respectively, are anticipated, the administrative law judge finds that 

respondents have established, by clear and convincing evidence, that claims 10 and 18 are 

anticipated by the GPS Builder system. 

Claims 1 1 and 19 read in relevant part, “wherein the positioning system further comprises 

a user interface, and further comprising the step of receiving a user command for the positioning 

engine from the user interface.” (CX-2 at 42:36-39,43:3-6.) The administrative law judge finds 

that claims 1 1 and 19 are substantively identical as regards anticipation. The administrative law 

judge further finds that claims 11 and 19 are substantively the same as claim 7 and, thus, that his 

finding of anticipation of claim 7 also applies to claims 11 and 19. Based on the foregoing, and 

in light of the administrative law judge’s findings that claims 8 and 16, the base claims of 1 1 and 

19, respectively, are anticipated, the administrative law judge finds respondents have established, 

by clear and convincing evidence, that claims 1 I and 19 are anticipated by the GPS Builder 

system. 

Claims 12 and 20 read in relevant part “wherein the positioning system further comprises 

a user interface, and further comprising the step of receiving a positioning engine stop message 

from the user interface.” (CX-2 at 42:39-42, 44:l-4.) The administrative law judge finds that 

claims 12 and 20 are substantively identical as regards anticipation. The administrative law 

judge incorporates his findings of anticipation of claim 4 with respect to the GPS Builder system; 

specifically, the finding that the quitgps function is a positioning control function in the user 

interface. Thus, in light of the foregoing and his prior findings that claims 8 and 16, from which 

claims 12 and 20 depend, are anticipated, the administrative law judge finds that respondents 

135 
have established, by clear and convincing evidence, that claims 12 and 20 are anticipated by the 

GPS Builder system. 

2. The FirstGPS System 

Respondents argued that claims 7, 8, 10-12, 16, and 18-20 of the ‘363 patent are invalid 

as anticipated by the Trimble FirstGPS prior art under two separate bases; that a document 

describing the Trimble FirstGPS system, Rx-418C (Trimble Ex. 12: f 11, 

anticipates all asserted claims of the ‘363 patent; and that the Trimble FirstGPS system itself also 

anticipates all asserted claims of the ‘363 patent. (FU3r at 155.) { 

1 Thus respondents’ expert 

Michalson testified: 

f 

1 

(Tr. at 1810-1 1 (emphasis added).) Since the Trimble FirstGPS system had all features of RX41 8C, the findings on whether RX-418C discloses the asserted claims of the ‘363 patent applies 

to whether the Trimble FirstGPS system meets the asserted claims of the ‘363 patent. 

136 
Before reaching the issue of anticipation, complainant has argued that while respondents 

attempt to use numerous documents (RX-419C, RX-425C, RX-418C, RX-115, RX-420C, RX421 C, and RX-424C) for their arguments that the Trimble FirstGPS system anticipates the claims 

of the ‘363 patent, none qualify as prior art. (CBr at 138.) However through the testimony of 

Edward Jones and Greg Rest, Trimble’s corporate representatives on the FirstGPS product, the 

administrative law judge finds that the documents relied on by respondents do qualify as prior 

art. Thus respondents, through said testimony of Jones and Best, presented extensive evidence of 

business practice that the administrative law judge finds sufficient to prove that said documents 

were available and accessible to the interested public before the critical date. Evidence of routine 

business practice can be sufficient to prove that a reference was made accessible before a critical 

date. Hence, accessibility goes to the issue of whether interested members of the relevant public 

could obtain the information if they wanted to. If accessibility is proved, there is nq requirement 

to show that particular members of the public actually received the information. See Constant v, 

Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). Also, the word 

“confidential” on a document may be of no consequence in determining whether there was a 

prior publication. See Crane Co. v. Goodvear Tire & Rubber Co., 577 F. Supp. 186, 197 (D. 

Ohio 1983). Moreover the administrative law judge finds unrefuted the testimony of Jones that 

} (JX-5 1 C (Jones Dep.) at 52) and that { 

} (JX-51C (Jones Dep.) at 52, 124-129, 141-143, 150-154,234-235; JX-35C 

(Best Dep.) at 41-43,45-48,49-57,61-65,69-74, 85-88,92-93, 103, 108-1 12, 114.) 

137 
Complainant argued that Jones and Best only testified as to their knowledge. See e.% 

COFF 2236,2244. The administrative law judge, however, expects fact witnesses to testify as to 

their knowledge. Moreover, the record established that each of Jones and Best was well qualified 

to testify as to the public availability of the documents in issue. Thus the following is 

undisputed: Jones was deposed under oath as Trimble’s corporate representative on the FirstGPS 

product; { 

138 
1 (RFF 2215-2233 (all undisputed).) 

Complainant further argued the Trimble FirstGPS System was disclosed by the inventors, 

and considered by the Examiner, during prosecution of the ‘363 patent; that accordingly the 

asserted claims were already allowed over the Trimble FirstGPS System; and that in this 

situation, respondents’ burden is especially difficult to overcome. However, while respondents 

admit that at least four of the prior art references made of record during prosecution of the ‘363 

patent relate generally to Trimble’s FirstGPS system (RBr at 182), the administrative law judge 

finds that the four cited prior art references do not contain anything close to a full disclosure of 

the details of the FirstGPS architecture; that RX-418C contains substantially more detail about 

the FirstGPS system than the four cited prior art references; and that the other documents relied 

upon to show the FirstGPS system (G, RX-419C, RX-420C, RX-421C. RX-424C, RX-425C) 

contain more detail about the FirstGPS system than said four cited prior art references. 

Complainant argued that respondents have admitted that U.S. Patent No. 6,430,503 cited on the 

face of the ‘363 patent was related to the FirstGPS architecture. However, complainant has not 

challenged the fact that documents such as RX-419C, RX-420C, RX-42 1 C, RX-424C and RX425C contain more detail about the FirstGPS system than any art that was before the Examiner. 

Regarding whether the FirstGPS System anticipates the asserted claims of the ‘363 

patent, the administrative law judge finds that complainant’s expert Bartone, in complainant’s 

rebuttal case, testified that the only limitations missing from the FirstGPS documents were the 

139 
“command delivery function” limitation of claim 7 and the “user interface message delivery 

function” limitation of claims 8 and 16. (Bartone, Tr. at 2 1 1 8-2 1 .) Moreover, respondents’ 

expert Michalson argued that all limitations, including those limitations excepted to by Bartone, 

were disclosed by the FirstGPS documents. (Tr. at 18 10-20, 1822-23, 1834-35.) Thus, the 

administrative law judge finds that only those two limitations disputed by Bartone are at issue. 

With respect to respondents’ argument that “command delivery function” limitation of 

claim 7 is anticipated by the FirstGPS system and related documents, respondents’ expert 

Michalson testified: 

1 

(Tr. at 18 18-1 8 19 (emphasis added).) The administrative law judge has found, supra, that a 

“command delivery function” is “a function that communicates a command from the user to the 

positioning engine.” The administrative law judge has also found, supra, that a “positioning 

engine communication function,” which is from the language of claim 4, is distinct from a 

“positioning control function,” such as functions used to start and stop the positioning engine. 

Thus, the administrative law judge finds that { 

not be command delivery functions. The description of { 

1 mentioned, supra, would 

1 however, reads: 

140 
(RX-418 at 69 (emphasis in orginal).) { 

is described in part as: 

{ 

1 

(RX-418 at 69 (emphasis added).) { 

] which 

1 

(RX-4 I8 at 19 (emphasis in original).)*’ The administrative law judge finds that 

{ 

{ 

administrative law judge finds that respondents have established, by clear and convincing 

evidence, that the FirstGPS system does disclose the “command delivery function” limitation of 

} described in RX-424 is substantially the same as the 

} described in Rx-418. (U-424 at 33.) Based on the foregoing, the 

claim 7 of the ‘363 patent. 

With respect to respondents’ argument that “calling a user interface message delivery 

function” limitation of claims 8 and 16 is anticipated by the FirstGPS system and related 

} (RX-418 at 9-12.) 

141 
documents, the administrative law judge has found, supra, that the claimed phrase “user interface 

message delivery function” is construed as “a function that communicates a message between a 

user and the system.” In the context of the claimed phrase at issue, said message must be the 

“position.” Thus, respondents’ expert Michalson testified: 

{ 

I 

(Tr. at 1822-1 823 (emphasis added).) { 

{ 

I 

Moreover, the RX-4 1 8 document further states: 

I 

142 
(RX-4 18 at 34 (emphasis in original).) { 

1 

(RX-418 at 3, 8 (emphasis added).) { 

1 Therefore, the administrative 

law judge finds that respondents have established, by clear and convincing evidence, that the 

FirstGPS system does disclose the “calling a user interface message deliveq function” limitation 

of claims 8 and 16 of the ‘363 patent. 

Based on the foregoing, the administrative law judge finds that respondents have shown, 

by clear and convincing evidence, that the FirstGPS system and associated references anticipates 

each of the asserted claims of the ‘363 patent. 

H. Domestic Industry 

Complainant has satisfied the economic prong of the domestic industry requirement. 

Section I, supra. 

For applicable law for technical prong, see Section IV.H, supra. 

Complainant argued that the ‘363 patent discloses the SiWNav host software library as 

its preferred embodiment, and thus the same functions listed in the ‘363 patent exist in the 

143 
SiRFNav software library. (CBr at 133.) Complainant further argued that the SiRFNav code is 

used by { 

incorporated into a host, meet every limitation of at least claim 8 of the ‘363 patent. (CBr at 133.) 

Respondents argued that complainant has not met its burden of proof regarding the 

] and when 

technical prong of domestic industry, because complainant has not demonstrated at the hearing 

how the { } devices allegedly practice claim 8 of the ‘363 patent. (RBr at 

142.) The staff argued that complainant practices at least claim 8 of the ‘363 patent, as there was 

testimony that complainant’s products are incorporated and used in third party devices. (SBr at 

34.) 

Complainant relies on two products for domestic industry: { 

at 1010-1013; CX-79C29 at SRF 112871; CX-80C30 at SRF 125168.) 

The preamble of claim 8 reads “[a] method in a positioning system Comprising a tracker 

hardware interface, the method comprising the steps of.” As regards said preamble, 

complainant’s expert Bartone testified: 

Q. 

opinion on -- regarding whether or not SiRF practices any of the 

claims that we discussed, correct? 

Can we move on to the domestic industry issue? You have an 

A. Yes,Ido. 

29 CX-79C is titled { 

} (CX-79C at SRF 112868.) 

30 CX-8OC is titled { 

} (CX-8OC at SRF 125165.) 

144 
Q. And what is that opinion you have? 

*** 

1 

1 

(Tr. at 1010-1012.) Thus, regarding the { } CX-79C states: 

145 
1 

(CX-79C at SRF 112872 (emphasis added).) Regarding the SiRFNavII, CX-80C states: 

{ 

1 

(CX-SOC at SRF 125170 (emphasis added).) Hence, the administrative law judge finds that both 

products comprise a positioning system. As regards a “tracker hardware interface,” the 

administrative law judge has found, supra, that a tracker is “a device that acquires data from a 

satellite and transmits positioning information,” while a “hardware tracker interface” is an 

interface between the tracker and the system. Also, the administrative law judge has found that 

the claimed phrase “positioning information” is “data comprising measurement information such 

as the carrier phase, code phase, Doppler data, and pseudo-ranges.” { 

> (CX-79C at SRF 112871 { >; cx79C at SRF 112872 { 

CX-79C at SRF 112875 { 

1); see also CX-79C at SRF 112876 { 

146 
80C at SRF 125170 { >; see also CX-80C at SFW 125 172 { 

>; CX-80C at SRF 125173 { 

}) Based on the foregoing, the administrative law judge 

finds that each of the products relied on by Complainant for domestic industry practice the 

preamble of claim 8 of the ‘363 patent. 

Claim 8 has the claimed phrase “calling a tracker interface function to receive positioning 

information from a tracker hardware interface.” The administrative law judge has found, supra, 

that complainant’s products comprise a tracker that receives positioning information and a 

tracker hardware interface that communicates with the tracker. As regards this limitation, 

complainant’s expert Bartone testified: 

{ 

147 
(Tr. at 1013-1014.) { 

} (CX-2 at 6:58-67; CX-79C at SRF 

1 12880; CX-80C at SRF 125 177.) { 

} (CX-79C at SRF 112880; CX-S0C at SRF 125177.) 

Hence, complainant’s alledged domestic industry products call a function to receive the 

positioning information from a hardware tracker interface. Based on the foregoing, the 

administrative law judge finds that complainant’s products practice this element of claim 8 of the 

‘363 patent. 

Claim 8 has the claimed phrase “determining a position from the positioning information 

using a positioning engine.” The administrative law judge has found, supra, that complainant’s 

products receive positioning infomation from the tracker. Complainant’s expert Bartone has 

testified: 

148 
1 

(Tr. at 1014-1 01 5.) The administrative law judge also has found, supra, in his finidng as to the 

preamble of claim 8 with respect to domestic industry that complainant’s products comprise a 

positioning system that calculates a position. Further, regarding the { 1 

{ 

1 

(CX-79C at SRF 112898-1 12899.) Regarding the { 

{ 

(CX-8OC at SRF 125168.) { 

1 Based on the foregoing, the administrative law judge finds that 

complainant’s products practice this element of claim 8 of the ‘363 patent. 

149 
Claim 8 has the phrase “calling a user interface message delivery function to 

communicate the position to a user application.” The administrative law judge finds that the 

claimed phrase “user interface message delivery function” is “a function that communicates a 

message between a user and the system.” In the context of the claim language, said function 

must communicate the position. Regarding the { f 

c 

(CX-79C at SRF 112878.) { 

1 Regarding the { 

c 

(CX-SOC at SRF 125175.) { 

I 

1 In this regard, complainant’s expert Bartone testified: 

150 
1 

(Tr. at 10 1 5- 101 7.) Hence, complainant’s expert Bartone purports to describe the source code of 

the user interface message delivery functions of complainant’s products. Moreover, respondents 

admit that, { 

} (CFF 1452 (undisputed).) Thus, complainant’s 

witness Witanis testified: 

31 The CX-1111 document appears to be the same document as CX-SOC, as they are each 

titled { } and 

contain the same Bates numbers. 

151 
1 

(Tr. at 476.) Therefore, the administrative law judge finds that complainant’s products practice 

the final element of claim 8 of the ‘363 patent. 

Based on the foregoing, the administrative law judge finds that complainant has satisfied 

the technical prong of the domestic industry requirement. 

VI. Remedy 

The available remedies for a violation of Section 337 include exclusion of the infringing 

articles from entry into the United States, other than entry permitted during the Presidential 

review period. 19 U.S.C. § 1337(d). Section 337(d) provides that: 

[ilf the Commission determines, as a result of an investigation 

under this section, that there is a violation of this section, it shall 

direct that the articles concerned, imported by any person violating 

the provision of this section, be excluded from entry into the 

United States. . . . 

- Id. The Commission also may issue a cease and desist order against “ny person violating this 

section, or believed to be violating this section. . . .,, 19 U.S.C. 6 1337(f). In particular, the 

Commission has entered cease and desist orders where a respondent has established a significant 

152 
domestic inventory of the infringing articles. See, e.&, Certain Condensers, Parts Thereof and 

Products Containing; Same, Including Air Conditioners for Automobiles, ITC Inv. No. 

337-TA-334 Commission Opinion (August 27, 1997) (cease and desist order appropriate where 

respondent had accumulated “commercially significant” inventories of infringing products in the 

United States). Id. at 26-28. The Commission has broad discretion in selecting the form, scope 

and extent of the remedy in a Section 337 proceeding. Viscofan S.A. v. US. Int’l Trade 

Comm’n, 787 F.2d 544, 548 (Fed. Cir. 1986). 

Should a violation be found, complainant argued that, pursuant to 19 U.S.C. 8 1337(d) 

and established Commission precedent, the appropriate remedy should include limited exclusion 

orders prohibiting the unlicensed entry into the United States of GPS chips and associated 

software and systems manufactured abroad by or on behalf of respondents or any of their 

affiliated companies, parents, subsidiaries, contractors { 

}, or other related business entities, or their successors or assigns that 

infringe the asserted patents. Complainant also argued that the limited exclusion orders should 

extend to the downstream personal navigation devices (PNDs), cellular telephones, GPS 

modules. and PDAs, containing infringing GPS chips and associated software and systems 

manufactured abroad of behalf of respondents or any of their affiliated companies, parents, 

subsidiaries, contractors or other related business entities or their successors or assigns. (CBr at 

154-7.) Complainant fixther argued that respondents maintain a commercially significant 

inventory of GPS chips and associated software and systems. Thus, it is argued that cease and 

desist orders should issue. (CBr at 165.) 

153 
Respondents argued that should the administrative law judge find a violation of Section 

337 has occurred, any recommended remedy should be limited to the exclusion of any of Global 

Locate GPS chips that have been found to infringe the asserted patents; and that complainant has 

failed to establish on the record the necessary factual basis to support an exclusion order 

extending to downstream products, or for a cease and desist order. (RBr at 183 .) 

The staff argued that if a violation of Section 337 is found, entry of a limited exclusion 

order directed at least to respondents’ infringing chips and associated software should be 

recommended; that the order should also extend to certain downstream products that incorporate 

the chips and software; that the evidence shows, inter alia, that the accused GPS chips are 

important to many of the downstream products; that all the downstream products are 

manufactured by third parties; that SiRF would likely benefit from an order reaching downstream 

products; that, the identity of the third party importers is largely known; that identifying 

downstream products containing infringing chips is not difficult; that Global Locate could easily 

evade an exclusion order in the absence of an order covering downstream products; and that the 

evidence shows that many manufacturers of the downstream products have been aware of this 

investigation and have received subpoenas and participated in discovery. The staff further 

argued that the evidence shows that the respondents maintain a commercially significant 

inventory of accused chips and hence, under Commission precedent, cease and desist orders 

against said respondents would appear to be appropriate. (SBr at 42-3.) 

At the hearing, John Lauren Hansen was qualified as complainant’s expert in the area of 

economic and accounting analyses. (Tr. at 1341 .) 

154 
The administrative law judge in his Order No. 36 has found that Global Locate chips { 

1 have been imported into the 

United States. Thus, in the event a violation is found, the administrative law judge recommends 

the issuance of a limited exclusion order prohibiting the importation into the United States of 

infringing GPS chips and associated software and systems “that are manufactured abroad or 

imported by or on behalf of [the respondents], or any of their affiliated companies, parents, 

subsidiaries, or other related business entities, or their successors or assigns.” See Certain Laser 

Bar Code Scanners and Scan Engines. Components Thereof, and Products Containing Same, Inv. 

No. 337-TA-55 1, Limited Exclusion Order, ‘I[ 1 (May 30,2007). Moreover, he recommends that 

said order should not be limited to specifically identified GPS chips, but rather should extend to 

all infringing chips and associated software and systems. See e.&, Certain Integrated Repeaters, 

Switches. Transceivers and Products Containing Same, Inv. No. 337-TA-435, Commission 

Opinion at 23, USITC Pub. 3547 (Oct. 2002). 

As for downstream products and determining whether to include downstream products 

within the scope of an exclusion order, 

[tlhe Commission balances the complainant’s interest in obtaining 

complete protection from all infringing imports by means of 

exclusion of downstream products against the inherent potential of 

even a limited exclusion order, when extended to downstream 

products, to disrupt legitimate trade in products which were not 

themselves the subject of a finding of violation of section 337. 

Certain Erasable Programmable Read-only Memories, Inv. No. 337-TA-276, USITC Pub. 21 96, 

Com’n Op. at 125, 1989 ITC LEXIS 122, at “252-53 (May 1989) (“EPROMs I”), aff d sub 

nom. Hwndai Elecs. Indus. Co. v. USITC, 899 F.2d 1204, 1209 (Fed. Cir. 1990). In making this 

155 
determination, the Commission has traditionally examined nine “EPROMs” factors. These 

factors are: 

the value of the infringing articles compared to the value of the 

downstream products in which they are incorporated; 

the identity of the manufacturer of the downstream products; 

the incremental value to complainant of the exclusion of 

downstream products; 

the incremental detriment to respondents of such exclusion; 

the burdens imposed on third parties resulting from exclusion of 

downstream products; 

the availability of alternative downstream products which do not 

contain the infringing article; 

the likelihood that imported downstream products actually contain 

the infringing articles and are thereby subject to exclusion; 

the opportunity for evasion of an exclusion order which does not 

include downstream products; and 

the enforceability of an order by Customs. 

EPROMS, Inv. No. 337-TA-276, USITC Pub. 2196, Commission Opinion on Violation, and 

Remedy, Bonding, and the Public Interest at 125-26 (May 1989) (EPROM factors). This list is 

not exhaustive as the Commission may “take into account any other factors which it believes 

may bear on the question.” Certain Integrated Circuit Telecommunications Chips and Products 

Containing Same Including Dialing Apparatus, Inv. No. 337-TA-337, (Comm’n Op. at 29), 

USITC Pub. 2670 (Aug. 1993). See also Certain Baseband Processor Chips and Chipsets, Inv. 

No. 337-TA-543, Comm’n Op. at 26-27 (June 19,2007) (Baseband Processors). 

156 
With respect to the first EPROM factor, the value of the infringing articles compared to 

the value of the downstream products in which they are incorporated, said value ranges from 1 

percent to 8 percent. Thus respondents have represented that for each of the downstream product 

categories identified by SiRF, the Global Locate/Broadcom GPS chips made up { 

1 (RBr at 185.) Complainant does not 

dispute this range. (a CBr at 159.) With respect to the qualitative value of the allegedly 

infringing articles, it is undisputed that GPS chips are essential to Personal Navigation Devices 

(PNDs). (CFF 1944 (undisputed).) Moreover, GPS chips are important to operators of mobile 

telephone and cellular phone networks as a way to satisfy the E-91 1 mandate.32 Thus, operators 

of mobile telephone and cellular phone networks have used GPS functionality as a way of 

meeting the E-91 1 mandate. (Chadhai, Tr. at 180-1.) { 

1 (CFF 837 (undisputed).) { 

32 E-91 1 service is an FCC requirement that one be able to locate a handset in the case of 

an emergency. (CFF 1989 (undisputed).) 

157 
The Commission considers the value of the infringing components relative to the targeted 

downstream products, both in terms of the monetary value of the components and the importance 

of the components to the operation of the downstream products are which they are incorporated. 

Baseband Processors at 36. The infringing chips at issue here are essential to the operation of at 

least PNDs and mobile telephone and cellular phone networks. Thus, the administrative law 

judge finds that EPROMs factor 1 weighs in favor of including at least PNDs and mobile 

telephone and cellular phone networks containing the infringing chips. 

With respect to the second EPROM factor, the identity of the manufacturer of the 

downstream products, it is undisputed that Global Locate does not manufacture downstream 

products and that Global Locate’s accused chipsets are typically designed into a downstream 

product. However, products from { 1 were identified in the complaint as using 

respondents’ accused chipsets. In addition, certain of the manufacturers of the downstream 

products in issue have already been identified in Order No. 36. Also, depositions were taken of 

representatives of the downstream product manufacturers { 

1 (- see, JX-7C, JX-24C, JX-29C, JX-73C and JX-6C) and each was thus put on 

notice that SiW was seeking to exclude their products containing the accused devices from the 

United States. Thus, while the Commission has previously found that this factor weighs against 

downstream relief where the downstream products are manufactured exclusively by parties other 

than the one(s) found in violation, in view of particular factors in this investigation the 

administrative law judge finds that EPROMs factor 2 weighs in favor of SiW. 

158 
As for the third EPROM factors, the incremetal value to SiFW for excluding 

downstream products, complainant’s expert in economic and accounting analysis, John Hansen testified: 

{ 

159 
(Tr. at 1355, 85-86 (emphasis added).) Respondents argued that Hansen made no attempt to 

“quantify” the extent of any incremental benefit to SiRF. (RBr at 187.) However, as the 

Commission indicated in Baseband Processors at 63, it is not appropriate to assess whether or not 

chip sales will increase if the downstream products are covered by the exclusion order, as 

advocated by respondents; that to engage in such an analysis would be tantamount to 

reintroducing the injury requirement that Congress removed from the statute for patent 

infringement cases in 1988; and that the right to exclude is given in order to spur innovation. 

Based on the foregoing, the administrative law judge finds that EPROMs factor 3 weighs in favor 

of SiRF. 

As for EPROMS factor 4, respondents argued that Hansen failed to address said factor, 

which is the incremental detriment to respondents from exclusion of downstream products. (RBr 

at 1 88.j Complainant argued that respondents have not shown what, if any, incremental harm 

would befall respondents and that respondents should not continue to benefit from their 

“unlawful” use of SirF’s patented technology. (CBr at 163 .) As the Commission stated in 

Baseband Processors at 69, in considering EPROMs Factor 4, we distinguish between detriment 

related to a respondent’s sales of infringing articles and its sales of non-infringing articles; and 

that as our reviewing Court has held, “[olne who elects to build a business on a product found to 

infringe cannot be heard to complain if an injunction against continuing infringement destroys 

the business so elected;” and that accordingly, the Commission generally gives little if any 

weight to detriment occurring as to respondents’ sales of infringing articles, absent unusual 

circumstances. Moreover the evidence in the record as to respondents’ sales of downstream 

160 
products with infringing chips and without infringing chips is lacking. Hence, the administrative 

law judge gives no weight to EPROM factor 4. 

Referring to EPROMs factor 5, which relates to the burden on third parties, alternate GPS 

chips that would not be subject to any exclusion order are available and are sold by others, 

including Qualcomm, ST Micrelectronics, JRC Furuno, NXP and Texas Instruments (CFF 1980 

(undisputed).) Moreover, as found supra, third parties were aware that SiW was seeking to 

exclude downstream products containing the accused chips from the United States. Hence, the 

administrative law judge finds that this favor weighs for downstream product exclusion. 

With respect to EPROMs factor 6, y&. the availability of alternative downstream 

products that do not contain the infringing articles, the Commission has taken into account 

whether alternatives to the infringing articles themselves are available. See Baseband Processor 

at 87. In view of the finding, as to EPROMs factor 5, the administrative law judge tinds that 

EPROMS factor 6 weighs in favor of downstream product exclusion. 

The analysis of EPROMs factor 7, Viz. the likelihood that the downstream products 

actually contain the infringing articles and are thereby subject to exclusion, involves an 

assessment of the impact that the exclusion of a product containing an infringing component will 

have on non-infringing products. The more likely the downstream products are to contain the 

infringing chips, the more this factor weighs towards downstream product exclusion. Baseband 

Processor at 99. Complainant’s expert Hansen testified: 

161 
1 

(Tr. at 1383-84.) Thus the administrative law judge finds that EPROM factor 7 weighs 

somewhat against the issuance of downstream product relief although a certificate requirement, 

which the administrative law judge is recommending, infra, would substantially lessen the 

possibility that legitimate concerns in the exclusion of non-infringing downstream products 

would be impacted. 

162 
Referring to EPROMs factor 8, ViZ. the opportunity for evasion of an exclusion order 

which does not include downstream products, it is not denied that respondents could evade an 

exclusion order by continuing to have third parties import infringing devices into the United 

States as components of downstream products. Moreover, respondents admit that they have 

recently moved most warehousing of the accused device off-shore. Thus, prior to acquisition by 

Broadcom, { 1 (CFF 

2000 (undisputed).) After the Broadcom acquisition, { 

} (CFF 2001 (undisputed).) { 

} (CFF 2002 (undisputed).) 

Before July 2007, Global Locate products were warehoused by { 

} (JX-30C (Wilder Dep.) at 148:6-150:7; CX-41 IC.) As of October 10, 

2007, the majority of the Global Locate chips are warehoused in { 

] (JX-16C (Pence Dep.) at 20:13-15.) 

After the merger with Broadcom, the { 

} (CFF (undisputed).) As of October 10,2007, { 

} (JX-16C (Pence Dep.) at 

20:9-21.) Hence, the opportunity for evasion of an exclusion, which does not exclude 

downstream products with infringing chips, has increased. Thus, the administrative law judge 

finds that EPROMs factor 8 favors exclusion of downstream products with infringing chips. 

163 
Referring to EPROMs factor 9, which is the enforceability of a downstream exclusion 

order by Customs, the administrative law judge recommends that any exclusion order should 

include a certification provision, which should reduce any burden on Customs and reduce any 

adverse impact on legitimate commerce. Electrical Connectors, Inv. No. 337-TA-374, Comm’n 

Op. at 14-15; Certain Microsphere Adhesives Process for Making. Same, and Products 

Containing, Same, Including, Self-stick Repositionable Notes, USITC Pub. 2949, Inv. No. 

337-TA-366, Comm’n Op, (Jan. 16, 1996). 

Based on consideration of the EPROMs factors the administrative law judge recommends 

that any exclusion order should exclude PNDs, as well as mobile telephone and cellular phone 

networks, containing the infringing devices. 

As for the issuance of cease and desist orders, as seen supra, respondents have maintained 

a commercially significant inventory of GPS chips, alleged to be infringed, in warehouses in the 

United States. While respondents’ warehouse facilities have changed, supra, the administrative 

law judge finds that there are still said chips warehoused in the United States. Moreover, there is 

no assurance that the present warehouse situation will not change. Hence, if a violation is found, 

he recommends issuance of cease and desist orders. 

VII. Bond 

Section 337 provides that the bond during the Presidential review period should be set at 

an amount “sufficient to protect the complainant from any injury.” 19 U.S.C. 3 1337(j)(3); 

Commission rule 210.50. Under Section 337(j)(3), if an exclusion order is issued, respondent(s) 

may, upon payment of bond (as prescribed by the Secretary of the Treasury), continue to import 

164 
and sell products subject to the exclusion order until the expiration of the 60-calendar-day 

Presidential review period. Id. 

Complainant argued that a bond rate of 100% of the value of respondents’ infringing 

products and 5% of the value of any downstream product that incorporates respondents’ 

infringing products is reasonable and appropriate. (CBr at 165-6.) Complainant later argued that 

a bond based on price comparison is not practical because SiRF and respondents sell numerous 

different products at varying prices; { 

usually depending on the volumes sold and 

other factors; and that where direct price comparisons between the parties’ respective products 

are not practical and it is impossible to determine a reasonable royalty rate, a bond rate of 300% 

of the entered value for the infringing product is appropriate. With respect to the bond to be 

imposed on downstream products that incorporate respondents’ infringing products, SiRF 

believes that a rate of 5% of the value of the downstream product is a reasonable estimate of the 

relative value of the infringing product to the cost of the downstream product, and will offset 

SiRF’s iniury resulting from respondents’ unlawful use of SiRF’s patented technology. (CRBr at 

126-7.) 

Respondents argued that where a complainant has not shown need for protection from 

injury during the Presidential review period, the Commission may dispense with a bond 

requirement, citing Certain Rubber Antidegrandants, Inv. No. 337-TA-533, Com’n Op. at 39- 

165 
40 (July 21,2006). It was argued that SiRF has offered no evidence in support of a bond. (RBr at 

189-90.) Respondents later argued that SiRF failed to meet its burden to prove a 100% bond 

appropriate; that while SiRF offers the excuse of “the fluctuating price” of GPS chipsets, the 

evidence is that Broadcom’s chips are sold { 

] that any imprecision is the fault of 

complainant; and that a 5% bond, at most, is appropriate. (Wr at 1 10-1 1 .) 

The staff argued that Commission rule 2 10.36(a)( 1) provides that the administrative law 

judge shall take evidence and hear arguments for the purpose of determining the amount of bond 

to be posted by the respondents during the Presidential review period; that at the evidentiary 

hearing, SiRF did not put on evidence concerning bonding; that while SiRF’s expert did provide 

evidence concerning the weighted average price of Global Locate’s products, he did not offer any 

similar figures for SiRF’s product, although the evidence obviously was within SiRF’s control; 

that the absence of comparable sales is not the fault of a respondent failing to provide 

information; that it appears to be the Complainant that elected not to provide the information and, 

in fact one SiRF witness testified about sales and revenue, which also provides an average price 

of a particular chip set { 

proposed bond rate, which imprecision was the fault of Complainant; and that, thus, “a 5% bond 

would be appropriate.” (SBr at 44-5.) 

] that said information is too imprecise for calculating a 

With respect to a bond rate for respondents’ infringing chips and associated software, 

while there is evidence of the weighted average price of Global Locate’s products, the record is 

lacking evidence of the weighted average price of SiRF’s products. Hence, the administrative 

law judge finds that complainant has failed to provide evidence necessary for setting a bond rate 

166 
for any infringing chips and associated software and system. The administrative law judge is 

recommending a bond rate of 5% of the value of any excluded downstream product that 

incorporates respondents’ infringing articles. 

VIII. Additional Findings 

1. Complainant SiRF is a Delaware corporation with its principal place of business 

in San Jose, California. (Complaint, 2.1, p. 2.) 

Respondent Global Locate is a Delaware corporation with its principal place of 

business in San Jose California. (Complaint, 3.1, p. 4; Broadcom’s Memo. in 

Opposition to SiRF’s Motion to Amend Complaint (Nov. 15,2007), Conf. Ex. 7 

(Agreement & Plan of Merger) at 1 (BCM - 596 044582).) 

Respondent Broadcom is a California corporation with its principal place of 

business in Irvine, California. (Broadcorn’s Response to First Amended 

Complaint, 1. p. 1 .) 

Broadcom acquired Global Locate in July 2007. (Broadcom’s hkmo. in 

Opposition to SiRF’s Motion to Amend Complaint (Nov. 15,2007), Conf. Ex. 7 

(Agreement & Plan of Merger) at 1 (BCM-596 044582).) 

2. 

3. 

4. 

167 
CONCLUSIONS OF LAW 

1. 

2. 

trade allegation. 

3. 

69,70,72, or 73 of the ‘216 patent. 

4. 

invalid as anticipated by any prior art. 

5. 

protected by the ‘216 patent. 

6. 

of the ‘363 patent. 

7. 

each of the GPS Builder System and the FirstGPS System. 

8. 

protected by the ‘363 patent. 

9. Respondents have not violated 19 U.S.C. § 1337. 

10. If a violation is found the record supports issuance of a limited exclusion order covering 

infringing GPS chips, associated software and systems, as well as certain downstream products 

containing said infringing articles, cease and desist orders and a bond set in the amount of 5 

percent of entered value of certain downstream products containing infringing GPS chips, 

associated software and systems during the sixty day Presidential review period. 

The Commission has & personam jurisdiction and subject matter jurisdiction. 

There has been an importation of accused products which are the subject of the unfair 

Respondents’ products do not infringe asserted claims 1,6, 10, 11, 12, 17, 18, 19,64,65, 

Claims 1,6, 10, 11, 12, 17, 18, 19,64,65,69,70, 72, and 73 of the ‘216 patent are not 

Complainant SiRF failed to prove that a domestic industry exists for the articles allegedly 

Respondents’ products do not infringe asserted claims 7, 8, 10, 11, 12, 16, 18, 19, and 20 

Claims 7, 8, 10, 11, 12, 16, 18, 19, and 20 of the ‘363 patent are invalid as anticipated by 

Complainant SiRF has established that a domestic industry exists for the articles allegedly 

168 
ORDER 

Based on the foregoing, and the record as a whole, it is the administrative law judge’s 

Final Initial Determination that there is no violation of section 337 in the importation into the 

United States, sale for importation, and sale within the United States after importation of certain 

GPS chips, associated software and systems, and products containing same. It is also the 

administrative law judge’s recommendation that, should a violation be found, a limited exclusion 

order should issue barring entry into the United States of infringing GPS chips, associated 

software and systems as well as certain downstream products containing said infringing articles, 

and cease and desist orders should issue, and a bond should be set in the amount of 5 percent of 

entered value of certain downstream products containing the infringing articles during the 

Presidential review period. 

The administrative law judge hereby CERTIFIES to the Commission his Final Initial and 

Recommended Determinations together with the record consisting of the exhibits admitted into 

evidence. The pleadings of the parties filed with the Secretary and the transcript of the prehearing conference, and the hearing, are not certified, since they are already in the Commission’s 

possession in accordance with Commission rules. 

Further it is ORDERED that: 

1. In accordance with Commission rule 2 10.39, all material heretofore marked 

camera because of business, financial and marketing data found by the administrative law judge 

to be cognizable as confidential business information under Commission rule 201.6(a), is to be 

given in camera treatment continuing after the date this investigation is terminated. 

169 
2. Counsel for the parties shall have in the hands of the administrative law judge 

those portions of the final initial and recommended determinations which contain bracketed 

confidential business information to be deleted fiom any public version of said determinations, 

no later than July 1 1 , 2008. Any such bracketed version shall not be served via facsimile on the 

administrative law judge. If no such bracketed version is received fi-om a party, it will mean that 

the party has no objection to removing the confidential status, in its entirety, from these initial 

and recommended determinations. 

3. The initial determination portion of the Final Initial and Recommended 

Determinations, issued pursuant to Commission rule 21 0.42(h)(2), shall become the 

determination of the Commission forty-five (45) days after the service thereof, unless the 

Commission, within that period, shall have ordered its review of certain issues therein or by order 

has changed the effective date of the initial determination portion. The recommended 

determination portion, issued pursuant to Comission rule 2 10.42(a)( l)(ii), will be considered 

by the Commission in reaching a determination on remedy and bonding pursuant to Commission 

rule 210.50(a). 

Paul J. LuckeG 

Administrative Law Judge 

Issued: June 13,2008 

170 
CERTAIN GPS CHIPS, ASSOCIATED 

SOFTWARE: AND SYSTEMS, AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA- 596 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certifL that the attached Public Version Final Initial and 

Recommended Determination was served upon Kevin Baer, Esq., Commission Investigative 

Attorney, and the following parties via first class mail and air mail where necessary on 

February 23, 2009. 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, DC 20436 

FOR COMPLAINANT SIRF TECHNOLOGY, INC.: 

Alan H. MacPherson, Esq. 

Edward C. Kwok, Esq. 

MacPherson Kwok Chen & Heid LLP 

2033 Gateway Place, Suite 400 

San Jose, CA 95 110 

F. David Foster, Esq. 

David Nickel, Esq. 

Miller & Chevalier Chartered 

655 Fifteenth St., NW, Suite 900 

Washington, DC 20005 

William L. Anthony Jr., Esq. 

Fabio E. Marino, Esq. 

Orrick, Herrington & Sutcliff, LLP 

1000 Marsh Road 

Menlo Park, CA 94025 
CERTAIN GPS CHIPS, ASSOCIATED 

SOFTWARE AND SYSTEMS, AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA- 596 

Certificate of Service page 2 

FOR COMPLAINANT SIRF TECHNOLOGY, INC.: 

Claire Merrin, Esq. 

T. Vann Pearce, Esq. 

Orrick, Herrington & Sutcliff, LLP 

3050 K St., NW 

Washington, DC 20007 

FOR RESPONDENT GLOBAL LOCATE, INC. AND BROADCOM CORPORATION: 

James L. Quarles, Esq. 

Michael D. Esch, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

1875 Pennsylvania Ave., NW 

Washington, DC 20006 

William F. Lee, Esq. 

Donald R. Steinberg, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

60 State St. 

Boston, MA 02109 

Robert J. Gunther, Jr., Esq. 

S. Calvin Walden, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

399 Park Ave. 

New York, NY 10022 

Mark D. Selwyn, Esq. 

Joseph F. Haag, Esq. 

Wilmer Cutler Pickering Hale and Dorr LLP 

1 1 17 California Ave. 

Palo Alto, CA 94304 
CERTAIN GPS CHIPS, ASSOCIATED 

SOFTWARE AND SYSTEMS, AND PRODUCTS 

CONTAINING SAME 

PUBLIC MAILING LIST 

Heather Hall 

9443 Springboro Pike 

Miamisburg, OH 45342 

LEXIS-NEXIS 

Kenneth Clair 

Thornson West 

1 100 Thirteen Street, NW, Suite 200 

Washington, DC 20005 

Inv. No. 337-TA- 596