U.S. International Trade Commission

Publication 4137 March 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-602

Certain GPS Devices 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 4137 March 2010

In the Matter of

Investigation No. 337-TA-602

Certain GPS Devices and Products 

Containing Same

UNITED STATES ~RNATIONAL TRADE COM II SS ON 

W .. b~'OD, D,C, 21)434 

10 I~ ' Mon.r 01 

CERTAIN GPSllEVlc r.s AN D 

PRODUCTS CONT AININfl SAME 

1 .... lip_ No, 337_ ~1 

NOTICE OF COMMISSION FINAL DETERMINATION OF VIOUTION OF 

SECTION 337; TERMINATION OF INVI'STIGA TION; ISSUANCE OF UMITED 

EXCLUSION ORDER AND CEASE AND Di'S1ST ORDFJtS 

AGENCY: U,S, Intemalional T13dc Commission. 

ACTION: Notice. 

UM~IARY: N<>!ice i. hereby gi ..... that the U.s. International Trade Commission hu 

detmni .... tIw .... re i •• violation <>f 19 U.S ,C. t 1337 by SiRF Tochnolov;y, IDC. of San J.,.., 

Calif"",i. ("'SiRF'); Pharos Science &. Appliwi""" 10<:. ofT""""",,, California r'l'tw-o."); 

MiT AC lntema!ioool Corp. orTal""" ("MiT AC"): MiG Techno1"l)' Ltd .. USA of FI<CIDOIIl, 

Calif"",i. ("Mio"): ond E·lEN Informalion System; Co .. Ltd. of Tal""", ("E-lEN",) 

(coliocth .. Ir, "Rt...."de"to,,) in !be abo> ~ invcstiplion. Th<: inveMi.ption is 

tcrmi_, 

FOR FURTHER INfORMA. TlON COl'O" ACT: Daniel E. Valmei .. Offic< oflb< Geoeral 

Counsel, U.S. lntematO>nol T13dcConuni;sion. SIlO E SI1«\, S.W .. W~ D,C. 2(l4J{;, 

tel<pbono (02) 2{l5-1999. eop; .. of noo--confL<lrntial doourncms filed in connection "ilh this 

inv«tijation ..., or "iii be .,-ailable fOf inspection durin& Of[IOW bu<inesli hours (8:4S a.m. to 

S:15 p.m.) in th< Off"" ofth< Secr<tar}', U.s. lntenWionai Trade Commi";on, SIlO E Street. 

S. w .. W..rullitoo, D,C. 2Q43<i, to""""'" (202) 205·2000. aer.er.1 infonnation oonceming the 

ConuniSllioo may at.., be o>btained by .,:".os,ing iUi In"""", oerv« III hltp-!"' ........ ",lIc.g!)Y. Th<: 

p<lblic ~ [Of thi, in~tiga ion may be viewed Oft the Commi...,.,', electronic docket 

(EDIS) III bUr /(,w ... 1« i'I:lV. lleari"ll.impoirm penon> .... odviood that informalioo on this 

malter COlI be obtained by cotIUctinc the Carnmi";",,', TDD terminal on (202) 205·1810, 

SUPPLF.MENT AMY INFORMATION, Th<: Commi,li"" instinnod thi, in .. stigation on May 

7. 2007, bosed on • oomp1airu filed by Global Locat .. Inc. of San J"""" California ("Global 

I """ .... ~ n fed. 1/' t. 25n7 (Mil)' 7, 20(7). The comploint .t!leged vicl>li"", of "",lion l37 of 

th< Tariff ACI of 1930 (19 U.S.C. f 1J37) in \be importation into \be United State>. \be .... rooimp<>'latioo. and the oale within tbe United S ..... aft ... impo;>Ntion af certain GI'S (Global 

P<»ili""inll S~) ...... ,ices 0J>j prodO,,1O oon~ the oamo by _ of infiinaetnen! of 

V>rious claim. of United Sw<s 1'_ Nos. 6,417,801 f'tbe '801 patent"): 6.606J46ltbe ')46 

potent"); 6.651,000 ('1h< '000 pOIaII"'): 6,704M1 ("OM: '651 potent,: 6,9J7,If7ltbe 'I 81 
patent”); and 7,158,080 (“the ‘080 patent”). The complaint named SiRF, Pharos, MiTAC, Mio, 

and E-TEN as respondents. The notice of investigation was subsequently amended to add 

Broadcom Corporation (“Broadcom”) of Irvine, California as a Complainant when Broadcom 

acquired Global Locate (collectively, “Complainants”). 

On August 8,2008, the ALJ issued his final ID finding a violation of section 337 in the 

importation and the sale after importation of certain GPS devices and products containing the 

same, in connection with the asserted claims of each of the six patents at issue. Respondents and 

the Commission investigative attorney (IA) each filed petitions for review on August 25,2008. 

On September 5,2008, Complainants and the IA each filed responses to the petitions for review. 

On October 9,2008, the Commission determined to review the ALJ’s final ID in part and 

requested briefing on the issues under review, remedy, the public interest, and bonding. The 

Commission determined to review: (1) the ID’s finding that Global Locate has standing to assert 

the ‘346 patent; (2) the ID’s finding that SiRF directly infringes claim 1 of the ‘65 1 patent 

through its commercial activities; and (3) the ID’s finding that SiRF directly infringes claim 1 of 

the ‘000 patent through its commercial activities. On October 27,2008, the parties filed written 

submissions on the issues under review, and on November 3,2008, the parties filed response 

submissions. 

On October 2 1,2008, the Commission extended the deadline for receiving written 

submissions on remedy, the public interest, and bonding until November 13,2008, in light of the 

Federal Circuit’s recent decision in Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 

2008). On November 13,2008, the parties to the investigation along with non-party Gamin 

International, Inc. each filed written submissions on remedy, the public interest, and bonding. 

On November 14,2008, Nokia Corporation and Nokia Inc. (collectively “Nokia”), also nonparties, filed a motion for leave to file written submissions on remedy, the public interest, and 

bonding one day late with the submission attached. No party opposed this motion. The 

Commission has determined to grant Nokia’s motion. On November 24,2008, the parties filed 

reply submissions on remedy, the public interest, and bonding. 

On November 18,2008, Respondents filed a petition for reconsideration of the 

Commission’s determination not to review the ALJ’s finding that claim 1 of the ‘1 87 patent and 

claims 1,2, and 11 of the ‘801 patent recite patent-eligible subject matter under 35 U.S.C. $101 

in light of the Federal Circuit’s en banc decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). 

On November 25,2008, Complainants and the IA each filed responses in opposition to 

Respondents’ petition for reconsideration. Having reviewed the petition for reconsideration and 

the responses, the Commission has determined to deny the petition for reconsideration. 

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

Commission has determined to modify the following findings in the ID: (i) Global Locate has 

standing to assert the ‘346 patent, (ii) SiRF directly infringes the ‘000 patent through its 

commercial activities, and (iii) SiRF directly infringes the ‘65 1 patent through its commercial 

activities. These modifications merely clarify the ALJ’s findings. 

2 
The Commission has determined that the appropriate form of relief is (i) a limited 

exclusion order prohibiting the unlicensed entry of GPS chips and products incorporating these 

chips that infringe one or more of claims 4 and 1 1 of the ‘346 patent, claims l,2, and 22 of the 

‘080 patent, claims l,2, and 1 1 of the ‘80 1 patent, claims 1 and 9 of the ‘ 187 patent, claims 1 

and 2 of the ‘65 1 patent, and claims 1,2, and 5 of the ‘000 patent and are manufactured abroad 

by or on behalf of, or imported by or on behalf of, SiRF, E-TEN, Pharos, MiTAC and Mio; and 

(ii) cease and desist orders against domestic respondents SiRF, Mio, and Pharos. 

The Commission further determined that the public interest factors enumerated in section 

337(d) and (Q(19 U.S.C. tj 1337(d), (Q) do not preclude issuance of the limited exclusion order 

and the cease and desist orders. Finally, the Commission determined the amount of bond to 

permit temporary importation during the Presidential review period (19 U.S.C. 6 1337Q)) shall 

be in the amount of one hundred (1 00) percent of the entered value of the articles that are subject 

to the order. The Commission’s order was delivered to the President and the United States Trade 

Representative on the day of its issuance. 

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

Tariff Act of 1930, as amended (19 U.S.C. tj 1337), and in sections 210.42-50 of the 

Commission’s Rules of Practice and Procedure (19 C.F.R. tjtj 210.42-50). 

By order of the Cornmission. 

Marilyn R. Matt 

Secretary to the Commission 

Issued: January 15,2009 

3 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 20436 

In the Matter of 

CERTAIN GPS DEVICES AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA-602 

LIMITED EXCLUSION ORDER 

The Commission has determined that there is a violation of section 337 of the Tariff 

Act of 1930 (19 U.S.C. 8 1337) in the unlawful importation, sale for importation, and sale after 

importation by SiRF Technology, Inc. (“‘SiRF”); Pharos Science & Applications, Inc. (“Pharos”); 

MiTAC International Corp. (“MiTAC”); Mi0 Technology Ltd., USA (“Mio”); and E-TEN 

Information Systems Co., Ltd. (“E-TEN’) of GPS (Global Positioning System) devices and 

products containing the same that infringe claims 1,2, and 11 of US. Patent No. 6,417,801 (“the 

‘801 patent”); claims 4 and 11 of US. Patent No. 6,606,346 (“the ‘346 patent”); claims 1 and 9 

of U.S. Patent No. 6,937,187 (“the ‘187 patent”); claims 1,2, and 22 of US. Patent No. 

7,158,080 (“the ‘080 patent”); claims 1,2, and 5 of US. Patent No. 6,651,000 (“the ‘000 

patent”); and claims 1 and 2 of US. Patent No. 6,704,65 1 (“the ‘65 1 patent”). 

Having reviewed the record in this investigation, including the written submissions of the 

parties, the Commission has made its determination on the issues of remedy, the public interest, 

and bonding. The Commission has determined that the appropriate form of relief is a limited 

exclusion order prohibiting the unlicensed entry of GPS devices and products containing the 

same that infringe the ‘080, ‘ 187, ‘801, ‘346, ‘65 1, and ‘000 patents and are manufactured 

abroad by or on behalf of, or imported by or on behalf of, SiRF, Pharos, MiTAC, Mio, and ETEN. The Commission has also determined that the appropriate form of relief includes cease 

and desist orders against SiRF, Pharos, and Mio. 
The Commission has further determined that the public interest factors enumerated in 19 

U.S.C. 5 1337(d) do not preclude issuance of the limited exclusion order or cease and desist 

orders and that the bond during the Presidential review period shall be in the amount of 100% of 

the entered value of GPS devices and products containing the same that are subject to this Order. 

Accordingly, the Commission hereby ORDERS that: 

1. GPS devices and products containing the same that are covered by one or more of 

claims 1,2, and 11 of the ‘801 patent, claims 4 and 11 of the ‘346 patent, claims 1 and 9 of the 

‘187 patent, claims 1,2, and 22 of the ‘080 patent, claims 1 and 2 of the ‘651 patent, and claims 

1,2, and 5 of the ‘000 patent and that are manufactured abroad by or on behalf of, or imported by 

or on behalf of, SiRF, Pharos, MiTAC, Mio, and E-TEN or any of their affiliated companies, 

parents, subsidiaries, or other related business entities, or their successors or assigns, are 

excluded from entry for consumption into the United States, entry for consumption from a 

foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of 

the patents except under license of the patent owner as provided by law. 

2. Products that are excluded by paragraph 1 of this Order are entitled to entry for 

consumption into the United States, entry for consumption from a foreign-trade zone, or 

withdrawal from a warehouse for consumption, under bond in the amount of 100% of entered 

value pursuant to subsection (i) of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 

8 1337(j), and the Presidential Memorandum for the United States Trade Representative of July 

21,2005 (70 Fed. Reg. 43251), from the day after this Order is received by the United States 

Trade Representative until such time as she notifies the Commission that this action is approved 

or disapproved but, in any event, not later than 60 days after the date of receipt of this action. 

2 
3. At the discretion of U.S. Customs and Border Protection (“CBP”) and pursuant to 

procedures it establishes, persons seeking to import GPS devices and products containing the 

same that are potentially subject to this Order may be required to certify that they are familiar 

with the terms of this Order, that they have made appropriate inquiry, and thereupon state that, to 

the best of their knowledge and belief, the products being imported are not excluded from entry 

under paragraph 1 of this Order. At its discretion, CBP may require persons who have provided 

the certification described in this paragraph to furnish such records or analyses as are necessary 

to substantiate the certification. 

4. In accordance with 19 U.S.C. 6 1337(1), the provisions of this Order shall not 

apply to GPS devices and products containing the sane that are imported by and for the use of 

the United States, or imported for, and to be used for, the United States with the authorization or 

consent of the Government. 

5. The Commission may modify this Order in accordance with the procedures 

described in Rule 210.76 of the Commission’s Rules of Practice and Procedure, 19 C.F.R. 

5 210.76. 

6. The Secretary shall serve copies of this Order upon each party of record in this 

investigation and upon the Department of Health and Human Services, the Department of 

Justice, the Federal Trade Commission, and CBP. 

7. 

By Order of the Commission 

Notice of this Order shall be published in the Federal Register. 

Issued: January 15,2009 

3 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 20436 

In the Matter of 

CERTAIN GPS DEVICES AND PRODUCTS 

CONTAINING THE SAME 

Inv. No. 337-TA-602 

0RI)ER TO CEASE AND DESIST 

IT IS HEREBY ORDERED THAT SiRF Technology, Inc., 2 17 Devcon Drive, San Jose, 

California 95 1 12 (“SiRF”), cease and desist from conducting any of the following activities in 

the United States: importing, testing, selling, marketing, advertising, distributing, offering for 

sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, GPS 

(Global Positioning System) devices and products containing the same that infringe one or more 

of claims I, 2, and 11 of U.S. Patent No. 6,417,801 (“the ‘801 patent”); claims 4 and 11 of U.S. 

Patent No. 6,606,346 (“the ‘346 patent”); claims 1 and 9 of U.S. Patent No. 6,937,187 (“the ‘1 87 

patent”); claims 1, 2, and 22 of U.S. Patent No. 7,158,080 (“the ‘080 patent”); claims 1 and 2 of 

U.S. Patent No. 6,704,651 (“the ‘651 patent”); and claims 1, 2, and 5 of U.S. Patent No. 

6,65 1,000 (“the ‘000 patent”), in violation of section 337 of the Tariff Act of 1930, as amended, 

19U.S.C. Q 1337. 

1. 

Definitions 

As used in this Order: 

(A) “Commission” shall mean the United States International Trade Commission. 

(B) “Complainants” shall mean Global Locate, Inc., 3190 South Bascom Avenue, San 

Jose, California 95 124 and Broadcom Corporation, 5300 California Avenue, Imine, California 

92617. 
(C) “Respondent” means SiW Technology, Inc., 217 Devcon Drive, San Jose, California 

951 12. 

(D) “Person” shall mean an individual, or any non-governmental partnership, firm, 

association, corporation, or other legal or business entity other than Respondent or its majority 

owned or controlled subsidiaries, successors, or assigns. 

(E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. 

(I;) The terms “import” and “importation” refer to importation for entry for consumption 

under the Customs laws of the United States. 

(G) The term “covered products” shall mean GPS (Global Positioning System) devices 

and products containing the same that infringe one or more of claims 1,2, and 1 1 of the ‘801 

patent; claims 4 and 11 of the ‘346 patent; claims 1 and 9 of the ‘187 patent; claims 1,2, and 22 

of the ‘080 patent; claims 1 and 2 of the ‘651 patent; and claims 1,2, and 5 of the ‘000 patent. 

11. 

Applicability 

The provisions of this Cease and Desist Order shall apply to Respondent and to any of its 

principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled 

(whether by stock ownership or otherwise) and majority-owned business entities, successors, and 

assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section 111, 

infra, for, with or otherwise on behalf of Respondent. 

111. 

Conduct Prohibited 

The following conduct of Respondent in the United States is prohibited by the Order. For 

2 
the remaining term of the respective patents, Respondent shall not: 

(A) import or sell for importation into the United States covered products; 

(B) market, test, distribute, offer for sale, sell, or otherwise transfer (except for 

exportation), in the United States imported covered products; 

(C) advertise imported covered products in the United States; 

(D) solicit U.S. agents or distributors for imported covered products; and 

(E) aid or abet other entities in the importation, sale for importation, sale after 

importation, transfer, or distribution of covered products. 

IV. 

Conduct Permitted 

Notwithstanding any other provision of this Order, specific conduct otherwise prohibited 

by the terms of this Order shall be permitted if, in a written instrument, the owner of U.S. Patent 

Nos. 6,417,801 ; 6,606,346; 6,65 1,000; 6,704,65 1 ; 6,937,187; and 7,158,080 licenses or 

authorizes such specific conduct, or such specific conduct, or such specific conduct is related to 

the importation or sale of covered products by or for the United States. 

V. 

Reporting 

For purposes of this reporting requirement, the reporting periods shall commence on July 

1 of each year and shall end on the subsequent June 30. However, the first report required under 

this section shall cover the period from the date of issuance of this Order through June 30,2009. 

This reporting requirement shall continue in force until such time as Respondent will have 

truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered 

3 
products in the United States. 

Within thirty (30) days of the last day of the reporting period, Respondent shall report to 

the Commission the quantity in units and the value in dollars of covered products that 

Respondent have imported or sold in the United States after importation during the reporting 

period and the quantity in units and value in dollars of reported covered products that remain in 

inventory in the United States at the end of the reporting period. 

VI. 

Record-keeping and Inspection 

(A) For the purpose of securing compliance with this Order, Respondent shall retain any 

and all records relating to the exportation to and importation into the United States and the sale, 

offer for sale, marketing, or distribution in the United States of covered products, made and 

received in the usual and ordinary course of business, whether in detail or in summary form, for a 

period of three (3) years from the close of the fiscal year to which they pertain. 

(B) For the purpose of determining or securing compliance with the Order and for no 

other purpose, and subject to any privilege recognized by the federal courts of the United States, 

duly authorized representatives of the Commission, upon reasonable written notice by the 

Commission or its staff, shall be permitted access and the right to inspect and copy in 

Respondent’s principal offices during office hours, and in the presence of counsel or other 

representatives if Respondent so choose, all books, ledgers, accounts, correspondence, 

memoranda, and other records and documents, both in detail and in summary form as are 

required to be retained by subparagraph VI(A) of this Order. 

Any failure to make the required report or the filing of any false or inaccurate report shall 

4 
constitute a violation of this Order, and the submission of a false or inaccurate report may be 

referred to the US. Department of Justice as a possible criminal violation of 18 U.S.C. $1001. 

VII. 

Service of Cease and Desist Order 

Respondent is ordered to and directed to: 

(A) Serve, within fifteen (1 5) days after the effective date of this Order, a copy of this 

Order upon each of their respective officers, directors, managing agents, agents, and employees 

who have any responsibility for the importation, marketing, distribution, or sale of imported 

covered products in the United States; 

(B) Serve, within (1 5) days after the succession of any persons referred to in 

subparagraph VII(A) of this Order, a copy of the Order upon each successor; and 

(C) Maintain such records as will show the name, title, and address of each person 

upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this 

Order, together with the date on which service was made. 

The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until 

the date of expiration of U.S. Patent Nos. 6,4 1730 1 ; 6,606,346; 6,65 1,000; 6,704,65 1 ; 

6,937,187; and 7,158,080. 

VIII. 

Confidentiality 

Any request for confidential treatment of information obtained by the Commission 

pursuant to Sections V and VI of this Order should be in accordance with Commission Rule 

201.6, 19 C.F.R. 6 201.6. For all reports for which confidential treatment is sought, Respondent 

5 
must provide a public version of such report with confidential information redacted. 

IX. 

Enforcement 

Violation of this Order may result in any of the actions specified in section 2 10.75 of the 

Commission’s Rules of Practice and Procedure, 19 C.F.R. 9 210.75, including an action for civil 

penalties in accordance with section 337(f) of the Tariff Act of l930,19 U.S.C. 9 1337(f), and 

any other action as the Commission may deem appropriate. In determining whether Respondent 

is in violation of this Order, the Commission may infer facts adverse to Respondent if 

Respondent fails to provide adequate or timely information. 

x. 

Modification 

The Commission may amend this Order on its own motion or in accordance with the 

procedure described in section 2 10.76 of the Commission’s Rules of Practice and Procedure, 19 

C.F.R. 5 210.76. 

XI. 

Bonding 

The conduct prohibited by Section I11 of this Order may be continued during the sixty 

(60) days period in which this Order is under review by the United States Trade Representative 

as delegated by the President, 70 Fed Reg 4325 1 (July 21,2005), subject to Respondent posting 

a bond of in the amount of 100% of the imported value per unit for covered products. This bond 

provision does not apply to conduct that is otherwise permitted by Section IV of this Order. 

Covered products imported on or after the date of issuance of this Order are subject to the entry 

6 
bond as set forth in the limited exclusion order issued by the Cornmission, and are not subject to 

this bond provision. 

The bond is to be posted in accordance with the procedures established by the 

Commission for the posting of bonds by complainants in connection with the issuance of 

temporary exclusion orders. See Commission Rule 210.68, 19 C.F.R. 9 210.68. The bond and 

any accompanying documentation is to be provided to and approved by the Commission prior to 

the commencement of conduct which is otherwise prohibited by Section I11 of this Order. 

The bond is to be forfeited in the event that the United States Trade Representative 

approves, or does not approve within the review period, this Order, unless the U.S. Court of 

Appeals for the Federal Circuit, in a final judgment, reverses any Commission final 

determination and order as to Respondent on appeal, or unless Respondent exports the products 

subject to this bond or destroys them and provides certification to that effect satisfactory to the 

Commission. 

The bond is to be released in the event the United States Trade Representative 

disapproves this Order and no subsequent order is issued by the Commission and approved, or 

not disapproved, by the United States Trade Representative, upon service on Respondent of an 

order issued by the Commission based upon application therefore made by Respondent to the 

Commission. 

By Order of the Commission. 

Secretary to the Commission 

Issued: January 15,2009 

7 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 20436 

In the Matter of 

CERTAIN GPS DEVICES AND PRODUCTS 

CONTAINING THE SAME 

Inv. No. 337-TA-602 

ORDER TO CEASE AND DESIST 

IT IS HEREBY ORDEFED THAT Mio Technology Limited, USA, 47988 Fremont 

Boulevard, Fremont, California 94538, cease and desist from conducting any of the following 

activities in the United States: importing, selling, marketing, advertising, distributing, offering 

for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, GPS 

(Global Positioning System) devices and products containing the same that infringe one or more 

of claims 1,2, and 11 of U.S. Patent No. 6,417,801 (“the ‘801 patent”); claims 4 and 11 of U.S. 

Patent No. 6,606,346 (“the ‘346 patent”); claims 1 and 9 of US. Patent No. 6,937,187 (“the ‘ 187 

patent”); and claims 1,2, and 22 of U.S. Patent No. 7,158,080 (“the ‘080 patent”); claims 1 and 2 

of U.S. Patent No. 6,704,651 (“the ‘651 patent”); and claims 1,2, and 5 of U.S. Patent No. 

6,65 1,000 (“the ‘000 patent”), in violation of section 337 of the Tariff Act of 1930, as amended, 

19 U.S.C. 9 1337. 

I. 

Definitions 

As used in this Order: 

(A) “Commission” shall mean the United States International Trade Cornmission. 

(B) “Complainants” shall mean Global Locate, Inc., 3 190 South Bascom Avenue, San 

Jose, California 95 124 and Broadcom Corporation, 5300 California Avenue, Irvine, California 

926 17. 
(C) “Respondent” means Mi0 Technology Limited, USA, 47988 Fremont Boulevard, 

Fremont, California 94538. 

(D) “Person” shall mean an individual, or any non-governmental partnership, fim, 

association, corporation, or other legal or business entity other than Respondent or its majority 

owned or controlled subsidiaries, successors, or assigns. 

(E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. 

(F) The terms “import” and “importation” refer to importation for entry for consumption 

under the Customs laws of the United States. 

(G) The term “covered products” shall mean GPS (Global Positioning System) devices 

and products containing the same that infringe one or more of claims 1,2, and 1 1 of the ‘SO 1 

patent, claims 4 and 11 of the ‘346 patent, claims 1 and 9 of the ‘187 patent, and claims 1,2, and 

22 of the ‘080 patent; claims 1 and 2 of the ‘651 patent; and claims 1,2, and 5 of the ‘000 patent. 

11. 

Applicability 

The provisions of this Cease and Desist Order shall apply to Respondent and to any of its 

principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled 

(whether by stock ownership or otherwise) and majority-owned business entities, successors, and 

assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section 111, 

infra, for, with or otherwise on behalf of Respondent. 

111. 

Conduct Prohibited 

The following conduct of Respondent in the United States is prohibited by the Order. For 

2 
the remaining tern of the respective patents, Respondent shall not: 

(A) import or sell for importation into the United States covered products; 

(B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation), in 

the United States imported covered products; 

(C) advertise imported covered products in the United States; 

(D) solicit U.S. agents or distributors for imported covered products; or 

(E) aid or abet other entities in the importation, sale for importation, sale after 

importation, transfer, or distribution of covered products. 

IV. 

Conduct Permitted 

Notwithstanding any other provision of this Order, specific conduct otherwise prohibited 

by the terms of this Order shall be permitted if, in a written instrument, the owner of U.S. Patent 

Nos. 6,417,801; 6,606,346; 6,937,187; and 7,158,080 licenses or authorizes such specific 

conduct, or such specific conduct, or such specific conduct is related to the importation or sale of 

covered products by or for the United States. 

V. 

Reporting 

For purposes of this reporting requirement, the reporting periods shall commence on July 

1 of each year and shall end on the subsequent June 30. However, the first report required under 

this section shall cover the period from the date of issuance of this Order through June 30,2009. 

This reporting requirement shall continue in force until such time as Respondent will have 

truthfully reported, in two consecutive timely filed reports, that it has no inventory of covered 
products in the United States. 

Within thirty (30) days of the last day of the reporting period, Respondent shall report to 

the Commission the quantity in units and the value in dollars of covered products that 

Respondent have imported or sold in the United States after importation during the reporting 

period and the quantity in units and value in dollars of reported covered products that remain in 

inventory in the United States at the end of the reporting period. 

VI. 

Record-keeping and Inspection 

(A) For the purpose of securing compliance with this Order, Respondent shall retain any 

and all records relating to the exportation to and importation into the United States the sale, offer 

for sale, marketing, or distribution in the United States of covered products, made and received in 

the usual and ordinary course of business, whether in detail or in surnmary form, for a period of 

three (3) years from the close of the fiscal year to which they pertain. 

(€3) For the purpose of determining or securing compliance with the Order and for no 

other purpose, and subject to any privilege recognized by the federal courts of the United States, 

duly authorized representatives of the Commission, upon reasonable written notice by the 

Commission or its staff, shall be permitted access and the right to inspect and copy in 

Respondent’s principal offices during office hours, and in the presence of counsel or other 

representatives if Respondent so choose, all books, ledgers, accounts, correspondence, 

memoranda, and other records and documents, both in detail and in smary form as are 

required to be retained by subparagraph VI(A) of this Order. 

Any failure to make the required report or the filing of any false or inaccurate report shall 

4 
constitute a violation of this Order, and the submission of a false or inaccurate report may be 

referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. §lOOl. 

VII. 

Service of Cease and Desist Order 

Respondent is ordered to and directed to: 

(A) Serve, within fifteen (1 5) days after the effective date of this Order, a copy of this 

Order upon each of their respective officers, directors, managing agents, agents, and employees 

who have any responsibility for the importation, marketing, distribution, or sale of imported 

covered products in the United States; 

(B) Serve, within (1 5) days after the succession of any persons referred to in 

subparagraph VII(A) of this Order, a copy of the Order upon each successor; and 

(C) Maintain such records as will show the name, title, and address of each person 

upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this 

Order, together with the date on which service was made. 

The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until 

the date of expiration of US. Patent Nos. 6,417,801; 6,606,346; 6,937,187; and 7,158,080. 

VIII. 

Confidentiality 

Any request for confidential treatment of information obtained by the Commission 

pursuant to Sections V and VI of this Order should be in accordance with Commission Rule 

201.6, 19 C.F.R. 8 201.6. For all reports for which confidential treatment is sought, Respondent 

must provide a public version of such report with confidential information redacted. 

5 
IX. 

Enforcement 

Violation of this Order may result in any of the actions specified in section 2 10.75 of the 

Commission’s Rules of Practice and Procedure, 19 C.F.R. 5 210.75, including an action for civil 

penalties in accordance with section 337(f) of the Tariff Act of 1930, 19 U.S.C. 8 1337(f), and 

any other action as the Commission may deem appropriate. In determining whether Respondent 

is in violation of this Order, the Commission may infer facts adverse to Respondent if 

Respondent fails to provide adequate or timely information. 

X. 

Modification 

The Commission may amend this Order on its om motion or in accordance with the 

procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure, 19 

C.F.R. tj 210.76. 

XI. 

Bonding 

The conduct prohibited by Section 111 of this Order may be continued during the sixty 

(60) days period in which this Order is under review by the United States Trade Representative 

as delegated by the President, 70 Fed Reg 4325 1 (July 2 1 , 2005), subject to Respondent posting 

a bond of in the amount of 100% of the imported value per unit for covered products. This bond 

provision does not apply to conduct that is otherwise permitted by Section IV of this Order. 

Covered products imported on or after the date of issuance of this Order are subject to the entry 

bond as set forth in the limited exclusion order issued by the Commission, and are not subject to 

6 
this bond provision. 

The bond is to be posted in accordance with the procedures established by the 

Commission for the posting of bonds by complainants in connection with the issuance of 

temporary exclusion orders. See Commission Rule 210.68, 19 C.F.R. 0 210.68. The bond and 

any accompanying documentation is to be provided to and approved by the Commission prior to 

the commencement of conduct which is otherwise prohibited by Section I11 of this Order. 

The bond is to be forfeited in the event that the United States Trade Representative 

approves, or does not approve within the review period, this Order, unless the U.S. Court of 

Appeals for the Federal Circuit, in a final judgment, reverses any Commission final 

determination and order as to Respondent on appeal, or unless Respondent exports the products 

subject to this bond or destroys them and provides certification to that effect satisfactory to the 

Commission. 

The bond is to be released in the event the United States Trade Representative 

disapproves this Order and no subsequent order is issued by the Commission and approved, or 

not disapproved, by the United States Trade Representative, upon service on Respondent of an 

order issued by the Commission based upon application therefore made by Respondent to the 

Commission. 

By Order of the Commission. 

Secretary to the Commission 

Issued: January 15,2009 

7 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 20436 

In the Matter of 

CERTAIN GPS DEVICES AND PRODUCTS 

CONTAINING THE SAME 

Inv. No. 33’7-TA-602 

ORDER TO CEASE AND DESIST 

IT IS HEREBY ORDERED THAT Pharos Science & Applications, Inc., 41 1 Amapola 

Avenue, Torrance, California 90501-1478, cease and desist from conducting any of the following 

activities in the United States: importing, selling, marketing, advertising, distributing, offering 

for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, GPS 

(Global Positioning System) devices and products containing the same that infringe one or more 

of claims 1,2, and 11 of U.S. Patent No. 6,417,801 (“the ‘801 patent”); claims 4 and 11 of U.S. 

Patent No. 6,606,346 (“the ‘346 patent”); claims 1 and 9 of U.S. Patent No. 6,937,187 (“the ‘ 187 

patent”); and claims 1,2, and 22 of U.S. Patent No. 7,158,080 (“the ‘080 patent”; claims 1 and 2 

of U.S. Patent No. 6,704,651 (“the ‘651 patent”); and claims 1,2, and 5 of US. Patent No. 

6,651,000 (“‘the ‘000 patent”), in violation of section 337 of the Tariff Act of 1930, as amended, 

19 U.S.C. 6 1337. 

I. 

Definitions 

As used in this Order: 

(A) “Cornmission” shall mean the United States International Trade Cornmission. 

(B) “Complainants” shall mean Global Locate, Inc., 3 190 South Bascom Avenue, San 

Jose, California 95 124 and Broadcom Corporation, 5300 California Avenue, Imine, California 

92617. 
(C) “Respondent” means Pharos Science & Applications, Inc., 41 1 Amapola Avenue, 

Torrance, California 90501 - 1478. 

(D) “Person” shall mean an individual, or any non-governmental partnership, firm, 

association, corporation, or other legal or business entity other than Respondent or its majority 

owned or controlled subsidiaries, successors, or assigns. 

(E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico. 

(F) The terms “import” and “importation” refer to importation for entry for consumption 

under the Customs laws of the United States. 

(G) The term “covered products” shall mean GPS (Global Positioning System) devices 

and products containing the same that infringe one or more of claims 1,2, and 1 1 of the ‘801 

patent, claims 4 and 11 of the ‘346 patent, claims 1 and 9 of the ‘ 187 patent, and claims 1,2, and 

22 of the ‘080 patent; claims 1 and 2 of the ‘65 1 patent; and claims 1,2, and 5 of the ‘000 patent. 

11. 

Applicability 

The provisions of this Cease and Desist Order shall apply to Respondent and to any of its 

principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled 

(whether by stock ownership or otherwise) and majority-owned business entities, successors, and 

assigns, and to each of them, insofar as they are engaging in conduct prohibited by Section 111, 

infra, for, with or otherwise on behalf of Respondent. 

111. 

Conduct Prohibited 

The following conduct of Respondent in the United States is prohibited by the Order. For 

2 
the remaining term of the respective patents, Respondent shall not: 

(A) import or sell for importation into the United States covered products; 

(B) market, distribute, offer for sale, sell, or otherwise transfer (except for exportation), in 

the United States imported covered products; 

(C) advertise imported covered products in the United States; 

(D) solicit U.S. agents or distributors for imported covered products; or 

(E) aid or abet other entities in the importation, sale for importation, sale after 

importation, transfer, or distribution of covered products. 

IV. 

Conduct Permitted 

Notwithstanding any other provision of this Order, specific conduct otherwise prohibited 

by the terms of this Order shall be permitted if, in a written instrument, the owner of U.S. Patent 

Nos. 6,417,801; 6,606,346; 6,937,187; and 7,158,080 licenses or authorizes such specific 

conduct, or such specific conduct, or such specific conduct is related to the importation or sale of 

covered products by or for the United States. 

V. 

Reporting 

For purposes of this reporting requirement, the reporting periods shall commence on July 

1 of each year and shall end on the subsequent June 30. However, the first report required under 

this section shall cover the period from the date of issuance of this Order through June 30,2009. 

This reporting requirement shall continue in force until such time as Respondent will have 

truthfblly reported, in two consecutive timely filed reports, that it has no inventory of covered 

3 
products in the United States. 

Within thirty (30) days of the last day of the reporting period, Respondent shall report to 

the Commission the quantity in units and the value in dollars of covered products that 

Respondent have imported or sold in the United States after importation during the reporting 

period and the quantity in units and value in dollars of reported covered products that remain in 

inventory in the United States at the end of the reporting period. 

VI. 

Record-keeping and Inspection 

(A) For the purpose of securing compliance with this Order, Respondent shall retain any 

and all records relating to the exportation to and importation into the United States the sale, offer 

for sale, marketing, or distribution in the United States of covered products, made and received in 

the usual and ordinary course of business, whether in detail or in summary form, for a period of 

three (3) years from the close of the fiscal year to which they pertain. 

(B) For the purpose of determining or securing compliance with the Order and for no 

other purpose, and subject to any privilege recognized by the federal courts of the United States, 

duly authorized representatives of the Commission, upon reasonable written notice by the 

Commission or its staff, shall be permitted access and the right to inspect and copy in 

Respondent’s principal offices during office hours, and in the presence of counsel or other 

representatives if Respondent so choose, all books, ledgers, accounts, correspondence, 

memoranda, and other records and documents, both in detail and in summary form as are 

required to be retained by subparagraph VI(A) of this Order. 

Any failure to make the required report or the filing of any false or inaccurate report shall 

4 
constitute a violation of this Order, and the submission of a false or inaccurate report may be 

referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. $1001. 

VII. 

Service of Cease and Desist Order 

Respondent is ordered to and directed to: 

(A) Serve, within fifteen (1 5) days after the effective date of this Order, a copy of this 

Order upon each of their respective officers, directors, managing agents, agents, and employees 

who have any responsibility for the importation, marketing, distribution, or sale of imported 

covered products in the United States; 

(B) Serve, within (1 5) days after the succession of any persons referred to in 

subparagraph VII(A) of this Order, a copy of the Order upon each successor; and 

(C) Maintain such records as will show the name, title, and address of each person 

upon whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of this 

Order, together with the date on which service was made. 

The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until 

the date of expiration of US. Patent Nos. 6,417,801; 6,606,346; 6,937,187; and 7,158,080. 

VIII. 

Confidentiality 

Any request for confidential treatment of information obtained by the Commission 

pursuant to Sections V and VI of this Order should be in accordance with Commission Rule 

201.6, 19 C.F.R. tj 201.6. For all reports for which confidential treatment is sought, Respondent 

must provide a public version of such report with confidential information redacted. 

5 
IX. 

Enforcement 

Violation of this Order may result in any of the actions specified in section 210.75 of the 

Commission’s Rules of Practice and Procedure, 19 C.F.R. 4 210.75, including an action for civil 

penalties in accordance with section 337(f) of the Tariff Act of 1930, 19 U.S.C. 0 1337(f), and 

any other action as the Commission may deem appropriate. In determining whether Respondent 

is in violation of this Order, the Commission may infer facts adverse to Respondent if 

Respondent fails to provide adequate or timely information. 

X. 

Modification 

The Commission may amend this Order on its own motion or in accordance with the 

procedure described in section 2 10.76 of the Commission’s Rules of Practice and Procedure, 19 

C.F.R. 0 210.76. 

XI. 

Bonding 

The conduct prohibited by Section I11 of this Order may be continued during the sixty 

(60) days period in which this Order is under review by the United States Trade Representative 

as delegated by the President, 70 Fed Reg 4325 1 (July 21,2009, subject to Respondent posting 

a bond of in the amount of 100% of the imported value per unit for covered products. This bond 

provision does not apply to conduct that is otherwise pemitted by Section IV of this Order. 

Covered products imported on or after the date of issuance of this Order are subject to the entry 

bond as set forth in the limited exclusion order issued by the Commission, and are not subject to 

6 
this bond provision. 

The bond is to be posted in accordance with the procedures established by the 

Commission for the posting of bonds by complainants in connection with the issuance of 

temporary exclusion orders. See Commission Rule 210.68, 19 C.F.R. 9 210.68. The bond and 

any accompanying documentation is to be provided to and approved by the Commission prior to 

the commencement of conduct which is otherwise prohibited by Section I11 of this Order. 

The bond is to be forfeited in the event that the United States Trade Representative 

I approves, or does not approve within the review period, this Order, unless the U.S. Court of 

Appeals for the Federal Circuit, in a final judgment, reverses any Commission final 

determination and order as to Respondent on appeal, or unless Respondent exports the products 

subject to t&s bond or destroys them and provides certification to that effect satisfactory to the 

Commission. 

The bond is to be released in the event the United States Trade Representative 

disapproves this Order and no subsequent order is issued by the Commission and approved, or 

not disapproved, by the United States Trade Representative, upon service on Respondent of an 

order issued by the Commission based upon application therefore made by Respondent to the 

Cornmission. 

By Order of the Commission. 

Secretary to the Commission 

Issued: January 15,2009 

7 
Certificate of Service - Page 1 

CERTAIN GPS DEVICES AND PRODUCTS CONTAINING 337-TA-602 

SAME 

CERTIFICATE OF SERVICE 

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

FINAL DETERMINATION OF VIOLATION OF SECTION 337; TERMINATION 

OF INVESTIGATION; ISSUANCE OF LIMITED EXCLUSION ORDER AND 

CEASE AND DESIST ORDERS has been served by hand upon the Commission 

Investigative Attorney, Vu Q. Bui, Esq., and the following parties as indicated, on 

January 15, 2009. 

US. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT GLOBAL 

LOCATE, INC. AND BROADCOM CORPOR_ATION: 

Michael D. Esch, Esq. 

WILMER CUTLER PICKERING HALE 

AND DORR LLP 

1875 Pennsylvania Avenue, NW 

Washington, DC 20006 

P-202-663 -6420 

ON BEHAI-F OF RESPONDENTS SiRF 

TECHNOLOGY, INCORPORATED, MI0 

TECHNOLOGY LIMITED USA, RllTAC 

1N'~ERNATIONAI~ CORPORATION, PHAROS 

CORPORATION: 

SCIENCE AND APP1,ICATIONS AND E-TEN 

Steven E. Adkins, Esq. 

JONES DAY 

5 1 Louisiana Avenue, NW 

Washington, DC 20001 -2 1 13 

P-202-879-3939 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

ia First Class Mail 

ther: 
Certificate of Service - Page 2 

GOVERNMENT AGENCIES: 

Edward T. Hand, Chief 

Foreign Commerce Section 

Antitrust Division 

U.S. Department of Justice 

450 5th Street NW - Room 11000 

Washington, DC 20530 

George F. McCray 

Office of Regulations and Rulings 

U.S. Bureau of Customs and Border Protection 

Mint Annex Building 

1300 Pennsylvania Avenue, NW 

Washington, DC 20229 

Elizabeth Kraus, Deputy Director 

International Antitrust, Office of 

International Affairs 

Federal Trade Commission 

600 Pennsylvania Avenue, Room 498 

Washington, DC 20580 

Richard Lambert, Esq. 

Office of Technology Development Services 

Dept. of Health & Human Services 

National Institutes of Health 

66 IO Rockledge Drive - Room 407 1 

Bethesda, MD 20892 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

ia First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

WVia First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

ia First Class Mail 

ther: 

PU6UC VERSION 

UNITED Sf ",-n;$ INTERJ'UnONM. TRADE COM."-ISSION 

W ... I.,-D.C. 

CERTAIN GPS DEVICES AND 

PRODUcrs CONTAINING SMII 

COMMISSION OPINION 

Tho Commission hoI found • violotiofl or """ion 337 of .... Tariff Act on 93(1 (19 U.S.C. § 

1l37) by I'CUOII "finfring<mon' oW.s. him' N<>S. 6.417,801 ("1bo 'SOI potent"'); 6,606,346 ("the 

'}46 patatt"'); M!I I ,000 ('the '000 poIrntj; 6,7o.J,6!l 1 f'the '6S1 potent;; 6.937,1 87 ("1bo ' 1&7 

paten!"); ond 7.1$l,03O ("1he '!JSO potonf1 by SIRJ' T.d"",IOIY, !roo_ ("SIRF'); E· TEN Corp. ("ETEN'); Phoro. Science & "'-ppl".tiom, Inc. ("Phoros"); MITAC I ... malionol Cotp<ntion 

("MIT"';"); ond 1.110 T<clD>lolO' Lim ..... ,Mioj(«>U<<tl •• ly. "R..".,.,.,.Rloj. Tho Commwion 

hudotennined to modify the odm"lotrotiv. I.w jodp .• (""'-W) findln", that Gkbol L"".1.e has 

IW><Iini to ...m the ')016 potent ond that SiRf dirocdy infrint<> .... '6!ll ond '000 patents tl.-wgh 

itt COIJUD<I"Oiol oc\i.iti .. ond \0 offlDll hi. fltldlntl ofvieWion. This opinion _ forIh .... 

L BACKGROUND 

nu. In""stiptio<> """ InstituU<l on M>y 7, 2007, bued '"' • oompl.1ri filed by Global 

J " ...... 72 Fed. &/J. 2S7n (2007). Tho oomplaint oIl<g<d .ioIotiotu ohO<\ion ))7 In .... 
PUBLIC WRSION 

same by reason of infringement of various claims of the ‘801, ‘346, ‘000, ‘65 1, ‘ 187, and ‘080 

patents. The complaint named SiRF, E-TEN, Pharos, MiTAC, and Mio as respondents. The 

complaint and the notice of investigation were subsequently amended to add Broadcom Corporation 

as a complainant when it acquired Global Locate (collectively, “Complainants”). 

The ALJ held an evidentiary hearing from April 28,2008, to May 13,2008, and thereafter 

received post-hearing briefing from the parties. On August 8,2008, the ALJ issued his final initial 

determination (“ID”), and on August 22, 2008, he issued his recommended determination on remedy 

and bonding (“RD”). In his ID, the ALJ found a violation of section 337 by reason of infringement 

of all six asserted patents. In addition, the ALJ found that none of the claims of the asserted patents 

were invalid or unenforceable, that the domestic industry requirement was met, and that Global 

Locate has standing to assert the ‘346 patent. 

On August 25,2008, Respondents and the Commission investigative attorney (“IA”) each 

filed petitions for review of the ALJ’s ID. On September 5,2008, Complainants and the IA each 

filed a response to the petitions for review of the ID. 

On October 9,2008, the Commission determined to review the final ID in part and requested 

briefing on the issues under review, remedy, the public interest, and bonding. The Commission 

determined to review: (1) the finding that Global Locate has standing to assert the ‘346 patent; (2) 

the finding that SiRF directly infringes claim 1 of the ‘65 1 patent through its commercial activities; 

and (3) the finding that SiRF directly infringes claim 1 of the ‘000 patent through its commercial 

activities. In its notice of review, the Commission asked the parties to address the following 

questions: 

1. Whether Global Locate has standing to assert the ‘346 patent in light of provision 2.1 

2 
PUBLIC PERSION 

in RX-286? 

2. Does SiRF practice the element “processing satellite signals ...” of the method of 

claim 1 of the ‘65 1 patent vicariously through end users of the accused products? 

See BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and 

Muniauction, Inc. v, Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). 

3. Does SiRF practice the third element (“at the remote receiver, representing said 

formatted data in a second format supported by the remote receiver”) of the method 

of claim 1 of the ‘000 patent vicariously through end users of the accused products? 

See BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and 

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). 

On October 2 1,2008, the Commission extended the deadline for written submissions on 

remedy, the public interest, and bonding in light of the Federal Circuit’s recent decision in Kyocera 

Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008) and the fact that the public version of the ID 

and RD had not yet issued. On October 27,2008, Complainants, Respondents, and the IA each filed 

written submissions regarding the issues on review. On November 3,2008, each party filed reply 

submissions. On November 13,2008, Complainants, Respondents, and the IA each filed written 

submissions addressing the issues of remedy, the public interest, and bonding. Also on November 

13, 2008, Garmin International, Inc. (“Garmin”), an “interested party”, filed a written submission on 

remedy, the public interest, and bonding. 

On November 14,2008, after the deadline for filing submissions had passed, Nokia 

Corporation and Nokia Inc. (collectively, “Nokia”), filed a motion for leave to file a written 

submission on remedy, the public interest, and bonding one day late with the submission attached. 

No party opposed Nokia’s motion. The Commission has determined to grant Nokia’s motion for 

good cause shown. 

On November 24,2008, Complainants, Respondents, and the IA filed reply submissions on 
PUBLIC VERSION 

remedy, the public interest, and bonding. 

On November 18,2008, Respondents filed a petition for reconsideration of the 

Commission’s determination not to review the ALJ’s finding that claim 1 of the ‘ 187 patent and 

claims 1,2, and 11 of the ‘801 patent recite patent-eligible subject matter under 35 U.S.C. $101 in 

light of the Federal Circuit’s decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc). On 

November 25,2008, Complainants and the IA each filed an opposition opposing Respondents’ 

petition for reconsideration. 

B. Patents at Issue 

This investigation pertains to GPS devices and products. Althoughsix patents are asserted in 

the investigation, only the ‘346 patent, the ‘65 I patent, and the ‘000 patent were the subject of the 

Commission’s review. The ‘346 patent, entitled “Method and Apparatus for Computing Signal 

Correlation,” issued on August 12,2003, based on an application filed on May 18, 2001. The named 

inventors are Charles Abraham and Donald Fuchs. The ‘65 1 patent, entitled “Method and Apparatus 

for Locating Mobile Receivers Using a Wide Area Reference Network for Propagating Ephemeris,” 

issued on March 9,2004, based on an application filed on November 20,2001. The named inventor 

is Frank van Diggelen. The ‘000 patent, entitled “Method and Apparatus for Generating and 

Distributing Satellite Tracking Information in a Compact Format,” issued on November 18, 2003, 

based on an application filed on July 25,2001. The named inventors are Frank van Diggelen, 

Charles Abraham, and James LaMance. 

C. Products at Issue 

The accused products include SiEW’s GPS chips, namely SiEWstarIII and InstantGPS, and 

products incorporating the GPS chips such as portable navigation devices (“PNDs”), personal digital 

4 
PUBLIC VERSION 

assistants (“PDAs”) and cell phones made by the other respondents. In some instances, the GPS 

chips and products incorporating them have been accused of infringement in conjunction with GPS 

services, such as SiRF InstantFix and SiRFLoc, which provide data regarding satellite location to 

remote GPS receivers. 

. 

11. VIOLATION OF SECTION 337 

A. 

A co-owner of a patent cannot pursue an infringement action by itself. Rather, all patent 

Standing to Assert the ‘346 Patent 

owners must be joined as parties. See, e.g., Israel Bio-Eng ’g Project v. Amgen, Inc., 475 F.3d 1256, 

1264 (Fed. Cir. 2007). The reason for this rule “is to prevent the possibility of two suits on the same 

patent against a single infringer.” Vaupel Textilmaschinen KG v. Meccanica Euro Italia S. P.A., 944 

F.2d 870, 875 (Fed. Cir. 1991). The standing requirements are the same before the Commission: 

“[Ilnfringement actions may only be brought by, or in the name of, all of the owners of the patent in 

suit or the exclusive licensee of all the rights covered by the patent” because the Commission 

“strictly read[s] the federal standing precedent” into Rule 21 0.12(a)(7). In re Certain Catalyst 

Components and Catalysts for the Polymerization of Olefins, Inv. No. 337-TA-307, 1990 ITC LEXIS 

224 at *26 (June 25, 1990)(unreviewed initial determination terminating investigation for lack of 

indispensable party). 

The ALJ determined that Magellan Corporation (“Magellan”) is not a co-owner of the ‘346 

patent and that Global Locate has standing based on evidence in the record including, among other 

things, an agreement settling a trade secret litigation between Magellan and Global Locate 

5 
PUBLIC VERSION 

(“Magellan settlement agreement”)(CX-23C)’ as well as Magellan’s failure to assert ownership of 

the ‘346 patent. As reflected in its request for briefing, the Commission’s review of the ID’S finding 

that Global Locate has standing to assert the ‘346 patent is focused on the effect of section 2.1 

(defining “Inventions”) of the “Inventions, Trade Secrets, and Confidential Information Agreement” 

(RX-286) (“employee inventions agreement”), which the ALJ did not explicitly address in the final 

ID. For the reasons set forth below, the Commission hereby modifies the ALJ’s determination to add 

that the employee inventions agreement did not automatically assign any rights in the ‘346 patent to 

Mage 1 lan . 

Sections 2.1 and 2.3 of the employee inventions agreement are relevant to the resolution of 

the ownership issue. Sections 2.1 and 2.3 state: 

[ 

1 

The parties do not dispute that Abraham, a named co-inventor of the ‘346 patent, entered into the 

employee inventions agreement in 1996 when he was employed by Ashtech, a company which was 

1 

6 
PUBLIC VERSION 

later acquired by Magellan. Nor do the parties dispute that Abraham separated from Magellan in 

February 2000 and joined Global Locate, [ 

] At the center of 

the parties’ dispute is whether Abraham’s interest in the invention of the ‘346 patent was 

automatically assigned to Magellan by operation of the employee inventions agreement. 

Respondents, who challenge standing, argue that the invention was automatically assigned to 

Magellan because Abraham’s act of conception while he was employed by Magellan is included 

within the definition of “Inventions” in section 2.1 of the employee inventions agreement (RX-286) 

and his invention was both “related to” and “useful in” Magellan’s GPS business. Respondents cite 

(i) Abraham’s testimony that Magellan is “in the GPS business” (Abraham Tr. at 3165:2-7); (ii) 

various passages in the ‘346 patent that describe why the invention is generally useful; (iii) 

Abraham’s circulation, within Magellan, of documentation relating to conception of the ‘346 patent; 

and (iv) Magellan’s suit against Global Locate involving technology related to the ‘346 patent. 

Respondents’ Written Submission on Issues Under Review at 9-10. 

The determination of whether an invention is “related to” an employer’s business under an 

invention assignment clause is a fact-intensive inquiry that requires reference to extrinsic evidence, 

such as the conduct of the parties, the nature of the employer’s business, and the nature of the 

employee’s work for the employer. See DDB Technologies, LLC v. MLB Advanced Media L. P., 5 17 

F.3d 1284, 1292 (Fed. Cir. 2008). The Commission finds that Respondents have failed to provide 

evidence that would demonstrate that the invention of the ‘346 patent was “related to or useful in” 

Magellan’s business because none of the evidence to which Respondents have cited relates the 

specific invention of the ‘346 patent to any particular aspects of Magellan’s business. To the 

7 
PUBLIC VEXSION 

contrary, the factual findings of the ALJ regarding Magellan’s conduct demonstrate that Magellan 

did not consider itself a co-owner of the ‘346 patent. For example, the ALJ found that “Magellan 

has never sought to exercise ownership over the patent, even given the public issuance of the patent 

(in a field doubtlessly monitored by Magellan), or moreover, when Magellan was later subpoenaed in 

connection with ITC litigation involving the ‘346 patent.” ID at 38. The ALJ also found that even 

though Magellan was aware of the particulars of Abraham’s invention based on Abraham’s 

dissemination of information within Magellan pertaining to the work that he would later use as a 

basis for the asserted claims of the ‘346 patent, it did not assert ownership. Id. (citing Abraham Tr. 

3 175-3 180,3200-3204; CX-74C; CX-103C; Braasch Tr. 3344-3350). 

Moreover, the ALJ found that language in the settlement agreement that ended the trade 

secret litigation between Global Locate and Magellan permitted Global Locate to continue using 

certain technical concepts relating to the subject matter of the ‘346 patent and, therefore, supported 

Global Locate’s claim of sole ownership of the ‘346 patent. ID at 39 (citing CX-23C at GL-602- 

97130-31). This agreement also demonstrates Magellan’s failure to assert ownership of the ‘346 

patent despite its detailed knowledge of Global Locate’s activities pertaining to the subject matter of 

the ‘346 patent. 

In light of Magellan’s awareness of the invention of the ‘346 patent and its failure to assert 

ownership of the invention at any time, the Commission concludes that Magellan itself did not 

consider the invention of the ‘346 patent “related to or useful in” its business within the meaning of 

section 2.1 of the employee inventions agreement. See DDB Technologies, 5 17 F.3d at 1293 (Fed. 

Cir. 2008). Accordingly, the Commission modifies the ALJ’s finding that Global Locate has 

standing to assert the ‘346 patent to add that Abraham’s interest in the invention of the ‘346 patent 

8 
PUBLIC VERSION 

was never assigned to Magellan under the employee inventions agreement because there is no 

evidence that the invention of the ‘346 patent was “related to or useful in” its business within the 

meaning of section 2.1 of that agreement. 

B. 

Direct infringement of a method claim requires a party to perform each and every step of a 

Infringement of the ‘651 and ‘000 Patents by SiRF’s Commercial Activities 

claimed method. Joy Techs.,Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993); Warner-Jenkinson 

Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17,29 (1997). However, a “defendant cannot . . . 

avoid liability for direct infringement by having someone else carry out one or more of the claimed 

steps on its behalf.” BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379 (Fed. Cir. 

2007). Where multiple parties each perform a portion of a patented method, one of the parties may 

be liable for direct infringement if that party either “performs all of the steps of the process,” or 

“control[s] or direct[s]” the performance of those steps. BMC Resources, 498 F.3d at 1379; 

Muniauction, Inc. v. Thomson Corp., 532 F.3d 13 18, 1328-30 (Fed. Cir. 2008). If a single party 

directs or controls all the steps of a method claim “it would be unfair indeed for the mastermind to in 

such situations to escape liability.” BMC Resources, 498 F.3d at 138 1. 

The ALJ found claim 1 of the ‘65 1 patent and claim 1 of the ‘000 patent directly infringed by 

SiFWs commercial activities despite the fact that the GPS receivers are in possession of end-users 

when the “processing satellite signals ...” (‘651 patent) and the “representing said formatted data in a 

second format ...” (‘000 patent) steps are performed. ID at 143-44; ID at 130-31.2 More specifically, 

Claim 1 of the ‘65 1 patent and claim 1 of the ‘000 patent have been reproduced below with 

emphases on the limitations at issue. 

(‘65 1): 1. A method of receiving global positioning system (GPS) satellite signals comprising: 

receiving satellite ephemeris at a first location; 

9 
PUBLIC VERSION 

the ALJ found that SiRF, through its InstantFix and SiRFLoc services, performs each step in the 

claims except the final step of claim 1 of the ‘651 patent, i.e., the “processing” step, and the final 

step of claim 1 of the ‘000 patent, i.e., the “representing” step. ID at 126-31; ID at 142-45. The ALJ 

found that the accused devices, when employed by end users with SiRF InstantFix and SiRFLoc 

services, perform the claimed “processing” and “representing” steps. Id. Although the ALJ found 

that all the claim limitations are met, he did not explicitly find that all the acts that constitute direct 

infringement were performed by a single party, i.e., SiRF, which is required for a finding of direct 

infringement. 

The Commission finds that SiRF maintains control over the operation of the GPS receivers 

and thus directly infringes the ‘65 1 and ‘000 patents regardless of who is using the GPS receivers at 

the time the receivers perform the claimed “processing” and “representing” steps. The parties do not 

dispute that SiRF controls the operation of its software and the GPS functionality of the SiRFstarIII 

chips it sells. [ 

communication [sic] the satellite ephemeris to a mobile GPS receiver at a second 

location; and 

processing satellite signals received at the mobile GPS receiver using the ephemeris to 

reduce code and@equency uncertainty in the mobile GPS receiver to improve 

acquisition sensitivity of the mobile GPS receiver. 

(‘000): 1. A method of creating and distributing compact satellite orbit models comprising: 

receiving satellite signals from at least one satellite and at least one receiving 

station; 

extracting at least a portion of the satellite tracking data from said satellite 

signal, representing said data in a first format; 

transmitting the formatted data to a remote receiver; and 

at the remote receiver, representing said formatted data in a second 

format supported by the remote receiver. 

IO 
PUBLIC WRSION 

]In light of the factual findings in the ID and the 

evidence of record, the Commission finds that SiRF controls the entire process in the InstantFix and 

SiRFLoc systems from start to finish, ie., from the creation of the EE file to the processing and use 

of the EE file in the GPS receiver to acquire satellite signals. 

11 
PUBLIC VERSION 

Respondents argue that SiRF does not perform every step of the asserted method claims of 

the ‘65 1 and ‘000 patents through its InstantFix services [ 

] Notwithstanding this lack of 

privity between SiRF and end users of the GPS receivers in the InstantFix system, we determine that 

SiRF nevertheless controls the manner in which the GPS receivers are operated and, in so doing, 

controls end users. That is, SiRF’s control over the operation of the GPS receivers extends to end 

users of the GPS receivers in the InstantFix system [ 

] Because the Federal Circuit has 

never held that privity or an agency relationship is required for direct infringement, the fact that end 

users of the GPS receivers do not have a contractual or agency-type relationship with SiRF is not 

controlling. 

In any event, SiRF’s customers do not have control over the manner in which any of the steps 

of the asserted method claims of the ‘65 1 and ‘000 patents are performed, even when the InstantFix 

server [ 

12 
PUBLIC WRSION 

1 

In light of the above, the Commission modifies the ALJ’s finding that SiRF directly infringes 

the ‘65 1 and the ‘000 patents through its commercial activities to clarify that SiRF exercises control 

over end users of the GPS receivers so as to cause infringement of the ‘65 1 and the ‘000 patents. 

C. Respondents’ Petition for Reconsideration In Light of In re Bilski 

Citing Commission rule 2 1 0.473, Respondents petition for reconsideration of the 

Commission’s determination not to review the ALJ’s determination that the asserted process claims 

of the ‘187 and ‘801 patents recite patent-eligible subject matter. Respondents argue that the Federal 

Circuit’s decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc) creates a “new question” 

on which they had no opportunity to present arguments regarding whether the asserted process 

claims in the ‘187 and ‘801 patents recite patent eligible subject matter under 35 U.S.C. $101. 

Respondents’ Petition for Reconsideration at 1. In their petition for reconsideration, Respondents 

Commission rule 210.47 provides: 

Within 14 days after service of a Commission determination, any party may 

file with the Commission a petition for reconsideration of such 

determination or any action ordered to be taken thereunder, setting forth the 

relief desired and the grounds in support thereof. Any petition filed under 

this section must be confined to new questions raised by the determination or 

action ordered to be taken thereunder and upon which the petitioner had no 

opportunity to submit arguments. Any party desiring to oppose such a 

petition shall file an answer thereto within five days after service of the 

petition upon such party. The filing of a petition for reconsideration shall not 

stay the effective date of the determination or action ordered to be taken 

thereunder or toll the running of any statutory time period affecting such 

determination or action ordered to be taken thereunder unless specifically so 

ordered by the Commission. 

19 C.F.R. 9 210.47. 

13 
PUBLIC WRSION 

argue that the ALJ relied on the “useful, concrete and tangible result” test for patent eligible subject 

matter, which was rejected by the Federal Circuit in Bilski. Id. at 3-4 (citing Bilski, 2008 U.S. App. 

LEXIS 22479, at “40-41). Respondents further argue that the asserted method claims of the ‘ 187 

and ‘801 patents do not recite patent-eligible subject matter under Bilski. Id. at 4. 

The Commission has determined to deny Respondents’ petition for reconsideration. 

Respondents’ petition was filed on November 18,2008, or 26 days after the expiration of the 14-day 

period set forth by Commission rule 210.47.4 Moreover, the petition is substantively without merit. 

The “machine-or-transformation” test, adopted by the Federal Circuit in In re Bilski, originated from 

the Supreme Court’s decision in Parker v. Flook, 437 U.S. 584, 588 n.9 (1978). This test declares a 

claimed process patent-eligible if it (1) is tied to a particular machine or (2) transforms a particular 

article into a different state or thing. Bilski, 545 F.3d at 954. Although the ALJ cited the “useful, 

concrete and tangible result” test rejected in Bilski, the ALJ also found that the asserted process 

claims of the ‘ 187 and ‘801 patents meet the first prong of the “machine-or-transformation” test 

adopted by the Federal Circuit in Bilski because these claims are tied to a particular machine. ID at 

174-175; 205-206. Indeed, Respondents argued this point before the ALJ as a ground for invalidity 

under 0 101. See e.g., Respondents’ Post-Trial Brief at 174. Therefore, we find that the Bilski 

decision does not raise any new questions about the Commission’s determination that the asserted 

process claims of the ‘187 and ‘801 patents recite patent-eligible subject matter under 35 U.S.C. 3 

10 1. Accordingly, Respondents’ petition for reconsideration is denied. 

The Commission determined not to review this aspect of the ALJ’s initial determination 

on October 9,2008. 

14 
PUBLIC WRSION 

III. REMEDY AND BOND 

A. Remedy 

The Commission has “broad discretion in selecting the form, scope and extent of the 

remedy” for a violation of section 337. Viscofan, S.A. v. United States Int’l Trade Comm’n, 787 F.2d 

544, 548 (Fed. Cir. 1986). A limited exclusion order is the usual remedy when a violation of section 

337 is found. The statute states 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 provisions of this section, be excluded from entry into the 

United States . . . ” 19 U.S.C. 9 1337(d)(l). A general exclusion order, conversely, is available only’ 

when complainants meet the heightened requirements of section 337(d)(2).5 Id. 0 1337(d)(2); see 

also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356 (Fed. Cir. 2008). In addition to, or in lieu 

of, issuing a limited or general exclusion order, the Commission may issue a cease and desist order 

directing any person violating, or believed to be violating, section 337 to cease and desist from 

engaging in the unfair methods or acts involved. Id. 0 1337(f)(l). 

Respondents argue, that because the ID found that infringement of the method claims in the 

‘187, ‘801, ‘000, ‘080, and ‘651 patents occurs only when the SiRF chips are used with particular 

Section 337(d)(2) provides: 

The authority of the Commission to order an exclusion from entry of articles shall be 

limited to persons determined by the Commission to be violating this section unless the 

Commission determines that-- 

of an exclusion order limited to products of named persons; or 

source of infringing products. 

(A) a general exclusion from entry of articles is necessary to prevent circumvention 

(B) there is a pattern of violation of this section and it is difficult to identify the 

19 U.S.C. 9 1337(d)(2). 

15 
PUBLIC WRSION 

software and/or other elements, e.g., the InstantFix service, these claims should not be included in 

any exclusion order. Respondents’ Submission on Remedy (“Resp. Rem. Sub.”) at 11-14. 

Respondents’ argument effectively asks the Commission to abandon its longstanding practice of 

issuing exclusion orders to address violations of section 337 concerning articles that infringe U.S. 

patents. 

Indeed, this longstanding practice is mandated by section 337. Subsection (a)( 1)(B) makes 

unlawful “the importation into the United States, the sale for importation, or the sale within the 

United States after importation by the owner, importer, or consignee, of articles that infringe a valid 

and enforceable United States registered copyright or patent.” If the Commission finds a violation 

under this subsection of section 337, subsection (d)( 1) directs that the “articles concerned ... be 

excluded from entry into the United States.” 19 U.S.C. §1337(d)(2). The fact that certain software 

components or InstantFix services are required with SiRF’s chips for infringement to occur does not 

change the fact that a violation of section 337 was found based on infringement of the asserted 

claims. As correctly noted by Complainants, the accused chips include hardware and software that 

function integrally to cause infringement of these claims. To the extent that Respondents suggest 

that a limited exclusion order is inappropriate for method claims, the Commission disagrees and 

views section 337 as equally applicable to articles that infringe method claims as well as apparatus 

claims. See Certain Insect Traps, Inv. No. 337-TA-498, limited exclusion order (December 10, 

2004) (ordering exclusion of products covered by method claims). 

Accordingly, the Commission has determined to issue a limited exclusion order directing 

U.S. Customs and Border Protection (“Customs”) to exclude all products “covered by” the infringed 

claims consistent with the statutory language of subsection 337(d)(l). In any event, we have 

16 
PUBLIC VERSION 

included a certification provision in the limited exclusion order. Thus, to the extent that 

Respondents disable certain software features or do not use the accused devices with InstantFix or 

SiRFLoc services, Customs may allow Respondents to certify and/or submit evidence that these 

products are not “covered by” the limited exclusion order. 

The Commission has further determined to limit the scope of the exclusion order to products 

of named respondents and to deny Complainant’s request for “downstream” relief against nonrespondents. The Federal Circuit recently concluded in Kyocera Wireless Corp. that the 

Commission has no authority to issue a limited exclusion order directed to downstream products of 

non-respondents. Kyocera, 545 F.3d at 1356. Accordingly, the Commission will no longer issue 

such orders.6 

Complainants nevertheless argue that a general exclusion order that extends to downstream 

products is appropriate under section 337(d)(2) because such an order “is necessary to prevent 

circumvention of an exclusion order limited to products of named persons” within the meaning of 

section 337(d)(2)(A). Complainants’ Submission on Remedy at 1 1. To support their request for a 

general exclusion order, Complainants point out that the overwhelming majority of infringing SiRF 

GPS chips enter the United States as components of “downstream” products, rather than as 

individual chips. Id. at 12. Complainants assert that the EPROMs factors7 support the issuance of a 

We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOS that exclude 

infringing products made by respondents found to be violating Section 337, but imported by another 

entity. The exclusionary language in this regard that is traditionally included in LEOS is consistent with 

19 U.S.C. 5 1337(a)(l)(B) - (D) and 19 U.S.C. 5 1337(d)(l). 

’ See Certain Erasable Programmable Read-only Memories, Inv. No. 337-TA-276, USITC Pub. 

2196, Comm’n. Op. at 125, 1989 ITC LEXIS 122, at *252-53 (May 1989)(“EPROMs”)(The Commission 

set forth factors to be considered when determining whether to issue downstream relief and outlined a 

policy of balancing “the complainant’s interest in obtaining complete protection from all infringing 

17 
PUBLIC WRSION 

general exclusion order because these factors incorporate an inquiry into the potential for 

circumvention of an exclusion order, an inquiry that is closely tied to the required showing for 

section 337(d)(2)(A). Id. at 10-1 1. Complainants note that the ALJ found, within the context of his 

own EPROMs analysis, that “[w]ithout a downstream exclusion order, third-party manufacturers 

could continue to import infringing articles in downstream products, thereby undermining an order 

excluding SiRF chips.” Id. at 11 (quoting RD at 13). 

The Commission finds that Complainants have not made a showing that a general exclusion 

order against products under section 337(d)(2)(A) is appropriate. Complainants’ reliance on the 

ALJ’s EPROMs analysis to show that a “general exclusion order . . . is necessary to prevent 

circumvention of an exclusion order limited to products of named persons” is misplaced. The 

EPROMs factors have been traditionally used in cases involving limited exclusion orders extending 

to downstream products, and the Commission finds these factors no longer relevant in the case of 

non-respondents’ products in light of the Kyocera decision. In any event, non-respondent 

manufacturers that continue to import products incorporating infringing articles cannot be deemed to 

have “circumvented” an exclusion order by merely continuing their pre-existing practice. Therefore, 

the Commission finds that Complainants have not shown that “a general exclusion from entry of 

articles is necessary to prevent circumvention of an exclusion order limited to products of named 

persons,” within the meaning of.19 U.S.C. 5 1337(d)(2)(A). 

In Kyocera, as in this case, Complainants complained about a risk of “circumvention” if a 

limited exclusion order did not extend to downstream products of non-respondents. The Federal 

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.”). 

18 
PUBLIC VERSION 

Circuit stated, however, that such “potential ‘circumvention”’ must be addressed in one of two ways 

- either by naming as respondents the manufacturers whose downstream products Broadcom sought 

to exclude (thus making a limited exclusion order appropriate against those parties), or by seeking a 

general exclusion order. See Kyocera, 545 F.3d at 1357 (“A party concerned about potential 

‘circumvention of an LEO . . . has the option to bring a case [for a GEO] under either subsection 

337(d)(2)(A) or 337(d)(2)(B).”). Here, Complainants did not name the already-identified 

manufacturers of downstream articles as respondents and did not show a general exclusion order is 

necessary to prevent circumvention under section 337(d)(2)(A). 

The Commission also finds that Complainants are not entitled to an exclusion order against 

products of non-respondents under section 337(d)(2)(B) because there is no evidence in the record 

that “there is a pattern of violation of this section and it is difficult to identify the source of infringing 

products.” To the contrary, Complainants conceded that the “manufacturers of downstream products 

containing SiRF infringing articles are readily identifiable.” Complainants’ Post-Hearing Br. at 28 1 - 

82. Because Complainants have not presented evidence that a general exclusion order is warranted 

under section 337(d)(2), the Commission has determined to limit the scope of the exclusion order to 

products of named respondents found in violation of section 337, i.e., SiRF, E-TEN, Mio, MiTAC, 

and Pharos. 

Complainants also argue that a certification provision should not be included in the limited 

exclusion order because such a provision would allow a respondent to “self-certify that a redesigned 

product no longer infringes” and therefore avoid a determination by Customs or the Commission 

concerning their non-infringement contentions. complainants’ Reply Submission on Remedy at 2 1 

(citation omitted). The certification provision that we have included in the limited exclusion order is 

19 
PUBLIC VERSION 

intended to aid Customs in its enforcement of the order and is not intended to provide a respondent 

with an absolute right to self-certifl that a redesigned chip does not violate the order. It is within 

Custom’s discretion whether to accept a respondent’s certification. 

Certification provisions are generally intended to minimize the possibility that non-infringing 

products will be excluded and are included in exclusion orders where Customs is unable to easily 

determine by inspection whether an imported product violates a particular exclusion order, which is 

the case here. See Certain Optical Disk Controller Chips and Chipsets and Products Containing 

Same, Including DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506, Comm’n Op., 

2005 ITC LEXIS 881, at *92-94 (September 28,2005). In this case, E-TEN, Pharos, MiTAC and 

Mio may decide to incorporate non-infringing chips into their products. In the absence of a 

certification provision, Customs would be unable to determine whether products manufactured by ETEN, Pharos, MiTAC, and Mio contain infringing chipsets. Additionally, SiRF may disable the 

features in its chips that were found to infringe the asserted patents. 

The Commission also finds cease and desist orders against domestic respondents SiRF, Mio, 

and Pharos are appropriate. The Commission generally issues a cease and desist order directed to a 

domestic respondent when there is a “commercially significant” amount of infringing, imported 

product in the United States that could be sold so as to undercut the remedy provided by an exclusion 

order. See Certain Condensers, Parts Thereof and Products Containing Same, Including Air 

Conditioners for Automobiles, Inv. No. 337-TA-334 (Remand), Comm’n Op. at 26-28 (Aug. 27, 

1997). The ALJ found that SiRF, Mio, and Pharos maintain commercially significant inventories of 

the products at issue in this investigation. RD at 2 1. The parties did not contest issuance of cease 

and desist orders. 

20 
PUBLIC VERSION 

B. Bonding 

When the Commission issues an exclusion order, infringing products are entitled nonetheless 

to entry under bond during the Presidential review period. 19 U.S.C. 5 1337(j). The Commission 

must set the amount of the bond at a level sufficient to protect Complainants from injury. 19 C.F.R. 

tj 210.50(a)(3). When reliable price information is available, the Commission has often set the bond 

by eliminating the differential between the domestic product and the imported, infringing product. 

See Certain Microsphere Adhesives, Processes for Making Same, and Products Containing Same, 

Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, USITC Pub. 2949, Comm’n Op., 

1996 ITC LEXIS 280, at “44 (1996). In cases where the Commission does not have sufficient 

evidence upon which to base a determination of the appropriate amount of the bond, the Commission 

has set a 100% bond. See Certain Sortation Systems, Parts Thereox and Products Containing Same, 

Inv. No. 337-TA-460, USITC Pub. 3588, Comm’n Op., 2003 ITC LEXIS 176, at *47 (March 2003). 

We concur with the ALJ’s recommended bond of 100% because the record does not contain 

sufficient evidence to set the bond at any other amount. RD at 22-23. 

Respondents argue that because the combination of SiRF’s chipsets with certain software 

that was found to infringe the asserted patents, the bond amount should be set to lo%, which reflects 

the approximate value of the software necessary to perform the steps of the asserted method claims, 

citing Certain Plastic Encapsulated Circuits, Notice of Issuance of LEO & Cease-and-Desist Orders, 

Inv. No. 337-TA-315, 1992 ITC LEXIS 738 (Nov. 1992). Resp. Rem. Sub. at 21. Respondents, 

however, fail to appreciate that the products that are subject to exclusion are in fact products 

“covered by” the asserted patents because they include the hardware and software necessary for 

infringement. Thus, the Commission finds Respondents’ approach of separating the value of the 

21 
PUBLIC WRSZON 

software from the hardware for the purposes of calculating the bond amount to be inappropriate. In 

Certain Plastic Encapsulated Circuits, the asserted patent was directed to the packaging of the 

circuit, not the circuitry, thus the Commission set a bond to reflect the relative value of the 

packaging to the value of the entire circuit. Therefore, this case is inapposite and does not support 

Respondents’ argument. 

C. The Public Interest 

When determining whether to issue remedial orders for a violation of section 337, the 

Commission weighs the effect of the orders on four public interest factors: (1) the public health and 

welfare, (2) competitive conditions in the U.S. economy, (3) the production of like or directly 

competitive articles in the U.S., and (4) U.S. consumers. 19 U.S.C. 5 1337(d), (0. In order to gather 

information on potential public interest concerns, the Commission published a notice in the Federal 

Register on October 9,2008, inviting comment from the parties and members of the public. The 

parties to the investigation did not raise any public interest concerns. However, Garmin, a non-party, 

argued in its submission that “[plublic interest considerations foreclose any downstream exclusion 

order because of the heavy reliance that GPS devices play in federal, state, and local government law 

enforcement and emergency response activities that are critical to the public health, safety and 

welfare.” Garmin’s Written Submission on Remedy at 15. Because the Commission has determined 

to limit the scope of the exclusion order to products of named respondents and to deny 

Complainant’s request for “downstream” relief against non-respondents as set forth in part 1II.A of 

this opinion, we find Garmin’s concerns about the public interest to have been alleviated. 

22 
PUBLIC VERSION 

Accordingly, the Commission finds that there is no evidence of any public interest concerns 

that would preclude issuance of a limited exclusion order or cease and desist orders against SiRF, 

Mio, and Pharos. 

IV. CONCLUSION 

The Commission affirms the final ID as modified in part I1 of this opinion, and adopts the 

ID’S findings of fact and legal conclusions that are not inconsistent with this opinion. The 

Commission has also determined to issue a limited exclusion order and cease-and-desist orders, and 

set a bond amount of 100% of the entered value of infringing products during the period of 

Presidential review. 

By order of the Commission. 

Marilyn R. Abbott 

Secretary to the Commission 

Issued: January 27,2009 

23 
PUBLIC VERSION 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN GPS DEVICES AND PRODUCTS 

CONTAINING SAME 

Investigation No. 337-TA-602 

ADDITIONAL VIEWS OF CHAIRMAN SHARA L. ARANOFF, VICE CHAIRMAN DANIEL R 

PEARSON, AND COMMISSIONER DEANNA TANNER OKUN 

We join our colleagues in finding a violation of section 337 of the Tariff Act of 1930 in this 

investigation. We also join the Commission’s Opinion, including the statement that the Commission does 

not view the Court’s opinion in Kyoceru Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008) to 

affect the issuance of Limited Exclusion Orders (LEOs) that exclude infringing products made by 

respondents found to be violating Section 337, but imported by another entity. In these 

Additional Views, we explain the basis for our conclusion as to Kyocera and LEOs. 

The Commission has determined that the instant LEO shall bar from entry infringing GPS 

devices and products containing infringing GPS devices “that are manufactured abroad by or on 

behalf of, or imported by or on behalf of, SiRF, Pharos, MiTAC, Mio, and E-TEN’ or their 

affiliates, successors or assigns. Limited Exclusion Order, para. 1. The quoted language was 

first proposed by the Investigative Attorney in response to a Commission request for comments 

on the form that the remedy should take in this investigation. No party objected to or otherwise 

commented on that proposed language, and the Commission has determined to adopt it without 

modification. 

While no party raised an objection, we have considered carefully whether the scope of 

this exclusion order, which bars the entry of any infringing articles manufactured for or on behalf 
PUBLIC VERSION 

of named respondents, who have been determined to violate section 337, is precluded by the 

Court’s decision in Kyocera. We have concluded that issuing LEOs that cover the infringing 

articles manufactured by a respondent found to violate section 337, regardless of who imports 

such articles, is authorized by section 337 and was not rejected by the Court of Appeals. 

The Court in Kyocera found in that case that “virtually all putatively infringing articles 

sold for importation or imported into the United States” were contained in downstream products 

manufactured by third parties, i. e. non-respondents, and that the crux of the appellants’ argument 

was “that the Commission exceeded its statutory authority by issuing an LEO that excludes 

imports of downstream manufacturers who were not named as respondents . . .” Kyocera, 545 

F.3d at 1354-55. Consistent with the Court’s decision, we have denied, on a number of grounds 

described in the Commission’s Opinion, Global Locate’s request for an order excluding 

downstream products manufactured by non-respondents. * 

We believe it significant that the Court in Kyocera emphasized the statutory distinctions 

between the circumstances in which LEOs and GEOs might be respectively issued and the 

underlying reason why a GEO may include articles of non-respondents whereas an LEO may not. 

In resolving the question presented to it in Kyocera, the Court observed that the statute provides 

for two types of exclusion orders, and that the type of order available depends on the existence of 

specific circumstances. The Court stated that an LEO is an order “limited to products of named 

persons.” Kyocera, 545 F.3d at 1356. In contrast, a GEO, which is broader in scope in that it 

may cover articles manufactured by non-respondents, is only appropriate where either of the two 

sets of circumstances provided for in section 337(d)(2) apply. 545 F.3d at 1356. Thus, the Court 

2 
PUBLIC VERSION 

directed that “[iJf a complainant wishes to obtain an exclusion order operative against articles of 

non-respondents, it must seek a GEO by satisfying the heightened burdens of $5 1337(d)(2)(A) 

and (B).” 545 F.3d at 1356. Because the complainant in the section 337 investigation underlying 

the Kyocera litigation had named only one respondent, who did not manufacture any of the 

downstream handsets at issue that were being imported, and also failed to satisfy the conditions 

for a GEO, the Court ruled that the Commission could not issue an LEO that sought to cover 

downstream articles manufactured and imported by non-respondents. 

In reviewing the Court’s Kyocera opinion, we acknowledge that certain passages could be 

construed to mean that a Commission LEO may exclude infringing articles manufactured by or 

on behalf of a named respondent only if those products are also imported by a named respondent 

(as opposed to, for example, importation on behalf of a named respondent by another importer). 

545 F.3d at, e.g., 1356. Reading the opinion as a whole, however, we understand the Court to 

address the dispute that was being litigated before it: whether a Commission LEO can exclude 

the importation of downstream products that were manufactured by non-respondents. In 

particular, the Court provides that “[alny reading of Section 337(d) that would enable LEOs to 

exclude articles manufactured by non-respondents would impermissibly render sections of the 

statute superfluous.” 545 F.3d at 1356 (emphasis added). Likewise, the Court explains that 

“[t] he statute permits LEOs to exclude only the violatingproducts of named respondents.’’ 545 

F.3d at 1359 (emphasis added). Similarly, the Court provides that “the trade act has made it clear 

that a party must meet . . . heightened requirements before the ITC has authority to issue a 

general exclusion order against products of non-respondents.” 545 F.3d at 1357 (emphasis 

3 
PUBLIC VERSION 

added). In another passage, the Court explains that “[ilf a complainant wishes to obtain an 

exclusion order operative against articles of non-respondents, it must seek a GEO . . .” 545 F.3d 

at 1356 (emphasis added). In these repeated instances, the Court addresses the product at issue 

and whether its manufacturer was named as a respondent. At no point does the Court state that 

an LEO can exclude an infringing product manufactured by a named respondent only if that 

product is also imported by a named respondent. This is not surprising because that particular 

fact pattern and issue were not presented by the Kyocera litigation. 

Moreover, it is doubtful that the Court would have made such a sweeping statement 

without clearly so indicating its intent, particularly when the issue was not raised by the parties. 

Were it to have done so, an LEO would be exceedingly easy to evade - the respondent 

manufacturer of the infkinging article could avoid the exclusion by the mere expedient of 

changing importers. And such evasion would not be susceptible of remedy through means of a 

GEO because there may not have been either circumvention or a pattern of violation combined with 

difficulty in identifying the infringers prior to the finding of a violation. 

4 
PUBLIC WRSION 

We therefore conclude that Kyocera does not provide that an LEO may be used to exclude 

infringing articles manufactured by a named respondent only if the article is also imported by a 

named respondent. Accordingly, the language setting the contours of the instant LEO’S exclusion - 

infringing articles “manufactured by or on behalf of, or imported by or on behalf of SiRF, Pharos, 

MiTAC, Mio, and E-TEN’ or their affiliates, successors, or assigns - is not inconsistent with the 

Court’s holding in Kyocera. 

Issued: January 27,2009 

5 
Certificate of Service - Page 1 

CERTAIN GPS DEVICES AND PRODUCTS CONTAINING 337-TA-602 

SAME 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached COMMISSION OPINION AND 

ADDITIONAL VIEWS (PUBLIC VERSION) has been served by hand upon the 

Commission Investigative Attorney, Vu Q. Bui, Esq., and the following parties as 

indicated, on TAM 2 7 aoq 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT GLOBAL 

LOCATE, INC. AND BROADCQM CORPORATION: 

Michael D. Esch, Esq. 

WILMER CUTLER PICKEXING HALE 

AND DORR LLP 

1875 Pennsylvania Avenue, NW 

Washington, DC 20006 

P-202-663-6420 

F-202-663 -63 63 

ON BEHALF OF RESPONDENTS SiRF 

TECHNOLOGY, INCORPORATED, MI0 

TECHNOLOGY LIMITED USA, MlTAC 

INTERNATIONAL CORPORATION, PHAROS 

CORPORATION: 

SCIENCE AND APPLICATIONS AND E-TEN 

Steven E. Adkins, Esq. 

JONES DAY 

5 1 Louisiana Avenue, NW 

Washington, DC 2000 1 -2 1 1 3 

P-202-879-3939 

( ) Via Hand Delivery 

<-/Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

(&a Overnight Mail 

( ) Via First Class Mail 

( )Other: 

rU8L1C YEKSIOI'I 

UNITED SfATF.s INTER}'iATIONAL TRADE COMMISSION 

W • • hlnl:'On, I).c. 

.'~ MaUor of 

CERTAIN GFS DEVICES AN D PROI) UCfS 

CONTAINING SAME 

h .... 1'1" ll7-T ... ..{tOZ 

INITIAL DETERMINATION 

AdmLoio.n.iH La ... J .... g. Carl C. C"',or ... k"" 

I'ursuaIlllO \he !KIt;"" of investigatioo. 72 fed. Reg. 2S177 (2007), thi, i, the Init;'1 

United Swes Internationol Tradt CommiMioo LoHOtipli"" No. 337· TA-6.l2. &it 19 C.f.lt f 

210.42(0). 

II i. held thoU violation of lI<dioo 337 oftb< Tariff A<t of 1930 ... omot>dcd. 19 U.S.C. 

f 1337, ha o«:urr<d in tb< imponatioo into tb< Unitod Stale!, Ihe sale ror importation, or Ihe 

and II oru.s. PaIont No. 6.417,301; <aim. 4 and II orU.S. r aten, No. 6.606.346; claims I. 2 

and S oru.s. l'atrnl No. 6,6S 1.000; <I .. "" I and 2 of U.S. Potent No. 6,704.65 I; claims t ond 9 

oru.s. !'alent No. 6,937,187; or <aim, l. 2 and 22 of U.S. r. tml No. 7.1 S8.080. 
TABLE OF CONTENTS 

Page 

I . Background ...................................................................................................... 

A . Institution and Procedural History of This Investigation .................. 

B . The Patents and Products at Issue ...................................................... 

1 . Technological Background ...................................................... 

2 . Overview of the Asserted Patents .......................................... 

3 . 

4 . The Products Accused in This Investigation .............................. 

5 . The Domestic Industry Products .......................................... 

I1 . Importation or Sale .......................................................................................... 

I11 . General Principles of Patent Law ................................................................... 

IV . 

The Level of Ordinary Skill in the Art .............................. 

U.S. Patent No . 6,606, 346 (“the ‘346 Patent”) .......................................... 

A . Global Locate’s Standing ................................................................... 

B . Inequitable Conduct ................................................................................. 

C . Claim Construction ............................................................................... 

D . Infringement Determination .................................................................... 

E . Validity ............................................................................................ 

F . Summary ............................................................................................ 

V . The Assisted GPS Patents ................................................................................ 

A . Introduction ............................................................................................ 

B . Weak Signal Environments And The Need For Assisted-GPS ........ 

2 

2 

3 

8 

12 

12 

16 

17 

22 

35 

35 

40 

42 

61 

67 

72 

72 

73 

76 

I. 

II. 

III. 

IV. 

TABLE OF CONTENTS 

Background 

A. 

B. 

Institution and Procedural History of This Investigation 

The Patents and Products at Issue 

1. 

2. 

3. 

4. 

5. 

Technological Background 

Overview of the Asserted Patents 

The Level of Ordinary Skill in the Art 

The Products Accused in This Investigation 

The Domestic Industry Products 

Importation or Sale 

General Principles of Patent Law 

u.s. Patent No. 6,606,346 ("the '346 Patent") 

A. Global Locate's Standing 

Page 

2 

2 

3 

3 

8 

12 

12 

16 

17 

22 

35 

35 

B. Inequitable Conduct ................................................................................. 40 

C. Claim Construction 42 

D. Infringement Determination .................................................................... 61 

E. 

F. 

Validity 

Summary 

. ........................................................................................... 67 

............................................................................................ 72 

V. The Assisted GPS Patents ................................................................................ 72 

A. Introduction............ ..... ................... ............. ........ ........................ ........... 73 

B. Weak Signal Environments And The Need For Assisted-GPS 76 
TABLE OF CONTENTS 

C. Global Locate’s Assisted-GPS Patents ............................................. 

1. U.S. PatentNo. 7,158,080 ........................................................ 

2. U.S. Patent No. 6,651,000 ........................................................ 

3. U.S. Patent No. 6,704,651 ....................................................... 

VI. U.S. Patent No. 6,417,801 (“the ‘801 Patent”) ............................................ 

A. Claim Construction ............................................................................... 

B. Infringement Determination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

C. Validity ............................................................................................ 

D. Summary ............................................................................................ 

VII. U.S. Patent No. 6,937,187 (“the ‘187 Patent”) .................................*.......... 

A. 

B. 

Claim Construction 

Infringement Determination 

. .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

C. Validity ............................................................................................ 

D. Summary ............................................................................................ 

... . . . . . . . , . . . . . . . . . . . . . . . . . , . . . . . . . . . . . . . . . . . . . . . . . . . . . , . . . . . . . . . . . . . . . . . . . . . . . . .. . . .. . .. . .. 

A. Background ............................................................................................. 

VIII. Domestic Industry 

B. Analysis ............................................................................................. 

1 . 

2. 

Technical Analysis 

Economic Analysis 

. .. . .. . . .. .. . . .. ..... ... ... . . . .. .. . . .. .. .. . . .... .. . .. .. .. .. .. .. ... .. . 

.. . .. . . . .. .. .. .. ... ... . . . .. .. .. . . ... . .. . . .. . . . . .. . .. . . ... . .. .. .. ... . . 

C. Conclusion ............................................................................................. 

IX. Conclusions of Law ............................................................................................ 

X. Initial Determination and Order .................................................................... 

76 

76 

111 

137 

158 

158 

171 

173 

189 

189 

189 

200 

203 

206 

206 

206 

207 

207 

21 1 

212 

213 

214 

VI. 

TABLE OF CONTENTS 

C. Global Locate's Assisted-GPS Patents 

1. 

2. 

3. 

U.S. Patent No. 7,158,080 

u.s. Patent No. 6,651,000 

U.S. Patent No. 6,704,651 

u.s. Patent No. 6,417,801 ("the '801 Patent") 

A. Claim Construction 

............................................. 76 

76 

111 

137 

158 

158 

B. Infringement Determination .................................................................... 171 

C. 

D. 

Validity 

Summary 

173 

189 

VII. U.S. Patent No. 6,937,187 ("the '187 Patent") ............................................ 189 

VIII. 

IX. 

X. 

A. Claim Construction .............................. .................. ............................... 189 

B. 

C. 

D. 

Infringement Determination ................................................................... . 

Validity 

Summary 

Domestic Industry 

A. 

B. 

c. 

Background 

Analysis 

1. 

2. 

Technical Analysis 

Economic Analysis 

Conclusion 

Conclusions of Law 

Initial Determination and Order 

200 

203 

206 

206 

206 

207 

207 

211 

212 

213 

214 
The following abbreviations may be used in this Initial Determination: 

ALJ - 

ALJX - 

CDX - 

CPX - 

cx - 

Dep. - 

EDIS - 

FF - 

JPX - 

JX - 

PCL - 

PFF - 

PRF - 

RDX - 

RPX - 

Rxsx - 

Tr. - 

Administrative Law Judge 

Administrative Law Judge Exhibit 

Complainants’ Demonstrative Exhibit 

Complainants’ Physical Exhibit 

Complainants’ Exhibit 

Deposition 

Electronic Document Imaging System 

Finding(s) of Fact 

Joint Physical Exhibit 

Joint Exhibit 

Proposed Conclusion of Law (CPCL, RPCL or SPCL) 

Proposed FF (CPFF, RPFF or SPFF) 

Proposed Reply or Rebuttal Finding (CPRF, RPRF or SPRF) 

Respondents’ Demonstrative Exhibit 

Respondents’ Physical Exhibit 

Respondents’ Exhibit 

Commission Investigative Staff Exhibit 

Transcript. 

The following abbreviations may be used in this Initial Determination: 

ALJ 

ALJX -

CDX -

CPX -

CX 

Dep. 

EDIS -

FF 

JPX 

JX 

PCL 

PFF 

PRF 

RDX -

RPX -

RX 

SX 

Tr. 

Administrative Law Judge 

Administrative Law Judge Exhibit 

Complainants' Demonstrative Exhibit 

Complainants' Physical Exhibit 

Complainants' Exhibit 

Deposition 

Electronic Document Imaging System 

Finding(s) of Fact 

Joint Physical Exhibit 

Joint Exhibit 

Proposed Conclusion of Law (CPCL, RPCL or SPCL) 

Proposed FF (CPFF, RPFF or SPFF) 

Proposed Reply or Rebuttal Finding (CPRF, RPRF or SPRF) 

Respondents' Demonstrative Exhibit 

Respondents' Physical Exhibit 

Respondents' Exhibit 

Commission Investigative Staff Exhibit 

Transcript. 
I. Background 

A. Institution and Procedural History of This Investigation 

By publication of a notice in the Federal Register on May 7,2007, pursuant to 

subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted 

this investigation to determine: 

[Wlhether there is a violation of subsection (a)(l)(B) of section 

337 in the importation into the United States, the sale for 

importation, or the sale within the United States after importation 

of certain GPS devices or products containing same by reason of 

infringement of one or more of claims 1 and 17 of U.S. Patent No. 

6,417,801; claims 1,3-5,8-17, 19-21, and 23 of U.S. Patent No. 

6,606,346; claims 1-5, 9, 10, 11-14,29-31, and 33 of US. Patent 

No. 6,65 1,000; claims 1 and 2 of U.S. Patent No. 6,704,65 1 ; 

claims 1 and 9 of U.S. Patent No. 6,937,187; and claims 1-3, 12, 

15, 16, 19, 20,22-24,26,28-31, and 33-35 of U.S. Patent No. 

7,158,080, and whether an industry in the United States exists or is 

in the process of being established as required by subsection (a)(2) 

of section 337. 

72 Fed. Reg. 25777 (2007). 

The notice of investigation named as the complainant: Global Locate, Inc. (“Global 

Locate”) of San Jose, California. Id. The following companies were named as the respondents: 

SiRF Technology, Inc. (“SiRF”) of San Jose, California; E-TEN Corp. (“E-TEN’) of Taipei, 

Taiwan; Pharos Science & Applications, Inc. ((‘Pharos’’) of Torrance, California; MiTAC 

International Corporation (“MiTAC”) of Taoyuan, Taiwan; and Mio Technology Limited 

(“Mio”), USA of Fremont, California. Id. The Commission Investigative Staff (“Staff’) of the 

Commission’s Office of Unfair Import Investigations is also a party in this investigation. Id. 

Order No. 16 (initial determination) granted Global Locate’s motion for leave to amend 

the complaint to terminate the investigation as to claims 1, 3, 8, 9, 10, and 23 of the ‘346 patent; 

2 

I. Background 

A. Institution and Procedural History of This Investigation 

By publication of a notice in the Federal Register on May 7,2007, pursuant to 

subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted 

this investigation to determine: 

[W]hether there is a violation of subsection (a)(l )(B) of section 

337 in the importation into the United States, the sale for 

importation, or the sale within the United States after importation 

of certain GPS devices or products containing same by reason of 

infringement of one or more of claims 1 and 17 of U.S. Patent No. 

6,417,801; claims 1, 3-5, 8-17, 19-21, and 23 of U.S. Patent No. 

6,606,346; claims 1-5,9, 10, 11-14,29-31, and 33 of U.S. Patent 

No. 6,651,000; claims 1 and 2 of U.S. Patent No. 6,704,651; 

claims 1 and 9 of U.S. Patent No. 6,937,187; and claims 1-3, 12, 

15,16,19,20,22-24,26,28-31, and 33-35 of U.S. Patent No. 

7,158,080, and whether an industry in the United States exists or is 

in the process of being established as required by subsection (a)(2) 

of section 337. 

72 Fed. Reg. 25777 (2007). 

The notice of investigation named as the complainant: Global Locate, Inc. ("Global 

Locate") of San Jose, California. Id The following companies were named as the respondents: 

SiRF Technology, Inc. ("SiRF") of San Jose, California; E-TEN Corp. ("E-TEN") of Taipei, 

Taiwan; Pharos Science & Applications, Inc. ("Pharos") of Torrance, California; MiTAC 

International Corporation ("MiTAC") of Taoyuan, Taiwan; and Mio Technology Limited 

("Mio"), USA of Fremont, California. Id The Commission Investigative Staff ("Staff") of the 

Commission's Office of Unfair Import Investigations is also a party in this investigation. Id. 

Order No. 16 (initial determination) granted Global Locate's motion for leave to amend 

the complaint to terminate the investigation as to claims 1,3,8,9, 10, and 23 of the '346 patent; 

2 
to add to the investigation claims 2,6, 11, 14, 18, and 19 of the ‘801 patent; and also to amend 

the notice of investigation to add Broadcom Corporation (“Broad~om’~) as a complainant 

inasmuch as Broadcom acquired Global Locate. See Notice of Commission Decision Not to 

Review an Initial Determination Granting Complainant’s Motion to Amend the Complaint and 

Notice of Investigation (Feb. 25,2008). 

In addition, Order No. 25 granted complainants’ motion to withdraw claims 9, 10, 13, 14 

and 33 of the ‘000 patent, and claims 19,24,29-3 1 and 33 of the ‘080 patent. 

Order No. 29 denied complainant’s motion for summary determination (Motion No. 

602-38) that the importation requirement of 19 U.S.C. 6 1337(a)(l)(B) has been satisfied. 

Nevertheless, pursuant to 19 C.F.R. 9 2 10.18(e), several facts relating to the importation or sale 

of accused devices were deemed established, which are discussed below in section I1 

(Importation or Sale). 

On April 18,2007, pursuant to the Order No. 17 (scheduling a tutorial), a tutorial session 

was held, and transcribed for the future reference of the Administrative Law Judge, and the 

Commission or any other reviewer of the investigation. 

Pursuant to Order No. 7 (procedural schedule), a prehearing conference was held on 

April 28,2008. The evidentiary hearing in this investigation also commenced on April 28,2008, 

immediately following the prehearing conference. The evidentiary hearing concluded on May 

13,2008. 

The parties have filed their post-hearing briefs, reply briefs and proposed findings. The 

issues are ripe for determination. 

3 

to add to the investigation claims 2,6, 11, 14, 18, and 19 of the '801 patent; and also to amend 

the notice of investigation to add Broadcom Corporation ("Broadcom") as a complainant 

inasmuch as Broadcom acquired Global Locate. See Notice of Commission Decision Not to 

Review an Initial Determination Granting Complainant's Motion to Amend the Complaint and 

Notice ofInvestigation (Feb. 25,2008). 

In addition, Order No. 25 granted complainants' motion to withdraw claims 9, 10, 13, 14 

and 33 of the '000 patent, and claims 19,24,29-31 and 33 ofthe '080 patent. 

Order No. 29 denied complainant's motion for summary determination (Motion No. 

602-38) that the importation requirement of 19 U.S.C. § 1337(a)(1)(B) has been satisfied. 

Nevertheless, pursuant to 19 C.F .R. § 21 0.18( e), several facts relating to the importation or sale 

of accused devices were deemed established, which are discussed below in section II 

(Importation or Sale). 

On April 18,2007, pursuant to the Order No. 17 (scheduling a tutorial), a tutorial session 

was held, and transcribed for the future reference of the Administrative Law Judge, and the 

Commission or any other reviewer of the investigation. 

Pursuant to Order No.7 (procedural schedule), a prehearing conference was held on 

April 28, 2008. The evidentiary hearing in this investigation also commenced on April 28, 2008, 

immediately following the prehearing conference. The evidentiary hearing concluded on May 

13,2008. 

The parties have filed their post-hearing briefs, reply briefs and proposed findings. The 

issues are ripe for determination. 

3 
B. The Patents and Products at Issue 

1. Technolopica1 Background 

A Global Positioning System (“GPS”) is a navigation system that relies on 32 satellites 

that broadcast signals while orbiting almost 13,000 miles above Earth in a pattern called a 

constellation. The satellites and their orbits are arranged so that at least four satellites are always 

in a direct line-of-sight to any point on Earth. A GPS receiver is, in effect, a radio receiver that 

picks up the signals from the satellites when they are in view of the receiver (even if the satellites 

cmot literally be seen with the eye). Dafesh Tr. 556-557; Tutorial Tr. 63 (Heppe); see CDX-11 

(GPS Navigation Satellites). The GPS receiver uses the information received from the satellites 

to compute precisely how far each satellite is from the receiver. It then determines its own 

position through a process called trilateration. Dafesh Tr. 559-563; see CDX-60 (Trilateration 

with Four Satellites) . 

The following illustration from CDX-16 (which is similar to illustrations used during the 

tutorial) depicts the basic theory behind trilateration. 

As shown in the diagram above, if one knew, for example, that one were 225 miles from 

4 

B. The Patents and Products at Issue 

1. Technological Background 

A Global Positioning System ("GPS") is a navigation system that relies on 32 satellites 

that broadcast signals while orbiting almost 13,000 miles above Earth in a pattern called a 

constellation. The satellites and their orbits are arranged so that at least four satellites are always 

in a direct line-of-sight to any point on Earth. A GPS receiver is, in effect, a radio receiver that 

picks up the signals from the satellites when they are in view of the receiver (even if the satellites 

cannot literally be seen with the eye). Dafesh Tr. 556-557; Tutorial Tr. 63 (Heppe); see CDX-l1 

(GPS Navigation Satellites). The GPS receiver uses the information received from the satellites 

to compute precisely how far each satellite is from the receiver. It then determines its own 

position through a process called trilateration. Dafesh Tr. 559-563; see CDX-60 (Trilateration 

with Four Satellites) . 

The following illustration from CDX-16 (which is similar to illustrations used during the 

tutorial) depicts the basic theory behind trilateration. 

As shown in the diagram above, if one knew, for example, that one were 225 miles from 

4 
Minneapolis, 305 miles from Chicago, and 185 miles from Kansas City, one could determine 

one’s present position, which is the single point on Earth that is the specified distance from each 

of the aforementioned cities. In the example illustrated above, only a location in central Iowa is 

exactly at the specified distances from Minneapolis, Chicago, and Kansas City. The same 

principle is used for GPS receivers, except that the distances used in the trilateration equation are 

linked to the locations of the satellites as they orbit in their constellation. Tutorial Tr. 9-1 1 

(Pratt). 

It has long been appreciated by mathematicians (and taught to students in school) that the 

distance an object has traveled is the product of speed multiplied by time (e.g., if one knows that 

one has traveled at 40 miles per hour for two hours, it is clear that one has traveled 80 miles: 

40 mph x 2 hours = 80 miles). Thus, to calculate the distance between itself and a particular 

satellite, a receiver needs to know the time a signal was sent by the satellite, the time the signal 

was received by the receiver, and the speed the signal was traveling. Dafesh Tr. 563-564; 

Tutorial Tr. 12 (Pratt); see CDX-17 (Distance Calculation). A constant in the equation is the 

speed of the signal because it is known that radio signals travel at the speed of light, which is 

approximately 300 kilometers per second. Dafesh Tr. 563-564. The other factors, i.e., the time 

that a signal was sent and the time that it was received, are subject to variation. 

Each satellite transmits a carrier wave with two signals that permit the GPS receivers to 

perform trilateration. The two signals are: (1) the pseudorandom noise code or “PRN” code, and 

(2) the NAV message, which contains navigation data. Tutorial Tr. 15 (Pratt); Dafesh Tr. 564- 

569; see CDX-96 (Signal Modulation). 

The PRN code (sometimes referred to as the coarse acquisition or “C/A” code) contains 

5 

Minneapolis, 305 miles from Chicago, and 185 miles from Kansas City, one could determine 

one's present position, which is the single point on Earth that is the specified distance from each 

of the aforementioned cities. In the example illustrated above, only a location in central Iowa is 

exactly at the specified distances from Minneapolis, Chicago, and Kansas City. The same 

principle is used for GPS receivers, except that the distances used in the trilateration equation are 

linked to the locations of the satellites as they orbit in their constellation. Tutorial Tr. 9-11 

(Pratt). 

It has long been appreciated by mathematicians (and taught to students in school) that the 

distance an object has traveled is the product of speed multiplied by time (e.g., if one knows that 

one has traveled at 40 miles per hour for two hours, it is clear that one has traveled 80 miles: 

40 mph x 2 hours = 80 miles). Thus, to calculate the distance between itself and a particular 

satellite, a receiver needs to know the time a signal was sent by the satellite, the time the signal 

was received by the receiver, and the speed the signal was traveling. Dafesh Tr. 563-564; 

Tutorial Tr. 12 (Pratt); see CDX-17 (Distance Calculation). A constant in the equation is the 

speed of the signal because it is known that radio signals travel at the speed of light, which is 

approximately 300 kilometers per second. Dafesh Tr. 563-564. The other factors, i.e., the time 

that a signal was sent and the time that it was received, are subject to variation. 

Each satellite transmits a carrier wave with two signals that pennit the GPS receivers to 

perform trilateration. The two signals are: (1) the pseudorandom noise code or "PRN" code, and 

(2) the NAV message, which contains navigation data. Tutorial Tr. 15 (Pratt); Dafesh Tr. 564-

569; see CDX-96 (Signal Modulation). 

The PRN code (sometimes referred to as the coarse acquisition or "CIA" code) contains 

5 
1023 bits of data (sometimes referred to a “chips” rather than “bits”). The entire PRN code is 

called an “epoch,” and it lasts one millisecond. The code is used both to identify the specific 

satellite that is sending a given signal and to determine some of the information needed to 

calculate distance. Indeed, to facilitate this process, GPS receivers generate reference codes for 

each of the 32 satellites that replicate the codes sent by the satellites. Tutorial 15-1 6 (Pratt), 60 

(Heppe); Dafesh Tr. 568; Braasch Tr. 1550. 

When a GPS receiver receives a signal from a satellite, it uses a process referred to as 

“correlation” to match the received signal with one of the locally generated reference codes. 

Once it has matched the incoming signal with one of the reference codes, the receiver knows the 

identity of the satellite that sent the received signal. In addition, the time delay between the 

transmission and reception of a code is known as “code offset” or “code shift.” By evaluating the 

amount that the reference code must be shifted until it matches the received signal, the receiver 

knows a portion of the information needed to calculate distance. Tutorial Tr. 21 (Pratt); Dafesh 

Tr. 569-576; see CDX-97 (“Comparing PRN Codes,” which depicts the code shift in a literal 

fashion to illustrate the time elapsed between transmission and receipt). 

A GPS receiver uses the number of “chips” (or bits) that it slid to match the reference 

code to the satellite signal. Inasmuch as one chip is broadcast about every millionth of a second, 

by counting the number of chips that the reference code was slid before it correlated with the 

satellite’s PN code, the receiver can refine the distance to the satellite. This “correlator offset” is 

then multiplied by the speed of light (1 86,000 miles per second) to compute the distance between 

the satellite and the receiver. Tutorial Tr. 64 (Heppe). 

This calculation is complicated by a factor known as the “Doppler” effect. Just as the 

6 

1023 bits of data (sometimes referred to a "chips" rather than "bits"). The entire PRN code is 

called an "epoch," and it lasts one millisecond. The code is used both to identify the specific 

satellite that is sending a given signal and to determine some of the information needed to 

calculate distance. Indeed, to facilitate this process, GPS receivers generate reference codes for 

each of the 32 satellites that replicate the codes sent by the satellites. Tutorial 15-16 (Pratt), 60 

(Heppe); Dafesh Tr. 568; Braasch Tr. 1550. 

When a GPS receiver receives a signal from a satellite, it uses a process referred to as 

"correlation" to match the received signal with one of the locally generated reference codes. 

Once it has matched the incoming signal with one of the reference codes, the receiver knows the 

identity of the satellite that sent the received signal. In addition, the time delay between the 

transmission and reception of a code is known as "code offset" or "code shift." By evaluating the 

amount that the reference code must be shifted until it matches the received signal, the receiver 

knows a portion of the information needed to calculate distance. Tutorial Tr. 21 (Pratt); Dafesh 

Tr. 569-576; see CDX-97 ("Comparing PRN Codes," which depicts the code shift in a literal 

fashion to illustrate the time elapsed between transmission and receipt). 

A GPS receiver uses the number of "chips" ( or bits) that it slid to match the reference 

code to the satellite signal. Inasmuch as one chip is broadcast about every millionth of a second, 

by counting the number of chips that the reference code was slid before it correlated with the 

satellite's PN code, the receiver can refine the distance to the satellite. This "correlator offset" is 

then multiplied by the speed oflight (186,000 miles per second) to compute the distance between 

the satellite and the receiver. Tutorial Tr. 64 (Heppe). 

This calculation is complicated by a factor known as the "Doppler" effect. Just as the 

6 
pitch of a siren on a vehicle may change in frequency as it speeds by someone standing on a 

sidewalk, so too a radio frequency may shift as, for example, when it is transmitted by a satellite 

moving in its orbit vis-a-vis a fixed location on Earth. Tutorial Tr. 22 (Pratt); Dafesh Tr. 574. 

GPS receivers must, therefore, search a range of frequencies to obtain a match between a 

received signal and a locally generated reference code. Dafesh Tr. 573-575; CDX-95. Each shift 

of the 1023 chip code represents one potential code offset. Wen the code is sampled so that 

there are two samples per chip (as is commonly done in most receivers), there are 2046 potential 

code offsets per code and per Doppler value. To determine the correct code offset for the correct 

code at the correct Doppler value, GPS receivers must search tens of thousands of variables. 

Braasch Tr. 1399-1401. 

As indicated above, in addition to the PRN code (also known as the C/A code), the 

satellite also transmits the NAV message, which contains more information that is used to 

calculate position. The NAV message contains information regarding when the received signals 

were sent by the transmitting satellite, information called “ephemeris” data regarding the location 

and trajectory of the satellite, and information regarding the positions of other satellites in the 

constellation (referred to as “almanac”). Dafesh Tr. 579-588; see CDX-2 1 (Navigation 

Message). 

Conventional GPS receivers depended on both the PRN code and the NAV message to 

calculate position. The NAV message, however, can be difficult to acquire in weak-signal 

environments. It is transmitted at a much slower rate than the PRN code and, consequently, takes 

longer to acquire. Receiving all of the necessary information from the NAV message can take as 

long as 18-30 seconds of uninterrupted strong signal reception. Because conventional GPS 

7 

pitch of a siren on a vehicle may change in frequency as it speeds by someone standing on a 

sidewalk, so too a radio frequency may shift as, for example, when it is transmitted by a satellite 

moving in its orbit vis-a-vis a fixed location on Earth. Tutorial Tr. 22 (Pratt); Dafesh Tr. 574. 

GPS receivers must, therefore, search a range of frequencies to obtain a match between a 

received signal and a locally generated reference code. Dafesh Tr. 573-575; CDX-95. Each shift 

of the 1023 chip code represents one potential code offset. When the code is sampled so that 

there are two samples per chip (as is commonly done in most receivers), there are 2046 potential 

code offsets per code and per Doppler value. To determine the correct code offset for the correct 

code at the correct Doppler value, GPS receivers must search tens of thousands of variables. 

Braasch Tr. 1399-1401. 

As indicated above, in addition to the PRN code (also known as the CIA code), the 

satellite also transmits the NA V message, which contains more information that is used to 

calculate position. The NA V message contains information regarding when the received signals 

were sent by the transmitting satellite, information called "ephemeris" data regarding the location 

and trajectory of the satellite, and information regarding the positions of other satellites in the 

constellation (referred to as "almanac"). Dafesh Tr. 579-588; see CDX-21 (Navigation 

Message). 

Conventional GPS receivers depended on both the PRN code and the NA V message to 

calculate position. The NAV message, however, can be difficult to acquire in weak-signal 

environments. It is transmitted at a much slower rate than the PRN code and, consequently, takes 

longer to acquire. Receiving all ofthe necessary information from the NAV message can take as 

long as 18-30 seconds of uninterrupted strong signal reception. Because conventional GPS 

7 
technology requires receipt of information from the NAV message, it can be difficult and 

sometimes even impossible for GPS receivers to calculate position in environments, such as 

cities, where GPS signals are weak. Dafesh Tr. 588-590; see CDX-22 (Weak Signal 

Environments). 

To address the part of the problem of acquiring the NAV message, the industry developed 

Assisted-GPS in which the NAV message is collected by a receiving station with an unobstructed 

view of the sky and then transmitted to GPS receivers through the Internet or over a wireless 

network. Yet, even Assisted-GPS required GPS receivers to be constantly connected to the 

alternative source of information which often was not possible in urban environments. The result 

was that GPS receivers continued not to work well in low-signal environments. Dafesh Tr. 

590-592; see CDX-74 (Assisted GPS System circa 1999). 

2. Overview of the Asserted Patents 

a. The ‘346 Patent 

United States Patent No. 6,606,346, entitled “Method and Apparatus for Computing 

Signal Correlation,” issued on August 12,2003, based on an application filed on May 18,2001. 

JX-2, cover page. The named inventors are Charles Abraham and Donald Fuchs. Id. 

The ‘346 patent is directed to a method and apparatus for computing a full convolution 

between an input GPS signal and a C/A code reference by generating the convolution result in 

real time without storing unprocessed signal samples. JX-2, Abstract, 2:48-53. The apparatus 

comprises a vector multiplier running at high speed to achieve the same result as a vector 

multiplier sized to process an entire epoch. Id., Abstract, col. 2,ll. 48-53. 

Complainants assert claims 4 and 1 1. See Compl. Br. at 14. 

8 

technology requires receipt of information from the NA V message, it can be difficult and 

sometimes even impossible for GPS receivers to calculate position in environments, such as 

cities, where GPS signals are weak. Dafesh Tr. 588-590; see CDX-22 (Weak Signal 

Environments) . 

To address the part of the problem of acquiring the NAV message, the industry developed 

Assisted-GPS in which the NA V message is collected by a receiving station with an unobstructed 

view of the sky and then transmitted to GPS receivers through the Internet or over a wireless 

network. Yet, even Assisted-GPS required GPS receivers to be constantly connected to the 

alternative source of information which often was not possible in urban environments. The result 

was that GPS receivers continued not to work well in low-signal environments. Dafesh Tr. 

590-592; see CDX-74 (Assisted GPS System circa 1999). 

2. Overview of the Asserted Patents 

a. The '346 Patent 

United States Patent No. 6,606,346, entitled "Method and Apparatus for Computing 

Signal Correlation," issued on August 12,2003, based on an application filed on May 18, 200l. 

JX-2, cover page. The named inventors are Charles Abraham and Donald Fuchs. Id 

The '346 patent is directed to a method and apparatus for computing a full convolution 

between an input GPS signal and a C/ A code reference by generating the convolution result in 

real time without storing unprocessed signal samples. JX-2, Abstract, 2:48-53. The apparatus 

comprises a vector multiplier running at high speed to achieve the same result as a vector 

multiplier sized to process an entire epoch. Id, Abstract, col. 2, 11. 48-53. 

Complainants assert claims 4 and 11. See Compl. Br. at 14. 

8 
b. The ‘000 Patent 

United States Patent No. 6,65 1,000, entitled “Method and Apparatus for Generating and 

Distributing Satellite Tracking Information in a Compact Format,” issued on November 18, 

2003, based on an application filed on July 25,2001. JX-3, cover page. The named inventors 

are Frank van Diggelen, Charles Abraham, and James LaMance. Id. 

The ‘000 patent is directed to a method and apparatus for creating and distributing 

satellite tracking data in a compact format to a remote receiver. JX-3, Abstract. At least a 

portion of the satellite tracking data is extracted from memory, is formatted into a compact 

format, and is transmitted to the remote receiver via a distribution network. Once this data is 

received at the remote receiver, it is reformatted into a format that is prescribed by the remote 

receiver. Id., Abstract, col2,ll. 7-14. 

Complainants assert claims 1, 2 and 5. See Compl. Br. at 15. 

c. The ‘080 Patent 

United States Patent No. 7,158,080, entitled “Method and Apparatus for Using Long 

Term Satellite Tracking Data in a Remote Receiver,” issued on January 2,2007, based on an 

application filed on September 29,2003. JX-6, cover page. The named inventor is Frank van 

Diggelen. Id. 

The ‘080 patent is directed to a method and apparatus for using long term satellite 

tracking data in a remote receiver, including using the data to compute acquisition assistance data 

in the remote receiver, which then uses the acquisition assistance data to acquire satellite signals 

that may be used to locate the position of the remote receiver. JX-6, Abstract, col. 3,ll. 16-38. 

Complainants assert claims 1,2 and 22. See, e.g., Compl. Br. at 15. 

9 

b. The '000 Patent 

United States Patent No. 6,651,000, entitled "Method and Apparatus for Generating and 

Distributing Satellite Tracking Information in a Compact Format," issued on November 18, 

2003, based on an application filed on July 25, 2001. JX-3, cover page. The named inventors 

are Frank van Diggelen, Charles Abraham, and James LaMance. Id. 

The '000 patent is directed to a method and apparatus for creating and distributing 

satellite tracking data in a compact format to a remote receiver. JX-3, Abstract. At least a 

portion of the satellite tracking data is extracted from memory, is formatted into a compact 

format, and is transmitted to the remote receiver via a distribution network. Once this data is 

received at the remote receiver, it is reformatted into a format that is prescribed by the remote 

receiver. Id., Abstract, col 2, 11.7-14. 

Complainants assert claims 1,2 and 5. See Compi. Br. at 15. 

c. The '080 Patent 

United States Patent No. 7,158,080, entitled "Method and Apparatus for Using Long 

Term Satellite Tracking Data in a Remote Receiver," issued on January 2,2007, based on an 

application filed on September 29,2003. JX-6, cover page. The named inventor is Frank van 

Diggelen. Id. 

The '080 patent is directed to a method and apparatus for using long term satellite 

tracking data in a remote receiver, including using the data to compute acquisition assistance data 

in the remote receiver, which then uses the acquisition assistance data to acquire satellite signals 

that may be used to locate the position of the remote receiver. JX-6, Abstract, col. 3, 11. 16-38. 

Complainants assert claims 1,2 and 22. See, e.g., Compi. Br. at 15. 

9 
d. The ‘651 Patent 

United States Patent No. 6,704,65 1, entitled “Method and Apparatus for Locating Mobile 

Receivers Using a Wide Area Reference Network for Propagating Ephemeris,” issued on 

March 9,2004, based on an application filed on November 20,2001. JX-4, cover page. The 

named inventor is Frank van Diggelen. Id. 

The ‘65 1 patent is directed to a method and apparatus for distribution and delivery of 

GPS satellite telemetry data through a communication link between a centra1 site and a mobile 

GPS receiver. JX-4, Abstract, col. 2,ll. 8-12. The central site is connected to a network of 

reference satellite receivers that send telemetry data from all satellites to the central site. Id., 

Abstract. The mobile GPS receiver uses the delivered telemetry data to aid its acquisition of the 

GPS satellite signal. Id., Abstract. The availability of telemetry data enhances the GPS mobile 

receiver’s signal reception sensitivity. Id., Abstract, col. 2,ll. 14-2 1. 

Complainant assert claims 1 and 2. See Compl. Br. at 15. 

e. The ‘801 Patent 

United States Patent No. 6,417,801, entitled “Method and Apparatus for Time-Free 

Processing of GPS Signals,” issued on July 9,2002, based on an application filed on 

November 17,2000. JX-1, cover page. The named inventor is Frank van Diggelen. Id. 

The ‘SO1 patent is generally directed to a method and apparatus for computing GPS 

receiver position without using absolute time information transmitted by the satellite or by an 

alternative source of timing available at the GPS receiver. JX- 1, Abstract. The GPS receiver 

measures satellite pseudoranges and sends the pseudoranges to a server that fits them to a 

mathematical model in which the GPS receiver position and the absolute time are unknown 

10 

d. The '651 Patent 

United States Patent No. 6,704,651, entitled "Method and Apparatus for Locating Mobile 

Receivers Using a Wide Area Reference Network for Propagating Ephemeris," issued on 

March 9, 2004, based on an application filed on November 20,2001. JX-4, cover page. The 

named inventor is Frank van Diggelen. Id. 

The '651 patent is directed to a method and apparatus for distribution and delivery of 

GPS satellite telemetry data through a communication link between a central site and a mobile 

GPS receiver. JX-4, Abstract, col. 2, 11.8-12. The central site is connected to a network of 

reference satellite receivers that send telemetry data from all satellites to the central site. Id., 

Abstract. The mobile GPS receiver uses the delivered telemetry data to aid its acquisition of the 

GPS satellite signal. Id., Abstract. The availability of telemetry data enhances the GPS mobile 

receiver's signal reception sensitivity. Id., Abstract, col. 2, n. 14-21. 

Complainant assert claims 1 and 2. See Compl. Br. at 15. 

e. The '801 Patent 

United States Patent No. 6,417,801, entitled "Method and Apparatus for Time-Free 

Processing of GPS Signals," issued on July 9, 2002, based on an application filed on 

November 17,2000. JX-l, cover page. The named inventor is Frank van Diggelen. Id. 

The' 80 1 patent is generally directed to a method and apparatus for computing GPS 

receiver position without using absolute time information transmitted by the satellite or by an 

alternative source of timing available at the GPS receiver. JX-l, Abstract. The GPS receiver 

measures satellite pseudoranges and sends the pseudoranges to a server that fits them to a 

mathematical model in which the GPS receiver position and the absolute time are unknown 

10 
parameters. Id. , Abstract, col. 3,l. 64 - col. 4,l. 1. The server then computes a position and 

absolute time that best fit the model, thereby yielding the correct position for the GPS receiver 

and the absolute time at which the pseudorange measurements were made. Id., Abstract, col. 4, 

11. 1-5. 

Cornplainants assert claims 1 , 2 and 1 1. See Compl. Br. at 16. 

f. The ‘187 Patent 

United States Patent No. 6,937,187, entitled “Method and Apparatus for Forming a 

Dynamic Model to Locate Position of a Satellite Receiver,” issued on August 30,2005, based on 

an application filed on June 13,2003, which is a continuation-in-part of an application, now U.S. 

Patent No. 6,734,821, which is in turn a continuation-in-part of the application that resulted in 

the ‘801 patent. JX-5, cover page. The named inventors are Frank van Diggelen and Charles 

Abraham. Id. 

The ‘ 187 patent is generally directed to a method and apparatus for locating the position 

of a satellite signal receiver. JX-5, Abstract. In one embodiment of the invention, pseudoranges 

are obtained that estimate the range of a satellite signal receiver to a plurality of satellites, 

absolute time and position are computed using the pseudoranges at a first time, and the absolute 

time is then used to compute another position at a subsequent time. JX-5, Abstract, col. 4,11. 16- 

2 1. In another embodiment of the invention, a plurality of states associated with a satellite signal 

receiver are estimated, wherein the plurality of states includes a “time-tag error state,” and then a 

dynamic model is formed to compute the position of the satellite signal receiver. JX-5, Abstract, 

COI. 4,ll. 22-26. 

Complainants assert claims 1 and 9. See Compl. Br. at 16. 

11 

parameters. ld., Abstract, col. 3, 1. 64 - col. 4, 1. 1. The server then computes a position and 

absolute time that best fit the model, thereby yielding the correct position for the GPS receiver 

and the absolute time at which the pseudorange measurements were made. ld., Abstract, col. 4, 

11. I-S. 

Complainants assert claims 1, 2 and 11. See Compl. Br. at 16. 

f. The '187 Patent 

United States Patent No. 6,937,187, entitled "Method and Apparatus for Forming a 

Dynamic Model to Locate Position of a Satellite Receiver," issued on August 30, 200S, based on 

an application filed on June 13,2003, which is a continuation-in-part of an application, now U.S. 

Patent No. 6,734,821, which is in turn a continuation-in-part of the application that resulted in 

the '801 patent. JX-S, cover page. The named inventors are Frank van Diggelen and Charles 

Abraham. ld. 

The' 187 patent is generally directed to a method and apparatus for locating the position 

of a satellite signal receiver. JX-S, Abstract. In one embodiment of the invention, pseudoranges 

are obtained that estimate the range of a satellite signal receiver to a plurality of satellites, 

absolute time and position are computed using the pseudoranges at a first time, and the absolute 

time is then used to compute another position at a subsequent time. JX-S, Abstract, col. 4, 11. 16-

21. In another embodiment of the invention, a plurality of states associated with a satellite signal 

receiver are estimated, wherein the plurality of states includes a "time-tag error state," and then a 

dynamic model is formed to compute the position ofthe satellite signal receiver. JX-S, Abstract, 

col. 4, 11. 22-26. 

Complainants assert claims 1 and 9. See Compl. Br. at 16. 

11 
3. The Level of Ordinary Skill in the Art 

A person of ordinary skill in the art relevant to the asserted patents would have received a 

bachelor’s degree in engineering, and would have at least two to three years of experience in the 

GPS field. See Dafesh Tr. 744-745; Pratt Tr. 959-960; Braasch Tr. 1395; Heppe Tr. 2371-2372. 

4. The Products Accused in This Investigation 

Complainants allege that each of the respondents make and, or, sell products that infringe 

one or more of the six patents asserted in this investigation. 

SiRF Products 

Complainants accuse the “two basic lines of GPS chips: SiRFstarIII and SiRF 

InstantGPS.” Compl. Br. at 17. The SiRFstarIII chips are accused of infringing five of the 

asserted patents: the ‘000, ‘080, ‘65 1 , ‘801, and ‘ 187 patents. The SiRF InstantGPS chips are 

accused of infringing three asserted patents: the ‘346, ‘80 1, and ‘ 187 patents. 

Complainants also offered evidence at the hearing, and presented arguments in their briefs, 

concerning the so-called [ ] Complainants 

admit, however, that the [ 

,I after the issuance of this Initial 

Determination. See Id. at 17- 1 8 & n.3. 

SiRFstarIII Chips 

The SiRFstarIII line includes, but is not limited to, three stand-alone GPS product families. 

Each family uses the “SC” designation to indicate a single-chip solution, which means that the 

chips provide all functionality necessary to compute a GPS position. The three SC families of 

SiRFstarIII chips are: 

12 

3. The Level of Ordinary Skill in the Art 

A person of ordinary skill in the art relevant to the asserted patents would have received a 

bachelor's degree in engineering, and would have at least two to three years of experience in the 

GPS field. See Dafesh Tr. 744-745; Pratt Tr. 959-960; Braasch Tr. 1395; Heppe Tr. 2371-2372. 

4. The Products Accused in This Investigation 

Complainants allege that each of the respondents make and, or, sell products that infringe 

one or more of the six patents asserted in this investigation. 

SiRF Products 

Complainants accuse the "two basic lines of GPS chips: SiRFstarIII and SiRF 

InstantGPS." CompI. Br. at 17. The SiRFstarIII chips are accused of infringing five of the 

asserted patents: the '000, '080, '651, '801, and '187 patents. The SiRF InstantGPS chips are 

accused of infringing three asserted patents: the' 346, '801, and' 187 patents. 

Complainants also offered evidence at the hearing, and presented arguments in their briefs, 

concerning the so-called [ 

admit, however, that the [ 

Determination. See Id. at 17-18 & n.3. 

SiRFstarIII Chips 

] Complainants 

,] after the issuance of this Initial 

The SiRFstarIII line includes, but is not limited to, three stand-alone GPS product families. 

Each family uses the "SC" designation to indicate a single-chip solution, which means that the 

chips provide all functionality necessary to compute a GPS position. The three SC families of 

SiRFstarIII chips are: 

12 
e the basic SiRFstarIII family (comprised of GSC3, GSC3e, and GSC3f); 

e a low-power SiRFstarIII LP family (comprised of the GSC3e/LP and GSC3f/LP); 

and 

e SiRF’s latest “light” (ie., smaller) SiRFstarIII LT family (comprised of the 

GSC3LT, GSC3LTf7 GSC3LTi, and GSC3LTif). 

See Compl. Br.. at 18-19 (citing CX-323C (GNSS Product Summary); CX-324 (GPS Tracker 

White Paper) at 602SiRF258557; CDX-200C (‘801/’187 Accused Products); Pratt Tr. 960-962). 

The SiRFstarIII line of chips also includes the GSD3t tracker chip, which complainants 

characterize as storing “SiRF navigation software on the host processor instead of the SiRFstarIII 

chip.” Id. (citing CX-323C; CX-324C). 

In summary, the accused SiRFstarIII chips in this case are the GSC3, GSC3e/LP, 

GSC3f/LP, GSC3f, GSC3LT, GSC3LTf, GSC3LTi, GSC3LTif, GSP3e7 GSP3f, and GSD3t. See 

Id. (citing CDX-78C (SiRFstarIII chips and software); CX-323C; CX-324C). 

It is noteworthy that Complainants link their infringement allegations concerning the 

aforementioned SiRF chips to the software used to operate the chips. See, e.g., Compl. Br. at 19 

(describing the accused SiRF products in tandem with a summary description of the specific 

software used with the products). They do not accuse the software individually of patent 

infringement. However, the relationship of the accused devices, the software, and the asserted 

patent claims is discussed below in the sections containing infringement analysis. 

As general matter, complainants argue that SiRFstarIII chips can operate with one of two 

basic SiRF software platforms, either the GSW3 or SLC3 software. It is further alleged that the 

13 

• the basic SiRFstarIII family (comprised ofGSC3, GSC3e, and GSC3f); 

• a low-power SiRFstarIII LP family (comprised of the GSC3e/LP and GSC3f/LP); 

and 

• SiRF's latest "light" (i.e., smaller) SiRFstarIII LT family (comprised of the 

GSC3LT, GSC3LTf, GSC3LTi, and GSC3LTif). 

See Compl. Br.. at 18-19 (citing CX-323C (GNSS Product Summary); CX-324 (GPS Tracker 

White Paper) at 602SiRF258557; CDX-200C ('801/'187 Accused Products); Pratt Tr. 960-962). 

The SiRFstarIII line of chips also includes the GSD3t tracker chip, which complainants 

characterize as storing "SiRF navigation software on the host processor instead of the SiRFstarIII 

chip." Id. (citing CX-323C; CX-324C). 

In summary, the accused SiRFstarIII chips in this case are the GSC3, GSC3e/LP, 

GSC3f/LP, GSC3f, GSC3LT, GSC3LTf, GSC3LTi, GSC3LTif, GSP3e, GSP3f, and GSD3t. See 

Id. (citing CDX-78C (SiRFstarIII chips and software); CX-323C; CX-324C). 

It is noteworthy that complainants link their infringement allegations concerning the 

aforementioned SiRF chips to the software used to operate the chips. See, e.g, Compl. Br. at 19 

(describing the accused SiRF products in tandem with a summary description of the specific 

software used with the products). They do not accuse the software individually of patent 

infringement. However, the relationship of the accused devices, the software, and the asserted 

patent claims is discussed below in the sections containing infringement analysis. 

As general matter, complainants argue that SiRFstarIII chips can operate with one of two 

basic SiRF software platforms, either the GSW3 or SLC3 software. It is further alleged that the 

[ 

13 
] Complainants argue that the GSD3t tracker chip runs with SiRF’s 

SiRFNavIII software. Complainants also argue that the standard SiRFStarIII software is 

proprietary to SiRF, and is provided by SiRF. See Id. at 19 (citing , inter alia, SiRF discovery 

responses and the testimony of respondents’ and complainants’ expert witnesses). 

SiRF InstantFk Products 

Complainants argue that “InstantFix” is an “end-to-end SiRFAssisted-GPS system that 

provides server-generated 3-day and 7-day extended ephemeris (“E,,’) files to end user devices 

via the Internet over a wireless or wireline connection,” and that it can be used with all current 

versions of the standard SiRFstarIII software. Complainants further allege that all of the accused 

SiRFstarIII chips - GSC3, GSC3e/LP, GSC3f/LP, GSC3f, GSC3LT, GSC3LTf, GSC3LTi, 

GSC3LTif’ GSP3e, GSP3f, and GSD3t - operate with GSW or SLC software, and support 

SiRFInstantFix. See, e.g., Compl. Br. at 19-20. 

SiRF InstantGPS 

The SiRF “InstantGPS” products are the final group of SiRF products accused by 

complainants. complainants argue that there are two primary platforms in the SiRF InstantGPS 

product line, i. e., the GSCi-4100/4200 and GSCi-5000 series products. Complainants assert that 

the baseband portion of the SiRF InstantGPS chips incorporate hardware known as a GPS 

Acquisition Module, which is known by the acronym GAM. The GAM (often pronounced during 

the hearing as a word, “gam”) is a hardware module designed to perform baseband processing of 

GPS signals. See Compl. Br. at 20 (citing CX-358C (GAM Documentation) at 602SiRF292710). 

The GAM and associated software are discussed in detail below in the infringement 

analysis sections of this Initial Determination. Yet in summary, complainants allege that SiEF’s 

14 

] Complainants argue that the GSD3t tracker chip runs with SiRF's 

SiRFNavIII software. Complainants also argue that the standard SiRFStarIII software is 

proprietary to SiRF, and is provided by SiRF. See ld. at 19 (citing, inter alia, SiRF discovery 

responses and the testimony of respondents' and complainants' expert witnesses). 

SiRF InstantFix Products 

Complainants argue that "InstantFix" is an "end-to-end SiRF Assisted-GPS system that 

provides server-generated 3-day and 7 -day extended ephemeris ("EE") files to end user devices 

via the Internet over a wireless or wireline connection," and that it can be used with all current 

versions of the standard SiRFstarIII software. Complainants further allege that all ofthe accused 

SiRFstarIII chips - GSC3, GSC3e/LP, GSC3fILP, GSC3f, GSC3LT, GSC3LTf, GSC3LTi, 

GSC3LTif, GSP3e, GSP3f, and GSD3t - operate with GSW or SLC software, and support 

SiRFInstantFix. See, e.g., Compl. Bf. at 19-20. 

SiRF InstantGPS 

The SiRF "InstantGPS" products are the final group of SiRF products accused by 

complainants. Complainants argue that there are two primary platforms in the SiRF InstantGPS 

product line, i.e., the GSCi-4100/4200 and GSCi-5000 series products. Complainants assert that 

the baseband portion of the SiRF InstantGPS chips incorporate hardware known as a GPS 

Acquisition Module, which is known by the acronym GAM. The GAM (often pronounced during 

the hearing as a word, "gam") is a hardware module designed to perform baseband processing of 

GPS signals. See Compl. Br. at 20 (citing CX-358C (GAM Documentation) at 602SiRF29271 0). 

The GAM and associated software are discussed in detail below in the infringement 

analysis sections of this Initial Determination. Yet in summary, complainants allege that SiRF's 

14 
GSCi-5000 products run the same core navigation library software as the SiRFstarIII chips, and 

that the GSCi-4100/4200 products run the so-called “i4100/4200” firmware but with navigation 

functionality that is fundamentally similar to that found in the SiRFstarIII navigation software. Id. 

The Products Made or Sold bv the Non-SiRF Respondents 

SiRF’s GPS chips are incorporated into products such as portable navigation devices 

(“‘PNDs”), personal digital assistants (“PDAs”) and cell phones that are sold by respondents 

E-TEN, MiTAC/Mio, and Pharos. The products of E-TEN, MiTACMio and Pharos that contain 

the SiRFstarIII chips are accused of infringing five of the asserted patents: the ‘000, ‘080, ‘65 1, 

‘801 and ‘ 187 patents. 

E-TEN Products 

Complainants argue that respondent E-TEN has incorporated SiRFStarIII chips and 

software into at least 9 PDAs (ie., personal digital assistant) GPS devices: the G500, M700, 

X500, X500+, X800, X650, M800, X600 and V900. See Id. at 20. It is fbrther argued that the 

Glofiish X500 and M700 contain a GSC3f SiRF GPS chip that utilizes SiRF’s GSW software, 

and that the Glofiish X500+ contains a GSC3f/LP SiRF GPS chip that utilizes SiRF’s GSW 

software. Id. Complainants further argue that the E-TEN X800, X650, M800, X600 and V900 

contain a GSC3Lti SiRF GPS chip that utilizes SiRF’s GSWLT software, and that the X-500 

device features InstantFix. Id. 

MiTAC and Mi0 Products 

Complainants argue that respondents MiTAC and Mi0 have incorporated SiRF chips and 

software into at least 13 GPS devices: the C220, C230, C250, C310, C320, C520, C620, C710, 

C720, P350, P520, P550, H610, A501, A700, A701 and A702. See Compl. Br. at 21. It is further 

15 

GSCi-5000 products run the same core navigation library software as the SiRFstarIII chips, and 

that the GSCi-41 00/4200 products run the so-called "i41 00/4200" firmware but with navigation 

functionality that is fundamentally similar to that found in the SiRFstarIII navigation software. Id. 

The Products Made or Sold bv the Non-SiRF Respondents 

SiRF's GPS chips are incorporated into products such as portable navigation devices 

("PNDs"), personal digital assistants ("PDAs") and cell phones that are sold by respondents 

E-TEN, MiTAC/Mio, and Pharos. The products ofE-TEN, MiTAClMio and Pharos that contain 

the SiRFstarIII chips are accused of infringing five of the asserted patents: the '000, '080, '651, 

'801 and '187 patents. 

E-TEN Products 

Complainants argue that respondent E-TEN has incorporated SiRFStarIII chips and 

software into at least 9 PDAs (i.e., personal digital assistant) GPS devices: the G500, M700, 

X500, X500+, X800, X650, M800, X600 and V900. See Id. at 20. It is further argued that the 

Glofiish X500 and M700 contain a GSC3fSiRF GPS chip that utilizes SiRF's GSW software, 

and that the Glofiish X500+ contains a GSC3f/LP SiRF GPS chip that utilizes SiRF's GSW 

software. Id. Complainants further argue that the E-TEN X800, X650, M800, X600 and V900 

contain a GSC3Lti SiRF GPS chip that utilizes SiRF's GSWLT software, and that the X-500 

device features InstantFix. Id. 

MiTAC and Mio Products 

Complainants argue that respondents MiTAC and Mio have incorporated SiRF chips and 

software into at least 13 GPS devices: the C220, C230, C250, C310, C320, C520, C620, C710, 

C720, P350, P520, P550, H61O, A501, A700, A701 and A702. See Compi. Br. at 21. It is further 

15 
argued the C220, C230, C250, C320, C520, C710, C720 and P550 contain the GSC3e/LP SiRF 

GPS chip; that the A501, A700, A701 and C310 contain the GSC3f/LP SiRF GPS chip; and that 

each of the aforementioned devices uses SiRF’s GSW software. Id. Complainants allege that at 

least the C320, C520, C720, A501, A700 and A701 have incorporated SiRF chips and software 

that also support InstantFix. Compl. Br. at 21. 

Pharos Products 

Complainants argue that respondent Pharos has incorporated SiRFstarIII chips into 14 

GPS devices: the PDR135, PDR140, PDR150, PDR250, PT120, PT250, PTP10, PTL505, 

PTL525E, PTL525P, PTL535E, PTL535P, PTL6OO and PTL600E. See Id. at 21. It is further 

argues that the Pharos Trip and Pics GPS Receiver PTP10, and the Pharos Bluetooth GPS 

Navigators PT120 and PT250 all contain GSW3.2x software. Id. 

5. The Domestic Industrv Products 

The notice of investigation (72 Fed. Reg. 25777 (2007)) provides that a determination 

must be made as to whether an industry in the United States exists or is in the process of being 

established, as required by 19 U.S.C. 6 1337(a)(2). The domestic industry requirement must be 

satisfied as to each asserted patent. See 19 U.S.C. 

factors specific to each of the six asserted patents are detailed in the section of this Initial 

Determination pertaining to a particular patent. In each case, complainants rely on one or both of 

two chips sold by Global Locate, i.e., the GL-20000 and the Hammerhead chips. See Compl. Br. 

at 17. 

1337(a)(2). The technical and economic 

In connection with their domestic industry arguments, complainants describe the operation 

of the GL-20000 and the Hammerhead chips as combining Global Locate’s new Assisted-GPS 

16 

argued the C220, C230, C250, C320, C520, C71O, C720 and P550 contain the GSC3e/LP SiRF 

GPS chip; that the A501, A700, A701 and C310 contain the GSC3f/LP SiRF GPS chip; and that 

each of the aforementioned devices uses SiRF's GSW software. Id. Complainants allege that at 

least the C320, C520, C720, A501, A700 and A701 have incorporated SiRF chips and software 

that also support InstantFix. CompI. Br. at 21. 

Pharos Products 

Complainants argue that respondent Pharos has incorporated SiRFstarIII chips into 14 

GPS devices: the PDR135, PDR140, PDRI50, PDR250, PT120, PT250, PTPlO, PTL505, 

PTL525E, PTL525P, PTL535E, PTL535P, PTL600 and PTL600E. See Id. at 21. It is further 

argues that the Pharos Trip and Pics GPS Receiver PTPI 0, and the Pharos Bluetooth GPS 

Navigators PT120 and PT250 all contain GSW3.2x software. Id. 

s. The Domestic Industry Products 

The notice of investigation (72 Fed. Reg. 25777 (2007» provides that a determination 

must be made as to whether an industry in the United States exists or is in the process of being 

established, as required by 19 U.S.C. § 1337(a)(2). The domestic industry requirement must be 

satisfied as to each asserted patent. See 19 U.S.C. § 1337(a)(2). The technical and economic 

factors specific to each of the six asserted patents are detailed in the section of this Initial 

Determination pertaining to a particular patent. In each case, complainants rely on one or both of 

two chips sold by Global Locate, i.e., the GL-20000 and the Hammerhead chips. See CompI. Br. 

at 17. 

In connection with their domestic industry arguments, complainants describe the operation 

of the GL-20000 and the Hammerhead chips as combining Global Locate's new Assisted-GPS 

16 
(“A-GPS”) aiding information with “massive parallel correlation and time-free positioning.” Id. 

It is argued that both the GL-20000 and Hammerhead chips nu3 GPS software called the Global 

Locate Library (“GLL”), which resides [ 

Global Locate’s GL-20000 chip and associated Global Locate software have been incorporated 

into several commercial products, including Hewlett Packard’s HP iPAQ hw6500 series and 

hw6900 series of PDAs, as well as several additional commercial products, including the 

TomTom One and TomTom One XL personal navigation devices. It is alleged that the TomTom 

One XL contains a Hammerhead chip. See Id. 

11. Importation Or Sale 

] Complainants further argue that 

The Commission instituted this investigation “to determine whether there is a violation of 

subsection (a)(l)(B) of section 337 [of the Tariff Act of 1930, as amended] in the importation into 

the United States, the sale for importation, or the sale within the United States after importation of 

certain GPS devices or products containing same by reason of infringement of one or more” of the 

aforementioned patent claims. Indeed, subsection (a)( 1)(B) of section 337 makes unlawful “the 

importation into the United States, the sale for importation, or the sale within the United States 

after importation by the owner, importer, or consignee, of articles” that infringe a valid and 

enforceable United States registered copyright or patent, See 19 U.S.C. 5 1337 (a)(l)(B). 

Thus, in order to prevail in this investigation, complainants must establish that the devices 

or products that it accuses of patent infringement are imported into the Untied States, sold for 

importation to the United States, or sold domestically after importation. Complainants and the 

Staff argue that the importation or sale requirement has been satisfied, while respondents argue 

that it has not. 

17 

("A-GPS") aiding information with "massive parallel correlation and time-free positioning." Id. 

It is argued that both the GL-20000 and Hammerhead chips run GPS software called the Global 

Locate Library ("GLL"), which resides [ ] Complainants further argue that 

Global Locate's GL-20000 chip and associated Global Locate software have been incorporated 

into several commercial products, including Hewlett Packard's HP iPAQ hw6500 series and 

hw6900 series ofPDAs, as well as several additional commercial products, including the 

TomTom One and TomTom One XL personal navigation devices. It is alleged that the TomTom 

One XL contains a Hammerhead chip. See Id. 

II. Importation Or Sale 

The Commission instituted this investigation "to determine whether there is a violation of 

subsection (a)(1)(B) of section 337 [ofthe Tariff Act of 1930, as amended] in the importation into 

the United States, the sale for importation, or the sale within the United States after importation of 

certain GPS devices or products containing same by reason of infringement of one or more" of the 

aforementioned patent claims. Indeed, subsection (a)(I)(B) of section 337 makes unlawful "the 

importation into the United States, the sale for importation, or the sale within the United States 

after importation by the owner, importer, or consignee, of articles" that infringe a valid and 

enforceable United States registered copyright or patent See 19 U.S.C. § 1337 (a)(1)(B). 

Thus, in order to prevail in this investigation, complainants must establish that the devices 

or products that it accuses of patent infringement are imported into the Untied States, sold for 

importation to the United States, or sold domestically after importation. Complainants and the 

Staff argue that the importation or sale requirement has been satisfied, while respondents argue 

that it has not. 

17 
For the reasons stated below, it is found that the importation or sale requirement has been 

satisfied as to all accused products, except the so-called [ ] chips. complainants admit 

that the [ ] See Compl. Br. at 

17-18 &n.3 [ 

] All of the other accused chips for use in a global positioning 

system have been imported, and all other accused products are imported and contain an imported 

device (such as a chip) that is accused of infringing one of the GPS-related patents at issue in this 

investigation. 

A. Importation or Sale of Accused Products 

Complainants’ Motion No. 602-38, referenced above in section I(A), was a wide-ranging 

request for summary determination concerning the importation requirements of 19 U.S.C. 6 

1337(a)(l)(B). The motion was denied in Order No. 29. Nevertheless, pursuant to 19 C.F.R. 5 

210.18(e), Order No. 29 deemed that several facts relating to the importation question had been 

established. Those facts were demonstrated by the parties’ filings related to the summary 

determination motion, including specific, uncontroverted discovery responses that had been 

supplied by respondents and which were relied upon by complainants in connection with their 

motion. In particular, the following importation and sale facts were established: 

1. From January 1,2002, to at least November 27,2007, SiRF has 

imported or sold for importation into the United States, or sold after 

importation into the United States, Chips GRF3I-0322, GRF3WGSC3F-7879, GSP3F-7855, GSC3LTF-8072, GSC3LTIF-8172, and 

0224, GSP3E-7852, GSP3F-785 1, GSC3-7875, GSC3-7877, 

GSC3LTI-8116. 

2. From January 1,2002, to at least November 9,2007, SiRF has 

imported or sold for importation into the United States, or sold after 

18 

For the reasons stated below, it is found that the importation or sale requirement has been 

satisfied as to all accused products, except the so-called [ ] chips. Complainants admit 

that the [ ] See Compl. Br. at 

17-18 &n.3 [ 

] All of the other accused chips for use in a global positioning 

system have been imported, and all other accused products are imported and contain an imported 

device (such as a chip) that is accused of infringing one of the GPS-related patents at issue in this 

investigation. 

A. Importation or Sale of Accused Products 

Complainants' Motion No. 602-38, referenced above in section leA), was a wide-ranging 

request for summary determination concerning the importation requirements of 19 u.s.c. § 

1337(a)(I)(B). The motion was denied in Order No. 29. Nevertheless, pursuant to 19 C.F.R. § 

21O.l8(e), Order No. 29 deemed that several facts relating to the importation question had been 

established. Those facts were demonstrated by the parties' filings related to the summary 

determination motion, including specific, uncontroverted discovery responses that had been 

supplied by respondents and which were relied upon by complainants in connection with their 

motion. In particular, the following importation and sale facts were established: 

1. From January 1,2002, to at least November 27,2007, SiRF has 

imported or sold for importation into the United States, or sold after 

importation into the United States, Chips GRF3I-0322, GRF3W0224, GSP3E-7852, GSP3F-7851, GSC3-7875, GSC3-7877, 

GSC3F-7879, GSP3F-7855, GSC3LTF-8072, GSC3LTIF-8172, and 

GSC3LTI-8116. 

2. From January 1,2002, to at least November 9,2007, SiRF has 

imported or sold for importation into the United States, or sold after 

18 
importation into the United States, the SiRF Chips GSCi-4 100, 

GCSi-4200, GSCi-5000, GSCi-5001 , GSCi-5050, and GSCi-5 101. 

3. From January 1,2002, to at least January 18,2008, E-TEN sold 

for importation into the United States the following products: 

Glofiish X500, Glofiish X500+, E-TEN G500, E-TEN G500+, 

E-TEN M700, and E-TEN X800. 

4. From at least January 1,2002, to January 18,2008, MITAC has 

imported, or sold for importation into the United States, the Mio 

Digiwalker C230, Mio Digiwalker C320, and the Mio Digiwalker 

C720t. 

5. From January 1,2002, to at least, January 5,2008, Pharos 

imported, exported, sold (or offered for sale) for importation into 

the United States, or sold (or offered for sale) after importation into 

the United States the following products: PDR135, PDR140, 

PDR150, PDR250, PT120, PTP10, PTL505, PTL525E, PTL525P, 

PTLGOO, and PTLGOOE. 

Order No. 29 at 1-3. 

While the findings of Order No. 29 cover many of the chips and other products accused in 

this investigation, they were not intended necessarily to cover the totality of complainants’ 

infringement allegations. Nevertheless, complainants argue that all accused SiRF chips are in fact 

imported, and constitute accused products under the ‘346 patent. It is further argued that the 

imported SiRF chips with flash memory contain SiRF embedded software, and thus are accused 

products under the ‘801 and ‘1 87 patents. See Compl. Br. at 23. 

Complainants also argue that the imported SiRF chips standing alone are also, at a 

minimum, components of accused products under the ‘080, ‘000, ‘65 1, ‘801 and ‘ 187 patents, the 

importation of which is sufficient to establish the Commission’s jurisdiction. See Id. (citing 

Certain Personal Watercraft and Components ThereoJ; Inv. No. 337-TA-452, Order No. 3 1 , 

2001 ITC LEXIS 866, at 2-4 (Aug. 13,2001) (importation of accused components of patented 

19 

importation into the United States, the SiRF Chips GSCi-41 00, 

GCSi-4200, GSCi-5000, GSCi-5001, GSCi-5050, and GSCi-5101. 

3. From January 1,2002, to at least January 18, 2008, E-TEN sold 

for importation into the United States the following products: 

Glofiish X500, Glofiish X500+, E-TEN G500, E-TEN G500+, 

E-TEN M700, and E-TEN X800. 

4. From at least January 1,2002, to January 18,2008, MITAC has 

imported, or sold for importation into the United States, the Mio 

Digiwalker C230, Mio Digiwalker C320, and the Mio Digiwalker 

C720t. 

5. From January 1,2002, to at least, January 5, 2008, Pharos 

imported, exported, sold (or offered for sale) for importation into 

the United States, or sold (or offered for sale) after importation into 

the United States the following products: PDR135, PDR140, 

PDRI50, PDR250, PT120, PTPlO, PTL505, PTL525E, PTL525P, 

PTL600, and PTL600E. 

Order No. 29 at 1-3. 

While the findings of Order No. 29 cover many of the chips and other products accused in 

this investigation, they were not intended necessarily to cover the totality of complainants' 

infringement allegations. Nevertheless, complainants argue that all accused SiRF chips are in fact 

imported, and constitute accused products under the '346 patent. It is further argued that the 

imported SiRF chips with flash memory contain SiRF embedded software, and thus are accused 

products under the' 80 1 and '187 patents. See CompI. Br. at 23. 

Complainants also argue that the imported SiRF chips standing alone are also, at a 

minimum, components of accused products under the '080, '000, '651, '801 and '187 patents, the 

importation of which is sufficient to establish the Commission's jurisdiction. See Id. (citing 

Certain Personal Watercraft and Components Thereof, Inv. No. 337-TA-452, Order No. 31, 

2001 ITC LEXIS 866, at 2-4 (Aug. 13,2001) (importation of accused components of patented 

19 
invention sufficient to establish Commission’s jurisdiction)). In addition, complainants argue that 

imported products of ETEN, MiTAC/Mio, and Pharos contain accused SiRF’starIII chips 

associated with certain SiRF software (GSW or GSWLT software), and that the imported ETEN 

X500 and MITAC/Mio C320 and C720 also contain software (known as CLM software) that is 

used to download extended ephemeris files, and are thus accused of patent infringement. See Id. 

at 23-24. 

Respondents do not argue that any of the numerous importation findings made in Order 

No. 29 were in error. However, respondents argue that complainants failed to present evidence 

concerning the importation question beyond that offered in connection with their unsuccessful 

motion for summary determination, and that therefore complainants have once again failed to 

show that the importation requirement is satisfied. Indeed, respondents argue that the motion for 

summary determination was properly denied because complainants failed to demonstrate 

importation of the particular combinations of software, chips, devices and services that are relied 

upon by complainants to make infringement claims under the asserted patents. See Resp. Br. 

at 28. 

Whether respondents’ accused chips and other products can be held to infringe all the 

asserted patent claims, particularly if the accused products must be used in combination with other 

(possibly non-imported) devices or services, is a question separate from the inquiry as to whether 

accused chips or other products have been imported. Moreover, respondents do not contest 

complainants’ allegation that each accused chip is imported, and that each accused product is 

20 

invention sufficient to establish Commission's jurisdiction)). In addition, complainants argue that 

imported products ofETEN, MiTAC/Mio, and Pharos contain accused SiRFstarIII chips 

associated with certain SiRF software (GSW or GSWLT software), and that the imported ETEN 

X500 and MITAC/Mio C320 and cno also contain software (known as CLM software) that is 

used to download extended ephemeris files, and are thus accused of patent infringement. See Id. 

at 23-24. 

Respondents do not argue that any of the numerous importation findings made in Order 

No. 29 were in error. However, respondents argue that complainants failed to present evidence 

concerning the importation question beyond that offered in connection with their unsuccessful 

motion for summary determination, and that therefore complainants have once again failed to 

show that the importation requirement is satisfied. Indeed, respondents argue that the motion for 

summary determination was properly denied because complainants failed to demonstrate 

importation of the particular combinations of software, chips, devices and services that are relied 

upon by complainants to make infringement claims under the asserted patents. See Resp. Br. 

at 28. 

Whether respondents' accused chips and other products can be held to infringe all the 

asserted patent claims, particularly if the accused products must be used in combination with other 

(possibly non-imported) devices or services, is a question separate from the inquiry as to whether 

accused chips or other products have been imported. Moreover, respondents do not contest 

complainants' allegation that each accused chip is imported, and that each accused product is 

20 
imported and contains, at a minimum, an accused imported chip.’ Consequently, the importation 

or sale requirement of section 337 is deemed to be satisfied as to all accused chips and products 

containing chips, except the so-called [ 1 

B. Jurisdiction 

No party contests the Commission’s in personam jurisdiction, and all have appeared and 

argued the merits of the investigation. Complainants argue that the Commission has the necessary 

subject matter and in rem jurisdiction as to all issues and products in the investigation. See 

Compl. Br. at 22-24. The Staff similarly argues that the Commission has all jurisdiction 

necessary for this investigation. See Staff Br. at 12- 13. 

Respondents do not expressly challenge the Commission’s “in rem ” or “subject matter” 

jurisdiction, but in the jurisdiction section of their brief they raise arguments concerning: (1) an 

alleged lack of infringement by the accused products, (2) an alleged failure to satisfy the 

importation requirement of section 337, and (3) an allegation that this investigation must be 

terminated as to the ‘346 patent due to a failure to of one of the co-owners of the patent to be 

joined in the investigation. See Resp. Br. at 23-33. Each of these arguments is addressed below. 

The infringement questions are fully addressed in the sections containing infringement 

analyses. Additional issues regarding the alleged lack of effective remedy for some of the accused 

products (a related issue also raised by respondents) is addressed below, or in the Recommended 

* Respondents do not bear the burden on the importation issue. Nevertheless, it is noted 

that in opposing complainants’ request for relief, respondents do not allege that their accused 

chips or other products are made in the United States, and there is no evidence that any of the 

accused chips or other products are made domestically. Indeed, complainants seek an exclusion 

order as to all of the accused products, which is by definition only effective against imported 

products. 

21 

imported and contains, at a minimum, an accused imported chip. I Consequently, the importation 

or sale requirement of section 337 is deemed to be satisfied as to all accused chips and products 

containing chips, except the so-called [ ] 

B. Jurisdiction 

No party contests the Commission's in personam jurisdiction, and all have appeared and 

argued the merits of the investigation. Complainants argue that the Commission has the necessary 

subject matter and in rem jurisdiction as to all issues and products in the investigation. See 

Compi. Br. at 22-24. The Staff similarly argues that the Commission has all jurisdiction 

necessary for this investigation. See Staff Br. at 12-13. 

Respondents do not expressly challenge the Commission's "in rem" or "subject matter" 

jurisdiction, but in the jurisdiction section of their brief they raise arguments concerning: (1) an 

alleged lack of infringement by the accused products, (2) an alleged failure to satisfy the 

importation requirement of section 337, and (3) an allegation that this investigation must be 

terminated as to the '346 patent due to a failure to of one ofthe co-owners of the patent to be 

joined in the investigation. See Resp. Br. at 23-33. Each of these arguments is addressed below. 

The infringement questions are fully addressed in the sections containing infringement 

analyses. Additional issues regarding the alleged lack of effective remedy for some of the accused 

products (a related issue also raised by respondents) is addressed below, or in the Recommended 

1 Respondents do not bear the burden on the importation issue. Nevertheless, it is noted 

that in opposing complainants' request for relief, respondents do not allege that their accused 

chips or other products are made in the United States, and there is no evidence that any of the 

accused chips or other products are made domestically. Indeed, complainants seek an exclusion 

order as to all of the accused products, which is by definition only effective against imported 

products. 

21 
Determination on the remedy issue, which will issue separately. Nevertheless, as stated above, it 

cannot be found that the so-called [ ] chips have been imported inasmuch as [ 

] infringe a patent claim. 

The importation question was already addressed above, and it was found that the 

importation requirement of section 337 has been satisfied as to all accused devices or products, 

except with respect to the [ ] chips. 

Finally, the question of ownership of the ‘346 patent, and related questions having to do 

with its proper assignment and complainants’ standing to bring this investigation, are discussed in 

detail below in section IV, which pertains exclusively to an analysis to the ‘346 patent. In 

summary, it is not found that Global Locate and Broadcom lack standing to bring the complaint 

and to prosecute this investigation, or that this investigation lacks the participation of any 

necessary party. 

Consequently, it is found that the Commission has all forms of jurisdiction necessary to 

conduct this investigation, and to issue a remedy in the event that a violation of section 337 is 

found to exist with respect to any accused device or product. 

111. General Principles of Patent Law 

A. Claim Construction 

Pursuant to the Commission’s notice of investigation, this is a patent-based investigation. 

See 71 Fed. Reg. 66193 (2006). Accordingly, all of the unfair acts alleged by complainants are 

instances of alleged infringement of the asserted patents. Any finding of infringement or 

non-infringement requires a two-step analytical approach. First, the asserted patent claims must 

22 

Determination on the remedy issue, which will issue separately. Nevertheless, as stated above, it 

cannot be found that the so-called [ ] chips have been imported inasmuch as [ 

] infringe a patent claim. 

The importation question was already addressed above, and it was found that the 

importation requirement of section 337 has been satisfied as to all accused devices or products, 

except with respect to the [ ] chips. 

Finally, the question of ownership of the '346 patent, and related questions having to do 

with its proper assignment and complainants' standing to bring this investigation, are discussed in 

detail below in section IV, which pertains exclusively to an analysis to the '346 patent. In 

summary, it is not found that Global Locate and Broadcom lack standing to bring the complaint 

and to prosecute this investigation, or that this investigation lacks the participation of any 

necessary party. 

Consequently, it is found that the Commission has all forms of jurisdiction necessary to 

conduct this investigation, and to issue a remedy in the event that a violation of section 337 is 

found to exist with respect to any accused device or product. 

III. General Principles of Patent Law 

A. Claim Construction 

Pursuant to the Commission's notice of investigation, this is a patent-based investigation. 

See 71 Fed. Reg. 66193 (2006). Accordingly, all ofthe unfair acts alleged by complainants are 

instances of alleged infringement of the asserted patents. Any finding of infringement or 

non-infringement requires a two-step analytical approach. First, the asserted patent claims must 

22 
be construed as a matter of law to determine their proper scope.2 Second, a factual determination 

must be made as to whether the properly construed claims read on the accused devices. See 

Markman v. Westview Instruments, Inc., 52 F.3d 967,976 (Fed. Cir. 1995)(en bane), afd, 517 

US. 370 (1996). 

Claim construction begins with the language of the claims themselves. Claims should be 

given their ordinary and customary meaning as understood by a person of ordinary skill in the art, 

viewing the claim terms in the context of the entire patent. Phillips v. A WH Corp., 41 5 F.3d 

1303, 13 12-1 3 (Fed. Cir. 2005), cert. denied, 546 U.S. 1 170 (2006).' With respect to claim 

preambles, the Court of Appeals for the Federal Circuit has explained that: 

[A] claim preamble has the import that the claim as a whole 

suggests for it. In other words, when the claim drafter chooses to 

use both the preamble and the body to define the subject matter of 

the claimed invention, the invention so defined, and not some other, 

is the one the patent protects. 

Eaton Corp. v. Rochell Int '1 Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (quoting Bell 

Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 61 5,620 (Fed. Cir. 

1995)). 

In some instances, claim terms do not have particular meaning in a field of art, and claim 

* Only those claim terms that are in controversy need to be construed, and only to the 

extent necessary to resolve the controversy. Vanderlande Indus. Nederland BV v. Int '1 Trade 

Comm., 366 F.3d 13 1 1, 1323 (Fed. Cir. 2004); Vivid Tech., Inc. v. American Sei. & Eng 'g, Inc. , 

200 F.3d 795, 803 (Fed. Cir. 1999). 

' Factors that may be considered when determining the level of ordinary skill in the art 

include: "( 1) the educational level of the inventor; (2) type of problems encountered in the art; (3) 

prior art solutions to those problems; (4) rapidity with which innovations are made; (5) 

sophistication of the technology; and (6) educational level of active workers in the field." 

Environmental Designs, Ltd. v. Union Oil Co., 71 3 F.2d 693,696 (Fed. Cir, 1983), cert. denied, 

464 U.S. 1043 (1984). 

23 

be construed as a matter oflaw to determine their proper scope.2 Second, a factual determination 

must be made as to whether the properly construed claims read on the accused devices. See 

Markman v. Westview Instruments, Inc., 52 F.3d 967, 97 6 (Fed. Cir. 1995)( en banc), aff'd, 517 

U.S. 370 (1996). 

Claim construction begins with the language of the claims themselves. Claims should be 

given their ordinary and customary meaning as understood by a person of ordinary skill in the art, 

viewing the claim terms in the context of the entire patent. Phillips v. A WH Corp., 415 F .3d 

1303, 1312-13 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006).3 With respectto claim 

preambles, the Court of Appeals for the Federal Circuit has explained that: 

[A] claim preamble has the import that the claim as a whole 

suggests for it. In other words, when the claim drafter chooses to 

use both the preamble and the body to define the subject matter of 

the claimed invention, the invention so defined, and not some other, 

is the one the patent protects. 

Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (quoting Bell 

Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 

1995)). 

In some instances, claim terms do not have particular meaning in a field of art, and claim 

2 Only those claim terms that are in controversy need to be construed, and only to the 

extent necessary to resolve the controversy. Vanderlande Indus. Nederland BV v. Int'l Trade 

Comm., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech., Inc. v. American Sci. & Eng'g, Inc., 

200 F.3d 795, 803 (Fed. Cir. 1999). 

3 Factors that may be considered when determining the level of ordinary skill in the art 

include: "(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) 

prior art solutions to those problems; (4) rapidity with which innovations are made; (5) 

sophistication of the technology; and (6) educational level of active workers in the field." 

Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir, 1983), cert. denied, 

464 U.S. 1043 (1984). 

23 
construction involves little more than the application of the widely accepted meaning of 

commonly understood words. Phillips, 4 15 F.3d at 13 14. In such circumstances, general purpose 

dictionaries may be helpful. In many cases, claim terms have a specialized meaning, and it is 

necessary to determine what a person of skill in the art would have understood disputed claim 

language to mean, by analyzing the words of the claims themselves, the remainder of the 

specification, the prosecution history, and extrinsic evidence concerning relevant scientific 

principles, as well as the meaning of technical terms, and the state of the art. Id. (quoting 

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 11 11, 11 16 (Fed. Cir. 

2004)). 

In cases in which the meaning of a claim term is uncertain, the specification usually is the 

best guide to the meaning of the term. Id. at 13 1 5. As a general rule, the particular examples or 

embodiments discussed in the specification are not to be read into the claims as limitations. 

Markman, 52 F.3d at 979. However, the specification is always highly relevant to the claim 

construction analysis. The specification is usually dispositive. It is the single best guide to the 

meaning of a disputed term. Phillips, 41 5 F.3d at 13 15. Moreover, “[tlhe construction that stays 

true to the claim language and most naturally aligns with the patent’s description of the invention 

will be, in the end, the correct construction,” Id. at 13 16. 

In any event, claims are not necessarily, and are not usually, limited in scope to the 

preferred embodiment. RF Delaware, Inc. v. Pacijk Keystone Techs., Inc., 326 F.3d 1255, 1263 

(Fed. Cir. 2003); Decisioning. coin, Inc, v. Federated Dep ’t Stores, Inc., 527 F.3d 1300, 13 14 

(Fed. Cir. May 7,2008) (“[The] description of a preferred embodiment, in the absence of a clear 

intention to limit claim scope, is an insufficient basis on which to narrow the claims”). 

24 

construction involves little more than the application of the widely accepted meaning of 

commonly understood words. Phillips, 415 F.3d at 1314. In such circumstances, general purpose 

dictionaries may be helpful. In many cases, claim terms have a specialized meaning, and it is 

necessary to determine what a person of skill in the art would have understood disputed claim 

language to mean, by analyzing the words of the claims themselves, the remainder of the 

specification, the prosecution history, and extrinsic evidence concerning relevant scientific 

principles, as well as the meaning of technical terms, and the state of the art. ld. (quoting 

InnovalPure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 

2004)). 

In cases in which the meaning of a claim term is uncertain, the specification usually is the 

best guide to the meaning of the term. ld. at 1315. As a general rule, the particular examples or 

embodiments discussed in the specification are not to be read into the claims as limitations. 

Markman, 52 F.3d at 979. However, the specification is always highly relevant to the claim 

construction analysis. The specification is usually dispositive. It is the single best guide to the 

meaning of a disputed term. Phillips, 415 F.3d at 1315. Moreover, "[t]he construction that stays 

true to the claim language and most naturally aligns with the patent's description of the invention 

will be, in the end, the correct construction." ld. at 1316. 

In any event, claims are not necessarily, and are not usually, limited in scope to the 

preferred embodiment. RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1263 

(Fed. Cir. 2003); Decisioningcom, Inc, v. Federated Dep't Stores, Inc., 527 F.3d 1300,1314 

(F ed. Cir. May 7, 2008) ("[The] description of a preferred embodiment, in the absence of a clear 

intention to limit claim scope, is an insufficient basis on which to narrow the claims"). 

24 
Furthermore, claim interpretations that exclude the preferred embodiment, are “rarely, if 

ever, correct and require highly persuasive evidentiary support.” Vitronics Corp. v. Conceptronic, 

Inc., 90 F.3d 1576, 1583,39 USPQ2d 1573, 1578 (Fed. Cir. 1996). Such a conclusion can be 

mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a 

clear disclaimer by the patentees during patent prosecution. Elekta Instrument v. 0. U R. Sci. Int ’I, 

214 F.3d 1302, 1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed. Cir. 2002). 

If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence 

may be considered. Extrinsic evidence consists of all evidence external to the patent and the 

prosecution history, including inventor testimony, expert testimony and learned treatises. Id. at 

13 17. Inventor testimony can be useful to shed light on the relevant art. In evaluating expert 

testimony, a court should discount any expert testimony that is clearly at odds with the claim 

construction mandated by the claims themselves, the written description, and the prosecution 

history, in other words, with the written record of the patent. Id. at 13 18. Extrinsic evidence may 

be considered if a court deems it helpful in determining the true meaning of language used in the 

patent claims. Id. 

B. Patent Infringement 

Under 35 U.S.C. §271(a), direct infringement consists of making, using, offering to sell, 

or selling a patented invention without consent of the patent owner. 

Under 35 U.S.C. §271(b), “[wlhoever actively induces infringement of a patent shall be 

liable as an infringer.” To establish liability, a patentee must prove direct infringement for each 

instance of indirect infringement. DSUMedical Corp. v. JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 

2006). “In order to succeed on a claim of inducement, the patentee must show, first that there has 

25 

Furthermore, claim interpretations that exclude the preferred embodiment, are "rarely, if 

ever, correct and require highly persuasive evidentiary support." Vitronics Corp. v. Conceptronic, 

Inc., 90 F.3d 1576, 1583,39 USPQ2d 1573, 1578 (Fed. Cir. 1996). Such a conclusion can be 

mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a 

clear disclaimer by the patentees during patent prosecution. Elekta Instrument v. 0. UR. Sci. Int'l, 

214 F.3d 1302,1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed. Cir. 2002). 

If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence 

may be considered. Extrinsic evidence consists of all evidence external to the patent and the 

prosecution history, including inventor testimony, expert testimony and learned treatises. Id. at 

1317. Inventor testimony can be useful to shed light on the relevant art. In evaluating expert 

testimony, a court should discount any expert testimony that is clearly at odds with the claim 

construction mandated by the claims themselves, the written description, and the prosecution 

history, in other words, with the written record of the patent. !d. at 1318. Extrinsic evidence may 

be considered if a court deems it helpful in determining the true meaning of language used in the 

patent claims. Id. 

B. Patent Infringement 

Under 35 U.S.C. §271(a), direct infringement consists of making, using, offering to sell, 

or selling a patented invention without consent of the patent owner. 

Under 35 U.S.C. §271(b), "[w]hoever actively induces infringement of a patent shall be 

liable as an infringer." To establish liability, a patentee must prove direct infringement for each 

instance of indirect infringement. DSU Medical Corp. v. JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 

2006). "In order to succeed on a claim of inducement, the patentee must show, first that there has 

25 
been direct infringement, and second, that the alleged infringer knowingly induced infringement 

and possessed specific intent to encourage another’s infringement.’’ Cross Medical Products, Inc. 

v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 13 12 (Fed. Cir. 2005). 

Under 35 U.S.C. tj271(c), “[wlhoever offers to sell or sells within the United States or 

imports into the United States a component of a patented machine, manufacture, combination, 

or composition, or a material or apparatus for use in practicing a patented process, constituting 

a material part of the invention, knowing the same to be specially made to or specially adapted 

for use in the infringement of the patent, and not a staple article or commodity suitable for 

substantial non-infringing use, shall be liable as a contributory infringer.” 

A seller of a component of an infringing product can also be held liable for contributory 

infringement if: (1) there is an act of direct infringement by another person; (2) the accused 

contributory infringer knows its component is included in a combination that is both patented and 

infringing; and (3) there are no substantial non-infringing uses for the accused component, i. e., the 

component is not a staple article of commerce. Carborundum Co. v. Molten Equip. Innovations, 

Inc., 72 F.3d 872, 876 (Fed. Cir. 1995). 

In a section 337 investigation, the complainant bears the burden of proving infringement 

of the asserted patent claims by a preponderance of the evidence. Certain Flooring Products, Inv. 

No. 337-TA-443, Commission Notice of Final Determination of No Violation of Section 337, 

2002 WL 448690 at 59, (March 22,2002); Enercon GmbHv. Int’l Trade Comm’n, 15 1 F.3d 1376 

(Fed. Cir. 1998). 

Each patent claim element or limitation is considered material and essential. London v. 

Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). Literal infringement of a claim 

26 

been direct infringement, and second, that the alleged infringer knowingly induced infringement 

and possessed specific intent to encourage another's infringement." Cross Medical Products, Inc. 

v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005). 

Under 35 U.S.C. §271(c), "[w]hoever offers to sell or sells within the United States or 

imports into the United States a component of a patented machine, manufacture, combination, 

or composition, or a material or apparatus for use in practicing a patented process, constituting 

a material part of the invention, knowing the same to be specially made to or specially adapted 

for use in the infringement of the patent, and not a staple article or commodity suitable for 

substantial non-infringing use, shall be liable as a contributory infringer." 

A seller of a component of an infringing product can also be held liable for contributory 

infringement if: (l) there is an act of direct infringement by another person; (2) the accused 

contributory infringer knows its component is included in a combination that is both patented and 

infringing; and (3) there are no substantial non-infringing uses for the accused component, i.e., the 

component is not a staple article of commerce. Carborundum Co. v. Molten Equip. Innovations, 

Inc., 72 F.3d 872, 876 (Fed. Cir. 1995). 

In a section 337 investigation, the complainant bears the burden of proving infringement 

of the asserted patent claims by a preponderance of the evidence. Certain Flooring Products, Inv. 

No. 337-TA-443, Commission Notice of Final Determination of No Violation of Section 337, 

2002 WL 448690 at 59, (March 22,2002); Enercon GmbHv. Int'l Trade Comm'n, 151 F.3d 1376 

(Fed. Cir. 1998). 

Each patent claim element or limitation is considered material and essential. London v. 

Carson Pirie Scott & Co., 946 F.2d 1534,1538 (Fed. Cir. 1991). Literal infringement ofa claim 
occurs when every limitation recited in the claim appears in the accused device, i. e., when the 

properly construed claim reads on the accused device exactly. Amhil Enters., Ltd. v. Wma, Inc., 

81 F.3d 1554, 1562 (Fed. Cir. 1996); Southwall Tech. v. Cardinal IG Co., 54 F.3d 1570, 1575 

(Fed Cir. 1995). 

If the accused product does not literally infringe the patent claim, infringement might be 

found under the doctrine of equivalents. The Supreme Court has described the essential inquiry of 

the doctrine of equivalents analysis in terms of whether the accused product or process contains 

elements identical or equivalent to each claimed element of the patented invention. 

Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17,40 (1997). 

Under the doctrine of equivalents, infringement may be found if the accused product or 

process performs substantially the same function in substantially the same way to obtain 

substantially the same result. Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. 

Cir. 1993). The doctrine of equivalents does not allow claim limitations to be ignored. Evidence 

must be presented on a limitation-by-limitation basis, and not for the invention as a whole. 

Warner-Jenkinson, 520 U.S. at 29; Hughes Aircraft Co. v. US., 86 F.3d 1566 (Fed. Cir. 1996). 

Thus, if an element is missing or not satisfied, infringement cannot be found under the doctrine of 

equivalents as a matter of law. See, e.g., Wright MedicaE, 122 F.3d 1440, 1444 (Fed. Cir. 1997); 

Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394,398 (Fed. Cir. 1994); London v. Carson 

Pirie Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991); Becton Dickinson and Co. v. C.R. 

Bard, Inc., 922 F.2d 792,798 (Fed. Cir. 1990). 

The concept of equivalency cannot embrace a structure that is specifically excluded from 

the scope of the claims. Athletic Alternatives v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 

27 

occurs when every limitation recited in the claim appears in the accused device, i.e., when the 

properly construed claim reads on the accused device exactly. Amhil Enters., Ltd v. Wawa, Inc., 

81 F.3d 1554, 1562 (Fed. Cir. 1996); Southwall Tech. v. Cardinal IG Co., 54 F.3d 1570,1575 

(Fed Cir. 1995). 

If the accused product does not literally infringe the patent claim, infringement might be 

found under the doctrine of equivalents. The Supreme Court has described the essential inquiry of 

the doctrine of equivalents analysis in terms of whether the accused product or process contains 

elements identical or equivalent to each claimed element of the patented invention. 

Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997). 

Under the doctrine of equivalents, infringement may be found if the accused product or 

process performs substantially the same function in substantially the same way to obtain 

substantially the same result. Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. 

Cir. 1993). The doctrine of equivalents does not allow claim limitations to be ignored. Evidence 

must be presented on a limitation-by-limitation basis, and not for the invention as a whole. 

Warner-Jenkinson, 520 U.S. at 29; Hughes Aircraft Co. v. Us., 86 F.3d 1566 (Fed. Cir. 1996). 

Thus, if an element is missing or not satisfied, infringement cannot be found under the doctrine of 

equivalents as a matter of law. See, e.g., Wright Medical, 122 F.3d 1440, 1444 (Fed. Cir. 1997); 

Doily, Inc. v. Spalding & Evenjlo Cos., Inc., 16 F.3d 394, 398 (Fed. Cir. 1994); London v. Carson 

Pirie Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991); Becton Dickinson and Co. v. CR. 

Bard, Inc., 922 F.2d 792, 798 (Fed. Cir. 1990). 

The concept of equivalency cannot embrace a structure that is specifically excluded from 

the scope of the claims. Athletic Alternatives v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 

27 
1996). In applying the doctrine of equivalents, the Commission must be informed by the 

fundamental principle that a patent's claims define the limits of its protection. See Charles 

Greiner & Co. v. Mari-Med. Mfg., Inc., 92 F.2d 1031, 1036 (Fed. Cir. 1992). As the Supreme 

Court has affirmed: 

Each element contained in a patent claim is deemed material to 

defining the scope of the patented invention, and thus the doctrine 

of equivalents must be applied to individual elements of the claim, 

not to the invention as a whole. It is important to ensure that the 

application of the doctrine, even as to an individual element, is not 

allowed such broad play as to effectively eliminate that element in 

its entirety. 

Warner-Jenkinson, 520 U.S. at 29. 

Prosecution history estoppel may bar the patentee from asserting equivalents if the scope 

of the claims has been narrowed by amendment during prosecution. A narrowing amendment 

may occur when either a preexisting claim limitation is narrowed by amendment, or a new claim 

limitation is added by amendment. These decisions make no distinction between the narrowing of 

a preexisting limitation and the addition of a new limitation. Either amendment will give rise to a 

presumptive estoppel if made for a reason related to patentability. Honeywell Int 'I Inc. v. 

Hamilton Sundstrand Corp., 370 F.3d 113 1, 1139-41 (Fed. Cir. 2004), cert. denied, 545 U.S. 

1127 (2005)(citing Warner-Jenkinson, 520 U.S. at 22,33-34; and Festo Corp. v. Shoketsu 

Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,733-34,741 (2002)). The presumption of estoppel 

may be rebutted if the patentee can demonstrate that: (1) the alleged equivalent would have been 

unforeseeable at the time the narrowing amendment was made; (2) the rationale underlying the 

narrowing amendment bore no more than a tangential relation to the equivalent at issue; or (3) 

there was some other reason suggesting that the patentee could not reasonably have been expected 

28 

1996). In applying the doctrine of equivalents, the Commission must be informed by the 

fundamental principle that a patent's claims define the limits of its protection. See Charles 

Greiner & Co. v. Mari-Med. Mfg., Inc., 92 F.2d 1031,1036 (Fed. Cir. 1992). As the Supreme 

Court has affirmed: 

Each element contained in a patent claim is deemed material to 

defining the scope of the patented invention, and thus the doctrine 

of equivalents must be applied to individual elements of the claim, 

not to the invention as a whole. It is important to ensure that the 

application of the doctrine, even as to an individual element, is not 

allowed such broad playas to effectively eliminate that element in 

its entirety. 

Warner-Jenkinson, 520 U.S. at 29. 

Prosecution history estoppel may bar the patentee from asserting equivalents if the scope 

of the claims has been narrowed by amendment during prosecution. A narrowing amendment 

may occur when either a preexisting claim limitation is narrowed by amendment, or a new claim 

limitation is added by amendment. These decisions make no distinction between the narrowing of 

a preexisting limitation and the addition of a new limitation. Either amendment will give rise to a 

presumptive estoppel ifmade for a reason related to patentability. Honeywell Int'l Inc. v. 

Hamilton Sundstrand Corp., 370 F.3d 1131, 1139-41 (Fed. Cir. 2004), cert. denied, 545 U.S. 

1127 (2005)(citing Warner-Jenkinson, 520 U.S. at 22,33-34; and Festo Corp. v. Shoketsu 

Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34, 741 (2002)). The presumption of estoppel 

may be rebutted if the patentee can demonstrate that: (l) the alleged equivalent would have been 

unforeseeable at the time the narrowing amendment was made; (2) the rationale underlying the 

narrowing amendment bore no more than a tangential relation to the equivalent at issue; or (3) 

there was some other reason suggesting that the patentee could not reasonably have been expected 

28 
to have described the alleged equivalent. Honeywell, 370 F.3d at 1140 (citing, inter alia, Festo 

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)(en bane)). 

C. Validitv 

One cannot be held liable for practicing an invalid patent claim. See Pandrol USA, LP v. 

AirBoss Railway Prods., he., 320 F.3d 1354, 1365 (Fed. Cir. 2003). However, the claims of a 

patent are presumed to be valid. 35 U.S.C. 6 282; DMIInc. v. Deere & Co., 802 F.2d 421 (Fed. 

Cir. 1986). Although a complainant has the burden of proving a violation of section 337, it can 

rely on this presumption of validity. A respondent that has raised patent invalidity as an 

affirmative defense must overcome the presumption by “clear and convincing” evidence of 

invalidity. Checkpoint Systems, Inc. v. United States Int ’1 Trade Comm ’n, 54 F.3d 756,761 (Fed. 

Cir. 1995). 

1. Anticipation 

Pursuant to 35 U.S.C. 3 102, prior art anticipates a patent claim when a single piece of art 

discloses each and every limitation of the claimed invention. See Schering Corp. v. Geneva 

Pharms., 339 F.3d 1373,1377 (Fed. Cir. 2003); C.R. Bardv. M3 Sys., 157 F.3d 1340, 1349 (Fed. 

Cir. 2000). 

The disclosure by an invalidating reference need not be express, but may anticipate by 

inherency where such inherency would be appreciated by one of ordinary skill in the art. EM1 

Group North America, Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1350 (Fed. Cir. 

2001). Anticipation does not require that the reference “teach” the subject matter of the patent. It 

is necessary only that the claims being challenged “read on” something that is disclosed in the 

reference. Celeritas Techs., Ltd. v. Rockwell Int’l, 150 F.3d 1354, 1361 (Fed. Cir. 1998). 

29 

to have described the alleged equivalent. Honeywell, 370 F.3d at 1140 (citing, inter alia, Festo 

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)(en banc)). 

C. Validity 

One cannot be held liable for practicing an invalid patent claim. See Pandrol USA, LP v. 

AirBoss Railway Prods., Inc., 320 F.3d 1354, 1365 (Fed. Cir. 2003). However, the claims of a 

patent are presumed to be valid. 35 U.S.c. § 282; DMI Inc. v. Deere & Co., 802 F.2d 421 (Fed. 

Cir. 1986). Although a complainant has the burden of proving a violation of section 337, it can 

rely on this presumption of validity. A respondent that has raised patent invalidity as an 

affirmative defense must overcome the presumption by "clear and convincing" evidence of 

invalidity. Checkpoint Systems, Inc. v. United States Int 'l Trade Comm 'n, 54 F.3d 756, 761 (Fed. 

Cir. 1995). 

1. Anticipation 

Pursuant to 35 U.S.c. § 102, prior art anticipates a patent claim when a single piece of art 

discloses each and every limitation of the claimed invention. See Schering Corp. v. Geneva 

Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003); CR. Bard v. M3 Sys., 157 F.3d 1340, 1349 (Fed. 

Cir. 2000). 

The disclosure by an invalidating reference need not be express, but may anticipate by 

inherency where such inherency would be appreciated by one of ordinary skill in the art. EMI 

Group North America, Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1350 (Fed. Cir. 

2001). Anticipation does not require that the reference "teach" the subject matter of the patent. It 

is necessary only that the claims being challenged "read on" something that is disclosed in the 

reference. Celeritas Techs., Ltd v. Rockwell Int'l, 150 F.3d 1354, 1361 (Fed. Cir. 1998). 

29 
Anticipation, like all forms of patent invalidity, must be established by clear and 

convincing evidence. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). 

Whether a patent claim is anticipated is a question of fact. See Smith Kline Beecham Corp. v. 

Apotex Corp. 403 F.3d 1331, 1343 (Fed. Cir. 2005). 

2. Obviousness 

Obviousness is grounded in 35 U.S.C. 3 103, which provides, inter alia, that: 

A patent may not be obtained though the invention is not identically 

disclosed or described as set forth in section 102 of this title, if the 

differences between the subject matter sought to be patented and the 

prior art are such that the subject matter as a whole would have been 

obvious at the time the invention was made to a person having 

ordinary skill in the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner in which the 

invention was made. 

35 U.S.C. 3 103(a). 

An allegation of obviousness is evaluated under the so-called Graham factors: (1) the 

scope and content of the prior art; (2) the differences between the prior art and the claims at issue; 

(3) the level of ordinary skill in the art; and (4) objective evidence, so-called “secondary 

considerations,” e.g., commercial success, long felt need, and failure of others of nonobviousness. 

See Graham v. John Deere Co., 383 US. 1, 13-17 (1966); Dystar Textilfarben GmbHv. C.H. 

Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). 

“Thus evidence arising out of the so-called ‘secondary considerations’ must always when 

present be considered en route to a determination of obviousness.” StrutoJex, Inc. v. Aeroquip 

Corp., 713 F.2d 1530, 1536 (Fed. Cir. 1983). Secondary considerations, such as commercial 

success, will not always dislodge a determination of obviousness based on analysis of the prior 

art, See KSR Int ’1 Co. v. Telefex Inc. , No. 04- 1350, __ U.S. __ , 127 S.Ct. 1727, 1745 (2007) 

30 

Anticipation, like all forms of patent invalidity, must be established by clear and 

convincing evidence. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). 

Whether a patent claim is anticipated is a question of fact. See Smith Kline Beecham Corp. v. 

Apotex Corp. 403 F.3d 1331,1343 (Fed. Cir. 2005). 

2. Obviousness 

Obviousness is grounded in 35 U.S.C. § 103, which provides, inter alia, that: 

A patent may not be obtained though the invention is not identically 

disclosed or described as set forth in section 102 of this title, if the 

differences between the subject matter sought to be patented and the 

prior art are such that the subject matter as a whole would have been 

obvious at the time the invention was made to a person having 

ordinary skill in the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner in which the 

invention was made. 

35 U.S.C. § 103(a). 

An allegation of obviousness is evaluated under the so-called Graham factors: (1) the 

scope and content of the prior art; (2) the differences between the prior art and the claims at issue; 

(3) the level of ordinary skill in the art; and (4) objective evidence, so-called "secondary 

considerations," e.g., commercial success, long felt need, and failure of others of nonobviousness. 

See Graham v. John Deere Co., 383 U.S. 1,13-17 (1966); Dystar Textilfarben GmbHv. C.H 

Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). 

"Thus evidence arising out of the so-called 'secondary considerations' must always when 

present be considered en route to a determination of obviousness." Strata flex, Inc. v. Aeroquip 

Corp., 713 F.2d 1530,1536 (Fed. Cir. 1983). Secondary considerations, such as commercial 

success, will not always dislodge a determination of obviousness based on analysis of the prior 

art. See KSR Int'l Co. v. Teleflex Inc., No. 04-1350, _ U.S. _, 127 S.Ct. 1727, 1745 (2007) 

30 
(commercial success did not alter conclusion of obviousness). 

“One of the ways in which a patent’s subject matter can be proved obvious is by noting 

that there existed at the time of invention a known problem for which there was an obvious 

solution encompassed by the patent’s claims.” KSR Int’Z, 127 S.Ct. at 1742. “[Alny need or 

problem known in the field of endeavor at the time of invention and addressed by the patent can 

provide a reason for Combining the elements in the manner claimed.” Id. 

Specific teachings, suggestions or motivations to combine prior art may provide helpful 

insights into the state of the art at the time of alleged invention. Id. at 1741. Nevertheless, “an 

obviousness analysis cannot be confined by a formalistic conception of the words teaching, 

suggestion, and motivation, or by overemphasis on the importance of published articles and the 

explicit content of issued patents. The diversity of inventive pursuits and of modern technology 

counsels against limiting the analysis in this way.” Id. “Under the correct analysis, any need or 

problem known in the field of endeavor at the time of invention and addressed by the patent can 

provide a reason for combining the elements in the manner claimed.” Id. at 1742. A “person of 

ordinary skill is also a person of ordinary creativity . . . .” Id. 

The Federal Circuit has harmonized the KSR opinion with many prior circuit court 

opinions by holding that when a patent challenger contends that a patent is invalid for obviousness 

based on a combination of prior art references, “the burden falls on the patent challenger to show 

by clear and convincing evidence that a person of ordinary skill in the art would have had reason 

to attempt to make the composition or device, or carry out the claimed process, and would have 

had a reasonable expectation of success in doing so. PharmaStem Therapeutics, Inc. v. Viacell, 

Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)(citing Medichem S.A. v. RoZabo S.L., 437 F.3d 1175, 

31 

(commercial success did not alter conclusion of obviousness). 

"One of the ways in which a patent's subject matter can be proved obvious is by noting 

that there existed at the time of invention a known problem for which there was an obvious 

solution encompassed by the patent's claims." KSR Int'l, 127 S.Ct. at 1742. "[A]ny need or 

problem known in the field of endeavor at the time of invention and addressed by the patent can 

provide a reason for combining the elements in the manner claimed." Id. 

Specific teachings, suggestions or motivations to combine prior art may provide helpful 

insights into the state of the art at the time of alleged invention. Id. at 1741. Nevertheless, "an 

obviousness analysis cannot be confined by a formalistic conception of the words teaching, 

suggestion, and motivation, or by overemphasis on the importance of published articles and the 

explicit content of issued patents. The diversity of inventive pursuits and of modem technology 

counsels against limiting the analysis in this way." Id. "Under the correct analysis, any need or 

problem known in the field of endeavor at the time of invention and addressed by the patent can 

provide a reason for combining the elements in the manner claimed." Id. at 1742. A "person of 

ordinary skill is also a person of ordinary creativity .... " Id. 

The Federal Circuit has harmonized the KSR opinion with many prior circuit court 

opinions by holding that when a patent challenger contends that a patent is invalid for obviousness 

based on a combination of prior art references, "the burden falls on the patent challenger to show 

by clear and convincing evidence that a person of ordinary skill in the art would have had reason 

to attempt to make the composition or device, or carry out the claimed process, and would have 

had a reasonable expectation of success in doing so. PharmaStem Therapeutics, Inc. v. ViaCell, 

Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)(citing Medichem SA. v. Rolabo SL., 437 F.3d 1175, 

31 
1164 (Fed. Cir. 2006)); Noelle v. Lederman, 355 F.3d 1343, 1351-52 (Fed. Cir. 2004); Brown & 

Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1121 (Fed .Cir. 2000) and 

KSR, 127 S.Ct. at 1740 (“a combination of elements ‘must do more than yield a predictable result’; 

combining elements that work together ‘in an unexpected and fmitful manner’ would not have 

been obvious”). 

The ultimate determination of whether an invention would have been obvious is a legal 

conclusion based on underlying findings of fact. In re Dembiczak, 175 F.3d 994,998 (Fed. Cir. 

1999). 

3. The Section 112 Enablement Requirement 

The enablement requirement of section 1 12 of the Patent Act ensures that the inventor 

provides sufficient information about the claimed invention in a patent so that one of ordinary 

skill in the art at the time could make and use the claimed invention without undue 

experimentation. Failure to do so leads to patent invalidity. See 35 U.S.C. 5 112’7 1; PPG 

Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1563 (Fed. Cir. 1996). 

4. Indefiniteness Under Section 112 

The definiteness requirement of 35 U.S.C. 5 112 ensures that the patent claims particularly 

point out and distinctly claim the subject matter that the patentee regards to be the invention. See 

35 U.S.C. 5 112,7 2; Metabolite Labs., Inc. v. Laboratory Corp. ofAmerica Holdings, 370 F.3d 

1354, 1366 (Fed. Cir. 2004). If a claim’s legal scope is not clear enough that a person of ordinary 

skill in the art could determine whether a particular product infringes or not, it is indefinite and 

invalid. Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003). It 

has been found that: 

32 

1164 (Fed. Cir. 2006)); Noelle v. Lederman, 355 F.3d 1343, 1351-52 (Fed. Cir. 2004); Brown & 

Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1121 (Fed .Cir. 2000) and 

KSR, 127 S.Ct. at 1740 ("a combination of elements 'must do more than yield a predictable result'; 

combining elements that work together 'in an unexpected and fruitful manner' would not have 

been obvious"). 

The ultimate determination of whether an invention would have been obvious is a legal 

conclusion based on underlying findings of fact. In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 

1999). 

3. The Section 112 Enablement Requirement 

The enablement requirement of section 112 of the Patent Act ensures that the inventor 

provides sufficient information about the claimed invention in a patent so that one of ordinary 

skill in the art at the time could make and use the claimed invention without undue 

experimentation. Failure to do so leads to patent invalidity. See 35 U.S.C. § 112, ~ 1; PPG 

Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,1563 (Fed. Cir.1996). 

4. Indefiniteness Under Section 112 

The definiteness requirement of35 U.S.C. § 112 ensures that the patent claims particularly 

point out and distinctly claim the subject matter that the patentee regards to be the invention. See 

35 U.S.C. § 112, ~ 2; Metabolite Labs., Inc. v. Laboratory Corp. of America Holdings, 370 F.3d 

1354, 1366 (Fed. Cir. 2004). If a claim's legal scope is not clear enough that a person of ordinary 

skill in the art could determine whether a particular product infringes or not, it is indefinite and 

invalid. Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003). It 

has been found that: 

32 
When a proposed construction requires that an artisan make a 

separate infringement determination for every set of circumstances 

in which the composition may be used, and when such 

determinations are likely to result in differing outcomes (sometimes 

infringing and sometimes not), that construction is likely to be 

indefinite. 

HaEliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). 

5. Patentable Subiect Matter: 35 U.S.C. 9 101 

Section 101 of the Patent Act provides: “Whoever invents or discovers any new and 

useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of 

this title.” 35 U.S.C. $101. One may allege that a patent claim is invalid because it purports to 

cover something that is not patentable under the statute. However, the Federal Circuit reiterated 

last year that patentable subject matter under the current Act is “extremely broad.” See In re 

Corniskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007). 

Of particular importance to respondents’ section 10 1 arguments in this investigation is the 

fact that the Supreme Court has held that a mere mathematical formula, even if novel and useful, 

is not patentable subject matter. Parker v. Flook, 437 U.S. 584, 585 (1978). Indeed, a 

mathematical algorithm is not patentable to the extent that it presents “merely abstract ideas.” 

State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. Cir. 

1998). Nevertheless, a patent claim that transforms data and presents a practical application of the 

algorithm is patentable if it produces a “useful, concrete and tangible result.’’ Id. Moreover, “a 

process claim reciting an algorithm could state statutory subject matter if it (1) is tied to a machine 

or (2) creates or involves a composition of matter or manufacture.” Corniskey, 499 F.3d at 1377 

For example, the Federal Circuit has “found processes involving mathematical algorithms used in 

33 

When a proposed construction requires that an artisan make a 

separate infringement determination for every set of circumstances 

in which the composition may be used, and when such 

determinations are likely to result in differing outcomes (sometimes 

infringing and sometimes not), that construction is likely to be 

indefinite. 

Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). 

5. Patentable Subject Matter: 35 U.S.c. § 101 

Section 101 ofthe Patent Act provides: "Whoever invents or discovers any new and 

useful process, machine, manufacture, or composition of matter, or any new and useful 

improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of 

this title." 35 U.S.c. §101. One may allege that a patent claim is invalid because it purports to 

cover something that is not patentable under the statute. However, the Federal Circuit reiterated 

last year that patentable subject matter under the current Act is "extremely broad." See In re 

Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007). 

Of particular importance to respondents' section 101 arguments in this investigation is the 

fact that the Supreme Court has held that a mere mathematical formula, even if novel and useful, 

is not patentable subject matter. Parker v. Flook, 437 U.S. 584,585 (1978). Indeed, a 

mathematical algorithm is not patentable to the extent that it presents "merely abstract ideas." 

State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. Cir. 

1998). Nevertheless, a patent claim that transforms data and presents a practical application of the 

algorithm is patentable if it produces a "useful, concrete and tangible result." Id Moreover, "a 

process claim reciting an algorithm could state statutory subject matter ifit (1) is tied to a machine 

or (2) creates or involves a composition of matter or manufacture." Comiskey, 499 F.3d at 1377. 

For example, the Federal Circuit has "found processes involving mathematical algorithms used in 

33 
computer technology patentable because they claimed practical applications and were tied to 

specific machines.” Id. 

I). Inequitable Conduct 

Applicants for patents have a duty to prosecute patents in the U.S. Patent and Trademark 

Office (“PTO”) with candor and good faith, which includes a duty to disclose information known 

to the applicants to be material to patentability. Pharmacia Corp. v. Par Pharm, Inc., 41 7 F.3d 

1369,373 (Fed. Cir. 2005). A breach of this duty may render the patent that issues unenforceable 

for inequitable conduct. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 

2007). 

Thus, a patent is unenforceable if the patentee withheld material information with an intent 

to deceive or mislead the PTO. See Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 

1128 (Fed. Cir. 2006). Intent is a subjective inquiry based on all the evidence, including evidence 

of good faith. See Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed. 

Cir. 1988) (en banc in relevant part). A finding of deceptive intent requires clear and convincing 

evidence. See Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931,939 (Fed. Cir. 1990). 

“[Gleneralized allegations lack the particularity required to meet the threshold level of deceptive 

intent necessary for a finding of inequitable conduct.” Sanofi-Synthelabo v. Apotex, Inc. 470 F.3d 

1368, 1381 (Fed. Cir. 2006). Indeed, an intent to deceive, “cannot be ‘inferred solely from the 

fact that information was not disclosed; there must be a factual basis for a finding of deceptive 

intent’.’’ Purdue Pharma, L.P., 438 F.3d at 1134 (quoting Hebert v. Lisle Corp., 99 F.3d 1109, 

1 1 16 (Fed. Cir. 1996)). 

34 

computer technology patentable because they claimed practical applications and were tied to 

specific machines." Id 

D. Inequitable Conduct 

Applicants for patents have a duty to prosecute patents in the U.S. Patent and Trademark 

Office ("PTO") with candor and good faith, which includes a duty to disclose information known 

to the applicants to be material to patentability. Pharmacia Corp. v. Par Pharm, Inc., 417 F.3d 

1369,373 (Fed. Cir. 2005). A breach of this duty may render the patent that issues unenforceable 

for inequitable conduct. Cargill, Inc. v. Can bra Foods, Ltd, 476 F.3d 1359, 1363 (Fed. Cir. 

2007). 

Thus, a patent is unenforceable if the patentee withheld material information with an intent 

to deceive or mislead the PTO. See Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 

1128 (Fed. Cir. 2006). Intent is a subjective inquiry based on all the evidence, including evidence 

of good faith. See Kingsdown Med Consultants, Ltd v. Hollister, Inc., 863 F.2d 867, 876 (Fed. 

Cir. 1988) (en banc in relevant part). A finding of deceptive intent requires clear and convincing 

evidence. See Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 939 (Fed. Cir. 1990). 

"[G]eneralized allegations lack the particularity required to meet the threshold level of deceptive 

intent necessary for a finding of inequitable conduct." Sanofi-Synthelabo v. Apotex, Inc. 470 F.3d 

1368, 1381 (Fed. Cir. 2006). Indeed, an intent to deceive, "cannot be 'inferred solely from the 

fact that information was not disclosed; there must be a factual basis for a finding of deceptive 

intent'." Purdue Pharma, L.P., 438 F.3d at 1134 (quoting Hebert v. Lisle Corp., 99 F.3d 1109, 

1116 (Fed. Cir. 1996)). 

34 
In determining whether there has been inequitable conduct, a court (1) determines whether 

the withheld information meets a threshold level of materiality and whether the applicant’s 

conduct at issue meets a threshold level of intent to deceive, and (2) weighs the materiality and 

intent in light of the circumstances to determine whether the applicant’s conduct is so culpable 

that the patent should be held unenforceable. Cargill, 476 F.3d at 1363. 

IV. U.S. Patent No. 6,606,346 (“the ‘346 Patent”) 

A. Global Locate’s Standing 

According to the first page of United States Patent No. 6,606,346, entitled “Method and 

Apparatus for Computing Signal Correlation,” it issued to Charles Abraham and Donald L. Fuchs, 

on August 12,2003, based on an application filed on May 18,2001, and was assigned to Global 

Locate, Inc. See JX-2 (‘346 patent). Thus, on the face of the evidence, Global Locate owns the 

‘346 patent, and has standing to bring that portion of the complaint and investigation addressing 

the patent. 

Respondents argue that a closer examination of the facts shows that Global Locate is at 

best only a co-owner of the ‘346 patent, and that complainants have failed to establish that by 

themselves they have sufficient standing to bring a complaint with respect to the ‘346 patent. 

See Resp. Br. at 28-32 (citing Lujan v. Defenders of Wildlife, 504 US. 555,561 (1992) (the issue 

of standing is an indispensable part of a plaintiffs case)); Resp. Reply at 6-7. Thus, respondents 

argue, this investigation must be terminated as to the ‘346 patent for lack of jurisdiction. See 

Resp. Br. at 28,32-33 (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995) 

(en bane) (lack of standing raises a question of jurisdiction)). 

In particular, respondents argue that when one of the named inventors on the ‘346 patent, 

35 

In determining whether there has been inequitable conduct, a court (1) determines whether 

the withheld information meets a threshold level of materiality and whether the applicant's 

conduct at issue meets a threshold level of intent to deceive, and (2) weighs the materiality and 

intent in light of the circumstances to determine whether the applicant's conduct is so culpable 

that the patent should be held unenforceable. Cargill, 476 F.3d at 1363. 

IV. U.S. Patent No. 6,606,346 ("the '346 Patent") 

A. Global Locate's Standing 

According to the first page of United States Patent No. 6,606,346, entitled "Method and 

Apparatus for Computing Signal Correlation," it issued to Charles Abraham and Donald L. Fuchs, 

on August 12,2003, based on an application filed on May 18,2001, and was assigned to Global 

Locate, Inc. See JX-2 ('346 patent). Thus, on the face of the evidence, Global Locate owns the 

'346 patent, and has standing to bring that portion of the complaint and investigation addressing 

the patent. 

Respondents argue that a closer examination of the facts shows that Global Locate is at 

best only a co-owner of the '346 patent, and that complainants have failed to establish that by 

themselves they have sufficient standing to bring a complaint with respect to the '346 patent. 

See Resp. Br. at 28-32 (citing Lujan v. Defenders of Wildlife, 504 U.S. 555,561 (1992) (the issue 

of standing is an indispensable part of a plaintiffs case»; Resp. Reply at 6-7. Thus, respondents 

argue, this investigation must be terminated as to the' 346 patent for lack of jurisdiction. See 

Resp. Br. at 28,32-33 (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995) 

(en bane) (lack of standing raises a question of jurisdiction». 

In particular, respondents argue that when one of the named inventors on the '346 patent, 

35 
Charles Abraham, conceived of his invention in 1999, he worked at the Magellan Corporation 

(“Magellan”), and that his employment was subject to a prior written agreement whereby [ 

] Although Abraham left Magellan to work 

for Global Locate, where he subsequently applied for the ‘346 patent, it is argued that no 

assignment of Abraham’s work that led to the patent was ever made by Magellan to Global 

Locate. Respondents further argue that to this day, despite a settlement of trade secret litigation 

between Magellan and Global Locate that pre-dates the application for the ‘346 patent, Abraham’s 

contribution to the patent has never been assigned to Global Locate. Thus, respondents submit 

that without the joinder of Magellan to this investigation, the current complainants (Global Locate 

and Broadcom) lack standing to bring this investigation or otherwise sue under the ‘346 patent. 

See Resp. Br. at 28-33. 

It must be observed that respondents’ arguments concerning the conception and ownership 

of the ‘346 patent and its claimed invention are not consistent. For example, in certain parts of 

respondents’ briefs, they plainly argue that Abraham conceived of the claimed invention while at 

Magellan. See, e.g., Resp. Br. at 28 (section heading “Charles Abraham Assigned the ‘346 

Invention to Magellan”), 30 [ 

1 Yet7 

in other instances, respondents argue in a different manner so as to suggest that Abraham had no 

role in the development of the claimed invention. See, e.g., Id. at 28 (“If, as Global Locate claims, 

Charles Abraham conceived the invention claimed in the ‘346 patent in October 1999 . . . .7. 

Indeed, in other portions of their brief, respondents argue that Abraham did not conceive of the 

claimed invention at all, but that he stole the invention (which they also argue is not a genuine 

36 

Charles Abraham, conceived of his invention in 1999, he worked at the Magellan Corporation 

("Magellan"), and that his employment was subject to a prior written agreement whereby [ 

] Although Abraham left Magellan to work 

for Global Locate, where he subsequently applied for the '346 patent, it is argued that no 

assignment of Abraham's work that led to the patent was ever made by Magellan to Global 

Locate. Respondents further argue that to this day, despite a settlement of trade secret litigation 

between Magellan and Global Locate that pre-dates the application for the '346 patent, Abraham's 

contribution to the patent has never been assigned to Global Locate. Thus, respondents submit 

that without the joinder of Magellan to this investigation, the current complainants (Global Locate 

and Broadcom) lack standing to bring this investigation or otherwise sue under the '346 patent. 

See Resp. Br. at 28-33. 

It must be observed that respondents' arguments concerning the conception and ownership 

ofthe '346 patent and its claimed invention are not consistent. For example, in certain parts of 

respondents' briefs, they plainly argue that Abraham conceived of the claimed invention while at 

Magellan. See, e.g., Resp. Br. at 28 (section heading "Charles Abraham Assigned the '346 

Invention to Magellan"), 30 [ 

] Yet, 

in other instances, respondents argue in a different manner so as to suggest that Abraham had no 

role in the development of the claimed invention. See, e.g., Id. at 28 ("If, as Global Locate claims, 

Charles Abraham conceived the invention claimed in the '346 patent in October 1999 .... "). 

Indeed, in other portions of their brief, respondents argue that Abraham did not conceive of the 

claimed invention at all, but that he stole the invention (which they also argue is not a genuine 

36 
invention but is invalid) from yet another Magellan employee, and that Abraham subsequently 

obtained the ‘346 patent through the destruction of evidence, intentional deception and fraud. See 

Id. at 254-260. The question of fraud on the Patent Office is discussed in a separate section of the 

Initial Determination on the question of inequitable conduct. As will be seen in detail below, 

whether Abraham or another Magellan employee conceived of the ‘346 patent’s invention is 

immaterial to the outcome of the ownership and jurisdictional question. 

Complainants address respondents’ allegations concerning ownership of the ‘346 patent in 

their reply brief, with the assumption that Charles Abraham is a co-inventor of the patent. They 

address the alleged fraud issue in other portions of their briefs. Complainants submit that contrary 

to respondents’ arguments, the prior litigation involving Magellan did indeed resolve the question 

of whether or not Global Locate could apply for the ‘346 patent. In addition, complainants argue 

that Magellan never claimed ownership of the ‘346 patent when the application was filed in 2001; 

when the patent issued in 2003; when Broadcom acquired Global Locate in 2007; or when 

Magellan was subpoenaed by both the SiRF respondents and Global Locate in this investigation. 

See Compl. Reply at 26-27. 

The Staff anticipated (undoubtedly based on prior events and arguments) that the issue of 

alleged co-ownership by Magellan would be raised by respondents in connection with their 

inequitable conduct arguments. Thus, the Staff briefed this issue in connection with, and in a 

manner appropriate to, the question of inequitable conduct. In any event, it is clear from the 

Staffs arguments and citations to the record that it does not believe that possible Magellan 

ownership should be at issue in view of the litigation settlement between Magellan and Global 

37 

invention but is invalid) from yet another Magellan employee, and that Abraham subsequently 

obtained the' 346 patent through the destruction of evidence, intentional deception and fraud. See 

fd. at 254-260. The question of fraud on the Patent Office is discussed in a separate section of the 

Initial Determination on the question of inequitable conduct. As will be seen in detail below, 

whether Abraham or another Magellan employee conceived of the' 346 patent's invention is 

immaterial to the outcome of the ownership and jurisdictional question. 

Complainants address respondents' allegations concerning ownership of the '346 patent in 

their reply brief, with the assumption that Charles Abraham is a co-inventor of the patent. They 

address the alleged fraud issue in other portions of their briefs. Complainants submit that contrary 

to respondents' arguments, the prior litigation involving Magellan did indeed resolve the question 

of whether or not Global Locate could apply for the '346 patent. In addition, complainants argue 

that Magellan never claimed ownership of the '346 patent when the application was filed in 2001; 

when the patent issued in 2003; when Broadcom acquired Global Locate in 2007; or when 

Magellan was subpoenaed by both the SiRF respondents and Global Locate in this investigation. 

See Compi. Reply at 26-27. 

The Staff anticipated (undoubtedly based on prior events and arguments) that the issue of 

alleged co-ownership by Magellan would be raised by respondents in connection with their 

inequitable conduct arguments. Thus, the Staff briefed this issue in connection with, and in a 

manner appropriate to, the question of inequitable conduct. In any event, it is clear from the 

Staffs arguments and citations to the record that it does not believe that possible Magellan 

ownership should be at issue in view of the litigation settlement between Magellan and Global 

37 
Locate. The Staff also notes that Magellan has never asserted ownership over any right to the 

‘346 patent. See Staff Br. at 28-29. 

Complainants do not contest the fact that any conception of the claimed invention by 

Charles Abraham would have taken place in 1999 while he was employed by Magellan. Indeed, 

complainants rely on an October 1999 conception and spring 2000 reduction to practice in 

connection with their arguments relating to the validity of the ‘346 patent, and set forth evidence 

to that effect. See, e.g., Compl. Reply at 23-25 (“The Asserted Claims of the ‘346 Patent Were 

Conceived by October 1999 and Reduced to Practice by June 2000”). Yet, with respect to the 

alleged [ ] and Magellan’s current 

ownership (or lack of ownership) of the invention, the parties’ arguments cannot be reconciled. 

Complainants and the Staff do, however, make compelling arguments that are dispositive of the 

issue. In short, the claimed invention is owned by Global Locate. 

In that regard, when determining whether or not Global Locate owns the ‘346 patent, it is 

significant that Magellan has never sought to exercise ownership over the patent, even given the 

public issuance of the patent (in a field doubtlessly monitored by Magellan), or moreover, when 

Magellan was later subpoenaed in connection with ITC litigation involving the ‘346 patent. 

Additionally, it was shown during the hearing testimony of Mr. Abraham, as a result of 

questioning by both respondents’ and complainants’ counsel, that while at Magellan he 

disseminated information within the company pertaining to the work that he would later use as a 

basis for the claims of the ‘346 patent that are asserted in this investigation. See Abraham 

Tr. 3 175-3 180,3200-3204; CX-74C (October 14, 1999 email); CX-103C (PowerPoint at 

Magellan); see also Braasch Tr. 3344-3350 (expert testimony concerning Abraham’s email and 

38 

Locate. The Staff also notes that Magellan has never asserted ownership over any right to the 

'346 patent. See StaffBr. at 28-29. 

Complainants do not contest the fact that any conception of the claimed invention by 

Charles Abraham would have taken place in 1999 while he was employed by Magellan. Indeed, 

complainants rely on an October 1999 conception and spring 2000 reduction to practice in 

connection with their arguments relating to the validity of the '346 patent, and set forth evidence 

to that effect. See, e.g., Compi. Reply at 23-25 ("The Asserted Claims ofthe '346 Patent Were 

Conceived by October 1999 and Reduced to Practice by June 2000"). Yet, with respect to the 

alleged [ ] and Magellan's current 

ownership (or lack of ownership) of the invention, the parties' arguments cannot be reconciled. 

Complainants and the Staff do, however, make compelling arguments that are dispositive of the 

Issue. In short, the claimed invention is owned by Global Locate. 

In that regard, when determining whether or not Global Locate owns the '346 patent, it is 

significant that Magellan has never sought to exercise ownership over the patent, even given the 

public issuance of the patent (in a field doubtlessly monitored by Magellan), or moreover, when 

Magellan was later subpoenaed in connection with ITC litigation involving the '346 patent. 

Additionally, it was shown during the hearing testimony ofMr. Abraham, as a result of 

questioning by both respondents' and complainants' counsel, that while at Magellan he 

disseminated information within the company pertaining to the work that he would later use as a 

basis for the claims of the '346 patent that are asserted in this investigation. See Abraham 

Tr. 3175-3180, 3200-3204; CX-74C (October 14,1999 email); CX-I03C (PowerPointat 

Magellan); see also Braasch Tr. 3344-3350 (expert testimony concerning Abraham's email and 

38 
presentations at Magellan). It is, therefore, reasonable to conclude that Magellan knew of 

Abraham’s relevant ideas during its litigation with Global Locate. 

Moreover, to determine whether or not Magellan claimed ownership of the intellectual 

property that led to the ‘346 patent all parties rely on the settlement document that was produced 

as a consequence of the Magellan litigation. All parties focus on the same language of the 

settlement agreement, but respondents ascribe to it a meaning that is different fiom that ascribed 

by complainants and the Staff. 

The Magellan settlement provides in pertinent part: 

[ 

1 

CX-23C (Magellan Settlement Agreement) at GL-602-97130-3 1 (cited in Resp. Br. at 31; 

respondents’ emphasis). 

The plain settlement language quoted above indicates that in settling the litigation with 

Magellan, Global Locate and Magellan agreed that [ 

] As detailed 

below in connection with claim construction and infringement, this is the technology involved in 

the asserted claims of the ‘346 patent. In fact, all parties treat this portion of the agreement as 

relating to the claimed invention of the ‘346 patent. See Resp. Br. at 31; Compl. Reply at 27; 

39 

presentations at Magellan). It is, therefore, reasonable to conclude that Magellan knew of 

Abraham's relevant ideas during its litigation with Global Locate. 

Moreover, to determine whether or not Magellan claimed ownership of the intellectual 

property that led to the '346 patent all parties rely on the settlement document that was produced 

as a consequence of the Magellan litigation. All parties focus on the same language of the 

settlement agreement, but respondents ascribe to it a meaning that is different from that ascribed 

by complainants and the Staff. 

The Magellan settlement provides in pertinent part: 

[ 

] 

CX-23C (Magellan Settlement Agreement) at GL-602-97130-31 (cited in Resp. Br. at 31; 

respondents ' emphasis). 

The plain settlement language quoted above indicates that in settling the litigation with 

Magellan, Global Locate and Magellan agreed that [ 

] As detailed 

below in connection with claim construction and infringement, this is the technology involved in 

the asserted claims of the '346 patent. In fact, all parties treat this portion of the agreement as 

relating to the claimed invention of the '346 patent. See Resp. Br. at 31; CompI. Reply at 27; 

39 
Staff Br. at 28; see also, Abraham Tr. 3210-321 1 (concerning the settlement agreement; [ 

1 

Consequently, based on the foregoing evidence, it is found that Global Locate owns the 

asserted claims of the ‘346 patent, and has standing to bring before the Commission its dispute 

with respondents concerning the asserted claims of the ‘346 patent. 

B. Inequitable Conduct 

Respondents argue that the ‘346 patent is unenforceable due to inequitable conduct by 

Global Locate in its prosecution of the patent before the PTO. In particular, respondents allege 

that Global Locate “deceived the Patent Office about the true inventor” and that “Global Locate 

stole the invention from Magellan.” Respondents argue that the true inventor (of an invention 

they otherwise argue is not even patentable) is Yi-Hsiu Wang, an engineer and subordinate of 

Charles Abraham when he worked at Magellan. Respondents also allege that Abraham instructed 

Wang to destroy all evidence of Mr. Wang’s work on the invention. See Resp. Br. at 254-260; 

Resp. Reply at 7,62-63. 

Complainants contend that respondents’ arguments are due little credence because without 

presenting any live hearing testimony of Mr. Wang, or any expert testimony on the subject, 

respondents rely primarily on deposition testimony and a supposed re-creation of Wang’s work 

that was prepared for, but never filed in, the prior Magellan litigation. Moreover, complainants 

argue that the claims of the ‘346 patent were in fact invented by the named inventors, Charles 

Abraham and Don Fuchs. See Compl. Br. at 77-79; Compl. Reply at 25-26. 

The Staff agrees with Global Locate and also argues that respondents have failed to meet 

their burden of proof to show that Wang is the true inventor of the ‘346 patent. See Staff Br. 

40 

StaffBr. at 28; see also, Abraham Tr. 3210-3211 (concerning the settlement agreement; [ 

] 

Consequently, based on the foregoing evidence, it is found that Global Locate owns the 

asserted claims of the '346 patent, and has standing to bring before the Commission its dispute 

with respondents concerning the asserted claims of the' 346 patent. 

B. Inequitable Conduct 

Respondents argue that the '346 patent is unenforceable due to inequitable conduct by 

Global Locate in its prosecution of the patent before the PTO. In particular, respondents allege 

that Global Locate "deceived the Patent Office about the true inventor" and that "Global Locate 

stole the invention from Magellan." Respondents argue that the true inventor (of an invention 

they otherwise argue is not even patentable) is Yi-Hsiu Wang, an engineer and subordinate of 

Charles Abraham when he worked at Magellan. Respondents also allege that Abraham instructed 

Wang to destroy all evidence of Mr. Wang's work on the invention. See Resp. Br. at 254-260; 

Resp. Reply at 7, 62-63. 

Complainants contend that respondents' arguments are due little credence because without 

presenting any live hearing testimony of Mr. Wang, or any expert testimony on the subject, 

respondents rely primarily on deposition testimony and a supposed re-creation of Wang's work 

that was prepared for, but never filed in, the prior Magellan litigation. Moreover, complainants 

argue that the claims of the '346 patent were in fact invented by the named inventors, Charles 

Abraham and Don Fuchs. See Compi. Br. at 77-79; Compi. Reply at 25-26. 

The Staff agrees with Global Locate and also argues that respondents have failed to meet 

their burden of proof to show that Wang is the true inventor of the '346 patent. See StaffBr. 

40 
at 28. 

Indeed, the evidence presented by respondents is meager, unclear and not sufficiently 

reliable to carry the heavy burden of showing that the ‘346 patent is unenforceable. The 

deposition testimony of Mr. Wang is based, as one might anticipate, on a series of leading 

questions. See, e.g., JX1 1OC-(Wang Tr.) at 54-62. Respondents rely upon, and duplicated in their 

brief, a series of detailed questions to which Wang merely responded “correct.” See Resp. Br. at 

256-257 (quoting JX-110-3C (Wang Tr.) at 54-55). 

Wang’s testimony, as presented by respondents, also appears to be inconsistent with an 

alleged admission to a colleague, Robert Lorenz, that Charles Abraham was in fact the inventor. 

See JX-6OC (Lorenz Tr.)(attached to JX-111-3C) at 132. That admission is itself contained within 

deposition testimony taken specifically to address the question of inequitable conduct, and not 

subject to scrutiny at the hearing. 

The documentary evidence is, as argued by complainants, a sort of re-creation of supposed 

work that was never filed in the prior Magellan litigation. It also sets the date of Wang’s work [ 

] relied 

upon by respondents in connection with their jurisdictional argument that Abraham had actually 

assigned his invention to Magellan rather than to Global Locate. See RX-238C (Wang Decl.); 

JX-110-3C (Wang Tr.) at 86-89 and 129-131 (testifying to the [ 

see also, Braasch Tr. 3344-3350 (expert testimony analyzing the [ 

Magellan) (discussed further below in connection with the question of prior art and patent 

validity). 

]date, and later recanting it); 

] work of Abraham while at 

In general, the evidence relied upon by respondents also lacks corroboration. For example, 

41 

at 28. 

Indeed, the evidence presented by respondents is meager, unclear and not sufficiently 

reliable to carry the heavy burden of showing that the '346 patent is unenforceable. The 

deposition testimony of Mr. Wang is based, as one might anticipate, on a series ofleading 

questions. See, e.g., JX11 OC-(Wang Tr.) at 54-62. Respondents rely upon, and duplicated in their 

brief, a series of detailed questions to which Wang merely responded "correct." See Resp. Br. at 

256-257 (quoting JX-110-3C (Wang Tr.) at 54-55). 

Wang's testimony, as presented by respondents, also appears to be inconsistent with an 

alleged admission to a colleague, Robert Lorenz, that Charles Abraham was in fact the inventor. 

See JX-60C (Lorenz Tr.)(attached to JX-111-3C) at 132. That admission is itself contained within 

deposition testimony taken specifically to address the question of inequitable conduct, and not 

subject to scrutiny at the hearing. 

The documentary evidence is, as argued by complainants, a sort of re-creation of supposed 

work that was never filed in the prior Magellan litigation. It also sets the date of Wang's work [ 

] relied 

upon by respondents in connection with their jurisdictional argument that Abraham had actually 

assigned his invention to Magellan rather than to Global Locate. See RX-238C (Wang Decl.); 

JX-110-3C (Wang Tr.) at 86-89 and 129-131 (testifying to the [ ]date, and later recanting it); 

see also, Braasch Tr. 3344-3350 (expert testimony analyzing the [ ] work of Abraham while at 

Magellan) (discussed further below in connection with the question of prior art and patent 

validity). 

In general, the evidence relied upon by respondents also lacks corroboration. For example, 

41 
as noted, respondents argue that Abraham instructed Wang to destroy all evidence of Wang’s 

work. Yet, that argument comes from [ 

no independent evidence that Magellan destroyed any such documentation. Nor was Abraham 

questioned about such a vital element of respondents’ inequitable conduct case when Abraham 

took the witness stand during the evidentiary hearing in this investigation. Such a failure to 

question Abraham, given respondents’ accusations, is a significant, if not curious, omission. 

] and there is 

In summary, respondents have not established by clear and convincing evidence that the 

‘346 patent is unenforceable due to fraud or any other sort of inequitable conduct. 

C. Claim Construction 

The ‘346 patent is entitled “Method and Apparatus for Computing Signal Correlation,” 

and its claimed invention “relates to signal correlators for digital signal receivers and, more 

particularly, the invention relates to a method and apparatus for performing signal correlation in, 

for example, a global positioning system (GPS) receiver.” JX-2 (‘346 Patent) col. 1,ll. 1-1 1 (title 

and “Field of Invention”). 

The specification of the ‘346 patent provides a “Description of the Background Art” that 

summarizes many of the GPS concepts and terms discussed above in section I.B. 1. (Technological 

Background). It also contains background information that is more specific to the claimed 

invention, and a description of perceived problems in the art (as of the time of the patent 

application) that the inventors sought to resolve. The specification provides: 

The process of measuring a global positioning system (GPS) signal 

begins with a procedure to search for the GPS signal in the presence 

of noise by attempting a series of correlations of the incoming 

signal against a known pseudo-random noise (PFW) code. The 

search process can be lengthy, as both the exact frequency of the 

signal and the time-of-arrival delay are unknown. To find the signal, 

42 

as noted, respondents argue that Abraham instructed Wang to destroy all evidence of Wang's 

work. Yet, that argument comes from [ ] and there is 

no independent evidence that Magellan destroyed any such documentation. Nor was Abraham 

questioned about such a vital element of respondents' inequitable conduct case when Abraham 

took the witness stand during the evidentiary hearing in this investigation. Such a failure to 

question Abraham, given respondents' accusations, is a significant, if not curious, omission. 

In summary, respondents have not established by clear and convincing evidence that the 

'346 patent is unenforceable due to fraud or any other sort of inequitable conduct. 

C. Claim Construction 

The '346 patent is entitled "Method and Apparatus for Computing Signal Correlation," 

and its claimed invention "relates to signal correlators for digital signal receivers and, more 

particularly, the invention relates to a method and apparatus for performing signal correlation in, 

for example, a global positioning system (GPS) receiver." JX-2 ('346 Patent) col. 1,11. 1-11 (title 

and "Field of Invention"). 

The specification of the' 346 patent provides a "Description of the Background Art" that 

summarizes many of the GPS concepts and terms discussed above in section LB.!. (Technological 

Background). It also contains background information that is more specific to the claimed 

invention, and a description of perceived problems in the art (as of the time of the patent 

application) that the inventors sought to resolve. The specification provides: 

The process of measuring a global positioning system (GPS) signal 

begins with a procedure to search for the GPS signal in the presence 

of noise by attempting a series of correlations of the incoming 

signal against a known pseudo-random noise (PRN) code. The 

search process can be lengthy, as both the exact frequency of the 

signal and the time-of-arrival delay are unknown. To find the signal, 

42 
receivers traditionally conduct a two dimensional search, checking 

each delay possibility at every possible frequency. To test for the 

presence of a signal at a particular frequency and delay, the receiver 

is tuned to the frequency, and the incoming signal is correlated with 

the known PRN code delayed by an amount corresponding to the 

time of arrival. If no signal is detected, the search continues to the 

next delay possibility, and after all delay possibilities are checked, 

continues to the next frequency possibility. Each individual 

correlation is performed over one or more milliseconds in order to 

allow sufficient signal averaging to distinguish the signal from the 

noise. Because many thousand frequency and delay possibilities are 

checked, the overall acquisition process can take tens of seconds. 

Recently, new applications of GPS technology in wireless devices 

have emerged, for example, the use of GPS in cellular phones to 

provide emergency location capability. In these applications, rapid 

signal acquisition in just a few seconds is required. Furthermore, 

these applications require a GPS receiver to operate in harsh signal 

environments and indoors, where GPS signal levels are greatly 

attenuated. Detecting attenuated signals requires each correlation to 

be performed over a relatively long period of time. For example 

integration may be performed over a few seconds, as opposed to the 

1-1 0 millisecond period used in traditional GPS receivers. The two 

dimensional sequential search process employed by traditional 

receivers becomes impractical at such long integration times, 

because the overall search time increases by a factor of 100 or more. 

To accelerate the search process, GPS designers add additional 

correlators to the receiver so that multiple time of arrival 

possibilities can be checked simultaneously. Typically, each 

correlator that is added requires a separate code mixer and signal 

accumulator. For a given sensitivity level, this decreases search 

times in proportion to the number of correlators. To achieve the 

sensitivity and acquisition time demanded in cellular phone 

applications, the design might have to incorporate thousands of 

correlators. This addition is typically prohibitively complex and 

expensive for a consumer class device. 

For example, U.S. Pat. No. 5,901,171, issued May 4, 1999, 

describes a triple multiplexing technique that allows a single time 

shared processing block to be used to perform up to 20 

simultaneous correlations on each of 12 channels. This offers an 

improvement in performance relative to single correlator designs 

since blocks of 20 delay possibilities are checked simultaneously. A 

43 

receivers traditionally conduct a two dimensional search, checking 

each delay possibility at every possible frequency. To test for the 

presence of a signal at a particular frequency and delay, the receiver 

is tuned to the frequency, and the incoming signal is correlated with 

the known PRN code delayed by an amount corresponding to the 

time of arrival. If no signal is detected, the search continues to the 

next delay possibility, and after all delay possibilities are checked, 

continues to the next frequency possibility. Each individual 

correlation is performed over one or more milliseconds in order to 

allow sufficient signal averaging to distinguish the signal from the 

noise. Because many thousand frequency and delay possibilities are 

checked, the overall acquisition process can take tens of seconds. 

Recently, new applications of GPS technology in wireless devices 

have emerged, for example, the use of GPS in cellular phones to 

provide emergency location capability. In these applications, rapid 

signal acquisition in just a few seconds is required. Furthermore, 

these applications require a GPS receiver to operate in harsh signal 

environments and indoors, where GPS signal levels are greatly 

attenuated. Detecting attenuated signals requires each correlation to 

be performed over a relatively long period of time. For example 

integration may be performed over a few seconds, as opposed to the 

1-10 millisecond period used in traditional GPS receivers. The two 

dimensional sequential search process employed by traditional 

receivers becomes impractical at such long integration times, 

because the overall search time increases by a factor of 100 or more. 

To accelerate the search process, GPS designers add additional 

correlators to the receiver so that multiple time of arrival 

possibilities can be checked simultaneously. Typically, each 

correlator that is added requires a separate code mixer and signal 

accumulator. For a given sensitivity level, this decreases search 

times in proportion to the number of correlators. To achieve the 

sensitivity and acquisition time demanded in cellular phone 

applications, the design might have to incorporate thousands of 

correlators. This addition is typically prohibitively complex and 

expensive for a consumer class device. 

For example, U.S. Pat. No. 5,901,171, issued May 4, 1999, 

describes a triple multiplexing technique that allows a single time 

shared processing block to be used to perform up to 20 

simultaneous correlations on each of 12 channels. This offers an 

improvement in performance relative to single correlator designs 

since blocks of 20 delay possibilities are checked simultaneously. A 

43 
full signal search over a full range of delay uncertainties requires 

using the block of 20 correlators approximately 100 times in 

succession to check 2046 delays. Thus, if an acquisition must be 

performed in a few seconds, the integration time is limited to tens of 

milliseconds. This is insufficient to achieve the sensitivity needed 

for indoor GPS applications. 

To further improve the search process, other GPS receiver 

architectures include processing capable of generating a convolution 

between the incoming signal and the known PRN code. This is 

equivalent to providing a complete set of correlators spanning all 

time delay possibilities over a full C/A code epoch (1 023 chips), 

and U.S. Pat. No. 5,663,734, issued Sep. 2, 1997, describe fast 

Fourier transform (FFT) based software techniques to efficiently 

generate the necessary correlation results using software algorithms. 

This approach is not suitable for all applications, because a 

programmable digital signal processor (DSP) is needed to run the 

software FFT, and a large memory is needed to store unprocessed 

signal samples. Furthermore, this approach can have a large 

processing delay due to the software computations and the fact that 

software processing starts only after a complete snapshot of the 

signal is stored. In many applications, a real time processing 

solution is preferred, preferably one that does not involve extensive 

software processing. Lyusin et al., "Fast Acquisition by Matched 

Filter Technique for GPS/GLONASS Receivers", pp 307-3 15 

describes hardware approaches to performing the convolution in 

real time using a matched filter with 1023 taps. The matched filter 

consists of shift registers large enough to hold a full C/A code 

epoch, as well as a width 1023 vector multiplier and adder unit that 

generates the inner product between a full epoch of the signal and 

the C/A code. 

This circuit is complex relative to the constraints of low cost 

consumer devices such as cellular phones. Other matched filter 

approaches, such as utilized in military class receivers for P-code 

acquisition, also incorporate large vector multipliers. 

Thus, there is a need for an improved, simple and low cost GPS 

processing block capable of processing an entire epoch of signal and 

C/A code. Such a device must be built from hardware of relative 

simplicity, yet be capable of generating a full convolution, or many 

parallel correlations, preferably without a large vector multiplier. 

JS-2 ('346 Patent), col. 1,l. 13 - col. 2,l. 44. 

44 

full signal search over a full range of delay uncertainties requires 

using the block of 20 correlators approximately 100 times in 

succession to check 2046 delays. Thus, if an acquisition must be 

performed in a few seconds, the integration time is limited to tens of 

milliseconds. This is insufficient to achieve the sensitivity needed 

for indoor GPS applications. 

To further improve the search process, other GPS receiver 

architectures include processing capable of generating a convolution 

between the incoming signal and the known PRN code. This is 

equivalent to providing a complete set of correlators spanning all 

time delay possibilities over a full CIA code epoch (l 023 chips), 

and U.S. Pat. No. 5,663,734, issued Sep. 2, 1997, describe fast 

Fourier transform (FFT) based software techniques to efficiently 

generate the necessary correlation results using software algorithms. 

This approach is not suitable for all applications, because a 

programmable digital signal processor (DSP) is needed to run the 

software FFT, and a large memory is needed to store unprocessed 

signal samples. Furthermore, this approach can have a large 

processing delay due to the software computations and the fact that 

software processing starts only after a complete snapshot of the 

signal is stored. In many applications, a real time processing 

solution is preferred, preferably one that does not involve extensive 

software processing. Lyusin et aI., "Fast Acquisition by Matched 

Filter Technique for GPS/GLONASS Receivers", pp 307-315 

describes hardware approaches to performing the convolution in 

real time using a matched filter with 1023 taps. The matched filter 

consists of shift registers large enough to hold a full CIA code 

epoch, as well as a width 1023 vector multiplier and adder unit that 

generates the inner product between a full epoch of the signal and 

the CIA code. 

This circuit is complex relative to the constraints of low cost 

consumer devices such as cellular phones. Other matched filter 

approaches, such as utilized in military class receivers for P-code 

acquisition, also incorporate large vector multipliers. 

Thus, there is a need for an improved, simple and low cost GPS 

processing block capable of processing an entire epoch of signal and 

CIA code. Such a device must be built from hardware of relative 

simplicity, yet be capable of generating a full convolution, or many 

parallel correlations, preferably without a large vector multiplier. 

JX-2 ('346 Patent), col. 1, 1. 13 - col. 2, 1. 44. 

44 
The ‘346 patent also provides a “Summary of the Invention,” as follows: 

The invention provides a method and apparatus for computing a full 

convolution between an input signal (e.g., a GPS signal) and a 

pseudorandom noise (PRN) code reference by generating the 

convolution result in real time without storing unprocessed signal 

samples, and without extensive software processing. The apparatus 

comprises a vector multiplier running at high speed to achieve the 

same result as a vector multiplier sized to process an entire epoch. 

The invention can be implemented in an integrated circuit that fits 

the complexity constraints of a consumer class device such as a 

cellular phone. The design includes the necessary logic to enable 

long tern averaging of convolution results to ensure high 

sensitivity. This invention is capable of correlating signals for use in 

deriving a position location from highly attenuated signals, 

including signals received indoors. 

The complete apparatus consists of a conventional GPS tuner, a 

decimation circuit, a convolution processor, and RAM blocks that 

accumulate convolution results. The convolution processor ms at a 

high clock rate on the order of 100 MHz and higher enabling the 

computation of a full convolution by repeated use of a small block 

of circuitry. Specifically, each point of the convolution is 

decomposed into a series of partial correlations, each of which is 

generated using a vector multiplier that is sized to process only a 

portion of an epoch. The apparatus organizes the partial correlations 

by subdividing the C/A code into a non-overlapping set of code 

segments. Each partial correlation uses only one code segment at a 

time, allowing the C/A code to be stored and retrieved efficiently, 

using a simple lookup table. 

The processor begins by decimating input IFL4] samples to create a 

signal stream at a desired sample rate, where the rate is precisely 

matched to the timing of the incoming signal. If the desired sample 

rate is Pf, (P samples per C/A chip) then the sampling rate is set so 

that exactly 1023 XP samples are taken in each signal epoch. The 

IF stands for “intermediate frequency.” See JX-2 (‘346 patent), col. 3,l. 65 - col. 4,l. 3 

(In the preferred embodiment: “Signals (such as GPS signals) are received by an antenna 101. A 

radio-frequency-to-intermediate-frequency converter (RF/IF converter) 102 filters, amplifies, and 

frequency shifts the signal for digitization by an analog-to-digital converter (ND) 103. The 

elements 101, 102 and 103 are substantially similar to those elements used in a conventional GPS 

receiver.”). 

45 

The '346 patent also provides a "Summary of the Invention," as follows: 

The invention provides a method and apparatus for computing a full 

convolution between an input signal (e.g., a GPS signal) and a 

pseudorandom noise (PRN) code reference by generating the 

convolution result in real time without storing unprocessed signal 

. samples, and without extensive software processing. The apparatus 

comprises a vector multiplier running at high speed to achieve the 

same result as a vector multiplier sized to process an entire epoch. 

The invention can be implemented in an integrated circuit that fits 

the complexity constraints of a consumer class device such as a 

cellular phone. The design includes the necessary logic to enable 

long term averaging of convolution results to ensure high 

sensitivity. This invention is capable of correlating signals for use in 

deriving a position location from highly attenuated signals, 

including signals received indoors. 

The complete apparatus consists of a conventional GPS tuner, a 

decimation circuit, a convolution processor, and RAM blocks that 

accumulate convolution results. The convolution processor runs at a 

high clock rate on the order of 100 MHz and higher enabling the 

computation of a full convolution by repeated use of a small block 

of circuitry. Specifically, each point of the convolution is 

decomposed into a series of partial correlations, each of which is 

generated using a vector multiplier that is sized to process only a 

portion of an epoch. The apparatus organizes the partial correlations 

by subdividing the C/ A code into a non-overlapping set of code 

segments. Each partial correlation uses only one code segment at a 

time, allowing the C/ A code to be stored and retrieved efficiently, 

using a simple lookup table. 

The processor begins by decimating input IF[4] samples to create a 

signal stream at a desired sample rate, where the rate is precisely 

matched to the timing ofthe incoming signal. If the desired sample 

rate is Pfo (P samples per C/ A chip) then the sampling rate is set so 

that exactly 1023 xp samples are taken in each signal epoch. The 

4 IF stands for "intermediate frequency." See JX-2 ('346 patent), col. 3,1. 65 - col. 4, 1. 3 

(In the preferred embodiment: "Signals (such as GPS signals) are received by an antenna 101. A 

radio-frequency-to-intermediate-frequency converter (RFIIF converter) 102 filters, amplifies, and 

frequency shifts the signal for digitization by an analog-to-digital converter (AID) 103. The 

elements 101, 102 and 103 are substantially similar to those elements used in a conventional GPS 

receiver."). 

45 
processor correlates the signal clocking signals through shift 

registers sized to hold PxK input samples, where K is a factor of 

1023. At each signal shift, a series of M partial correlation 

operations are performed with M chosen such that MxK=1023. 

Each partial correlation consists of taking the inner product of the 

contents of the signal shift registers with a block of reference 

samples created by extending a length K segment of the C/A code to 

PxK samples. Partial correlation results are accumulated in 

memory. By accumulating partial correlation results, the processor 

generates complete correlation results for many correlation points, 

up to the full convolution. 

JX-2 (‘346 patent), col. 2,l. 48 - col. 3,l. 28. 

Thus, when using the system disclosed in the ‘346 patent, there is no need to wait to 

receive a full epoch of signal before beginning correlation. Braasch Tr. 141 1. Instead, as the first 

segment of signal is received, it is correlated with all segments of the stored reference code 

(representing all possible code offsets). This operation necessarily produces only partial 

correlation results. Braasch Tr. 1409-1410. Yet, in the time that it takes to perform that operation 

with the first segment of signal, the second segment of signal arrives and it too is correlated with 

all segments of the reference code (again representing all possible code offsets). That process 

continues until all segments of a full epoch of signal have been received and each segment of 

signal has been compared with all segments of stored reference code. As these “partial 

correlations” are performed, the partial correlations are summed to produce a plurality of full 

correlations for multiple code offsets. Braasch Tr. 1409- 14 1 1. As a result, in approximately one 

millionth of a second more than the millisecond it takes to receive an epoch of signal, and after 

passing the received signal through the correlator only once, the system disclosed in the ‘346 

46 

processor correlates the signal clocking signals through shift 

registers sized to hold pxK input samples, where K is a factor of 

1023. At each signal shift, a series of M partial correlation 

operations are performed with M chosen such that MxK=1023. 

Each partial correlation consists of taking the inner product of the 

contents of the signal shift registers with a block of reference 

samples created by extending a length K segment of the CIA code to 

pxK samples. Partial correlation results are accumulated in 

memory. By accumulating partial correlation results, the processor 

generates complete correlation results for many correlation points, 

up to the full convolution. 

JX-2 ('346 patent), col. 2, 1. 48 - col. 3,1.28. 

Thus, when using the system disclosed in the '346 patent, there is no need to wait to 

receive a full epoch of signal before beginning correlation. Braasch Tr. 1411. Instead, as the first 

segment of signal is received, it is correlated with all segments of the stored reference code 

(representing all possible code offsets). This operation necessarily produces only partial 

correlation results. Braasch Tr. 1409-1410. Yet, in the time that it takes to perform that operation 

with the first segment of signal, the second segment of signal arrives and it too is correlated with 

all segments of the reference code (again representing all possible code offsets). That process 

continues until all segments of a full epoch of signal have been received and each segment of 

signal has been compared with all segments of stored reference code. As these "partial 

correlations" are performed, the partial correlations are summed to produce a plurality of full 

correlations for multiple code offsets. Braasch Tr. 1409-1411. As a result, in approximately one 

millionth of a second more than the millisecond it takes to receive an epoch of signal, and after 

passing the received signal through the correlator only once, the system disclosed in the' 346 

46 
patent can complete all 2046 necessary correlations. Braasch Tr. 1411-1412.5 

As in the case of any patent, the '346 patent sets forth the invention in a claim or series of 

claims. In this case, the patent contains 23 claims. Complainants assert claims 4 and 11 of the 

'346 patent. Claim 4 depends from independent claim 1. Claim 11 is independent. Claims 1, 4 

and 11 provide as follows: 

I. A method for computing correlations of a digital signal with a 

pseudorandom reference code, where said digital signal comprises a 

repeating code, the method comprising: 

a) dividing a pseudorandom reference code into a plurality of code 

segments; 

b) selecting a code segment; 

c) forming an inner product between said selected code segment and 

a portion of said repeating code of said digital signal to produce a 

partial correlation; 

d) repeating steps b) and c) to produce a plurality of partial 

correlations; 

e) summing the plurality of partial correlations as each partial 

correlation is produced to form a plurality of correlations. 

4. The method of claim 1 wherein said pseudorandom reference 

code is a C/A code of a global positioning system receiver. 

II. A receiver of global positioning system (GPS) signals 

comprising: 

5

 Figure 6 of the '346 patent graphically illustrates a simplified example of computing a 

full convolution in the traditional or "prior art" manner, while Figure 7 graphically illustrates a 

full convolution in an embodiment of the claimed invention. See JX-2 ('346 patent), Figs. 6 and. 

7; 3:46-49 ("Description of Drawings"); col. 10,1. 37 - col. 11,1. 40 (discussion of a 

conventional convolution, and also the computations can also be performed through partial 

correlations as claimed in the patent). 

47 
an RF/IF converter for filtering and frequency translating received 

GPS signals having a repeating code to form an IF signal; 

an analog to digital converter for digitizing the IF signal; 

a tuner for removing Doppler shift from the digitized signal and 

producing an in-phase (I) signal and a quadrature (Q) signal; 

a decimation circuit for subsampling the I and Q signals; 

a convolution processor for producing I and Q partial correlations 

by multiplying selected segments of a C/A reference code with 

portions of said repeating code of each of said subsarnpled I and Q 

signals; 

a first accumulator for accumulating said I partial correlations to 

form a plurality of correlations between said I signal and the C/A 

reference code; and 

a second accumulator for accumulating said Q partial correlations to 

form a plurality of correlations between said Q signal and the C/A 

reference code. 

JX-2 (‘346 patent), col. 12,ll. 36-49, 57-59; col. 13,ll. 16-34. 

Most of the terms used in the asserted claims are not in dispute. However, the parties 

dispute the following terms or phrases: (1) “code segment” and a term that the parties treat as 

related, i e., “segments of a C/A reference code;” (2) “an inner product;” (3) “a tuner for removing 

Doppler shift from the digitized signal and producing an in-phase (I) signal and a quadrature (Q) 

signal;” (4) “a decimation circuit for subsampling the I and Q signals;” and (5) “GPS signals 

having a repeating code.” Each is discussed individually. 

“Code Segment’YSegments of a C/A Reference Code” 

Complainants argue that “code segment” (which appears in independent claim 1) and 

“segments of a C/A reference code” (which appears in independent claim 11) “should be 

48 

an RF IIF converter for filtering and frequency translating received 

GPS signals having a repeating code to form an IF signal; 

an analog to digital converter for digitizing the IF signal; 

a tuner for removing Doppler shift from the digitized signal and 

producing an in-phase (I) signal and a quadrature (Q) signal; 

a decimation circuit for subsampling the I and Q signals; 

a convolution processor for producing I and Q partial correlations 

by multiplying selected segments of a CIA reference code with 

portions of said repeating code of each of said subsampled I and Q 

signals; 

a first accumulator for accumulating said I partial correlations to 

form a plurality of correlations between said I signal and the CIA 

reference code; and 

a second accumulator for accumulating said Q partial correlations to 

form a plurality of correlations between said Q signal and the CIA 

reference code. 

JX-2 ('346 patent), col. 12, II. 36-49, 57-59; col. 13, II. 16-34. 

Most of the terms used in the asserted claims are not in dispute. However, the parties 

dispute the following terms or phrases: (1) "code segment" and a term that the parties treat as 

related, i.e., "segments of a CIA reference code;" (2) "an inner product;" (3) "a tuner for removing 

Doppler shift from the digitized signal and producing an in-phase (I) signal and a quadrature (Q) 

signal;" (4) "a decimation circuit for subsampling the I and Q signals;" and (5) "GPS signals 

having a repeating code." Each is discussed individually. 

"Code Segment"I"Segments of a CIA Reference Code" 

Complainants argue that "code segment" (which appears in independent claim 1) and 

"segments of a CIA reference code" (which appears in independent claim 11) "should be 

48 
construed consistent with their plain meaning as ‘portion(s) of one cycle (i.e., epoch) of a 

reference code.”’ Compl. Br. at 39. 

Referring to the plain claim language, complainants argue that claims 1 and 11 require 

only that the reference code be divided into segments inasmuch as claim 1 describes “dividing a 

pseudorandom reference code into a plurality of code segments” for the purpose of performing 

correlation between segments of reference code and portions of received signal, and claim 11 

describes “multiplying selected segments of a C/A reference code with portions of” received 

signal. It is argued that the claims place no restriction on the size of the segments other than the 

requirement that they be segments of the reference code. See Id. at 39-40. 

Complainants also rely on the specification’s summary of the invention (quoted in full, 

above). They argue that the reference code referred to in the claims is the C/A code of the GPS 

system, and the specification describes dividing an epoch of the C/A code into “non-overlapping” 

segments. See Id. at 40 (quoting col. 3,ll. 3-1 1 (“Specifically, each point of the convolution is 

decomposed into a series of partial correlations, each of which is generated using a vector 

multiplier that is sized to process only aportion of an epoch. The apparatus organizes the partial 

correlations by subdividing the C/A code into a non-overlapping set of code segments.”) 

(complainants’ emphasis); col. 1 1,ll. 30-35 (“each segment is a separate non-overlapping section 

of the code”); and Braasch Tr. 142 1-1 422). Thus, complainants argue, a “segment” is “a portion,” 

as that word is understood in ordinary use even outside the GPS art. See Id. (citing 

CX-246 (American Heritage Dictionary) at 1634 (defining “segment” as “[alny of the parts into 

which something can be divided” or “[tlhe portion of a line between any two points on the line.”); 

Braasch Tr. 1420-1421). 

49 

construed consistent with their plain meaning as 'portiones) of one cycle (i.e., epoch) of a 

reference code.'" Compl. Br. at 39. 

Referring to the plain claim language, complainants argue that claims 1 and 11 require 

only that the reference code be divided into segments inasmuch as claim 1 describes "dividing a 

pseudorandom reference code into a plurality of code segments" for the purpose of performing 

correlation between segments of reference code and portions of received signal, and claim 11 

describes "multiplying selected segments of a CIA reference code with portions of' received 

signal. It is argued that the claims place no restriction on the size of the segments other than the 

requirement that they be segments of the reference code. See ld. at 39-40. 

Complainants also rely on the specification's summary of the invention (quoted in full, 

above). They argue that the reference code referred to in the claims is the CIA code of the GPS 

system, and the specification describes dividing an epoch of the CIA code into "non-overlapping" 

segments. See ld. at 40 (quoting col. 3,11.3-11 ("Specifically, each point of the convolution is 

decomposed into a series of partial correlations, each of which is generated using a vector 

multiplier that is sized to process only a portion of an epoch. The apparatus organizes the partial 

correlations by subdividing the CIA code into a non-overlapping set of code segments.") 

(complainants' emphasis); col. 11,11.30-35 ("each segment is a separate non-overlapping section 

of the code"); and Braasch Tr. 1421-1422). Thus, complainants argue, a "segment" is "a portion," 

as that word is understood in ordinary use even outside the GPS art. See ld. (citing 

CX-246 (American Heritage Dictionary) at 1634 (defining "segment" as "[a]ny of the parts into 

which something can be divided" or "[t]he portion of a line between any two points on the line."); 

Braasch Tr. 1420-1421). 

49 
Finally, complainants also contrast the language of the asserted claims with that of 

unasserted dependent claim 3, which is presumed to have a narrower scope than independent 

claim 1 and which specifically refers to the use of sets of reference code that are “an integer times 

a factor of 1023 .776 Thus, complainants argue, under the doctrine of claim differentiation, the term 

“code segment” should not be limited to “an integer times a factor of 1023” or “an integer factor 

. . . of the epoch length.” See Compl. Br. at 42 (citing claim 3, and the testimony of complainants’ 

and respondents’ expert witnesses). 

Respondents state that the parties do not dispute that “a C/A reference code” refers to the 

coarse acquisition code broadcast by the GPS satellites, and correctly point out that the only issue 

to be decided is the proper construction of a code “segment.” In that regard, respondents argue in 

their post-hearing brief that a segment is “a portion that is an integer factor of the full block length 

or epoch length (e.g. 1023 in the case of the GPS C/A code).” Resp. Br. at 221.7 

To support their argument that “each segment must be of equal length (K),” respondents 

turn primarily to two examples from the “Detailed Description” portion of the specification,’ and 

Claim 3 of the ‘346 patent provides: “The method of claim 1 where a size of said set of 

digital signal samples and a size of said set of pseudorandom reference code is an integer times a 

factor of 1023.” JX-2 (‘346 patent), col. 12,ll. 54-56. 

Respondents’ previous positions taken in this investigation with respect to this claim 

term are summarized in complainants’ brief. See Compl. Br. at 39. 

The “Detailed Description” portion of the specification sets forth the preferred 

embodiment or embodiments of the claimed invention. Indeed, the section ends with a proviso 

found in many “embodiments” portions of patents specifications, which in this case reads: 

“Although various embodiments which incorporate the teachings of the present invention have 

been shown and described in detail herein, those skilled in the art can readily devise many other 

varied embodiments that still incorporate these teachings.” See JX-2 (‘346 patent), col. 12,ll. 

3 1-34. 

50 

Finally, complainants also contrast the language of the asserted claims with that of 

unasserted dependent claim 3, which is presumed to have a narrower scope than independent 

claim 1, and which specifically refers to the use of sets of reference code that are "an integer times 

a factor of 1023."6 Thus, complainants argue, under the doctrine of claim differentiation, the term 

"code segment" should not be limited to "an integer times a factor of 1023" or "an integer factor 

... of the epoch length." See Compl. Br. at 42 (citing claim 3, and the testimony of complainants' 

and respondents' expert witnesses). 

Respondents state that the parties do not dispute that "a CIA reference code" refers to the 

coarse acquisition code broadcast by the GPS satellites, and correctly point out that the only issue 

to be decided is the proper construction of a code "segment." In that regard, respondents argue in 

their post-hearing brief that a segment is "a portion that is an integer factor of the full block length 

or epoch length (e.g. 1023 in the case of the GPS CIA code)." Resp. Br. at 221.7 

To support their argument that "each segment must be of equal length (K)," respondents 

turn primarily to two examples from the "Detailed Description" portion of the specification,8 and 

6 Claim 3 ofthe '346 patent provides: "The method of claim 1 where a size of said set of 

digital signal samples and a size of said set of pseudorandom reference code is an integer times a 

factor of 1023." JX-2 ('346 patent), col. 12,11.54-56. 

7 Respondents' previous positions taken in this investigation with respect to this claim 

term are summarized in complainants' brief. See Compl. Br. at 39. 

8 The "Detailed Description" portion of the specification sets forth the preferred 

embodiment or embodiments of the claimed invention. Indeed, the section ends with a proviso 

found in many "embodiments" portions of patents specifications, which in this case reads: 

"Although various embodiments which incorporate the teachings of the present invention have 

been shown and described in detail herein, those skilled in the art can readily devise many other 

varied embodiments that still incorporate these teachings." See JX-2 ('346 patent), col. 12,11. 

31-34. 

50 
the related testimony of their expert witness, in which each segment is of equal length. See Resp. 

Br. at 221-222 (quoting JX-2 (‘346 patent), col. 10,Il. 54-55 (“As described, the invention 

requires that the code be factored into It4 segments of length K.”), col. 9,ll. 23-29). Respondents 

argue with respect to unasserted claim 3 that the dependent claim confirms that each segment 

must of equal length, and narrows claim 1 “by limiting the size of the set of pseudorandom and 

reference codes to an integer times a factor of 1023 .” Thus, respondents argue, the limitation 

added by claim 3 is not the fact that the segments are of equal length, but rather “that the set of 

codes be of length 1023.” See Id. at 222. 

The Staff argues that the terms at issue should be given their plain and ordinary meaning, 

and further that complainants’ proposed construction is reasonable. See Staff Br. at 22-23. 

As indicated above, the portions of the ‘346 patent specification relied upon by 

respondents pertain to the preferred embodiment. No party disputes the fact that the plain 

language of the specification which discloses the preferred embodiment uses code segments of 

equal length (IS). However, an examination of the specification at the portions relied upon by 

respondents shows no language to indicate that this feature of the preferred embodiment must be 

used in every embodiment of the claimed invention. Further, respondents have cited no expert 

testimony or other evidence to indicate why the claimed invention would have to be implemented 

only with code segments of equal length. Thus, there is need to take the extraordinary step of 

reading a limitation of the preferred embodiment into the entire claimed invention. 

In fact, in portions of general application located in the “Summary of the Invention,” the 

specification describes the code segments in way that allows for code segments of different 

lengths, and nothing that would require a segment to be a portion that is an integer factor of the 

51 

the related testimony of their expert witness, in which each segment is of equal length. See Resp. 

Br. at 221-222 (quoting JX-2 ('346 patent), col. 10,11.54-55 ("As described, the invention 

requires that the code be factored into M segments oflength K."), col. 9,11.23-29). Respondents 

argue with respect to unasserted claim 3 that the dependent claim confirms that each segment 

must of equal length, and narrows claim 1 "by limiting the size of the set of pseudorandom and 

reference codes to an integer times a factor of 1023." Thus, respondents argue, the limitation 

added by claim 3 is not the fact that the segments are of equal length, but rather "that the set of 

codes be oflength 1023." See Id. at 222. 

The Staff argues that the terms at issue should be given their plain and ordinary meaning, 

and further that complainants' proposed construction is reasonable. See StaffBr. at 22-23. 

As indicated above, the portions of the '346 patent specification relied upon by 

respondents pertain to the preferred embodiment. No party disputes the fact that the plain 

language of the specification which discloses the preferred embodiment uses code segments of 

equal length (K). However, an examination of the specification at the portions relied upon by 

respondents shows no language to indicate that this feature of the preferred embodiment must be 

used in every embodiment of the claimed invention. Further, respondents have cited no expert 

testimony or other evidence to indicate why the claimed invention would have to be implemented 

only with code segments of equal length. Thus, there is need to take the extraordinary step of 

reading a limitation of the preferred embodiment into the entire claimed invention. 

In fact, in portions of general application located in the "Summary of the Invention," the 

specification describes the code segments in way that allows for code segments of different 

lengths, and nothing that would require a segment to be a portion that is an integer factor of the 

51 
full block length. See JX-2 (‘346 patent), col. 3,11.3-11 (“Specifically, each point of the 

convolution is decomposed into a series of partial correlations, each of which is generated using a 

vector multiplier that is sized to process only a portion of an epoch. The apparatus organizes the 

partial correlations by subdividing the CIA code into a non-overlapping set of code segments. 

Each partial correlation uses only one code segment at a time, allowing the C/A code to be stored 

and retrieved efficiently, using a simple lookup table”); col. 1 1,ll. 30-35 (“each segment is a 

separate non-overlapping section of the code”). In harmony with the suxnmary of the invention 

contained in the specification, there is nothing in the language of the asserted claims to support 

respondents’ arguments. 

Each party also makes claim differentiation arguments with respect to unasserted claim 3, 

and complainants extend their arguments also to unasserted claim 4. See Compl. Reply at 7. 

Claim differentiation is “not a hard and fast rule of construction.” Kraft Foods, Inc. v. Int ’I 

Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000). However, an independent claim is normally 

expected to be broader than its dependent claims. The independent claim is not expected to 

require the limitations added in the dependent claims. Dow Chern. v. United States, 226 F.3d 

1334, 1341 -1 342 (Fed. Cir. 2000) (applying the doctrine of claim differentiation and concluding 

that an independent claim should be given broader scope than a dependent claim to avoid 

rendering the dependent claim redundant). 

All parties agree that claim 3 adds a limitation to claim 1 concerning the length of a code 

segment. However, respondents’ argument to the effect that even without claim 3, a segment 

would have to be a portion that is an integer factor of the full block length is strained because if 

that were the case, much of the language of claim 3 would be superfluous, and also because there 

52 

full block length. See JX-2 ('346 patent), col. 3,11.3-11 ("Specifically, each point of the 

convolution is decomposed into a series of partial correlations, each of which is generated using a 

vector multiplier that is sized to process only a portion of an epoch. The apparatus organizes the 

partial correlations by subdividing the CIA code into a non-overlapping set of code segments. 

Each partial correlation uses only one code segment at a time, allowing the CIA code to be stored 

and retrieved efficiently, using a simple lookup table"); col. 11,11.30-35 ("each segment is a 

separate non-overlapping section of the code"). In harmony with the summary of the invention 

contained in the specification, there is nothing in the language of the asserted claims to support 

respondents' arguments. 

Each party also makes claim differentiation arguments with respect to unasserted claim 3, 

and complainants extend their arguments also to unasserted claim 4. See Compl. Reply at 7. 

Claim differentiation is "not a hard and fast rule of construction." Kraft Foods, Inc. v. Int '/ 

Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000). However, an independent claim is normally 

expected to be broader than its dependent claims. The independent claim is not expected to 

require the limitations added in the dependent claims. Dow Chern. v. United States, 226 F 3d 

1334, 1341-1342 (Fed. Cir. 2000) (applying the doctrine of claim differentiation and concluding 

that an independent claim should be given broader scope than a dependent claim to avoid 

rendering the dependent claim redundant). 

All parties agree that claim 3 adds a limitation to claim 1 concerning the length of a code 

segment. However, respondents' argument to the effect that even without claim 3, a segment 

would have to be a portion that is an integer factor of the full block length is strained because if 

that were the case, much of the language of claim 3 would be superfluous, and also because there 

52 
is nothing in independent claim 1 (from which claim 3 depends) to limit the length of the code 

segments in that way.’ 

Accordingly, it is found that a “segment” as used in the asserted claims refers to a portion 

of one cycle (i. e., epoch) of a reference code. 

“An Inner Product” 

Claim 1 of the ‘346 patent (from which asserted claim 4 depends) provides in its third 

enumerated limitation: “(c) forming an inner product between said selected code segment and a 

portion of said repeating code of said digital signal to produce a partial correlation.” JX-2 

(‘346 patent), col. 12,11,42-44. 

Complainants argue that the term “inner product” “should be construed consistent with its 

ordinary meaning as ‘the value obtained by multiplying corresponding elements of sets of values 

and summing the results.”’ Complainants’ Br. at 44 (citing Braasch Tr. 1444). 

They argue that in a general sense, an inner product between two respective sets of ones 

and zeroes, for instance, involves multiplying the respective ones and zeroes and then summing 

the results as shown below: 

Complainants further argue that the specification confirms that the claims use the term 

“inner product” in a manner consistent with its ordinary meaning. They rely on a portion of the 

’ It is expected that respondents would find portions of the specification that support the 

limitation of claim 3. See Resp. Br. at 221-222. However, the description of a particular 

embodiment in the specification with code segments limited in accordance with claim 3 should 

not be read as a limitation into claim 1. As the independent claim, claim 1 should be broad 

enough to encompass claim 3, but the limitation of claim 3 should not be read into claim 1. 

53 

is nothing in independent claim 1 (from which claim 3 depends) to limit the length of the code 

segments in that way.9 

Accordingly, it is found that a "segment" as used in the asserted claims refers to a portion 

of one cycle (i.e., epoch) of a reference code. 

"An Inner Product" 

Claim 1 of the '346 patent (from which asserted claim 4 depends) provides in its third 

enumerated limitation: "(c) forming an inner product between said selected code segment and a 

portion of said repeating code of said digital signal to produce a partial correlation." JX-2 

('346 patent), col. 12,11,42-44. 

Complainants argue that the term "inner product" "should be construed consistent with its 

ordinary meaning as 'the value obtained by multiplying corresponding elements of sets of values 

and summing the results. '" Complainants' Br. at 44 (citing Braasch Tr. 1444). 

They argue that in a general sense, an inner product between two respective sets of ones 

and zeroes, for instance, involves multiplying the respective ones and zeroes and then summing 

the results as shown below: 

= 1 x'l +0)( 1 .. 1 X 1 .. 0xO+0)(1+1 )(1=3 

Complainants further argue that the specification confirms that the claims use the term 

"inner product" in a manner consistent with its ordinary meaning. They rely on a portion of the 

9 It is expected that respondents would find portions of the specification that support the 

limitation of claim 3. See Resp. Br. at 221-222. However, the description of a particular 

embodiment in the specification with code segments limited in accordance with claim 3 should 

not be read as a limitation into claim 1. As the independent claim, claim 1 should be broad 

enough to encompass claim 3, but the limitation of claim 3 should not be read into claim 1. 

53 
specification illustrating an embodiment of the ‘346 invention, which states that “[tlhe operation 

consists of multiplying each of the 66 signal samples . . . by 66 code samples (formed by 

extending 33 code samples with the code extender 409), and summing the results . . . .” Id. at 

44-45 (quoting JX-2 (‘346 patent), col. 7,lI. 39-43 (complainants’ emphasis); citing Braasch Tr 

1445-1446). 

Complainants further argue that in connection with the patent’s preferred embodiment, the 

specification provides a mathematical expression of such an operation. Id. at 45 (citing JX-2, col. 

7, 11. 44-50). 

In their post-hearing brief, respondents do not prose a succinct verbal construction of the 

term “inner product.” See, e.g., Resp. Br. at 220 (chart contrasting the parties’ proposed 

constructions). Yet, they argue that the patentees have acted as their own lexicographer with 

respect to “an inner product,” and defined it mathematically in the specification as: 

PxK 

i=l 

<signal,> <code ci> 

See Resp. Br. at 220 (citing JX-2 (‘346 patent); see also, col. 7,11.27-50 (describing the 

mathematical operation that yields an the inner product, and illustrating the advance of 

information through a portion of the preferred embodiment). 

Respondents argue that complainants (both at the hearing and in their briefs) treat the 

mathematical expression in the specification as “just an example,” and attempt to broaden the 

definition of “inner product” unjustifiably. See Id. at 220-2 1 ; Resp. Reply at 46. 

The Staff acknowledges that respondents have set forth more than one proposed claim 

construction for “an inner product” during the course of this investigation, but agrees with one of 

54 

specification illustrating an embodiment of the '346 invention, which states that "[t]he operation 

consists of multiplying each of the 66 signal samples ... by 66 code samples (formed by 

extending 33 code samples with the code extender 409), and summing the results ... . " Id at 

44-45 (quoting JX-2 ('346 patent), col. 7, ll. 39-43 (complainants' emphasis); citing Braasch Tr. 

1445-1446). 

Complainants further argue that in connection with the patent's preferred embodiment, the 

specification provides a mathematical expression of such an operation. Id at 45 (citing JX-2, col. 

7,11.44-50). 

In their post-hearing brief, respondents do not prose a succinct verbal construction of the 

term "inner product." See, e.g., Resp. Br. at 220 (chart contrasting the parties' proposed 

constructions). Yet, they argue that the patentees have acted as their own lexicographer with 

respect to "an inner product," and defined it mathematically in the specification as: 

PxK 

L <signal;> <code c;> 

i=l 

See Resp. Br. at 220 (citing JX-2 ('346 patent); see also, col. 7, ll. 27-50 (describing the 

mathematical operation that yields an the inner product, and illustrating the advance of 

information through a portion of the preferred embodiment). 

Respondents argue that complainants (both at the hearing and in their briefs) treat the 

mathematical expression in the specification as "just an example," and attempt to broaden the 

definition of "inner product" unjustifiably. See Id at 220-21; Resp. Reply at 46. 

The Staff acknowledges that respondents have set forth more than one proposed claim 

construction for "an inner product" during the course of this investigation, but agrees with one of 

54 
their earlier proposals by which an inner product is the sum of the results of multiplying the digital 

signal samples with a respective chip of the selected code segment. See Staff Br. at 23-24. 

There is no disagreement among the parties that although the definition of “inner 

product,” including its mathematical expression, occurs in connection with a description of a 

preferred embodiment, the definition itself is one of general application. Nor is there any 

disagreement about the basic operation by which numbers are multiplied and added. Upon 

examination of the specification, the undersigned concurs that the term is defined in the 

specification, in particular by the mathematical expression reproduced therein and its surrounding 

context. 

The disagreement among the parties is somewhat vague, at least if one considers only the 

proposed claim constructions offered in the brief (rather than the infringement arguments). 

However, it is apparent that a question is raised as to whether or not the inner product can reflect 

an adjustment for the Doppler effect (detailed above in the technology background section I.B. 1 .). 

See, e.g., Compl. Br. at 45-46. As discussed below, the specification shows that the answer must 

be in the affirmative, although that adjustment does not occur as a result of the mathematical 

operation expressed in the specification, but rather beforehand. 

While the simple mathematical operation that defines “inner product” does not contain any 

function connected directly to Doppler adjustment, in the preferred embodiment the multiplication 

is performed after the signal has adjusted for Doppler. In particular, the inner product 

multiplication takes place in the “convolution processor 109” as it is labeled in the embodiment 

illustrated in the specification. See Braasch Tr. 1448; JX-2 (‘346 patent), col. 7,ll. 7-1 1 (Fig. 4 

depicts convolution processor 109). The received signal is multiplied with a value for Doppler in 

55 

their earlier proposals by which an inner product is the sum of the results of multiplying the digital 

signal samples with a respective chip of the selected code segment. See StaffBr. at 23-24. 

There is no disagreement among the parties that although the definition of "inner 

product," including its mathematical expression, occurs in connection with a description of a 

preferred embodiment, the definition itself is one of general application. Nor is there any 

disagreement about the basic operation by which numbers are multiplied and added. Upon 

examination of the specification, the undersigned concurs that the term is defined in the 

specification, in particular by the mathematical expression reproduced therein and its surrounding 

context. 

The disagreement among the parties is somewhat vague, at least if one considers only the 

proposed claim constructions offered in the brief (rather than the infringement arguments). 

However, it is apparent that a question is raised as to whether or not the inner product can reflect 

an adjustment for the Doppler effect (detailed above in the technology background section LB.l.). 

See, e.g., Compl. Br. at 45-46. As discussed below, the specification shows that the answer must 

be in the affirmative, although that adjustment does not occur as a result of the mathematical 

operation expressed in the specification, but rather beforehand. 

While the simple mathematical operation that defines "inner product" does not contain any 

function connected directly to Doppler adjustment, in the preferred embodiment the multiplication 

is performed after the signal has adjusted for Doppler. In particular, the inner product 

multiplication takes place in the "convolution processor 109" as it is labeled in the embodiment 

illustrated in the specification. See Braasch Tr. 1448; JX-2 ('346 patent), col. 7, 11. 7-11 (Fig. 4 

depicts convolution processor 109). The received signal is multiplied with a value for Doppler in 

55 
the tuner 105. JX-2 (‘346 patent), col. 4,11. 10-14. In the embodiment shown in Figure 1, the 

convolution processor 109 is located after the tuner 105, and the operations of the convolution 

processor are performed after those of the tuner. See JX-2 (‘346 patent), Fig. 1; col. 4,11. 8-17, 

11.43-62 5265; see Heppe Tr. 2787-2788,2797-2798 (confirming in the Figure 1 embodiment that 

the signal is Doppler-adjusted). As a result, the inner product equation shown in column 7 of the 

specification represents the correlation of a Doppler-adjusted signal with a reference code. 

In fact, the current proposed construction offered by respondents and their expert, 

Dr. Heppe, is directly contrary to the positions taken in Dr. Heppe’s validity expert report. There, 

he opined that an alleged prior art patent first multiplies the reference code with a value for 

Doppler and then multiplies the resulting Doppler-adjusted code with a received signal in the 

digital correlator. See Braasch Tr. 1459-1460; Heppe Tr. 3 113-3 114; RX-104 (prior art patent), 

col. 9,11.23-24; col. 9,l. 66 - col. 10,l. 3; col. 11,II. 56-61. Respondents’ expert asserted that 

this correlation between a received signal and a Doppler-adjusted reference code forms the 

required inner product notwithstanding the fact that the inner product equation contains a value 

for Doppler, and the Doppler is removed in the digital correlator. Heppe Tr. 3 1 13-3 1 14; Braasch 

Tr. 1458-1460. 

When respondents’ expert was confronted during his deposition and at hearing with the 

inconsistency between respondents’ earlier positions and their current proposed claim 

construction, Dr. Heppe testified that he provided “both sides of the question,” rather than 

“recommend a single course.” He indicated that he provided a “nuanced description of the 

situation” to inform the court’s opinion. See Heppe Tr. 3 1 15-3 1 16; see also Heppe Tr. 3 146-3 149 

(inconsistencies or “multiple alternatives” with respect to another claim term). The court finds 

56 

the tuner 105. JX-2 ('346 patent), col. 4, 11. 10-14. In the embodiment shown in Figure 1, the 

convolution processor 109 is located after the tuner 105, and the operations of the convolution 

processor are performed after those of the tuner. See JX-2 ('346 patent), Fig. 1; col. 4, 11. 8-17, 

11. 43-62 5265; see Heppe Tr. 2787-2788,2797-2798 (confirming in the Figure 1 embodiment that 

the signal is Doppler-adjusted). As a result, the inner product equation shown in column 7 of the 

specification represents the correlation of a Doppler-adjusted signal with a reference code. 

In fact, the current proposed construction offered by respondents and their expert, 

Dr. Heppe, is directly contrary to the positions taken in Dr. Heppe's validity expert report. There, 

he opined that an alleged prior art patent first multiplies the reference code with a value for 

Doppler and then multiplies the resulting Doppler-adjusted code with a received signal in the 

digital correlator. See Braasch Tr. 1459-1460; Heppe Tr. 3113-3114; RX-I04 (prior art patent), 

col. 9, 11. 23-24; col. 9,1. 66 - col. 10,1. 3; col. 11,11. 56-61. Respondents' expert asserted that 

this correlation between a received signal and a Doppler-adjusted reference code forms the 

required inner product notwithstanding the fact that the inner product equation contains a value 

for Doppler, and the Doppler is removed in the digital correlator. Heppe Tr. 3113-3114; Braasch 

Tr. 1458-1460. 

When respondents' expert was confronted during his deposition and at hearing with the 

inconsistency between respondents' earlier positions and their current proposed claim 

construction, Dr. Heppe testified that he provided "both sides of the question," rather than 

"recommend a single course." He indicated that he provided a "nuanced description of the 

situation" to inform the court's opinion. See Heppe Tr. 3115-3116; see also Heppe Tr. 3146-3149 

(inconsistencies or "multiple alternatives" with respect to another claim term). The court finds 

56 
this explanation somewhat puzzling. 

Although claim construction is indeed a question of law (and therefore to be determined 

by a court), it would have been much more useful if respondents’ expert had set forth Erom the 

beginning a proposed construction that he believed to be accurate, and upon which respondents 

could have constructed a sound, reliable and consistent set of argument that could be used 

throughout their case involving the ‘346 patent. In any event, as illustrated above, the ‘346 patent 

specification clearly states the manner in which the inner product is to be derived, and also that it 

may be the product of values that have already been adjusted for Doppler. 

Accordingly, the claim term “inner product” is construed to mean the value obtained by 

multiplying corresponding elements of sets of vdues and summing the results. The inner product 

may reflect a prior Doppler adjustment to values used to obtain the product. 

“A Tuner for Removing Doppler Shvt From the Digitized Signal 

and Producing an In-Phase (I) Signal and a Quadrature (@ 

Signal ” 

The term “a tuner for removing Doppler shift from the digitized signal and producing an 

in-phase (I) and a quadrature (Q) signal” appears in claim 11 of the ‘346 patent. See JX-2 (‘346 

patent), 13:22-24.” 

Complainants argue that “[tlhis claim term should be given its plain meaning: ‘A tuner for 

removing Doppler shift from the digitized signal and producing an in-phase (I) and a quadrature 

(Q) signal.”’ Compl. Br. at 48 (citing Braasch Tr. 1482-1483). 

lo The terms “I” and “Q” signals are used in the ‘346 patent specification. See, e.g., 

(“The output from the tuner is a baseband signal consisting of an in-phase component (I) and a 

quadrature component (Q).”). JX-2 (‘346 patent), col. 4,11. 14-16; see Heppe Tr. 2794-2795 

(discussing I and Q signals in relation to sign and cosign waves). 

57 

this explanation somewhat puzzling. 

Although claim construction is indeed a question of law (and therefore to be determined 

by a court), it would have been much more useful if respondents' expert had set forth from the 

beginning a proposed construction that he believed to be accurate, and upon which respondents 

could have constructed a sound, reliable and consistent set of argument that could be used 

throughout their case involving the '346 patent. In any event, as illustrated above, the '346 patent 

specification clearly states the manner in which the inner product is to be derived, and also that it 

may be the product of values that have already been adjusted for Doppler. 

Accordingly, the claim term "inner product" is construed to mean the value obtained by 

multiplying corresponding elements of sets of values and summing the results. The inner product 

may reflect a prior Doppler adjustment to values used to obtain the product. 

''A Tuner for Removing Doppler Shift From the Digitized Signal 

and Producing an In-Phase (I) Signal and a Quadrature (Q) 

Signal" 

The term "a tuner for removing Doppler shift from the digitized signal and producing an 

in-phase (I) and a quadrature (Q) signal" appears in claim 11 of the '346 patent. See JX-2 ('346 

patent), 13 :22-24.10 

Complainants argue that "[t]his claim term should be given its plain meaning: 'A tuner for 

removing Doppler shift from the digitized signal and producing an in-phase (I) and a quadrature 

(Q) signal.'" Compl. Br. at 48 (citing Braasch Tr. 1482-1483). 

10 The terms "I" and "Q" signals are used in the '346 patent specification. See, e.g., 

("The output from the tuner is a baseband signal consisting of an in-phase component (I) and a 

quadrature component (Q)."). JX-2 ('346 patent), col. 4, 11. 14-16; see Heppe Tr. 2794-2795 

(discussing 1 and Q signals in relation to sign and co sign waves). 

57 
Respondents argue that “this term does not require construction.” Resp. Br. at 223. 

Notwithstanding this statement, respondents proceed to argue that the claim language requires that 

the tuner do two things: first, to remove Doppler shift from the digitalized signal generated by the 

analog to digital converter; and second, to produce I and Q signals from which the Doppler has 

been removed. See Id. 

The Staff argues that the disputed term does not require construction in view of clear claim 

language. See Staff Br. at 24-25. 

The salient difference between complainants’ and respondents’ proposed constructions is 

that respondents require a specific order in which the tuner must perform its operations, and the 

circuitry used to perform such ordered operations. However, no such order or specific circuit is 

required. 

Claim 11 is an apparatus claim, and nothing in the claim language or the specification 

suggests that the tuner is required to perform, or is constructed to perform, the tuning operations 

in a particular order or at a particular point in a single circuit. Nothing in the specification 

suggests any benefit from performing the tuning operations in a particular order. To the contrary, 

the specification explains that the tuner has no particular requirements unique to the ‘346 patent, 

but rather is a conventional GPS tuner such as that used in the preferred embodiment. See JX-2 

(‘346 patent), col. 4,ll. 16-18 (“The steps of 105 and 106 are substantially similar to those used in 

conventional GPS receiver designs.”). 

Respondents’ expert acknowledged at the hearing that the I and Q signals are components 

58 

Respondents argue that "this term does not require construction." Resp. Br. at 223. 

Notwithstanding this statement, respondents proceed to argue that the claim language requires that 

the tuner do two things: first, to remove Doppler shift from the digitalized signal generated by the 

analog to digital converter; and second, to produce I and Q signals from which the Doppler has 

been removed. See Id. 

The Staff argues that the disputed term does not require construction in view of clear claim 

language. See StaffBr. at 24-25. 

The salient difference between complainants' and respondents' proposed constructions is 

that respondents require a specific order in which the tuner must perform its operations, and the 

circuitry used to perform such ordered operations. However, no such order or specific circuit is 

required. 

Claim 11 is an apparatus claim, and nothing in the claim language or the specification 

suggests that the tuner is required to perform, or is constructed to perform, the tuning operations 

in a particular order or at a particular point in a single circuit. Nothing in the specification 

suggests any benefit from performing the tuning operations in a particular order. To the contrary, 

the specification explains that the tuner has no particular requirements unique to the '346 patent, 

but rather is a conventional GPS tuner such as that used in the preferred embodiment. See JX-2 

(' 346 patent), col. 4, 11. 16-18 ("The steps of 105 and 106 are substantially similar to those used in 

conventional GPS receiver designs."). 

Respondents' expert acknowledged at the hearing that the I and Q signals are components 

58 
of the digitized signal. See Heppe Tr. 2795.” This fact is confirmed in the patent specification 

with reference to the preferred embodiment. JX-2 (‘346 patent), col. 4,11. 14-16 (“The output 

from the tuner is a baseband signal consisting of an in-phase component (I) and a quadrature 

component (Q).”). Thus, removal of Doppler after the signal is divided into I and Q components 

(ie., from the I and Q components of the signal), and it constitutes removal of Doppler from the 

digitized signal. See Braasch Tr. 1494. 

Accordingly, a tuner for removing Doppler shift from the digitized signal and producing 

an in-phase (I) and a quadrature (Q) signal is construed to mean a tuner for removing Doppler 

shift from the digitized signal and producing an in-phase (I) and a quadrature (Q) signal. 

“A Decimation Circuit for Subsampling the I and Q Signals” 

The term “a decimation circuit for subsampling the I and Q signals” appears in claim 1 1. 

Complainants argue that this claim term “should be given its plain meaning: ‘A circuit for 

decreasing the sampling rate of the I and Q signals.”’ Compl. Br. at 52 (citing Braasch Tr. 1491). 

Respondents argue that “the decimation circuit claim term does not require construction.” 

Resp. Br. at 224. Yet, they disagree with complainants’ proposed construction, and argue that the 

plain language of claim 11 requires that the decimation circuit operate after the tuner circuit has 

both performed Doppler wipeoff, and produced I and Q signals. See Id. 

The Staff argues that this term does not require construction in view of clear claim 

language. Staff Br. at 25. 

The contention of respondents’ expert in his initial report that the claimed tuner is met 

by a system which first generates I and Q signals in one circuit and then removes Doppler later in 

the digital correlator - the exact opposite order required by respondents’ current construction - 

suggests that respondents seek to add a requirement to create a noninfringement position. See 

Heppe Tr. 3 146-3 149. 

59 

of the digitized signal. See Heppe Tr. 2795. 11 This fact is confirmed in the patent specification 

with reference to the preferred embodiment. JX-2 ('346 patent), col. 4, 11. 14-16 ("The output 

from the tuner is a baseband signal consisting of an in-phase component (I) and a quadrature 

component (Q)."). Thus, removal of Doppler after the signal is divided into 1 and Q components 

(i.e., from the 1 and Q components of the signal), and it constitutes removal of Doppler from the 

digitized signal. See Braasch Tr. 1494. 

Accordingly, a tuner for removing Doppler shift from the digitized signal and producing 

an in-phase (I) and a quadrature (Q) signal is construed to mean a tuner for removing Doppler 

shift from the digitized signal and producing an in-phase (I) and a quadrature (Q) signal. 

''A Decimation Circuit/or Subsampling the I and Q Signals" 

The term "a decimation circuit for subsampling the 1 and Q signals" appears in claim 11. 

Complainants argue that this claim term "should be given its plain meaning: 'A circuit for 

decreasing the sampling rate of the 1 and Q signals.'" Compl. Br. at 52 (citing Braasch Tr. 1491). 

Respondents argue that "the decimation circuit claim term does not require construction." 

Resp. Br. at 224. Yet, they disagree with complainants' proposed construction, and argue that the 

plain language of claim 11 requires that the decimation circuit operate after the tuner circuit has 

both performed Doppler wipeoff, and produced 1 and Q signals. See Id. 

The Staff argues that this term does not require construction in view of clear claim 

language. StaffBr. at 25. 

II The contention of respondents' expert in his initial report that the claimed tuner is met 

by a system which first generates 1 and Q signals in one circuit and then removes Doppler later in 

the digital correlator - the exact opposite order required by respondents' current constructionsuggests that respondents seek to add a requirement to create a noninfringement position. See 

Heppe Tr. 3146-3149. 

59 
In its summary of the invention, the patent specification explains that “the complete 

apparatus consists of a conventional GPS tuner, a decimation circuit, a convolution processor, and 

RAM blocks that accumulate convolution results.” JX-2 (‘346 patent), col. 2,ll. 64-66. The 

specification further describes the operation of the decimator by stating that “[tlhe processor 

begins by decimating input IF samples to create a signal stream at a desired sample rate, where 

the rate is precisely matched to the timing of the incoming signal. If the desired sample rate is Pf, 

(P samples per C/A chip) then the sampling rate is set so that exactly 1023 XP samples are taken in 

each signal epoch.” JX-2 (‘346 patent), col. 3,ll. 12-14 (emphasis added). 

As in the case of the tuner limitation (construed above), the decimator limitation is part of 

an apparatus claim (claim 1 l), which does not mandate a particular order of operations. Nor is 

there any portion of the specification suggesting that the decimator should be required to operate 

after Doppler removal for any particular reason. Complainants admit that Figure 1 depicts a 

circuit in which Doppler is removed prior to decimation. See Compl. Reply at 10 n.6. However, 

there is nothing in the specification to indicate that such must be the case in all embodiments of 

the claimed invention. 

Accordingly, a decimation circuit for subsampling the I and Q signals is construed to mean 

a circuit for decreasing the sampling rate of the I and Q signals. 

“GPS Signals Having a Repeating Code” 

Complainants argue that no party has made any substantive argument with respect to the 

term “GPS signals having a repeating code,” which appears in independent claim 1 1. See Compl. 

Reply at 10 n.7. 

Respondents argue that “GPS signals having a repeating code” would be understood by 

60 

In its summary of the invention, the patent specification explains that "the complete 

apparatus consists of a conventional GPS tuner, a decimation circuit, a convolution processor, and 

RAM blocks that accumulate convolution results." JX-2 ('346 patent), col. 2, 11. 64-66. The 

specification further describes the operation of the decimator by stating that "[t]he processor 

begins by decimating input IF samples to create a signal stream at a desired sample rate, where 

the rate is precisely matched to the timing of the incoming signal. If the desired sample rate is Pfo 

(P samples per C/ A chip) then the sampling rate is set so that exactly 1023 x P samples are taken in 

each signal epoch." JX-2 ('346 patent), col. 3, 11. 12-14 (emphasis added). 

As in the case of the tuner limitation (construed above), the decimator limitation is part of 

an apparatus claim (claim 11), which does not mandate a particular order of operations. Nor is 

there any portion of the specification suggesting that the decimator should be required to operate 

after Doppler removal for any particular reason. Complainants admit that Figure 1 depicts a 

circuit in which Doppler is removed prior to decimation. See Compl. Reply at 10 n.6. However, 

there is nothing in the specification to indicate that such must be the case in all embodiments of 

the claimed invention. 

Accordingly, a decimation circuit for subsampling the I and Q signals is construed to mean 

a circuit for decreasing the sampling rate of the I and Q signals. 

"GPS Signals Having a Repeating Code" 

Complainants argue that no party has made any substantive argument with respect to the 

term "GPS signals having a repeating code," which appears in independent claim 11. See Compl. 

Reply at 10 n.7. 

Respondents argue that "GPS signals having a repeating code" would be understood by 

60 
one of ordinary skill in the art to mean precisely that, and that the term does not require 

construction. Resp. Br. at 225. They disagree with any attempt to add limitations simply to avoid 

the prior art, but offer no analysis to accompany their position. See Id. 

The Staff argues that this term does not require construction, but does not object to the 

proposed construction contained in complainants’ pre-hearing brief to the effect that the term 

refers to “GPS signals each including a code that is unique to its sender and that repeats with a 

period equivalent to the length of the code.” The Staff argues that such a construction would be 

consistent with the specification. See Staff Br. at 23. 

In their reply, respondents argue that during the hearing, complainants’ expert admitted 

that “limitations that Global Locate sought to add to the claim term” are not found in the 

specification; that complainants appear to have abandoned prior arguments; and thus, no 

construction is necessary. See Reply at 49-50 (citing Braasch Tr. 1534). 

There appears no longer to be any controversy with respect to this claim. Indeed, there is 

no support in the intrinsic evidence for requiring an identifier to be added to the repeating code 

that is unique to the claimed invention of this patent. However, it is noted as a matter of technical 

background that during the hearing (in a transcript portion cited by respondents), complainants’ 

expert pointed out that at least in modern satellites it is not uncommon for each GPS satellite to 

broadcast a PRN code which is unique to the satellite. See Braasch Tr. 1533-1 536. Such a fact is 

not, however, included as a claim limitation. 

D. 1nfring;ement Determination 

Complainants accuse the SiRF GSCi-4100/4200 and GSCi5000 series GPS chips, which 

incorporate the GPS Acquisition Module or GAM, of infringing claims 4 and 11 of the ‘346 

61 

one of ordinary skill in the art to mean precisely that, and that the term does not require 

construction. Resp. Br. at 225. They disagree with any attempt to add limitations simply to avoid 

the prior art, but offer no analysis to accompany their position. See ld. 

The Staff argues that this term does not require construction, but does not object to the 

proposed construction contained in complainants' pre-hearing brief to the effect that the term 

refers to "GPS signals each including a code that is unique to its sender and that repeats with a 

period equivalent to the length of the code." The Staff argues that such a construction would be 

consistent with the specification. See StaffBr. at 23. 

In their reply, respondents argue that during the hearing, complainants' expert admitted 

that "limitations that Global Locate sought to add to the claim term" are not found in the 

specification; that complainants appear to have abandoned prior arguments; and thus, no 

construction is necessary. See Reply at 49-50 (citing Braasch Tr. 1534). 

There appears no longer to be any controversy with respect to this claim. Indeed, there is 

no support in the intrinsic evidence for requiring an identifier to be added to the repeating code 

that is unique to the claimed invention of this patent. However, it is noted as a matter of technical 

background that during the hearing (in a transcript portion cited by respondents), complainants' 

expert pointed out that at least in modem satellites it is not uncommon for each GPS satellite to 

broadcast a PRN code which is unique to the satellite. See Braasch Tr. 1533-1536. Such a fact is 

not, however, included as a claim limitation. 

D. Infringement Determination 

Complainants accuse the SiRF GSCi-41 00/4200 and GSCi5000 series GPS chips, which 

incorporate the GPS Acquisition Module or GAM, of infringing claims 4 and 11 of the '346 

61 
patent. Complainants allege that GSCi-410/4200 chips are incorporated into a number of 

products sold in the United States, including the [ 

E 

incorporated into a number of products sold in the United States, including the [ 

] and the 

.] It is further alleged that GSCi-5000 chips are also 

]I2 Complainants also allege that SiRF has used each of 

the accused chips domestically. In particular, they accuse SiRF of testing the GSCi-4100/4200 

and GSCi-500 chips in the United States. Compl. Br. at 55. 

In their post-hearing brief, respondents argue that none of the respondents is a direct 

infringer, and that complainants have failed to prove contributory or induced infringement. Resp. 

Br. at 225-26. However, respondents do not contest the allegation that at least the GSCi5000 

chipsets are sold to [ ] for use in devices sold in the United States. See Id. at 288 (arguing 

that sales are limited and do not support a broad remedy). Furthermore, in neither their main brief 

nor their reply brief do respondents contest complainants’ allegations that SiRF has tested the 

accused products in the United States. See, e.g., Resp. Reply at 44-45,53-56. 

Indeed, the record establishes SiRF’s testing in the United States of imported, accused 

products. See Braasch Tr. 1414-1415; Ogren Tr. 1765-1766 (confirming tests in the United States 

of the GSCi-5000); CX-377C (Overview Slides produced by SiRF concerning testing in the 

United States) at 602SiRF13145-13150. 

In view of respondents’ failure to dispute complainants’ arguments and evidence, and the 

l2 Complainants also allege that the GSCi-5000 will be incorporated into a [ 1 

product. Compl. Br. at 55. However, there is no allegation that such a produced has been both 

(1) manufactured, and (2) sold for importation or imported into the United States. See Compl. 

Br. at 55. 

62 

patent. Complainants allege that GSCi-41 0/4200 chips are incorporated into a number of 

products sold in the United States, including the [ ] and the 

[ .] It is further alleged that GSCi-5000 chips are also 

incorporated into a number of products sold in the United States, including the [ 

] 12 Complainants also allege that SiRF has used each of 

the accused chips domestically. In particular, they accuse SiRF of testing the GSCi-41 00/4200 

and GSCi-500 chips in the United States. CompI. Br. at 55. 

In their post-hearing brief, respondents argue that none of the respondents is a direct 

infringer, and that complainants have failed to prove contributory or induced infringement. Resp. 

Br. at 225-26. However, respondents do not contest the allegation that at least the GSCi5000 

chip sets are sold to [ ] for use in devices sold in the United States. See Id. at 288 (arguing 

that sales are limited and do not support a broad remedy). Furthermore, in neither their main brief 

nor their reply brief do respondents contest complainants' allegations that SiRF has tested the 

accused products in the United States. See, e.g., Resp. Reply at 44-45, 53-56. 

Indeed, the record establishes SiRF's testing in the United States of imported, accused 

products. See Braasch Tr. 1414-1415; Ogren Tr. 1765-1766 (confirming tests in the United States 

of the GSCi-5000); CX-377C (Overview Slides produced by SiRF concerning testing in the 

United States) at 602SiRF13145-13150. 

In view of respondents' failure to dispute complainants' arguments and evidence, and the 

12 Complainants also allege that the GSCi-5000 will be incorporated into a [ ] 

product. CompI. Br. at 55. However, there is no allegation that such a produced has been both 

(1) manufactured, and (2) sold for importation or imported into the United States. See CompI. 

Br. at 55. 

62 
clear evidence showing the domestic testing of imported, accused products by the SiRF 

respondents, a violation of section 337 may be based on direct infringement by at least the SiRF 

respondents. To prove a violation of the statute, it is not necessary for complainants to establish 

the elements of contributory or induced infringement (although such elements might be evident 

given SiW’s admitted sales of accused chips to [ 

United States). Thus, the remaining question is whether or not the accused chips infringe claim 4 

and, or, claim 11 by practicing all of the claim elements. 

] for use in products imported into the 

It is admitted that “[tlhere is “no dispute concerning the operation or architecture” of the 

accused chips. Resp. Br. at 225; see also Resp. Reply at 44 (“[Tlhere is no dispute over the 

operation of the accused products . . . .”). 

As indicated above, complainants argue that all claim elements are found in the accused 

devices. They argue that the claims are literally infringed, and set forth arguments and citations to 

record evidence as to all limitations contained in both asserted claims. See Compl. Br. at 55-59. 

Respondents argue that if the Commission adopts even one of their proposed claim 

constructions for a term found in an asserted claim, that claim cannot be infringed. See Resp. Br. 

at 225. Indeed, all claim elements must exist in an infringing device in order for it to infringe. 

However, the undersigned has not adopted any of the key points of respondents’ proposed 

constructions that might have prevented a finding of infringement. See section 1V.C. (claim 

construction). Thus, the infringement analysis cannot focus on a single claim element. 

While respondents do not contest complainants’ allegations as to most limitations of the 

asserted claims, they contest complainants’ infringement allegations and present evidence and 

arguments concerning each of the claim limitations that were contested in connection with the 

63 

clear evidence showing the domestic testing of imported, accused products by the SiRF 

respondents, a violation of section 337 may be based on direct infringement by at least the SiRF 

respondents. To prove a violation of the statute, it is not necessary for complainants to establish 

the elements of contributory or induced infringement (although such elements might be evident 

given SiRF's admitted sales of accused chips to [ ] for use in products imported into the 

United States). Thus, the remaining question is whether or not the accused chips infringe claim 4 

and, or, claim 11 by practicing all of the claim elements. 

It is admitted that "[t]here is "no dispute concerning the operation or architecture" of the 

accused chips. Resp. Br. at 225; see also Resp. Reply at 44 ("[T]here is no dispute over the 

operation of the accused products .... "). 

As indicated above, complainants argue that all claim elements are found in the accused 

devices. They argue that the claims are literally infringed, and set forth arguments and citations to 

record evidence as to all limitations contained in both asserted claims. See CompI. Br. at 55-59. 

Respondents argue that if the Commission adopts even one of their proposed claim 

constructions for a term found in an asserted claim, that claim cannot be infringed. See Resp. Br. 

at 225. Indeed, all claim elements must exist in an infringing device in order for it to infringe. 

However, the undersigned has not adopted any of the key points of respondents' proposed 

constructions that might have prevented a finding of infringement. See section IV.C. (claim 

construction). Thus, the infringement analysis cannot focus on a single claim element. 

While respondents do not contest complainants' allegations as to most limitations of the 

asserted claims, they contest complainants' infringement allegations and present evidence and 

arguments concerning each of the claim limitations that were contested in connection with the 

63 
claim construction issue, i. e., limitations addressing the length code segments, the inner product, 

the required tuner, and the required decimation circuit. See Id. at 226-236. Yet, in each case, 

respondents’ arguments are based on their proposed constructions. Thus, respondents argue that 

the accused products do not correlate segments of “equal length,” a requirement that was rejected 

in connection with claim construction. See Id. at 226-29. 

Respondents also argue that the accused products do not form the required inner product 

because, among other things, the GAM found in the accused devices multiplies a portion of a 

satellite’s “PN code” (or pseudorandom code) by a portion of the reference code that compensates 

for Doppler. See Id. at 229-232 (relying in part on product documentation). Respondents reiterate 

their rejected argument that the tuner must perform its operations in a certain order, an argument 

that was rejected above. See Id. at 232-35. Respondents also argue that the GAM in the accused 

devices does not include a decimation circuit that subsamples I and Q signals from which Doppler 

has first been removed. See Id. at 235-236. However, no such Doppler removal limitation was 

found to exist in the decimation element of claim 1 1. 

The Staff argues that the accused products do not infringe claim 4 because they do not 

meet all the inner product limitation of independent claim 1. The Staff also argues that claim 1 1 

is not infringed because the accused products do not meet the “tuner” and “decimation circuit” 

limitations. See Staff Br. at 25-26. As in the case of respondents’ more expansive arguments, the 

Staffs arguments are based on claim construction interpretations that have been rejected. 

As indicated above, there is no dispute as to the vast majority of claim elements. In 

addition, evidence concerning those undisputed elements is summarized in complainants’ main 

brief. See Compl. Br. at 56-61 (citing, inter alia, Braasch Tr. 1428-1504). With respect to the 

64 

claim construction issue, i.e., limitations addressing the length code segments, the inner product, 

the required tuner, and the required decimation circuit. See Id. at 226-236. Yet, in each case, 

respondents' arguments are based on their proposed constructions. Thus, respondents argue that 

the accused products do not correlate segments of "equal length," a requirement that was rejected 

in connection with claim construction. See Id. at 226-29. 

Respondents also argue that the accused products do not form the required inner product 

because, among other things, the GAM found in the accused devices multiplies a portion of a 

satellite's "PN code" (or pseudorandom code) by a portion of the reference code that compensates 

for Doppler. See Id. at 229-232 (relying in part on product documentation). Respondents reiterate 

their rejected argument that the tuner must perform its operations in a certain order, an argument 

that was rejected above. See Id. at 232-35. Respondents also argue that the GAM in the accused 

devices does not include a decimation circuit that subsamples I and Q signals from which Doppler 

has first been removed. See Id. at 235-236. However, no such Doppler removal limitation was 

found to exist in the decimation element of claim 11. 

The Staff argues that the accused products do not infringe claim 4 because they do not 

meet all the inner product limitation of independent claim 1. The Staff also argues that claim 11 

is not infringed because the accused products do not meet the "tuner" and "decimation circuit" 

limitations. See StaffBr. at 25-26. As in the case of respondents' more expansive arguments, the 

Staffs arguments are based on claim construction interpretations that have been rejected. 

As indicated above, there is no dispute as to the vast majority of claim elements. In 

addition, evidence concerning those undisputed elements is summarized in complainants' main 

brief. See Compi. Br. at 56-61 (citing, inter alia, Braasch Tr. 1428-1504). With respect to the 

64 
code segments, the inner product, the required tuner and the required decimation circuit, a 

preponderance of the evidence demonstrates infringement of claims 4 and 11 by the accused 

devices. 

As required by claim 4, the accused devices perform correlation with code segments that 

are portions of one cycle (Le., epoch) of a reference code. In particular, the GAM in the accused 

products divides a pseudorandom reference code used for correlation into sixteen code segments. 

Braasch Tr. 1428-1430; CX-358C (GAM Documentation) at 602SiRF 292720-721 ; Heppe 

Tr. 3 104. The segments consist of a series of ones and zeroes. CX-358C (GAM Documentation) 

at 602SiRF 293139-40 (depicting R1, R2 and R3 values as ones and zeroes). The GAM divides 

the reference code into fifteen segments with a length of 128 samples and a sixteenth segment 

with a length of 126 samples with two zeroes added to the end. A location referred to the R3 

register holds segments of code. Braasch Tr. 1432; Heppe Tr. 3104-3105; CX-358C (GAM 

Documentation) at 602SiRF 293132,293137 (Figure 5-123 shows 128 samples passed to the R3 

register for correlation). 

The GAM has two copies of the R3 register, each of which loads and holds a segment of 

reference code. Braasch Tr. 1440-1441; CX-358C (GAM Documentation) at 602SiFtF 2931 18 

(Figure 5-1 10 depicting registers A and B, the two copies of the R3 register). A multiplexer (or 

MUX) selects a segment of code from either the A or B register for use in correlation. Braasch 

Tr. 1441-1443; CX-358C (GAM Documentation) at 602SiRF 2931 18. 

As required by claim 4, GAM in the accused devices uses an “inner product” (ie., the 

value obtained by multiplying corresponding elements of sets of values and summing the results) 

to compute correlation. The GAM performs correlation by multiplying a segment of reference 

65 

code segments, the inner product, the required tuner and the required decimation circuit, a 

preponderance of the evidence demonstrates infringement of claims 4 and 11 by the accused 

devices. 

As required by claim 4, the accused devices perform correlation with code segments that 

are portions of one cycle (i.e., epoch) of a reference code. In particular, the GAM in the accused 

products divides a pseudorandom reference code used for correlation into sixteen code segments. 

Braasch Tr. 1428-1430; CX-358C (GAM Documentation) at 602SiRF 292720-721; Heppe 

Tr. 3104. The segments consist of a series of ones and zeroes. CX-358C (GAM Documentation) 

at 602SiRF 293139-40 (depicting Rl, R2 and R3 values as ones and zeroes). The GAM divides 

the reference code into fifteen segments with a length of 128 samples and a sixteenth segment 

with a length of 126 samples with two zeroes added to the end. A location referred to the R3 

register holds segments of code. Braasch Tr. 1432; Heppe Tr. 3104-3105; CX-358C (GAM 

Documentation) at 602SiRF 293132, 293137 (Figure 5-123 shows 128 samples passed to the R3 

register for correlation). 

The GAM has two copies ofthe R3 register, each of which loads and holds a segment of 

reference code. Braasch Tr. 1440-1441; CX-358C (GAM Documentation) at 602SiRF 293118 

(Figure 5-110 depicting registers A and B, the two copies of the R3 register). A multiplexer (or 

MUX) selects a segment of code from either the A or B register for use in correlation. Braasch 

Tr. 1441-1443; CX-358C (GAM Documentation) at 602SiRF 293118. 

As required by claim 4, GAM in the accused devices uses an "inner product" (i.e., the 

value obtained by multiplying corresponding elements of sets of values and summing the results) 

to compute correlation. The GAM performs correlation by multiplying a segment of reference 

65 
code with a segment of satellite signal and sums the results to form a partial Correlation. Braasch 

Tr. 1450-1452; CX-358C (GAM Documentation) at 602SiRF 293 140-141 (Figure 5-130 depicts 

the inner product operation of the GAM); CX-858C (SiRF Verilog code encoding the GAM Flash 

Correlator). The GAM holds a portion of satellite signal constant while the portion of signal is 

correlated against multiple segments of Doppler-adjusted reference code. It repeats this process 

for each successive portion of satellite signal. Braasch Tr. 1461-1466; CX-358C (GAM 

Documentation) at 602SiRF 292720. Each correlation of a portion of received signal with a 

segment of Doppler-adjusted reference code produces a partial correlation. Braasch Tr. 1463- 

1464; CX-358C (GAM Documentation) at 602SiRF 293108 (The value of R1 incremented for 

each partial correlation). As each partial correlation is produced in the GAM flash correlator, the 

partial correlation value is summed with previous partial correlation results to form a plurality of 

full correlations. Braasch Tr. 1466-1468; CX-358C (GAM Documentation) at 602SiRF 293151- 

52 (Figure 5-1 37 depicting the GAM coherent integrators); CX-358C (GAM Documentation) at 

602SiRF 29272 1 (“each integration memory location behaves like an accumulator”). 

As required by claim 1 1, each device also includes a tuner for removing Doppler shift 

from the digitized signal and producing an in-phase (I) signal and a quadrature (Q) signal, 

according to the proper construction of the claim. See Braasch Tr. 1487. The GAM contains a 

mixer and numerically controlled oscillator (NCO) for the purpose of producing I and Q signals 

for correlation. Braasch Tr. 1487-1488; Heppe Tr. 2781 (GAM’s mixer creates I and Q outputs), 

3147 (GAM produces I and Q signals); CX-358C (GAM Documentation) at 602SiRF 293036 

(Figure 5-5 1 depicts the GAM’s ISIP block containing the Mixer and NCO). The GAM’s 

Doppler NCO and R2 register remove Doppler from the satellite signal by multiplying a Doppler 

66 

code with a segment of satellite signal and sums the results to form a partial correlation. Braasch 

Tr. 1450-1452; CX-358C (GAM Documentation) at 602SiRF 293140-141 (Figure 5-130 depicts 

the inner product operation of the GAM); CX-858C (SiRF Verilog code encoding the GAM Flash 

Correlator). The GAM holds a portion of satellite signal constant while the portion of signal is 

correlated against multiple segments of Doppler-adjusted reference code. It repeats this process 

for each successive portion of satellite signal. Braasch Tr. 1461-1466; CX-358C (GAM 

Documentation) at 602SiRF 292720. Each correlation of a portion of received signal with a 

segment of Doppler-adjusted reference code produces a partial correlation. Braasch Tr. 1463-

1464; CX-358C (GAM Documentation) at 602SiRF 293108 (The value ofRl incremented for 

each partial correlation). As each partial correlation is produced in the GAM flash correlator, the 

partial correlation value is summed with previous partial correlation results to form a plurality of 

full correlations. Braasch Tr. 1466-1468; CX-358C (GAM Documentation) at 602SiRF 293151-

52 (Figure 5-137 depicting the GAM coherent integrators); CX-358C (GAM Documentation) at 

602SiRF 292721 ("each integration memory location behaves like an accumulator"). 

As required by claim 11, each device also includes a tuner for removing Doppler shift 

from the digitized signal and producing an in-phase (1) signal and a quadrature (Q) signal, 

according to the proper construction ofthe claim. See Braasch Tr. 1487. The GAM contains a 

mixer and numerically controlled oscillator (NCO) for the purpose of producing I and Q signals 

for correlation. Braasch Tr. 1487-1488; Heppe Tr. 2781 (GAM's mixer creates I and Q outputs), 

3147 (GAM produces I and Q signals); CX-358C (GAM Documentation) at 602SiRF 293036 

(Figure 5-51 depicts the GAM's ISIP block containing the Mixer and NCO). The GAM's 

Doppler NCO and R2 register remove Doppler from the satellite signal by multiplying a Doppler 

66 
value with a segment of reference code, which is then multiplied by a portion of satellite signal. 

Braasch Tr. 1488. CX-358C (GAM Documentation) at 602SiRF 293135. 

As further required by claim 1 1, each accused device contains a decimation circuit for 

subsampling the I and Q signals, as that circuit is properly construed. The GAM’S decimation 

circuit subsamples I and Q components of the signal to reduce the sample rate. Braasch Tr. 1495- 

1498 (GAM decimator decreases the sampling rate); CX-358C (GAM Documentation) at 

602SiRF293052-53 (Figure 5-67 indicating the GAM decimator subsamples I and Q signals). 

The GAM performs correlation for both I and Q components of the received signal to produce the 

required I and Q partial correlations. Braasch Tr. 1499-1500. 

Accordingly, it is found that all limitations of claim 4 (and claim 1 from which it depends) 

and of claim 11 are present in the SiRF GSCi-4100/4200 and GSCi5000 series GPS chips. The 

accused devices literally infringe the asserted claims of the ‘346 patent. 

E. Validitv 

1. Anticipation 

Respondents argue that claims 4 and 11 of the ‘346 patent are invalid due to anticipation, 

if the claims are construed according to complainants’ proposed claim constructions. In 

particular, they argue that the GAM itself (which is found in the accused SiRF devices) is prior art 

to the ‘346 patent, and thus any finding of infringement automatically invalidates the asserted 

claim. See Resp. Br. at 236. In order to make their arguments as to each limitation of the asserted 

claims (including independent claim 1 from which claim 4 depends), respondents rely not on the 

GAM itself (with supporting documentation), but rather on two United States patents (ie., U.S. 

Patent No. 6,804,290 (“the ‘290 patent”) and U.S. Patent No. 6,775,319 (“the “‘319 patent”)) that 

67 

value with a segment of reference code, which is then multiplied by a portion of satellite signal. 

Braasch Tr. 1488. CX-358C (GAM Documentation) at 602SiRF 293135. 

As further required by claim 11, each accused device contains a decimation circuit for 

subsampling the I and Q signals, as that circuit is properly construed. The GAM's decimation 

circuit subsamples I and Q components of the signal to reduce the sample rate. Braasch Tr. 1495-

1498 (GAM decimator decreases the sampling rate); CX-358C (GAM Documentation) at 

602SiRF293052-53 (Figure 5-67 indicating the GAM decimator subsamples I and Q signals). 

The GAM performs correlation for both I and Q components of the received signal to produce the 

required I and Q partial correlations. Braasch Tr. 1499-1500. 

Accordingly, it is found that all limitations of claim 4 (and claim 1 from which it depends) 

and of claim 11 are present in the SiRF GSCi-4100/4200 and GSCi5000 series GPS chips. The 

accused devices literally infringe the asserted claims of the '346 patent. 

E. Validity 

1. Anticipation 

Respondents argue that claims 4 and 11 ofthe '346 patent are invalid due to anticipation, 

if the claims are construed according to complainants' proposed claim constructions. In 

particular, they argue that the GAM itself (which is found in the accused SiRF devices) is prior art 

to the' 346 patent, and thus any finding of infringement automatically invalidates the asserted 

claim. See Resp. Br. at 236. In order to make their arguments as to each limitation of the asserted 

claims (including independent claim 1 from which claim 4 depends), respondents rely not on the 

GAM itself (with supporting documentation), but rather on two United States patents (i.e., U.S. 

Patent No. 6,804,290 ("the '290 patent") and U.S. Patent No. 6,775,319 ("the '''319 patent")) that 

67 
they argue are prior art to the ‘346 patent, and describe the relevant GAM correlator architecture. 

See Id. at 236-254; Resp. Reply at 56-62. 

Complainants oppose respondents’ anticipation defense with detailed arguments and 

citations to the evidentiary record. Complainants also argue that inasmuch as respondents were 

barred during the hearing from presenting invalidity evidence concerning the GAM due to their 

failure to provide adequate notice of their anticipation arguments and to follow the procedural 

rules of this investigation, they should be not allowed at this juncture to argue that the GAM is 

invalidating prior art. See Compl. Br. at 69-78; Compl. Reply at 17-26. 

Although the Staff opposed a finding of infringement due to similarities between some of 

its proposed claim constructions and those of respondents, they do not join with respondents in 

arguing that the asserted claims are invalid due to anticipation, even under complainants’ 

proposed constructions. In particular, the Staff argues that with respect to the ‘290 patent, 

respondents’ expert admitted during his deposition that the ‘290 patent does not disclose the 

required “decimation circuit;” and with respect to the ‘3 19 patent, the Staff argues that 

respondents rely on attorney argument without citing to evidentiary testimony in order to explain 

how the ‘3 19 patent would meet every limitation of the asserted claims. See Staff Br. at 28; Staff 

Reply at 4. 

At the outset it must be observed that complainants are correct that due to a failure on 

respondents’ part to adhere to the procedural rules, and to avoid prejudice to complainants and the 

public interest, respondents were precluded at the hearing from offering any testimony from their 

expert, Dr. Heppe, that the GAM is prior art to the ‘346 patent. Heppe Tr. 2426-2428. 

Respondents nevertheless now assert that the GAM is prior art and that, if Global Locate succeeds 

68 

they argue are prior art to the '346 patent, and describe the relevant GAM correlator architecture. 

See Id. at 236-254; Resp. Reply at 56-62. 

Complainants oppose respondents' anticipation defense with detailed arguments and 

citations to the evidentiary record. Complainants also argue that inasmuch as respondents were 

barred during the hearing from presenting invalidity evidence concerning the GAM due to their 

failure to provide adequate notice of their anticipation arguments and to follow the procedural 

rules of this investigation, they should be not allowed at this juncture to argue that the GAM is 

invalidating prior art. See CompI. Br. at 69-78; Compi. Reply at 17-26. 

Although the Staff opposed a finding of infringement due to similarities between some of 

its proposed claim constructions and those of respondents, they do not join with respondents in 

arguing that the asserted claims are invalid due to anticipation, even under complainants' 

proposed constructions. In particular, the Staff argues that with respect to the '290 patent, 

respondents' expert admitted during his deposition that the '290 patent does not disclose the 

required "decimation circuit;" and with respect to the '319 patent, the Staff argues that 

respondents rely on attorney argument without citing to evidentiary testimony in order to explain 

how the '319 patent would meet every limitation of the asserted claims. See StaffBr. at 28; Staff 

Reply at 4. 

At the outset it must be observed that complainants are correct that due to a failure on 

respondents' part to adhere to the procedural rules, and to avoid prejudice to complainants and the 

public interest, respondents were precluded at the hearing from offering any testimony from their 

expert, Dr. Heppe, that the GAM is prior art to the '346 patent. Heppe Tr. 2426-2428. 

Respondents nevertheless now assert that the GAM is prior art and that, if Global Locate succeeds 

68 
in proving infringement, then the GAM anticipates. By basing their arguments on the ‘290 and 

‘3 19 patents, respondents attempt to make the same arguments they would have based on the 

GAM.’3 In any event, the factual record does not support a finding of patent claim invalidity 

based on either alleged prior art patent. 

As detailed above in connection with the claim construction and infringement issues, the 

specification of the ‘346 patent makes it clear that a key element of the claimed invention, 

including asserted claims 4 and 1 1 , is summing a plurality of partial correlations to form a 

plurality of correlations. Yet, testimony regarding the ‘290 patent confirmed that the ‘290 patent 

discloses forming only one full correlation at a time. See Compl. Br. at 72-73. For example, 

complainants’ Dr. Braasch testified that the ‘290 patent teaches summing segment correlation 

values to form a single correlation. See Braasch Tr. 3340-1334. Both ‘290 inventors, Jeff Ogren 

and Michael King, conceded that the ‘290 patent discloses summing the segment correlation 

values to form only a single correlation sum at a time. See Ogren Tr. 1775-1777; JX-1 10-1C 

(King Tr.) at 256-257. The ‘290 patent itself confirms this fact as well. See Rx-108 (‘290 

patent), col. 6,II. 41-44 (“This process continues until all 16 correlation values for all 16 segments 

are added together and stored as a single correlation sum in the first address of memory 206.”). 

Accordingly, the ‘290 patent does not anticipate the asserted claims of the ‘346 patent. 

There is a question as to whether or not the patents relied upon by respondents actually 

describe the GAM, especially the ‘290 patent. Named inventor Ogren conceded at his deposition 

and at the hearing that that the ‘290 patent does not describe the GAM. See Ogren Tr. 1783, 

1792-1793. Ogren further conceded that the GAM “was not developed” and in fact “didn’t even 

exist” until the middle of 2001 (which is nearly two years after the ‘346 patent was conceived). 

See Ogren Tr. 1795-1797. Michael King, the other ‘290 patent inventor, also testified during his 

deposition that the ‘290 patent does not describe the GAM. See JX-1 10-1C (King Tr.) at 50:6- 

12; see also Ogren Tr. 1786- 1789 (quoting from King deposition). 

69 

in proving infringement, then the GAM anticipates. By basing their arguments on the '290 and 

'319 patents, respondents attempt to make the same arguments they would have based on the 

GAM.13 In any event, the factual record does not support a finding of patent claim invalidity 

based on either alleged prior art patent. 

As detailed above in connection with the claim construction and infringement issues, the 

specification of the '346 patent makes it clear that a key element of the claimed invention, 

including asserted claims 4 and 11, is summing a plurality of partial correlations to form a 

plurality of correlations. Yet, testimony regarding the '290 patent confirmed that the '290 patent 

discloses forming only one full correlation at a time. See Compi. Br. at 72-73. For example, 

complainants' Dr. Braasch testified that the '290 patent teaches summing segment correlation 

values to form a single correlation. See Braasch Tr. 3340-1334. Both '290 inventors, Jeff Ogren 

and Michael King, conceded that the '290 patent discloses summing the segment correlation 

values to form only a single correlation sum at a time. See Ogren Tr. 1775-1777; JX-l1 0-1 C 

(King Tr.) at 256-257. The '290 patent itself confirms this fact as well. See RX-I08 ('290 

patent), col. 6, 11. 41-44 ("This process continues until all 16 correlation values for all 16 segments 

are added together and stored as a single correlation sum in the first address of memory 206."). 

Accordingly, the '290 patent does not anticipate the asserted claims of the '346 patent. 

13 There is a question as to whether or not the patents relied upon by respondents actually 

describe the GAM, especially the '290 patent. Named inventor Ogren conceded at his deposition 

and at the hearing that that the '290 patent does not describe the GAM. See Ogren Tr. 1783, 

1792-1793. Ogren further conceded that the GAM "was not developed" and in fact "didn't even 

exist" until the middle of2001 (which is nearly two years after the '346 patent was conceived). 

See Ogren Tr. 1795-1797. Michael King, the other '290 patent inventor, also testified during his 

deposition that the '290 patent does not describe the GAM. See JX-II0-IC (King Tr.) at 50:6-

12; see also Ogren Tr. 1786-1789 (quoting from King deposition). 

69 
With respect to the ‘3 19 patent, the Staff is correct in its argument that respondents have 

failed use testimonial evidence from the hearing to compare the ‘3 19 patent to each element of the 

asserted ‘346 patent claims. That may be due to the fact that during the hearing, in order to quell 

procedural objections, respondents’ counsel represented that he would not elicit such testimony 

from respondents’ expert. See Heppe Tr. 28042805. Yet, apparently for the first time, 

respondents now claim in their post-hearing briefing that the ‘3 19 patent is anticipatory prior art. 

Even if there were record evidence comparing the ‘3 19 patent to the asserted claims, the 

‘3 19 is not prior art to the ‘346 patent. The record shows that the earliest date of conception for 

the ‘3 19 patent is three months after the October 1999 conception date for the ‘346 patent. 

While respondents argue that the‘3 19 patent was conceived by January 1,2000, the signatures on 

the very invention disclosure upon which the patent is based is dated April 5,2000. See RX-192C 

(Motorola invention disclosure). The named inventor, King (who was unable to travel to the 

hearing),testified in his deposition that January 2000, as a conception date, was only an 

“approximation,” and that it could have been a month or two “either way.” See JX- 1 10- 1 C (King 

Tr.) at 107. Respondents also argue that by February 8,2000, King had designed the block 

diagram that would appear as Figure 4 in the ‘3 19 patent. Yet, King’s testimony was not clear on 

as to the precise date. See JX-110-1 C (King Tr.) at 90-91. Similarly, there is a lack of record 

evidence concerning the reduction practice of the invention claimed in the ‘3 19 patent. 

By contrast, complainants presented detailed evidence supporting the October 1999 

conception and spring 2000 reduction to practice of the ‘346 invention. Much of that evidence is 

discussed above in connection with the questions raised by respondents concerning Global 

Locate’s alleged lack of ownership of the ‘346 patent, and whether the true identity of the inventor 

70 

With respect to the '319 patent, the Staff is correct in its argument that respondents have 

failed use testimonial evidence from the hearing to compare the' 319 patent to each element of the 

asserted '346 patent claims. That may be due to the fact that during the hearing, in order to quell 

procedural objections, respondents' counsel represented that he would not elicit such testimony 

from respondents' expert. See Heppe Tr. 28042805. Yet, apparently for the first time, 

respondents now claim in their post-hearing briefing that the '319 patent is anticipatory prior art. 

Even if there were record evidence comparing the '319 patent to the asserted claims, the 

'319 is not prior art to the' 346 patent. The record shows that the earliest date of conception for 

the' 319 patent is three months after the October 1999 conception date for the' 346 patent. 

While respondents argue that the'319 patent was conceived by January 1,2000, the signatures on 

the very invention disclosure upon which the patent is based is dated April 5, 2000. See RX-I92C 

(Motorola invention disclosure). The named inventor, King (who was unable to travel to the 

hearing),testified in his deposition that January 2000, as a conception date, was only an 

"approximation," and that it could have been a month or two "either way." See JX-II 0-1 C (King 

Tr.) at 107. Respondents also argue that by February 8, 2000, King had designed the block 

diagram that would appear as Figure 4 in the '319 patent. Yet, King's testimony was not clear on 

as to the precise date. See JX-II 0-1 C (King Tr.) at 90-91. Similarly, there is a lack of record 

evidence concerning the reduction practice of the invention claimed in the' 319 patent. 

By contrast, complainants presented detailed evidence supporting the October 1999 

conception and spring 2000 reduction to practice ofthe '346 invention. Much of that evidence is 

discussed above in connection with the questions raised by respondents concerning Global 

Locate's alleged lack of ownership ofthe '346 patent, and whether the true identity of the inventor 

70 
was purposely concealed from the PTO -with both questions answered in the negative. As a 

result, even if the ‘3 19 patent had been conceived by January I, 2000, it still would not be prior 

art to the ‘346 patent’s asserted claims. Respondents have failed to establish by clear and 

convincing evidence that the asserted claims of the ‘346 patent are invalid due to anticipation by 

the ‘3 19 patent. 

In summary, it has not been established that the asserted claims of the ‘346 patent are 

invalid due to anticipation. 

2. Obviousness 

Respondents reiterate their argument that the asserted claims are anticipated under 

complainants’ proposed claim construction, and also argue that “to the extent that a particular 

claim is found not to be anticipated, then that claim is obvious in light of the GAM prior art and 

the understanding of one of ordinary skill in the art.” Resp. Br. at 254 (citing KSR, 127 S.Ct. at 

173 1). They state further only that “[tlhere is no evidence of secondary considerations of 

non-obviousness to rebut this invalidity.” See Id. The obviousness section of respondents’ brief 

(with respect to the ‘346 patent) consists of only three sentences. See Id. 

Complainants oppose any finding of obviousness, arguing that such a finding would not be 

supported by the record. See Compl. Reply at 2 1, n. 12. Similarly, the Staff argues that 

respondents rely only on attorney argument, and that their expert did not testify at the hearing as to 

any obviousness of the asserted claims. See Staff Reply at 4-5. 

It has long been recognized that in principle any anticipated claim is necessarily obvious. 

See In re Buxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)(“[S]ince anticipation is the 

ultimate of obviousness . . . the subject matter of these claims is necessarily obvious and we need 

71 

was purposely concealed from the PTa - with both questions answered in the negative. As a 

result, even if the' 319 patent had been conceived by January 1, 2000, it still would not be prior 

art to the '346 patent's asserted claims. Respondents have failed to establish by clear and 

convincing evidence that the asserted claims of the' 346 patent are invalid due to anticipation by 

the '319 patent. 

In summary, it has not been established that the asserted claims of the '346 patent are 

invalid due to anticipation. 

2. Obviousness 

Respondents reiterate their argument that the asserted claims are anticipated under 

complainants' proposed claim construction, and also argue that "to the extent that a particular 

claim is found not to be anticipated, then that claim is obvious in light of the GAM prior art and 

the understanding of one of ordinary skill in the art." Resp. Br. at 254 (citing KSR, 127 S.Ct. at 

1731). They state further only that "[t]here is no evidence of secondary considerations of 

non-obviousness to rebut this invalidity." See Id. The obviousness section of respondents' brief 

(with respect to the '346 patent) consists of only three sentences. See Id. 

Complainants oppose any finding of obviousness, arguing that such a finding would not be 

supported by the record. See Compi. Reply at 21, n.12. Similarly, the Staff argues that 

respondents rely only on attorney argument, and that their expert did not testify at the hearing as to 

any obviousness ofthe asserted claims. See Staff Reply at 4-5. 

It has long been recognized that in principle any anticipated claim is necessarily obvious. 

See In re Baxter Travenol Labs., 952 F.2d 388,391 (Fed. Cir. 1991)("[S]ince anticipation is the 

ultimate of obviousness ... the subject matter of these claims is necessarily obvious and we need 

71 
not consider them further.”). However, in this instance, respondents allege obviousness as an 

independent defense as to any claim not already found to be anticipated. Yet, respondents do not 

support their brief argument with any citation to evidence. 

It cannot be found by clear and convincing evidence that any asserted claim of the ‘346 

patent is invalid due to obviousness. 

F. Summarv 

As detailed above, Global Locate oms the asserted claims of the ‘346 patent, and had 

standing to this action with respect to the asserted claims. It is found that the accused products 

literally infringe claims 4 and 11 of the patent. Neither asserted claim is found to be invalid due 

to anticipation or obviousness. It has not been found that the ‘346 patent is unenforceable. 

V. The “Assisted-GPS” Patents: The ‘000, ‘080, And ‘651 Patents 

It is an accepted fact that signal communication from a satellite to a GPS receiver will not 

always occur under ideal conditions. In those circumstances, “Assisted-GPS,” also commonly 

known as “A-GPS,” will enhance the ability to determine global position in a low-signal 

environment. As explained below, Assisted-GPS “is a means of obtaining the data needed for 

navigation such as ephemeris or other acquisition assistance through an alternate communication 

path.” Dafesh Tr. 590.14 

Three of the patents-in-suit are Assisted-GPS patents. They are U.S. Patent No. 6,65 1,000 

(“the ‘000 patent”), US. Patent No. 6,704,651 (“the ‘651 patent”), and US. Patent No. 7,158,080 

(“the ‘080 patent”). 

l4 Assisted-GPS was developed decades ago, but became much more popular around 

1995. This popularity spike was due to the “E-9 1 1 ” mandate which required GPS in cell phones. 

Dafesh Tr. 590-591. 

72 

not consider them further."). However, in this instance, respondents allege obviousness as an 

independent defense as to any claim not already found to be anticipated. Yet, respondents do not 

support their brief argument with any citation to evidence. 

It cannot be found by clear and convincing evidence that any asserted claim of the '346 

patent is invalid due to obviousness. 

F. Summary 

As detailed above, Global Locate owns the asserted claims ofthe '346 patent, and had 

standing to this action with respect to the asserted claims. It is found that the accused products 

literally infringe claims 4 and 11 of the patent. Neither asserted claim is found to be invalid due 

to anticipation or obviousness. It has not been found that the' 346 patent is unenforceable. 

V. The "Assisted-GPS" Patents: The '000, '080, And '651 Patents 

It is an accepted fact that signal communication from a satellite to a GPS receiver will not 

always occur under ideal conditions. In those circumstances, "Assisted-GPS," also commonly 

known as "A-GPS," will enhance the ability to determine global position in a low-signal 

environment. As explained below, Assisted-GPS "is a means of obtaining the data needed for 

navigation such as ephemeris or other acquisition assistance through an alternate communication 

path." Dafesh Tr. 590. 14 

Three of the patents-in-suit are Assisted-GPS patents. They are U.S. Patent No. 6,651,000 

("the '000 patent"), U.S. Patent No. 6,704,651 ("the '651 patent"), and U.S. Patent No. 7,158,080 

("the '080 patent"). 

14 Assisted-GPS was developed decades ago, but became much more popular around 

1995. This popularity spike was due to the "E-911 " mandate which required GPS in cell phones. 

Dafesh Tr. 590-591. 

72 
A. Introduction 

As discussed earlier, global positioning is determined through the process of trilateration. 

(A short refresher here might be helpful.) Essentially, the GPS receiver uses the difference 

between the time of transmission of satellite radio frequency (“W”) signals, and the time of 

reception by the receiver, to determine position. Dafesh Tr. 559-560. 

The GPS receiver knows where the satellites are in space through information broadcast to 

it by the satellites in the form of ephemeri~.’~ As explained by complainant’s expert, Dr. Philip 

Dafesh, ephemeris data describes the trajectory of the satellite through space. “Ephemeris tells 

you, well, at this time, the satellite is here, at this later time, it is going to be here and at this later 

time, it is going to be here.” Dafesh Tr. 561. Accordingly, “the receiver needs to know accurately 

what time the signal was transmitted.” Id. l6 

Again, as noted earlier, each GPS satellite transmits two information streams modulated 

onto a carrier wave.17 The carrier wave is essentially the frequency at which the GPS satellite 

sends this information. One of the information streams is the pseudorandom noise code, i. e., the 

l5 Each of the 32 satellites that orbit the earth transmits at 1575.42 megahertz. Dafesh 

Tr. 565. 

l6 While the clock in the satellite is “very accurate,” the clock in the GPS receiver is 

“fairly inaccurate.” Dafesh Tr. 562. The receiver, however, gets time transferred to it through 

the navigation process. As noted, four satellites are used in trilateration. Three of the satellites 

determine position (i.e., longitude, latitude, and altitude), while the fourth satellite “is used to 

determine this inaccurate receiver clock.” Id. In sm, while the transmission times for the 

signals sent from the four satellites are going to be different, they will be received by the GPS 

receiver at the same time. This “common clock offset” is solved through the process of 

trilateration. Dafesh Tr. 562-563. 

The term “modulated” means that essentially the information streams are riding on the 17 

carrier wave. Dafesh Tr. 566, 577-578. 

73 

A. Introduction 

As discussed earlier, global positioning is determined through the process oftrilateration. 

(A short refresher here might be helpful.) Essentially, the GPS receiver uses the difference 

between the time of transmission of satellite radio frequency ("RF") signals, and the time of 

reception by the receiver, to determine position. Dafesh Tr. 559-560. 

The GPS receiver knows where the satellites are in space through information broadcast to 

it by the satellites in the form of ephemeris. 15 As explained by complainant's expert, Dr. Philip 

Dafesh, ephemeris data describes the trajectory of the satellite through space. "Ephemeris tells 

you, well, at this time, the satellite is here, at this later time, it is going to be here and at this later 

time, it is going to be here." Dafesh Tr. 561. Accordingly, "the receiver needs to know accurately 

what time the signal was transmitted." Id. 16 

Again, as noted earlier, each GPS satellite transmits two information streams modulated 

onto a carrier wave. 17 The carrier wave is essentially the frequency at which the GPS satellite 

sends this information. One of the information streams is the pseudorandom noise code, i.e., the 

15 Each ofthe 32 satellites that orbit the earth transmits at 1575.42 megahertz. Dafesh 

Tr. 565. 

16 While the clock in the satellite is "very accurate," the clock in the GPS receiver is 

"fairly inaccurate." Dafesh Tr. 562. The receiver, however, gets time transferred to it through 

the navigation process. As noted, four satellites are used in trilateration. Three of the satellites 

determine position (i.e., longitude, latitude, and altitude), while the fourth satellite "is used to 

determine this inaccurate receiver clock." Id. In sum, while the transmission times for the 

signals sent from the four satellites are going to be different, they will be received by the GPS 

receiver at the same time. This "common clock offset" is solved through the process of 

trilateration. Dafesh Tr. 562-563. 

17 The term "modulated" means that essentially the information streams are riding on the 

carrier wave. Dafesh Tr. 566, 577-578. 

73 
PRN code. The PRN code has its own “unique fingerprint,” thus enabling the GPS receiver to 

identify the satellite. Dafesh Tr. 564-567; CDX-96. 

The other information stream is the Navigation (NAV) Message. After a receiver has 

identified a satellite through the PRN code, and has acquired its signal, the receiver can read the 

NAV message.” The NAV message contains important time and satellite position information 

that the GPS receiver uses to compute its position. Id. In that regard, the navigation data message 

contains the time of transmission, as well as the ephemeris data, i.e., the accurate position, 

velocity, and clock correction (Le., the offset of the satellite’s clock from true GPS time) for each 

satellite. Dafesh Tr. 579-580; CDX-21 .I9 In normal modes of operation, the ephemeris data is 

valid for 2 to 4 hours. Dafesh Tr. 583. 

A GPS receiver acquires a satellite’s signal by matching a received PRN code against 

replica PRN code that the receiver stores for each satellite.20 As illustrated in CDX-97, the 

receiver will shift the replica PRN code until it matches the PRN code received from the satellite. 

This process of trying to establish a match is known as “correlation.” Dafesh Tr. 568-571 .21 

First comes acquisition, then tracking, then the ephemeris data which is used to obtain 

position. van Diggelen Tr. 1 60- 1 6 1. 

l9 Almanac data also is sent. This is coarse location and clock information for the 

satellites. Dafesh Tr. 580. 

2o In commercial GPS receivers, the code is 1023 bits long. It is a repeating code that 

changes at a rate of about one million bits per second. (It takes a satellite one millisecond to 

transmit a single set of PRN code.) By contrast, approximately 50 bits of navigation message are 

received per second. Dafesh Tr. 568-569. 

21 The correlation process can be expedited if the receiver is provided with other 

information in the form of acquisition assistance. For example, the search could be narrowed if 

the receiver had some understanding of its own position, as well as the position of the satellite. 

(continued ...) 

74 

PRN code. The PRN code has its own "unique fingerprint," thus enabling the GPS receiver to 

identify the satellite. Dafesh Tr. 564-567; CDX-96. 

The other information stream is the Navigation (NA V) Message. After a receiver has 

identified a satellite through the PRN code, and has acquired its signal, the receiver can read the 

NA V message. 18 The NA V message contains important time and satellite position information 

that the GPS receiver uses to compute its position. Id. In that regard, the navigation data message 

contains the time of transmission, as well as the ephemeris data, i.e., the accurate position, 

velocity, and clock correction (i.e., the offset of the satellite's clock from true GPS time) for each 

satellite. Dafesh Tr. 579-580; CDX-21.19 In normal modes of operation, the ephemeris data is 

valid for 2 to 4 hours. Dafesh Tr. 583. 

A GPS receiver acquires a satellite's signal by matching a received PRN code against 

replica PRN code that the receiver stores for each satellite.20 As illustrated in CDX-97, the 

receiver will shift the replica PRN code until it matches the PRN code received from the satellite. 

This process of trying to establish a match is known as "correlation." Dafesh Tr. 568-571.21 

18 First comes acquisition, then tracking, then the ephemeris data which is used to obtain 

position. van Diggelen Tr. 160-161. 

19 Almanac data also is sent. This is coarse location and clock information for the 

satellites. Dafesh Tr. 580. 

20 In commercial GPS receivers, the code is 1023 bits long. It is a repeating code that 

changes at a rate of about one million bits per second. (It takes a satellite one millisecond to 

transmit a single set ofPRN code.) By contrast, approximately 50 bits of navigation message are 

received per second. Dafesh Tr. 568-569. 

21 The correlation process can be expedited if the receiver is provided with other 

information in the form of acquisition assistance. For example, the search could be narrowed if 

the receiver had some understanding of its own position, as well as the position of the satellite. 

(continued ... ) 

74 
“[Tlhe PRN code is unlocking the door so that you can get the data, so you have this unique PRN 

code for each satellite and for each satellite, you have a particular key, which is your replica, and 

you unlock the door associated with each signal to get the data for each satellite.” Dafesh Tr. 578 

-579. 

Just how far you have to move to match the codes is called the “code phase offset, which 

would essentially be your time uncertainty.” Dafesh Tr. 57 1. During a receiver acquisition 

process, one of the things that the GPS receiver wants to do is to determine this code phase offset. 

Dafesh Tr. 571-572. 

In attempting to match the PRN code received from the satellite with the replica PRN code 

generated by the GPS receiver, however, there are “code uncertainty” and “frequency uncertainty” 

problems that must be solved. Dafesh Tr. 571-572,575. 

Code uncertainty is the receiver’s inability to know how far the received PRN code is 

offset relative to the replica code, and thus how far the receiver must shift the replica code to 

match the received code. Dafesh Tr. 571-572; CDX-97. 

Frequency uncertainty is the GPS receiver’s inability to know at what frequency a 

satellite’s signal will arrive at the receiver. For example, the frequency of a satellite’s signal will 

change during transmission due to “Doppler” effect. As a result, the frequency will be affected by 

whether the satellite is moving towards, over, or away from the GPS receiver. This will require 

the receiver to search over different frequencies until it gets a match. Dafesh Tr. 573-576; 

CDX-95. 

.. .continued) 

Dafesh Tr. 572-573. 

75 

"[T]he PRN code is unlocking the door so that you can get the data, so you have this unique PRN 

code for each satellite and for each satellite, you have a particular key, which is your replica, and 

you unlock the door associated with each signal to get the data for each satellite." Dafesh Tr. 578 

-579. 

Just how far you have to move to match the codes is called the "code phase offset, which 

would essentially be your time uncertainty." Dafesh Tr. 571. During a receiver acquisition 

process, one of the things that the GPS receiver wants to do is to determine this code phase offset. 

Dafesh Tr. 571-572. 

In attempting to match the PRN code received from the satellite with the replica PRN code 

generated by the GPS receiver, however, there are "code uncertainty" and "frequency uncertainty" 

problems that must be solved. Dafesh Tr. 571-572, 575. 

Code uncertainty is the receiver's inability to know how far the received PRN code is 

offset relative to the replica code, and thus how far the receiver must shift the replica code to 

match the received code. Dafesh Tr. 571-572; CDX-97. 

Frequency uncertainty is the GPS receiver's inability to know at what frequency a 

satellite's signal will arrive at the receiver. For example, the frequency of a satellite's signal will 

change during transmission due to "Doppler" effect. As a result, the frequency will be affected by 

whether the satellite is moving towards, over, or away from the GPS receiver. This will require 

the receiver to search over different frequencies until it gets a match. Dafesh Tr. 573-576; 

CDX-95. 

21( ... continued) 

Dafesh Tr. 572-573. 

75 
B. Weak Signal Environments And The Need For Assisted-GPS 

As noted, there are circumstances under which GPS receivers will have difficulty locating 

their position. Those circumstances occur in weak signal environments such as indoors, tunnels, 

parking garages, buildings, and where obstructed by foliage. In those situations, the satellite 

signal could be up to one thousand times weaker. In fact, at some point, both the process of 

acquiring the satellite signal and obtaining the navigation message will fail due to a weak signal. 

Dafesh Tr. 589-590; CDX-22. Thus, the need developed for obtaining the data required for 

navigation, such as ephemeris, or other acquisition assistance through an alternate 

communication. Dafesh Tr. 590; CDX-74. This need was met through Assisted-GPS. 

C. Global Locate’s Assisted-GPS Patents 

Three of the patents-in-suit in this investigation are Assisted-GPS patents. They are the 

‘000 patent that addresses “Compaction,” the ‘080 patent that addresses “Long Term Orbits,” and 

the ‘65 1 patent that addresses “Acquisition Sensitivity.” These patents, and their alleged 

infringement, are discussed below. 

1. The ‘OS0 Patent 

Dr. van Diggelen is the sole named inventor in the ‘080 patent. In this patent, he devised a 

system in which a server would use algorithms to predict ephemeris for satellites into the future 

and then send that “long term orbit” data to remote GPS receivers. The system would allow the 

GPS receivers to have ephemeris data for extended periods of time, for use in satellite acquisition 

and position, without having to frequently download the data from the satellites or an AssistedGPS source. van Diggelen Tr. 203-204. 

The ‘080 patent is entitled, “Method And Apparatus For Using Long Term Satellite 

76 

B. Weak Signal Environments And The Need For Assisted-GPS 

As noted, there are circumstances under which GPS receivers will have difficulty locating 

their position. Those circumstances occur in weak signal environments such as indoors, tunnels, 

parking garages, buildings, and where obstructed by foliage. In those situations, the satellite 

signal could be up to one thousand times weaker. In fact, at some point, both the process of 

acquiring the satellite signal and obtaining the navigation message will fail due to a weak signal. 

Dafesh Tr. 589-590; CDX-22. Thus, the need developed for obtaining the data required for 

navigation, such as ephemeris, or other acquisition assistance through an alternate 

communication. Dafesh Tr. 590; CDX-74. This need was met through Assisted-GPS. 

C. Global Locate's Assisted-GPS Patents 

Three of the patents-in-suit in this investigation are Assisted-GPS patents. They are the 

'000 patent that addresses "Compaction," the '080 patent that addresses "Long Term Orbits," and 

the '651 patent that addresses "Acquisition Sensitivity." These patents, and their alleged 

infringement, are discussed below. 

1. The '080 Patent 

Dr. van Diggelen is the sole named inventor in the '080 patent. In this patent, he devised a 

system in which a server would use algorithms to predict ephemeris for satellites into the future 

and then send that "long term orbit" data to remote GPS receivers. The system would allow the 

GPS receivers to have ephemeris data for extended periods of time, for use in satellite acquisition 

and position, without having to frequently download the data from the satellites or an AssistedGPS source. van Diggelen Tr. 203-204. 

The '080 patent is entitled, "Method And Apparatus For Using Long Term Satellite 

76 
Tracking Data In A Remote Receiver.” JX-6. It is referred to as the “Long Term Orbit” patent. 

As its title indicates, the ‘080 patent claims both a method and an apparatus for using long term 

satellite tracking data at a remote receiver to acquire satellite transmissions and calculate 

navigation solutions. This includes using the long term satellite tracking data to compute 

acquisition assistance data in the remote receiver, which then uses the acquisition assistance data 

to acquire satellite signals that in turn may be used to locate the position of the remote receiver. 

JX-6, Summary of the Invention, cl. 3,ll. 16-38. 

Dr. Philip Dafesh, complainant’s expert, testified that the ‘080 patent addresses the 

problem where you have an occasionally connected device. He explained, “[Tlhere are scenarios 

where you have a device that may get, say, broadcast ephemeris through assisted GPS and the 

broadcast ephemeris is only valid, say two to four hours. But you don’t have a network 

connection for a period of time greater than two to four hours.” Dafesh Tr. 607. Dr. Dafesh 

further explained that the ‘080 patent addresses this problem by providing a method and apparatus 

“for receiving long-term satellite tracking data at a remote receiver from a server and using this 

data to compute acquisition assistance at the remote receiver to acquire signals.” Dafesh Tr. 607- 

608; CDX-75. 

a. The Asserted Claims 

Global Locate asserts claims 1,2 and 22 of the ‘080 patent against SiRF. Specifically, 

these claims are asserted against respondent’s SiRFstarIII and [ 

hardware, including GSW/SLC and CLM software, that implement InstantFix. Compl. Br. at 100. 

The asserted claims of the ‘080 patent are set forth below. 

] chips and associated 

1. A method comprising: 

77 

Tracking Data In A Remote Receiver." JX-6. It is referred to as the "Long Term Orbit" patent. 

As its title indicates, the '080 patent claims both a method and an apparatus for using long term 

satellite tracking data at a remote receiver to acquire satellite transmissions and calculate 

navigation solutions. This includes using the long term satellite tracking data to compute 

acquisition assistance data in the remote receiver, which then uses the acquisition assistance data 

to acquire satellite signals that in tum may be used to locate the position of the remote receiver. 

JX-6, Summary of the Invention, cl. 3,11. 16-38. 

Dr. Philip Dafesh, complainant's expert, testified that the '080 patent addresses the 

problem where you have an occasionally connected device. He explained, "[T]here are scenarios 

where you have a device that may get, say, broadcast ephemeris through assisted GPS and the 

broadcast ephemeris is only valid, say two to four hours. But you don't have a network 

connection for a period oftime greater than two to four hours." Dafesh Tr. 607. Dr. Dafesh 

further explained that the '080 patent addresses this problem by providing a method and apparatus 

"for receiving long-term satellite tracking data at a remote receiver from a server and using this 

data to compute acquisition assistance at the remote receiver to acquire signals." Dafesh Tr. 607-

608; CDX-75. 

a. The Asserted Claims 

Global Locate asserts claims 1,2 and 22 of the '080 patent against SiRF. Specifically, 

these claims are asserted against respondent's SiRFstarIII and [ ] chips and associated 

hardware, including GSW/SLC and CLM software, that implement InstantFix. Compi. Br. at 100. 

The asserted claims of the '080 patent are set forth below. 

1. A method comprising: 

77 
receiving long term satellite tracking data at a remote receiver from 

a server; 

computing acquisition assistance data using said long term satellite 

tracking data at said remote receiver; and 

receiving satellite signals at said remote receiver using said 

acquisition assistance data. 

2. The method of claim 1, further comprising: 

computing position of said remote receiver using said satellite 

signals and said long term satellite tracking data. 

* * * * * 

22. A receiver comprising: 

a communications transceiver for receiving long term satellite 

tracking data from a server; and 

a microcontroller for computing acquisition assistance data using 

said long term satellite tracking data; and 

a satellite signal receiver for receiving satellite signals using said 

acquisition assistance data. 

JX-6, CO~. 11 , 11. 30-40 & CO~. 12,ll. 54-60. 

b. Claim Construction 

“long term satellite tracking data” 

There is only one term of the ‘080 patent that requires construction. The term having this 

distinction is “long term satellite tracking data,” also referred to as “LT-STD.” This disputed 

claim term is included in each of the asserted claims. Long term satellite tracking data is a set of 

orbital and, or, clock parameters that provides a description of a satellite’s trajectory and, or, 

clock. Dafesh Tr. 778. See JX-6 (‘080 patent), col. 4,11. 17-20 (“The server 102 distributes data 

78 

receiving long term satellite tracking data at a remote receiver from 

a server; 

computing acquisition assistance data using said long term satellite 

tracking data at said remote receiver; and 

receiving satellite signals at said remote receiver using said 

acquisition assistance data. 

2. The method of claim 1, further comprising: 

computing position of said remote receiver using said satellite 

signals and said long term satellite tracking data. 

* * * * * 

22. A receiver comprising: 

a communications transceiver for receiving long term satellite 

tracking data from a server; and 

a microcontroller for computing acquisition assistance data using 

said long term satellite tracking data; and 

a satellite signal receiver for receiving satellite signals using said 

acquisition assistance data. 

JX-6, col. 11, ll. 30-40 & col. 12,11.54-60. 

h. Claim Construction 

"long term satellite tracking data" 

There is only one term of the '080 patent that requires construction. The term having this 

distinction is "long term satellite tracking data," also referred to as "LT-STD." This disputed 

claim term is included in each of the asserted claims. Long term satellite tracking data is a set of 

orbital and, or, clock parameters that provides a description of a satellite's trajectory and, or, 

clock. Dafesh Tr. 778. See JX-6 ('080 patent), col. 4, 11. 17-20 ("The server 102 distributes data 

78 
representative of satellite trajectory information, satellite clock information, or both to facilitate 

operation of the remote receivers 104 (‘satellite tracking data’)”). 

With respect to the disputed claim, Global Locate and SiRF disagree over whether it is the 

“set” of data as a whole that must be valid longer than the broadcast ephemeris (as Global Locate 

contends), or whether “each” orbital and/or clock parameter must be valid longer than broadcast 

ephemeris (as SiRF contends). The Staff takes a somewhat different approach, focusing on the 

validity of blocks of ephemeris.22 

Global Locate construes “long term satellite tracking data” to mean, “A set of orbital 

and/or clock parameters that provides an accurate description of at least one of a satellite’s 

position, a satellite’s velocity or a satellite’s clock error, that is valid longer in time than broadcast 

ephemeris data.” Compl. Br. at 100. 

SiRF construes “long term satellite tracking data” as, “A set of orbital and/or clock 

parameters each valid for a long period of time as compared to the ephemeris data broadcast by 

the satellites which is valid two to four hours.” Resp. Br. at 86-87. 

22 In their Main Briefs, both Global Locate and the Staff address the issue as to whether 

the LT-STD of the asserted claims must be “accurate” like broadcast ephemeris. See Compl. Br. 

at 101-102, 105-107; Staff Br. at 40-41. Global Locate and the Staff conclude that it must. SiRF 

does not address this issue. See Resp. Br. at 86-88. For the reasons cited by the parties, this 

court agrees with Global Locate and the Staff. For example, Global Locate correctly points out 

that the claims and specifications of the ‘080 patent require long term satellite tracking data to be 

sufficiently accurate so that it can be used to compute position. Global Locate also correctly 

points out that during prosecution of the application leading to the ‘080 patent, the inventors 

specifically distinguished long term satellite tracking data from “almanac.” Compl. Br. at 106. 

The Staff submits that “LT-STD must provide a description that is as accurate like that provided 

by broadcast ephemeris, which a person of ordinary skill in the art would have understood to be 

on the order of meters or tens of meters, and unlike that provided by almanac, which one of 

ordinary skill would have understood to be on the order of a kilometer.” Staff Br. at 40 (citing 

Dafesh Tr. 586,924-925; Heppe Tr. 3121). 

79 

representative of satellite trajectory information, satellite clock information, or both to facilitate 

operation of the remote receivers 104 (' satellite tracking data')"). 

With respect to the disputed claim, Global Locate and SiRF disagree over whether it is the 

"set" of data as a whole that must be valid longer than the broadcast ephemeris (as Global Locate 

contends), or whether "each" orbital and/or clock parameter must be valid longer than broadcast 

ephemeris (as SiRF contends). The Staff takes a somewhat different approach, focusing on the 

validity of blocks of ephemeris.22 

Global Locate construes "long term satellite tracking data" to mean, "A set of orbital 

and/or clock parameters that provides an accurate description of at least one of a satellite's 

position, a satellite's velocity or a satellite's clock error, that is valid longer in time than broadcast 

ephemeris data." Compl. Br. at 100. 

SiRF construes "long term satellite tracking data" as, "A set of orbital and/or clock 

parameters each valid for a long period of time as compared to the ephemeris data broadcast by 

the satellites which is valid two to four hours." Resp. Br. at 86-87. 

22 In their Main Briefs, both Global Locate and the Staff address the issue as to whether 

the L T -STD of the asserted claims must be "accurate" like broadcast ephemeris. See Compl. Br. 

at 10 1-102, 105-107; Staff Br. at 40-41. Global Locate and the Staff conclude that it must. SiRF 

does not address this issue. See Resp. Br. at 86-88. For the reasons cited by the parties, this 

court agrees with Global Locate and the Staff. For example, Global Locate correctly points out 

that the claims and specifications of the '080 patent require long term satellite tracking data to be 

sufficiently accurate so that it can be used to compute position. Global Locate also correctly 

points out that during prosecution of the application leading to the '080 patent, the inventors 

specifically distinguished long term satellite tracking data from "almanac." Compl. Br. at 106. 

The Staff submits that "L T -STD must provide a description that is as accurate like that provided 

by broadcast ephemeris, which a person of ordinary skill in the art would have understood to be 

on the order of meters or tens of meters, and unlike that provided by almanac, which one of 

ordinary skill would have understood to be on the order of a kilometer." Staff Br. at 40 (citing 

Dafesh Tr. 586, 924-925; Heppe Tr. 3121). 

79 
The Staff does not offer a specific claim construction, but instead generally suggests a 

construction by way of argument. The Staff submits, “LT-STD is comprised of blocks of data, 

each valid longer in time than broadcast ephemeris - one of ordinary skill would have understood 

ephemeris to be valid two to four hours.” Staff Br. at 41. Building upon this argument, the Staff 

further submits, “As to the validity period of LT-STD, in every embodiment disclosed in the 

specification, LT-STD is valid for at least six hours into the future, which suggests that LT-STD is 

valid for longer than broadcast ephemeris.” Id. 

It is found that the claim language and specification of the ‘080 patent support Global 

Locate’s construction of the claim term “long term satellite tracking data.” Accordingly, “long 

term satellite tracking data” is construed as, “A set of orbital and/or clock parameters that 

provides an accurate description of at least one of a satellite’s position, a satellite’s velocity or a 

satellite’s clock error, that is valid longer in time than broadcast ephemeris data.” Thus, it is the 

sum total of the data, and not the individual parameters making up the set of data, that must be 

valid longer than broadcast ephemeris. 

First, as argued by Global Locate, a plain reading of the phrase “long term satellite 

tracking data” demonstrates that it is the “satellite tracking data” as a whole (Le., the satellite 

tracking data in its entirety) that must be considered in determining what is “long term.” Because 

the words “long term” modify the term “satellite tracking data” in claims 1 and 22 (claim 2 

depends from claim l), complainants offer the proper construction of the disputed claim term. 

This construction is also supported by claim 13 of the ‘080 patent, which is unasserted. 

Claim 13 depends from claim 1. It further requires that the long term satellite tracking data 

comprises at least one of “a plurality of satellite positions with respect to time and a plurality of 

80 

The Staff does not offer a specific claim construction, but instead generally suggests a 

construction by way of argument. The Staff submits, "LT -STD is comprised of blocks of data, 

each valid longer in time than broadcast ephemeris - one of ordinary skill would have understood 

ephemeris to be valid two to four hours." Staff Br. at 41. Building upon this argument, the Staff 

further submits, "As to the validity period ofLT-STD, in every embodiment disclosed in the 

specification, LT -STD is valid for at least six hours into the future, which suggests that LT -STD is 

valid for longer than broadcast ephemeris." Id. 

It is found that the claim language and specification of the '080 patent support Global 

Locate's construction of the claim term "long term satellite tracking data." Accordingly, "long 

term satellite tracking data" is construed as, "A set of orbital and/or clock parameters that 

provides an accurate description of at least one of a satellite's position, a satellite's velocity or a 

satellite's clock error, that is valid longer in time than broadcast ephemeris data." Thus, it is the 

sum total of the data, and not the individual parameters making up the set of data, that must be 

valid longer than broadcast ephemeris. 

First, as argued by Global Locate, a plain reading of the phrase "long term satellite 

tracking data" demonstrates that it is the "satellite tracking data" as a whole (i.e., the satellite 

tracking data in its entirety) that must be considered in determining what is "long term." Because 

the words "long term" modify the term "satellite tracking data" in claims 1 and 22 (claim 2 

depends from claim 1), complainants offer the proper construction of the disputed claim term. 

This construction is also supported by claim 13 of the '080 patent, which is unasserted. 

Claim 13 depends from claim 1. It further requires that the long term satellite tracking data 

comprises at least one of "a plurality of satellite positions with respect to time and a plurality of 

80 
satellite clock offsets with respect to time.” JX-6, col. 12,ll. 24-27. What this tells us is that the 

individual satellite parameters making up the long term satellite tracking data in claim 13 are valid 

FIE. 2 

only for the “positions with respect to time” that they individually describe. Accordingly, the 

positions by definition cannot be valid longer than broadcast ephemeris. Thus, as argued by 

Global Locate, “claim 13 unequivocally provides that, as a whole, the positions constitute long 

term satellite tracking data.” Compl. Br. at 102. 

Second, the ‘080 patent specification supports Global Locate’s construction. It states, in 

part, “As described in detail below, the satellite tracking data distributed to the receivers 104 by 

the server 102 is valid for a long time as compared to standard broadcast ephemeris (e.g., two to 

four days). As such, the remote receiver 104, may continue to operate for a significant duration 

despite the unavailability of a connection to the server 102.” JX-6, col. 4,ll. 47-53. 

Furthermore, the specification of the ‘080 patent also discusses a “plurality of models” and 

“blocks” of satellite tracking data, specifically with respect to Figure 2, set forth below: 

Referencing Figure 2,the specification states: 

The satellite tracking data 200 is defined by N sequential 

blocks of satellite orbit and/or clock data (i.e., the N models 202). 

For purposes of clarity by example, each of the models 202 is valid 

for a period of six hours and thus the satellite tracking data is valid 

for 6N hours. It is to be understood, however, that each of the 

models 202 may be valid for other durations. For example, satellite 

tracking data valid for four days may be generated using 16 

81 

satellite clock offsets with respect to time." JX-6, col. 12,11.24-27. What this tells us is that the 

individual satellite parameters making up the long term satellite tracking data in claim 13 are valid 

F1G_2 

only for the "positions with respect to time" that they individually describe. Accordingly, the 

positions by definition cannot be valid longer than broadcast ephemeris. Thus, as argued by 

Global Locate, "claim 13 unequivocally provides that, as a whole, the positions constitute long 

term satellite tracking data." CompI. Br. at 102. 

Second, the '080 patent specification supports Global Locate's construction. It states, in 

part, "As described in detail below, the satellite tracking data distributed to the receivers 104 by 

the server 102 is valid for a long time as compared to standard broadcast ephemeris (e.g., two to 

four days). As such, the remote receiver 1043 may continue to operate for a significant duration 

despite the unavailability of a connection to the server 102." JX-6, col. 4, 11. 47-53. 

Furthermore, the specification of the '080 patent also discusses a "plurality of models" and 

"blocks" of satellite tracking data, specifically with respect to Figure 2, set forth below: 

Referencing Figure 2,the specification states: 

The satellite tracking data 200 is defined by N sequential 

blocks of satellite orbit and/or clock data (i.e., the N models 202). 

For purposes of clarity by example, each of the models 202 is valid 

for a period of six hours and thus the satellite tracking data is valid 

for 6N hours. It is to be understood, however, that each of the 

models 202 may be valid for other durations. For example, satellite 

tracking data valid for four days may be generated using 16 

81 
sequential ones of the models 202. 

JX-6, CO~. 5,ll. 53-61. 

Third, U.S. Patent No. 6,542,820 (“the ‘820 patent”) provides further support for 

complainants’ construction. CX-109. (The ‘820 patent is incorporated by reference into the ‘080 

specification. JX-6, cl. 5,11. 28-3 1 .) In that regard, Global Locate correctly submits that ‘‘[tlhe 

‘820 patent specification reinforces that it is the period of validity of the entirety of the data that 

makes long term satellite tracking data, not the period of validity of any model or parameter 

within the data.” Compl. Br. at 103 (complainants’ emphasis).23 

Finally, Global Locate cites to a former construction of the disputed claim term, “long 

term satellite tracking data,” offered by SiRF’s expert, Dr. Heppe, as support for the construction 

offered by complainants and adopted by this court. Global Locate notes that at the hearing, 

Dr. Heppe agreed with complainants’ counsel’s representation that previously he had taken the 

position in his initial expert that, “if long-term is construed to mean something longer than four 

hours or six, and you have multiple data sets, which in the aggregate span perhaps eight or ten 

hours, that data set of multiple individual shorter curve fits would be considered long term.” 

Compl. Br. at 105 (complainants’ emphasis), citing Heppe Tr. 3067-3068.24 The court finds that 

23 See CX-109 (‘820 patent), col. 4,l. 66 - col. 5,l. 7 (“For use with existing GPS 

receivers, the preferred embodiment of the model is the GPS ephemris model as described in 

ICD-GPS-200 and an ephemeris model is generated from the LT-STD for each 4 hour period as 

illustrated in the timeline 300 of Fig. 3, i.e., a different model 301, 302 and so on is generated for 

each six hour period. As such, the plurality of models 301, 302 and so on cumulatively span the 

length of the available LT-STD.”) 

24 Dr. Heppe: “Well, actually, I proposed that, I believe in my initial report. But upon 

further review of the patent and specification, I have come to the conclusion that I would no 

longer agree with that statement, that I believe the individual blocks need to be longer than four 

(continued ...) 

82 

sequential ones of the models 202. 

JX-6, col. 5,11.53-61. 

Third, U.S. Patent No. 6,542,820 ("the '820 patent") provides further support for 

complainants' construction. CX-109. (The '820 patent is incorporated by reference into the '080 

specification. JX-6, c1. 5, 11. 28-31.) In that regard, Global Locate correctly submits that "[t]he 

'820 patent specification reinforces that it is the period of validity of the entirety of the data that 

makes long term satellite tracking data, not the period of validity of any model or parameter 

within the data." Comp1. Br. at 103 (complainants' emphasis).23 

Finally, Global Locate cites to a former construction of the disputed claim term, "long 

term satellite tracking data," offered by SiRF's expert, Dr. Heppe, as support for the construction 

offered by complainants and adopted by this court. Global Locate notes that at the hearing, 

Dr. Heppe agreed with complainants' counsel's representation that previously he had taken the 

position in his initial expert that, "if long-term is construed to mean something longer than four 

hours or six, and you have multiple data sets, which in the aggregate span perhaps eight or ten 

hours, that data set of multiple individual shorter curve fits would be considered long term. " 

Compl. Br. at 105 (complainants' emphasis), citing Heppe Tr. 3067-3068.24 The court finds that 

23 See CX-I09 ('820 patent), col. 4, 1. 66 - col. 5, 1. 7 ("For use with existing GPS 

receivers, the preferred embodiment of the model is the GPS ephemris model as described in 

ICD-GPS-200 and an ephemeris model is generated from the LT -STD for each 4 hour period as 

illustrated in the timeline 300 of Fig. 3, i.e., a different model 301, 302 and so on is generated for 

each six hour period. As such, the plurality of models 301, 302 and so on cumulatively span the 

length of the available LT-STD.") 

24 Dr. Heppe: "Well, actually, I proposed that, I believe in my initial report. But upon 

further review of the patent and specification, I have corne to the conclusion that I would no 

longer agree with that statement, that I believe the individual blocks need to be longer than four 

(continued ... ) 

82 
Dr. Heppe’s testimony lends further support to complainants’ construction. 

In advocating an alternative construction, SiRF contends that the phrase, “the satellite 

tracking data ... may be referred to herein as ‘long term satellite tracking data’ in order to 

distinguish such data from broadcast ephemeris, which is typically only valid between 2 and 4 

hours,” supports its position that each parameter must be valid for a long period of time as 

compared to the ephemeris broadcast data. Resp. Br. at 87 (citing JX-6 at col. 5’11.23-28). This 

argument simply is not persuasive and, as set forth above, is not in accord with the claim language 

and specification of the ‘080 patent. 

Next, SiRF turns to the prosecution history of the ‘080 patent. It argues that “[iln order to 

overcome the indefiniteness rejection of the term,” the applicant distinguished long term satellite 

tracking data from broadcast ephemeris that is typically valid for no longer than 4 hours. Resp. 

Br. at 87. To support this position, SiRF cites to JX-7 at GL-602 002365-66 & GL-602 002389, 

without further argument or explanation. This court has reviewed the cited pages and does not 

share respondents’ view that the prosecution history supports their construction of long term 

satellite tracking data. 

Respondents also note that “every embodiment in the written description of the ‘080 patent 

describes ‘long term satellite tracking data’ that is valid for a period of at least six hours into the 

future.” Resp. Br. at 87 (respondents’ emphasis). SiRF, however, does not explain why this 

statement is significant. The Staff, however, comments that this “suggests that LT-STD is valid 

24(. . .continued) 

hours.” Heppe Tr. 3068. Dr. Heppe also concedes that under the definition in his initial expert 

report, SiRF products have long term satellite tracking data. See Heppe Tr. 3072-3073 (“If the 

definition is applied that the blocks of data do not need to be longer than four hours, then that 

would comprise long-term satellite tracking data.”). 

83 

Dr. Heppe's testimony lends further support to complainants' construction. 

In advocating an alternative construction, SiRF contends that the phrase, "the satellite 

tracking data ... may be referred to herein as 'long term satellite tracking data' in order to 

distinguish such data from broadcast ephemeris, which is typically only valid between 2 and 4 

hours," supports its position that each parameter must be valid for a long period of time as 

compared to the ephemeris broadcast data. Resp. Br. at 87 (citing JX-6 at col. 5,11.23-28). This 

argument simply is not persuasive and, as set forth above, is not in accord with the claim language 

and specification of the '080 patent. 

Next, SiRF turns to the prosecution history of the '080 patent. It argues that "[i]n order to 

overcome the indefiniteness rejection of the term," the applicant distinguished long term satellite 

tracking data from broadcast ephemeris that is typically valid for no longer than 4 hours. Resp. 

Br. at 87. To support this position, SiRF cites to JX-7 at GL-602 002365-66 & GL-602 002389, 

without further argument or explanation. This court has reviewed the cited pages and does not 

share respondents' view that the prosecution history supports their construction of long term 

satellite tracking data. 

Respondents also note that "every embodiment in the written description of the '080 patent 

describes 'long term satellite tracking data' that is valid for a period of at least six hours into the 

future." Resp. Br. at 87 (respondents' emphasis). SiRF, however, does not explain why this 

statement is significant. The Staff, however, comments that this "suggests that LT-STD is valid 

24( ... continued) 

hours." Heppe Tr. 3068. Dr. Heppe also concedes that under the definition in his initial expert 

report, SiRF products have long term satellite tracking data. See Heppe Tr. 3072-3073 ("If the 

definition is applied that the blocks of data do not need to be longer than four hours, then that 

would comprise long-term satellite tracking data."). 

83 
for longer than broadcast ephemeris.” Staff Br. at 41 (describing LT-STD as “blocks of data, each 

valid longer in time than broadcast ephemeris”). Staff also appears to cite claim 16 of the ‘080 

patent as support for this proposition. Id. 

In response, Global Locate submits that it is not true that every embodiment in the ‘080 

specification discloses individual “blocks” of data valid longer than broadcast ephemeris. Compl. 

Reply at 34-3 5. Indeed, complainants further submit that the specification does not even require 

that the long term satellite tracking data be in blocks. Compl. Reply at 35, citing JX-6 (‘080 

patent), col. 5,lI. 13-31 & CX-109 (‘820 patent), at Figure 2, col. 4,11.61-65. 

For the reasons cited by Global Locate, SiRF’s and the Staff‘s argument on this point is 

rejected. Also, the Staff’s reliance upon claim 16 is found to be misplaced. As Global Locate 

notes, claim 16 is a dependent claim, ultimately depending from claim 1. Claim 16 further limits 

the long term satellite tracking data to “blocks” that are each valid at least “six hours into the 

future.” JX-6, claim 16. Citing the doctrine of claim differentiation, Global Locate correctly 

argues that “the fact that this dependent claim further limits the scope of long term satellite 

tracking data indicates that the broader independent claim 1 is not limited to blocks valid six 

hours into the future.” Compl. Reply at 35 (complainants’ emphasis), citing Phillips v. A WH 

Corp., 41 5 F.3d 1303, 13 15 (Fed. Cir. 2005) (en bane). 

Lastly, SiRF argues that “[iln view of the ICD-GPS-200’s industry standard, a person of 

ordinary skill in the art would have further understood ‘long term satellite tracking data’ to mean 

6- to 146-hour curve-fit intervals as specified for long term extended operations,” (as 

distinguished from 4-hour curve-fit intervals specified for ‘normal operations’).’’ Resp. Br. at 88 

(respondents’ emphasis). 

84 

for longer than broadcast ephemeris." StaffBr. at 41 (describing LT-STD as "blocks of data, each 

valid longer in time than broadcast ephemeris"). Staff also appears to cite claim 16 of the '080 

patent as support for this proposition. fd. 

In response, Global Locate submits that it is not true that every embodiment in the '080 

specification discloses individual "blocks" of data valid longer than broadcast ephemeris. Compl. 

Reply at 34-35. Indeed, complainants further submit that the specification does not even require 

that the long term satellite tracking data be in blocks. Compl. Reply at 35, citing JX-6 ('080 

patent), col. 5,11.13-31 & CX-I09 ('820 patent), at Figure 2, col. 4, 11. 61-65. 

For the reasons cited by Global Locate, SiRF's and the Staffs argument on this point is 

rejected. Also, the Staffs reliance upon claim 16 is found to be misplaced. As Global Locate 

notes, claim 16 is a dependent claim, ultimately depending from claim 1. Claim 16 further limits 

the long term satellite tracking data to "blocks" that are each valid at least "six hours into the 

future." JX -6, claim 16. Citing the doctrine of claim differentiation, Global Locate correctly 

argues that "the fact that this dependent claim further limits the scope of long term satellite 

tracking data indicates that the broader independent claim 1 is not limited to blocks valid six 

hours into the future." Compl. Reply at 35 (complainants' emphasis), citing Phillips v. AWH 

Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en bane). 

Lastly, SiRF argues that "[i]n view of the ICD-GPS-200's industry standard, a person of 

ordinary skill in the art would have further understood 'long term satellite tracking data' to mean 

6- to 146-hour curve-fit intervals as specified for long term extended operations," (as 

distinguished from 4-hour curve-fit intervals specified for 'normal operations')." Resp. Br. at 88 

(respondents' emphasis). 

84 
In response, Global Locate states that ‘820 patent teaches that long term satellite tracking 

data can be modeled using the parameters and curve-fits defined in the ICD-GPS-200, and that the 

‘820 patent teaches the use of the ICD-GPS-200 “4-hour fit” to model LT-STD. Compl. Reply at 

36, citing CX-109, col. 4,l. 66 - col. 5,l. 7. Furthermore, complainants note that the ‘820 patent 

teaches that “the plurality of models ... cumulatively span the length of the available LT-STD.” 

Compl. Reply at 36 (complainants’ emphasis), citing CX-109, col. 5,11. 5-7. Thus, Global Locate 

concludes that SiRF’s reliance upon ICD-GPS-200 is contrary to the express teachings of the ‘080 

and ‘820 patents “that 4-hour curve fits of the ICD-GPS-200 may be used to model long term 

satellite tracking data, so long as the ‘cumulative’ sum of the models is valid longer than 

broadcast ephemeris.” Compl. Reply at 36. This court agrees. 

e. Infringement Determination - The ‘080 Patent 

Global Locate charges that SiRFstarIII chips GSC3, GSC3e/LP, GSC3f, GSC3LT, 

GSC3LTf, GSC3LTi, GSC3LTif, and GSD3t support InstantFix and, or, SiRFLoc and that these 

chips, along with associated software, infringe claims 1,2 and 22 of the ‘080 patent.25 Compl. Br. 

at 107. We begin with a review of InstantFix and SiRFLoc. 

i. InstantFix 

InstantFix, also referred to as SiRFInstantFix, is an end-to-end Assisted-GPS system that 

provides server-generated extended ephemeris (“EE”) files to end-user devices via the Internet 

using a wireless or wireline connection. This ephemeris data is valid for either three-day or 

seven-day intervals. See Heppe Tr. 3022-3023; Dafesh Tr. 654 (CX-257 “depicts the 

SiRFInstantFix service whereby extended ephemeris is sent from the SiRFInstantFix server to a 

25 The same chips also are accused of infringing the ‘000 and ‘651 patents. 

85 

In response, Global Locate states that' 820 patent teaches that long term satellite tracking 

data can be modeled using the parameters and curve-fits defined in the ICD-GPS-200, and that the 

'820 patent teaches the use ofthe ICD-GPS-200 "4-hour fit" to model LT-STD. CompI. Reply at 

36, citing CX-109, col. 4, 1. 66 - col. 5, 1. 7. Furthermore, complainants note that the '820 patent 

teaches that "the plurality of models ... cumulatively span the length of the available LT-STD." 

CompI. Reply at 36 (complainants' emphasis), citing CX-109, col. 5,11.5-7. Thus, Global Locate 

concludes that SiRF's reliance upon ICD-GPS-200 is contrary to the express teachings of the '080 

and '820 patents "that 4-hour curve fits of the ICD-GPS-200 may be used to model long term 

satellite tracking data, so long as the 'cumulative' sum of the models is valid longer than 

broadcast ephemeris." Compl. Reply at 36. This court agrees. 

c. Infringement Determination - The '080 Patent 

Global Locate charges that SiRFstarIII chips GSC3, GSC3e/LP, GSC3f, GSC3LT, 

GSC3L Tf, GSC3L Ti, GSC3L Tif, and GSD3t support InstantFix and, or, SiRFLoc and that these 

chips, along with associated software, infringe claims 1,2 and 22 of the '080 patent.25 CompI. Br. 

at 107. We begin with a review ofInstantFix and SiRFLoc. 

i. InstantFix 

InstantFix, also referred to as SiRFInstantFix, is an end-to-end Assisted-GPS system that 

provides server-generated extended ephemeris ("EE") files to end-user devices via the Internet 

using a wireless or wireline connection. This ephemeris data is valid for either three-day or 

seven-day intervals. See Heppe Tr. 3022-3023; Dafesh Tr. 654 (CX-257 "depicts the 

SiRFInstantFix service whereby extended ephemeris is sent from the SiRFInstantFix server to a 

25 The same chips also are accused of infringing the '000 and '651 patents. 

85 
mobile device through a customer distribution server. And it’s sent either through web, meaning 

wired, or wireless means .... Wireless could be wireless Internet, or other wireless means. ”) 

SiRF represents that the InstantFix “end-to end service greatly improves navigation device 

start-up times without complex network integration.” CX-276. In this document, it also states 

that “[tlhe key to the SiRFIntantFix solution is a sophisticated set of proprietary algorithms that 

calculate an Extended Ephemeris (EE) file, yielding an accurate fix long after a traditional 

broadcast ephemeris has timed out - about four hours.” Id. 

Referring to a SiRFInstantFix Service Interface Reference Manual (CX-605C)(Bates 

stamped MiTAC 2753), complainants’ expert, Dr. Dafesh, discussed the features of this system. 

Dr. Dafesh explained: 

SiRFInstantFix is a complete end-to-end system that offers 

improved TTFFs [time-to-fir~t-fix~~] andsensitivity without 

complex network integration. SiRF maintains the sophisticated 

server that creates the EE file. The EE file is transferred to the 

customer, on a daily basis, via easy to use HTTP transfer protocol. 

The customer then broadcasts this to the end-user via a periodic 

connection. 

Dafesh Tr. 685-686. 

Dr. Dafesh also testified that the end-user devices also use the EE for signal acquisition 

and satellite position computation. See Dafesh Tr. 658-660 (discussing SiRF document, 

CX-278C (System design of ephemeris extension)); see also, CX-57 (SiRFInstantFix datasheet) & 

Dafesh Tr. 654. 

26 “TTFF” is the total time to first fix. “[Ilt’s from the time that you start the receiver to 

the time that you get the first fix, longitude, latitude, altitude.” Dafesh Tr. 657. 

86 

mobile device through a customer distribution server. And it's sent either through web, meaning 

wired, or wireless means. ... Wireless could be wireless Internet, or other wireless means. ") 

SiRF represents that the InstantFix "end-to end service greatly improves navigation device 

start-up times without complex network integration." CX-276. In this document, it also states 

that "[t]he key to the SiRFlntantFix solution is a sophisticated set of proprietary algorithms that 

calculate an Extended Ephemeris (EE) file, yielding an accurate fix long after a traditional 

broadcast ephemeris has timed out - about four hours." Id 

Referring to a SiRFlnstantFix Service Interface Reference Manual (CX-605C)(Bates 

stamped MiTAC 2753), complainants' expert, Dr. Dafesh, discussed the features of this system. 

Dr. Dafesh explained: 

SiRFInstantFix is a complete end-to-end system that offers 

improved TTFFs [time-to-first-fix26] and sensitivity without 

complex network integration. SiRF maintains the sophisticated 

server that creates the EE file. The EE file is transferred to the 

customer, on a daily basis, via easy to use HTTP transfer protocol. 

The customer then broadcasts this to the end-user via a periodic 

connection. 

Dafesh Tr. 685-686. 

Dr. Dafesh also testified that the end-user devices also use the EE for signal acquisition 

and satellite position computation. See Dafesh Tr. 658-660 (discussing SiRF document, 

CX-278C (System design of ephemeris extension)); see also, CX-57 (SiRFInstantFix datasheet) & 

Dafesh Tr. 654. 

26 "TTFF" is the total time to first fix. "[I]t's from the time that you start the receiver to 

the time that you get the first fix, longitude, latitude, altitude." Dafesh Tr. 657. 

86 
The Sirf InstantFix system works as follows. SiRF maintains [ 

] JX-110-8C (Phatak Dep. Tr. at 144- 

146). [ 

users to download the EE files daily, or at a higher frequency. CX-3 1 1 C [ 

] generates extended ephemeris files once per day, and allows authorized 

] at 602SiRF2641. 

In order to generate the EE files, the InstantFix [ ] receives and downloads 

from the [ 

including ephemeris data. Dafesh Tr. 660-662,670-671 (“That’s the rapid and ultra rapid orbits. 

That’s past orbital data, so historical trajectory information or historical ephemeris.”); CX-278C, 

] satellite signals, containing proposed orbit data, 

cx-311c [ 1 at 

602SiRF2641-44), & CX-825C (System Overview for Server [ 1 

at SRF88048. 

The ] takes the ephemeris data that it has received from [ ] and uses it to 

predict satellite orbits and clock information for 7 days at 15-minute intervals. SiRF’s InstantFix 

server generates 3-day or 7-day extended ephemeris by predicting GPS satellite orbits into the 

future. Dafesh Tr. 679,658; CX-276 (InstantFix Brochure) & CX-278C at 602SiRF716. The EE 

file contains long term orbit data for all of the satellites in the GPS constellation. Dafesh Tr. 671- 

672; CX-825C at SRFO8846-47. 

After SiRF has computed 3-day or 7-day predicted orbits for satellites by means of the 

[ 

server. Dafesh Tr. 663 [ 

] it then compacts the extended ephemeris into EE files stored in SiRF’s InstantFix 

87 

146). [ 

The Sirf InstantFix system works as follows. SiRF maintains [ 

] JX-II0-8C (Phatak Dep. Tr. at 144-

] generates extended ephemeris files once per day, and allows authorized 

users to download the EE files daily, or at a higher frequency. CX-311 C [ 

] at 602SiRF2641. 

In order to generate the EE files, the InstantFix [ ] receives and downloads 

from the [ ] satellite signals, containing proposed orbit data, 

including ephemeris data. Dafesh Tr. 660-662, 670-671 ("That's the rapid and ultra rapid orbits. 

That's past orbital data, so historical trajectory information or historical ephemeris."); CX-278C, 

CX-311C [ ] at 

602SiRF2641-44), & CX-825C (System Overview for Server [ 

at SRF88048. 

The [ ] takes the ephemeris data that it has received from [ ] and uses it to 

predict satellite orbits and clock information for 7 days at 15-minute intervals. SiRF's InstantFix 

server generates 3-day or 7 -day extended ephemeris by predicting GPS satellite orbits into the 

future. Dafesh Tr. 679, 658; CX-276 (InstantFix Brochure) & CX-278C at 602SiRF716. The EE 

file contains long term orbit data for all of the satellites in the GPS constellation. Dafesh Tr. 671-

672; CX-825C at SRF08846-47. 

After SiRF has computed 3-day or 7-day predicted orbits for satellites by means of the 

[ ] it then compacts the extended ephemeris into EE files stored in SiRF's InstantFix 

server. Dafesh Tr. 663 [ 

87 
] cx-277c [ 

] at 602 SiRF138624-40; CX-278C at 

602SiRF718; & CX-825C at SRF088047. [ 

1. Dafesh Tr. 674-676; CX-3 1OC (EE File Definition) at 

602SiRF2589-92.27 [ 

] Dafesh Tr. 678; CX-3 1OC at 602SiRF2593. 

SiRF transmits the EE files to remote GPS receivers, either directly or indirectly via a 

customer server. Dafesh Tr. 658,671; CX-278C at 602SiRF716,718; CX-3 11C at 602SiRF646; 

& CX-825C at SRF88048. The remote, or mobile device, downloads the EE data through the 

Internet, a wireless link, or through a Combination. Pratt Tr. 121 1; CX-276 (InstantFix data 

sheet); CDX-87C. 

The mobile GPS devices used with SiRF’s InstantFix system contain SiRF chips and 

software. InstantFix is “compatible with all SiRFstarIII and SiRFstarII solutions.” CX-276 at 2; 

CX-257 (SiRFInstantFix data sheet) at GL-602 9736. Accused chips GSC3, GSC3e/LP, 

GSC3f/LP, GSC3f, GSC3LT, GSC3LTf7 GSC3LTi, GSC3LTif, and GSD3t are SiWstarIII chips 

that operate with GSW or SLC software and support SiRFInstantFix. Dafesh Tr. 642-644; CDX78C & CDX-79C.2x 

In order to allow its customers to use this InstantFix service, SiRF provides a software 

program called a Client Location Manager (“CLM’). Dafesh Tr. 672, 678; CX-276 (SiRF 

27 E 

] See Dafesh Tr. 665-666; CX-278C at SiRF720-721. 

2x 

1. JX- 1 1 1 - 1 C (Kuykendall Tr.) at 129. 

88 

] CX-277C [ 

] at 602 SiRF138624-40; CX-278C at 

602SiRF718; & CX-825C at SRF088047. [ 

]. Dafesh Tr. 674-676; CX-31OC (EE File Definition) at 

602SiRF2589-92. 27 

[ 

] Dafesh Tr. 678; CX-310C at 602SiRF2593. 

SiRF transmits the EE files to remote GPS receivers, either directly or indirectly via a 

customer server. Dafesh Tr. 658, 671; CX-278C at 602SiRF716, 718; CX-311C at 602SiRF646; 

& CX-825C at SRF88048. The remote, or mobile device, downloads the EE data through the 

Internet, a wireless link, or through a combination. Pratt Tr. 1211; CX-276 (InstantFix data 

sheet); CDX-87C. 

The mobile GPS devices used with SiRF's InstantFix system contain SiRF chips and 

software. InstantFix is "compatible with all SiRFstarIII and SiRFstarII solutions." CX-276 at 2; 

CX-257 (SiRFInstantFix data sheet) at GL-602 9736. Accused chips GSC3, GSC3eILP, 

GSC3fILP, GSC3f, GSC3LT, GSC3LTf, GSC3LTi, GSC3LTif, and GSD3t are SiRFstarIII chips 

that operate with GSW or SLC software and support SiRFInstantFix. Dafesh Tr. 642-644; CDX78C & CDX-79C.28 

In order to allow its customers to use this InstantFix service, SiRF provides a software 

program called a Client Location Manager ("CLM"). Dafesh Tr. 672, 678; CX-276 (SiRF 

] See Dafesh Tr. 665-666; CX-278C at SiRF720-721. 

]. lX-I1l-lC (Kuykendall Tr.) at 129. 

88 
InstantFix data sheet); CX-3 13C [ 

Specification) at SRF087978; JX-110-8C (Phatak Tr.) at 204-205,207-208. Dr. Dafesh 

explained, “[tlhe client location manager is a small program that SiRF supplies to host receiver 

developers to -- that unpacks the EE file and makes it compatible with the remote receiver.” 

Dafesh Tr. 672.29 

] Theory of Operation and SW Requirement 

If the SiRFstarIII chip in the product determines that it needs ephemeris data, a message 

will be sent to the CLM requesting ephemeris. Dafesh Tr. 673; CX-3 16C (Ephemeris Extension 

Software Design Specification) at 602SiRF2532-33; CX 825C (System Overview for [ 

] at SRF88049. [ 

] Dafesh 

Tr. 698; CX-3 13C [ ] CLM Theory of Operation and SW Requirement Specification) at 

SRFO87987-92; CX-341C (CLM/GPS - Sensor Theory of Operation for [ 1 at 

620SiRF2547-59,63; JX11OC-8C (Phatak Tr.) at 210-21 1,213-216. 

ii. SiRFLoc 

Like InstantFix, SiRFLoc is end-to-end system. Heppe Tr. 3022-3023; CX-307C (E2E 

Theory of Operation for SiRFLoc EE), at 602SiRF18225. While InstantFix focuses solely on 

providing extended ephemeris data to GPS receivers, the SiRFLoc end-to-end system provides 

(for purposes of this investigation) current satellite ephemeris to SiRF-enabled roaming GPS 

29 “Once in the remote receiver, the client manager location manager runs on the host 

processor ... or within the microprocessor in a GPS device ... to be more specific, within the 

microprocessor in a SiRFstarIII chip. And then provides the SiRF software with 4-hour 

ephemeris segments upon request.” Dafesh Tr. 727. 

89 

InstantFix data sheet); CX-313C [ ] Theory of Operation and SW Requirement 

Specification) at SRF087978; JX-II0-8C (Phatak Tr.) at 204-205, 207-208. Dr. Dafesh 

explained, "[t]he client location manager is a small program that SiRF supplies to host receiver 

developers to -- that unpacks the EE file and makes it compatible with the remote receiver." 

Dafesh Tr. 672.29 

If the SiRFstarIII chip in the product determines that it needs ephemeris data, a message 

will be sent to the CLM requesting ephemeris. Dafesh Tr. 673; CX-316C (Ephemeris Extension 

Software Design Specification) at 602SiRF2532-33; CX 825C (System Overview for [ 

] at SRF88049. [ 

] Dafesh 

Tr. 698; CX-313C [ ] CLM Theory of Operation and SW Requirement Specification) at 

SRF087987-92; CX-341C (CLM/GPS - Sensor Theory of Operation for [ ] at 

620SiRF2547-59, 63; JXII0C-8C (Phatak Tr.) at 210-211,213-216. 

ii. SiRFLoc 

Like InstantFix, SiRFLoc is end-to-end system. Heppe Tr. 3022-3023; CX-307C (E2E 

Theory of Operation for SiRFLoc EE), at 602SiRF18225. While InstantFix focuses solely on 

providing extended ephemeris data to GPS receivers, the SiRFLoc end-to-end system provides 

(for purposes of this investigation) current satellite ephemeris to SiRF-enabled roaming GPS 

29 "Once in the remote receiver, the client manager location manager runs on the host 

processor ... or within the microprocessor in a GPS device ... to be more specific, within the 

microprocessor in a SiRFstarIII chip. And then provides the SiRF software with 4-hour 

ephemeris segments upon request." Dafesh Tr. 727. 

89 
devices. See CX-265C (Functional Specifications (Apr. 25,2007)). Dr. Dafesh described 

SiRFLoc as “a multimode aiding solution that SiRF provides, that provides aiding data to a 

remote GPS receiver.” Dafesh Tr. 687. 

The SiRFLoc also incorporates the InstantFix service so that SiRFInstantFix EE files may 

now be transmitted to end users via the SiRFLoc system. Dafesh Tr.687-688 (agreeing that there 

is an implementation of SiRFLoc in which EE files from the InstantFix server are delivered to 

remote devices), Tr. 726-727; CX-307C (E2E Theory of Operation for SiRFLoc EE) at 602 

SiRF18225. As explained by Dr. Dafesh, CX-307C [ 

Dafesh Tr. 689. 

With respect to SiRFLoc, for purposes of the present investigation involving the ‘000, 

‘080, and ‘651 patents, the [ 

] Dafesh Tr. 725-729; CDX-94-C. 

iii. The SiRFstarIII Chips - and Software 

Claim 1 

The evidence establishes that each of the accused SiRFstarIII chips and associated 

software implementing SiRFInstantFix practice each of the claim elements of claim 1 of the ‘080 

patent. Each of these claim elements is addressed below. 

‘%eceiving Long term satellite tracking data at a remote receiver 

from a server” 

The claim term “long term satellite tracking data” has been construed as, “A set of orbital 

and/or clock parameters that provides an accurate description of at least one of a satellite’s 

90 

devices. See CX-265C (Functional Specifications (Apr. 25,2007)). Dr. Dafesh described 

SiRFLoc as "a multimode aiding solution that SiRF provides, that provides aiding data to a 

remote GPS receiver." Dafesh Tr. 687. 

The SiRFLoc also incorporates the InstantFix service so that SiRFlnstantFix EE files may 

now be transmitted to end users via the SiRFLoc system. Dafesh Tr.687-688 (agreeing that there 

is an implementation of SiRFLoc in which EE files from the InstantFix server are delivered to 

remote devices), Tr. 726-727; CX-307C (E2E Theory of Operation for SiRFLoc EE) at 602 

SiRF18225. As explained by Dr. Dafesh, CX-307C [ 

Dafesh Tr. 689. 

With respect to SiRFLoc, for purposes of the present investigation involving the '000, 

'080, and '651 patents, the [ 

] Dafesh Tr. 725-729; CDX-94-C. 

iii. The SiRFstarIII Chips and Software 

Claim 1 

The evidence establishes that each of the accused SiRFstarIII chips and associated 

software implementing SiRFlnstantFix practice each of the claim elements of claim 1 of the '080 

patent. Each of these claim elements is addressed below. 

"receiving long term satellite tracking data at a remote receiver 

from a server" 

The claim term "long term satellite tracking data" has been construed as, "A set of orbital 

and/or clock parameters that provides an accurate description of at least one of a satellite's 

90 

] 
position, a satellite’s velocity or a satellite’s clock error, that is valid in time longer than broadcast 

ephemeris data.. 

The SiRF InstantFix extended ephemeris files previously discussed clearly constitute 

LT-STD. Indeed, respondents’ expert, Dr. Heppe, stated that he was in “complete agreement” 

with the view of complainant’s expert, Dr. Dafesh, that the EE files contain multiple blocks of 

parameters, each block being valid for 4 hours. Dr. Heppe stated, “[tlhe EE files are definitely 

comprised of blocks of data with validity of 4 hours each.” Heppe Tr. 2525, 3046. 

Moreover, SiRF’s 3-day and 7-day EE files contain data that, as a set, are longer than 

broadcast ephemeris. In that regard, applying the definition that he had offered in his initial expert 

report (and the definition advanced by Global Locate and adopted by this court), SiRF’s expert, 

Dr. Heppe, conceded that the SiRF products have long term satellite tracking data. Heppe 

Tr. 3072-3073. 

Lastly, it also has been established the SiRF’s 3-day and 7-day EE files are sent from the 

] to remote receivers. This has been discussed, supra. 

Accordingly, it is held that respondents literally infringe that claim element “receiving 

long term satellite tracking data at a remote receiver from a server.” 

“computing acquisition assistance data using said long term 

satellite tracking data at said remote receiver” 

Only Global Locate addresses this claim element. Global Locate is correct in asserting 

that “lilt is undisputed that the SiWstarIII chips and associated software that implement 

InstantFix use the EE extended ephemeris files to calculate acquisition assistance data.” Compl. 

Br. at 109. 

91 

position, a satellite's velocity or a satellite's clock error, that is valid in time longer than broadcast 

ephemeris data .. 

The SiRF InstantFix extended ephemeris files previously discussed clearly constitute 

LT-STD. Indeed, respondents' expert, Dr. Heppe, stated that he was in "complete agreement" 

with the view of complainant's expert, Dr. Dafesh, that the EE files contain multiple blocks of 

parameters, each block being valid for 4 hours. Dr. Heppe stated, "[t]he EE files are definitely 

comprised of blocks of data with validity of 4 hours each." Heppe Tr. 2525, 3046. 

Moreover, SiRF's 3-day and 7-day EE files contain data that, as a set, are longer than 

broadcast ephemeris. In that regard, applying the definition that he had offered in his initial expert 

report (and the definition advanced by Global Locate and adopted by this court), SiRF's expert, 

Dr. Heppe, conceded that the SiRF products have long term satellite tracking data. Heppe 

Tr.3072-3073. 

Lastly, it also has been established the SiRF's 3-day and 7-day EE files are sent from the 

[ ] to remote receivers. This has been discussed, supra. 

Accordingly, it is held that respondents literally infringe that claim element "receiving 

long term satellite tracking data at a remote receiver from a server." 

"computing acquisition assistance data using said long term 

satellite tracking data at said remote receiver" 

Only Global Locate addresses this claim element. Global Locate is correct in asserting 

that "[i]t is undisputed that the SiRFstarIII chips and associated software that implement 

InstantFix use the EE extended ephemeris files to calculate acquisition assistance data." Compi. 

Br. at 109. 

91 
In that regard, the testimony of Dr. Dafesh regarding CX-272C (SiRFstarIII Aiding 

Module Software Design Specification) at 602SiRF18248 1 demonstrates that SiRF practices this 

claim element. Dr. Dafesh described CX-272C as the software design specification for the aiding 

module (ie., “a piece of software that performs a specific function”) within the overall software 

architecture of the SiRFstarIII software. Dafesh Tr. 703. He added that all of the aiding data in 

the form of assisted-GPS “would be processed by this module before sent on to another place in 

the software.” Id. at 704. See CDX-94C (InstantFix Flowchart). 

Dr. Dafesh further explained that following the entry point, [ 

1 Dafesh Tr. 705. See CX-273C (SiRFstarIII SVD Module 

Software Design Specification) at 602SiRF184466-68; CX-320C (SiRFstarIII Rx Software 

Design Specification) at SRF62576; JX-111-1 C (Syed Tr.) at 41. 

Next is the [ 

1 Dafesh Tr. 705, 712-716,718-719. See CX-275C 

(SSIII BEP software requirements) at 602SiRF397158, 3971 63; CX-320C (SiRFstarIII Rx 

Sofiware Design Specification) at SRF62567; see also, Dafesh Tr. 7 17 [ 

1 

After the SiRFstarIII [ 

92 

In that regard, the testimony of Dr. Dafesh regarding CX-272C (SiRFstarIII Aiding 

Module Software Design Specification) at 602SiRFl82481 demonstrates that SiRF practices this 

claim element. Dr. Dafesh described CX-272C as the software design specification for the aiding 

module (i.e., "a piece of software that performs a specific function") within the overall software 

architecture of the SiRFstarIII software. Dafesh Tr. 703. He added that all of the aiding data in 

the form of assisted-GPS "would be processed by this module before sent on to another place in 

the software." Id. at 704. See CDX-94C (InstantFix Flowchart). 

Dr. Dafesh further explained that following the entry point, [ 

] Dafesh Tr. 705. See CX-273C (SiRFstarIII SVD Module 

Software Design Specification) at 602SiRFI84466-68; CX-320C (SiRFstarIII Rx Software 

Design Specification) at SRF62576; lX-III-IC (Syed Tr.) at 41. 

Next is the [ 

] Dafesh Tr. 705, 712-716, 718-719. See CX-275C 

(SSIII BEP software requirements) at 602SiRF397 I 58, 397163; CX-320C (SiRFstarIII Rx 

Software Design Specification) at SRF62567; see also, Dafesh Tr. 717 [ 

] 

After the SiRFstarIII [ 

92 
1.30 

Accordingly, because SiRF’s extended ephemeris files are “long term satellite tracking 

data,” and because SiRF computes acquisition data from the EE files, the respondents literally 

infringe the claim element “computing acquisition assistance data using said long term satellite 

tracking data at said remote receiver.” 

“receiving satellite signals at said remote receiver using said 

acquisition assistance data” 

Again, neither SiRF nor the Staff present any argument with respect to this claim element. 

As explained previously, SiRF’s SiRFstarIII chips and software that implement InstantFix receive 

satellite signals using the acquisition assistance data in the form of code and frequency data 

calculated from SiRF extended ephemeris files. See Dafesh Tr. 719-720,722,750-752; see also, 

CX-285C (Acquisition Module Software Design Specification) at 602SiRF 1 82445; CX-329C 

(ATX Control Module Software Design Specification) at 602SiRF 182920. 

Accordingly, respondents literally infringe the claim element “receiving satellite signals at 

said remote receiver using said acquisition assistance data.” 

1 

93 

Accordingly, because SiRF's extended ephemeris files are "long term satellite tracking 

data," and because SiRF computes acquisition data from the EE files, the respondents literally 

infringe the claim element "computing acquisition assistance data using said long term satellite 

tracking data at said remote receiver." 

"receiving satellite signals at said remote receiver using said 

acquisition assistance data" 

Again, neither SiRF nor the Staff present any argument with respect to this claim element. 

As explained previously, SiRF's SiRFstarIII chips and software that implement InstantFix receive 

satellite signals using the acquisition assistance data in the form of code and frequency data 

calculated from SiRF extended ephemeris files. See Dafesh Tr. 719-720, 722, 750-752; see also, 

CX-285C (Acquisition Module Software Design Specification) at 602SiRF182445; CX-329C 

(ATX Control Module Software Design Specification) at 602SiRF182920. 

Accordingly, respondents literally infringe the claim element "receiving satellite signals at 

said remote receiver using said acquisition assistance data." 

93 
“computing position of said remote receiver using said satellite 

signals and said long term satellite tracking data” 

Claim 2 depends from claim 1. Claim 2 further requires, “computing position of said 

remote receiver using said satellite signals and said long term satellite tracking data.” It is found 

that respondents literally infringe claim 2. 

As discussed earlier, Dr. Dafesh testified that the ‘080 patent teaches, and that claim 2 

claims, that long term satellite tracking data can be used in lieu of broadcast ephemeris to perform 

the computations necessary to calculate position. Speaking in terms of a person of ordinary skill 

in the art, with respect to claim 2 of the ‘080 patent, Dr. Dafesh testified, “They would understand 

that once you’ve used the EE files to help you acquire and receive signals, that you use the same 

long-term satellite tracking data to compute a position.” Dafesh Tr. 793. 

Dr. Dafesh further offered the opinion that the SiRFstarIII chips and the software 

incorporating SiRFIntantFix are covered by claim 2. Id. at 794. He based his opinion on the fact 

that “in addition to computing acquisition assistance data from the EE file, the SiRF chips and 

software also compute position using the EE file.” Id. See Dafesh Tr. 659-660; CX-278C 

(System design of ephemeris extension) at 602SiRF716-17; JX-110-8C (Phatak Tr.) at 140-141, 

(InstantFix reduces the time-to-first-fix by avoiding the need [ 

-1 

In addition, Dr. Dafesh testified that his opinion also was that the SiRFLoc service 

incorporating SiRFInstantFix, the SiRFInstantFix evaluation kits (i. e., the EVKs), and SiRF’s 

testing of InstantFix are likewise covered by claim 2 of the ‘080 patent. Dr. Dafesh based his 

94 

Claim 2 

"computing position of said remote receiver using said satellite 

signals and said long term satellite tracking data" 

Claim 2 depends from claim 1. Claim 2 further requires, "computing position of said 

remote receiver using said satellite signals and said long term satellite tracking data." It is found 

that respondents literally infringe claim 2. 

As discussed earlier, Dr. Dafesh testified that the '080 patent teaches, and that claim 2 

claims, that long term satellite tracking data can be used in lieu of broadcast ephemeris to perform 

the computations necessary to calculate position. Speaking in terms of a person of ordinary skill 

in the art, with respect to claim 2 ofthe '080 patent, Dr. Dafesh testified, "They would understand 

that once you've used the EE files to help you acquire and receive signals, that you use the same 

long-term satellite tracking data to compute a position." Dafesh Tr. 793. 

Dr. Dafesh further offered the opinion that the SiRFstarIII chips and the software 

incorporating SiRFIntantFix are covered by claim 2. Id. at 794. He based his opinion on the fact 

that "in addition to computing acquisition assistance data from the EE file, the SiRF chips and 

software also compute position using the EE file." Id. See Dafesh Tr. 659-660; CX-278C 

(System design of ephemeris extension) at 602SiRF716-17; JX-110-8C (Phatak Tr.) at 140-141, 

(InstantFix reduces the time-to-first-fix by avoiding the need [ 

.] 

In addition, Dr. Dafesh testified that his opinion also was that the SiRFLoc service 

incorporating SiRFInstantFix, the SiRFInstantFix evaluation kits (i.e., the EVKs), and SiRF's 

testing ofInstantFix are likewise covered by claim 2 of the '080 patent. Dr. Dafesh based his 

94 
opinion on the fact that “they use the SiRFInstantFix service to provide -- to receive long-term 

satellite tracking data at a remote receiver, which is -- which is comprised of the SiRF chips and 

software, in addition to the elements of claim 1, the -- they compute position.” Dafesh Tr. 794- 

795. 

Accordingly, this limitation is literally infringed by the SiRFstarIII chips and software. 

Claim 22 

Claim 22 is an independent apparatus claim. Claim 22 contains three limitations. 

“a communications transreceiver for receiving long term satellite 

tracking data from a server ’’ 

A transreceiver is both a receiver and a transmitter. A cellular telephone, for example, 

contains a transreceiver. Also, a device that connects to “WI-FI” has both a transmitter and a 

receiver. Heppe Tr. 3065-3066. With specific significance to this investigation, a “UART” is a 

receiver and transmitter. In that regard, the InstantFix extended ephemeris is delivered to the 

SiRFstarIII chips by the UART of the SiRF chip. Id. at 3066; Dafesh Tr. 862-863. 

The block diagram from SiRF’s SiRFstarIII GSC3LT and GSC3LTf data sheet shows a 

UART for data transfer. Heppe Tr. 3066-3067; CX-394C (SiRFstarIII GSC3LT and GSC3LTf 

data sheet) at 1. Accordingly, the SiRFstarIII chips literally meet the first limitation of claim 22 of 

the ‘080 patent. 

“a microcontroller for computing acquisition assistance data 

using said long term satellite tracking data” 

It is undisputed that the SiRFstarIII chips contain a microcontroller in the form of an ARM 

processor for performing calculations, including the computation of acquisition assistance data. 

95 

opinion on the fact that "they use the SiRFInstantFix service to provide -- to receive long-term 

satellite tracking data at a remote receiver, which is -- which is comprised of the SiRF chips and 

software, in addition to the elements of claim 1, the -- they compute position." Dafesh Tr. 794-

795. 

Accordingly, this limitation is literally infringed by the SiRFstarIII chips and software. 

Claim 22 

Claim 22 is an independent apparatus claim. Claim 22 contains three limitations. 

"a communications trans receiver for receiving long term satellite 

tracking data from a server" 

A transreceiver is both a receiver and a transmitter. A cellular telephone, for example, 

contains a transreceiver. Also, a device that connects to "WI-FI" has both a transmitter and a 

receiver. Heppe Tr. 3065-3066. With specific significance to this investigation, a "UART" is a 

receiver and transmitter. In that regard, the InstantFix extended ephemeris is delivered to the 

SiRFstarIII chips by the UART of the SiRF chip. Id at 3066; Dafesh Tr. 862-863. 

The block diagram from SiRF's SiRFstarIII GSC3LT and GSC3LTf data sheet shows a 

UART for data transfer. Heppe Tr. 3066-3067; CX-394C (SiRFstarIII GSC3LT and GSC3LTf 

data sheet) at 1. Accordingly, the SiRFstarIII chips literally meet the first limitation of claim 22 of 

the '080 patent. 

"a microcontroller for computing acquisition assistance data 

using said long term satellite tracking data" 

It is undisputed that the SiRFstarIII chips contain a microcontroller in the form of an ARM 

processor for performing calculations, including the computation of acquisition assistance data. 

95 
] it 

Heppe Tr. 3066-3067; Chansarkar Tr. 2325-2326; CX-394C. Accordingly, the SiRFstarIII chips 

meet the second limitation of claim 22. 

“a satellite signal receiver for receiving satellite signals using said 

acquisition assistance data” 

It also is undisputed that the acquisition search strategies of the SiRFstarIII chips, 

including those that rely on [ 

] of the SiRF chips to receive satellite signals. Heppe Tr. 3066; CX-394C 

(SiWstarIII GSC3LT and GSC3LTf data sheet) at 1. Accordingly, SiRF literally meets the third 

limitation of claim 22 of the ‘080 patent. 

iv. [ 1 

As discussed, supra, because the [ 

cannot be found to infringe any of the claims of the ‘080 patent. 

d. Non-SiRF Respondents 

i. Direct Infringement 

It is found that non-SiRF respondents E-TEN, MiTAC, and Mio directly infringe 

apparatus claim 22 of the ‘080 patent through the importation and sales of products containing 

SiRFstarIII chips and associated software, including CLM (client location manager) software that 

implements InstantFix. See Compl. Br. at 114. 

This finding is supported by the deposition testimony of Freddie Fu (JX-111-1 C (Fu Tr.) at 

84-85; CX-574C (chart listing E-TEN products with SiRF chips and software, including the X500 product containing GSW and CLM software); the deposition testimony of S. Wang (JX-lll1C (S. Wang Tr.) at 96; and CX-660 (chart listing MiTAC products, including those with Instant 

96 

Heppe Tr. 3066-3067; Chansarkar Tr. 2325-2326; CX-394C. Accordingly, the SiRFstarIII chips 

meet the second limitation of claim 22. 

"a satellite signal receiver for receiving satellite signals using said 

acquisition assistance data" 

It also is undisputed that the acquisition search strategies of the SiRFstarIII chips, 

including those that rely on [ 

] of the SiRF chips to receive satellite signals. Heppe Tr. 3066; CX-394C 

(SiRFstarIII GSC3LT and GSC3LTf data sheet) at 1. Accordingly, SiRF literally meets the third 

limitation of claim 22 of the '080 patent. 

iv. [ ] 

As discussed, supra, because the [ ] it 

cannot be found to infringe any ofthe claims of the '080 patent. 

d. Non-SiRF Respondents 

i. Direct Infringement 

It is found that non-SiRF respondents E-TEN, MiTAC, and Mio directly infringe 

apparatus claim 22 of the '080 patent through the importation and sales of products containing 

SiRFstarIII chips and associated software, including CLM (client location manager) software that 

implements InstantFix. See Compl. Br. at 114. 

This finding is supported by the deposition testimony of Freddie Fu (JX -111-1 C (Fu Tr.) at 

84-85; CX-574C (chart listing E-TEN products with SiRF chips and software, including the X500 product containing GSW and CLM software); the deposition testimony ofS. Wang (JX-ll1-

IC (S. Wang Tr.) at 96; and CX-660 (chart listing MiTAC products, including those with Instant 

96 
Fix capabilities). See Dafesh Tr. 65 1-653 (discussing SiRF chips and software being used in a 

MiTAC products). 

ii. Indirect Infringement 

It has been found that the accused SiRFstarIII chips and associated software, including the 

Client Location Manager (CLM) program, directly infringe the ‘080 patent. As explained below, 

by selling, promoting, and importing the accused chips and software, or devices containing the 

chips and software, SiRF and the other Respondents also indirectly infringe the claimed invention. 

(1) Respondents Activelv Induce Infringement of the ‘080 Patent 

SiRF, MiTACMio and E-TEN actively induce infringement of the ‘080 patent in violation 

of 35 U.S.C. (j271(b). SiRF and the other respondents have had knowledge of the ‘080 patent at 

least since Global Locate filed its complaint with the International Trade Commission on 

March 30,2007, initiating this Investigation. And since at least that date, SiRF and the 

Respondents have continued to induce infringement of the ‘080 patent. 

SiRF induces infringement by marketing its chips, software and services to makers of 

those products, by providing assistance in designing SiRF chips into such products, and by 

continuing to support the operation of the SiRF chips and software, knowing that when devices 

containing the SiRF chips are used, they will perform all of the steps of the asserted claims. See 

Pratt Tr. 1089-1093; CDX-202; CX-753C (summary of SiRF revenue, broken down by chip 

family). 

For example, SiRF targets handset manufacturers (such [ 1) and makers of personal 

navigation devices (such as [ 1) for purchase of the accused SiRF chips and software. See 

JX- 1 1 1 -2C (Huntingford Tr.) at 94-96. SiRF also provides design assistance to OEMs developing 

97 

Fix capabilities). See Dafesh Tr. 651-653 (discussing SiRF chips and software being used in a 

MiTAC products). 

ii. Indirect Infringement 

It has been found that the accused SiRFstarIII chips and associated software, including the 

Client Location Manager (CLM) program, directly infringe the '080 patent. As explained below, 

by selling, promoting, and importing the accused chips and software, or devices containing the 

chips and software, SiRF and the other Respondents also indirectly infringe the claimed invention. 

(1) Respondents Actively Induce Infringement of the '080 Patent 

SiRF, MiTAClMio and E-TEN actively induce infringement of the '080 patent in violation 

of35 U.S.C. §271(b). SiRF and the other respondents have had knowledge of the '080 patent at 

least since Global Locate filed its complaint with the International Trade Commission on 

March 30, 2007, initiating this Investigation. And since at least that date, SiRF and the 

Respondents have continued to induce infringement of the '080 patent. 

SiRF induces infringement by marketing its chips, software and services to makers of 

those products, by providing assistance in designing SiRF chips into such products, and by 

continuing to support the operation of the SiRF chips and software, knowing that when devices 

containing the SiRF chips are used, they will perform all of the steps of the asserted claims. See 

Pratt Tr. 1089-1093; CDX-202; CX-753C (summary ofSiRF revenue, broken down by chip 

family). 

For example, SiRF targets handset manufacturers (such [ ]) and makers of personal 

navigation devices (such as [ ]) for purchase of the accused SiRF chips and software. See 

JX-111-2C (Huntingford Tr.) at 94-96. SiRF also provides design assistance to OEMs developing 

97 
products that use the accused SiRF chips and software. See JX-111-2C (Fudurich Tr.) at 70-71 

(discussing design reviews of customer schematics and board layout); CX-852C at 

602SiRF2425 136 (reporting to [ 

ephemeris is highlighted by the number of fixes lengthened or lost by interrupted ephemeris due 

to marginal signal levels or motion that caused signal drop-outs resulting in navigation data 

stream bit errors”). Finally, once an OEM implements the accused SiRF chips and software into 

its products, SiRF continues to provide technical support to that OEM regarding its chips and 

software. JX-111-2C (Fudurich Tr.) at 70-71. 

3 that “[tlhe benefits of having InstantFix synthetic 

SiRF also encourages OEMs to market the use of SiRF chips and software in their enduser products as a distinguishing product feature. In order to ensure “greater recognition & 

differentiation in the market place,’’ SiRF offers its “SiW Powered Program,” which encourages 

the use of SiRF designed artwork on “the face plate or other location on a product, during 

software application start up, within product literature, upon product packaging, on a website,” 

and through “advertising, direct mail, or catalogs.” CX-693C (“SiRF Powered Program 

Guidelines”) at 602SiRF00136855; see also, Mayo Tr. 161 1-1612; JX-111-4C (Boeryd Tr.) 

at 136. 

MiTAC/Mio and E-TEN induce infringement by actively marketing their GPS devices 

containing SiRF chips and software. See Pratt Tr. 1094-1098 (discussing documentary evidence 

of marketing, user support, and technical support); CDX-271; see also, CX-602 (Where to Buy 

Mio Products); CX-608C (summary of Mio US sales to customers). MiTAC/Mio and E-TEN also 

induce infringement by specifically encouraging and supporting the use of the GPS functionality. 

MITAC/Mio and E-TEN further provide their customers with user manuals for their products 

98 

products that use the accused SiRF chips and software. See JX-III-2C (Fudurich Tr.) at 70-71 

(discussing design reviews of customer schematics and board layout); CX-852C at 

602SiRF2425136 (reporting to [ ] that "[t]he benefits of having InstantFix synthetic 

ephemeris is highlighted by the number of fixes lengthened or lost by interrupted ephemeris due 

to marginal signal levels or motion that caused signal drop-outs resulting in navigation data 

stream bit errors"). Finally, once an OEM implements the accused SiRF chips and software into 

its products, SiRF continues to provide technical support to that OEM regarding its chips and 

software. JX-I11-2C (Fudurich Tr.) at 70-71. 

SiRF also encourages OEMs to market the use of SiRF chips and software in their enduser products as a distinguishing product feature. In order to ensure "greater recognition & 

differentiation in the market place," SiRF offers its "SiRF Powered Program," which encourages 

the use of SiRF designed artwork on "the face plate or other location on a product, during 

software application start up, within product literature, upon product packaging, on a website," 

and through "advertising, direct mail, or catalogs." CX-693C ("SiRF Powered Program 

Guidelines") at 602SiRF00136855; see also, Mayo Tr. 1611-1612; JX-III-4C (Boeryd Tr.) 

at 136. 

MiT AClMio and E-TEN induce infringement by actively marketing their GPS devices 

containing SiRF chips and software. See Pratt Tr. 1094-1098 (discussing documentary evidence 

of marketing, user support, and technical support); CDX-271; see also, CX-602 (Where to Buy 

Mio Products); CX-608C (summary ofMio US sales to customers). MiTAC/Mio and E-TEN also 

induce infringement by specifically encouraging and supporting the use of the GPS functionality. 

MIT AC/Mio and E-TEN further provide their customers with user manuals for their products 

98 
incorporating the accused SiRF chips and software. See JX-1 1 1-2C (Fu Tr.) at 129-1 30 

(reviewing E-TEN M700 Users Manual). MiTAC/Mio and E-TEN also each provide their 

customers with technical support for their GPS devices containing the SiRF chips and software. 

See JX-111-2C (Lee Tr.) at 62-63 (discussing providing technical support in the United States); 

JX-111-2C (Feng Tr. ) at 43 (same). 

(2) Contributory Infringement 

Complainants have failed to show that SiRF, MiTAC/Mio and E-TEN, contributorily 

infringe the ‘080 patent by selling in the United States, selling for importation into the United 

States and, or, importing into the United States devices containing the infringing SiRFstarIII chips 

and associated software, including the client location manager software used to manage InstantFix 

EE files. SiRF and respondents MiTAC/Mio and E-TEN further contributorily infringe by 

making InstantFix EE files available for downloading by remote receivers. 

Complainants’ citation to CX-278 (System Design of Ephemeris Extension) 602SiRF7 15, 

CX-313 [ 

SRF87978, and JX-111-2C (Fudurich Tr.) at 55-55, alone is simply not enough to establish all 

] CLM Theory of Operation and Software Requirement Specification) 

elements of contributory infringement. 

Accordingly, it is found that respondents do not contributorily infringe the ‘080 patent. 

e. Validitv 

i. The Asserted Claims are not Anticipated by Prior Art 

SiW broadly argues that “[tlhe testimony of both van Diggelen and Dr. Dafesh confirm 

that the asserted claims fail to claim anything inventive over the prior art.” Resp. Br. at 88. In 

that regard, SiRF strings together a series of quotations from Dr. van Diggelen and Dr. Dafesh in 

99 

incorporating the accused SiRF chips and software. See JX-111-2C (Fu Tr.) at 129-130 

(reviewing E-TEN M700 Users Manual). MiTAC/Mio and E-TEN also each provide their 

customers with technical support for their GPS devices containing the SiRF chips and software. 

See JX-111-2C (Lee Tr.) at 62-63 (discussing providing technical support in the United States); 

JX-111-2C (Feng Tr. ) at 43 (same). 

(2) Contributory Infringement 

Complainants have failed to show that SiRF, MiTAC/Mio and E-TEN, contributorily 

infringe the '080 patent by selling in the United States, selling for importation into the United 

States and, or, importing into the United States devices containing the infringing SiRFstarIII chips 

and associated software, including the client location manager software used to manage InstantFix 

EE files. SiRF and respondents MiTAC/Mio and E-TEN further contributorily infringe by 

making InstantFix EE files available for downloading by remote receivers. 

Complainants' citation to CX-278 (System Design of Ephemeris Extension) 602SiRF715, 

CX-313 [ ] CLM Theory of Operation and Software Requirement Specification) 

SRF87978, and JX-111-2C (Fudurich Tr.) at 55-55, alone is simply not enough to establish all 

elements of contributory infringement. 

Accordingly, it is found that respondents do not contributorily infringe the '080 patent. 

e. Validity 

i. The Asserted Claims are not Anticipated by Prior Art 

SiRF broadly argues that "[t]he testimony of both van Diggelen and Dr. Dafesh confirm 

that the asserted claims fail to claim anything inventive over the prior art." Resp. Br. at 88. In 

that regard, SiRF strings together a series of quotations from Dr. van Diggelen and Dr. Dafesh in 

99 
an attempt to support respondents’ contention that it was well-known in the prior art (a) how to 

predict GPS orbits accurately for days into the future, (b) how to send such information to a 

receiver as assistance data, (c) how to use such information to reduce frequency uncertainty, and 

(d) how to use the same information to compute position. Resp. Br. at 89. SiRF, however, offers 

no detailed, patent-specific (or claim-specific) analysis to support this assertion. 

In response, Global Locate correctly notes that anticipation requires that a single piece of 

art disclose each and every limitation of the claimed invention. Compl. Reply at 36 (citing 

Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). SiRF falls 

considerably short of this standard. Again, it offers no real analysis to support its position; 

stringed quotations alone won’t do. 

Accordingly, SiRF’s argument that the asserted claims claim nothing inventive over the 

prior art is rejected. 

ii. Dr. Van Diggelen’s ‘OS0 Invention was not Derived from JPL 

SiRF contends that “[t]he evidence at trial fbrther proves that Global Locate derived the 

subject matter of the ‘080 patent from technology it learned from JPL.” Resp. Br. at 89. Indeed, 

respondents suggest that “the capability to generate, distribute, and format accurate, long term 

predicted GPS orbits for use by conventional GPS receivers to compute acquisition assistance 

data was commercially available from JPL since 1994.” Resp. Br. at 9 1 (citation omitted). 

In support of this argument, SiRF asserts that as early as April 6,2000, [ 

] apparently in pursuit of a [ 

] SiRF further asserts that, thereafter, Global Locate learned of 

JPL’s predicted GPS orbit products, culminating in [ 

100 

an attempt to support respondents' contention that it was well-known in the prior art (a) how to 

predict GPS orbits accurately for days into the future, (b) how to send such information to a 

receiver as assistance data, (c) how to use such information to reduce frequency uncertainty, and 

(d) how to use the same information to compute position. Resp. Br. at 89. SiRF, however, offers 

no detailed, patent-specific (or claim-specific) analysis to support this assertion. 

In response, Global Locate correctly notes that anticipation requires that a single piece of 

art disclose each and every limitation of the claimed invention. Compi. Reply at 36 (citing 

Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). SiRF falls 

considerably short of this standard. Again, it offers no real analysis to support its position; 

stringed quotations alone won't do. 

Accordingly, SiRF's argument that the asserted claims claim nothing inventive over the 

prior art is rejected. 

ii. Dr. Van Diggelen's '080 Invention was not Derived from JPL 

SiRF contends that "[t]he evidence at trial further proves that Global Locate derived the 

subject matter of the '080 patent from technology it learned from JPL." Resp. Br. at 89. Indeed, 

respondents suggest that "the capability to generate, distribute, and format accurate, long term 

predicted GPS orbits for use by conventional GPS receivers to compute acquisition assistance 

data was commercially available from JPL since 1994." Resp. Br. at 91 (citation omitted). 

In support of this argument, SiRF asserts that as early as April 6, 2000, [ 

] apparently in pursuit of a [ 

] SiRF further asserts that, thereafter, Global Locate learned of 

JPL's predicted GPS orbit products, culminating in [ 

100 
] more than one year before the filing date for the ‘080 patent. 

Resp. Br. at 89-90 (citing, in part, Bar-Sever Tr. 2089; RX-22C; RX-23C) .31 

Thus, SiRF maintains that Global Locate was not only aware of JPL’s capability to 

generate “long term satellite tracking data” in a standard format compatible with GPS receivers, 

but [ 1 

In response, Global Locate argues that because “SiRF has not demonstrated either a prior 

conception by JPL, or communication of any purported ‘conception’ to Global Locate by JPL, its 

derivation argument fails.” Compl. Reply at 37 (citing Gambro Lundia AB v. Baxter Healthcare 

Corp., 110 F.3d 1573, 1577 (Fed. Cir.) (citations omitted) (derivation requires a showing of (1) 

prior conception of the invention by another, and (2) communication of the complete claimed 

invention to the patentee sufficient to allow for the construction and successful operation of the 

invention)). 

To support this argument, Global Locate cites to evidence showing that Dr. van Diggelen’s 

‘080 invention was not derived from JPL. In that regard, Dr. van Diggelen testified that he was 

unaware that JPL purportedly offered future orbits in the 2000 or 2001 time-frame. With specific 

31 The [ 

I 

] states: 

1 

RX-23 at GL-602 149385 (respondents’ emphasis); see Resp. Br. at 90. 

101 

] more than one year before the filing date for the '080 patent. 

Resp. Br. at 89-90 (citing, in part, Bar-Sever Tr. 2089; RX-22C; RX-23C) .31 

Thus, SiRF maintains that Global Locate was not only aware of JPL's capability to 

generate "long term satellite tracking data" in a standard format compatible with GPS receivers, 

but [ ] 

In response, Global Locate argues that because "SiRF has not demonstrated either a prior 

conception by JPL, or communication of any purported 'conception' to Global Locate by JPL, its 

derivation argument fails." Compl. Reply at 37 (citing Cambro Lundia AB v. Baxter Healthcare 

Corp., 110 F.3d 1573, 1577 (Fed. Cir.) (citations omitted) (derivation requires a showing of (1) 

prior conception of the invention by another, and (2) communication of the complete claimed 

invention to the patentee sufficient to allow for the construction and successful operation of the 

invention)). 

To support this argument, Global Locate cites to evidence showing that Dr. van Diggelen's 

'080 invention was not derived from JPL. In that regard, Dr. van Diggelen testified that he was 

unaware that JPL purportedly offered future orbits in the 2000 or 2001 time-frame. With specific 

31 The [ 

[ 

] states: 

RX-23 at GL-602 149385 (respondents' emphasis); see Resp. Br. at 90. 

101 

] 
reference to RX-23 [ 

JPL, JPL did not provide [ 

1 Dr. van Diggelen stated when he had discussions with 

] He explained: 

1 

van Diggelen Tr. 468-469 (emphasis added). See van Diggelen Tr. 473-474 [ 

1 

On balance, SiFW has failed to show that Dr. van Diggelen’s ‘080 invention was derived 

from JPL. As noted above, the evidence is not sufficient to show that JPL conceived of the 

invention prior to Global Locate, or that JPL communicated the complete claimed invention of the 

‘080 patent to Dr. van Diggelen, or to anyone else at Global Locate. 

iii. The ‘080 Patent is not Anticipated bv the GPS Svstem 

Next, SiRF argues that the ‘080 patent is anticipated by the GPS system. Resp. Br. at 9 1 - 

97. For the reasons cited by Global Locate in opposition, SiRF’s anticipation argument is 

102 

reference to RX-23 [ ] Dr. van Diggelen stated when he had discussions with 

JPL, JPL did not provide [ 

] He explained: 

[ 

] 

van Diggelen Tr. 468-469 (emphasis added). See van Diggelen Tr. 473-474 [ 

] 

On balance, SiRF has failed to show that Dr. van Diggelen's '080 invention was derived 

from JPL. As noted above, the evidence is not sufficient to show that JPL conceived of the 

invention prior to Global Locate, or that JPL communicated the complete claimed invention of the 

'080 patent to Dr. van Diggelen, or to anyone else at Global Locate. 

iii. The '080 Patent is not Anticipated by the GPS System 

Next, SiRF argues that the '080 patent is anticipated by the GPS system. Resp. Br. at 91-

97. For the reasons cited by Global Locate in opposition, SiRF's anticipation argument is 

102 
rejected. See Compl. Br. at 118-120; Compl. Reply at 38-40.32 

The NavStar GPS system does not anticipate because: (1) the NavStar GPS system is a 

conventional GPS system and does not disclose an assisted-GPS system in which data is received 

from a server and used to compute acquisition assistance data; and (2) the NavStar GPS system 

discloses only broadcast ephemeris, not long term satellite tracking data which is longer than 

broadcast ephemeris.33 

Moreover, the NavStar GPS system was disclosed and discussed in the Background 

section of the ‘080 patent. JX-6 (‘080 patent), col. l,l. 19 - col. 2,l. 21. Accordingly, as noted by 

Global Locate, “SiRF’s burden of demonstrating anticipation of the ‘080 patent by the GPS 

system is ‘especially difficult.’” Compl. Reply at 3 8 (citing Sunoji-Synthelubo v.Apotex, Inc., 

470 F.3d 1368, 1375 (Fed. Cir. 2006); Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, . 

1357 (Fed. Cir. 2003) (While “the presumption of validity remains the same whether or not art 

relied upon was before the examiner ... the fact that a skilled examiner passed upon that very 

reference during prosecution may be a factor in determining whether the challenger has met the 

clear and convincing burden.) (internal citations omitted)). 

In addition, the ‘820 patent, which is incorporated by reference into the ‘080 patent, 

discloses and discusses the ICD-GPS-200 standard, which describes the interface between GPS 

32 complainants use the term “NavStar GPS system,” which Dr. Dafesh described as “the 

system of orbiting satellites relating to this investigation, including space, control, and user 

segments.” Dafesh Tr. 3296. He concluded that it is fair to say that the NavStar GPS system is 

GPS itself. Dafesh Tr. 3297. 

33 Also, the ‘080 patent teaches that long term satellite tracking data is “generated at the 

server,” JX-6 at col. 5,11. 13-20. Broadcast ephemeris, however, is not generated at a server in 

an Assisted-GPS system, but is collected from the GPS satellites by GPS receivers and, or, 

receiving stations. 

103 

rejected. See Compl. Br. at 118-120; Compl. Reply at 38-40.32 

The NavStar GPS system does not anticipate because: (1) the NavStar GPS system is a 

conventional GPS system and does not disclose an assisted-GPS system in which data is received 

from a server and used to compute acquisition assistance data; and (2) the NavStar GPS system 

discloses only broadcast ephemeris, not long term satellite tracking data which is longer than 

broadcast ephemeris.33 

Moreover, the NavStar GPS system was disclosed and discussed in the Background 

section of the '080 patent. JX-6 ('080 patent), col. 1,1. 19- col. 2, 1. 21. Accordingly, as noted by 

Global Locate, "SiRF's burden of demonstrating anticipation of the '080 patent by the GPS 

system is 'especially difficult.'" Compl. Reply at 38 (citing Sanoji-Synthelabo v.Apotex, Inc., 

470 F.3d 1368, 1375 (Fed. Cir. 2006); Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, . 

1357 (Fed. Cir. 2003) (While "the presumption of validity remains the same whether or not art 

relied upon was before the examiner ... the fact that a skilled examiner passed upon that very 

reference during prosecution may be a factor in determining whether the challenger has met the 

clear and convincing burden.) (internal citations omitted». 

In addition, the '820 patent, which is incorporated by reference into the '080 patent, 

discloses and discusses the ICD-GPS-200 standard, which describes the interface between GPS 

32 Complainants use the term "NavStar GPS system," which Dr. Dafesh described as "the 

system of orbiting satellites relating to this investigation, including space, control, and user 

segments." Dafesh Tr. 3296. He concluded that it is fair to say that the NavStar GPS system is 

GPS itself. Dafesh Tr. 3297. 

33 Also, the '080 patent teaches that long term satellite tracking data is "generated at the 

server," JX-6 at col. 5,11. 13-20. Broadcast ephemeris, however, is not generated at a server in 

an Assisted-GPS system, but is collected from the GPS satellites by GPS receivers and, or, 

receiving stations. 

103 
satellite signals and GPS receivers. This fact was included by Global Locate’s expert, Dr. Dafesh, 

as one of the reasons why the NavStar GPS system does not anticipate the asserted claims of the 

‘080 patent. Dr. Dafesh explained: 

The ‘820 patent, which is incorporated by reference into the 

‘080 patent, also discloses ICD CPS 200, which is the space to user 

interface in the NavStar GPS system, as well as discloses the 

longer-term fit intervals that may be broadcast, in the case of 

anomalous operation. This includes the six-hour, eight-hour, et 

cetera, up to 146-hour curve fit intervals that, again may be 

broadcast on occasion in anomalous modes of operation. 

And next point is that there is no teaching of assisted GPS in 

ICD GPS 200. It teaches conventional GPS, not assisted GPS, just 

conventional broadcast data. And lastly, the ‘080 patent 

distinguishes long-term satellite tracking data from broadcast 

ephemeris data and, thus, that includes the broadcast ephemeris, 

including the longer fit intervals. And since almanac is not longterm satellite tracking data either, NavStar GPS cannot possibly 

invalidate the ‘080 patent. 

Dafesh Tr. 3297-3298 (emphasis added). 

Thus, Global Locate correctly argues that because the NavStar GPS system discloses only 

conventional GPS, it does not disclose using data from a server to compute “acquisition assistance 

data” as required by claims 1,2 and 22 of the ‘080 patent. See Compl. Br. at 119. Global Locate 

also correctly argues that the NavStar GPS system does not disclose receiving or using long term 

satellite tracking data having a validity period longer than broadcast ephemeris (van Diggelen 

Tr. 199), as required by each of the asserted claims. Id. 3J 

34 The ‘080 patent further requires that the long term satellite tracking data must be 

received at remote receivers “from a server.” JX-6, claims 1,22. The GPS system does not. 

Accordingly, because the GPS system does not teach the receipt or use of long term satellite 

tracking data, it does not teach, as claims 1 and 22 require, the use of long term satellite tracking 

data to compute acquisition assistance data at a remote receiver. 

104 

satellite signals and GPS receivers. This fact was included by Global Locate's expert, Dr. Dafesh, 

as one of the reasons why the NavStar GPS system does not anticipate the asserted claims ofthe 

'080 patent. Dr. Dafesh explained: 

The' 820 patent, which is incorporated by reference into the 

'080 patent, also discloses lCD GPS 200, which is the space to user 

interface in the NavStar GPS system, as well as discloses the 

longer-term fit intervals that may be broadcast, in the case of 

anomalous operation. This includes the six-hour, eight-hour, et 

cetera, up to 146-hour curve fit intervals that, again may be 

broadcast on occasion in anomalous modes of operation. 

And next point is that there is no teaching of assisted GPS in 

lCD GPS 200. It teaches conventional GPS, not assisted GPS, just 

conventional broadcast data. And lastly, the '080 patent 

distinguishes long-term satellite tracking data from broadcast 

ephemeris data and, thus, that includes the broadcast ephemeris, 

including the longer fit intervals. And since almanac is not longterm satellite tracking data either, NavStar CPS cannot possibly 

invalidate the '080 patent. 

Dafesh Tr. 3297-3298 (emphasis added). 

Thus, Global Locate correctly argues that because the NavStar GPS system discloses only 

conventional GPS, it does not disclose using data from a server to compute "acquisition assistance 

data" as required by claims 1,2 and 22 of the '080 patent. See Compl. Br. at 119. Global Locate 

also correctly argues that the NavStar GPS system does not disclose receiving or using long term 

satellite tracking data having a validity period longer than broadcast ephemeris (van Diggelen 

Tr. 199), as required by each of the asserted claims. Id. 3./ 

34 The '080 patent further requires that the long term satellite tracking data must be 

received at remote receivers "from a server." JX-6, claims 1,22. The GPS system does not. 

Accordingly, because the GPS system does not teach the receipt or use of long term satellite 

tracking data, it does not teach, as claims 1 and 22 require, the use of long term satellite tracking 

data to compute acquisition assistance data at a remote receiver. 

104 
SiRF also claims that its 1999 version of the SiRFLoc system anticipates. See Resp. Br. at 

93-95. Global Locate counters, however, with the argument that SiRF’s own witnesses testified 

that in 1999 (as opposed to the present day), the SiRFLoc system “did not generate, send, or use 

extended ephemeris or any other form of long term satellite tracking data.” Compl. Reply at 40 

(citing Garin Tr. 1875, 1881; Chansarkar Tr. 2330). For the reasons cited by Global Locate, it is 

found that SiRF’s 1999 version of SiFtFLoc did not anticipate the claims of the ‘080 patent. 

iv. TOPEWPoseidon does not Anticipate the Asserted Claims 

The TOPEXPoseidon was a project designed by Jet Propulsion Laboratories to map the 

topography of the world’s oceans. Bar-Sever Tr. 21 18. At the hearing, SiW introduced three 

TOPEX-related articles, RX-7, RX-8, and RX-9. In addition, Dr. Bar-Sever, a JPL representative, 

testified regarding this project. SiRF contends that Dr. Bar-Sever’s testimony demonstrates that 

(i) the TOPEWPoseidon received almanac data that was sufficiently accurate to constitute long 

term satellite tracking data, and (ii) it used the data to compute acquisition assistance data. Resp. 

Br. at 98-100. 

Both Global Locate and Staff argue that TOPEWPoseidon does not anticipate the asserted 

claims. Global Locate and Staff are correct. The evidence offered by SiRF does not rise to the 

level of “clear and convincing” necessary to invalidate the asserted claims as being anticipated. 

In that regard, RX-7, RX-8, and RX-9 do not describe what is claimed in the ‘080 patent. 

They do not disclose the use of long term satellite tracking data to calculate acquisition assistance 

data, as required by claims 1 and 22. These references also do not disclose the use of long term 

satellite tracking data to calculate position, as required by claim 2. See Dafesh Tr. 3288-3292. 

Furthermore, the testimony of Dr. Bar-Sever does not add to the disclosures in RX-7, . 

105 

SiRF also claims that its 1999 version of the SiRFLoc system anticipates. See Resp. Br. at 

93-95. Global Locate counters, however, with the argument that SiRF's own witnesses testified 

that in 1999 (as opposed to the present day), the SiRFLoc system "did not generate, send, or use 

extended ephemeris or any other form of long term satellite tracking data." Compi. Reply at 40 

(citing Garin Tr. 1875, 1881; Chansarkar Tr. 2330). For the reasons cited by Global Locate, it is 

found that SiRF's 1999 version ofSiRFLoc did not anticipate the claims of the '080 patent. 

iv. TOPEXIPoseidon does not Anticipate the Asserted Claims 

The TOPEXIPoseidon was a project designed by Jet Propulsion Laboratories to map the 

topography of the world's oceans. Bar-Sever Tr. 2118. At the hearing, SiRF introduced three 

TOPEX-related articles, RX-7, RX-8, and RX-9. In addition, Dr. Bar-Sever, a JPL representative, 

testified regarding this project. SiRF contends that Dr. Bar-Sever's testimony demonstrates that 

(i) the TOPEXIPoseidon received almanac data that was sufficiently accurate to constitute long 

term satellite tracking data, and (ii) it used the data to compute acquisition assistance data. Resp. 

Br. at 98-100. 

Both Global Locate and Staff argue that TOPEXIPoseidon does not anticipate the asserted 

claims. Global Locate and Staff are correct. The evidence offered by SiRF does not rise to the 

level of "clear and convincing" necessary to invalidate the asserted claims as being anticipated. 

In that regard, RX-7, RX-8, and RX-9 do not describe what is claimed in the '080 patent. 

They do not disclose the use of long term satellite tracking data to calculate acquisition assistance 

data, as required by claims 1 and 22. These references also do not disclose the use of long term 

satellite tracking data to calculate position, as required by claim 2. See Dafesh Tr. 3288-3292. 

Furthermore, the testimony of Dr. Bar-Sever does not add to the disclosures in RX-7, 

105 
RX-8, and RX-9. Dr. Bar-Sever testified that initialization data sent to the receiver from a ground 

station contained parameters that were identical or nearly identical to the parameters of broadcast 

almanac. He also testified that almanac data is an abbreviated representation of the satellite orbit. 

Bar-Sever Tr. 2 1 17-2 1 18,2 120. No data that had the 15 parameters of broadcast ephemeris, 

however, was ever uploaded to the TOPEWPoseidon. Also, the almanac initialization data that 

was transferred to the TOPEX was never used to calculate a navigation solution. Bar-Sever 

Tr. 2121-2122. 

In fact, the data uploaded to the TOPEWPoseidon was called almanac data and was used 

in the same manner as conventional GPS almanac, i.e., only once, for initialization, and not for 

navigation. Dafesh Tr. 3288-3289. While Dr. Bar-Sever did testifL that the initialization data was 

used to reduce code and frequency uncertainties, he admitted that the only document that he 

testified about that discussed uncertainty reductions was RX-9 (“GPS Precise Orbit 

Determination”) which discusses reducing frequency uncertainties only after acquisition. BarSever Tr. 2123-2126. Claims 1,2 and 22 of the ‘080 patent, however, require data generated prior 

to acquisition. 

Accordingly, none of the TOPEWPoseidon publications anticipate the asserted claims of 

the ‘080 patent. See Dafesh Tr. 3288-3292. 

v. -elen’s ION-GPS 2001 Article does not AnticiDate 

Dr. van Diggelen was not scheduled to speak at the 2001 ION Conference in Salt Lake 

City, Utah, which was held September 1 1-14,2001. Due to the tragic events of ‘W1 ,” however, 

Dr. van Diggelen was asked to”fil1 in” for a scheduled presenter unable to reach the conference. 

Van Diggelen Tr. 376-377. Sometime after his presentation at the 2001 ION conference, Dr. van 

106 

RX-8, and RX-9. Dr. Bar-Sever testified that initialization data sent to the receiver from a ground 

station contained parameters that were identical or nearly identical to the parameters of broadcast 

almanac. He also testified that almanac data is an abbreviated representation of the satellite orbit. 

Bar-Sever Tr. 2117-2118,2120. No data that had the 15 parameters of broadcast ephemeris, 

however, was ever uploaded to the TOPEXIPoseidon. Also, the almanac initialization data that 

was transferred to the TOPEX was never used to calculate a navigation solution. Bar-Sever 

Tr. 2121-2122. 

In fact, the data uploaded to the TOPEXIPoseidon was called almanac data and was used 

in the same manner as conventional GPS almanac, i.e., only once, for initialization, and not for 

navigation. Dafesh Tr. 3288-3289. While Dr. Bar-Sever did testify that the initialization data was 

used to reduce code and frequency uncertainties, he admitted that the only document that he 

testified about that discussed uncertainty reductions was RX-9 ("GPS Precise Orbit 

Determination") which discusses reducing frequency uncertainties only after acquisition. BarSever Tr. 2123-2126. Claims 1,2 and 22 of the '080 patent, however, require data generated prior 

to acquisition. 

Accordingly, none of the TOPEXIPoseidon publications anticipate the asserted claims of 

the '080 patent. See Dafesh Tr. 3288-3292. 

v. Dr. van Diggelen's ION-GPS 2001 Article does not Anticipate 

Dr. van Diggelen was not scheduled to speak at the 2001 ION Conference in Salt Lake 

City, Utah, which was held September 11-14,2001. Due to the tragic events of"9/11," however, 

Dr. van Diggelen was asked to"fill in" for a scheduled presenter unable to reach the conference. 

Van Diggelen Tr. 376-377. Sometime after his presentation at the 2001 ION conference, Dr. van 

106 
Diggelen published a paper. It is the timing of this publication that is at the center of the present 

dispute. 

SiRF contends that “[Dr.] van Diggelen’s ‘Global Locate.Indoor GPS Chipset & Service’ 

paper (‘ION-GPS 200 1 paper’) described Global Locate long-term orbit( ‘LTO’) service (which 

Global Locate claims satisfies the domestic industry requirement and, thus, admits meets every 

element of the claim).” Resp. Br. at 100-1 01 (citing Dafesh Tr. 8 17-820). SiRF concludes that the 

ION-GPS 2001 paper is prior art because “it was presented before more than one year before the 

filing date of the ‘080 patent. 35 U.S.C. 0 102(b).” Resp. Br. at 101 (respondents’ emphasis). 

Global Locate disagrees, arguing that the van Diggelen ION GPS article upon which SiRF 

relies was not published more than one year prior to the original application of the ‘080 patent, 

and thus does not constitute prior art under Section 102(b). Compl. Br. at 123. Global Locate 

states that the ION GPS article could not have been published until after November 2001, 

inasmuch as the article cites a reference having a November 2001 publication date. Id., (citing 

van Diggelen Tr. 378-379; RX-127 (ION GPS Paper) at 602 SiRF908678 (listing “J. LaMance et 

a1 2001, ‘Low Infrastructure Assisted GPS’ GPS World magazine, November 2001”)).35 

At the hearing, Dr. van Diggelen testified that he wrote the paper after the conference, and 

that due to the circumstances, he believes that the paper describes something different than what 

was presented at the 2001 ION GPS conference. van Diggelen Tr. 378-379, Dr. van Diggelen, 

however, “just can’t remember the details of the slides” that he presented at the conference. Id. 

Tr. 379. He stated, “I just can’t recall exactly how much of what’s in the paper was presented.” 

35 The application that issued as the ‘080 patent was filed on September 29,2003, and 

claims priority to an earlier application that was filed October 2,2002. The critical date, 

therefore, is October 2,2001. 

107 

Diggelen published a paper. It is the timing of this publication that is at the center of the present 

dispute. 

SiRF contends that "[Dr.] van Diggelen's 'Global Locate.Indoor GPS Chipset & Service' 

paper ('ION-GPS 2001 paper') described Global Locate long-term orbit('LTO') service (which 

Global Locate claims satisfies the domestic industry requirement and, thus, admits meets every 

element ofthe claim)." Resp. Br. at 100-101(citing Dafesh Tr. 817-820). SiRF concludes that the 

ION-GPS 2001 paper is prior art because "it was presented before more than one year before the 

filing date of the '080 patent. 35 U.S.C. § 102(b)." Resp. Br. at 101 (respondents' emphasis). 

Global Locate disagrees, arguing that the van Diggelen ION GPS article upon which SiRF 

relies was not published more than one year prior to the original application of the '080 patent, 

and thus does not constitute prior art under Section 102(b). CompI. Br. at 123. Global Locate 

states that the ION GPS article could not have been published until after November 2001, 

inasmuch as the article cites a reference having a November 2001 publication date. Id., (citing 

van Diggelen Tr. 378-379; RX-127 (ION GPS Paper) at 602 SiRF908678 (listing "J. LaMance et 

a12001, 'Low Infrastructure Assisted GPS' GPS World magazine, November 2001,,)).35 

At the hearing, Dr. van Diggelen testified that he wrote the paper after the conference, and 

that due to the circumstances, he believes that the paper describes something different than what 

was presented at the 2001 ION GPS conference. van Diggelen Tr. 378-379. Dr. van Diggelen, 

however, 'just can't remember the details ofthe slides" that he presented at the conference. Id. 

Tr. 379. He stated, "I just can't recall exactly how much of what's in the paper was presented." 

35 The application that issued as the '080 patent was filed on September 29,2003, and 

claims priority to an earlier application that was filed October 2, 2002. The critical date, 

therefore, is October 2,2001. 

107 
Id. Tr. 380.36 

On balance, while the testimony of Dr. van Diggelen may be sketchy as to what he 

presented at the 2001 ION GPS conference, it is found that SiRF has not carried its burden of 

showing by “clear and convincing” evidence that Dr. van Diggelen’s ION GPS subsequently 

published paper constitutes prior art under Section 102(b). It is also found that the ION 

conference paper was published after the conference. 

In arguing to the contrary, SiRF merely offers an alternative view as to what may have 

happened and when the events may have occurred. Such an alternative view, however, falls far 

short of “clear and convincing” evidence. 

SiRF’s explanation of events is suggestive, but not conclusive. For example, SiRF cites to 

an email sent by Dr. van Diggelen after the ION GPS conference to a group of Global Locate 

employees. The email states in part, [ 

] Resp. Br. at 101 (citing RX-234C at GL-602 119414). The email also stated, [ 

] Id. Contraryto 

SiRF’s position, these two references do not prove its case as to the paper being prior art. 

SiRF also argues that Dr. van Diggelen’s testimony is entitled to no weight inasmuch, in 

respondents’ view, it is self-serving and, in part, is the result of “coaching” by counsel. Resp. Br. 

at 102. In that regard, SiRF’s argument is directed to a reference in the van Diggelen paper to an 

article dated November 200 1 (the LaMance article referenced earlier). 

SiRF’s argument that Dr. van Diggelen’s testimony is entitled to no weight is rejected. 

36 Dr. van Diggelen: “I did present things that I had from the class, which was a class on 

indoor GPS. And I believe I used a video that I had.” van Diggelen Tr. 380. 

108 

Id Tr. 380?6 

On balance, while the testimony of Dr. van Diggelen may be sketchy as to what he 

presented at the 2001 ION GPS conference, it is found that SiRF has not carried its burden of 

showing by "clear and convincing" evidence that Dr. van Diggelen's ION GPS subsequently 

published paper constitutes prior art under Section 1 02(b). It is also found that the ION 

conference paper was published after the conference. 

In arguing to the contrary, SiRF merely offers an alternative view as to what may have 

happened and when the events may have occurred. Such an alternative view, however, falls far 

short of "clear and convincing" evidence. 

SiRF's explanation of events is suggestive, but not conclusive. For example, SiRF cites to 

an email sent by Dr. van Diggelen after the ION GPS conference to a group of Global Locate 

employees. The email states in part, [ 

] Resp. Br. at 101 (citing RX-234C at GL-602 119414). The email also stated, [ 

] Id Contrary to 

SiRF's position, these two references do not prove its case as to the paper being prior art. 

SiRF also argues that Dr. van Diggelen's testimony is entitled to no weight inasmuch, in 

respondents' view, it is self-serving and, in part, is the result of "coaching" by counsel. Resp. Br. 

at 102. In that regard, SiRF's argument is directed to a reference in the van Diggelen paper to an 

article dated November 2001 (the LaMance article referenced earlier). 

SiRF's argument that Dr. van Diggelen's testimony is entitled to no weight is rejected. 

36 Dr. van Diggelen: "I did present things that I had from the class, which was a class on 

indoor GPS. And I believe I used a video that I had." van Diggelen Tr. 380. 

108 
There has been no showing that the witness did not testify truthfully; nor has there been a showing 

that the witness was coached during deposition (to which SiRF refers). Finally, the fact that 

Dr. van Diggelen agrees that the LaMance paper (the one referenced in the 2001 ION GPS paper) 

was actually published in March 2002 (van Diggelen Tr. 390-391), without hrther explanation, is 

not sufficient to establish that the van Diggelen ION conference article is prior art. 

f. Unenforceabilitv 

SiRF argues that the ‘080 patent is unenforceable because Global Locate withheld material 

prior art. See Resp. Br. at 80-86. Respondents state that the applicant distinguished his invention 

over the prior art by claiming that the use of “long term satellite tracking data” was what made the 

invention novel. Resp. Br. at 80. SiRF asserts that nonetheless, the applicant “withheld from the 

Examiner Phan, prior art that disclosed long term ephemeris with validity periods ranging from 6 

to 146 hours, a teaching inconsistent with the applicant’s argument for patentability of the ‘080 

patent.” Id. 37 According to respondents, the withheld art was “highly material and not 

cumulative,” and the withholding was “clearly intentional.” Id. 

Global Locate argues that Dr. van Diggelen did not withhold any material prior art or other 

information. Compl. R. Br. at 29-33. The Staff agrees, stating that “Respondents have failed to 

meet their burden of proving by clear and convincing evidence intent to deceive the PTO.” Staff 

Br. at 45 (citing van Diggelen testimony). For the reasons cited by Global Locate and the Staff, 

SiRF’s unenforceability argument fails. 

“Not only should the withheld prior art references have been disclosed to Examiner 

Phan during the prosecution of the ‘080 patent, but Examiner Issing’s rejection of overlapping 

subject matter in the ‘ 164 application, and van Diggelen’s intentional abandonment of that 

invention, should also have been disclosed to Examiner Phan.” Resp. Br. at 82. 

37 

109 

There has been no showing that the witness did not testify truthfully; nor has there been a showing 

that the witness was coached during deposition (to which SiRF refers). Finally, the fact that 

Dr. van Diggelen agrees that the LaMance paper (the one referenced in the 2001 ION GPS paper) 

was actually published in March 2002 (van Diggelen Tr. 390-391), without further explanation, is 

not sufficient to establish that the van Diggelen ION conference article is prior art. 

f. Unenforceability 

SiRF argues that the '080 patent is unenforceable because Global Locate withheld material 

prior art. See Resp. Br. at 80-86. Respondents state that the applicant distinguished his invention 

over the prior art by claiming that the use of "long term satellite tracking data" was what made the 

invention novel. Resp. Br. at 80. SiRF asserts that nonetheless, the applicant "withheld from the 

Examiner Phan, prior art that disclosed long term ephemeris with validity periods ranging from 6 

to 146 hours, a teaching inconsistent with the applicant's argument for patentability of the '080 

patent." Id. 37 According to respondents, the withheld art was "highly material and not 

cumulative," and the withholding was "clearly intentional." Id. 

Global Locate argues that Dr. van Diggelen did not withhold any material prior art or other 

information. Compl. R. Br. at 29-33. The Staff agrees, stating that "Respondents have failed to 

meet their burden of proving by clear and convincing evidence intent to deceive the PTO." Staff 

Br. at 45 (citing van Diggelen testimony). For the reasons cited by Global Locate and the Staff, 

SiRF's unenforceability argument fails. 

37 "Not only should the withheld prior art references have been disclosed to Examiner 

Phan during the prosecution of the '080 patent, but Examiner Issing's rejection of overlapping 

subject matter in the' 164 application, and van Diggelen's intentional abandonment of that 

invention, should also have been disclosed to Examiner Phan." Resp. Br. at 82. 

109 
First, there was no concealment of the ‘ 164 application. It was disclosed and incorporated 

by reference into the ‘080 patent. JX-6 (‘080 patent) at col. 5,11. 8-12. Second, both the ICDGPS-200 and Russell references were disclosed in the ‘ 164 application. The ICD-GPS-200 was 

also disclosed and discussed in Global Locate’s ‘820 patent and both the ‘ 164 application and the 

‘820 patent were incorporated by reference in their entirety into the ‘080 patent. See JX-6 (‘080 

patent) at col. 2,11. 27-31; CX-109 (‘820 patent) at col. 4,l. 60 - col. 5,l. 12. 

Third, SiRF has not shown that the rejection of the claims in the ‘ 164 application would be 

considered important by the examiner of the ‘080 patent; nor does it explain why the 

abandonment of the ‘ 164 application should be considered material. In that regard, Dr. van 

Diggelen testified that the ‘ 164 application was a “fairly simple idea” -- i. e., a distribution of the 

satellite orbits computed by the Air Force, but that “we could not actually implement this system.” 

van Diggelen Tr. 223. Dr. van Diggelen continued, “We then had to do something different, and 

that’s what’s in the ‘820 and the ‘080 patent, which is recreating the future orbits for the satellites 

ourselves, we would have to do it ourselves. And in particular making them longer than what’s 

available from the broadcast satellites and then distributing that data.” Id. 

Finally, the evidence shows that Dr. van Diggelen did not intentionally withhold anything 

during prosecution. To prove inequitable conduct because of the omission of a material reference, 

the record must contain clear and convincing evidence that the applicant made a deliberate 

decision to withhold a known material reference. See Eli Lilly h Co. v. Zenith Goldline Pharm. 

Inc., 471 F.3d 1369, 1382 (Fed. Cir. 2006). As the testimony of Dr. van Diggelen at the hearing 

in this investigation, such is simply not the case here. See van Diggelen Tr. 221 -224. 

110 

First, there was no concealment ofthe '164 application. It was disclosed and incorporated 

by reference into the '080 patent. JX-6 ('080 patent) at col. 5, 11.8-12. Second, both the ICDGPS-200 and Russell references were disclosed in the' 164 application. The ICD-GPS-200 was 

also disclosed and discussed in Global Locate's' 820 patent and both the' 164 application and the 

'820 patent were incorporated by reference in their entirety into the '080 patent. See JX-6 ('080 

patent) at col. 2, 11. 27-31; CX-I09 ('820 patent) at col. 4, 1. 60 - col. 5,1. 12. 

Third, SiRF has not shown that the rejection ofthe claims in the '164 application would be 

considered important by the examiner of the' 080 patent; nor does it explain why the 

abandonment of the '164 application should be considered material. In that regard, Dr. van 

Diggelen testified that the' 164 application was a "fairly simple idea" -- i. e., a distribution of the 

satellite orbits computed by the Air Force, but that "we could not actually implement this system." 

van Diggelen Tr. 223. Dr. van Diggelen continued, "We then had to do something different, and 

that's what's in the '820 and the '080 patent, which is recreating the future orbits for the satellites 

ourselves, we would have to do it ourselves. And in particular making them longer than what's 

available from the broadcast satellites and then distributing that data." Id 

Finally, the evidence shows that Dr. van Diggelen did not intentionally withhold anything 

during prosecution. To prove inequitable conduct because of the omission of a material reference, 

the record must contain clear and convincing evidence that the applicant made a deliberate 

decision to withhold a known material reference. See Eli Lilly & Co. v. Zenith Goldline Pharm. 

Inc., 471 F.3d 1369, 1382 (Fed. Cir. 2006). As the testimony of Dr. van Diggelen at the hearing 

in this investigation, such is simply not the case here. See van Diggelen Tr. 221-224. 

110 
g. Indefiniteness 

Finally, SiRF argues that the asserted claims of the ‘080 patent are invalid for 

indefiniteness pursuant to 35 U.S.C. 4 112,72. Resp. Br. at 105-106. SiRF argues that because 

Dr. Diggelen and Dr. Dafesh testified that the meaning of the term “long term satellite tracking 

data” depends upon the fit interval or validity period of the broadcast ephemeris, and because the 

validity of the broadcast ephemeris could vary, then the asserted claims must be indefinite. 

This argument is without merit. As explained by Global Locate, “a person of ordinary 

skill in the art would readily understand that (i) long tern satellite tracking data is clearly defined 

in relation to the period of validity of broadcast ephemeris; (ii) broadcast ephemeris is ‘typically” 

defined by a period of validity of between 2-4 hours; and (iii) the broadcast ephemeris data 

message itselfwill inform users of the GPS system if the satellites in the GPS constellation are 

using an atypical fit interval of longer than 2-4 hours.” Compl. Reply at 44 (complainants’ 

emphasis) (citing Dafesh Tr. 607,658-659,3297-3298; van Diggelen Tr. 360-362). 

2. The ‘000 Patent 

U.S. Patent No. 6,65 1,000 is entitled, ‘‘Method and Apparatus for Generating and 

Distributing Satellite Tracking Information in a Compact Format.” JX-3. It describes methods 

and apparatuses for creating and distributing satellite tracking data to a remote receiver, where the 

satellite tracking data is provided in a format that is compatible with the remote receiver. Compl. 

Br. at 126; Resp. Br. at 107. 

Dr. van Diggelen, Charles Abraham, and James LaMance are the named inventors in the 

‘000 patent. They devised a method for “compacting” ephemeris or other satellite tracking data, 

so that the data takes less space during transmission from server to the remote receiver. van 

111 

g. Indefiniteness 

Finally, SiRF argues that the asserted claims of the '080 patent are invalid for 

indefiniteness pursuant to 35 U.S.C. § 112, ~2. Resp. Br. at 105-106. SiRF argues that because 

Dr. Diggelen and Dr. Dafesh testified that the meaning of the term "long term satellite tracking 

data" depends upon the fit interval or validity period of the broadcast ephemeris, and because the 

validity of the broadcast ephemeris could vary, then the asserted claims must be indefinite. 

This argument is without merit. As explained by Global Locate, "a person of ordinary 

skill in the art would readily understand that (i) long term satellite tracking data is clearly defined 

in relation to the period of validity of broadcast ephemeris; (ii) broadcast ephemeris is 'typically" 

defined by a period of validity of between 2-4 hours; and (iii) the broadcast ephemeris data 

message itselfwill inform users of the GPS system if the satellites in the GPS constellation are 

using an atypical fit interval oflonger than 2-4 hours." Compl. Reply at 44 (complainants' 

emphasis) (citing Dafesh Tr. 607, 658-659, 3297-3298; van Diggelen Tr. 360-362). 

2. The '000 Patent 

U.S. Patent No. 6,651,000 is entitled, "Method and Apparatus for Generating and 

Distributing Satellite Tracking Information in a Compact Format." JX-3. It describes methods 

and apparatuses for creating and distributing satellite tracking data to a remote receiver, where the 

satellite tracking data is provided in a format that is compatible with the remote receiver. Compl. 

Br. at 126; Resp. Br. at 107. 

Dr. van Diggelen, Charles Abraham, and James LaMance are the named inventors in the 

'000 patent. They devised a method for "compacting" ephemeris or other satellite tracking data, 

so that the data takes less space during transmission from server to the remote receiver. van 

111 
Diggelen Tr. 226. See Dafesh Tr. 593 (The ‘000 patent “is an orbital data specific form of 

compaction or compression.”) 

The invention described in the ‘000 patent addresses the problem that there is often 

insufficient bandwidth to efficiently transmit satellite tracking data from servers to remote 

receivers and that, therefore, “there is a need for a method and apparatus for providing satellite 

trajectory and clock information to a remote receiver in a compact form.” JX-3 (‘000 patent) at 

col. 1, I. 64 - col. 2,l. 3. See van Diggelen Tr. 225-226; see also, Dafesh Tr. 594 (“[Tlhe scope of 

this invention is in an assisted GPS context.”). 

The Summary of the Invention states: “The present invention is a method and apparatus 

for generating satellite tracking data (STD), then transmitting the data to a remote receiver in a 

compact form. The STD is derived by receiving at one or more satellite tracking stations the 

signals from at least one satellite and determining satellite tracking information (STI) through 

signal processing or by extracting the ephemeris message from the received signals. STI contains 

present satellite orbit trajectory data and satellite clock information. The STD is reformatted into 

a compact format and provided to a remote satellite signal receiver via a network or 

communications system. The receiver converts the compact format into a standard format and 

uses the STD to compute the position of the receiver.” JX-3 (‘000 patent), Summary Of The 

Invention, col. 2,11. 6-20. 

The invention of the ‘000 patent is illustrated in Fig. 1 of the patent. JX-3. Figure 1 and 

the accompanying text describe an exemplary system for creating and distributing satellite 

tracking data to enhance the performance of remote positioning receivers. Figure 1 of the ‘000 

patent is illustrated below. 

112 

Diggelen Tr. 226. See Dafesh Tr. 593 (The '000 patent "is an orbital data specific form of 

compaction or compression.") 

The invention described in the '000 patent addresses the problem that there is often 

insufficient bandwidth to efficiently transmit satellite tracking data from servers to remote 

receivers and that, therefore, "there is a need for a method and apparatus for providing satellite 

trajectory and clock information to a remote receiver in a compact form." JX-3 ('000 patent) at 

col. 1,1. 64 - col. 2, l. 3. See van Diggelen Tr. 225-226; see also, Dafesh Tr. 594 ("[T]he scope of 

this invention is in an assisted GPS context."). 

The Summary of the Invention states: "The present invention is a method and apparatus 

for generating satellite tracking data (STD), then transmitting the data to a remote receiver in a 

compact form. The STD is derived by receiving at one or more satellite tracking stations the 

signals from at least one satellite and determining satellite tracking information (STI) through 

signal processing or by extracting the ephemeris message from the received signals. STI contains 

present satellite orbit trajectory data and satellite clock information. The STD is reformatted into 

a compact format and provided to a remote satellite signal receiver via a network or 

communications system. The receiver converts the compact format into a standard format and 

uses the STD to compute the position ofthe receiver." JX-3 ('000 patent), Summary Of The 

Invention, col. 2, 11. 6-20. 

The invention of the '000 patent is illustrated in Fig. 1 of the patent. JX-3. Figure 1 and 

the accompanying text describe an exemplary system for creating and distributing satellite 

tracking data to enhance the performance of remote positioning receivers. Figure 1 of the '000 

patent is illustrated below. 

112 
Figure 1 depicts a block diagram of the system in which a network of GPS tracking 

stations (1 02) collects measurement data, called satellite tracking information (ie., the STI) from 

GPS satellites (104). The STI is sent to the satellite tracking data (Le., the STD) and computation 

server (1 06). The server (1 06) produces the STD from the STI. The server then sends the STD to 

a distribution server (1 10) where formatting software (1 1 1) formats the data into a compact 

format, such as compact ephemeris model. The distribution server then distributes the compact 

data to GPS devices (I 12) which “expand the model to a format that is conventional for the 

receiver.” JX-3 (‘000 patent) at col. 2,l. 37 - col. 4,l. 8 & Fig. 1. Compl. Br. at 126-127; Resp. 

Br. at 11 1 .38 

38 See Dafesh Tr. 595 (“[Tlhe server collects or receives this satellite tracking 

information, which the patent describes as one code phase measurement, carrier phase 

measurements, Doppler measurement, or ephemeris data.”); Tr. 596, 598 (after the STI is used to 

compute the STD, the STD is stored in the server database); (the software in a distribution server 

represents this STD in a compact format called a “first format”); Tr. 596-597 (satellite sends this 

compact STD through the Internet, or through a wireless connection to a remote receiver, where 

(continued.. .) 

113 

Figure 1 depicts a block diagram of the system in which a network of GPS tracking 

stations (102) collects measurement data, called satellite tracking information (i. e., the STI) from 

GPS satellites (104). The STI is sent to the satellite tracking data (i.e., the STD) and computation 

server (106). The server (106) produces the STD from the STI. The server then sends the STD to 

a distribution server (110) where formatting software (111) formats the data into a compact 

format, such as compact ephemeris model. The distribution server then distributes the compact 

data to GPS devices (112) which "expand the model to a format that is conventional for the 

100 

106 

STD 

SOFlWAflE 

104 DISTRIBUTION 

SERVER 

FIG. 1 

receiver." JX-3 ('000 patent) at col. 2, 1. 37 - col. 4, 1. 8 & Fig. 1. Compi. Br. at 126-127; Resp. 

Br. at 111.38 

38 See Dafesh Tr. 595 ("[T]he server collects or receives this satellite tracking 

information, which the patent describes as one code phase measurement, carrier phase 

measurements, Doppler measurement, or ephemeris data."); Tr. 596, 598 (after the STI is used to 

compute the STD, the STD is stored in the server database); (the software in a distribution server 

represents this STD in a compact format called a "first format"); Tr. 596-597 (satellite sends this 

compact STD through the Internet, or through a wireless connection to a remote receiver, where 

( continued ... ) 

113 
There are three methods for compaction identified in the preferred embodiment. One 

method “is to send a subset of the standard ephemeris parameters and adjust the remaining ones.” 

Dafesh Tr. 599. In that regard, satellite tracking data, or ephemeris, typically consists of 15 

separate parameters. In one example of compaction, six of the less critical parameters are 

eliminated and the remaining parameters are adjusted to account for their elimination. This 

results in a subset of the standard ephemeris that accurately describes a particular satellite’s 

trajectory. See van Diggelen Tr. 232-233; see also, JX-3 (‘000 patent) at col. 5,ll. 45-55. 

A second method “is mathematical curve fit modeling, so fitting this data, for example, 

position, satellite positions, to a model that will describe where the positions are.” Dafesh 

Tr. 599. Dr. Dafesh stated that rather than sending “many, many” data points that a receiver 

needed to navigate (e.g., position of the satellite versus time), “you send a fit of this data to a 

model.” Dafesh Tr. 600; CDX-3 1. In other words, parameters of the model are sent instead of all 

the points, and that reduces the amount of data that is transmitted. Dafesh Tr. 601. 

The third method for compaction “is to send a master value plus delta values that require 

fewer bits to encode.” Dafesh Tr. 599; see JX-3 at col. 6,11. 23-27. “[Ilnstead of sending the data 

from each satellite, you send the data from the first satellite and then you send the differences 

between the first satellite and the subsequent satellites.” Id. In that regard, satellite tracking data 

also contains certain parameters that are “common or close to common among the different 

satellites.” See van Diggelen Tr. at 234. Transmitting the master value and delta values instead of 

the common and close-to-common parameters reduces the amount of data that must be 

38( ... continued) 

the remote receiver converts the STD, or first format, “to a standard format or second format that 

the receiver can understand.”) 

114 

There are three methods for compaction identified in the preferred embodiment. One 

method "is to send a subset of the standard ephemeris parameters and adjust the remaining ones." 

Dafesh Tr. 599. In that regard, satellite tracking data, or ephemeris, typically consists of 15 

separate parameters. In one example of compaction, six of the less critical parameters are 

eliminated and the remaining parameters are adjusted to account for their elimination. This 

results in a subset of the standard ephemeris that accurately describes a particular satellite's 

trajectory. See van Diggelen Tr. 232-233; see also, JX-3 ('000 patent) at col. 5,11.45-55. 

A second method "is mathematical curve fit modeling, so fitting this data, for example, 

position, satellite positions, to a model that will describe where the positions are." Dafesh 

Tr. 599. Dr. Dafesh stated that rather than sending "many, many" data points that a receiver 

needed to navigate (e.g., position of the satellite versus time), "you send a fit of this data to a 

model." Dafesh Tr. 600; CDX-31. In other words, parameters of the model are sent instead of all 

the points, and that reduces the amount of data that is transmitted. Dafesh Tr. 601. 

The third method for compaction "is to send a master value plus delta values that require 

fewer bits to encode." Dafesh Tr. 599; see JX-3 at col. 6,11.23-27. "[I]nstead of sending the data 

from each satellite, you send the data from the first satellite and then you send the differences 

between the first satellite and the subsequent satellites." Id In that regard, satellite tracking data 

also contains certain parameters that are "common or close to cornmon among the different 

satellites." See van Diggelen Tr. at 234. Transmitting the master value and delta values instead of 

the cornmon and close-to-common parameters reduces the amount of data that must be 

38( ... continued) 

the remote receiver converts the STD, or first format, "to a standard format or second format that 

the receiver can understand.") 

114 
transmitted to the receiver. See JX-3 (‘000 patent) at col. 6,ll. 23-27; see also, van Diggelen at 

234. 

a. The Asserted Claims 

Global Locate asserts claims 1,2 and 5 of the ‘000 patent. These claims read as follows: 

1. A method of creating and distributing compact satellite orbit 

models comprising: 

receiving satellite signals from at least one satellite and at least one 

receiving station; 

Extracting at least a portion of the satellite tracking data from said 

satellite signal, representing said data in a first format; 

Transmitting the formatted data to a remote receiver; and 

At the remote receiver, representing said formatted data in a second 

format supported by the remote receiver. 

2. The method of claim 1 wherein said satellite tracking data 

comprises at least one of a satellite orbit model or a satellite clock 

model. 

* * * * * 

5. The method of claim 1 wherein said second format comprises 

parameters defined in ICD-GPS-200. 

JX-3, CO~. 6,ll. 39-51, 58-59. 

b. Claim Construction 

“compact satellite orbit models” 

This claim term appears in claim 1. Global Locate construes this claim term as “satellite 

orbit models whose parameters have been adjusted such that the number of bits used to accurately 

represent the satellite orbit models over a comparable time period has been reduced.” Compl. Br. 

115 

transmitted to the receiver. See JX-3 ('000 patent) at col. 6,11.23-27; see also, van Diggelen at 

234. 

a. The Asserted Claims 

Global Locate asserts claims 1,2 and 5 of the '000 patent. These claims read as follows: 

1. A method of creating and distributing compact satellite orbit 

models comprising: 

receiving satellite signals from at least one satellite and at least one 

receiving station; 

Extracting at least a portion of the satellite tracking data from said 

satellite signal, representing said data in a first format; 

Transmitting the formatted data to a remote receiver; and 

At the remote receiver, representing said formatted data in a second 

format supported by the remote receiver. 

2. The method of claim 1 wherein said satellite tracking data 

comprises at least one of a satellite orbit model or a satellite clock 

model. 

* * * * * 

5. The method of claim 1 wherein said second format comprises 

parameters defined in ICD-GPS-200. 

JX-3, col. 6,11.39-51,58-59. 

h. Claim Construction 

"compact satellite orbit models" 

This claim term appears in claim 1. Global Locate construes this claim term as "satellite 

orbit models whose parameters have been adjusted such that the number of bits used to accurately 

represent the satellite orbit models over a comparable time period has been reduced." Compl. Br. 

115 
at 128-129. SiRF submits that no construction is necessary, stating that the “preamble is not 

limiting.” Resp. Br. at 114. The Staff agrees with Global Locate ‘s proposed construction. The 

Staff submits that “the compact format of the satellite orbit models is fundamental to the 

invention.” Staff Br. at 30. The Staff also agrees with Global Locate that “this term states a 

necessary and defining aspect of the invention, and thus is a limitation on the scope of the 

claims.” Id. 

This court agrees with the proposed construction offered by Global Locate and supported 

by the Staff. Accordingly, the disputed claim term “compact satellite orbit data” is construed as 

“satellite orbit models whose parameters have been adjusted such that the number of bits used to 

accurately represent the satellite orbit models over a comparable time period has been reduced.” 

The claim language of claim 1 of the ‘000 patent mandates this construction. It makes 

clear that the satellite orbital models referred to in claim 1 must be in compact form. For 

example, the preamble states that the claim is a method for “creating and distributing compact 

satellite orbit models.” JX-3, col. 6,11. 39-40. See On Demand Mach. Corp. v. Ingram 

Indus., Inc., 442 Fed. Cir. 133 1 , 1343 (Fed. Cir. 2006) (“[iln considering whether a preamble 

limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining 

aspect of the invention, or is simply an introduction to the general field of the claim.”) Claim 1 

then continues on to describe the creating and distributing of satellite data in a first format. 

The specification confirms that transmitting the data in a compact format is fundamental to 

the invention. For example, it notes that Assisted-GPS systems typically transmit the entire 

ephemeris message to the remote receiver and that, in many instances, bandwidth or packet size 

for the transmission of this message is not readily available. Thus, “there is a need for a method 

116 

at 128-129. SiRF submits that no construction is necessary, stating that the "preamble is not 

limiting." Resp. Br. at 114. The Staff agrees with Global Locate's proposed construction. The 

Staff submits that "the compact format of the satellite orbit models is fundamental to the 

invention." Staff Br. at 30. The Staff also agrees with Global Locate that "this term states a 

necessary and defining aspect of the invention, and thus is a limitation on the scope of the 

claims." Id 

This court agrees with the proposed construction offered by Global Locate and supported 

by the Staff. Accordingly, the disputed claim term "compact satellite orbit data" is construed as 

"satellite orbit models whose parameters have been adjusted such that the number of bits used to 

accurately represent the satellite orbit models over a comparable time period has been reduced." 

The claim language of claim 1 of the '000 patent mandates this construction. It makes 

clear that the satellite orbital models referred to in claim 1 must be in compact form. For 

example, the preamble states that the claim is a method for "creating and distributing compact 

satellite orbit models." JX-3, col. 6, 11.39-40. See On Demand Mach. Corp. v. Ingram 

Indus.,Inc., 442 Fed. Cir. 1331, 1343 (Fed. Cir. 2006) ("[i]n considering whether a preamble 

limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining 

aspect of the invention, or is simply an introduction to the general field of the claim.") Claim 1 

then continues on to describe the creating and distributing of satellite data in a first format. 

The specification confirms that transmitting the data in a compact format is fundamental to 

the invention. For example, it notes that Assisted-GPS systems typically transmit the entire 

ephemeris message to the remote receiver and that, in many instances, bandwidth or packet size 

for the transmission of this message is not readily available. Thus, "there is a need for a method 

116 
and apparatus for providing satellite trajectory and clock information to a remote receiver in 

compact form.” JX-3 (‘000 patent) at col. 1,1.64 - col. 2,l. 4. 

In addition, the Summary Of The Invention states that “[tlhe present invention is a method 

and apparatus for generating satellite tracking data (STD), then transmitting the data to a remote 

receiver in a compact form.” JX-3 at col. 2,ll. 6-8. See Background Of The Invention, JX-3 at 

col. 1,11. 18-2 1 (“the invention relates to a method and apparatus for generating and distributing 

satellite tracking information in a first format (e.g., a compact ephemeris 

Finally, the specification explains that “compaction” is a function of using less data to 

accurately represent the satellite orbit model over a period of time that is comparable to the noncompacted data. See, e.g., van Diggelen Tr. 230-23 1 & Dafesh Tr. 678 (the compaction is orbital 

data specific compaction); see also, Heppe Tr. 3038 (no requirement in claim 1 that there be 

compact satellite orbit models) & Heppe Tr. 3 1 17-3 1 18 (respondents’ expert agreeing that the 

‘000 patent addresses the problem presented by bandwidth or packet size relating to the 

transmission of data in Assisted-GPS by reformatting data into compact form). 

Given the preceding discussion, Global Locate correctly states that “[wlhere, as here, the 

specification repeatedly describes the invention as requiring compaction, the preamble’s reference 

to ‘creating and distributing compact satellite orbit models’ is a logical and necessary limitation to 

the claims.” Compl. Br. at 132 (citing Dafesh Tr. 736 (a person of ordinary skill in the art would 

understand the preamble to claim 1 to mean “that the orbital models must be compact,’’ “they 

must ... require fewer bits to represent than the data used to create them.”)). 

39 For other references in the specification to “compact model,” “compact ephemeris 

model,” or “compact form,” see JX-3 at Abstract, Fig. 2; col. 2,11. 16-18; col. 3,11. 36-43; col. 3, 

11.47-53; CO~. 3,11. 59-63; & COI. 4,l. 9 - CO~. 6,l. 27. 

117 

and apparatus for providing satellite trajectory and clock information to a remote receiver in 

compact form." JX-3 ('000 patent) at col. 1,1.64 - col. 2, 1. 4. 

In addition, the Summary Of The Invention states that "[t]he present invention is a method 

and apparatus for generating satellite tracking data (STD), then transmitting the data to a remote 

receiver in a compact form." JX-3 at col. 2,11.6-8. See Background Of The Invention, JX-3 at 

col. 1,11. 18-21 ("the invention relates to a method and apparatus for generating and distributing 

satellite tracking information in a first format (e.g., a compact ephemeris model)).,,39 

Finally, the specification explains that "compaction" is a function of using less data to 

accurately represent the satellite orbit model over a period of time that is comparable to the noncompacted data. See, e.g., van Diggelen Tr. 230-231 & Dafesh Tr. 678 (the compaction is orbital 

data specific compaction); see also, Heppe Tr. 3038 (no requirement in claim 1 that there be 

compact satellite orbit models) & Heppe Tr. 3117-3118 (respondents' expert agreeing that the 

'000 patent addresses the problem presented by bandwidth or packet size relating to the 

transmission of data in Assisted-GPS by reformatting data into compact form). 

Given the preceding discussion, Global Locate correctly states that "[w]here, as here, the 

specification repeatedly describes the invention as requiring compaction, the preamble's reference 

to 'creating and distributing compact satellite orbit models' is a logical and necessary limitation to 

the claims." Compl. Br. at 132 (citing Dafesh Tr. 736 (a person of ordinary skill in the art would 

understand the preamble to claim 1 to mean "that the orbital models must be compact," "they 

must ... require fewer bits to represent than the data used to create them.")). 

39 For other references in the specification to "compact model," "compact ephemeris 

model," or "compact form," see JX-3 at Abstract, Fig. 2; col. 2, 11. 16-18; col. 3,11. 36-43; col. 3, 

11.47-53; col. 3,11. 59-63; & col. 4, 1. 9 - col. 6,1. 27. 

117 
“satellite signals” 

This disputed claim term is found in claim 1. Global Locate proposes that this term be 

construed as “signals for a satellite which can be used to accurately locate the satellite, including 

the raw signals directly received from the satellites, or processed signals derived from satellite 

transmissions in the form of satellite tracking information.” Compl. Br. at 132. SiRF states that 

the term “satellite signals” should be construed as “signals that emanate from a satellite.” Resp. 

Br. at 1 18. The Staff agrees with respondents’ construction that the disputed claim term means “a 

signal generated by a satellite.” Staff Br. at 3 1. All the parties submit that the plain and ordinary 

meaning of the disputed claim language supports their construction. 

Taking into account the language of the disputed term as it appears in claim land the 

specification, it is found that one of ordinary skill in the art would construe “satellite signals” to 

mean “a raw signal received directly from a satellite or processed signals derived from satellite 

transmissions in the form of satellite tracking information.” 

As Global Locate correctly submits, the plain meaning of the disputed claim term makes 

clear that, as used in claim 1, “satellite signals” includes both the raw signals received directly 

from satellites and the processed signals obtained from the receiving stations. See Compl. Br. at 

133. SpecificaIly, claim 1 expressly refers to “receiving satellite signals from at least one satellite 

and at least one receiving station.” JX-3, claim 1, at col. 6,ll. 42-43 (emphasis added). This is 

the reading offered by complainants’ expert, Dr. Dafesh. Dafesh Tr. 737. This reading supports 

complainants’ position. 

Further support for the construction advanced by Global Locate is found in Figure 1 in the 

specification. Figure 1 depicts “a block diagram of a system 100 for creating and distributing 

118 

"satellite signals" 

This disputed claim term is found in claim 1. Global Locate proposes that this term be 

construed as "signals for a satellite which can be used to accurately locate the satellite, including 

the raw signals directly received from the satellites, or processed signals derived from satellite 

transmissions in the form of satellite tracking information." Compl. Br. at 132. SiRF states that 

the term "satellite signals" should be construed as "signals that emanate from a satellite." Resp. 

Br. at 118. The Staff agrees with respondents' construction that the disputed claim term means "a 

signal generated by a satellite." Staff Br. at 31. All the parties submit that the plain and ordinary 

meaning of the disputed claim language supports their construction. 

Taking into account the language of the disputed term as it appears in claim land the 

specification, it is found that one of ordinary skill in the art would construe "satellite signals" to 

mean "a raw signal received directly from a satellite or processed signals derived from satellite 

transmissions in the form of satellite tracking information." 

As Global Locate correctly submits, the plain meaning of the disputed claim term makes 

clear that, as used in claim 1, "satellite signals" includes both the raw signals received directly 

from satellites and the processed signals obtained from the receiving stations. See Compl. Br. at 

133. Specifically, claim 1 expressly refers to "receiving satellite signals from at least one satellite 

and at least one receiving station." JX-3, claim 1, at col. 6,11.42-43 (emphasis added). This is 

the reading offered by complainants' expert, Dr. Dafesh. Dafesh Tr. 737. This reading supports 

complainants' position. 

Further support for the construction advanced by Global Locate is found in Figure 1 in the 

specification. Figure 1 depicts "a block diagram of a system 100 for creating and distributing 

118 
satellite tracking data (STD).” JX-3 (‘000 patent) at col. 2,ll. 52-53. The system described in 

Figure 1 includes tracking stations 102 “used to collect measurement data from the GPS 

satellites.” Id. at col. 2,ll. 62-63.40 In addition, the description of Figure 1 notes that the satellite 

measurements in the form of STI are sent to the “STD collection and computation server” which 

processes STI to generate the STD (Le., the satellite tracking data). Figure 1, therefore, supports 

the construction offered by Global Locate. 

The testimony of complainants’ expert, Dr. Dafesh, provides additional support for this 

construction. With respect to Figure 1, Dr. Dafesh testified that the portion of the first limitation 

of claim 1 referring to receiving satellite signals from at least one receiving station “has to occur 

at 106 because the signals are coming from receiving stations 102.” Dafesh Tr. 757. He further 

testified that a person of ordinary skill in the art would not understand that raw satellite signals 

would be sent from the receiving stations 102 to the STD collection and computation server 106. 

(“Of course not. Because raw RF signals are processed at the receiving stations.” Id. Dr. Dafesh 

added, “[tlhat would be very, very impractical, if not impossible.” Id.) 

The construction of “satellite signals” proposed by SiRF and the Staff (essentially, “signals 

that emanate from a satellite”) is rejected as being inconsistent with the plain language of the 

claim term as it appears in claim 1, as well as being inconsistent with the specification of the ‘000 

patent. In that regard, SiRF cites the following passage in the Summary of the Invention: 

The present invention is a method and apparatus for 

generating satellite tracking data (STD), then transmitting the data 

to a remote receiver in a compact form. The STD is derived by 

40 In the description of Figure 1, the “measurement data” is also “referred to herein as 

satellite tracking information (STI) that includes at least one of: code phase measurements, 

carrier phase measurements, or ephemeris data.” Id. at col. 3,ll. 3-8. 

119 

satellite tracking data (STD)." JX-3 ('000 patent) at col. 2, 11. 52-53. The system described in 

Figure 1 includes tracking stations 102 "used to collect measurement data from the GPS 

satellites." Jd. at col. 2, 11. 62-63.40 In addition, the description of Figure 1 notes that the satellite 

measurements in the form of STI are sent to the "STD collection and computation server" which 

processes STI to generate the STD (i.e., the satellite tracking data). Figure 1, therefore, supports 

the construction offered by Global Locate. 

The testimony of complainants' expert, Dr. Dafesh, provides additional support for this 

construction. With respect to Figure 1, Dr. Dafesh testified that the portion of the first limitation 

of claim 1 referring to receiving satellite signals from at least one receiving station "has to occur 

at 106 because the signals are coming from receiving stations 102." Dafesh Tr. 757. He further 

testified that a person of ordinary skill in the art would not understand that raw satellite signals 

would be sent from the receiving stations 102 to the STD collection and computation server 106. 

("Of course not. Because raw RF signals are processed at the receiving stations." Jd. Dr. Dafesh 

added, "[t]hat would be very, very impractical, ifnot impossible." Jd.) 

The construction of "satellite signals" proposed by SiRF and the Staff (essentially, "signals 

that emanate from a satellite") is rejected as being inconsistent with the plain language of the 

claim term as it appears in claim 1, as well as being inconsistent with the specification of the '000 

patent. In that regard, SiRF cites the following passage in the Summary of the Invention: 

The present invention is a method and apparatus for 

generating satellite tracking data (STD), then transmitting the data 

to a remote receiver in a compact form. The STD is derived by 

40 In the description of Figure 1, the "measurement data" is also "referred to herein as 

satellite tracking information (ST!) that includes at least one of: code phase measurements, 

carrier phase measurements, or ephemeris data." Jd. at col. 3,11. 3-8. 

119 
receiving at one or more satellite tracking stations the signals from 

at least one satellite and determining satellite tracking information 

(STI) through signal processing or by extracting the ephemeris 

message from the received signals. 

Resp. Br. at 119, citing JX-3 at col. 2,11. 7-15 (respondents’ emphasis). 

SiRF’s argument that the above passage supports a construction that a “satellite signal” is 

“simply a signal received from a satellite” is unpersuasive. This argument fails in light of the 

plain language of the disputed claim term, the patent specification, and the testimony of 

Dr. Dafesh, particularly as to one of ordinary skill in the art. 

Finally, both SiRF’s and the Staffs advance arguments based upon U.S. Patent No. 

6,542,820 (‘820 patent) and both arguments likewise fails. See Resp. Br. at 119; Staff Br. at 32- 

33. The ‘820 patent (CX-190) is incorporated into the ‘000 patent in its entirety by reference in 

the specification. JX-3 at col. 1,11. 8-1 1. The ‘820 patent is entitled, “Method and Apparatus for 

Generating and Distributing Satellite Tracking Information.” The ‘820 patent is generally directed 

to a method and apparatus for generating satellite tracking data that is valid for an extended period 

of time. 

First is the Staffs ‘820 argument. The Staff notes that during the prosecution of the 

application leading to the ‘000 patent, the examiner issued an office action rejecting certain 

claims, including then pending claim 1, as being unpatentable over the claims of the co-pending 

application leading to the ‘820 patent based on obviousness-type double patenting. JX-1 0 at GL602 001050-53. The Staff further notes that to traverse this rejection, the applicants filed a 

terminal disclaimer. Id. at 001 117-18. See Staff Br. at 32.41 

41 The ‘820 issued on April 1,2003. The ‘000 patent subsequently issued on November 

(continued ...) 

120 

receiving at one or more satellite tracking stations the signals from 

at least one satellite and determining satellite tracking information 

(STI) through signal processing or by extracting the ephemeris 

message from the received signals. 

Resp. Br. at 119, citing JX-3 at col. 2, 11. 7-15 (respondents' emphasis). 

SiRF's argument that the above passage supports a construction that a "satellite signal" is 

"simply a signal received from a satellite" is unpersuasive. This argument fails in light of the 

plain language of the disputed claim term, the patent specification, and the testimony of 

Dr. Dafesh, particularly as to one of ordinary skill in the art. 

Finally, both SiRF's and the Staffs advance arguments based upon U.S. Patent No. 

6,542,820 ('820 patent) and both arguments likewise fails. See Resp. Br. at 119; StaffBr. at 32-

33. The '820 patent (CX-190) is incorporated into the '000 patent in its entirety by reference in 

the specification. JX -3 at col. 1, 11. 8-11. The' 820 patent is entitled, "Method and Apparatus for 

Generating and Distributing Satellite Tracking Information." The '820 patent is generally directed 

to a method and apparatus for generating satellite tracking data that is valid for an extended period 

of time. 

First is the Staffs '820 argument. The Staff notes that during the prosecution of the 

application leading to the '000 patent, the examiner issued an office action rejecting certain 

claims, including then pending claim 1, as being unpatentable over the claims of the co-pending 

application leading to the '820 patent based on obviousness-type double patenting. JX-I0 at GL602001050-53. The Staff further notes that to traverse this rejection, the applicants filed a 

terminal disclaimer. Id. at 001117-18. See StaffBr. at 32.41 

41 The '820 issued on April 1, 2003. The '000 patent subsequently issued on November 

( continued ... ) 

120 
The Staff goes on to note the similarities, in its view, between claim 1 of the ‘820 patent 

and claim 1 of the ‘000 patent. The Staff also notes what it believes are similarities in Figure 1 of 

the two patents describing the a network of GPS tracking stations 102, GPS satellites 104, and an 

STD collection and computation server 106. Staff Br. at 33. Thus, the Staff concludes that “one 

of ordinary skill in the art would recognize that the ‘receiving satellite signals from at least one 

satellite and at least one receiving station’ limitation of claim 1 of the ‘000 patent means receiving 

satellite signals from at least one satellite at at least one receiving station.” Id. (Staffs 

emphasis) .42 

The Staffs ‘820 argument fails because it is contrary to the plain wording of claim 1 of the 

‘000 patent. Claim 1 reads, in part, “receiving satellite signals from at least one satellite and at 

least one receiving station.” JX-3 (‘000 patent) at col. 6,Il. 42-43. Claim 1 of the ‘000 patent 

does not read “receiving satellite signals from at least one satellite at at least one receiving 

station,” as the Staff would do. Thus, the Staffs proposed construction is inconsistent with the 

plain language of the claims and is, therefore, improper. See 24 Techs., Inc. v. Microsoft Corp., 

507 F.3d 1340, 1348 (Fed. Cir. 2007).43 

41(...continued) 

18,2003. 

42 As additional support for this proposition, the Staff cites the testimony of respondents’ 

expert, Dr. Heppe, at transcript pages 3044-3045. Id. Given Dr. Heppe’s numerous changes of 

position at the hearing in this investigation from the positions articulated in his initial expert 

report, Staffs reliance upon his testimony is misplaced. The testimony of Dr. Heppe is given 

little weight by this court. 

43 The Staff also argues that its rejected proposed construction of the claim term 

“satellite signals” (ie., the “at at” construction) is further supported by apparatus claim 29 of the 

‘000 patent. Staff Br. at 33. The Staff submits that claim 29 includes limitations corresponding 

(continued.. .) 

121 

The Staff goes on to note the similarities, in its view, between claim 1 of the '820 patent 

and claim 1 of the '000 patent. The Staff also notes what it believes are similarities in Figure 1 of 

the two patents describing the a network of GPS tracking stations 102, GPS satellites 104, and an 

STD collection and computation server 106. Staff Br. at 33. Thus, the Staff concludes that "one 

of ordinary skill in the art would recognize that the 'receiving satellite signals from at least one 

satellite and at least one receiving station' limitation of claim 1 of the '000 patent means receiving 

satellite signals from at least one satellite at at least one receiving station." Id (Staff's 

emphasis).42 

The Staff's' 820 argument fails because it is contrary to the plain wording of claim 1 of the 

'000 patent. Claim 1 reads, in part, "receiving satellite signals from at least one satellite and at 

least one receiving station." JX-3 ('000 patent) at col. 6, 11. 42-43. Claim 1 of the '000 patent 

does not read "receiving satellite signals from at least one satellite at at least one receiving 

station," as the Staff would do. Thus, the Staff's proposed construction is inconsistent with the 

plain language of the claims and is, therefore, improper. See Z4 Techs., Inc. v. Microsoft Corp., 

507 F.3d 1340, 1348 (Fed. Cir. 2007).43 

41( ... continued) 

18,2003. 

42 As additional support for this proposition, the Staff cites the testimony of respondents' 

expert, Dr. Heppe, at transcript pages 3044-3045. Id Given Dr. Heppe's numerous changes of 

position at the hearing in this investigation from the positions articulated in his initial expert 

report, Staff's reliance upon his testimony is misplaced. The testimony of Dr. Heppe is given 

little weight by this court. 

43 The Staff also argues that its rejected proposed construction ofthe claim term 

"satellite signals" (i.e., the "at at" construction) is further supported by apparatus claim 29 of the 

'000 patent. StaffBr. at 33. The Staff submits that claim 29 includes limitations corresponding 

( continued ... ) 

121 
Next is respondents’ ‘820 argument. SiRF states that “[wlhile the ‘000 patent claims 

recite simply a ‘satellite signal,’ the ‘820 patent claims recite: ‘producing long term satellite 

tracking data from information derived from said satellite signals.”’ Resp. Br. at 1 19 (respondents’ 

emphasis) (citing RX-109). SiRF argues that the construction proferred by Global Locate for the 

claim term “satellite signal” parallels the claimed embodiment of the ‘820 patent, and not the 

claimed embodiments of the ‘000 patent. Resp. Br. at 119-120. 

This argument is simply beside the point. Here, as already explained, Global Locate’s 

proposed construction of the disputed claim term was adopted on the basis of the plain language 

of the ‘000 patent and the ‘000 patent’s specification. 

“extracting ” 

This claim term appears in claim 1. Global Locate’s proposed construction is that 

“extracting” means “computing.” Compl. Br. at 135. SiRF does not believe that construction of 

this claim term is necessary. It does, however, disagree with Global Locate’s proposed 

construction. Resp. Reply at 83. The Staff agrees with complainants’ proposed construction. 

Staff Br. at 34. 

43(...continued) 

to those recited in method claim 1 of the ‘000 patent. It further submits that complainants’ 

expert, Dr. Dafesh, testified that the claimed “satellite signal receiver” may be the GPS tracking 

stations 102 of Figure 1 of the ‘000 patent. This, in the Staffs view, supports its proposed 

construction of “satellite signals.” Staff Br. at 33-34 (citing Dafesh Tr. 91 9,922-923). 

This court, however, does not find that the Staffs claim 29 argument supports its 

proposed construction of “satellite signals.” Moreover, Dr. Dafesh appears to distinguish claim 1 

from claim 29 of the ‘000 patent in stating that similar claim terms can have different meanings, 

depending on the context of the term in light of the specifications. Dr. Dafesh testified, “So, in 

this case, the specification uses signal more broadly to cover both the raw satellite signal and a 

processed signal in the form of STI. And in that context, then, a broader definition could apply.” 

Dafesh Tr. 9 1 8-9 19. 

122 

Next is respondents' '820 argument. SiRF states that "[w]hile the '000 patent claims 

recite simply a 'satellite signal,' the '820 patent claims recite: 'producing long term satellite 

tracking data from information derivedfrom said satellite signals.'" Resp. Br. at 119 (respondents' 

emphasis) (citing RX -109). SiRF argues that the construction proferred by Global Locate for the 

claim term "satellite signal" parallels the claimed embodiment of the' 820 patent, and not the 

claimed embodiments of the '000 patent. Resp. Br. at 119-120. 

This argument is simply beside the point. Here, as already explained, Global Locate's 

proposed construction of the disputed claim term was adopted on the basis of the plain language 

of the '000 patent and the '000 patent's specification. 

"extracting" 

This claim term appears in claim 1. Global Locate's proposed construction is that 

"extracting" means "computing." Compl. Br. at 135. SiRF does not believe that construction of 

this claim term is necessary. It does, however, disagree with Global Locate's proposed 

construction. Resp. Reply at 83. The Staff agrees with complainants' proposed construction. 

StaffBr. at 34. 

43( ... continued) 

to those recited in method claim 1 of the '000 patent. It further submits that complainants' 

expert, Dr. Dafesh, testified that the claimed "satellite signal receiver" may be the GPS tracking 

stations 102 of Figure 1 of the '000 patent. This, in the Staffs view, supports its proposed 

construction of "satellite signals." StaffBr. at 33-34 (citing Dafesh Tr. 919, 922-923). 

This court, however, does not find that the Staffs claim 29 argument supports its 

proposed construction of "satellite signals." Moreover, Dr. Dafesh appears to distinguish claim 1 

from claim 29 of the '000 patent in stating that similar claim terms can have different meanings, 

depending on the context of the term in light of the specifications. Dr. Dafesh testified, "So, in 

this case, the specification uses signal more broadly to cover both the raw satellite signal and a 

processed signal in the form of STI. And in that context, then, a broader definition could apply." 

Dafesh Tr. 918-919. 

122 
Both Global Locate and the Staff submit that the ‘000 patent specification supports 

construing the claim term “extracting” to mean “computing.” The parties are correct. The 

specification confirms that, as used in claim 1, “extracting” refers not only to reading data from 

the satellite signal, but also processing the data to form satellite data, as well as compact satellite 

models. The server at which the extraction takes place is referred to as the “collection and 

computation” server. See JX-3 (‘000 patent) at col. 3,11. 3-5 (“An STD collection and 

computation server 106 collects and processes the measurement data.”); see also, JX-3 at col. 4, 

11. 12-13 (“At step 204, the satellite trajectory data (STD) is computed or extracted from satellite 

signals. ”) 

In addition, Figure 2 refers to the extraction step 204 as “compute STD.” JX-3, Fig. 2. 

The specification explains that “[alt step 204, the satellite trajectory data (STD) is computed or 

extracted from the satellite signals.” JX-3 at col. 4,ll. 12-13 & Fig. 2 (illustrating step 204). 

Dr. Dafesh also testified that a person of ordinary skill in the art relative to this patent 

“would understand that extracting means computing.” Dafesh Tr. 765. Dr. Dafesh further 

testified that the satellite tracking data referred to in col. 3,ll. 15-20 of the specification as being 

produced by the server 106 are produced by the extraction method as claimed in the second 

limitation of claim 1 of the ‘000 patent. (“Yes. Absolutely.”) Dafesh Tr. 766. 

Accordingly, the claim term “extracting” is construed as “computing.” 

“representing said data in a first format” 

This claim term appears in claim 1. Global Locate proposes that “representing said data in 

a first format” be construed as “representing the extracted data as one or more compact satellite 

orbit models.” Compl. Br. at 138. SiRF believes that no construction of this term is necessary. 

123 

Both Global Locate and the Staff submit that the '000 patent specification supports 

construing the claim term "extracting" to mean "computing." The parties are correct. The 

specification confirms that, as used in claim 1, "extracting" refers not only to reading data from 

the satellite signal, but also processing the data to form satellite data, as well as compact satellite 

models. The server at which the extraction takes place is referred to as the "collection and 

computation" server. See JX-3 ('000 patent) at col. 3, 11. 3-5 ("An STD collection and 

computation server 106 collects and processes the measurement data."); see also, JX-3 at col. 4, 

11. 12-13 ("At step 204, the satellite trajectory data (STD) is computed or extracted from satellite 

signals. ") 

In addition, Figure 2 refers to the extraction step 204 as "compute STD." JX-3, Fig. 2. 

The specification explains that "[a]t step 204, the satellite trajectory data (STD) is computed or 

extracted from the satellite signals." JX-3 at col. 4, 11. 12-13 & Fig. 2 (illustrating step 204). 

Dr. Dafesh also testified that a person of ordinary skill in the art relative to this patent 

"would understand that extracting means computing." Dafesh Tr. 765. Dr. Dafesh further 

testified that the satellite tracking data referred to in col. 3, 11. 15-20 of the specification as being 

produced by the server 106 are produced by the extraction method as claimed in the second 

limitation of claim 1 of the '000 patent. ("Yes. Absolutely.") Dafesh Tr. 766. 

Accordingly, the claim term "extracting" is construed as "computing." 

"representing said data in a first format" 

This claim term appears in claim 1. Global Locate proposes that "representing said data in 

a first format" be construed as "representing the extracted data as one or more compact satellite 

orbit models." CompI. Br. at 138. SiRF believes that no construction of this term is necessary. 

123 
The Staff agrees with Global Locate’s proposed construction. Staff Br. at 35. 

It is found that the claim term “representing said data in a first format” means 

“representing the extracted data as one or more compact satellite orbit models.” The structure of 

the claim supports this construction. In that regard, the preamble to claim 1 describes “[a] method 

of creating and distributing compact satellite orbit models.” The first limitation of 

claim 1 reads “receiving satellite signals from at least one satellite and at least one receiving 

station.” The second limitation reads “extracting at least a portion of the satellite tracking data 

from said satellite signal, representing said data in a first format.” JX-3 (‘000 patent), claim 1. 

Thus, the data in the first format represents the extracted data as one or more satellite orbit 

models. 

The claim construction proposed by Global Locate is also supported by the specification. 

For example, the specification describes various methods for outputting “the formatted STD ... as 

[a] compact model.” JX-3 at col. 4,11. 17-18 & Figs. 2,4. Also, the specification does not 

disclose methods for creating and transmitting anything other than compact satellite orbit models. 

‘Transmitting the formatted data to a remote receiver ’’ 

This claim term appears in claim 1. Global Locate construes “transmitting the formatted 

data to a remote receiver” as “distributing the compact satellite orbit models to a receiver that is 

separate from the transmitter of the data in a first format.” Compl. Br. at 139. SiRF believes that 

no construction is required. Resp. Br. at 123. Respondents, however, argue that the claim term 

requires transmitting to the remote receiver “that represents the formatted data in a second 

124 

The Staff agrees with Global Locate's proposed construction. StaffBr. at 35. 

It is found that the claim term "representing said data in a first format" means 

"representing the extracted data as one or more compact satellite orbit models." The structure of 

the claim supports this construction. In that regard, the preamble to claim 1 describes "[a] method 

of creating and distributing compact satellite orbit models." The first limitation of 

claim 1 reads "receiving satellite signals from at least one satellite and at least one receiving 

station." The second limitation reads "extracting at least a portion ofthe satellite tracking data 

from said satellite signal, representing said data in a first format." JX-3 ('000 patent), claim 1. 

Thus, the data in the first format represents the extracted data as one or more satellite orbit 

models. 

The claim construction proposed by Global Locate is also supported by the specification. 

For example, the specification describes various methods for outputting "the formatted STD ... as 

[a] compact model." JX-3 at col. 4,11. 17-18 & Figs. 2, 4. Also, the specification does not 

disclose m~thods for creating and transmitting anything other than compact satellite orbit models. 

"transmitting the formatted data to a remote receiver" 

This claim term appears in claim 1. Global Locate construes "transmitting the formatted 

data to a remote receiver" as "distributing the compact satellite orbit models to a receiver that is 

separate from the transmitter of the data in a first format." Compl. Br. at 139. SiRF believes that 

no construction is required. Resp. Br. at 123. Respondents, however, argue that the claim term 

requires transmitting to the remote receiver "that represents the formatted data in a second 

124 
format.” Id.44 The Staff submits that complainants’ construction is reasonable. Staff Br. at 35. 

The construction proposed by Global Locate and supported by the Staff is adopted. The 

claim term “transmitting the formatted data to a remote receiver” is construed as “distributing the 

compact orbital models to a receiver that is separate from the transmitter of the data in a first 

format.” This construction is supported by a plain reading of the language of claim 1. 

This construction also is supported by the specification. For example, according to the 

specification, the claimed distribution system may be implemented by communication systems 

that do not make direct transmissions. In that regard, both Global Locate and the Staff cite to 

JX-3 (‘000 patent) at col. 3,11. 44-47 (“The distribution process may be implemented using some 

form of wireless communications system 1 14, or over the Internet 1 16, or a combination of both, 

or by some other means of communication.”); see JX-3, Fig. 1 (also cited by complainant). 

Moreover, as explained by Dr. Dafesh, when files are transmitted over the Internet, the 

transmission does not have to be direct. The files may pass “through a number of nodes on the 

Internet that are, essentially just pass-throughs or, you how, temporary storage locations.” 

Dafesh Tr. 768-796. 

“representing said formatted data in a second format supported by 

the remote receiver” 

This claim term appears in claim 1. The parties are in agreement that “representing said 

formatted data in a second format supported by the remote receiver” is to be construed as 

“converting the data received in the first format to a second format supported by the remote 

44 Global Locate states that the position taken by SiW actually “advocates for an 

interpretation that would require the transmission of the data in the first format from the 

transmitter to the remote GPS receivers to be direct.” Compl. Reply at 53 (complainants’ 

emphasis). 

125 

format." Id. -1-1 The Staff submits that complainants' construction is reasonable. StaffBr. at 35. 

The construction proposed by Global Locate and supported by the Staff is adopted. The 

claim term "transmitting the formatted data to a remote receiver" is construed as "distributing the 

compact orbital models to a receiver that is separate from the transmitter of the data in a first 

format." This construction is supported by a plain reading of the language of claim 1. 

This construction also is supported by the specification. For example, according to the 

specification, the claimed distribution system may be implemented by communication systems 

that do not make direct transmissions. In that regard, both Global Locate and the Staff cite to 

JX-3 ('000 patent) at col. 3,11.44-47 ("The distribution process may be implemented using some 

form of wireless communications system 114, or over the Internet 116, or a combination of both, 

or by some other means of communication."); see JX-3, Fig. 1 (also cited by complainant). 

Moreover, as explained by Dr. Dafesh, when files are transmitted over the Internet, the 

transmission does not have to be direct. The files may pass "through a number of nodes on the 

Internet that are, essentially just pass-throughs or, you know, temporary storage locations." 

Dafesh Tr. 768-796. 

"representing saidformatted data in a secondformat supported by 

the remote receiver" 

This claim term appears in claim 1. The parties are in agreement that "representing said 

formatted data in a second format supported by the remote receiver" is to be construed as 

"converting the data received in the first format to a second format supported by the remote 

44 Global Locate states that the position taken by SiRF actually "advocates for an 

interpretation that would require the transmission of the data in the first format from the 

transmitter to the remote GPS receivers to be direct." Compl. Reply at 53 (complainants' 

emphasis). 

125 
receiver.” Resp. Br. at 123-124. 

c. Infringement Determination - the ‘000 Patent 

Global Locate asserts that chips GSC3, GSC3e/LP, GSC3f, GSC3LT, GSC3LTf, 

GSC3LTi, GSC3LTif, and GSD3t, along with associated software, and that support InstantFix 

and, or, SiRFLoc infringe claims 1,2 and 5 of the ‘000 patent. 

i. SiRFstarIII Chips and Software UtilizinP the Instantfix Svstern 

Claim 1 

The evidence establishes that each of the accused SiRFstarIII chips and associated 

software supporting InstantFix and, or, SiRFLoc practice each of the claim elements of claim 1 of 

the ‘000 patent. The claim elements are discussed below, beginning with the preamble. 

“compact satellite orbit models” 

SiRF compacts the extended ephemeris (i. e., the EE) files that its SiRFInstantFix server 

transmits. See CX-278C (System Design of Ephemeris Extension (June 18,2004)) at 

602SiFW716 & 718; JX-11 I-1C (Kuykendall Tr.) at 118-1 19, (System Design of Ephemeris 

Extension describes the generation of EE. Kuykendall has no reason to believe that there are any 

significant changes to the generation, including the described compaction that occurs at the 

InstantFix server). 

The testimony of several witnesses provides further support for the proposition that the 

accused SiRF products meet the first limitation of claim 1. Dr. Dafesh, testifying as to CX-278C, 

stated that SiRF’s [ 

] Dafesh 

Tr. 663-664. See Garin Tr. 1879 (Phatak designed the compaction portion of the InstantFix 

126 

receiver." Resp. Br. at 123-124. 

c. Infringement Determination - the '000 Patent 

Global Locate asserts that chips GSC3, GSC3e/LP, GSC3f, GSC3LT, GSC3LTf, 

GSC3LTi, GSC3L Tif, and GSD3t, along with associated software, and that support InstantFix 

and, or, SiRFLoc infringe claims 1,2 and 5 of the '000 patent. 

i. SiRFstarIII Chips and Software Utilizing the Instantfix System 

Claim 1 

The evidence establishes that each of the accused SiRFstarIII chips and associated 

software supporting InstantFix and, or, SiRFLoc practice each of the claim elements of claim 1 of 

the '000 patent. The claim elements are discussed below, beginning with the preamble. 

"compact satellite orbit models" 

SiRF compacts the extended ephemeris (i.e., the EE) files that its SiRFlnstantFix server 

transmits. See CX-278C (System Design of Ephemeris Extension (June 18,2004)) at 

602SiRF716 & 718; JX-lll-lC (Kuykendall Tr.) at 118-119, (System Design of Ephemeris 

Extension describes the generation of EE. Kuykendall has no reason to believe that there are any 

significant changes to the generation, including the described compaction that occurs at the 

InstantFix server). 

The testimony of several witnesses provides further support for the proposition that the 

accused SiRF products meet the first limitation of claim 1. Dr. Dafesh, testifying as to CX-278C, 

stated that SiRF's [ 

] Dafesh 

Tr. 663-664. See Garin Tr. 1879 (Phatak designed the compaction portion of the InstantFix 

126 
system); see also, JX-110-8C (Phatak Tr.) at 150-159, 184-1 85, (explaining the compaction 

method used by SiFW). 

“receiving satellite signals from at least one satellite and at least 

one receiving station” 

The SiRF InstantFix service literally meets the first limitation of claim 1 when the 

InstantFix server downloads processed satellite signals from [ 

In that regard, Dr. Dafesh offered the opinion that the accused InstantFix products are 

covered by this limitation. Dafesh Tr, 736. Dr. Dafesh explained that “claim 1 says receiving 

satellite signals from at least one satellite and at least one receiving station.” Dafesh Tr. 737. 

Because of the word “and,” he noted that “the satellite signals are received both from the satellite 

and the receiving station.” Id..’ 

Dr. Dafesh then concluded that the “InstantFix server receives satellite tracking 

1 

information in the form of rapid and ultra-rapid orbits that it gets from [ 

] Dafesh Tr. 738. In explaining how 

the InstantFix server downloads data, Dr. Dafesh explained, “it takes past orbit data from the ICs 

Web site [called the International GNSS Service and managed by [ 

form of [ ] Dafesh 

Tr. 660. See Dafesh Tr. 661 (InstantFix server receives data from JPL “in the form of these 

] in the form of - - in the 

45 In the claim construction discussion, supra, it was noted that Dr. Dafesh discussed that 

the STD collection and Computation server (Fig. 1) must be receiving its satellite tracking 

information from the receiving stations in the form of processed signals, rather than the raw 

signals that are coming down from the satellite. Dafesh Tr. 737. 

127 

system); see also, JX-II0-8C (Phatak Tr.) at 150-159, 184-185, (explaining the compaction 

method used by SiRF). 

"receiving satellite signals from at least one satellite and at least 

one receiving station" 

The SiRF InstantFix service literally meets the first limitation of claim 1 when the 

InstantFix server downloads processed satellite signals from [ 

In that regard, Dr. Dafesh offered the opinion that the accused InstantFix products are 

covered by this limitation. Dafesh Tr. 736. Dr. Dafesh explained that "claim 1 says receiving 

satellite signals from at least one satellite and at least one receiving station." Dafesh Tr. 737. 

Because of the word "and," he noted that "the satellite signals are received both from the satellite 

and the receiving station." Id. 45 

Dr. Dafesh then concluded that the "InstantFix server receives satellite tracking 

information in the form of rapid and ultra-rapid orbits that it gets from [ 

] 

] Dafesh Tr. 738. In explaining how 

the InstantFix server downloads data, Dr. Dafesh explained, "it takes past orbit data from the lOS 

Web site [called the International ONSS Service and managed by [ ] in the form of - - in the 

form off ] Dafesh 

Tr. 660. See Dafesh Tr. 661 (InstantFix server receives data from JPL "in the form of these 

45 In the claim construction discussion, supra, it was noted that Dr. Dafesh discussed that 

the STD collection and computation server (Fig. 1) must be receiving its satellite tracking 

information from the receiving stations in the form of processed signals, rather than the raw 

signals that are coming down from the satellite. Dafesh Tr. 737. 

127 
146 

In offering his opinion, Dr. Dafesh acknowledged that the satellite signals received by the 

SiRFInstantFix server are “processed satellite signals.” Dafesh Tr. 761. The signals are 

processed at the [ 

testified that this fact does not change his opinion, “[blecause, to be consistent with the claims, 

the specification and the preferred embodiment, the satellite signals must also be processed 

satellite signals, as well as the raw satellite signals from the satellite.” Id. 

] location before they are transferred to the InstantFix server. Id. Dr. Dafesh 

SiRF asserts that Global Locate is wrong as to the first limitation of claim 1, inasmuch as 

“SiRF’s InstantFix server does not receive satellite signals - only [ ] receives satellite signals 

and it does not send them to SiRF.” Resp. Br. at 126 (respondents’ emphasis). 

Like SiRF, the Staff submits that the accused products do not meet the first claim 

limitation. Staff Br. at 36. In so arguing, the Staff places a great deal of reliance upon the 

testimony of respondents’ expert, Dr. Heppe. In that regard, Dr. Heppe testified that the accused 

products do not meet the first limitation of claim 1 of the ‘000 patent because “SiRF does not 

actually receive satellite signals because, instead, they receive information from [ 

Tr. 2595. 

] Heppe 

It is the finding of this court that the fact that [ ] processes 

the satellite signals, and then sends the processed signals to the SiRFInstantFix server, establishes 

that the accused products meet the first limitation of claim 1. As to this finding, the testimony of 

46 Discussing the InstantFix server, Dr. Pratt, another of complainants’ experts, stated 

that “the primary input is from the [ 

GPS satellites and providing information about their position, the position of those satellites over 

time.” Pratt Tr. 1215. 

1 who have a means of tracking 

128 

In offering his opinion, Dr. Dafesh acknowledged that the satellite signals received by the 

SiRFInstantFix server are "processed satellite signals." Dafesh Tr. 761. The signals are 

processed at the [ ] location before they are transferred to the InstantFix server. ld. Dr. Dafesh 

testified that this fact does not change his opinion, "[b ]ecause, to be consistent with the claims, 

the specification and the preferred embodiment, the satellite signals must also be processed 

satellite signals, as well as the raw satellite signals from the satellite." ld. 

SiRF asserts that Global Locate is wrong as to the first limitation of claim 1, inasmuch as 

"SiRF's InstantFix server does not receive satellite signals - only [ ] receives satellite signals 

and it does not send them to SiRF." Resp. Br. at 126 (respondents' emphasis). 

Like SiRF, the Staff submits that the accused products do not meet the first claim 

limitation. StaffBr. at 36. In so arguing, the Staff places a great deal of reliance upon the 

testimony of respondents' expert, Dr. Heppe. In that regard, Dr. Heppe testified that the accused 

products do not meet the first limitation of claim 1 of the '000 patent because "SiRF does not 

actually receive satellite signals because, instead, they receive information from [ ] Heppe 

Tr. 2595. 

It is the finding of this court that the fact that [ ] processes 

the satellite signals, and then sends the processed signals to the SiRFInstantFix server, establishes 

that the accused products meet the first limitation of claim 1. As to this finding, the testimony of 

46 Discussing the InstantFix server, Dr. Pratt, another of complainants' experts, stated 

that "the primary input is from the [ ] who have a means of tracking 

GPS satellites and providing information about their position, the position of those satellites over 

time." Pratt Tr. 1215. 

128 
Dr. Dafesh is credited over the contrary testimony of Dr. He~pe.~~ Dr. Dafesh’s testimony is 

consistent with the plain wording of claim 1. 

Accordingly, because the [ 1 data that is received by the SiRFInstantFix is derived from 

at least one satellite and at least one receiving station, the “receiving satellite signals” limitation of 

claim 1 is met. 

“extracting at least a portion of the satellite tracking data from 

said satellite, representing said data in a first format” 

The evidence establishes that this second limitation of claim 1 also is met. First, the 

SiRFInstantFix server extracts at least a portion of the satellite tracking data from the processed 

JPL signals by taking accurate 15-minute JPL orbit data and performing the “prediction” function 

necessary for the ultimate generation of EE files. In that regard, in offering the opinion that the 

SiRFInstantFix service, including the server, chips, and software, are covered by the second claim 

element, Dr. Dafesh explained: 

The basis is that the SiRF server receives process signals in 

the form of satellite tracking information or these [ 

1 

So you see, there’s a prediction step, which is the extraction. 

And there is a compaction step. 

Dafesh Tr. 763; see CX-278C (System design of ephemeris extension) at 602SiRF716, Fig. 1. 

Second, the evidence also establishes that SiRF’s extended ephemeris (EE) files are 

47 As noted previously, in a number of instances, Dr. Heppe has changed his position at 

the hearing from earlier positions set forth in his initial expert report. Also, as earlier noted, this 

has adversely affected his credibility. 

129 

Dr. Dafesh is credited over the contrary testimony of Dr. Heppe.47 Dr. Dafesh's testimony is 

consistent with the plain wording of claim 1. 

Accordingly, because the [ ] data that is received by the SiRFInstantFix is derived from 

at least one satellite and at least one receiving station, the "receiving satellite signals" limitation of 

claim 1 is met. 

"extracting at least a portion of the satellite tracking data from 

said satellite, representing said data in a first format" 

The evidence establishes that this second limitation of claim 1 also is met. First, the 

SiRFInstantFix server extracts at least a portion of the satellite tracking data from the processed 

JPL signals by taking accurate I5-minute JPL orbit data and performing the "prediction" function 

necessary for the ultimate generation of EE files. In that regard, in offering the opinion that the 

SiRFInstantFix service, including the server, chips, and software, are covered by the second claim 

element, Dr. Dafesh explained: 

The basis is that the SiRF server receives process signals in 

the form of satellite tracking information or these [ 

] 

So you see, there's a prediction step, which is the extraction. 

And there is a compaction step. 

Dafesh Tr. 763; see CX-278C (System design of ephemeris extension) at 602SiRF7I6, Fig. 1. 

Second, the evidence also establishes that SiRF's extended ephemeris (EE) files are 

47 As noted previously, in a number of instances, Dr. Heppe has changed his position at 

the hearing from earlier positions set forth in his initial expert report. Also, as earlier noted, this 

has adversely affected his credibility. 

129 
“satellite tracking data” because they contain a set of orbital and, or, clock parameters that provide 

an accurate description of the GPS satellites’ position, velocity, and clock error. See Dafesh 

Tr. 671-672 (the EE file is basically the long-term orbit data file, containing long-term orbit data 

for all the satellites in the GPS constellation); Tr. 773 (EE files contains satellite orbit model and 

clock model for satellites in the GPS system). See also, CX-825C (SGEE System Overview) at 

SRF 88046-47. 

Third, the evidence establishes that the SiRFInstantFix server performs the step of 

“representing said data in a first format.” The server uses the [ 

data. See Dafesh Tr. 763 (quoted above) (opinion that InstantFix service, chips, and software 

] data to predict future orbit 

meet the second limitation, in part, because server is “computing satellite tracking data from this 

satellite signal and representing that data in a first compact format.”); see also, CX-278C at 

602SiRF7 16-7 1 8. 

Specifically, the InstantFix server compacts the data using a [ ] Theserver 

further uses a [ 

] Dafesh Tr. 665-667,762-763; CX-278C at 

602SiRF716 at Fig. 1 & 602SiRF720-721 .48 

Accordingly, it is found that the accused products meet the second element of claim 1. 

“transmitting the formatted data to a remote receiver, and at the 

remote receiver, representing said formatted data in a second 

format supported by the receiver” 

The evidence establishes that the accused products meet the third limitation of claim 1. 

48 The InstantFix server then uses a [ 

Tr. 677. 

130 

] Dafesh 

"satellite tracking data" because they contain a set of orbital and, or, clock parameters that provide 

an accurate description of the GPS satellites' position, velocity, and clock error. See Dafesh 

Tr. 671-672 (the EE file is basically the long-term orbit data file, containing long-term orbit data 

for all the satellites in the GPS constellation); Tr. 773 (EE files contains satellite orbit model and 

clock model for satellites in the GPS system). See a/so, CX-825C (SGEE System Overview) at 

SRF 88046-47. 

Third, the evidence establishes that the SiRFlnstantFix server performs the step of 

"representing said data in a first format." The server uses the [ ] data to predict future orbit 

data. See Dafesh Tr. 763 (quoted above) (opinion that InstantFix service, chips, and software 

meet the second limitation, in part, because server is "computing satellite tracking data from this 

satellite signal and representing that data in a first compact format."); see a/so, CX-278C at 

602SiRF716-718. 

Specifically, the InstantFix server compacts the data using a [ ] The server 

further uses a [ 

Dafesh Tr. 665-667, 762-763; CX-278C at 

602SiRF716 at Fig. 1 & 602SiRF720-721.48 

Accordingly, it is found that the accused products meet the second element of claim 1. 

"transmitting the formatted data to a remote receiver, and at the 

remote receiver, representing said formatted data in a second 

format supported by the receiver" 

The evidence establishes that the accused products meet the third limitation of claim 1. 

48 The InstantFix server then uses a [ 

] Dafesh 

Tr. 677. 

130 
First, Global Locate is correct in asserting that SiRF directly transmits EE files from the 

SiRFInstantFix server when testing and through the SiRFLoc server, which acts as the distribution 

server. Also, SiRF indirectly transmits the EE files from the InstantFix server to remote receivers 

when it transmits the files to its customers, who then distribute the files to remote receivers. 

Compl. Br. at 144. See Dafesh Tr. 671 [ 1 transmits EE file to remote GPS receiver 

through customer EE server); 768-769; CX-278C at 602SiRF7 16 (transmit block in Fig. 1) & 

CX-825C (SGEE System Overview) at SRF 88048. 

Second, the SiRF Client Location Manager (i. e., the CLM) embedded in receivers takes 

the EE files (ie., the data in the first format) and processes it into a format compatible with the 

receiver (ie., the data in the second format). See Compl. Br. at 144.49 

In that regard, the CLM software generates from the EE files [ 1 

4-hour block of ephemeris in which all of the delta values for that block have been converted back 

to full parameters. The SiRF CLM software that is embedded in the accused SiRFstarIII chips 

located in the other respondents’ and third-party downstream GPS receivers processes the EE files 

to generate [ ] 4-hour block of ephemeris supported by the SiRFstarIII 

chip and software. Dafesh Tr. 697-698 (Discussing message flows -- ie., how the information is 

transmitted from the client location manager to the SiRF chip and software. “[Tlhe CLM 

software ... [ 

1. See CX-3 14C (CLM/GPSSensor Theory of Operation for SEA-SGEE) & JX-110-8C ( Phatak Tr.) at 210-21 1,213-216); 

49 As noted earlier, the CLM is a software program that SiRF supplies to host receiver 

developers that unpacks the EE file and makes it compatible with the remote receiver. Dafesh 

Tr. 672, 727. 

131 

First, Global Locate is correct in asserting that SiRF directly transmits EE files from the 

SiRFlnstantFix server when testing and through the SiRFLoc server, which acts as the distribution 

server. Also, SiRF indirectly transmits the EE files from the InstantFix server to remote receivers 

when it transmits the files to its customers, who then distribute the files to remote receivers. 

CompI. Br. at 144. See Dafesh Tr. 671 [ ] transmits EE file to remote GPS receiver 

through customer EE server); 768-769; CX-278C at 602SiRF716 (transmit block in Fig. 1) & 

CX-825C (SGEE System Overview) at SRF 88048. 

Second, the SiRF Client Location Manager (i. e., the CLM) embedded in receivers takes 

the EE files (i.e., the data in the first format) and processes it into a format compatible with the 

receiver (i.e., the data in the second format). See CompI. Br. at 144.49 

In that regard, the CLM software generates from the EE files [ ] 

4-hour block of ephemeris in which all of the delta values for that block have been converted back 

to full parameters. The SiRF CLM software that is embedded in the accused SiRFstarIII chips 

located in the other respondents' and third-party downstream GPS receivers processes the EE files 

to generate [ ] 4-hour block of ephemeris supported by the SiRFstarIII 

chip and software. Dafesh Tr. 697-698 (Discussing message flows -- i.e., how the information is 

transmitted from the client location manager to the SiRF chip and software. "[T]he CLM 

software ... [ 

]. See CX-314C (CLM/GPSSensor Theory of Operation for SEA-SGEE) & JX-IlO-8C (Phatak Tr.) at 210-211, 213-216); 

49 As noted earlier, the CLM is a software program that SiRF supplies to host receiver 

developers that unpacks the EE file and makes it compatible with the remote receiver. Dafesh 

Tr. 672, 727. 

131 
CX-825C (System Overview for Server-Generated Extended Ephemeris) at SRF 88048. 

Accordingly, it is found that SiRF literally infringes claim 1 of the ‘000 patent. 

Claim 2 

Claim 2 depends from claim 1. It provides: “2. The method of claim 1 wherein said 

satellite tracking data comprises at least one of a satellite orbit model or a satellite clock model.” 

JX-3 (‘000 patent) at col. 6,11. 50-52. 

It is found that the accused products, SiRFInstantFix service, chips, and software, literally 

infringe claim 2 of the ‘000 patent. In that regard, the EE files that are distributed in SiRF’s 

InstantFix service contain satellite orbit clock models and data. Dafesh Tr. 773. Neither SiRF, 

nor the Staff, specifically address the infringement issues relating to claim 2. See Resp. Br. at 

124-135; Staff Br. at 37. 

Claim 5 

Claim 5 depends from cirri . It provides: “5. The method of claim 1 wherein said 

second format comprises parameters defined in ICD-GPS-200.” JX-3 (‘000 patent) at col. 6,11. 

59-60. 

It is found that the SiRFInstantFix service, chips, and software practice claim 5 of the ‘000 

patent. In that regard, the second format in the client location manager is the broadcast ephemeris 

format defined in the ICD-GPS-200. Dafesh Tr. 774-775. Neither SiRF, nor the Staff, 

specifically address the infringement issues relating to claim 5. See Resp. Br. at 124-135; Staff 

Br. at 37. 

132 

CX-825C (System Overview for Server-Generated Extended Ephemeris) at SRF 88048. 

Accordingly, it is found that SiRF literally infringes claim 1 of the '000 patent. 

Claim 2 

Claim 2 depends from claim 1. It provides: "2. The method of claim 1 wherein said 

satellite tracking data comprises at least one of a satellite orbit model or a satellite clock model." 

JX-3 ('000 patent) at col. 6, ll. 50-52. 

It is found that the accused products, SiRFInstantFix service, chips, and software, literally 

infringe claim 2 of the '000 patent. In that regard, the EE files that are distributed in SiRF's 

InstantFix service contain satellite orbit clock models and data. Dafesh Tr. 773. Neither SiRF, 

nor the Staff, specifically address the infringement issues relating to claim 2. See Resp. Br. at 

124-135; StaffBr. at 37. 

Claim 5 

Claim 5 depends from claim 1. It provides: "5. The method of claim 1 wherein said 

second format comprises parameters defined in ICD-GPS-200." JX-3 ('000 patent) at col. 6, ll. 

59-60. 

It is found that the SiRFInstantFix service, chips, and software practice claim 5 of the '000 

patent. In that regard, the second format in the client location manager is the broadcast ephemeris 

format defined in the ICD-GPS-200. Dafesh Tr. 774-775. Neither SiRF, nor the Staff, 

specifically address the infringement issues relating to claim 5. See Resp. Br. at 124-135; Staff 

Br. at 37. 

132 
ii. SiRFLoc Svstem Incorporating. InstantFix, SiRF InstantFix 

Evaluation Kits, and SiRF’s Testing - of InstantFix 

As noted, SiRF’s SiRFLoc system can transmit EE files generated at the InstantFix server 

to remote receivers. Heppe Tr. 3022-3023; Dafesh Tr. 687-688. In addition, SiRF distributes 

InstantFix evaluation kits and tests InstantFix in the United States. See Heppe Tr. 3030-3031; 

CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test Plan) at 

602SiRF264191; see aZso, Dafesh Tr. 690-692,694-695; CX-264C (SiRF InstantFix Evaluation 

Kit User Guide) at 602SiRF 1242. 

It is found that SiRF’s SirfLoc system, which incorporates InstantFix, the use of SiRF 

InstantFix Evaluation Kits, and SiRF’s testing of InstantFix infringe claim 1 , claim 2, and 

claim 5 of the ‘000 patent. 

As to claim 1 , in each of these instances, the SIRFInstantFix server receives satellite 

signals in the form of satellite tracking data from the [ 

Tr. 738-739. This satisfies the first limitation of claim 1. 

] Dafesh 

These accused products also practice the second limitation of claim 1. In that regard, the 

SiRFInstantFix server extracts satellite tracking data and represents it is a first format, i. e., a 

compact orbit model. Dafesh Tr. 763-764. 

The third limitation of claim 1 is satisfied because the SiRFLoc server transmits the 

compact orbital models represented by the EE files to a remote receiver. Dafesh Tr. 770. In 

addition, a SiRFInstantFix server transmits EE files to remote evaluation receivers when SiRF 

tests InstantFix. Dafesh Tr. 687-688,692-695, 697; CX-264C (SiRF InstantFix Evaluation Kit 

User Guide) at 602SiRF124254. 

133 

ii. SiRFLoc System Incorporating InstantFix, SiRF InstantFix 

Evaluation Kits, and SiRF's Testing of InstantFix 

As noted, SiRF's SiRFLoc system can transmit EE files generated at the InstantFix server 

to remote receivers. Heppe Tr. 3022-3023; Dafesh Tr. 687-688. In addition, SiRF distributes 

InstantFix evaluation kits and tests InstantFix in the United States. See Heppe Tr. 3030-3031; 

CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test Plan) at 

602SiRF264191; see also, Dafesh Tr. 690-692, 694-695; CX-264C (SiRF InstantFix Evaluation 

Kit User Guide) at 602SiRF1242. 

It is found that SiRF's SirfLoc system, which incorporates InstantFix, the use of SiRF 

InstantFix Evaluation Kits, and SiRF's testing of InstantFix infringe claim 1, claim 2, and 

claim 5 of the '000 patent. 

As to claim 1, in each of these instances, the SIRFInstantFix server receives satellite 

signals in the form of satellite tracking data from the [ ] Dafesh 

Tr. 738-739. This satisfies the first limitation of claim 1. 

These accused products also practice the second limitation of claim 1. In that regard, the 

SiRFInstantFix server extracts satellite tracking data and represents it is a first format, i.e., a 

compact orbit model. Dafesh Tr. 763-764. 

The third limitation of claim 1 is satisfied because the SiRFLoc server transmits the 

compact orbital models represented by the EE files to a remote receiver. Dafesh Tr. 770. In 

addition, a SiRFInstantFix server transmits EE files to remote evaluation receivers when SiRF 

tests InstantFix. Dafesh Tr. 687-688, 692-695, 697; CX-264C (SiRF InstantFix Evaluation Kit 

User Guide) at 602SiRF124254. 

133 
The above accused products meet the final limitation of claim 1 because at the remote 

receiver the EE format is converted into a format that the receiver understands. Dafesh Tr. 772- 

773. 

The SiRFLoc system incorporating InstantFix, the InstantFix evaluation kits, and SiRF’s 

testing of InstantFix also infringe claims 2 and 5 of the ‘000 patent. The accused products 

infringe claim 2 because they use the EE file that contains orbit and clock models. Dafesh 

Tr. 773-774. The accused products infringe claim 5 because the second format is the broadcast 

ephemeris format defined in the ICD-GPS-200. Dafesh Tr. 775. 

d. Invaliditv 

i. SiW Prior Art 

SiRF contends that it was practicing the steps of the asserted claims of the ‘000 patent 

through tests and demonstrations of SiRFLoc in 1999. See Resp. Br. at 137-140. This contention 

is rejected. 

First, SiRF has failed to establish that the tests and demonstrations constitute prior art. 

While SiRF cites two articles from 1999 and 2000 (RX-100 & RX-111) that describe SiRFLoc, it 

does not allege that either article is anticipatory. Moreover, as complainants note, “SiRF has also 

provided no evidence regarding when or where any such tests or demonstrations took place.” 

Compl. Reply at 62. 

ii. The TIAiEIMS-801 Standard 

The TIAEIMS-801 Standard does not anticipate as claimed by SiRF. Resp. Br. at 140- 

144. The TIA/EIA/IS-80 1 reference describes a position determination service protocol between 

mobile stations and base stations operating in a CDMA system. See RX-285( TIAEIMS-801) at 

134 

The above accused products meet the final limitation of claim 1 because at the remote 

receiver the EE format is converted into a format that the receiver understands. Dafesh Tr. 772-

773. 

The SiRFLoc system incorporating InstantFix, the InstantFix evaluation kits, and SiRF's 

testing oflnstantFix also infringe claims 2 and 5 of the '000 patent. The accused products 

infringe claim 2 because they use the EE file that contains orbit and clock models. Dafesh 

Tr. 773-774. The accused products infringe claim 5 because the second format is the broadcast 

ephemeris format defined in the ICD-GPS-200. Dafesh Tr. 775. 

d. Invalidity 

i. SiRF Prior Art 

SiRF contends that it was practicing the steps of the asserted claims of the '000 patent 

through tests and demonstrations ofSiRFLoc in 1999. See Resp. Br. at 137-140. This contention 

is rejected. 

First, SiRF has failed to establish that the tests and demonstrations constitute prior art. 

While SiRF cites two articles from 1999 and 2000 (RX -100 & RX-l11) that describe SiRFLoc, it 

does not allege that either article is anticipatory. Moreover, as complainants note, "SiRF has also 

provided no evidence regarding when or where any such tests or demonstrations took place." 

Compl. Reply at 62. 

ii. The TIAlEIAlIS-801 Standard 

The TIAIEIAlIS-801 Standard does not anticipate as claimed by SiRF. Resp. Br. at 140-

144. The TIAIEIAlIS-801 reference describes a position determination service protocol between 

mobile stations and base stations operating in a CDMA system. See RX-285( TIAIEIAlIS-801) at 

134 
602SiRF1753777 (“This standard defines a set of signaling messages between the mobile station 

and base station to provide a position determination service.”). 

The TINEIMS-801 standard does not anticipate the asserted claims because it does not 

teach a method or apparatus for creating and distributing “compact satellite orbit models,” or 

extracting any satellite tracking data and representing it in a “first format” as each of the asserted 

claims require. Dr. Dafesh, in disagreeing with Dr. Heppe’s opinion that the IS-801 reference 

anticipates, testified that “[ilt does not teach compaction of satellite tracking data and it does not 

teach representing satellite tracking data in a second format supported by a remote receiver.” 

Dafesh Tr. 3305.50 

For the reasons mentioned above, in particular the testimony of Dr. Dafesh, it is found that 

the TIA/EIA/IS-80 1 standard does not anticipate. 

iii. U.S. Patent No. 6,429,811 (“Zhao”) 

SiRF submits that U.S. Patent No. 6,429,811 (“Zhao”) anticipates all of the asserted 

claims of the ‘000 patent. Resp. Br. at 144-150; RX-107. The Zhao patent is entitled, “Method 

and Apparatus for Compressing GPS Satellite Broadcast Message Information.” It has a priority 

date of February 15,2001. Global Locate argues that Zhao does not anticipate. Compl. Br. at 

151-152; Compl. Reply at 63-64. The Staff agrees with Global Locate. Staff Br. at 38. 

Both Global Locate and the Staff rely upon the testimony of Dr. Dafesh to support their 

position. Their reliance upon Dr. Dafesh’s testimony is well-placed. In that regard, Dr. Dafesh 

explained that the Zhao patent discloses two embodiments. The first embodiment expands, rather 

50 In addition, Dr. Dafesh disagreed with Dr. Heppe’s conclusion that compaction occurs 

here. Dr. Dafesh stated that what Dr. Heppe calls compaction “consists of ionospheric 

corrections” and “[ilonospheric corrections are not satellite tracking data.” Dafesh Tr. 3306. 

135 

602SiRF1753777 ("This standard defines a set of signaling messages between the mobile station 

and base station to provide a position determination service."). 

The TIA/EIA!IS-SO 1 standard does not anticipate the asserted claims because it does not 

teach a method or apparatus for creating and distributing "compact satellite orbit models," or 

extracting any satellite tracking data and representing it in a "first format" as each of the asserted 

claims require. Dr. Dafesh, in disagreeing with Dr. Heppe's opinion that the IS-SOl reference 

anticipates, testified that "[i]t does not teach compaction of satellite tracking data and it does not 

teach representing satellite tracking data in a second format supported by a remote receiver." 

Dafesh Tr. 3305.50 

For the reasons mentioned above, in particular the testimony of Dr. Dafesh, it is found that 

the TIA/EIAIIS-SO 1 standard does not anticipate. 

iii. U.S. Patent No. 6,429,811 ("Zhao") 

SiRF submits that U.S. Patent No. 6,429,SII ("Zhao") anticipates all of the asserted 

claims of the '000 patent. Resp. Br. at 144-150; RX-I07. The Zhao patent is entitled, "Method 

and Apparatus for Compressing GPS Satellite Broadcast Message Information." It has a priority 

date of February 15,2001. Global Locate argues that Zhao does not anticipate. Compl. Br. at 

151-152; Compl. Reply at 63-64. The Staff agrees with Global Locate. StaffBr. at 3S. 

Both Global Locate and the Staff rely upon the testimony of Dr. Dafesh to support their 

position. Their reliance upon Dr. Dafesh's testimony is well-placed. In that regard, Dr. Dafesh 

explained that the Zhao patent discloses two embodiments. The first embodiment expands, rather 

50 In addition, Dr. Dafesh disagreed with Dr. Heppe's conclusion that compaction occurs 

here. Dr. Dafesh stated that what Dr. Heppe calls compaction "consists of ionospheric 

corrections" and "[i]onospheric corrections are not satellite tracking data." Dafesh Tr. 3306. 

135 
than compacts, satellite tracking data because multiple data sets are to be sent over short intervals. 

Dafesh Tr. 3300-3301; RX-107 (Zhao) at col. 6,ll. 39-45.51 Thus, the first embodiment of Zhao 

does not teach a method or apparatus for creating and distributing “compact satellite orbit models” 

or the representation of extracted satellite tracking data in a “first format.” 

The second embodiment does not compact data as called for in the ‘000 patent because the 

excluded data is not satellite tracking data. Dafesh Tr. 3301-3304; RX-107 at col. 1 I, 11.4-19. 

Thus, the second embodiment also fails to teach a method or apparatus for creating and 

distributing “compact satellite orbit models,” or “extracting at least a portion of the satellite 

tracking data” from a satellite signal and representing it in a “first format.” This embodiment 

eliminates certain data other than the orbital and, or, clock parameters from the entire satellite 

broadcast message, but does not extract any satellite tracking data and represent it in a first 

compacted format. See RX-107 (Zhao) at col. 4,11.40-48; col. 10,l. 14 - col. 11,l. 2 & Table 2; 

see also, Compl. Br. at 152. The second Zhao embodiment transmits ephemeris and clock offsets 

- the information that is satellite tracking data - without any compaction. Dafesh Tr. 3301-3304. 

See RX-107 at col. 11, lines 5-19 (Table 2). 

iv. JPL Rapid and Ultra-Rapid Orbit Products 

SiRF argues that the JPL Rapid and Ultra-Rapid products, stating that they predict GPS 

orbits into the future, anticipate the claims 2 the ‘000 patent. Resp. Br. at 150-1 53. SiRF relies 

upon the testimony of Dr. Bar-Sever to support its argument. 

In response, Global Locate argues that (1) SiRF does not state which statutory provision it 

Zhao teaches sending position coordinates x, y, and z (which define the position of a 

satellite at a given time) in multiple data sets separated in time by a difference Zhao calls delta T. 

RX-107 (Zhao) at col. 4,ll. 34-40; col. 6,ll. 39-42; and col. 7,11. 1-15. 

136 

than compacts, satellite tracking data because multiple data sets are to be sent over short intervals. 

Dafesh Tr. 3300-3301; RX-107 (Zhao) at col. 6, II. 39-45.51 Thus, the first embodiment of Zhao 

does not teach a method or apparatus for creating and distributing "compact satellite orbit models" 

or the representation of extracted satellite tracking data in a "first format." 

The second embodiment does not compact data as called for in the '000 patent because the 

excluded data is not satellite tracking data. Dafesh Tr. 3301-3304; RX-I07 at col. 11,11.4-19. 

Thus, the second embodiment also fails to teach a method or apparatus for creating and 

distributing "compact satellite orbit models," or "extracting at least a portion of the satellite 

tracking data" from a satellite signal and representing it in a "first format." This embodiment 

eliminates certain data other than the orbital and, or, clock parameters from the entire satellite 

broadcast message, but does not extract any satellite tracking data and represent it in a first 

compacted format. See RX-I07 (Zhao) at col. 4, 11. 40-48; col. 10, I. 14 - col. 11, I. 2 & Table 2; 

see also, Compl. Br. at 152. The second Zhao embodiment transmits ephemeris and clock offsets 

- the information that is satellite tracking data - without any compaction. Dafesh Tr. 3301-3304. 

See RX-l 07 at col. 11, lines 5-19 (Table 2). 

iv. JPL Rapid and Ultra-Rapid Orbit Products 

SiRF argues that the JPL Rapid and Ultra-Rapid products, stating that they predict GPS 

orbits into the future, anticipate the claims 2 the '000 patent. Resp. Br. at 150-153. SiRF relies 

upon the testimony of Dr. Bar-Sever to support its argument. 

In response, Global Locate argues that (1) SiRF does not state which statutory provision it 

51 Zhao teaches sending position coordinates x, y, and z (which define the position of a 

satellite at a given time) in multiple data sets separated in time by a difference Zhao calls delta T. 

RX-107 (Zhao) at col. 4, 11. 34-40; col. 6,11.39-42; and col. 7, 11. 1-15. 

136 
relies on to establish that the JPL Rapid and Ultra-Rapid products are prior art; (2) SiRF has not 

even alleged, let alone shown, that these JPL orbits were compact; and (3) SiRF has failed to 

identify the inventor who supposedly was first to invent, as required by 35 U.S.C. Ij 102(g). 

Compl. Reply at 64. 

Given the arguments advanced by complainants, it is found that SiRF has failed to prove 

by clear and convincing evidence that the JPL Rapid and Ultra-Rapid products anticipate the 

claims of the ‘000 patent. 

e. Indefiniteness 

SiRF submits that “[ilf the claims of the ‘000 patent are construed to require an additional 

limitation of accuracy, they will be indefinite because no standard is provided in the ‘000 patent.” 

Resp. Br. at 153. In such a case, it concludes that the ‘000 patent is invalid under 35 U.S.C. Ij 112 

by reason of indefiniteness. 

It is found that SiRF has not met its burden of proving indefiniteness by clear and 

convincing evidence. Insofar as the ‘000 patent is concerned, one of ordinary skill in the GPS art 

would readily understand what it means for satellite tracking data to be accurate. See JX-3 (‘000 

patent) at col. 3,11. 10-20. Moreover, as noted by Global Locate, SiRF’s own U.S. Patent No. 

7,142,157 (“the ‘ 157 patent”), issued to former SiRF engineer Lionel Garin, “demonstrates that 

those of skill in the art have no trouble understanding what it means for STD to be accurate.” 

Compl. Reply at 65 (citing CX-305 (‘157 patent) at col. 10,Il. 45-61). 

3. The ‘651 Patent 

United States Patent No. 6,704,65 1 is entitled, “Method And Apparatus For Locating 

Mobile Receivers Using A Wide Area Reference Network For Propagating Ephemeris.” JX- 4 

137 

relies on to establish that the JPL Rapid and Ultra-Rapid products are prior art; (2) SiRF has not 

even alleged, let alone shown, that these JPL orbits were compact; and (3) SiRF has failed to 

identify the inventor who supposedly was first to invent, as required by 35 U.S.c. § 102(g). 

Compl. Reply at 64. 

Given the arguments advanced by complainants, it is found that SiRF has failed to prove 

by clear and convincing evidence that the JPL Rapid and Ultra-Rapid products anticipate the 

claims of the '000 patent. 

e. Indefiniteness 

SiRF submits that "[i]fthe claims of the '000 patent are construed to require an additional 

limitation of accuracy, they will be indefinite because no standard is provided in the '000 patent." 

Resp. Br. at 153. In such a case, it concludes that the '000 patent is invalid under 35 U.S.C. § 112 

by reason of indefiniteness. 

It is found that SiRF has not met its burden of proving indefiniteness by clear and 

convincing evidence. Insofar as the '000 patent is concerned, one of ordinary skill in the GPS art 

would readily understand what it means for satellite tracking data to be accurate. See JX-3 ('000 

patent) at col. 3, 11. 10-20. Moreover, as noted by Global Locate, SiRF's own U.S. Patent No. 

7,142,157 ("the' 157 patent"), issued to former SiRF engineer Lionel Garin, "demonstrates that 

those of skill in the art have no trouble understanding what it means for STD to be accurate." 

Compl. Reply at 65 (citing CX-305 (,157 patent) at col. 10,11. 45-61). 

3. The '651 Patent 

United States Patent No. 6,704,651 is entitled, "Method And Apparatus For Locating 

Mobile Receivers Using A Wide Area Reference Network For Propagating Ephemeris." JX- 4 

137 
(‘651 patent). Frank van Diggelen is the sole named inventor in the ‘65 1 patent. 

The ‘65 1 patent is directed to a method for delivering to GPS receivers, from a source 

other than the GPS satellites themselves, precise satellite data, i.e., ephemeris, to enable the 

receivers to acquire and track satellite signals in low signal environments. See JX-4 (‘65 1 patent) 

at col. 1,ll. 11-16; van Diggelen Tr. 157-158 ; Pratt Tr. 11 89. See also, Summary Of The 

Invention, c01.2,ll. 1 1-2 1 (“The wide area network of GPS receivers collects the ephemeris data 

that is transmitted by the satellites and communicates the data to the central site. The central site 

delivers the ephemeris to the mobile receiver. The mobile GPS receiver uses the delivered data to 

enhance its sensitivity in two ways. First, the data allows the receiver to detect very weak signals 

that the receiver would not ordinarily be able to detect, and second, the GPS receiver does not 

have to track the satellite signals for very long before a position can be calculated.”) 

a. The Asserted Claims 

Global Locate asserts claims 1 and 2 of the ‘65 1 patent. These claims read as follows: 

1. A method of receiving global positioning system (GPS) satellite 

signals comprising: 

receiving satellite ephemeris at a first location; 

communication [sic] the satellite ephemeris to a mobile GPS 

receiver at a second location; and 

processing satellite signals received at the mobile GPS receiver 

using the ephemeris to reduce code and frequency uncertainty in the 

mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver. 

2. The method of claim 1 wherein said communicating step is 

performed through a wireless path. 

JX 4, CO~. 10,ll. 61 - CO~. 11,l. 5. 

138 

('651 patent). Frank van Diggelen is the sole named inventor in the '651 patent. 

The '651 patent is directed to a method for delivering to GPS receivers, from a source 

other than the GPS satellites themselves, precise satellite data, i.e., ephemeris, to enable the 

receivers to acquire and track satellite signals in low signal environments. See JX-4 ('651 patent) 

at col. 1,11. 11-16; van Diggelen Tr. 157-158; Pratt Tr. 1189. See also, Summary Of The 

Invention, col.2, 11. 11-21 ("The wide area network of GPS receivers collects the ephemeris data 

that is transmitted by the satellites and communicates the data to the central site. The central site 

delivers the ephemeris to the mobile receiver. The mobile GPS receiver uses the delivered data to 

enhance its sensitivity in two ways. First, the data allows the receiver to detect very weak signals 

that the receiver would not ordinarily be able to detect, and second, the GPS receiver does not 

have to track the satellite signals for very long before a position can be calculated.") 

a. The Asserted Claims 

Global Locate asserts claims 1 and 2 of the '651 patent. These claims read as follows: 

1. A method of receiving global positioning system (GPS) satellite 

signals comprising: 

receiving satellite ephemeris at a first location; 

communication [sic] the satellite ephemeris to a mobile GPS 

receiver at a second location; and 

processing satellite signals received at the mobile GPS receiver 

using the ephemeris to reduce code and frequency uncertainty in the 

mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver. 

2. The method of claim 1 wherein said communicating step is 

performed through a wireless path. 

JX 4, col. 10,11.61 - col. 11,1. 5. 

138 
b. Claim Construction 

“satellite ephemeris,” “the satellite ephemeris, ” “the ephemeris” 

These claim terms appear in claim 1 of the ‘65 1 patent. Global Locate construes the terms 

as “A set of orbital parameters that provides an accurate description of a satellite’s position, a 

satellite’s velocity, and a satellite’s clock error.” Compl. Br. at 157. SiRF believes that no 

construction is necessary, “except to the extent necessary to clarify that ‘the satellite ephemeris’ 

and ‘the ephemeris’ refer back to the same ‘satellite ephemeris.’’ Resp. Br. at 49. The Staff 

submits that “the term ‘satellite ephemeris’ refers to the ephemeris transmitted by a satellite, i. e., 

broadcast ephemeris, which is different from almanac.” Staff Br. at 46. Staff also agrees with 

SiW, however, “that these terms refer to the same satellite ephemeris, based on the language of 

the claim.” Staff Br. at 48. 

The claim terms “satellite ephemeris,” “the satellite ephemeris,’’ and “the ephemeris” are 

construed as “A set of orbital parameters that provides an accurate description of a satellite 

position, a satellite’s velocity, and a satellite’s clock error.” 

As asserted by Global Locate (Compl. Br. at 158), this construction is supported by the 

patent specification and its prosecution history. See (JX-4) (‘65 1 patent) at col. 1,ll. 60-61 (“the 

ephemeris data contains an accurate description of the satellite position, velocity, and clock 

errors”); JX-1 l(‘651 prosecution history) at GL-602 1753. See also, Pratt Tr. 1196-1 197, & 1274 

(“[Tlhe ephemeris has to be the same ephemeris. But the form of the ephemeris doesn’t 

necessarily have to be the same.,’) Moreover, as both Global Locate and the Staff submit, the 

claims and the specification of the ‘65 1 patent clearly distinguish between almanac and ephemeris 

in a satellite signal. See Compl. Br. at 158; Staff Br. at 46-48. 

139 

b. Claim Construction 

"satellite ephemeris," "the satellite ephemeris," "the ephemeris" 

These claim terms appear in claim 1 of the '651 patent. Global Locate construes the terms 

as "A set of orbital parameters that provides an accurate description of a satellite's position, a 

satellite's velocity, and a satellite's clock error." Compl. Br. at 157. SiRF believes that no 

construction is necessary, "except to the extent necessary to clarify that 'the satellite ephemeris' 

and 'the ephemeris' refer back to the same 'satellite ephemeris." Resp. Br. at 49. The Staff 

submits that "the term 'satellite ephemeris' refers to the ephemeris transmitted by a satellite, i.e., 

broadcast ephemeris, which is different from almanac." StaffBr. at 46. Staff also agrees with 

SiRF, however, "that these terms refer to the same satellite ephemeris, based on the language of 

the claim." StaffBr. at 48. 

The claim terms "satellite ephemeris," "the satellite ephemeris," and "the ephemeris" are 

construed as "A set of orbital parameters that provides an accurate description of a satellite 

position, a satellite's velocity, and a satellite's clock error." 

As asserted by Global Locate (Compl. Br. at 158), this construction is supported by the 

patent specification and its prosecution history. See (JX-4) ('651 patent) at col. I,ll. 60-61 ("the 

ephemeris data contains an accurate description of the satellite position, velocity, and clock 

eIT<;>rs"); JX-ll('651 prosecution history) at GL-602 1753. See also, Pratt Tr. 1196-1197, & 1274 

("[T]he ephemeris has to be the same ephemeris. But the form of the ephemeris doesn't 

necessarily have to be the same.") Moreover, as both Global Locate and the Staff submit, the 

claims and the specification of the '651 patent clearly distinguish between almanac and ephemeris 

in a satellite signal. See Compl. Br. at 158; Staff Br. at 46-48. 

139 
“using the ephemeris to reduce code and frequency uncertainty in 

the mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver” 

This claim term appears in claim 1 of the ‘65 1 patent. Global Locate construes this claim 

tern as follows: “Using the ephemeris to reduce both the uncertainty of the range of possible 

satellite signal frequencies and the uncertainty of the range of possible satellite signal delays 

during signal acquisition to improve acquisition sensitivity of the mobile GPS receiver.’’ Compl. 

Br. at 159. SiRF submits, “No construction necessary, except to the extent necessary to clarify 

that ‘using ephemeris to reduce code and frequency uncertainty’ can happen either at the mobile 

GPS receiver or at a central site or server.” Resp. Br. at 50. The Staff agrees with Global 

Locate’s construction, “in view of the plain and ordinary meaning of the claim language and the 

prosecution history.’’ Staff Br. at 49. 

The claim term “using the ephemeris to reduce code and frequency uncertainty in the 

mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver” is construed 

as “using the ephemeris to reduce both the uncertainty of the range of possible satellite signal 

frequencies and the uncertainty of the range of possible satellite signal delays during signal 

acquisition to improve the acquisition sensitivity of the mobile GPS receiver.” 

As pointed out by the Staff, this construction is supported by Figure 6 of the ‘65 1 patent, 

as well as by the accompanying text. Staff Br. at 49; see Compl. Br. at 155-156. 

In that regard, Figure 6 of the ‘65 1 patent shows the search space for a GPS receiver, 

represented in a two-dimensional diagram with the axes being the regions of uncertainty in the 

code (pseudorange) and frequency (pseudorange rate) signal parameters: 

140 

"using the ephemeris to reduce code andfrequency uncertainty in 

the mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver" 

This claim term appears in claim 1 of the' 651 patent. Global Locate construes this claim 

term as follows: "Using the ephemeris to reduce both the uncertainty of the range of possible 

satellite signal frequencies and the uncertainty of the range of possible satellite signal delays 

during signal acquisition to improve acquisition sensitivity of the mobile GPS receiver." Compl. 

Br. at 159. SiRF submits, "No construction necessary, except to the extent necessary to clarify 

that 'using ephemeris to reduce code and frequency uncertainty' can happen either at the mobile 

GPS receiver or at a central site or server." Resp. Br. at 50. The Staff agrees with Global 

Locate's construction, "in view of the plain and ordinary meaning of the claim language and the 

prosecution history." StaffBr. at 49. 

The claim term "using the ephemeris to reduce code and frequency uncertainty in the 

mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver" is construed 

as "using the ephemeris to reduce both the uncertainty of the range of possible satellite signal 

frequencies and the uncertainty of the range of possible satellite signal delays during signal 

acquisition to improve the acquisition sensitivity of the mobile GPS receiver." 

As pointed out by the Staff, this construction is supported by Figure 6 of the' 651 patent, 

as well as by the accompanying text. Staff Br. at 49; see Compl. Br. at 155-156. 

In that regard, Figure 6 of the '651 patent shows the search space for a GPS receiver, 

represented in a two-dimensional diagram with the axes being the regions of uncertainty in the 

code (pseudo range) and frequency (pseudorange rate) signal parameters: 

140 
FIG, 6 

JX-4 (‘651 patent), figure 6. 

Figure 6 also illustrates the invention of the ‘65 1 patent: the reduction in search space 

(represented at 606) that occurs when information about code and frequency uncertainty is 

available. That reduction in search space allows an increase in the time spent integrating 

(searching for a signal) and an increase in acquisition sensitivity (the ability to acquire weaker 

signals), as shown in the right-hand chart in Figure 6. It is described in the specification: 

Better sensitivity is achieved as follows: The sensitivity of a GPS 

receiver is a function of the amount of time that the receiver can 

integrate the correlator outputs. The relationship between sensitivity 

and integration time is shown by the graph 608. With many bins to 

search, the integration time 6 10 equals the total available search 

time divided by the number of search bins. With only a single bin 

to search, the integration time 6 12 equals the total available search 

time, increasing the sensitivity as shown 608. 

JX-4 (‘651 patent) at col. 7,l. 61 - col. 8,l. 2. See Pratt Tr. 1200-1201(one of ordinary skill in 

that art would understand this limitation of claim 1 to require using ephemeris to reduce (a) the 

141 

FIG.6 

JX-4 ('651 patent), figure 6. 

Figure 6 also illustrates the invention of the '651 patent: the reduction in search space 

(represented at 606) that occurs when information about code and frequency uncertainty is 

available. That reduction in search space allows an increase in the time spent integrating 

(searching for a signal) and an increase in acquisition sensitivity (the ability to acquire weaker 

signals), as shown in the right-hand chart in Figure 6. It is described in the specification: 

Better sensitivity is achieved as follows: The sensitivity of a GPS 

receiver is a function of the amount of time that the receiver can 

integrate the correlator outputs. The relationship between sensitivity 

and integration time is shown by the graph 608. With many bins to 

search, the integration time 610 equals the total available search 

time divided by the number of search bins. With only a single bin 

to search, the integration time 612 equals the total available search 

time, increasing the sensitivity as shown 608. 

JX-4 ('651 patent) at col. 7, 1. 61 - col. 8, 1. 2. See Pratt Tr. 1200-1201(one of ordinary skill in 

that art would understand this limitation of claim 1 to require using ephemeris to reduce (a) the 

141 
uncertainty of the range of possible satellite signal frequencies, and (b) the uncertainty of the 

range of possible satellite signal delays during signal acquisition, using both to improve 

acquisition sensitivity of the mobile GPS receiver.) 

The plain language of claim 1 of the ‘65 1 patent establishes that the preceding claim 

limitation occurs at the mobile GPS receiver. JX-4, claim 1. See Pratt Tr. 1202-1203. 

c. Infringement Determination - The ‘651 Patent 

Global Locate asserts that accused chips GSC3, GSC3e/LP, GSC3f, GSC3LT, GSC3LTf, 

GSC3LTi, GSC3LTif, and GSD3t, along with associated software, and that support InstantFix 

and, or, SiRFLoc infringe claims 1 and 2 of the ‘651 patent. 

i. SiRFstarIII Chips and Associated Software Utilizing; the 

InstantFix System 

Claim 1 

“receiving satellite ephemeris at a first location ’’ 

The SiRFInstantFix is a service that includes a SiRF server that receives satellite 

ephemeris. This InstantFix server receives ephemeris in the form of ephemeris data from [ 

] The 

InstantFix server also receives ephemeris in the form of EE files that are generated by the server 

using the [ ] and then stored in memory at the server. The EE files will then be transferred 

to a customer distribution server. 

SiRF, therefore, meets the first claim element of claim 1 on three occasions. The first is 

when the SiRFInstantFix server receives [ 

SiRFInstantFix server receives the EE files generated by the server; and the third is when a 

] the second is when the memory store of the 

142 

uncertainty of the range of possible satellite signal frequencies, and (b) the uncertainty of the 

range of possible satellite signal delays during signal acquisition, using both to improve 

acquisition sensitivity ofthe mobile GPS receiver.) 

The plain language of claim 1 of the '651 patent establishes that the preceding claim 

limitation occurs at the mobile GPS receiver. JX-4, claim 1. See Pratt Tr. 1202-1203. 

c. Infringement Determination - The '651 Patent 

Global Locate asserts that accused chips GSC3, GSC3eILP, GSC3f, GSC3LT, GSC3LTf, 

GSC3LTi, GSC3LTif, and GSD3t, along with associated software, and that support InstantFix 

and, or, SiRFLoc infringe claims 1 and 2 of the '651 patent. 

i. SiRFstarIII Chips and Associated Software Utilizing the 

InstantFix System 

Claim 1 

"receiving satellite ephemeris at a first location" 

The SiRFlnstantFix is a service that includes a SiRF server that receives satellite 

ephemeris. This InstantFix server receives ephemeris in the form of ephemeris data from [ 

] The 

InstantFix server also receives ephemeris in the form of EE files that are generated by the server 

using the [ ] and then stored in memory at the server. The EE files will then be transferred 

to a customer distribution server. 

SiRF, therefore, meets the first claim element of claim 1 on three occasions. The first is 

when the SiRFlnstantFix server receives [ ] the second is when the memory store of the 

SiRFlnstantFix server receives the EE files generated by the server; and the third is when a 

142 
customer distribution server in SiRF’s end-to-end InstantFix service receives the EE files from the 

SiRF InstantFix server. CX-825C (System Overview for Server-Generated Extended Ephemeris) 

at SRF 8798 1, Fig. 2 (depicting path of EE through SiRFInstantFix system). See Pratt Tr. 12 14- 

1217. 

“communication the satellite ephemeris to a mobile GPS receiver 

at a second location” 

The accused products meet the second limitation of claim 1 of the ‘65 1 patent. The 

testimony of complainants’ expert, Dr. Pratt, provides substantial support for this proposition. 

The testimony of Dr. Pratt shows that SiRF performs the “communication” element of claim 1 

through its end-to-end InstantFix service in at least two ways. The first way occurs when the 

SiRFInstantFix server communicates the ephemeris data to the mobile GPS receivers. This 

communication is done through a SiRF client’s intermediate distribution server. Pratt Tr. 1229- 

123 1 ; CX-276C (SiRFInstantFix Data Sheet); CX-3 13C (SEA-SGEE CLM Theory of Operation 

and Software Requirements Specification) at SRF 8798 1. 

The second way in which the accused products meet this claim element is when the 

ephemeris is passed from the client’s intermediate distribution server to the mobile GPS receiver. 

Pratt Tr. 1229. 

“processing satellite signals received at the mobile GPS receiver 

using the ephemeris to reduce code and frequency uncertainty in 

the mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver” 

As explained by complainants’ expert, Dr. Pratt, SiRF has designed its InstantFix service 

so that the EE files are used by SiRF’s accused chips and software at the mobile GPS receiver to 

reduce code and fkequency uncertainty so as to improve acquisition sensitivity. Accordingly, 

143 

customer distribution server in SiRF's end-to-end InstantFix service receives the EE files from the 

SiRF InstantFix server. CX-825C (System Overview for Server-Generated Extended Ephemeris) 

at SRF 87981, Fig. 2 (depicting path ofEE through SiRFlnstantFix system). See Pratt Tr. 1214-

1217. 

"communication the satellite ephemeris to a mobile GPS receiver 

at a second location" 

The accused products meet the second limitation of claim 1 of the' 651 patent. The 

testimony of complainants' expert, Dr. Pratt, provides substantial support for this proposition. 

The testimony of Dr. Pratt shows that SiRF performs the "communication" element of claim 1 

through its end-to-end InstantFix service in at least two ways. The first way occurs when the 

SiRFlnstantFix server communicates the ephemeris data to the mobile GPS receivers. This 

communication is done through a SiRF client's intermediate distribution server. Pratt Tr. 1229-

1231; CX-276C (SiRFlnstantFix Data Sheet); CX-313C (SEA-SGEE CLM Theory of Operation 

and Software Requirements Specification) at SRF 87981. 

The second way in which the accused products meet this claim element is when the 

ephemeris is passed from the client's intermediate distribution server to the mobile GPS receiver. 

Pratt Tr. 1229. 

''processing satellite signals received at the mobile GPS receiver 

using the ephemeris to reduce code andfrequency uncertainty in 

the mobile GPS receiver to improve acquisition sensitivity of the 

mobile GPS receiver" 

As explained by complainants' expert, Dr. Pratt, SiRF has designed its InstantFix service 

so that the EE files are used by SiRF's accused chips and software at the mobile GPS receiver to 

reduce code and frequency uncertainty so as to improve acquisition sensitivity. Accordingly, 

143 
SiRF infringes the third claim element of claim 1 of the ‘651 patent. Pratt Tr. 1235-1253. 

As further proof that SiRF meets the third limitation of claim 1 , Global Locate points to a 

satellite strategy employed by SiRF that is known as [ 

the testimony of Dr. Pratt (Tr. 1235-1236), Global Locate states , “[tlhat search strategy will not 

be executed unless the code and frequency uncertainties have been sufficiently reduced and the 

device has ephemeris available.” Id. Thus, complainant notes, the “reduction of the uncertainties 

allows for increased integration time in a smaller code and frequency search space, and the 

] See Compl. Br. at 167. Citing to 

sensitivity of the GPS receiver is increased such that it is able to detect weaker signals.” Id. 

Where the uncertainty level is not a small [ ] uncertainty (indicated by “unc level 

] the receiver will turn to the “full” type of acquisition. This full search mode [ 

does not involve any reduction in code uncertainty. Pratt Tr. 1246- 1248. If the uncertainties are 

smaller, the SiRF receiver can then enter into a [ 

will involve a reduction in code and frequency uncertainty in order to improve the receiver’s 

acquisition sensitivity. See Pratt Tr. 1248; Dafesh Tr. 752-753. 

1 The[ ] search mode 

The frequency uncertainty in the [ ] search (plus or minus 78.12 Hz overlap) is less 

than the uncertainty in the Full I and I1 searches (plus or minus 3123156.7Hz overlap). 

Therefore, there is less frequency space to search. The code uncertainty also is smaller than the 

full range of code uncertainty in the Full I and I1 searches. Thus, the [ 

to achieve a longer dwell time and a higher acquisition sensitivity. Pratt Tr. 1248-1249. 

] search allows SiRF 

As a result, a SiRF receiver performing a [ ] is able to detect satellite signals as 

weak as 15dB, a lower signal strength than the 23 and 17 dB sensitivity level it is able to achieve 

through the Full I and I1 searches. Pratt Tr. 1253. 

I44 

SiRF infringes the third claim element of claim 1 ofthe '651 patent. Pratt Tr. 1235-1253. 

As further proof that SiRF meets the third limitation of claim 1, Global Locate points to a 

satellite strategy employed by SiRF that is known as [ ] See Compl. Br. at 167. Citing to 

the testimony of Dr. Pratt (Tr. 1235-1236), Global Locate states, "[t]hat search strategy will not 

be executed unless the code and frequency uncertainties have been sufficiently reduced and the 

device has ephemeris available." Id. Thus, complainant notes, the "reduction of the uncertainties 

allows for increased integration time in a smaller code and frequency search space, and the 

sensitivity ofthe GPS receiver is increased such that it is able to detect weaker signals." Id. 

Where the uncertainty level is not a small [ ] uncertainty (indicated by "unc level 

] the receiver will tum to the "full" type of acquisition. This full search mode 

does not involve any reduction in code uncertainty. Pratt Tr. 1246-1248. If the uncertainties are 

smaller, the SiRF receiver can then enter into a [ ] The [ ] search mode 

will involve a reduction in code and frequency uncertainty in order to improve the receiver's 

acquisition sensitivity. See Pratt Tr. 1248; Dafesh Tr. 752-753. 

The frequency uncertainty in the [ ] search (plus or minus 78.12 Hz overlap) is less 

than the uncertainty in the Full I and II searches (plus or minus 312.51156. 7Hz overlap). 

Therefore, there is less frequency space to search. The code uncertainty also is smaller than the 

full range of code uncertainty in the Full I and II searches. Thus, the [ ] search allows SiRF 

to achieve a longer dwell time and a higher acquisition sensitivity. Pratt Tr. 1248-1249. 

As a result, a SiRF receiver performing a [ ] is able to detect satellite signals as 

weak as 15dB, a lower signal strength than the 23 and 17 dB sensitivity level it is able to achieve 

through the Full I and II searches. Pratt Tr. 1253. 

144 
Accordingly, in the [ ] SiRF practices the third limitation of claim 1 of 

the ‘65 1 patent in using a reduction in code and frequency uncertainty to improve acquisition 

sensitivity. 

Claim 2 

Claim 2 of the ‘65 1 patent provides, “2. The method of claim 1 wherein said 

communicating step is performed through a wireless path.” JX-4, claim 2. The evidence 

establishes that SiRFInstantFix, when used in conjunction with the SiRFstarIII chips and 

associated software, performs the communicating step through a wireless path when it 

communicates satellite ephemeris to a mobile GPS receiver. Pratt Tr. 123 1-1 232; CX-3 13C 

(SEA-SGEE Theory of Operation and Software Requirement Specification) at SRF 8798 1 ; 

CX-276C (SiRFInstantFix Data Sheet). 

Accordingly, the accused products literally infringe claim 2. 

ii. SiRF’Loe 

SiRF’s software and chips operating with SiRFLoc also infringe claims 1 and 2 of the ‘65 1 

patent. In that regard, SiRFLoc receives EE files from the InstantFix server and provides those 

files to mobile receivers. Pratt Tr. 121 8-1220; CX-307C (E2E Theory of Operation for SiRFLoc 

EE) at 602SiRF188225. 

Thus, the SiRFInstantFix server serves as a first location that receives ephemeris files from 

] (Pratt Tr.1220; CX-307C at 602SiRF188225), and it is a first location that receives EE files [ 

generated by the processor of the InstantFix server. The SiRFLoc server also is a first location 

that receives EE files generated by the InstantFix server. The SiRFLoc server transmits the EE 

files generated at the SiRFInstantFix server directly to mobile GPS receivers in the same way the 

145 

Accordingly, in the [ ] SiRF practices the third limitation of claim 1 of 

the '651 patent in using a reduction in code and frequency uncertainty to improve acquisition 

sensitivity. 

Claim 2 

Claim 2 of the '651 patent provides, "2. The method of claim 1 wherein said 

communicating step is performed through a wireless path." JX-4, claim 2. The evidence 

establishes that SiRFlnstantFix, when used in conjunction with the SiRFstarIII chips and 

associated software, performs the communicating step through a wireless path when it 

communicates satellite ephemeris to a mobile GPS receiver. Pratt Tr. 1231-1232; CX-313C 

(SEA-SGEE Theory of Operation and Software Requirement Specification) at SRF 87981; 

CX-276C (SiRFInstantFix Data Sheet). 

Accordingly, the accused products literally infringe claim 2. 

ii. SiRFLoc 

SiRF's software and chips operating with SiRFLoc also infringe claims 1 and 2 of the '651 

patent. In that regard, SiRFLoc receives EE files from the InstantFix server and provides those 

files to mobile receivers. Pratt Tr. 1218-1220; CX-307C (E2E Theory of Operation for SiRFLoc 

EE) at 602SiRF188225. 

Thus, the SiRFInstantFix server serves as a first location that receives ephemeris files from 

] (Pratt Tr.l220; CX-307C at 602SiRFI88225), and it is a first location that receives EE files 

generated by the processor of the InstantFix server. The SiRFLoc server also is a first location 

that receives EE files generated by the InstantFix server. The SiRFLoc server transmits the EE 

files generated at the SiRFInstantFix server directly to mobile GPS receivers in the same way the 

145 
customer distribution server transmits the EE files to mobile GPS receivers. Pratt Tr. 1232-1234; 

CX-265C (SLS 4.0 Functional Specification) at 602SiRF244602; CX-307C at 602SiRF188225. 

iii. [ 1 

As discussed, supra, because the [ ] it 

cannot be found to infringe claims 1 and 2 of the ‘65 1 patent. Global Locate’s argument to the 

contrary is rejected. 

iv. SiRF’s Testing and Evaluation 

SiRF testing of InstantFix and SiRFLoc with all of its accused chips and software meets 

the first limitation of claim 1. See Pratt Tr. 1222 (SiRF conducts validation and performance 

test); Tr. 1224 (Discussion of SiRF test plan to demonstrate the performance of their SiRFLoc 

system); CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test 

Plan). See also, Pande Tr. 1991 (SiRF is currently conducting testing of SiRFLoc with 

InstantFix). 

In this testing, SiRF validates the end-to-end implementation and performance of 

InstantFix. Pratt Tr. 1226-1227; CX-321 C (SiRF Enhanced Autonomous Server Generated 

Extended Ephemeris System Validation Report). As Dr. Pratt explained, this testing provides 

“the validation results for the testing that’s been performed on the [SEA-SGEE system.”] Pratt 

Tr. 1227. Insofar as the first location limitation of claim 1 of the ‘651 patent is concerned, 

referring to section 4 of CX-321C, Dr. Pratt noted “the schematic showing the provision of files 

from the [ ] Pratt Tr. 1228. (“The provision of 

those upon request of the customer EE server.” Id.) Thus, Dr. Pratt concluded: 

So a first location remains in the [ ] server where the 

146 

customer distribution server transmits the EE files to mobile GPS receivers. Pratt Tr. 1232-1234; 

CX-265C (SLS 4.0 Functional Specification) at 602SiRF244602; CX-307C at 602SiRF188225. 

iii. [ 1 

As discussed, supra, because the [ 

cannot be found to infringe claims 1 and 2 of the '651 patent. Global Locate's argument to the 

contrary is rejected. 

iv. SiRF's Testing and Evaluation 

] it 

SiRF testing of InstantFix and SiRFLoc with all of its accused chips and software meets 

the first limitation of claim 1. See Pratt Tr. 1222 (SiRF conducts validation and performance 

test); Tr. 1224 (Discussion of SiRF test plan to demonstrate the performance of their SiRFLoc 

system); CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test 

Plan). See also, Pande Tr. 1991 (SiRF is currently conducting testing ofSiRFLoc with 

InstantF ix). 

In this testing, SiRF validates the end-to-end implementation and performance of 

InstantFix. Pratt Tr. 1226-1227; CX-321C (SiRF Enhanced Autonomous Server Generated 

Extended Ephemeris System Validation Report). As Dr. Pratt explained, this testing provides 

"the validation results for the testing that's been performed on the [SEA-SGEE system."] Pratt 

Tr. 1227. Insofar as the first location limitation of claim 1 of the '651 patent is concerned, 

referring to section 4 ofCX-321C, Dr. Pratt noted "the schematic showing the provision of files 

from the [ ] Pratt Tr. 1228. ("The provision of 

those upon request of the customer EE server." Id.) Thus, Dr. Pratt concluded: 

So a first location remains in the [ ] server where the 

146 
extended ephemeris information is received into its -- into its memory. 

And, also, a first location is in the customer extended ephemeris server ... 

when it receives the data on its input communication port, and, also, where 

it receives the extended ephemeris information into its memory. 

Pratt Tr. 1228. 

In addition, SiRF’s use of its evaluation kits also meets the first limitation of claim 1. See 

Pratt Tr. 1222-1223 (Demonstration users are allowed access to the demo server located in 

] which is different from the InstantFix server, “[slo that’s another first location.” ) Dr. 

Pratt offered the following testimony which supports this first location conclusion: 

SiRF provides evaluation kits to its potential OEM 

customers. And this allows them to have access to the 

SiRFInstantFix server through a demo server. So here is a demo 

server at this point. An evaluation kit is provided, containing a 

receiver. That is coupled to a pocket PC. It’s provided with some 

software, the SiRFDemoPPC firmware. That is coupled to a PC, 

which is right here. And that’s provided with some code, which is 

SiRF Get Extended Ephemeris. And that code requests extended 

ephemeris through an Internet connection from the SiRF demo 

server. So it has in it a data file which contains the extended 

ephemeris information. 

And then, upon request, it provides that extended ephemeris 

information back to the PC and then ... it flows back into the Pocket 

PC, and then from there into the evaluation receiver. Of course, the 

evaluation receiver is able to receive GPS signals and using the 

extended ephemeris will be able to, A, search for and find the 

satellites, and ultimately get a location solution. 

Pratt Tr. 1225-1226. See CX-264C (SiRF InstantFix Evaluation Kit User Guide) at 

602SiRF125254, Fig. 1-1 (Ephemeris Access)). 

SiRF also practices the second limitation of claim 1 of the ‘65 1 patent (“communication 

the satellite ephemeris to a mobile GPS receiver at a second location”) as to testing and 

147 

Pratt Tr. 1228. 

extended ephemeris information is received into its -- into its memory. 

And, also, a first location is in the customer extended ephemeris server ... 

when it receives the data on its input communication port, and, also, where 

it receives the extended ephemeris information into its memory. 

In addition, SiRF's use of its evaluation kits also meets the first limitation of claim 1. See 

Pratt Tr. 1222-1223 (Demonstration users are allowed access to the demo server located in 

[ ] which is different from the InstantFix server, "[s]o that's another first location.") Dr. 

Pratt offered the following testimony which supports this first location conclusion: 

SiRF provides evaluation kits to its potential OEM 

customers. And this allows them to have access to the 

SiRFInstantFix server through a demo server. So here is a demo 

server at this point. An evaluation kit is provided, containing a 

receiver. That is coupled to a pocket PC. It's provided with some 

software, the SiRFDemoPPC firmware. That is coupled to a PC, 

which is right here. And that's provided with some code, which is 

SiRF Get Extended Ephemeris. And that code requests extended 

ephemeris through an Internet connection from the SiRF demo 

server. So it has in it a data file which contains the extended 

ephemeris information. 

And then, upon request, it provides that extended ephemeris 

information back to the PC and then ... it flows back into the Pocket 

PC, and then from there into the evaluation receiver. Of course, the 

evaluation receiver is able to receive GPS signals and using the 

extended ephemeris will be able to, A, search for and find the 

satellites, and ultimately get a location solution. 

Pratt Tr. 1225-1226. See CX-264C (SiRF InstantFix Evaluation Kit User Guide) at 

602SiRF125254, Fig. 1-1 (Ephemeris Access)). 

SiRF also practices the second limitation of claim 1 of the '651 patent ("communication 

the satellite ephemeris to a mobile GPS receiver at a second location") as to testing and 

147 
evaluation. Pratt Tr. 1228- 1229. In that regard, beginning with a discussion of the first location, 

Dr. Pratt explained: 

I think there are several. The communication -- there’s a 

communication connection between the InstantFix server and a 

customer’s distribution server. So there’s a communication of 

satellite ephemeris. But it doesn’t go directly to the GPS receiver at 

that point. 

However, the customer distribution server does provide to 

the mobile GPS server the extended ephemeris files. And that 

meets the second limitation. 

Pratt Tr. 1229. See Pratt Tr. 1234-1235 (SiRF performs communication step when conducting 

test for [ 

] at 602SiRF254900. See also, Pratt Tr. 1233-1234 

(SiRF performs communication step of claim 1 through validation and testing of InstantFix 

service and SiRFLoc system); CX-284C (SiRFLoc End-to-End System Integration, Validation and 

Performance Test Plan); CX-32 1 C (SiRF Enhanced Autonomous Server Generated Extended 

Ephemeris Validation Report). 

Finally, in each of these instances, SiRF also performs the third limitation of claim 1. 

When testing its chips and software with InstantFix and SiRFLoc, SiRF will use the satellite 

ephemeris at the mobile receiver to reduce code and frequency uncertainties and improve 

acquisition sensitivity, just as it does when it implements InstantFix and SiRFLoc for production 

customers. See Pratt Tr. 1221-1223, 1225; CX-321C (SiRF Enhanced Autonomous Server 

Generated Extended Ephemeris System Validation Report); CX-264C (SiRF InstantFix 

Evaluation Kit User Guide) at 602SiRF 124254; CX-284C (SiRFLoc End-to-End System 

Integration, Validation and Performance Test Plan) at 602SiRF264208. 

148 

evaluation. Pratt Tr. 1228-1229. In that regard, beginning with a discussion ofthe first location, 

Dr. Pratt explained: 

I think there are several. The communication -- there's a 

communication connection between the InstantFix server and a 

customer's distribution server. So there's a communication of 

satellite ephemeris. But it doesn't go directly to the GPS receiver at 

that point. 

However, the customer distribution server does provide to 

the mobile GPS server the extended ephemeris files. And that 

meets the second limitation. 

Pratt Tr. 1229. See Pratt Tr. 1234-1235 (SiRF performs communication step when conducting 

test for [ 

] at 602SiRF254900. See also, Pratt Tr. 1233-1234 

(SiRF performs communication step of claim 1 through validation and testing ofInstantFix 

service and SiRFLoc system); CX-284C (SiRFLoc End-to-End System Integration, Validation and 

Performance Test Plan); CX-321C (SiRF Enhanced Autonomous Server Generated Extended 

Ephemeris Validation Report). 

Finally, in each of these instances, SiRF also performs the third limitation of claim 1. 

When testing its chips and software with InstantFix and SiRFLoc, SiRF will use the satellite 

ephemeris at the mobile receiver to reduce code and frequency uncertainties and improve 

acquisition sensitivity, just as it does when it implements InstantFix and SiRFLoc for production 

customers. See Pratt Tr. 1221-1223, 1225; CX-321C (SiRF Enhanced Autonomous Server 

Generated Extended Ephemeris System Validation Report); CX-264C (SiRF InstantFix 

Evaluation Kit User Guide) at 602SiRF124254; CX-284C (SiRFLoc End-to-End System 

Integration, Validation and Performance Test Plan) at 602SiRF264208. 

148 
d. Validity 

SiRF raises a number of invalidity arguments. These arguments, all of which fail, are 

addressed below. 

i. SiRF’s Prior Publications and Products 

“The ION GPS Articles” 

SiRF submits that “[plrior art SiRFLoc systems and prior art papers that described its 

function and operation in 1999 anticipate the asserted claims under 35 U.S.C. 5 102(a), 5 102(f) 

and 8 102(g).” Resp. Br. at 61 (citing RX-110 & RX-111). As support for this proposition, SiRF 

states that in 1996, it introduced its first chipset for commercial receivers (Pande Tr. 1926; Heppe 

Tr. 241 1). In 1998, SiRF’s Snapstart technology was described in a paper presented by SiRF at 

the 1998 ION conference. Pande Tr. 1929-1930; RX-320.52 

Thereafter, in 1999, SiRF states that it was working on expanding hot start and Snapstart 

to help receivers acquire signals in weaker environments. Resp. Br. at 62 (citing Pande Tr. 1932). 

In September 1999, SiRF presented test results of its SiRFLoc system at an ION GPS conference 

in a paper titled, “Wireless Assisted GPS-SIRF Architecture and Field Test Results.” RX-111. In 

January 2000, SiRF described its SiWLoc technology in another ION paper, titled, “Acquisition 

of GPS Signals at Very Low Signal to Noise Ratio.” RX-110. Resp. Br. at 62. SiRF argues that 

“[tlhese papers and prior art products were well known to van Diggelen before he ‘conceived’ of 

the ‘65 1 patent.” Id. (Transcript citations omitted); see Resp. Br. at 62-63. 

52 “Snapstart is a faster type of hot start that uses ephemeris data previously collected 

from satellites to provide fast acquisition of satellite signals.” Resp. Br. at 61. SiRF asserts that 

as of 1998, its receivers operating in “hot start or SnapStart mode” performed the “processing” 

step of the ‘65 1 patent. Id. 

149 

d. Validity 

SiRF raises a number of invalidity arguments. These arguments, all of which fail, are 

addressed below. 

i. SiRF's Prior Publications and Products 

"The ION GPS Articles" 

SiRF submits that "[p ]rior art SiRFLoc systems and prior art papers that described its 

function and operation in 1999 anticipate the asserted claims under 35 U.S.C. § 102(a), § 102(f) 

and § 102(g)." Resp. Br. at 61 (citing RX-II0 & RX-lll). As support for this proposition, SiRF 

states that in 1996, it introduced its first chipset for commercial receivers (Pande Tr. 1926; Heppe 

Tr. 2411). In 1998, SiRF's SnapStart technology was described in a paper presented by SiRF at 

the 1998 ION conference. Pande Tr. 1929-1930; RX-320.52 

Thereafter, in 1999, SiRF states that it was working on expanding hot start and SnapStart 

to help receivers acquire signals in weaker environments. Resp. Br. at 62 (citing Pande Tr. 1932). 

In September 1999, SiRF presented test results of its SiRFLoc system at an ION GPS conference 

in a paper titled, "Wireless Assisted GPS-SIRF Architecture and Field Test Results." RX-111. In 

January 2000, SiRF described its SiRFLoc technology in another ION paper, titled, "Acquisition 

ofGPS Signals at Very Low Signal to Noise Ratio." RX-I10. Resp. Br. at 62. SiRF argues that 

"[t]hese papers and prior art products were well known to van Diggelen before he 'conceived' of 

the '651 patent." Id (Transcript citations omitted); see Resp. Br. at 62-63. 

52 "SnapStart is a faster type of hot start that uses ephemeris data previously collected 

from satellites to provide fast acquisition of satellite signals." Resp. Br. at 61. SiRF asserts that 

as of 1998, its receivers operating in "hot start or SnapStart mode" performed the "processing" 

step of the '651 patent. Id 

149 
Contrary to SiRF’s assertions, the 1999 and 2000 ION GPS articles discussed above do 

not anticipate the ‘651 patent. Both Global Locate and the Staff agree on that point. See Compl. 

Br. at 177- 179; Staff Br. at 5 1. 

In that regard, the 1999 ION GPS paper (“Wireless Assisted GPS-SiRF Architecture and 

Field Test Results”) does not disclose use of ephemeris to reduce code or frequency uncertainty. 

See RX-111 at 602SiRF730225; see also, Pratt Tr. 2889-2890 (paper states that code and 

frequency uncertainty can be reduced by using “network assistance,” but contrasts “network 

assistance” with “broadcast ephemeris and other data.”) It also does not disclose using ephemeris 

to improve acquisition sensitivity. See Pratt Tr. 2892. 

Indeed, as argued by Global Locate, the use of ephemeris is simply not a focus of the 1999 

ION GPS article. Global Locate explains: 

In a summary of the assistance methods supported by SiRFLoc at 

the time, ephemeris is never mentioned. The section, titled 

“SiRFLoc Assistance Concepts,” contains a table that compares the 

different types of assistance modes. See RX- 1 1 1 at 

602SiRF730226-227 and Table 1. The table does not disclose the 

use of ephemeris in any of the modes, and an author of the article 

acknowledged as much. See id. ; Garin, Tr. 1906: 15-1 907: 13. The 

table describes what Lionel Garin called “the poor man’s solution” 

in which computations based on ephemeris were conducted at the 

server-a solution that Mr. Garin testified was the state of the art at 

the time. Garin, Tr. 1907:l-13, 1908:7-10. What neither Mr. Garin 

nor SiRF explains is why this comparison chart-which purports to 

compare the assistance methods supported by SiRFLoc at the 

time-fails to mention any use of ephemeris as part of the network 

assistance data for use by the receiver. Instead, Mr. Garin now 

claims that the table was “for reference” and is not what SiRF was 

practicing. Garin, Tr. 1908:6-7. Garin acknowledged that the 

article contained “just hints about what could be our system.” 

Garin, Tr. 1912:24-1913 : 1. 

Compl. Br. at 178-179. 

150 

Contrary to SiRF's assertions, the 1999 and 2000 ION GPS articles discussed above do 

not anticipate the '651 patent. Both Global Locate and the Staff agree on that point. See Compl. 

Br. at 177-179; StaffBr. at 5l. 

In that regard, the 1999 ION GPS paper ("Wireless Assisted GPS-SiRF Architecture and 

Field Test Results") does not disclose use of ephemeris to reduce code or frequency uncertainty. 

See RX-111 at 602SiRF730225; see also, Pratt Tr. 2889-2890 (paper states that code and 

frequency uncertainty can be reduced by using "network assistance," but contrasts "network 

assistance" with "broadcast ephemeris and other data.") It also does not disclose using ephemeris 

to improve acquisition sensitivity. See Pratt Tr. 2892. 

Indeed, as argued by Global Locate, the use of ephemeris is simply not a focus of the 1999 

ION GPS article. Global Locate explains: 

In a summary of the assistance methods supported by SiRFLoc at 

the time, ephemeris is never mentioned. The section, titled 

"SiRFLoc Assistance Concepts," contains a table that compares the 

different types of assistance modes. See RX -111 at 

602SiRF730226-227 and Table 1. The table does not disclose the 

use of ephemeris in any of the modes, and an author of the article 

acknowledged as much. See id; Garin, Tr. 1906:15-1907:13. The 

table describes what Lionel Garin called "the poor man's solution" 

in which computations based on ephemeris were conducted at the 

server-a solution that Mr. Garin testified was the state of the art at 

the time. Garin, Tr. 1907:1-13, 1908:7-10. What neither Mr. Garin 

nor SiRF explains is why this comparison chart-which purports to 

compare the assistance methods supported by SiRFLoc at the 

time-fails to mention any use of ephemeris as part of the network 

assistance data for use by the receiver. Instead, Mr. Garin now 

claims that the table was "for reference" and is not what SiRF was 

practicing. Garin, Tr. 1908:6-7. Garin acknowledged that the 

article contained 'just hints about what could be our system." 

Garin, Tr. 1912:24-1913:l. 

Compl. Br. at 178-179. 

150 
In addition, the 2000 ION GPS paper (“Acquisition of GPS Signals at Very Low Signal to 

Noise Ratio”) does not disclose the use of ephemeris to reduce code and frequency uncertainty or 

to improve acquisition sensitivity. See RX-110. This article concerns “very long coherent 

integration,” and it discusses the limits of the length of time coherent integration can be done. See 

van Diggelen Tr. 190-191. Also, as asserted by the Staff, the 2000 ION GPS paper “focuses on 

time to acquisition, which may result in poorer, not greater, acquisition sensitivity.” Staff Br. at 

5 1 ; see Heppe Tr. 249 1 ; Pratt Tr, 2892-2894. 

“SiRFLoc” 

At pages 63 through 70 of its brief, SiRF discusses the development of its SiRFLoc 

system, as well as retracing the path of the 1999 and 2000 ION conference articles (RX-110 & 

RX-11 1), discussed above. In brief, SiRF states that by 1999 it had developed, tested, and 

demonstrated the SiRFLoc platform with broadcast ephemeris. Resp. Br. at 63. Thereafter, 

separate testing was conducted by SiRF and Diablo Research. Id. at 63-64. These tests were 

presented at the 1999 ION conference. Id. at 64. SiRF further states that it continued to develop 

its server business and in 2001, it used a SiRF chip inside a Motorola phone with Nortel and 

Signalsoft geolocation. Also, in 2001 , Benefon used a SiRF chip to receive ephemeris aid 

information from a Global Locate receiver. Id. at 65. See Resp. Br. at 65-70 for discussion of 

claims 1 and 2. 

In its opposition, Global Locate cites to the high burden of proof, ie., “clear and 

convincing evidence,” that SiRF must satisfy in order to show that the SiRFLoc system anticipates 

the ‘651 patent. Compl. Reply at 80. Complainant submits, however, that all that SiRF has 

presented to satisfy this burden is “uncorroborated testimony.” Id. 

151 

In addition, the 2000 ION GPS paper ("Acquisition of GPS Signals at Very Low Signal to 

Noise Ratio") does not disclose the use of ephemeris to reduce code and frequency uncertainty or 

to improve acquisition sensitivity. See RX-11 O. This article concerns "very long coherent 

integration," and it discusses the limits of the length of time coherent integration can be done. See 

van Diggelen Tr. 190-191. Also, as asserted by the Staff, the 2000 ION GPS paper "focuses on 

time to acquisition, which may result in poorer, not greater, acquisition sensitivity." StaffBr. at 

51; see Heppe Tr. 2491; Pratt Tr. 2892-2894. 

"SiRFLoc" 

At pages 63 through 70 of its brief, SiRF discusses the development of its SiRFLoc 

system, as well as retracing the path of the 1999 and 2000 ION conference articles (RX-110 & 

RX -111), discussed above. In brief, SiRF states that by 1999 it had developed, tested, and 

demonstrated the SiRFLoc platform with broadcast ephemeris. Resp. Br. at 63. Thereafter, 

separate testing was conducted by SiRF and Diablo Research. Id at 63-64. These tests were 

presented at the 1999 ION conference. Id at 64. SiRF further states that it continued to develop 

its server business and in 2001, it used a SiRF chip inside a Motorola phone with Nortel and 

SignalSoft geolocation. Also, in 2001, Benefon used a SiRF chip to receive ephemeris aid 

information from a Global Locate receiver. Id at 65. See Resp. Br. at 65-70 for discussion of 

claims 1 and 2. 

In its opposition, Global Locate cites to the high burden of proof, i.e., "clear and 

convincing evidence," that SiRF must satisfy in order to show that the SiRFLoc system anticipates 

the '651 patent. CompI. Reply at 80. Complainant submits, however, that all that SiRF has 

presented to satisfy this burden is "uncorroborated testimony." Id 

151 
In that regard, Global Locate states that the “only real evidence of SiRF’s 1999 ‘field 

tests”’ of its SiRFLoc technology consist of the two SiRF articles from 1999 (RX-1 1 1) and 2000 

(RX-1 lo). Those articles do not disclose use of ephemeris to reduce code and frequency 

uncertainty to improve acquisition sensitivity. Compl. Reply at 80 (citing Resp. Br. at 25,63-65, 

67-68). See Garin Tr. 19 12- 1 9 1 3. 

Furthermore, as complainants argue, the remainder of SiRF’s evidence consists of an 

amalgamation of a 2007 document reflecting 2007 testing (CX-284C ); two undated documents 

that do not disclose the technology of the ‘65 1 patent (one of which reflects a demonstration that 

occurred outside the United States and cannot, therefore, be used to demonstrate anticipation) 

(RX-64C; RX-342C); an email that does not provide any detail about what was being tested or 

where it was being tested (RX-272C); and disparate pieces of code (RX-16OC; RX-35C; RX140C; RX-154C). Either individually, or collectively, these documents do not constitute clear and 

convincing evidence of a prior art system. 

For example, SiRF relies on a figure representing the SiRFLoc test set-up. Resp. Br. at 64 

(citing CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test 

Plan) at 602SiRF264194). This figure is from a 2007 document and it represents SiRF’s 

infringing testing of the SiRFLoc end-to-end system today. See Garin Tr. 1871 -1 872; Pratt 

Tr. 1223-1224; Dafesh Tr. 694-696. Also, SiRF’s witness conceded that the SiRFLoc end-to-end 

feature was not tested in 1999. Garin Tr. 1875. 

In addition, SiRF relies on a figure from an undated presentation to show that ephemeris 

was collected at a server. See Resp. Br. at 65-66 (citing RX-64C (GPS Based Location 

Architectures)). SiRF’s witness testified that this document reflected a demonstration conducted 

152 

In that regard, Global Locate states that the "only real evidence of SiRF's 1999 'field 

tests'" of its SiRFLoc technology consist of the two SiRF articles from 1999 (RX-lll) and 2000 

(RX-II0). Those articles do not disclose use of ephemeris to reduce code and frequency 

uncertainty to improve acquisition sensitivity. CompI. Reply at 80 (citing Resp. Br. at 25,63-65, 

67-68). See Garin Tr. 1912-1913. 

Furthermore, as complainants argue, the remainder of SiRF' s evidence consists of an 

amalgamation of a 2007 document reflecting 2007 testing (CX-284C ); two undated documents 

that do not disclose the technology of the '651 patent (one of which reflects a demonstration that 

occurred outside the United States and cannot, therefore, be used to demonstrate anticipation) 

(RX-64C; RX-342C); an email that does not provide any detail about what was being tested or 

where it was being tested (RX-272C); and disparate pieces of code (RX-160C; RX-35C; RX140C; RX-154C). Either individually, or collectively, these documents do not constitute clear and 

convincing evidence of a prior art system. 

For example, SiRF relies on a figure representing the SiRFLoc test set-up. Resp. Br. at 64 

(citing CX-284C (SiRFLoc End-to-End System Integration, Validation and Performance Test 

Plan) at 602SiRF264194). This figure is from a 2007 document and it represents SiRF's 

infringing testing of the SiRFLoc end-to-end system today. See Garin Tr. 1871-1872; Pratt 

Tr. 1223-1224; Dafesh Tr. 694-696. Also, SiRF's witness conceded that the SiRFLoc end-to-end 

feature was not tested in 1999. Garin Tr. 1875. 

In addition, SiRF relies on a figure from an undated presentation to show that ephemeris 

was collected at a server. See Resp. Br. at 65-66 (citing RX-64C (GPS Based Location 

Architectures)). SiRF's witness testified that this document reflected a demonstration conducted 

152 
in Japan, not the United States. Garin Tr. 1996-1997. The demonstration discussed in this 

document is not tied to the rest of SiRF’s discussion about demonstration and testing in 1999, and 

there is no argument that this document or the related testimony shows communication of 

ephemeris to a mobile GPS receiver or use of ephemeris at a mobile GPS receiver to reduce code 

or frequency uncertainty. 

SiRF further argues that, using the results of the field tests reflected in the ION GPS 

papers, a SiRFLoc technical specification was created and provided to potential customers, but the 

undated document to which SiRF refers provides no further information beyond that contained in 

the SiRF ION GPS articles. Resp. Br. at 65 (citing RX-342C (Handset Based Geolocation Service 

Technical Specification)). Because the document is undated, and because SiRF’s witness could 

not provide testimony regarding the exact date, it is inadequate to establish prior art. See Garin 

Tr. 1870. 

This document also does not disclose the use of ephemeris aiding information 

communicated to a mobile GPS receiver to reduce code and frequency uncertainty or to improve 

acquisition sensitivity. See Garin Tr. 18 13-1 8 1 5. Also, the witness could not confirm whether or 

when the document was provided to any potential customers (he thought it was provided to one 

potential customer, but did not know the date). Garin Tr. 1870. 

SiRF also refers to testing sponsored and financed by [ 3 which it refers to as [ ] 

testing. Resp. Br. at 63. SiRF’s evidence, however, does not show what was tested, let alone 

whether such testing included any functions resembling the method of the ‘65 1 patent. See, e.g., 

Garin Tr. 18 1 8-1 8 19; RX-272C. Wile Pande did discuss the kinds of technology involved in the 

[ ] testing, including the use of coherent and non-coherent integration to increase dwell time, 

153 

in Japan, not the United States. Garin Tr. 1996-1997. The demonstration discussed in this 

document is not tied to the rest ofSiRF's discussion about demonstration and testing in 1999, and 

there is no argument that this document or the related testimony shows communication of 

ephemeris to a mobile GPS receiver or use of ephemeris ata mobile GPS receiver to reduce code 

or frequency uncertainty. 

SiRF further argues that, using the results ofthe field tests reflected in the ION GPS 

papers, a SiRFLoc technical specification was created and provided to potential customers, but the 

undated document to which SiRF refers provides no further information beyond that contained in 

the SiRF ION GPS articles. Resp. Br. at 65 (citing RX-342C (Handset Based Geolocation Service 

Technical Specification». Because the document is undated, and because SiRF's witness could 

not provide testimony regarding the exact date, it is inadequate to establish prior art. See Garin 

Tr. 1870. 

This document also does not disclose the use of ephemeris aiding information 

communicated to a mobile GPS receiver to reduce code and frequency uncertainty or to improve 

acquisition sensitivity. See Garin Tr. 1813-1815. Also, the witness could not confirm whether or 

when the document was provided to any potential customers (he thought it was provided to one 

potential customer, but did not know the date). Garin Tr. 1870. 

SiRF also refers to testing sponsored and financed by [ ] which it refers to as [ ] 

testing. Resp. Br. at 63. SiRF's evidence, however, does not show what was tested, let alone 

whether such testing included any functions resembling the method of the '651 patent. See, e.g., 

Garin Tr. 1818-1819; RX-272C. While Pande did discuss the kinds oftechnology involved in the 

] testing, including the use of coherent and non-coherent integration to increase dwell time, 

153 
his testimony was uncorroborated. Moreover, as with the SiRF ION articles discussed earlier, this 

technology is unrelated to the claims of the ‘651 patent. See Pande Tr. 1932-1933. 

Finally, in an effort to tie the ‘65 1 patent to SiRF’s 1999 activity, SiRF presents some code 

that it vaguely argues was used in SiRF products with SiRFstarI, SiRFstarII, and SiRFstarIII chips 

“since the late 1990s.” Resp. Br. at 68-69. SiRF, however, offers no reliable evidence that this 

code was ever used or incorporated in any way. Id. SiRF failed to present any documentation 

concerning the alleged use of this code in 1999. 

ii. The ‘651 Patent is not Derived from the SiRFLoc System 

SiRF states that the asserted claims of the ‘651 patent are invalid under 35 U.S.C. 0 102(f) 

because Dr. van Diggelen derived the invention from SiRF. Resp. Br. at 70. Respondents are 

wrong; the ‘651 patent is not derived from SiRF’s SiRFLoc system. 

A derivation claim requires a showing of both (1) prior conception of the invention by 

another, and (2) communication of the complete claimed invention to the patentee that is 

“sufficient to enable [him] to construct and successfully operate the invention.” Gambro Lundia 

AB v. Baxter HeaZthcare Corp., 110 F.3d 1573, 1577 (Fed. Cir. 1997) (citations omitted). SiRF 

has not met its burden. 

SiRF fails to meet this standard in light of Dr. van Diggelen’s testimony that he did not 

think SiRF had any Assisted-GPS technology in the 1999-2000 timeframe. van Diggelen Tr. 187 

(around the time that Dr. van Diggelen was developing the ‘65 1 patent idea, he ‘‘was aware that 

[SiRF] had done some research in [the assisted GPS] area, but [he] was unaware of any products 

available at that time”). Also persuasive is Dr. van Diggelen’s testimony that the 2000 ION GPS 

paper relates to long coherent integration time, a subject unrelated to the technology of the ‘65 1 

154 

his testimony was uncorroborated. Moreover, as with the SiRF ION articles discussed earlier, this 

technology is unrelated to the claims of the '651 patent. See Pande Tr. 1932-1933. 

Finally, in an effort to tie the '651 patent to SiRF's 1999 activity, SiRF presents some code 

that it vaguely argues was used in SiRF products with SiRFstarI, SiRFstarII, and SiRFstarIII chips 

"since the late 1990s." Resp. Br. at 68-69. SiRF, however, offers no reliable evidence that this 

code was ever used or incorporated in any way. !d. SiRF failed to present any documentation 

concerning the alleged use of this code in 1999. 

ii. The '651 Patent is not Derived from the SiRFLoc System 

SiRF states that the asserted claims ofthe '651 patent are invalid under 35 U.S.C. § 102(f) 

because Dr. van Diggelen derived the invention from SiRF. Resp. Br. at 70. Respondents are 

wrong; the '651 patent is not derived from SiRF's SiRFLoc system. 

A derivation claim requires a showing of both (1) prior conception of the invention by 

another, and (2) communication of the complete claimed invention to the patentee that is 

"sufficient to enable [him] to construct and successfully operate the invention." Cambro Lundia 

AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577 (Fed. Cir. 1997) (citations omitted). SiRF 

has not met its burden. 

SiRF fails to meet this standard in light of Dr. van Diggelen's testimony that he did not 

think SiRF had any Assisted-GPS technology in the 1999-2000 timeframe. van Diggelen Tr. 187 

(around the time that Dr. van Diggelen was developing the '651 patent idea, he "was aware that 

[SiRF] had done some research in [the assisted GPS] area, but [he] was unaware of any products 

available at that time"). Also persuasive is Dr. van Diggelen's testimony that the 2000 ION GPS 

paper relates to long coherent integration time, a subject unrelated to the technology of the '651 

154 
patent. van Diggelen Tr. 191-193 (noting that the paper discussed “using ephemeris data. . . but 

using it in a different way from what we have discussed, using it to wipe off these data bits . . . so 

that you can do long coherent integration. So it is an entirely different thing from what we were 

doing, and from what the ‘65 1 patent is about.”). With respect to the 1999 ION GPS paper, SiRF 

ignores Dr. van Diggelen’s testimony that he had not seen this article before this investigation 

began. van Diggelen Tr. 195-1 96. 

Thus, for the foregoing reasons, SiRF’s argument that the ‘65 1 patent is derived from the 

SiRFLoc system must fail. 

iii. SiRF Receivers Operating in Hot Start Mode 

SiRF submits that “[slince the claims of the ‘65 1 patent do not require receiving 

ephemeris at a first location on Earth, they are anticipated by traditional GPS systems since the 

Air Force uploads ephemeris information to the GPS satellites.” Resp. Br. at 71 (citing van 

Diggelen Tr. 467; CX-262C at GL-60205 1 136). Respondents state that this satisfies the step of 

“receiving satellite ephemeris at a first location.” Id. 53 

SiRF further submits that the second step of communicating the satellite ephemeris to a 

mobile GPS receiver at a second location is also satisfied. Id., (citing van Diggelen Tr. 467; Pratt 

Tr. 1297). Citing to the testimony of Dr. Pratt at 1297, SiRF also states that claim 2 is anticipated. 

Id. 

Global Locate characterizes SiRF’s arguments as weak and “specious.” Compl. Reply at 

53 In its argument, SiRF also offers the view that, “Prior art GPS receivers - such as 

receivers with SiRFStarI and SiRFStarII chipsets operating in hot start or Snapstart mode - 

processed satellite signals using ephemeris to reduce code and frequency uncertainty.” Resp. Br. 

at 71 (citing Garin Tr. 1852). This leads SiRF to conclude that all elements of claim 1 have been 

satisfied. Id. 

155 

patent. van Diggelen Tr. 191-193 (noting that the paper discussed "using ephemeris data ... but 

using it in a different way from what we have discussed, using it to wipe off these data bits ... so 

that you can do long coherent integration. So it is an entirely different thing from what we were 

doing, and from what the '651 patent is about."). With respect to the 1999 ION GPS paper, SiRF 

ignores Dr. van Diggelen's testimony that he had not seen this article before this investigation 

began. van Diggelen Tr. 195-196. 

Thus, for the foregoing reasons, SiRF's argument that the '651 patent is derived from the 

SiRFLoc system must fail. 

iii. SiRF Receivers Operating in Hot Start Mode 

SiRF submits that "[s]ince the claims of the '651 patent do not require receiving 

ephemeris at a first location on Earth, they are anticipated by traditional GPS systems since the 

Air Force uploads ephemeris information to the GPS satellites." Resp. Br. at 71 (citing van 

Diggelen Tr. 467; CX-262C at GL-602051136). Respondents state that this satisfies the step of 

"receiving satellite ephemeris at a first location." Id. 53 

SiRF further submits that the second step of communicating the satellite ephemeris to a 

mobile GPS receiver at a second location is also satisfied. Id., (citing van Diggelen Tr. 467; Pratt 

Tr. 1297). Citing to the testimony of Dr. Pratt at 1297, SiRF also states that claim 2 is anticipated. 

Id. 

Global Locate characterizes SiRF's arguments as weak and "specious." Compl. Reply at 

53 In its argument, SiRF also offers the view that, "Prior art GPS receivers - such as 

receivers with SiRFStarI and SiRFStarII chipsets operating in hot start or SnapStart mode -

processed satellite signals using ephemeris to reduce code and frequency uncertainty." Resp. Br. 

at 71 (citing Garin Tr. 1852). This leads SiRF to conclude that all elements of claim 1 have been 

satisfied. Id. 

155 
82. In that regard, complainants correctly note, however, that “the ‘65 1 patent is about Assisted 

GPS, a technology that is indisputably not a part of the conventional GPS system.” Compl. Reply 

at 82. Global Locate also correctly notes that SiRF’s hot start and Snapstart technology attempted 

to improve first fix, and not acquisition sensitivity, and that they did not involve the use of 

ephemeris received from anything other than a satellite, and occurred only after the satellites have 

initially been acquired. Compl. Reply at 82-83 (citing Resp. Br. at 61-62). 

iv. The Schuchman ‘450 Patent 

U.S. Patent No. 5,365,450 (“Schuchman”) does not anticipate the ‘65 1 patent. First, the 

reference does not disclose reduction of code uncertainty prior to acquisition of a satellite signal. 

It also does not disclose the use of ephemeris to reduce code uncertainty. Pratt Tr. 2885-2888. 

Instead, code uncertainty is reduced through resolution of time-position ambiguity using prior 

knowledge of position, which was obtained by acquiring the first satellite. RX-98 (Schuchrnan) at 

CO~. 5,l. 58 - CO~. 6,l. 24. 

Second, Schuchman does not disclose the use of ephemeris to reduce frequency 

uncertainty prior to acquisition of a satellite signal. See Heppe Tr. 2503-2504. 

Third, Schuchman does not disclose reducing code and frequency uncertainty using 

ephemeris from a source other than the satellites, as required by the ‘65 1 patent. See RX-98 at 

col. 5,ll. 22-32; Heppe Tr. 2503-2504. 

Finally, Schuchman does not disclose using ephemeris to improve acquisition sensitivity. 

See Pratt Tr. 2888-2889,2893, & 2906. 

v. Indefiniteness 

SiRF argues that the term “to improve acquisition sensitivity,” as used in claim 1 of the 

156 

82. In that regard, complainants correctly note, however, that "the '651 patent is about Assisted 

GPS, a technology that is indisputably not a part of the conventional GPS system." Compl. Reply 

at 82. Global Locate also correctly notes that SiRF's hot start and SnapStart technology attempted 

to improve first fix, and not acquisition sensitivity, and that they did not involve the use of 

ephemeris received from anything other than a satellite, and occurred only after the satellites have 

initially been acquired. Compl. Reply at 82-83 (citing Resp. Br. at 61-62). 

iv. The Schuchman '450 Patent 

U.S. Patent No. 5,365,450 ("Schuchman") does not anticipate the '651 patent. First, the 

reference does not disclose reduction of code uncertainty prior to acquisition of a satellite signal. 

It also does not disclose the use of ephemeris to reduce code uncertainty. Pratt Tr. 2885-2888. 

Instead, code uncertainty is reduced through resolution of time-position ambiguity using prior 

knowledge of position, which was obtained by acquiring the first satellite. RX-98 (Schuchman) at 

col. 5, 1. 58 - col. 6, 1. 24. 

Second, Schuchman does not disclose the use of ephemeris to reduce frequency 

uncertainty prior to acquisition of a satellite signal. See Heppe Tr. 2503-2504. 

Third, Schuchman does not disclose reducing code and frequency uncertainty using 

ephemeris from a source other than the satellites, as required by the '651 patent. See RX-98 at 

col. 5, 11. 22-32; Heppe Tr. 2503-2504. 

Finally, Schuchman does not disclose using ephemeris to improve acquisition sensitivity. 

See Pratt Tr. 2888-2889, 2893, & 2906. 

v. Indefiniteness 

SiRF argues that the term "to improve acquisition sensitivity," as used in claim 1 ofthe 

156 
‘65 1 patent, is indefinite. SiRF is wrong. 

As discussed earlier, the patent specification describes what is meant by improvement in 

acquisition sensitivity. It states that ‘‘[bletter sensitivity” is achieved as follows: 

The sensitivity of a GPS receiver is a function of the amount of time 

that the receiver can integrate the correlator outputs . . . . With 

many bins to search, the integration time 610 equals the total 

available search time divided by the number of search bins. With 

only a single bin to search, the integration time 612 equals the total 

available search time, increasing the sensitivity as shown 608. 

JX-4 (‘651 patent) at col. 7,l. 61 - col. 8,l. 2. 

Moreover, SiRF notes in its brief that “[ilt was well known that sensitivity could be 

increased by increasing dwell time.” See Resp. Br. at 74 (citing RX-110); see also, Pratt 

Tr. 2906-2907; Podshivalov Tr. 521 (“integration time is also known as dwell time”).54 

To the extent that SiRF relies upon the testimony of Dr. Heppe to support its position, its 

reliance is misplaced. See Resp. Br. at 75. Dr. Heppe did not explain what was unclear about this 

language, despite the fact that he found the term sufficiently clear to offer the opinion that several 

references anticipate the ‘651 patent. See Heppe Tr. 2415-2416, 2418. 

e. Ineauitable - Conduct 

The ‘65 1 patent is not unenforceable due to inequitable conduct. In that regard, Dr. Van 

Diggelen did not withhold any references from the Patent Office during prosecution of the ‘65 1 

patent. 

54 Contrary to SiRF’s indefiniteness argument, two of its witnesses had an understanding 

of what improvement in acquisition sensitivity means. See Garin Tr. 18 1 8 (“To improve 

sensitivity, you need to integrate for a longer period of time in order to get a better signal-tonoise ratio at the output of the correlator.”); Pande Tr. 1933 (explaining how one can acquire a 

weaker satellite signal with increased dwell time). 

157 

'651 patent, is indefinite. SiRF is wrong. 

As discussed earlier, the patent specification describes what is meant by improvement in 

acquisition sensitivity. It states that "[b Jetter sensitivity" is achieved as follows: 

The sensitivity of a GPS receiver is a function of the amount of time 

that the receiver can integrate the correlator outputs. . .. With 

many bins to search, the integration time 610 equals the total 

available search time divided by the number of search bins. With 

only a single bin to search, the integration time 612 equals the total 

available search time, increasing the sensitivity as shown 608. 

JX-4 ('651 patent) at col. 7,1. 61 - col. 8,1. 2. 

Moreover, SiRF notes in its brief that "[iJt was well known that sensitivity could be 

increased by increasing dwell time." See Resp. Br. at 74 (citing RX-II0); see also, Pratt 

Tr. 2906-2907; Podshivalov Tr. 521 ("integration time is also known as dwell time,,).54 

To the extent that SiRF relies upon the testimony of Dr. Heppe to support its position, its 

reliance is misplaced. See Resp. Br. at 75. Dr. Heppe did not explain what was unclear about this 

language, despite the fact that he found the term sufficiently clear to offer the opinion that several 

references anticipate the '651 patent. See Heppe Tr. 2415-2416, 2418. 

e. Inequitable Conduct 

The '651 patent is not unenforceable due to inequitable conduct. In that regard, Dr. Van 

Diggelen did not withhold any references from the Patent Office during prosecution of the '651 

patent. 

54 Contrary to SiRF's indefiniteness argument, two of its witnesses had an understanding 

of what improvement in acquisition sensitivity means. See Garin Tr. 1818 ("To improve 

sensitivity, you need to integrate for a longer period of time in order to get a better signal-tonoise ratio at the output of the correlator."); Pande Tr. 1933 (explaining how one can acquire a 

weaker satellite signal with increased dwell time). 

157 
As argued by Global Locate, “[wlith the exception of one article (the 2000 ION GPS paper 

...) , the evidence shows that the ‘references’ SiRF cites were unknown to Dr. van Diggelen during 

prosecution of the ‘651 patent.” Compl. Reply at 85 (citing van Diggelen Tr. 187, 195-196). See 

Staff Br. at 5 1 (“Dr. van Diggelen testified credibly that he did not intentionally withhold 

information from the PTO during the prosecution of the ‘651 patent.” (Transcript cites omitted.) 

This court agrees with the Staffs (and complainants’) assessment of Dr. van Diggelen’s 

credibility. Accordingly, it is found that SiRF has failed to prove inequitable conduct with respect 

to the ‘651 patent. 

VI. U.S. Patent No. 6,417,801 (“the ‘801 Patent”) 

A. Claim Construction 

United States Patent No. 6,417,801, entitled “Method and Apparatus for Time-Free 

Processing of GPS Signals,” issued on July 9,2002 to Frank van Diggelen, and was assigned to 

Global Locate. See JX-1 (‘801 Patent). The claimed invention “relates to satellite-based position 

location and, more particularly, the invention relates to a method and apparatus for time-free 

processing of global positioning system (GPS) signals.” JX-1 (‘801 Patent), title and col. 1,11. 5-9 

(“Field of Invention”). 

The ‘80 1 patent specification’s “Description of the Background Art” describes many terms 

and concepts that have already been discussed above, and others that will be discussed for the first 

time. The specification explains that GPS receivers normally determine their position by 

computing time delays between the transmission and reception of signals transmitted from 

satellites, and that the satellites transmit ephemeris data, as well as so-called “absolute time” 

158 

As argued by Global Locate, "[w]ith the exception of one article (the 2000 ION GPS paper 

... ) , the evidence shows that the 'references' SiRF cites were unknown to Dr. van Diggelen during 

prosecution of the '651 patent." Compl. Reply at 85 (citing van Diggelen Tr. 187, 195-196). See 

Staff Br. at 51 ("Dr. van Diggelen testified credibly that he did not intentionally withhold 

information from the PTO during the prosecution ofthe '651 patent." (Transcript cites omitted.) 

This court agrees with the Staff's (and complainants') assessment of Dr. van Diggelen's 

credibility. Accordingly, it is found that SiRF has failed to prove inequitable conduct with respect 

to the '651 patent. 

VI. U.S. Patent No. 6,417,801 ("the '801 Patent") 

A. Claim Construction 

United States Patent No. 6,417,801, entitled "Method and Apparatus for Time-Free 

Processing of GPS Signals," issued on July 9, 2002 to Frank van Diggelen, and was assigned to 

Global Locate. See JX-l ('801 Patent). The claimed invention "relates to satellite-based position 

location and, more particularly, the invention relates to a method and apparatus for time-free 

processing of global positioning system (GPS) signals." JX-1 ('801 Patent), title and col. 1,11.5-9 

("Field of Invention"). 

The '801 patent specification's "Description of the Background Art" describes many terms 

and concepts that have already been discussed above, and others that will be discussed for the first 

time. The specification explains that GPS receivers normally determine their position by 

computing time delays between the transmission and reception of signals transmitted from 

satellites, and that the satellites transmit ephemeris data, as well as so-called "absolute time" 

158 
information associated with the satellite signal. JX-1 (‘801 Patent), col. 1 , 11.12-23.” This 

absolute time signal allows the receiver to determine unambiguously a so-called “time tag” that 

indicates when each received signal was transmitted by each satellite. By knowing the exact time 

of transmission of each of the signals, the receiver uses the ephemeris data to calculate where each 

satellite was when it transmitted a signal. The receiver combines the knowledge of satellite 

positions with the computed distances to the satellites to compute the receiver position. JX-1 

(‘801 Patent), col. 1,11. 22-31. 

As discussed above in numerous portions of this Initial Determination, and as recognized 

by the specification of the ‘801 patent, the process of searching for and acquiring GPS signals, as 

well as reading the ephemeris data, absolute time and other data for a multiplicity of satellites, is 

time-consuming and introduces unacceptable delays in computing the receiver position. Further, 

in many situations, the received signal level can be too low to demodulate and derive the satellite 

data without error. However, in such situations the receiver can rely on an external source of 

ephemeris and absolute time. Indeed, the ‘801 patent specification reports that several 

innovations had been made to provide what it refers to as “GPS Aiding” (ie., “assisted” GPS) 

which consists of external sources of ephemeris (or equivalent) data and absolute time 

infomation. JX-1 (‘801 Patent), col. 1,ll. 32-51. 

The specification states that at that time all GPS systems using “GPS Aiding” needed 

accurate external knowledge of the absolute time for an accurate determination of satellite 

position, and that the required accuracy was between 1 millisecond and 10 milliseconds. 

j5 The absolute time information is not a conventional time signal that indicates calendar 

days, hours, minutes and seconds. Rather, “the absolute time signal is sent as a second of the 

week signal.” See JX-1 (‘801 Patent), col. 1,ll. 22-23. 

159 

information associated with the satellite signal. JX-1 ('801 Patent), col. 1,11.12-23.55 This 

absolute time signal allows the receiver to determine unambiguously a so-called "time tag" that 

indicates when each received signal was transmitted by each satellite. By knowing the exact time 

of transmission of each of the signals, the receiver uses the ephemeris data to calculate where each 

satellite was when it transmitted a signal. The receiver combines the knowledge of satellite 

positions with the computed distances to the satellites to compute the receiver position. JX-1 

('801 Patent), col. 1,11.22-31. 

As discussed above in numerous portions of this Initial Determination, and as recognized 

by the specification of the '801 patent, the process of searching for and acquiring GPS signals, as 

well as reading the ephemeris data, absolute time and other data for a multiplicity of satellites, is 

time-consuming and introduces unacceptable delays in computing the receiver position. Further, 

in many situations, the received signal level can be too low to demodulate and derive the satellite 

data without error. However, in such situations the receiver can rely on an external source of 

ephemeris and absolute time. Indeed, the' 80 1 patent specification reports that several 

innovations had been made to provide what it refers to as "GPS Aiding" (i.e., "assisted" GPS) 

which consists of external sources of ephemeris (or equivalent) data and absolute time 

information. JX-l ('801 Patent), col. 1,11.32-51. 

The specification states that at that time all GPS systems using "GPS Aiding" needed 

accurate external knowledge of the absolute time for an accurate determination of satellite 

position, and that the required accuracy was between 1 millisecond and 1 0 milliseconds. 

55 The absolute time information is not a conventional time signal that indicates calendar 

days, hours, minutes and seconds. Rather, "the absolute time signal is sent as a second of the 

week signal." See JX-1 ('801 Patent), col. 1,11.22-23. 

159 
“Unfortunately,” in the words of the specification, there were “desired implementations of GPS 

Aiding where absolute time [could] not easily be obtained to this accuracy at the GPS receiver,” 

including many situations involving cellular telephone systems that could not, or did not, support 

precise time information. Thus, according to the specification, “[iln these situations it is desirable 

to provide a method for computing GPS receiver position without knowing the absolute time.” 

JX-1 (‘801 Patent), col. 1,11. 52-65. 

In this background portion of the ‘ 80 1 patent specification, the patentee then provides 

instances of specific problems that may occur when the GPS receiver relies on absolute time 

information to perform GPS, and concludes by stating that there is a need for a system that does 

require the GPS receiver to receive and use absolute time information. Inasmuch as this portion 

of the specification frames the discussion for the claimed invention in the patentee’s own words 

(and is related to the ‘ 187 patent specification discussed below), it is reproduced herein: 

More specifically, Global Positioning System (GPS) receivers 

receive GPS signals transmitted from orbiting GPS satellites 

containing unique pseudo-random noise (PN) codes. The GPS 

receivers determine the time delays between transmission and 

reception of the signals by comparing time shifts between the 

received PN code signal sequence and internally generated PN 

signal sequences. 

Each transmitted GPS signal is a direct sequence spread spectrum 

signal. The signals available for commercial use are provided by the 

Standard Positioning Service. These signals utilize a direct sequence 

spreading signal with a 1.023 MHZ spread rate on a carrier at 

1575.42 MHZ (the Ll frequency). Each satellite transmits a unique 

PN code (known as the CIA code) that identifies the particular 

satellite, and allows signals transmitted simultaneously from several 

satellites to be received simultaneously by a receiver with very little 

interference of any one signal by another. The PN code sequence 

length is 1023 chips, corresponding to a 1 millisecond time period. 

One cycle of 1023 chips is called a PN frame. Each received GPS 

160 

"Unfortunately," in the words of the specification, there were "desired implementations of GPS 

Aiding where absolute time [could] not easily be obtained to this accuracy at the GPS receiver," 

including many situations involving cellular telephone systems that could not, or did not, support 

precise time information. Thus, according to the specification, "[i]n these situations it is desirable 

to provide a method for computing GPS receiver position without knowing the absolute time." 

JX-l ('801 Patent), col. 1,11.52-65. 

In this background portion of the' 80 1 patent specification, the patentee then provides 

instances of specific problems that may occur when the GPS receiver relies on absolute time 

information to perform GPS, and concludes by stating that there is a need for a system that does 

require the GPS receiver to receive and use absolute time information. Inasmuch as this portion 

of the specification frames the discussion for the claimed invention in the patentee's own words 

(and is related to the '187 patent specification discussed below), it is reproduced herein: 

More specifically, Global Positioning System (GPS) receivers 

receive GPS signals transmitted from orbiting GPS satellites 

containing unique pseudo-random noise (PN) codes. The GPS 

receivers determine the time delays between transmission and 

reception of the signals by comparing time shifts between the 

received PN code signal sequence and internally generated PN 

signal sequences. 

Each transmitted GPS signal is a direct sequence spread spectrum 

signal. The signals available for commercial use are provided by the 

Standard Positioning Service. These signals utilize a direct sequence 

spreading signal with a 1.023 MHZ spread rate on a carrier at 

1575.42 MHZ (the Ll frequency). Each satellite transmits a unique 

PN code (known as the C/ A code) that identifies the particular 

satellite, and allows signals transmitted simultaneously from several 

satellites to be received simultaneously by a receiver with very little 

interference of anyone signal by another. The PN code sequence 

length is 1023 chips, corresponding to a 1 millisecond time period. 

One cycle of 1023 chips is called a PN frame. Each received GPS 

160 
signal is constructed from the 1.023 MHZ repetitive PN pattern of 

1023 chips. At very low signal levels the PN pattern may still be 

observed, to provide unambiguous time delay measurements, by 

processing, and essentially averaging, many PN frames. These 

measured time delays are called “sub-millisecond pseudoranges”, 

since they are known modulo the 1 millisecond PN frame 

boundaries. Once the absolute time delay can be calculated, by 

resolving the integer number of milliseconds associated with each 

delay to each satellite, then one has true, unambiguous, 

pseudoranges. The process of resolving the unambiguous 

pseudoranges is known as “integer millisecond ambiguity 

resolution”. 

A set of four pseudoranges together with a knowledge of the 

absolute times of transmissions of the GPS signals and satellite 

positions at those absolute times is sufficient to solve for the 

position of-the GPS receiver. The absolute times of transmission are 

broadcast from the satellites in the Navigation Message, which is 

superimposed on the 1.023 MHZ PN code at a lower, 50 Hz, data 

rate. This 50 Hz signal is a binary phase shift keyed (BPSK) data 

stream with bit boundaries aligned with the beginning of the PN 

frame. There are exactly 20 PN frames per data bit period (20 

milliseconds). The 50 Hz signal contains data bits describing the 

GPS satellite orbits, satellite clock corrections, time of week 

information, and other system parameters. 

The absolute times associated with the satellite transmissions are 

determined in conventional GPS receivers by reading the Time of 

Week (TOW) data in the Navigation Message of the GPS signal. In 

the standard method of time determination, a conventional GPS 

receiver decodes and synchronizes to the 50 baud data stream. The 

50 baud signal is arranged into 30-bit words grouped into subfiames 

of 10 words, with a length of 300 bits and a duration of six seconds. 

Five subframes comprise a frame of 1500 bits and a duration of 30 

seconds, and 25 frames comprise a superframe with a duration of 

12.5 minutes. A superframe contains the complete Navigation 

Message. The data bit subframes that occur every six seconds 

contain bits that provide the TOW to six second resolution. The 50 

baud data stream is aligned with the C/A code transitions so that the 

arrival time of a data bit edge (on a 20 ms interval) resolves the 

absolute transmission time to the nearest 20 milliseconds. Precision 

synchronization to bit boundaries can resolve the absolute 

transmission time to one millisecond or less. 

161 

signal is constructed from the 1.023 MHZ repetitive PN pattern of 

1023 chips. At very low signal levels the PN pattern may still be 

observed, to provide unambiguous time delay measurements, by 

processing, and essentially averaging, many PN frames. These 

measured time delays are called "sub-millisecond pseudoranges", 

since they are known modulo the 1 millisecond PN frame 

boundaries. Once the absolute time delay can be calculated, by 

resolving the integer number of milliseconds associated with each 

delay to each satellite, then one has true, unambiguous, 

pseudoranges. The process of resolving the unambiguous 

pseudoranges is known as "integer millisecond ambiguity 

resolution". 

A set of four pseudoranges together with a knowledge of the 

absolute times of transmissions of the GPS signals and satellite 

positions at those absolute times is sufficient to solve for the 

position of the GPS receiver. The absolute times of transmission are 

broadcast from the satellites in the Navigation Message, which is 

superimposed on the 1.023 MHZ PN code at a lower, 50 Hz, data 

rate. This 50 Hz signal is a binary phase shift keyed (BPSK) data 

stream with bit boundaries aligned with the beginning of the PN 

frame. There are exactly 20 PN frames per data bit period (20 

milliseconds). The 50 Hz signal contains data bits describing the 

GPS satellite orbits, satellite clock corrections, time of week 

information, and other system parameters. 

The absolute times associated with the satellite transmissions are 

determined in conventional GPS receivers by reading the Time of 

Week (TOW) data in the Navigation Message of the GPS signal. In 

the standard method of time determination, a conventional GPS 

receiver decodes and synchronizes to the 50 baud data stream. The 

50 baud signal is arranged into 30-bit words grouped into subframes 

of 10 words, with a length of 300 bits and a duration of six seconds. 

Five subframes comprise a frame of 1500 bits and a duration of 30 

seconds, and 25 frames comprise a superframe with a duration of 

12.5 minutes. A superframe contains the complete Navigation 

Message. The data bit subframes that occur every six seconds 

contain bits that provide the TOW to six second resolution. The 50 

baud data stream is aligned with the C/ A code transitions so that the 

arrival time of a data bit edge (on a 20 ms interval) resolves the 

absolute transmission time to the nearest 20 milliseconds. Precision 

synchronization to bit boundaries can resolve the absolute 

transmission time to one millisecond or less. 

161 
The absolute times associated with the satellite signals are 

determined in Wireless Aided-GPS receivers by having an external 

timing source that is calibrated to GPS time then using this time to 

provide a precise time tag at the time of reception of the satellite 

signal. The time of reception minus the pseudorange gives the 

absolute time of transmission for each satellite (with the 

pseudorange expressed in time units, reflecting the transmissionreception time delay). 

The absolute times of transmission are needed in order to determine 

the positions of the satellites at the times of transmission and hence 

to determine the position of the GPS receiver. GPS satellites move 

at approximately 3.9 Ws, and thus the range of the satellite, 

observed from the earth, changes at a rate of at most k800 ds. 

Absolute timing errors result in range errors of up to 0.8 m for each 

millisecond of timing error. These range errors produce a similarly 

sized error in the GPS receiver position. Hence, absolute time 

accuracy of 10 ms is sufficient for position accuracy of 

approximately 10 m. Absolute timing errors of much more than 10 

ms will result in large position errors, and so typical GPS receivers 

have required absolute time to approximately 10 millisecond 

accuracy or better. 

Note that absolute timing errors also introduce errors as a result of 

the GPS satellite clock drift, but these are so much smaller than the 

satellite position error that they can be ignored for the purposes of 

this explanation (GPS clocks drift typically less than 0.1 

nanoseconds per second, and the observed range to the satellite is 

affected by the GPS clock drift multiplied by the speed of light, this 

error is less than 0.03 m/s, about 25 thousand times smaller than 

errors caused by changes in satellite position). 

There is another time parameter closely associated with GPS 

positioning, this is the sub-millisecond offset in the time reference 

used to measure the sub-millisecond pseudorange. This offset 

affects all the measurements equally, and for this reason it is known 

as the “common mode error”. 

The common mode error should not be confused with the absolute 

time error. As discussed above, an absolute time error of 1 

millisecond leads to range errors of up to 0.8 meters while an 

absolute time error of 1 microsecond would cause an almost 

162 

The absolute times associated with the satellite signals are 

determined in Wireless Aided-GPS receivers by having an external 

timing source that is calibrated to GPS time then using this time to 

provide a precise time tag at the time of reception of the satellite 

signal. The time of reception minus the pseudorange gives the 

absolute time oftransmission for each satellite (with the 

pseudorange expressed in time units, reflecting the transmissionreception time delay). 

The absolute times of transmission are needed in order to determine 

the positions of the satellites at the times of transmission and hence 

to determine the position of the GPS receiver. GPS satellites move 

at approximately 3.9 km/s, and thus the range ofthe satellite, 

observed from the earth, changes at a rate of at most ±800 mls. 

Absolute timing errors result in range errors of up to 0.8 m for each 

millisecond of timing error. These range errors produce a similarly 

sized error in the GPS receiver position. Hence, absolute time 

accuracy of 10 ms is sufficient for position accuracy of 

approximately 10m. Absolute timing errors of much more than 10 

ms will result in large position errors, and so typical GPS receivers 

have required absolute time to approximately 10 millisecond 

accuracy or better. 

Note that absolute timing errors also introduce errors as a result of 

the GPS satellite clock drift, but these are so much smaller than the 

satellite position error that they can be ignored for the purposes of 

this explanation (GPS clocks drift typically less than 0.1 

nanoseconds per second, and the observed range to the satellite is 

affected by the GPS clock drift multiplied by the speed of light, this 

error is less than 0.03 mis, about 25 thousand times smaller than 

errors caused by changes in satellite position). 

There is another time parameter closely associated with GPS 

positioning, this is the sub-millisecond offset in the time reference 

used to measure the sub-millisecond pseudorange. This offset 

affects all the measurements equally, and for this reason it is known 

as the "common mode error". 

The common mode error should not be confused with the absolute 

time error. As discussed above, an absolute time error of 1 

millisecond leads to range errors of up to 0.8 meters while an 

absolute time error of 1 microsecond would cause an almost 

162 
unobservable range error of less than 1 millimeter. However, a 

common mode error of 1 microsecond causes a pseudorange error 

of 1 microsecond multiplied by the speed of light, that is 300 

meters. 

Because common mode errors have such a large effect on 

pseudoranges, and because it is practically very difficult to calibrate 

the common mode error, traditional GPS receivers treat the 

common mode error as an unknown that must be solved for, along 

with position, once sufficiently many pseudoranges have been 

measured at a particular receiver. However, no traditional GPS 

receivers solve for absolute time error instead relying on the fact 

that they know absolute time to the required accuracy (of 10 

milliseconds or better). 

Therefore, a need exists in the art for a method and apparatus that 

processes GPS signals without using absolute time. 

JX-1 (‘801 Patent), col. l,l. 66 - col. 3,l. 52. 

In its “Summary of the Invention,” the ‘801 patent specification reports that it discloses 

both a method and an apparatus by which global position can be computed without the need for 

the receiver to obtain and use absolute time information. Rather, in the preferred embodiment, the 

claimed invention relies on a server that fits pseudorange information obtained from the receiver 

into a mathematical model in which the GPS receiver position and the absolute time are 

previously unknown parameters. The specification provides a concise description of the claimed 

invention, as follows: 

The present invention is a method and apparatus for computing GPS 

receiver position without using absolute time information 

transmitted by a satellite or by an alternative source of timing 

available at the GPS receiver. In an embodiment of the invention, 

the GPS receiver is contained in an integrated receiver that also 

includes a wireless communication transceiver, but does not have 

access to an accurate source of absolute time information. The 

wireless transceiver communicates through a wireless network to a 

server. The GPS receiver measures satellite pseudoranges and uses 

163 

unobservable range error of less than 1 millimeter. However, a 

common mode error of 1 microsecond causes a pseudorange error 

of 1 microsecond multiplied by the speed oflight, that is 300 

meters. 

Because common mode errors have such a large effect on 

pseudoranges, and because it is practically very difficult to calibrate 

the common mode error, traditional GPS receivers treat the 

common mode error as an unknown that must be solved for, along 

with position, once sufficiently many pseudoranges have been 

measured at a particular receiver. However, no traditional GPS 

receivers solve for absolute time error instead relying on the fact 

that they know absolute time to the required accuracy (of 10 

milliseconds or better). 

Therefore, a need exists in the art for a method and apparatus that 

processes GPS signals without using absolute time. 

JX-I ('801 Patent), col. 1,1. 66 - col. 3,1. 52. 

In its "Summary of the Invention," the '801 patent specification reports that it discloses 

both a method and an apparatus by which global position can be computed without the need for 

the receiver to obtain and use absolute time information. Rather, in the preferred embodiment, the 

claimed invention relies on a server that fits pseudorange information obtained from the receiver 

into a mathematical model in which the GPS receiver position and the absolute time are 

previously unknown parameters. The specification provides a concise description of the claimed 

invention, as follows: 

The present invention is a method and apparatus for computing GPS 

receiver position without using absolute time information 

transmitted by a satellite or by an alternative source of timing 

available at the GPS receiver. In an embodiment of the invention, 

the GPS receiver is contained in an integrated receiver that also 

includes a wireless communication transceiver, but does not have 

access to an accurate source of absolute time information. The 

wireless transceiver communicates through a wireless network to a 

server. The GPS receiver measures satellite pseudoranges and uses 

163 
the wireless communication transceiver to send the pseudoranges to 

the server. The server fits the pseudoranges to a mathematical 

model in which the GPS receiver position and the absolute time are 

unknown parameters. The server then computes a position and 

absolute time that best fit the model, thus yielding the correct 

position for the GPS receiver, and the absolute time at which the 

pseudorange measurements were made. 

JX-1 (‘801 Patent), col. 3,l. 55 - col. 4,l. 5. 

The specification includes drawings and descriptions thereof, a detailed description of the 

invention (including the preferred embodiment or embodiments), and sets forth the claimed 

invention in a series of 35 claims. In this investigation, complainants assert claims 1 , 2 (which 

depends from claim 1) and 11 (which depends from claim 4, and ultimately from claim 1). 

Claims 1,2,4 and 11 provide, as follows: 

1. A method for calculating an absolute position of a GPS receiver and an absolute 

time of reception of satellite signals comprising: 

providing pseudoranges that estimate the range of the GPS receiver 

to a plurality of GPS satellites; 

providing an estimate of an absolute time of reception of a plurality 

of satellite signals; 

providing an estimate of a position of the GPS receiver; 

providing satellite ephemeris data; 

computing absolute position and absolute time using said 

pseudoranges by updating said estimate of an absolute time and the 

estimate of position of the GPS receiver. 

2. The method o[fl claim 1 wherein said pseudor[]anges are sub-millisecond 

pseudoranges. 

4. The method of claim 1, wherein said estimate of absolute time is provided by a 

clock that is not linked to a GPS reference time. 

164 

the wireless communication transceiver to send the pseudoranges to 

the server. The server fits the pseudoranges to a mathematical 

model in which the GPS receiver position and the absolute time are 

unknown parameters. The server then computes a position and 

absolute time that best fit the model, thus yielding the correct 

position for the GPS receiver, and the absolute time at which the 

pseudorange measurements were made. 

JX-1 ('801 Patent), col. 3, 1. 55 - col. 4, 1. 5. 

The specification includes drawings and descriptions thereof, a detailed description of the 

invention (including the preferred embodiment or embodiments), and sets forth the claimed 

invention in a series of 35 claims. In this investigation, complainants assert claims 1, 2 (which 

depends from claim 1) and 11 (which depends from claim 4, and ultimately from claim 1). 

Claims 1, 2, 4 and 11 provide, as follows: 

1. A method for calculating an absolute position of a GPS receiver and an absolute 

time of reception of satellite signals comprising: 

providing pseudoranges that estimate the range of the GPS receiver 

to a plurality of GPS satellites; 

providing an estimate of an absolute time of reception of a plurality 

of satellite signals; 

providing an estimate of a position of the GPS receiver; 

providing satellite ephemeris data; 

computing absolute position and absolute time using said 

pseudoranges by updating said estimate of an absolute time and the 

estimate of position of the GPS receiver. 

2. The method o[f] claim 1 wherein said pseudor[]anges are sub-millisecond 

pseudoranges. 

4. The method of claim 1, wherein said estimate of absolute time is provided by a 

clock that is not linked to a GPS reference time. 

164 
11. The method of claim 4, wherein one or more of the updates is assumed known, 

so that the remaining updates may be computed. 

JX-1 (‘801 Patent), col. 12,Il. 28-41; col. 12,11.46-48; col. 13,11. 13-15. 

Many of the terms and phrases used in the asserted claims are not at issue. It appears that 

in their main post-hearing briefs, the parities had slightly divergent expectations about which 

claim terns would be at issue. In consideration of the parties’ main and reply briefs, it is evident 

that the following two categories of terns are in dispute: Category (I) the limitations “providing 

pseudoranges that estimate the range of the GPS receiver to a plurality of GPS satellites,” 

“providing an estimate of an absolute time of reception of a plurality of satellite signals,” and 

“computing absolute position and absolute time using said pseudoranges by updating said 

estimate of an absolute time and the estimate of position of the GPS receiver,” which are found in 

claim 1 but only insofar as respondents allege that complainants improperly attempt to read 

“without having absolute time information” into each of these limitations; and Category (2) 

“wherein said pseudoranges are sub-millisecond pseudoranges,” which is the limitation added to 

claim 1 by dependent claim 2. See, e.g., Resp. Br. at 158-69. Each category of disputed claim 

terms is discussed individually below. 

Category (I): “providing pseudoranges that estimate the range of the GPS 

receiver to a plurality of GPS satellites,” “providing an estimate of an 

absolute time of reception of a plurality of satellite signals,” and “computing 

absolute position and absolute time using said pseudoranges by updating said 

estimate of an absolute time and the estimate of position of the GPS receiver” 

complainants argue that the claim limitations relating to (a) “providing pseudoranges that 

estimate the range of the GPS receiver to a plurality of GPS satellites,” (b) “providing an estimate 

of an absolute time of reception of’ the satellite signals, and (c) “computing . . . absolute time” 

165 

11. The method of claim 4, wherein one or more of the updates is assumed known, 

so that the remaining updates may be computed. 

JX-1 ('801 Patent), col. 12,11.28-41; col. 12,11. 46-48; col. 13,11. 13-15. 

Many of the terms and phrases used in the asserted claims are not at issue. It appears that 

in their main post-hearing briefs, the parities had slightly divergent expectations about which 

claim terms would be at issue. In consideration of the parties' main and reply briefs, it is evident 

that the following two categories ofterms are in dispute: Category (1) the limitations "providing 

pseudoranges that estimate the range of the GPS receiver to a plurality of GPS satellites," 

"providing an estimate of an absolute time of reception of a plurality of satellite signals," and 

"computing absolute position and absolute time using said pseudoranges by updating said 

estimate of an absolute time and the estimate of position of the GPS receiver," which are found in 

claim 1 but only insofar as respondents allege that complainants improperly attempt to read 

"without having absolute time information" into each of these limitations; and Category (2) 

"wherein said pseudoranges are sub-millisecond pseudoranges," which is the limitation added to 

claim 1 by dependent claim 2. See, e.g., Resp. Br. at 158-69. Each category of disputed claim 

terms is discussed individually below. 

Category (1): "providing pseudoranges that estimate the range of the GPS 

receiver to a plurality of GPS satellites," "providing an estimate of an 

absolute time of reception of a plurality of satellite signals," and "computing 

absolute position and absolute time using said pseudoranges by updating said 

estimate of an absolute time and the estimate of position of the GPS receiver" 

Complainants argue that the claim limitations relating to (a) "providing pseudoranges that 

estimate the range of the GPS receiver to a plurality of GPS satellites," (b) "providing an estimate 

of an absolute time of reception of' the satellite signals, and (c) "computing ... absolute time" 

165 
using the pseudoranges, are all based on the absence of absolute time information and should be 

construed accordingly. Thus, for example, they argue that would read “providing pseudoranges 

that estimate the range of the GPS receiver to a plurality of GPS satellites” to mean “providing 

pseudoranges, without having absolute time information, that estimate the range of the GPS 

receiver to a plurality of GPS satellites.” 

As stated quite simply in their reply brief, respondents take the position that “the 801 

patent teaches solving for absolute time, but that the claims do not require it. See Resp. Reply at 

105. They argue, among other things, that complainants’ proposed claim constriction would 

impermissibly import a limitation from the specification into the claims, would read out the 

primary embodiment of the specification, and would render claim 4 superfluous. See Resp. Br. at 

158-65. 

The Staff argues that while “providing pseudoranges that estimate the range of the GPS 

receiver to a plurality of GPS satellites” should not require construction, complainants’ proposed 

“clarification of ‘without having absolute time information”’ is consistent with the intrinsic 

record. See Staff Br. at 54. 

Indeed, as the Staff points out, the intrinsic evidence, supports a reading of the asserted 

claims such that the GPS receiver does not have or require absolute time information. As detailed 

extensively in the background portion of the specification, quoted above, the numerous and 

complex problems associated with relying on the GPS receiver to receive and use absolute time 

information was what made the claimed invention worthwhile. Moreover, as detailed in the 

specification’s summary of the invention (quoted in full, above), the hallmark of the claimed 

invention is that it obviates the need for a GPS receiver to receive and perform computations 

166 

using the pseudoranges, are all based on the absence of absolute time information and should be 

construed accordingly. Thus, for example, they argue that would read "providing pseudoranges 

that estimate the range of the GPS receiver to a plurality of GPS satellites" to mean "providing 

pseudoranges, without having absolute time information, that estimate the range of the GPS 

receiver to a plurality of GPS satellites." 

As stated quite simply in their reply brief, respondents take the position that "the 801 

patent teaches solving for absolute time, but that the claims do not require it. See Resp. Reply at 

105. They argue, among other things, that complainants' proposed claim constriction would 

impermissibly import a limitation from the specification into the claims, would read out the 

primary embodiment ofthe specification, and would render claim 4 superfluous. See Resp. Br. at 

158-65. 

The Staff argues that while "providing pseudoranges that estimate the range of the GPS 

receiver to a plurality of GPS satellites" should not require construction, complainants' proposed 

"clarification of 'without having absolute time information'" is consistent with the intrinsic 

record. See StaffBr. at 54. 

Indeed, as the Staff points out, the intrinsic evidence, supports a reading of the asserted 

claims such that the GPS receiver does not have or require absolute time information. As detailed 

extensively in the background portion of the specification, quoted above, the numerous and 

complex problems associated with relying on the GPS receiver to receive and use absolute time 

information was what made the claimed invention worthwhile. Moreover, as detailed in the 

specification's summary of the invention (quoted in full, above), the hallmark of the claimed 

invention is that it obviates the need for a GPS receiver to receive and perform computations 

166 
based upon absolute time information. As explicitly stated in the summary of the invention: “The 

present invention is a method and apparatus for computing GPS receiver position without using 

absolute time information transmitted by a satellite or by an alternative source of timing available 

at the GPS receiver.” See also JX-1 (‘801 Patent), col. 4,11. 34-36 (introduction to detailed 

embodiment) (“The invention is a method and apparatus for determining position and time in a 

global positioning system (GPS) without having access, at the GPS receiver, to absolute time 

information.”). Such statements, by their plain language, pertain to all embodiments of the 

claimed invention, and not just to the particular embodiments summarized or detailed therein. 

Indeed, a construction in accordance with this does not “read out” the preferred 

embodiment, as argued by respondents.56 Furthermore, if the situation were reversed, it would be 

impossible in view of the specification for complainants to argue that the asserted claims allowed 

for, or required, a GPS receiver that received and used absolute time information to conduct 

computations. Based on the clear language of the specification, such a claim construction could 

not be allowed. Indeed, the patentee (or his counsel) represented to the patent examiner that 

unlike the prior art, his application did not teach “providing an estimate of absolute time” or 

“computing an absolute position and absolute time.” Pratt Tr. 1025-1026; JX-8 (‘801 file history) 

According to respondents, the “primary embodiment” from the ‘80 1 specification 56 

involves a server that has absolute time infomation -which they argue would not be covered by 

complainants’ construction. See Resp. Br. 163-1 64. This argument, which respondents raise for 

the first time in their brief, and without any supporting testimony, is contrary to the specification 

and the issues. First, neither the embodiment in Figures 1 and 2, nor the words of the detailed 

description assumes that the server lacks absolute time. In fact, the contrary is true. See JX-1 

(‘801 patent), col. 4,11. 54-62; col. 6,11. 6-9 (“[Tlhis particular embodiment is assumed to have a 

server clock that provides a time tag within one minute of the actual absolute time of reception of 

the GPS signals at the GPS receiver.”). Second, the relevant claim construction issue pertains to 

the GPS receiver, and has nothing to do with absolute time information being unavailable to the 

server. 

167 

based upon absolute time information. As explicitly stated in the summary of the invention: "The 

present invention is a method and apparatus for computing GPS receiver position without using 

absolute time information transmitted by a satellite or by an alternative source of timing available 

at the GPS receiver." See also JX-1 (,SOl Patent), col. 4, 11.34-36 (introduction to detailed 

embodiment) ("The invention is a method and apparatus for determining position and time in a 

global positioning system (GPS) without having access, at the GPS receiver, to absolute time 

information."). Such statements, by their plain language, pertain to all embodiments of the 

claimed invention, and not just to the particular embodiments summarized or detailed therein. 

Indeed, a construction in accordance with this does not "read out" the preferred 

embodiment, as argued by respondents.56 Furthermore, if the situation were reversed, it would be 

impossible in view of the specification for complainants to argue that the asserted claims allowed 

for, or required, a GPS receiver that received and used absolute time information to conduct 

computations. Based on the clear language of the specification, such a claim construction could 

not be allowed. Indeed, the patentee (or his counsel) represented to the patent examiner that 

unlike the prior art, his application did not teach "providing an estimate of absolute time" or 

"computing an absolute position and absolute time." Pratt Tr. 1025-1026; JX-S (,SOl file history) 

56 According to respondents, the "primary embodiment" from the' SO 1 specification 

involves a server that has absolute time information - which they argue would not be covered by 

complainants' construction. See Resp. Br. 163-164. This argument, which respondents raise for 

the first time in their brief, and without any supporting testimony, is contrary to the specification 

and the issues. First, neither the embodiment in Figures 1 and 2, nor the words of the detailed 

description assumes that the server lacks absolute time. In fact, the contrary is true. See JX-1 

(,SOl patent), col. 4, 11. 54-62; col. 6,11. 6-9 ("[T]his particular embodiment is assumed to have a 

server clock that provides a time tag within one minute of the actual absolute time of reception of 

the GPS signals at the GPS receiver."). Second, the relevant claim construction issue pertains to 

the GPS receiver, and has nothing to do with absolute time information being unavailable to the 

server. 

167 
at GL-602 443. See Markman, 52 F.3d at 980 (prosecution history is “undisputed public record” 

of PTO proceedings and “is of primary significance in understanding the claims”). 

It should be noted that respondents’ expert focused on a reading of the claims without 

reference to the prosecution history. See Heppe Tr. 2660-266 1. His expert reports did not 

mention the file history. Heppe Tr. 3079-3080. Of course, claim construction requires 

consideration of the specification and file history. See Markman, 52 F.3d at 979-80. For 

example, without consulting the specification, one could not even know whether the claims 

should receive their ordinary meaning, or whether the patentee wishes to alert the reader that he 

intends to act his own lexicographer and impart a special meaning to a claim term. 

Consequently, the claim terns at issue are construed to refer only to situations in which 

the GPS receiver does not have absolute time information. 

Category (2) : “wherein said pseudoranges are sub-millisecond pseudoranges” 

Complainants argue that claim 1 provides for pseudoranges that “estimate the range of the 

GPS receiver to a plurality of GPS satellites,” and that claim 2 adds “wherein said pseudoranges 

are sub-millisecond pseudoranges.” They argue that a person of ordinary skill in the art would 

understand claim 2, in the context of the other claims and the specification, to mean “wherein 

each pseudorange is composed of a measured submillisecond component and a calculated integer 

millisecond component, and wherein each pseudorange has a consistent common mode error.” 

Compl. Br. at 196-97 (citing Pratt Tr. 1068). 

As simply stated in their reply brief, respondents argue that the ‘801 patent specification 

teaches (but the claims do not require) calculating pseudoranges using only submillisecond 

measurements. They argue, among other things, that the term “submillisecond pseudoranges” 

168 

at GL-602 443. See Markman, 52 F.3d at 980 (prosecution history is "undisputed public record" 

of PTO proceedings and "is of primary significance in understanding the claims"). 

It should be noted that respondents' expert focused on a reading of the claims without 

reference to the prosecution history. See Heppe Tr. 2660-2661. His expert reports did not 

mention the file history. Heppe Tr. 3079-3080. Of course, claim construction requires 

consideration of the specification and file history. See Markman, 52 F.3d at 979-80. For 

example, without consulting the specification, one could not even know whether the claims 

should receive their ordinary meaning, or whether the patentee wishes to alert the reader that he 

intends to act his own lexicographer and impart a special meaning to a claim term. 

Consequently, the claim terms at issue are construed to refer only to situations in which 

the GPS receiver does not have absolute time information. 

Category (2): "wherein said pseudoranges are sub-millisecond pseudoranges" 

Complainants argue that claim 1 provides for pseudoranges that "estimate the range of the 

GPS receiver to a plurality of GPS satellites," and that claim 2 adds "wherein said pseudoranges 

are sub-millisecond pseudoranges." They argue that a person of ordinary skill in the art would 

understand claim 2, in the context of the other claims and the specification, to mean "wherein 

each pseudo range is composed of a measured submillisecond component and a calculated integer 

millisecond component, and wherein each pseudorange has a consistent common mode error." 

Compl. Br. at 196-97 (citing Pratt Tr. 1068). 

As simply stated in their reply brief, respondents argue that the '801 patent specification 

teaches (but the claims do not require) calculating pseudoranges using only submillisecond 

measurements. They argue, among other things, that the term "submillisecond pseudoranges" 

168 
does not cover submillisecond plus an integer, and that the “pseudolite embodiment” is captured 

by claim 2 without rewriting the claim. See Resp. Br. at 165- 1 69.57 

The Staff argues that complainants’ proposed construction is appropriate in view of the 

proper understanding of a pseudorange, and further that the proposed construction is consistent 

with the specification. See Staff Br. at 53. 

Claim 1 provides for pseudoranges that “estimate the range of the GPS receiver to a 

plurality of GPS satellites,” and that claim 2 adds “wherein said pseudoranges are sub-millisecond 

pseudoranges.” According to the testimony of complainant’s expert witness, a sub-millisecond 

pseudorange, such as that referred to in claim 2, does not estimate the range between a user and a 

satellite. Thus, one of ordinary skill would understand that “each the pseudoranges is composed 

of the measured submillisecond component and a calculated integer millisecond component,” also 

that the added limitation is that each pseudorange has to have “a consistent common mode error, a 

consistent receiver clock bias.” See Pratt Tr. 1 068.58 That interpretation of the claim appears 

reasonable from the perspective of one of ordinary skill. 

57 Pseudolites are a ground-based transmitters that are known to generate a PN code 

similar to a GPS signal. See JX-1 (‘801 patent), col. 12,ll. 1-13 . Respondents’ “pseudolite” 

argument is curious in view of their changing claim constructions. Respondents’ expert did not 

include this “pseudolite” claim construction in his expert reports, and he was precluded from 

presenting this new pseudolite claim construction at the hearing. See Heppe Tr. 2666-2672. 

Further, respondents’ pseudolite construction finds no support in the hearing record. See, e.g., 

Pratt Tr. 1305, 1367-1368. 

58 The testimony of complainants’ expert, also took into account the entire intrinsic 

record, including the specification and Figure 3, which disclose combining submillisecond 

measurements with calculated numbers of integer milliseconds to form full pseudoranges that 

have a consistent common bias. See JX-1 (‘801 patent) at col. 8,l. 15 - col. 9,l. 19, Fig. 3; Pratt 

Tr. 990-998 (“This is probably the most complicated part of the ‘801 patent. But it’s also the key 

to the means by which it operates.”). It did not appear that respondents’ expert took account of 

the specification, including Figure 3, or any other portion of the intrinsic record. 

169 

does not cover submillisecond plus an integer, and that the "pseudolite embodiment" is captured 

by claim 2 without rewriting the claim. See Resp. Br. at 165-169.57 

The Staff argues that complainants' proposed construction is appropriate in view of the 

proper understanding of a pseudorange, and further that the proposed construction is consistent 

with the specification. See StaffBr. at 53. 

Claim 1 provides for pseudoranges that "estimate the range of the GPS receiver to a 

plurality of GPS satellites," and that claim 2 adds "wherein said pseudoranges are sub-millisecond 

pseudoranges." According to the testimony of complainant's expert witness, a sub-millisecond 

pseudorange, such as that referred to in claim 2, does not estimate the range between a user and a 

satellite. Thus, one of ordinary skill would understand that "each the pseudoranges is composed 

of the measured submillisecond component and a calculated integer millisecond component," also 

that the added limitation is that each pseudorange has to have "a consistent common mode error, a 

consistent receiver clock bias." See Pratt Tr. 1068.58 That interpretation of the claim appears 

reasonable from the perspective of one of ordinary skill. 

57 Pseudo lites are a ground-based transmitters that are known to generate a PN code 

similar to a GPS signal. See JX-1 ('801 patent), col. 12,11. 1-13 . Respondents' "pseudolite" 

argument is curious in view of their changing claim constructions. Respondents' expert did not 

include this "pseudo lite" claim construction in his expert reports, and he was precluded from 

presenting this new pseudolite claim construction at the hearing. See Heppe Tr. 2666-2672. 

Further, respondents' pseudolite construction finds no support in the hearing record. See, e.g., 

Pratt Tr. 1305, 1367-1368. 

58 The testimony of complainants' expert, also took into account the entire intrinsic 

record, including the specification and Figure 3, which disclose combining submillisecond 

measurements with calculated numbers of integer milliseconds to form full pseudoranges that 

have a consistent cornmon bias. See JX-1 (' 80 1 patent) at col. 8, 1. 15 - col. 9, 1. 19, Fig. 3; Pratt 

Tr. 990-998 ("This is probably the most complicated part of the '801 patent. But it's also the key 

to the means by which it operates."). It did not appear that respondents' expert took account of 

the specification, including Figure 3, or any other portion ofthe intrinsic record. 

169 
By contrast, respondents’ positions with respect to the construction of claim 2 are 

inconsistent at best. In their brief, respondents argue that claim 2 “does not need to be construed” 

and should be given its “plain and ordinary meaning.” See Resp. at 165. Yet, at the hearing, their 

expert testified that claim 2 is “devoid of meaning.” See Heppe Tr. 2695-2697. By contrast, 

when SiRF’s principal software engineer was testifying at the hearing about alleged prior art, he 

testified that the phrase “sub-millisecond pseudorange” has a “traditional” meaning (which 

appears to be consistent with complainants’ proposed construction), and even specified that a 

pseudorange in which the submillisecond part is measured and the remaining part is “artificially 

constructed.” See Chansarkar Tr. 2220-222 1. That definition of a “sub-millisecond pseudorange” 

appears to coincide in part with that of complainants’ expert. However, the ‘801 patent is 

presumed to address an invention. 

The ‘801 patent purports to disclose a novel method of calculating a GPS receiver’s 

position without absolute time, and thus the specification of the ‘801 patent makes clear that the 

submillisecond pseudoranges used by the ‘801 patent must have a consistent common mode error. 

See JX-1 (‘801 Patent), col. 8,ll. 53-57 (“the common mode error will absorb any errors made in 

this integer, as long as exactly equal errors are made in all the other integers.” (emphasis 

added)); id. at col. 9,ll. 15-1 9 (“any expression may be used to compute these integers, provided 

the relationship to t, is consistently maintained for all the integers.” (emphasis added)). 

Consequently, the limitation “wherein said pseudoranges are sub-millisecond 

pseudoranges” in claim 2 is construed to mean “wherein each pseudorange is composed of a 

measured submillisecond component and a calculated integer millisecond component, and 

wherein each pseudorange has a consistent common mode error.” 

170 

By contrast, respondents' positions with respect to the construction of claim 2 are 

inconsistent at best. In their brief, respondents argue that claim 2 "does not need to be construed" 

and should be given its "plain and ordinary meaning." See Resp. at 165. Yet, at the hearing, their 

expert testified that claim 2 is "devoid of meaning." See Heppe Tr. 2695-2697. By contrast, 

when SiRF's principal software engineer was testifying at the hearing about alleged prior art, he 

testified that the phrase "sub-millisecond pseudorange" has a "traditional" meaning (which 

appears to be consistent with complainants' proposed construction), and even specified that a 

pseudorange in which the submillisecond part is measured and the remaining part is "artificially 

constructed." See Chansarkar Tr. 2220-2221. That definition of a "sub-millisecond pseudorange" 

appears to coincide in part with that of complainants' expert. However, the '801 patent is 

presumed to address an invention. 

The '801 patent purports to disclose a novel method of calculating a GPS receiver's 

position without absolute time, and thus the specification of the' 80 1 patent makes clear that the 

submillisecond pseudoranges used by the' 80 1 patent must have a consistent common mode error. 

See JX-1 ('801 Patent), col. 8,11.53-57 ("the common mode error will absorb any errors made in 

this integer, as long as exactly equal errors are made in all the other integers." (emphasis 

added)); id. at col. 9,11. 15-19 ("any expression may be used to compute these integers,provided 

the relationship to te is consistently maintained/or all the integers." (emphasis added)). 

Consequently, the limitation "wherein said pseudoranges are sub-millisecond 

pseudoranges" in claim 2 is construed to mean "wherein each pseudorange is composed of a 

measured submillisecond component and a calculated integer millisecond component, and 

wherein each pseudorange has a consistent common mode error." 

170 
€3. Infrinpement Determination 

Complainants argue that claims 1,2 and 1 1 of the ‘80 1 patent are infringed by the accused 

SiRF chips when operating the SiRFstarIII navigation software or the GSCi-4 100/4200 firmware. 

Furthermore, they allege that the chips directly infringe, and that respondents have engaged in 

induced and contributory infringement. See Compl. Br. at 201 -210. 

It is undisputed that respondents’ expert conceded infringement during the hearing that he 

only provided testimony concerning the validity question. He did not counter complainants’ 

evidence of infringement. See Heppe Tr. 3078. Furthemore, contrary to respondents’ argument 

that complainants nonetheless failed to set forth sufficient evidence of infringement (see Resp. Br. 

at 197-200), the record confirms Global Locate’s contention that the accused products have 

infringed the asserted claims. The Staff agrees and supports a finding of infringement. See Staff 

Br. at 56-58; Staff Reply at 10-1 1. 

During the hearing, complainants’ expert provided element-by-element analysis of the 

accused chips to show that they literally practices claims I, 2 and 1 1 of the ‘801 patent. See Pratt 

Tr. 1014-1089. Furthermore, the record shows that SiRF infringes through testing activity n the 

United States. See Pratt Tr. 1087-1089 (relying in evidence provided by SiRF personnel); 

JX-111-2C (Chen Tr.) at 85-87, 1 15-1 17. 

In addition, complainants argue induced and contributory infringement. For the reasons 

stated below, complainants’ arguments and citations to the record clearly established induced 

infringement by SiRF and the other respondents (MiTAC/Mio, E-TEN and Pharos), as proscribed 

in 35 U.S.C. §271(b). 

SiRF and the other respondents have had knowledge of the ‘801 patent at least since 

171 

B. Infringement Determination 

Complainants argue that claims 1, 2 and 11 of the' 80 1 patent are infringed by the accused 

SiRF chips when operating the SiRFstarIII navigation software or the GSCi-41 00/4200 firmware. 

Furthermore, they allege that the chips directly infringe, and that respondents have engaged in 

induced and contributory infringement. See Compl. Br. at 201-210. 

It is undisputed that respondents' expert conceded infringement during the hearing that he 

only provided testimony concerning the validity question. He did not counter complainants' 

evidence of infringement. See Heppe Tr. 3078. Furthermore, contrary to respondents' argument 

that complainants nonetheless failed to set forth sufficient evidence of infringement (see Resp. Br. 

at 197-200), the record confirms Global Locate's contention that the accused products have 

infringed the asserted claims. The Staff agrees and supports a finding of infringement. See Staff 

Br. at 56-58; Staff Reply at 10-11. 

During the hearing, complainants' expert provided element-by-element analysis of the 

accused chips to show that they literally practices claims 1, 2 and 11 of the' 80 1 patent. See Pratt 

Tr. 1014-1089. Furthermore, the record shows that SiRF infringes through testing activity n the 

United States. See Pratt Tr. 1087-1089 (relying in evidence provided by SiRF personnel); 

JX-111-2C (Chen Tr.) at 85-87, 115-117. 

In addition, complainants argue induced and contributory infringement. For the reasons 

stated below, complainants' arguments and citations to the record clearly established induced 

infringement by SiRF and the other respondents (MiTAC/Mio, E-TEN and Pharos), as proscribed 

in 35 U.S.C. §271(b). 

SiRF and the other respondents have had knowledge of the' 80 1 patent at least since 

171 
Global Locate filed its complaint with the International Trade Commission on March 30,2007, 

initiating this investigation. And since at least that date, SiRF and the other respondents have 

continued to actively induce infringement of the ‘801 patent. 

SiRF actively induces infi-ingement by marketing its chips and navigation software to 

makers of those products, by providing assistance in designing SiRF chips into such products, and 

by continuing to support the operation of the SiRF chips and software, knowing that when devices 

containing the SiRF chips are used, they will perform all of the steps of the asserted claims. See 

Pratt Tr. 1089-1093; CX-753C (summary of SiRF revenue, broken down by chip family). 

SiRF targets handset manufacturers (such as [ 1 and 

makers of personal navigation devices (such as [ ] for purchase 

of the accused SiRF chips and navigation software. See JX-111-2C (Huntingford Tr. ) at 94-96. 

SiRF also provides design assistance to OEMs developing products that use the accused SiRF 

chips and software. See JX- 1 1 1 -2C (Fudurich Tr.) at 70-71 , (discussing design reviews of 

customer schematics and board layout). Finally, once an OEM implements the accused SiRF 

chips and software into its products, SiRF continues to provide technical support to such OEMs 

regarding its chips and software. See id. at 71. 

In addition, SiRF encourages OEMs to market the use of SiRF chips and software in their 

end-user products as a distinguishing product feature. In order to ensure “greater recognition & 

differentiation in the market place,” SiRF offers its “SiRF Powered Program,” which encourages 

the use of SiRF designed artwork on “the face plate or other location on a product, during 

software application start up, within product literature, upon product packaging, on a website,” 

and through “advertising, direct mail, or catalogs.” CX-693C (“SiRF Powered Program 

172 

Global Locate filed its complaint with the International Trade Commission on March 30, 2007, 

initiating this investigation. And since at least that date, SiRF and the other respondents have 

continued to actively induce infringement of the '801 patent. 

SiRF actively induces infringement by marketing its chips and navigation software to 

makers of those products, by providing assistance in designing SiRF chips into such products, and 

by continuing to support the operation of the SiRF chips and software, knowing that when devices 

containing the SiRF chips are used, they will perform all of the steps of the asserted claims. See 

Pratt Tr. 1089-1093; CX-753C (summary ofSiRF revenue, broken down by chip family). 

SiRF targets handset manufacturers (such as [ 

makers of personal navigation devices (such as [ 

] and 

] for purchase 

of the accused SiRF chips and navigation software. See JX-111-2C (Huntingford Tr.) at 94-96. 

SiRF also provides design assistance to OEMs developing products that use the accused SiRF 

chips and software. See JX-III-2C (Fudurich Tr.) at 70-71, (discussing design reviews of 

customer schematics and board layout). Finally, once an OEM implements the accused SiRF 

chips and software into its products, SiRF continues to provide technical support to such OEMs 

regarding its chips and software. See id. at 71. 

In addition, SiRF encourages OEMs to market the use of SiRF chips and software in their 

end-user products as a distinguishing product feature. In order to ensure "greater recognition & 

differentiation in the market place," SiRF offers its "SiRF Powered Program," which encourages 

the use of SiRF designed artwork on "the face plate or other location on a product, during 

software application start up, within product literature, upon product packaging, on a website," 

and through "advertising, direct mail, or catalogs." CX-693C ("SiRF Powered Program 

172 
Guidelines”) at 602SiRF00136855; see Mayo Tr. 161 1-1612; JX-111-4C (Boeryd Tr.) at 136. 

MiTACMio, E-TEN, and Pharos induce infringement by actively marketing their GPS 

devices containing SiRF chips and software. See Pratt Tr. 1094-1 098 (discussing documentary 

evidence of marketing, user support, and technical support). See CX-602 (Where to Buy Mio 

Products); CX-608C (summary of Mio US sales to customers). MiTACMio, E-TEN, and Pharos 

also induce infringement by specifically encouraging and supporting the use of the GPS 

functionality. MITACMio, E-TEN and Pharos provide their customers with users manuals for 

their products incorporating the accused SiRF chips and software. See, e.g., JX-38C [Fu Tr.] 

(attached to JX-1 1 1-2C) at 129-130 (reviewing E-TEN M700 Users Manual). MiTACMio, ETEN, and Pharos also each provide their customers with technical support for their GPS devices 

containing the SiRF chips and software. See, e.g., JX-111-2C ( Lee Tr.) at 62-63, (discussing 

providing technical support in the United States); JX-111-2C (Feng Tr.) at 43, (technical support). 

Accordingly it is found that claims 1,2 and 1 1 of the ‘80 1 patent are literally and directly 

infringed by the accused, imported SiRF devices, and further that all respondents have indirectly 

infringed through inducing infringement. 

C. Validitv 

Respondents argue that the asserted claims are invalid on three grounds: (1) that the claims 

“recite non-statutory subject matter,” (2) the claims are not enabled under complainants’ proposed 

construction, and (3) that the claims are invalid due to anticipation. See Resp. Br. at 169- 197; 

Resp. Reply at 11 1-1 17. Respondents’ arguments are opposed by complainants and the Staff. See 

Compl. Br. at 209-34; Compl. Reply at 100-25; Staff Br. at 58; Staff Reply at 11-12. 

173 

Guidelines") at 602SiRF00136855; see Mayo Tr. 1611-1612; JX-III-4C (Boeryd Tr.) at 136. 

MiTAClMio, E-TEN, and Pharos induce infringement by actively marketing their GPS 

devices containing SiRF chips and software. See Pratt Tr. 1094-1098 (discussing documentary 

evidence of marketing, user support, and technical support). See CX-602 (Where to Buy Mio 

Products); CX-608C (summary ofMio US sales to customers). MiTAClMio, E-TEN, and Pharos 

also induce infringement by specifically encouraging and supporting the use of the GPS 

functionality. MITAClMio, E-TEN and Pharos provide their customers with users manuals for 

their products incorporating the accused SiRF chips and software. See, e.g., JX-38C [Fu Tr.] 

(attached to JX-111-2C) at 129-130 (reviewing E-TEN M700 Users Manual). MiTAClMio, ETEN, and Pharos also each provide their customers with technical support for their GPS devices 

containing the SiRF chips and software. See, e.g., JX-111-2C (Lee Tr.) at 62-63, (discussing 

providing technical support in the United States); JX-111-2C (Feng Tr.) at 43, (technical support). 

Accordingly it is found that claims 1, 2 and 11 of the' 80 1 patent are literally and directly 

infringed by the accused, imported SiRF devices, and further that all respondents have indirectly 

infringed through inducing infringement. 

C. Validity 

Respondents argue that the asserted claims are invalid on three grounds: (1) that the claims 

"recite non-statutory subject matter," (2) the claims are not enabled under complainants' proposed 

construction, and (3) that the claims are invalid due to anticipation. See Resp. Br. at 169-197; 

Resp. Reply at 111-117. Respondents' arguments are opposed by complainants and the Staff. See 

Compi. Br. at 209-34; Compi. Reply at 100-25; StaffBr. at 58; Staff Reply at 11-12. 

173 
1. Patentable Subiect Matter 

Respondents argue that the asserted claims of the ‘801 patent are not directed to patentable 

subject matter under 35 U.S.C. 0 101 and are thus invalid “because all the steps of the asserted 

claims merely involve providing inputs and carrying out a mathematical calculation.” Resp. Br. at 

169- 1 70. 

As stated above in the section on legal principles of general application (section 111), the 

subject matter that is patentable under the current Act is “extremely broad.” See Corniskey, 499 

F.3d at 1375. A mathematical algorithm is not patentable to the extent it presents “merely abstract 

ideas.” State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. 

Cir. 1998). Yet, a claim that transfonns data and presents a practical application of the algorithm 

is patentable if it produces a “useful, concrete and tangible result.” Id. Moreover, “a process 

claim reciting an algorithm could state statutory subject matter if it (1) is tied to a machine or (2) 

creates or involves a composition of matter or manufacture.” Corniskey, 499 F.3d at 1377. For 

example, the Federal Circuit has “found processes involving mathematical algorithms used in 

computer technology patentable because they claimed practical applications and were tied to 

specific machines.” Id. Under such applicable legal standard, the asserted claims of the ‘801 

patent recite patentable subject matter. 

For example, claim 1 calculates “an absolute position of a CPS receiver and an absolute 

time of reception of satellite signals.” JX-1 (‘801 Patent), col. 12,lI. 28-30 (preamble of claim 1); 

see also id. at col. 12,ll. 37-39 (final limitation, which recites “computing absolute position and 

absolute time . . .’7. The position and time of a GPS receiver are useful, concrete, and tangible 

results. See Corniskey, 499 F.3d at 1377 & n. 14 (noting patentability of claims that “determine the 

174 

1. Patentable Subject Matter 

Respondents argue that the asserted claims of the' 80 1 patent are not directed to patentable 

subject matter under 35 U.S.C. § 101 and are thus invalid "because all the steps of the asserted 

claims merely involve providing inputs and carrying out a mathematical calculation." Resp. Br. at 

169-170. 

As stated above in the section on legal principles of general application (section III), the 

subject matter that is patentable under the current Act is "extremely broad." See Comiskey, 499 

F.3d at 1375. A mathematical algorithm is not patentable to the extent it presents "merely abstract 

ideas." State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. 

Cir. 1998). Yet, a claim that transforms data and presents a practical application of the algorithm 

is patentable ifit produces a "useful, concrete and tangible result." Id. Moreover, "a process 

claim reciting an algorithm could state statutory subject matter if it (1) is tied to a machine or (2) 

creates or involves a composition of matter or manufacture." Comiskey, 499 F.3d at 1377. For 

example, the Federal Circuit has "found processes involving mathematical algorithms used in 

computer technology patentable because they claimed practical applications and were tied to 

specific machines." Id. Under such applicable legal standard, the asserted claims of the '801 

patent recite patentable subject matter. 

For example, claim 1 calculates "an absolute position of a GPS receiver and an absolute 

time of reception of satellite signals." JX-1 ('801 Patent), col. 12, II. 28-30 (preamble of claim 1); 

see also id. at col. 12,11. 37-39 (final limitation, which recites "computing absolute position and 

absolute time ... "). The position and time of a GPS receiver are useful, concrete, and tangible 

results. See Comiskey, 499 F.3d at 1377 & n.l4 (noting patentability of claims that "determine the 

174 
value of’ an indicator, transform data into a final share price, or analyze “electrocardiograph 

signals for the detection of a specific heart condition”). In addition, claim 1 is tied to a specific 

machine - a GPS receiver. See JX-1 (‘801 Patent), col. 12,ll. 28-30 (a method for calculating an 

absolute position “of a GPS receiver”), col. 12,ll. 3 1-32 (providing pseudoranges that estimate 

“the range of the GPS receiver to a plurality of GPS satellites”), col. 12,l. 35 (providing an 

estimate of a position “of the GPS receiver”), col. 12,11.37-38 (computing absolute position by 

updating the estimate of position ‘‘of the GPS receiver”). In fact, the only reasonable reading on 

claim 1 is that it is tied to GPS receiver, especially because pseudoranges (the distances or 

estimated distances between satellites and a GPS receiver) can exist only with respect to a 

particular GPS receiver that receives the satellite signals.59 

Accordingly, it is found that the asserted claims of the ‘801 patent recite patentable subject 

matter. 

2. Enablement 

Respondents argue that the ‘801 patent contains many mistakes, and that after the patent 

issued, an ineffective certificate of correction issued to correct four mistakes in the patent’s 

mathematical formulas, and yet two mistakes in the formulas still exist. Therefore, respondents 

argue, the asserted claims fail to satisfy the enablement requirement of 35 U.S.C. 5 112. See 

Resp. Br. at 176-177. 

Respondents’ argument relies primarily on attorney argument. An examination of the 

59 As discussed above, claim 1 of the ‘801 patent is necessarily tied to a particular 

apparatus, a GPS receiver. Further, the process is tied to the apparatus in a non-conventional 

way: it improves the operation of a GPS receiver because it solves for an additional unknown 

(absolute time) and unconventionally allows the receiver to calculate its position when it does not 

have absolute time. 

175 

value of' an indicator, transform data into a final share price, or analyze "electrocardiograph 

signals for the detection of a specific heart condition"). In addition, claim 1 is tied to a specific 

machine - a GPS receiver. See JX-I ('801 Patent), col. 12,11. 28-30 (a method for calculating an 

absolute position "of a GPS receiver"), col. 12,11.31-32 (providing pseudoranges that estimate 

"the range ofthe GPS receiver to a plurality of GPS satellites"), col. 12,1. 35 (providing an 

estimate of a position "of the GPS receiver"), col. 12,11.37-38 (computing absolute position by 

updating the estimate of position "of the GPS receiver"). In fact, the only reasonable reading on 

claim 1 is that it is tied to GPS receiver, especially because pseudoranges (the distances or 

estimated distances between satellites and a GPS receiver) can exist only with respect to a 

particular GPS receiver that receives the satellite signals.59 

Accordingly, it is found that the asserted claims of the '801 patent recite patentable subject 

matter. 

2. Enablement 

Respondents argue that the' 80 I patent contains many mistakes, and that after the patent 

issued, an ineffective certificate of correction issued to correct four mistakes in the patent's 

mathematical formulas, and yet two mistakes in the formulas still exist. Therefore, respondents 

argue, the asserted claims fail to satisfy the enablement requirement of35 U.S.C. § 112. See 

Resp. Br. at 176-177. 

Respondents' argument relies primarily on attorney argument. An examination of the 

59 As discussed above, claim 1 of the' 80 1 patent is necessarily tied to a particular 

apparatus, a GPS receiver. Further, the process is tied to the apparatus in a non-conventional 

way: it improves the operation of a GPS receiver because it solves for an additional unknown 

(absolute time) and unconventionally allows the receiver to calculate its position when it does not 

have absolute time. 

175 
record evidence concerning the ‘801 patent shows that a finding of lack of enablement would be 

disconnected f?om the realities of one of ordinary skill working in the GPS field. Further, such a 

finding is not mandated by law. 

In Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280 (Fed. Cir. 2000), a case 

relied upon by respondents, the Federal Circuit explained that in order to determine the 

enablement issue, it is necessary to analyze a patent with its mistakes and deterrnine whether the 

patent remains enabled. Id. at 1297. The enablement standard requires the disclosure to be 

sufficient to enable a person of ordinary skill in the art to practice the claimed invention. 

Lindemann Maschienfabrik v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 

1984). 

Here, the only record evidence shows that the clerical mistakes drafting in the equations at 

issue are “minor” and could be corrected by a person of ordinary skill in the art. See, e.g., Pratt 

Tr. 2916-2917.60 Consequently, a person of ordinary skill could make and use the invention. 

It has not been established, therefore, by clear and convincing evidence that the claims are 

invalid due to a lack of enablernent. 

3. Anticbation 

Respondents argue that the asserted claims of the ‘801 patent are invalid under 35 U.S.C. 

4 102 due to anticipation. In particular, they argue that the claims are anticipated by US. Patent 

No. 6,618,670 (the ‘670 patent”), entitled “Resolving Time Ambiguity in GPS Using 

6o Corrections to the equations were also made via a Certificate of Correction that is 

attached to the ‘801 patent. See JX-1 (‘801 Patent). The legal effectiveness of that certificate 

with respect to the enablement issue is a matter of dispute among the parties. Nevertheless, 

inasmuch as the errors are of no practical significance to one of ordinary skill, that issue need not 

be resolved. 

176 

record evidence concerning the' 80 1 patent shows that a finding of lack of enablement would be 

disconnected from the realities of one of ordinary skill working in the GPS field. Further, such a 

finding is not mandated by law. 

In Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280 (Fed. Cir. 2000), a case 

relied upon by respondents, the Federal Circuit explained that in order to determine the 

enablement issue, it is necessary to analyze a patent with its mistakes and determine whether the 

patent remains enabled. Id at 1297. The enablement standard requires the disclosure to be 

sufficient to enable a person of ordinary skill in the art to practice the claimed invention. 

Lindemann Maschienfabrik v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 

1984). 

Here, the only record evidence shows that the clerical mistakes drafting in the equations at 

issue are "minor" and could be corrected by a person of ordinary skill in the art. See, e.g., Pratt 

Tr. 2916-2917.60 Consequently, a person of ordinary skill could make and use the invention. 

It has not been established, therefore, by clear and convincing evidence that the claims are 

invalid due to a lack of enablement. 

3. Anticipation 

Respondents argue that the asserted claims of the '801 patent are invalid under 35 U.S.C. 

§ 102 due to anticipation. In particular, they argue that the claims are anticipated by U.S. Patent 

No. 6,618,670 (the '670 patent"), entitled "Resolving Time Ambiguity in GPS Using 

60 Corrections to the equations were also made via a Certificate of Correction that is 

attached to the '801 patent. See JX-1 ('801 Patent). The legal effectiveness of that certificate 

with respect to the enablement issue is a matter of dispute among the parties. Nevertheless, 

inasmuch as the errors are of no practical significance to one of ordinary skill, that issue need not 

be resolved. 

176 
Over-Determined Navigation Solution” (RX- 106), and by traditional GPS receivers as shown a 

1978 paper by Milliken and Zoller, entitled “Principle of Operation of NAVSTAR and System 

Characteristics” (RX-117). See Resp. Br. at 178- 197. 

As discussed below, it is not found that the ‘670 patent discloses the subject matter of the 

asserted claims of the ‘801 patent because the key algorithm disclosed in the ‘670 patent does not 

work; the SiRF Overdetermination Procedure (allegedly disclosed in the ‘670 patent) does not 

have priority over the invention of the ‘801 patent; and the article by Miller and Zoller does not 

anticipate any asserted claim of the ‘801 patent because it is a nearly 30-year old article that is 

based on the former global positioning system over which the ‘801 patent is an improvement. 

The 670 Patent Does Not Disclose the Subject Matter of the 

Asserted Claims 

The algorithm disclosed in the ‘670 patent to SiW’s Dr. Chansarkar attempts to solve just 

one part of the “time-free” problem that Dr. van Diggelen solved completely in April 2000, and 

disclosed in the asserted claims of the ‘801 patent. As demonstrated at the hearing, the ‘670 

patent does not meet its more modest goal. 

In particular, the ‘670 patent specification discloses a two-step algorithm to compute a 

GPS receiver’s position. The patent refers to this procedure as an “Overdetermination 

Procedure.” RX-106 (‘670 patent), col. 4,l. 62. The disclosure of the entire overdetermination 

procedure consumes less than a column of the patent (see RX-106 (‘670 patent),col. 4,l. 63 - 

col. 5,l. 47), and it is not covered in the claims of the ‘670 patent (see id. col. 6,ll. 28-45). 

The overdetermination procedure described in the ‘670 patent specification involves the 

calculation of a ATvariable used to determine absolute time. RX-106 (‘670 Patent), col. 5,l. 10. 

177 

Over-Determined Navigation Solution" (RX-l 06), and by traditional GPS receivers as shown a 

1978 paper by Milliken and Zoller, entitled "Principle of Operation ofNA VSTAR and System 

Characteristics" (RX-117). See Resp. Br. at 178-197. 

As discussed below, it is not found that the '670 patent discloses the subject matter ofthe 

asserted claims of the '801 patent because the key algorithm disclosed in the '670 patent does not 

work; the SiRF Overdetermination Procedure (allegedly disclosed in the '670 patent) does not 

have priority over the invention of the' 80 1 patent; and the article by Miller and Zoller does not 

anticipate any asserted claim ofthe '801 patent because it is a nearly 30-year old article that is 

based on the former global positioning system over which the' 80 1 patent is an improvement. 

The 670 Patent Does Not Disclose the Subject Matter of the 

Asserted Claims 

The algorithm disclosed in the '670 patent to SiRF's Dr. Chansarkar attempts to solve just 

one part of the "time-free" problem that Dr. van Diggelen solved completely in April 2000, and 

disclosed in the asserted claims ofthe '801 patent. As demonstrated at the hearing, the '670 

patent does not meet its more modest goal. 

In particular, the '670 patent specification discloses a two-step algorithm to compute a 

GPS receiver's position. The patent refers to this procedure as an "Overdetermination 

Procedure." RX-106 ('670 patent), col. 4, 1. 62. The disclosure of the entire overdetermination 

procedure consumes less than a column ofthe patent (see RX-I06 ('670 patent),co1. 4, 1. 63 -

col. 5,1. 47), and it is not covered in the claims ofthe '670 patent (see id. col. 6,11. 28-45). 

The overdetermination procedure described in the '670 patent specification involves the 

calculation of a ilT variable used to determine absolute time. RX-I06 ('670 Patent), col. 5, 1. 10. 

177 
The specification of the ‘670 patent recognizes that without accurate absolute time information, an 

ordinary four-state GPS receiver with only four measurements will fail because the receiver will 

not be able to place the satellites in their proper locations. See RX-106 (‘670 patent), col. 2, 

11. 46-56. 

The overdetermination procedure of the ’670 patent appears to begin by using 

pseudoranges to compute “user position and clock bias” according to an ordinary four-state 

algorithm. See RX-106 (‘670 patent) at col. 5,ll. 3-5 (“Let Pr, be the pseudorange for the ith 

satellite. Let (X, Y, 2, and B) be the computed user position and clock bias, respectively.”). The 

process then appears to involve the use of an extra measurement (presumably a fifth satellite 

pseudorange measurement) to calculate a residual (2,) for each satellite. See id. at col. 5,ll. 6-12. 

The residual is the difference between the measured pseudorange (Pr,) and an expected 

pseudorange. 

The ‘670 patent ultimately discloses the following key equation for calculating AT 

where 

R, = Geometric Range to the ith satellite from the estimated user location. 

SVV, = Speed of the i“ GPS satellite. 

LOSV, = Line of sight speed of the ith GPS satellite based on the estimated user 

location. 

RX-106 (‘670 Patent), col. 5,ll. 29-37. 

After calculating AT, the overdetermination procedure appears to require using that value 

to increment the estimated time, using the new estimated time as the basis for another ordinary 

four-state (four-satellite) position computation, and then repeating the entire process iteratively 

until the residuals are sufficiently small that the process has yielded a converged time and position 

solution. See RX-106 (‘670 patent) at col. 5,ll. 44-47 (“[Tlhis procedure must be recursively 

178 

The specification of the '670 patent recognizes that without accurate absolute time information, an 

ordinary four-state GPS receiver with only four measurements will fail because the receiver will 

not be able to place the satellites in their proper locations. See RX-106 ('670 patent), col. 2, 

11.46-56. 

The overdetermination procedure of the' 670 patent appears to begin by using 

pseudoranges to compute "user position and clock bias" according to an ordinary four-state 

algorithm. See RX-106 ('670 patent) at col. 5, 11. 3-5 ("Let Pri be the pseudorange for the ith 

satellite. Let (X, Y, Z and B) be the computed user position and clock bias, respectively."). The 

process then appears to involve the use of an extra measurement (presumably a fifth satellite 

pseudorange measurement) to calculate a residual (Z) for each satellite. See id. at col. 5,11.6-12. 

The residual is the difference between the measured pseudorange (Pr) and an expected 

pseudorange. 

The '670 patent ultimately discloses the following key equation for calculating !1T: 

where 

R; = Geometric Range to the ith satellite from the estimated user location. 

SVVj = Speed of the ith GPS satellite. 

LOSVj = Line of sight speed of the ith GPS satellite based on the estimated user 

location. 

RX-106 ('670 Patent), col. 5,11.29-37. 

After calculating !1T, the overdetermination procedure appears to require using that value 

to increment the estimated time, using the new estimated time as the basis for another ordinary 

four-state (four-satellite) position computation, and then repeating the entire process iteratively 

until the residuals are sufficiently small that the process has yielded a converged time and position 

solution. See RX-106 ('670 patent) at col. 5,11.44-47 ("[T]his procedure must be recursively 

178 
performed to refine the time and position estimate till consecutive solutions are within acceptable 

errors with respect to one another.”). 

However, from the beginning SiRF had difficulties with the algorithm in its provisional 

patent application. Even after the provisional application was filed, Dr. Chansarkar and SiRF had 

to make multiple revisions to the algorithm. When SiRF finally did get an Over Determination 

Procedure to work in at least some situations, the equations looked nothing like the equations in 

the provisional patent and it was long after the ‘801 patent had been conceived and reduced to 

practice. See Chansarkar Tr. 2302-23 16. 

Prior art that is inoperable cannot invalidate a later invention. See United States v. Adums, 

383 U.S. 39, 50 (1966). Such is the case here. Complainants’ expert was unequivocal in his 

hearing testimony that the SiRF algorithm “doesn’t work.” Pratt Tr. 2852. At the hearing, 

respondents’ expert offered no contradictory opinion. In fact, it appears that respondents’ expert 

understood the “concerns” that one would have with the algorithm, and in fact expressed 

skepticism about it. See Heppe Tr. 2702,2705 (“it would be difficult to state unequivocally that it 

would converge [to a solution] .”). 

As complainants’ expert explained at the hearing, one of ordinary skill immediately 

observes a problem with the overdetermination procedure of the ‘670 patent in that the formula 

for calculating AT does not use any actual measurement data. See Pratt Tr. 2852. The AT variable 

is supposed to update and refine the initial estimate of absolute time for use during the next, 

iterative step of the position computation. However, the inputs for the AT equation -the R,, 

LOSV,, and SW, terms - are each calculated without any reference to the pseudorange 

measurements or residuals. As explained at the hearing, without any measurement data to 

179 

performed to refine the time and position estimate till consecutive solutions are within acceptable 

errors with respect to one another."). 

However, from the beginning SiRF had difficulties with the algorithm in its provisional 

patent application. Even after the provisional application was filed, Dr. Chansarkar and SiRF had 

to make multiple revisions to the algorithm. When SiRF finally did get an Over Determination 

Procedure to work in at least some situations, the equations looked nothing like the equations in 

the provisional patent and it was long after the' 80 1 patent had been conceived and reduced to 

practice. See Chansarkar Tr. 2302-2316. 

Prior art that is inoperable cannot invalidate a later invention. See United States v. Adams, 

383 U.S. 39, 50 (1966). Such is the case here. Complainants' expert was unequivocal in his 

hearing testimony that the SiRF algorithm "doesn't work." Pratt Tr. 2852. At the hearing, 

respondents' expert offered no contradictory opinion. In fact, it appears that respondents' expert 

understood the "concerns" that one would have with the algorithm, and in fact expressed 

skepticism about it. See Heppe Tr. 2702, 2705 ("it would be difficult to state unequivocally that it 

would converge [to a solution]."). 

As complainants' expert explained at the hearing, one of ordinary skill immediately 

observes a problem with the overdetermination procedure of the '670 patent in that the formula 

for ca:lculating b.T does not use any actual measurement data. See Pratt Tr. 2852. The b.T variable 

is supposed to update and refine the initial estimate of absolute time for use during the next, 

iterative step of the position computation. However, the inputs for the b.T equation - the Ri

, 

LOSVi

, and S~ terms - are each calculated without any reference to the pseudorange 

measurements or residuals. As explained at the hearing, without any measurement data to 

179 
improve the estimation as the algorithm iterates, the algorithm will not work. See Pratt Tr. 2853. 

Consequently, the ‘670 patent cannot anticipate any asserted claim of the ‘801 patent. In 

addition, even if the algorithm of the ‘670 patent were operable, the patent could not render 

claim 11 invalid for the reasons discussed below. 

Respondents’ expert, Dr. Heppe, argued at the hearing that claim 11 (in addition to 

claim 1) is anticipated by the overdetermination procedure. See Heppe Tr. 2697. Citing a small 

section of the ‘670 specification (see RX-106 (‘670 Patent), col. 6,11. 1-9), Dr. Heppe argued that 

claim 11 is anticipated because the ‘670 patent suggests that one could use a highly accurate clock 

to allow other variables to be determined. Claim 1 1, however, depends ultimately from claim 1 , 

and as explained in the claim construction section, claim 1 requires the computation of position 

without having absolute time information. A “highly-accurate clock” would provide precisely that 

information. Further, claim 11 depends from claim 4, which requires that the “estimate of 

absolute time is provided by a clock that is not linked to a GPS reference time.” JX-1 (‘801 

Patent), col. 12,ll. 46-48 (emphasis added). The ‘670 patent cannot, therefore, anticipate 

claim 11. 

The ‘670 Patent Is Not Prior Art 

Even assuming that the SiRF Overdetermination Procedure (which was allegedly 

encompassed by the ‘670 patent to SiRF’s Dr. Chansarkar) did disclose the limitations of one or 

more of the claims of the ‘801 patent, it still could not anticipate because it does not have priority 

over the ‘801 patent. Under tj 102(g), “priority of invention goes to the first party to reduce an 

invention to practice unless the other party can show that it was the first to conceive the invention 

and that it exercised reasonable diligence in later reducing that invention to practice.” Monsanto 

180 

improve the estimation as the algorithm iterates, the algorithm will not work. See Pratt Tr. 2853. 

Consequently, the '670 patent cannot anticipate any asserted claim of the '801 patent. In 

addition, even if the algorithm ofthe '670 patent were operable, the patent could not render 

claim 11 invalid for the reasons discussed below. 

Respondents' expert, Dr. Heppe, argued at the hearing that claim 11 (in addition to 

claim 1) is anticipated by the overdetermination procedure. See Heppe Tr. 2697. Citing a small 

section of the '670 specification (see RX-I06 ('670 Patent), col. 6, 11. 1-9), Dr. Heppe argued that 

claim 11 is anticipated because the '670 patent suggests that one could use a highly accurate clock 

to allow other variables to be determined. Claim 11, however, depends ultimately from claim 1, 

and as explained in the claim construction section, claim 1 requires the computation of position 

without having absolute time information. A "highly-accurate clock" would provide precisely that 

information. Further, claim 11 depends from claim 4, which requires that the "estimate of 

absolute time is provided by a clock that is not linked to a GPS reference time." JX-1 ('801 

Patent), col. 12,11.46-48 (emphasis added). The '670 patent cannot, therefore, anticipate 

claim 11. 

The '670 Patent Is Not Prior Art 

Even assuming that the SiRF Overdetermination Procedure (which was allegedly 

encompassed by the '670 patent to SiRF's Dr. Chansarkar) did disclose the limitations of one or 

more of the claims of the' 80 1 patent, it still could not anticipate because it does not have priority 

over the' 80 1 patent. Under § 102(g), "priority of invention goes to the first party to reduce an 

invention to practice unless the other party can show that it was the first to conceive the invention 

and that it exercised reasonable diligence in later reducing that invention to practice." Monsanto 

180 
Co. v. Mycogen Plant Science, Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001) (quoting Mahurkar v. 

C. R. Bard, Inc. , 79 F.3d 1572, 1577 (Fed. Cir. 1996)). “Thus, a showing of diligence is necessary 

for a party who was first to conceive but second to reduce to practice. The time period for which 

diligence must be shown by the party first to conceive is ‘from a date just prior to the other party’s 

conception to ... [the date of] reduction to practice [by the party first to conceive].’” Monsanto, 

261 F.3d at 1362-63 (quoting Mahurkar, 79 F.3d at 1578). 

The provisional application for the ‘670 patent (RX-3 1) was filed on September 15,2000, 

two months before the date of the ‘801 patent application (November 17,2000). The ‘801 patent, 

however, was conceived in April 2000. There is clear evidence for that date of conception 

(including dated notes and sworn, corroborated testimony from the inventor) and clear evidence 

for a reduction to practice by no later than June 2000, as discussed below. By contrast, there is no 

sufficient, corroborated evidence that Dr. Chansarkar conceived of, reduced to practice, or 

exercised diligence towards reducing to practice the overdetermination procedure at any time prior 

to the filing of the provisional patent application in September 2000. 

Dr. van Diggelen offered clear, uncontradicted testimony that he conceived the ‘801 patent 

in April 2000. See van Diggelen Tr. 99-106,118-125. Dr. van Diggelen explained that the task 

of figuring out how a GPS receiver could determine its position without knowing absolute time 

was thrust upon him within days after he joined Global Locate in April 2000. Global Locate had 

planned to build a simpler GPS receiver that would not decode the Navigation Message. van 

Diggelen Tr. 66. At an April 6,2000, meeting with scientists from [ 

] scientists told Global Locate that it would be “impossible” for a receiver to 

compute position without reading the Navigation Message. van Diggelen Tr. 99; CX-79C (van 

181 

Co. v. Mycogen Plant Science, Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001) (quoting Mahurkar v. 

CR. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996)). "Thus, a showing of diligence is necessary 

for a party who was first to conceive but second to reduce to practice. The time period for which 

diligence must be shown by the party first to conceive is 'from a date just prior to the other party's 

conception to ... [the date of] reduction to practice [by the party first to conceive].'" Monsanto, 

261 F.3d at 1362-63 (quoting Mahurkar, 79 F.3d at 1578). 

The provisional application for the '670 patent (RX-31) was filed on September 15,2000, 

two months before the date of the '801 patent application (November 17,2000). The '801 patent, 

however, was conceived in April 2000. There is clear evidence for that date of conception 

(including dated notes and sworn, corroborated testimony from the inventor) and clear evidence 

for a reduction to practice by no later than June 2000, as discussed below. By contrast, there is no 

sufficient, corroborated evidence that Dr. Chansarkar conceived of, reduced to practice, or 

exercised diligence towards reducing to practice the overdetermination procedure at any time prior 

to the filing of the provisional patent application in September 2000. 

Dr. van Diggelen offered clear, uncontradicted testimony that he conceived the '801 patent 

in April 2000. See van Diggelen Tr. 99-106, 118-125'. Dr. van Diggelen explained that the task 

of figuring out how a GPS receiver could determine its position without knowing absolute time 

was thrust upon him within days after he joined Global Locate in April 2000. Global Locate had 

planned to build a simpler GPS receiver that would not decode the Navigation Message. van 

Diggelen Tr. 66. At an April 6, 2000, meeting with scientists from [ 

] scientists told Global Locate that it would be "impossible" for a receiver to 

compute position without reading the Navigation Message. van Diggelen Tr. 99; CX-79C (van 

181 
Diggelen notes from April 6,2000, [ ] meeting) at GL-602 119214. 

Dr. van Diggelen spent the next several days trying to develop a solution to the problem, 

ultimately succeeding and producing a set of so-called “alchemy engine” equations on large 

“Post-it” notes that he hung on the wall in his office. CX-82C (van Diggelen notes) at GL-602 

10066; CX-83C (van Diggelen notes) at GL-602 10068; van Diggelen Tr. 1 18-124. When van 

Diggelen completed the notes, he wrote the date on them - April 1 1,2000. See van Diggelen 

Tr. 122-123,403. Those notes were witnessed on Dr. van Diggelen’s wall by Charles Abraham in 

April 2000. See Abraham Tr. 3213-3214. 

As complainant’s expert, Dr. Pratt, and inventor van Diggelen explained, these notes show 

all of the elements of claim 1 of the ‘801 invention. See van Diggelen Tr. 120; Pratt Tr. 2865- 

2870. They show the extension of the standard four-state model to include an extra unknown - 

the absolute time error (“dts”) - in a five-state matrix solution. CX-82C at GL-602 10066; 

CX-83C at GL-602 10068; van Diggelen Tr. 12 1-1 22. They reflect the provision of 

pseudoranges, the use of estimates of position and time, the use of ephemeris data, and the 

computation of position and time by updating the initial estimates. See Pratt Tr. 2865-2870; van 

Diggelen Tr. 120. 

It is also clear that Dr. van Diggelen conceived of claim 2 and reduced to practice claims 1 

and 2 no later than June 2000. Dr. van Diggelen and Charles Abraham testified regarding a 

June 15,2000 email from Dr. Van Diggelen. CX-108C (June 15,2000 email from van Diggelen) 

at GL-602 73188-93; van Diggelen Tr. 134-136; Abraham Tr. 3206. The email shows [ 

] and the email shows [ 

] CX-108C at GL-602 73190. The 

182 

Diggelen notes from April 6, 2000, [ ] meeting) at GL-602 119214. 

Dr. van Diggelen spent the next several days trying to develop a solution to the problem, 

ultimately succeeding and producing a set of so-called "alchemy engine" equations on large 

"Post-it" notes that he hung on the wall in his office. CX-82C (van Diggelen notes) at GL-602 

10066; CX-83C (van Diggelen notes) at GL-602 10068; van Diggelen Tr. 118-124. When van 

Diggelen completed the notes, he wrote the date on them April 11,2000. See van Diggelen 

Tr. 122-123,403. Those notes were witnessed on Dr. van Diggelen's wall by Charles Abraham in 

April 2000. See Abraham Tr. 3213-3214. 

As complainant's expert, Dr. Pratt, and inventor van Diggelen explained, these notes show 

all of the elements of claim 1 ofthe '801 invention. See van Diggelen Tr. 120; Pratt Tr. 2865-

2870. They show the extension of the standard four-state model to include an extra unknownthe absolute time error ("dts") - in a five-state matrix solution. CX-82C at GL-602 10066; 

CX-83C at GL-602 10068; van Diggelen Tr. 121-122. They reflect the provision of 

pseudoranges, the use of estimates of position and time, the use of ephemeris data, and the 

computation of position and time by updating the initial estimates. See Pratt Tr. 2865-2870; van 

Diggelen Tr. 120. 

It is also clear that Dr. van Diggelen conceived of claim 2 and reduced to practice claims 1 

and 2 no later than June 2000. Dr. van Diggelen and Charles Abraham testified regarding a 

June 15,2000 email from Dr. Van Diggelen. CX-108C (June 15,2000 email from van Diggelen) 

at GL-602 73188-93; van Diggelen Tr. 134-136; Abraham Tr. 3206. The email shows [ 

] and the email shows [ 

] CX-108C at GL-602 73190. The 

182 
position was calculated with MATLAB computer code using “actual sub-millisecond 

measurements from the GPS satellites” collected by a Global Locate GPS receiver referred to as 

the “recorder-player.” van Diggelen Tr. 134-1 35; see also id. at 75-76, 136; Pratt Tr. 2871 -2872. 

After the June 15,2000, successful calculation of position, Global Locate worked to 

implement the “alchemy engine” equations in C++ source code that could be used in an actual 

product. See van Diggelen Tr. 137. Both Dr. van Diggelen and Dr. Pratt testified regarding a 

piece of Global Locate C++ source code [ 

dated July 12,2000). 

] See CX-200C (GL source code 

Dr. van Diggelen testified that the code was written by Phong Van at Global Locate in 

[ 

being [ 

88965. Both Dr. van Diggelen and Dr. Pratt testified that the source code showed [ 

] van Diggelen Tr. 139- 140,409-4 13. The source code contains repeated references to 

] See CX-200C (Source Code) at GL-602 88955,88959, 

] See Pratt Tr. 2872-2875; van 

Diggelen Tr. 140; CX-200C (GL source code dated [ 

[ 

1) at GL-602 88962-63 

] The source code also shows [ 

3 as required by claim 11 of the 

‘801 patent. See Pratt Tr. 2875; CX-200C (GL source code dated [ 1) at GL-602 

88967-68. 

In contrast to the detailed, documentary and corroborated evidence presented by 

complainants regarding the conception and reduction to practice of the ‘801 patent, the evidence 

183 

position was calculated with MATLAB computer code using "actual sub-millisecond 

measurements from the GPS satellites" collected by a Global Locate GPS receiver referred to as 

the "recorder-player." van Diggelen Tr. 134-135; see also id. at 75-76, 136; Pratt Tr. 2871-2872. 

After the June 15, 2000, successful calculation of position, Global Locate worked to 

implement the "alchemy engine" equations in C++ source code that could be used in an actual 

product. See van Diggelen Tr. 137. Both Dr. van Diggelen and Dr. Pratt testified regarding a 

piece of Global Locate C++ source code [ 

dated July 12,2000). 

] See CX-200C (GL source code 

Dr. van Diggelen testified that the code was written by Phong Van at Global Locate in 

[ 

being [ 

van Diggelen Tr. 139-140,409-413. The source code contains repeated references to 

] See CX-200C (Source Code) at GL-602 88955, 88959, 

88965. Both Dr. van Diggelen and Dr. Pratt testified that the source code showed [ 

Diggelen Tr. 140; CX-200C (GL source code dated [ 

[ 

] See Pratt Tr. 2872-2875; van 

]) at GL-602 88962-63 

The source code also shows [ 

] as required by claim 11 of the 

'801 patent. See Pratt Tr. 2875; CX-200C (GL source code dated [ 

88967-68. 

]) at GL-602 

In contrast to the detailed, documentary and corroborated evidence presented by 

complainants regarding the conception and reduction to practice of the' 80 1 patent, the evidence 

183 
presented by respondents is vague and uncorroborated. Respondents’ evidence fails to establish 

the priority of the SiRF overdetermination procedure over the ‘801 patent. 

First, there is insufficient evidence of conception of the ‘670 patent’s overdetermination 

procedure prior to the April 2000 conception of the ‘801 patent. Conception requires a “definite 

and permanent idea of the complete and operative invention,” Cooper v. Goidfarb, 154 F.3d 132 1, 

1327 (Fed. Cir. 1998). Conception is complete “only when the idea is so clearly defined in the 

inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, 

without extensive research or experimentation.” Burroughs WeZEcome Co. v. Barr Lab., 40 F.3d 

1223, 1228 (Fed. Cir. 1994). While reasonable experimentation does not preclude conception, 

conception will not be found when “the subsequent course of experimentation, especially 

experimental failures, reveals uncertainty that so undermines the specificity of the inventor’s idea 

that it is not yet a definite and permanent reflection of the complete invention as it will be used in 

practice.” Id. at 1229. 

Respondents rely on an April 12, 1999, email (RX-31) that is largely identical to the 

disclosure of the overdetermination procedure in the ‘670 patent specification as its proof of 

conception. Yet, as explained in detail above, the equations in that email (and in the ‘670 patent 

specification) do not work. Dr. Pratt’s opinion that the algorithm would not work explains the 

later testing and multiple modifications of the two-step algorithm by SiRF engineers (in December 

2000, and January 2001). That testing - and resulting modifications - shows that, in April 1999, 

Dr. Chansarkar did not have a “definite and permanent idea of the complete and operative 

invention.” See Cooper, 154 F.3d at 1327. In the words of the Federal Circuit, “the subsequent 

course of experimentation, especially [the] experimental failures, reveal[ed] uncertainty that so 

184 

presented by respondents is vague and uncorroborated. Respondents' evidence fails to establish 

the priority of the SiRF overdetermination procedure over the' 80 1 patent. 

First, there is insufficient evidence of conception ofthe '670 patent's overdetermination 

procedure prior to the April 2000 conception of the' 80 1 patent. Conception requires a "definite 

and permanent idea of the complete and operative invention," Cooper v. Goldfarb, 154 F.3d 1321, 

1327 (Fed. Cir. 1998). Conception is complete "only when the idea is so clearly defined in the 

inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, 

without extensive research or experimentation." Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 

1223, 1228 (Fed. Cir. 1994). While reasonable experimentation does not preclude conception, 

conception will not be found when "the subsequent course of experimentation, especially 

experimental failures, reveals uncertainty that so undermines the specificity of the inventor's idea 

that it is not yet a definite and permanent reflection of the complete invention as it will be used in 

practice." ld. at 1229. 

Respondents rely on an April 12, 1999, email (RX-31) that is largely identical to the 

disclosure of the overdetermination procedure in the '670 patent specification as its proof of 

conception. Yet, as explained in detail above, the equations in that email (and in the '670 patent 

specification) do not work. Dr. Pratt's opinion that the algorithm would not work explains the 

later testing and multiple modifications of the two-step algorithm by SiRF engineers (in December 

2000, and January 2001). That testing - and resulting modifications - shows that, in April 1999, 

Dr. Chansarkar did not have a "definite and permanent idea of the complete and operative 

invention." See Cooper, 154 F.3d at 1327. In the words of the Federal Circuit, "the subsequent 

course of experimentation, especially [the] experimental failures, reveal [ ed] uncertainty that so 

184 
undermines the specificity of the inventor’s idea that it [was] not yet a definite and permanent 

reflection of the complete invention as it will be used in practice.” See Burroughs Wellcome Co. 

at 1229. Indeed, the two-step algorithm was never “used in practice,” because SiRF abandoned 

the idea and never implemented any form of the two-step algorithm in any SiRF navigation 

library. 

Second, there is no corroborating evidence that SiW reduced the overdetermination 

procedure to practice prior to the conception of the ‘801 patent in April 2000, or that SiRF 

exercised diligence from before that conception through reduction to practice. SiRF has never 

presented any document showing any simulation of the equations in the April 1999, email or the 

‘670 patent prior to the testing in December 2000, that showed those equations not to work. 

Former SiRF employee Lionel Garin asserted that he saw the results of simulations 

conducted by Dr. Chansarkar in 1999 and that they were “successful.” Garin Tr. 1868. On 

cross-examination, Garin stated that “I think I might have done it myself.” Garin Tr. 19 17. Garin 

provided no documents to corroborate his testimony. Garin also provided no details regarding 

what formulas were tested, what data were used, or how pseudoranges were constructed. 

The only other evidence SiRF presented to attempt to show a reduction to practice was a 

draft Engineering Requirements Document (ERD) dated August 3, 1999 (Rx-343), which, 

according to Dr. Chansarkar, contained a reference to his overdetermination procedure. See 

Chansarkar Tr. 21 53-2158. Dr. Chansarkar testified that the document specified the engineering 

requirements for a SiRF product then in development, SiRFLoc. Chansarkar Tr. 21 54. 

Dr. Chansarkar testified that “[plrior to any requirements being written into a formal engineering 

requirements document, they have to be evaluated, analyzed and simulated,” and that “[flor the 

185 

undermines the specificity of the inventor's idea that it [was] not yet a definite and permanent 

reflection of the complete invention as it will be used in practice." See Burroughs Wellcome Co. 

at 1229. Indeed, the two-step algorithm was never "used in practice," because SiRF abandoned 

the idea and never implemented any form ofthe two-step algorithm in any SiRF navigation 

library. 

Second, there is no corroborating evidence that SiRF reduced the overdetermination 

procedure to practice prior to the conception of the '801 patent in April 2000, or that SiRF 

exercised diligence from before that conception through reduction to practice. SiRF has never 

presented any document showing any simulation of the equations in the April 1999, email or the 

'670 patent prior to the testing in December 2000, that showed those equations not to work. 

Former SiRF employee Lionel Garin asserted that he saw the results of simulations 

conducted by Dr. Chansarkar in 1999 and that they were "successful." Garin Tr. 1868. On 

cross-examination, Garin stated that "I think I might have done it myself." Garin Tr. 1917. Garin 

provided no documents to corroborate his testimony. Garin also provided no details regarding 

what formulas were tested, what data were used, or how pseudoranges were constructed. 

The only other evidence SiRF presented to attempt to show a reduction to practice was a 

draft Engineering Requirements Document (ERD) dated August 3, 1999 (RX-343), which, 

according to Dr. Chansarkar, contained a reference to his overdetermination procedure. See 

Chansarkar Tr. 2153-2158. Dr. Chansarkar testified that the document specified the engineering 

requirements for a SiRF product then in development, SiRFLoc. Chansarkar Tr. 2154. 

Dr. Chansarkar testified that "[p ]rior to any requirements being written into a formal engineering 

requirements document, they have to be evaluated, analyzed and simulated," and that "[ f]or the 

185 
concept of sync-free nav there was a simulation done before writing” the draft ERD. Chansarkar 

Tr. 2155. 

However, Dr. Chansarkar, like Garin, produced no such simulation and provided no 

details regarding the alleged simulation. He did not specie when the simulation occurred, who 

was involved, what formulas were tested, or what measurements were used. Dr. Chansarkar also 

could point to no document or written policy to support his assertion that simulations had to occur 

before requirements could be written into a formal engineering requirements document. 

Chansarkar Tr. 23 17-23 1. In any event, the SiRFLoc engineering document was still in draft form 

more than a year later. See CX-847C; Chansarakar Tr. 23 18- 23 19. Further, Dr. Chansarkar 

admitted that sync-free navigation was not actually implemented in SiRFLoc software for another 

three years after that. Chansarkar Tr. 23 19-2320. 

Finally, the uncorroborated assertion that SiRF conducted a simulation of the 

Overdetermination Procedure in 1999 is belied by the fact that, when SiRF undisputedly did test 

the ‘670 algorithm in 2000, SiRF engineers quickly realized the equations did not work and had to 

alter the equations not just once, but at least twice. If SiW engineers had tested the equations in 

1999, they would have discovered the same thing, and presumably Dr. Chansarkar would not have 

included in the September 2000 provisional patent application the same (inoperable) equations 

that he initially developed 17 months earlier in the April 1999 email (RX-3 1 C). 

“While a patentee may have the burden of going forward with rebuttal evidence once a 

challenger has presented aprima facie case of invalidity, the presumption of validity remains 

intact and the ultimate burden of proving invalidity remains with the challenger throughout the 

litigation.” Innovative Scuba Concepts, Inc. v. Feder Industries, Inc. 26 F.3d 1 112, 11 15 (Fed. 

186 

concept of sync-free nav there was a simulation done before writing" the draft ERD. Chansarkar 

Tr. 2155. 

However, Dr. Chansarkar, like Garin, produced no such simulation and provided no 

details regarding the alleged simulation. He did not specify when the simulation occurred, who 

was involved, what formulas were tested, or what measurements were used. Dr. Chansarkar also 

could point to no document or written policy to support his assertion that simulations had to occur 

before requirements could be written into a formal engineering requirements document. 

Chansarkar Tr. 2317-231. In any event, the SiRFLoc engineering document was still in draft form 

more than a year later. See CX-847C; Chansarakar Tr. 2318- 2319. Further, Dr. Chansarkar 

admitted that sync-free navigation was not actually implemented in SiRFLoc software for another 

three years after that. Chansarkar Tr. 2319-2320. 

Finally, the uncorroborated assertion that SiRF conducted a simulation of the 

Overdetermination Procedure in 1999 is belied by the fact that, when SiRF undisputedly did test 

the '670 algorithm in 2000, SiRF engineers quickly realized the equations did not work and had to 

alter the equations not just once, but at least twice. If SiRF engineers had tested the equations in 

1999, they would have discovered the same thing, and presumably Dr. Chansarkar would not have 

included in the September 2000 provisional patent application the same (inoperable) equations 

that he initially developed 17 months earlier in the April 1999 email (RX-31 C). 

"While a patentee may have the burden of going forward with rebuttal evidence once a 

challenger has presented a prima facie case of invalidity, the presumption of validity remains 

intact and the ultimate burden of proving invalidity remains with the challenger throughout the 

litigation." Innovative Scuba Concepts, Inc. v. Feder Industries, Inc., 26 F.3d 1112, 1115 (Fed. 

186 
Cir. 1994). In Innovative Scuba, the court held that it was “legal error” for the trial court to 

require the patentee to prove by clear and convincing evidence that it conceived and reduced to 

practice before the creation of the prior art. Id. Furthermore, oral testimony by an inventor, 

standing on its own, is insufficient to establish the inventive facts. See Brown v. Barbacid, 

276 F.3d 1327,1335 (Fed. Cir. 2002); Price v. Symsek, 988 F.2d 11 87,1194 (Fed. Cir. 1993). 

Corroboration is required, regardless of whether the person testifying is interested in the outcome 

of the litigation. See Finnigan Corp. v. International Trade Comm’n, 180 F.3d 1354, 1367 (Fed. 

Cir. 1999). Even if there is corroboration for an inventor’s testimony, courts apply a “rule of 

reason” analysis, evaluating all pertinent evidence “so that a sound determination of the credibility 

of the story may be reached.” See Price, 988 F.2d at 1195. 

In this case, the evidence of any alleged reduction to practice in 1999 is not persuasive. For 

example, the testimony provided no details about an alleged simulation, as Dr. Chansarkar 

admitted, “I do not remember the details of the simulation.” Chansarkar Tr. 22 15. Despite 

producing many emails from the 1999 time period, SiRF produced no documentary evidence 

showing any simulation results or even referring to the existence of a simulation in 1999. Such 

deficient evidence, offered by a current and former SiRF employee as SiRF’s only colorable 

defense to the infringement of the ‘801 patent, is insufficient to meet SiFWs burden and to 

overcome the presumption of validity that attaches to the ‘801 patent. SiRF also presented no 

evidence whatsoever purporting to show that it exercised diligence towards reduction to practice 

from before Dr. van Diggelen’s conception of the ‘801 patent (in April 2000) through any later 

reduction to practice. 

Respondents therefore have not met their burden of establishing, by clear and convincing 

187 

Cir. 1994). In Innovative Scuba, the court held that it was "legal error" for the trial court to 

require the patentee to prove by clear and convincing evidence that it conceived and reduced to 

practice before the creation ofthe prior art. Id Furthermore, oral testimony by an inventor, 

standing on its own, is insufficient to establish the inventive facts. See Brown v. Barbacid, 

276 F.3d 1327, 1335 (Fed. Cir. 2002); Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). 

Corroboration is required, regardless of whether the person testifying is interested in the outcome 

of the litigation. See Finnigan Corp. v. International Trade Comm 'n, 180 F.3d 1354, 1367 (Fed. 

Cir. 1999). Even if there is corroboration for an inventor's testimony, courts apply a "rule of 

reason" analysis, evaluating all pertinent evidence "so that a sound determination of the credibility 

of the story may be reached." See Price, 988 F.2d at 1195. 

In this case, the evidence of any alleged reduction to practice in 1999 is not persuasive. For 

example, the testimony provided no details about an alleged simulation, as Dr. Chansarkar 

admitted, "I do not remember the details of the simulation." Chansarkar Tr. 2215. Despite 

producing many emails from the 1999 time period, SiRF produced no documentary evidence 

showing any simulation results or even referring to the existence of a simulation in 1999. Such 

deficient evidence, offered by a current and former SiRF employee as SiRF's only colorable 

defense to the infringement of the '801 patent, is insufficient to meet SiRF's burden and to 

overcome the presumption of validity that attaches to the' 80 1 patent. SiRF also presented no 

evidence whatsoever purporting to show that it exercised diligence towards reduction to practice 

from before Dr. van Diggelen's conception of the '801 patent (in April 2000) through any later 

reduction to practice. 

Respondents therefore have not met their burden of establishing, by clear and convincing 

187 
evidence, priority of its overdetermination procedure (allegedly disclosed in the ‘670 patent) over 

invention of the ‘801 patent. 

The Milliken Paper Does Not Anticipate the Asserted Claims of 

the ‘801 Patent 

Respondents argue that the asserted claims of the ‘801 patent are anticipated by a 1978 

paper by Milliken and Zoller (the “Milliken” paper), entitled “Principle of Operation of 

NAVSTAR and System Characteristics’’ (“the Milliken paper”)(RX-l17). This paper is among 

the first published on GPS navigation algorithms. See Pratt Tr. 2849. The algorithm disclosed in 

Milliken depends on the receiver having received absolute time information from the GPS 

satellite Navigation Message. This is, of course, contrary to the claimed invention of the ‘801 

patent. See generally Pratt Tr. 2848-2852. 

As discussed in detail in the section on claim construction, the invention of the ‘801 patent 

is an improvement over the older system method and apparatus, as described in the Milliken 

paper, in which the GPS receiver received the absolute time information. However, as explained 

above, respondents would have the claims of the ‘80 1 patent read on a receiver that received and 

used the absolute time information, an argument that was rejected as inconsistent with the plain 

language and indeed all the intrinsic evidence. 

In fact, Dr. Heppe admitted at the hearing that his argument concerning the Milliken paper 

requires the assumption that the PTO granted - when it issued the ‘80 1 patent in 2002 - claims 

covering GPS receivers that had been on sale for over 20 years, and that a GPS receiver such as 

that described in the Milliken paper must get time information from the satellite navigation 

message or some other source. See Heppe Tr. 3078-3079. 

188 

evidence, priority of its overdetermination procedure (allegedly disclosed in the '670 patent) over 

invention of the' 80 1 patent. 

The Milliken Paper Does Not Anticipate the Asserted Claims of 

the '801 Patent 

Respondents argue that the asserted claims of the' 80 1 patent are anticipated by a 1978 

paper by Milliken and Zoller (the "Milliken" paper), entitled "Principle of Operation of 

NA VSTAR and System Characteristics" ("the Milliken paper")(RX-117). This paper is among 

the first published on GPS navigation algorithms. See Pratt Tr. 2849. The algorithm disclosed in 

Milliken depends on the receiver having received absolute time information from the GPS 

satellite Navigation Message. This is, of course, contrary to the claimed invention of the '801 

patent. See generally Pratt Tr. 2848-2852. 

As discussed in detail in the section on claim construction, the invention of the' 80 1 patent 

is an improvement over the older system method and apparatus, as described in the Milliken 

paper, in which the GPS receiver received the absolute time information. However, as explained 

above, respondents would have the claims of the' 80 1 patent read on a receiver that received and 

used the absolute time information, an argument that was rejected as inconsistent with the plain 

language and indeed all the intrinsic evidence. 

In fact, Dr. Heppe admitted at the hearing that his argument concerning the Milliken paper 

requires the assumption that the PTO granted - when it issued the' 80 1 patent in 2002 - claims 

covering GPS receivers that had been on sale for over 20 years, and that a GPS receiver such as 

that described in the Milliken paper must get time information from the satellite navigation 

message or some other source. See Heppe Tr. 3078-3079. 

188 
Accordingly, it has not been established that the Milliken paper anticipates any claim of 

the ‘801 patent. 

I). Summarv 

For the reasons detailed above it is found that claims 1,2 and 1 1 of the ‘801 patent are 

literally infringed directly, and indirectly through induced infringement. Furthermore, it has not 

been shown by clear and convincing evidence that the asserted claims are invalid due to a failure 

to claim patentable subject matter, a lack of enablement or anticipation. 

VII. U.S. Patent No. 6,937,187 (“the ‘187 Patent”) 

A. Claim Construction 

United States Patent No. 6,937,187, entitled “Method and Apparatus for Forming a 

Dynamic Model to Locate Position of a Satellite Receiver,” issued to Frank van Diggelen and 

Charles Abraham on August 30,2005, and was assigned to Global Locate. The application that 

led to the ‘ 187 patent was a continuation-in-part of an application that issued as United States 

Patent No. 6,73432 1, which in turn was a continuation-in-part of an application that led to the 

‘801 patent (which is asserted in this investigation). The specification of the ‘187 states that both 

‘821 and ‘801 patents are incorporated by reference in their entireties. See JX-5 (‘187 Patent), 

cover page, col. 1,ll. 7-13. 

As in the case of the ‘801 patent, the claimed invention of the ‘1 87 patent “relates to 

satellite-based position location and, more particularly, the invention relates to a method and 

apparatus for time-free processing of global positioning system (GPS) signals.” JX-5 (‘ 187 

Patent), col. 1,ll. 18-21. Due to the relationship of the ‘ 187 patent to the ‘801 patent, many 

portions of the patents’ specifications are identical. For example, for a description of the “related 

189 

Accordingly, it has not been established that the Milliken paper anticipates any claim of 

the' 80 1 patent. 

D. Summary 

F or the reasons detailed above it is found that claims 1, 2 and 11 of the '801 patent are 

literally infringed directly, and indirectly through induced infringement. Furthermore, it has not 

been shown by clear and convincing evidence that the asserted claims are invalid due to a failure 

to claim patentable subject matter, a lack of enablement or anticipation. 

VII. U.S. Patent No. 6,937,187 ("the '187 Patent") 

A. Claim Construction 

United States Patent No. 6,937,187, entitled "Method and Apparatus for Forming a 

Dynamic Model to Locate Position of a Satellite Receiver," issued to Frank van Diggelen and 

Charles Abraham on August 30, 2005, and was assigned to Global Locate. The application that 

led to the' 187 patent was a continuation-in-part of an application that issued as United States 

Patent No.6, 734,821, which in tum was a continuation-in-part of an application that led to the 

'801 patent (which is asserted in this investigation). The specification of the '187 states that both 

'821 and '801 patents are incorporated by reference in their entireties. See JX-5 ('187 Patent), 

cover page, col. 1,11.7-13. 

As in the case of the' 80 1 patent, the claimed invention ofthe '187 patent "relates to 

satellite-based position location and, more particularly, the invention relates to a method and 

apparatus for time-free processing of global positioning system (GPS) signals." JX-5 (,187 

Patent), col. 1, 11. 18-21. Due to the relationship of the' 187 patent to the' 80 1 patent, many 

portions of the patents' specifications are identical. For example, for a description of the "related 

189 
art” of the ‘1 87 patent, one may see the description of the “background art” contained in the ‘801 

specification (and quoted extensively, above), including those portions that address matters 

relating to the “time tag.” The summary of the claimed invention of the ‘ 187 patent builds upon 

that of the ‘801 patent, by repeating the prior patent’s text and adding descriptions of other 

embodiments of the claimed invention, including one that uses a “dynamic model” to compute the 

position of the satellite receiver. The “Summary of the Invention” contained in the ‘ 187 patent 

specification is as follows: 

The present invention is a method and apparatus for computing GPS 

receiver position without using absolute time information 

transmitted by a satellite or by an alternative source of timing 

available at the GPS receiver. In an embodiment of the invention, 

the GPS receiver is contained in an integrated receiver that also 

includes a wireless communication transceiver, but does not have 

access to an accurate source of absolute time information. The 

wireless transceiver communicates through a wireless network to a 

server. The GPS receiver measures satellite pseudoranges and uses 

the wireless communication transceiver to send the pseudoranges to 

the server. The server fits the pseudoranges to a mathematical 

model in which the GPS receiver position and the absolute time are 

unknown parameters. The server then computes a position and 

absolute time that best fit the model, thus yielding the correct 

position for the GPS receiver, and the absolute time at which the 

pseudorange measurements were made. 

In another embodiment, pseudoranges are obtained that estimate 

the range of a satellite signal receiver to a plurality of satellites. An 

absolute time and a position are computed using the pseudoranges 

at a first time. The absolute time is then used to compute another 

position at a subsequent time. In yet another embodiment, a 

plurality of states associated with a satellite signal receiver are 

estimated, where the plurality of states includes a time-tag error 

state. A dynamic model is then formed relating the plurality of 

states, the dynamic model operative to compute position of the 

satellite signal receiver. 

JX-5 (‘ 187 Patent), col. 3,l. 66 - col. 4, I. 26. 

190 

art" ofthe '187 patent, one may see the description of the "background art" contained in the '801 

specification (and quoted extensively, above), including those portions that address matters 

relating to the "time tag." The summary of the claimed invention of the '187 patent builds upon 

that of the '801 patent, by repeating the prior patent's text and adding descriptions of other 

embodiments of the claimed invention, including one that uses a "dynamic model" to compute the 

position of the satellite receiver. The "Summary of the Invention" contained in the' 187 patent 

specification is as follows: 

The present invention is a method and apparatus for computing GPS 

receiver position without using absolute time information 

transmitted by a satellite or by an alternative source of timing 

available at the GPS receiver. In an embodiment of the invention, 

the GPS receiver is contained in an integrated receiver that also 

includes a wireless communication transceiver, but does not have 

access to an accurate source of absolute time information. The 

wireless transceiver communicates through a wireless network to a 

server. The GPS receiver measures satellite pseudoranges and uses 

the wireless communication transceiver to send the pseudoranges to 

the server. The server fits the pseudoranges to a mathematical 

model in which the GPS receiver position and the absolute time are 

unknown parameters. The server then computes a position and 

absolute time that best fit the model, thus yielding the correct 

position for the GPS receiver, and the absolute time at which the 

pseudorange measurements were made. 

In another embodiment, pseudoranges are obtained that estimate 

the range of a satellite signal receiver to a plurality of satellites. An 

absolute time and a position are computed using the pseudoranges 

at a first time. The absolute time is then used to compute another 

position at a subsequent time. In yet another embodiment, a 

plurality of states associated with a satellite signal receiver are 

estimated, where the plurality of states includes a time-tag error 

state. A dynamic model is then formed relating the plurality of 

states, the dynamic model operative to compute position of the 

satellite signal receiver. 

JX-5 (,187 Patent), col. 3, 1. 66 - col. 4, 1. 26. 

190 
The specification of the ‘ 187 patent contains drawings with a description of them, a 

detailed description of the claimed invention that includes the preferred embodiment or 

embodiments, and also sets forth the claimed invention in a series of 10 claims. Complainants 

argue that each of the accused SiRF chips and software (and the non-SiRF respondents’ products 

in which the accused SiRF chips are incorporated) infringes claim 1 of the ‘ 187 patent. They also 

argue that the accused products of the non-SiRF respondents, which include the accused SiRF 

chips, are mobile devices that include each element of claim 9. See Compl. Br. at 250. 

Claims 1 and 9 are both independent claims, and they provide, as follows: 

1. A method, comprising: 

estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state, the 

time tag error state relating a local time associated with said satellite 

signal receiver and an absolute time associated with signals from a 

plurality of satellites; and 

forming a dynamic model relating the plurality of states, the 

dynamic model operative to compute position of the satellite signal 

receiver. 

9. A mobile device, comprising: 

a satellite signal receiver for providing pseudoranges that estimate 

the range of the mobile device to a plurality of satellites; and 

a sequential estimator having a plurality of states associated with the 

satellite signal receiver, the plurality of states including a time tag 

error state, the time tag error state relating a local time associated 

with said satellite signal receiver and an absolute time associate 

with signals from the plurality of satellites. 

JX-5 (‘187 Patent), col. 20,lI. 44-53,; col. 22,11. 1-12. 

The following terms are disputed, and are discussed individually below: (1) “time tag 

191 

The specification of the' 187 patent contains drawings with a description of them, a 

detailed description of the claimed invention that includes the preferred embodiment or 

embodiments, and also sets forth the claimed invention in a series of 10 claims. Complainants 

argue that each of the accused SiRF chips and software (and the non-SiRF respondents' products 

in which the accused SiRF chips are incorporated) infringes claim 1 of the' 187 patent. They also 

argue that the accused products of the non-SiRF respondents, which include the accused SiRF 

chips, are mobile devices that include each element of claim 9. See Compl. Br. at 250. 

Claims 1 and 9 are both independent claims, and they provide, as follows: 

1. A method, comprising: 

estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state, the 

time tag error state relating a local time associated with said satellite 

signal receiver and an absolute time associated with signals from a 

plurality of satellites; and 

forming a dynamic model relating the plurality of states, the 

dynamic model operative to compute position of the satellite signal 

receIver. 

9. A mobile device, comprising: 

a satellite signal receiver for providing pseudoranges that estimate 

the range of the mobile device to a plurality of satellites; and 

a sequential estimator having a plurality of states associated with the 

satellite signal receiver, the plurality of states including a time tag 

error state, the time tag error state relating a local time associated 

with said satellite signal receiver and an absolute time associate 

with signals from the plurality of satellites. 

JX-5 (,187 Patent), col. 20, II. 44-53,; col. 22, 11. 1-12. 

The following terms are disputed, and are discussed individually below: (1) "time tag 

191 
error” or “time tag error state” found in claims 1 and 9; (2) “estimating a plurality of states 

associated with a satellite signal receiver, the plurality of states including a time tag error state” 

found in claim 1 ; (3) “forming a dynamic model relating the plurality of states” found in claim 1 ; 

and (4) “a sequential estimator having a plurality of states associated with the satellite signal 

receiver” found in claim 9. 

“time tag error” or “time tag error state ’’ 

Complainants argue that a “time tag error” is “a value, separate from the common mode 

error, that represents the difference in time between an absolute time and the local receiver time.” 

Compl. Br. at 240-241. 

Respondents argue that “time tag error state” must be construed because it does not have 

an ordinary meaning to those skilled in the art, They argue that a “time tag error state” is “a state 

representing the difference between local time and an absolute time of reception generated when 

the absolute time is not available from either the satellite signals or an external source of 

information.” Resp. Br. at 203-204. 

The Staff argues that complainants’ proposed construction relating to the time tag error 

state limitation is reasonable and consistent with the intrinsic record. It is argued that 

respondents’ proposed construction would improperly restrict the time tag error state. See Staff 

Br. at 60. 

The term “time tag error” appears in claims 1 and 9. These claims both recite and describe 

the term: “the time tag error state relating a local time associated with said satellite signal receiver 

and an absolute time associated with signals from a plurality of satellites.” JX-5 (‘ 187 Patent), 

col. 20,ll. 47-50 (claim l), col. 22,lI. 8-1 1 (claim 9). As explained herein, this term is construed 

192 

error" or "time tag error state" found in claims 1 and 9; (2) "estimating a plurality of states 

associated with a satellite signal receiver, the plurality of states including a time tag error state" 

found in claim 1; (3) "forming a dynamic model relating the plurality of states" found in claim 1; 

and (4) "a sequential estimator having a plurality of states associated with the satellite signal 

receiver" found in claim 9. 

"time tag error" or "time tag error state" 

Complainants argue that a "time tag error" is "a value, separate from the common mode 

error, that represents the difference in time between an absolute time and the local receiver time." 

Compl. Br. at 240-241. 

Respondents argue that "time tag error state" must be construed because it does not have 

an ordinary meaning to those skilled in the art. They argue that a "time tag error state" is "a state 

representing the difference between local time and an absolute time of reception generated when 

the absolute time is not available from either the satellite signals or an external source of 

information." Resp. Br. at 203-204. 

The Staff argues that complainants' proposed construction relating to the time tag error 

state limitation is reasonable and consistent with the intrinsic record. It is argued that 

respondents' proposed construction would improperly restrict the time tag error state. See Staff 

Br. at 60. 

The term "time tag error" appears in claims 1 and 9. These claims both recite and describe 

the term: "the time tag error state relating a local time associated with said satellite signal receiver 

and an absolute time associated with signals from a plurality of satellites." JX-5 (,187 Patent), 

col. 20, 11. 47-50 (claim 1), col. 22, 11.8-11 (claim 9). As explained herein, this term is construed 

192 
to mean “a value, separate from the common mode error, that represents the difference in time 

between an absolute time and the local receiver time.” 

One of ordinary skill would understand that the “common mode error” is distinct from the 

“time tag error.” See Pratt Tr. 11 13. In fact, the specification of the related ‘801 patent (quoted 

above) and the ‘ 187 patent is careful to differentiate between the two. See JX-5 (‘ 187 Patent), 

col. 3,ll. 44-5 1 .61 Thus, complainants’ proposed claim construction is consistent with the 

intrinsic evidence because it merely restates the description contained in the claim language and 

clarifies it by reiterating the express teachings of the specification that differentiate time tag error 

from common mode error. 

Respondents’ proposed construction for a “time tag error state” is problematic. First, it 

doe not differentiate between time tag error and a common mode error. Second, respondents’ 

construction is simply wrong to suggest that it will be generated only when absolute time is not 

available. See Pratt Tr. 1 113-1 114. Nothing in the ‘187 patent imposes such a requirement on the 

asserted claims. See Pratt Tr. 1 1 15-1 121. 

Accordingly, “time tag error” is construed to mean “a value, separate from the common 

mode error, that represents the difference in time between an absolute time and the local receiver 

time.” 

“estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state” 

Complainants argue that “estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state” means “estimating, without having 

Complainants’ expert, Dr. Pratt, elaborated on the time tag error, and also explained 

that it is different from a common mode error. See Pratt Tr. 1 107- 1 109. 

193 

to mean "a value, separate from the common mode error, that represents the difference in time 

between an absolute time and the local receiver time." 

One of ordinary skill would understand that the "common mode error" is distinct from the 

"time tag error." See Pratt Tr. 1113. In fact, the specification of the related '801 patent (quoted 

above) and the '187 patent is careful to differentiate between the two. See JX-5 (,187 Patent), 

col. 3,11.44-51.61 Thus, complainants' proposed claim construction is consistent with the 

intrinsic evidence because it merely restates the description contained in the claim language and 

clarifies it by reiterating the express teachings of the specification that differentiate time tag error 

from common mode error. 

Respondents' proposed construction for a "time tag error state" is problematic. First, it 

doe not differentiate between time tag error and a common mode error. Second, respondents' 

construction is simply wrong to suggest that it will be generated only when absolute time is not 

available. See Pratt Tr. 1113-1114. Nothing in the' 187 patent imposes such a requirement on the 

asserted claims. See Pratt Tr. 1115-1121. 

Accordingly, "time tag error" is construed to mean "a value, separate from the common 

mode error, that represents the difference in time between an absolute time and the local receiver 

time." 

"estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state" 

Complainants argue that "estimating a plurality of states associated with a satellite signal 

receiver, the plurality of states including a time tag error state" means "estimating, without having 

61 Complainants' expert, Dr. Pratt, elaborated on the time tag error, and also explained 

that it is different from a common mode error. See Pratt Tr. 1107-1109. 

193 
absolute time information, a plurality of states associated with a satellite signal receiver, where the 

plurality of states includes a time tag error state.” Compl. Br. at 241-243. 

Respondents argue that this phrase does not require construction, particularly once “time 

tag error state” is defined. Resp. Br. at 204. 

The Staff agrees with respondents that this phrase does not require construction, but does 

not object to complainants’ proposed construction, which is consistent with the intrinsic evidence. 

See Staff Br. at 61. 

The first part of the first limitation of claim 1 provides, “estimating a plurality of states 

associated with a satellite signal receiver, the plurality of states including a time tag error state.” 

JX-5 (‘187 patent), col. 20,ll. 45-47. This phrase should be construed, consistent with the ‘801 

and ‘ 187 patents, to mean “estimating, without having absolute time information, a plurality of 

states associated with a satellite signal receiver, where the plurality of states includes a time tag 

error state.” See Pratt Tr. 1133-1 136. As with the ‘801 patent, from which the ‘187 patent is a 

continuation-in-part, the ‘ 1 87 patent itself is clear that the invention involves estimating a time tag 

error state (and other states) without having absolute time information. 

Starting with the “Abstract” and the “Summary of the Invention,” the ‘ 1 87 patent explains 

that: “An absolute time and a position are computed using the pseudoranges at a first time. The 

absolute time is then used to compute another position at a subsequent time.” JX-5 (‘ 187 patent), 

Abstract, col. 4,ll. 18-20 (Summary of the Invention). As complainants’ expert explained, “if we 

have absolute time in the first instance, then it can’t be computed. We already have it.” Pratt 

Tr. 1 134. The ‘ 187 patent thus involves a receiver that, at least initially, does not have absolute 

time information. 

194 

absolute time information, a plurality of states associated with a satellite signal receiver, where the 

plurality of states includes a time tag error state." Compl. Br. at 241-243. 

Respondents argue that this phrase does not require construction, particularly once "time 

tag error state" is defined. Resp. Br. at 204. 

The Staff agrees with respondents that this phrase does not require construction, but does 

not object to complainants' proposed construction, which is consistent with the intrinsic evidence. 

See Staff Br. at 61. 

The first part of the first limitation of claim 1 provides, "estimating a plurality of states 

associated with a satellite signal receiver, the plurality of states including a time tag error state." 

JX-5 (,187 patent), col. 20, 11. 45-47. This phrase should be construed, consistent with the '801 

and '187 patents, to mean "estimating, without having absolute time information, a plurality of 

states associated with a satellite signal receiver, where the plurality of states includes a time tag 

error state." See Pratt Tr. 1133-1136. As with the' 80 1 patent, from which the' 187 patent is a 

continuation-in-part, the' 187 patent itself is clear that the invention involves estimating a time tag 

error state (and other states) without having absolute time information. 

Starting with the "Abstract" and the "Summary of the Invention," the' 187 patent explains 

that: "An absolute time and a position are computed using the pseudoranges at a first time. The 

absolute time is then used to compute another position at a subsequent time." JX-5 (,187 patent), 

Abstract, col. 4, 11. 18-20 (Summary of the Invention). As complainants' expert explained, "if we 

have absolute time in the first instance, then it can't be computed. We already have it." Pratt 

Tr. 1134. The' 187 patent thus involves a receiver that, at least initially, does not have absolute 

time information. 

194 
Consequently, “estimating a plurality of states associated with a satellite signal receiver, 

the plurality of states including a time tag error state” means “estimating, without having absolute 

time information, a plurality of states associated with a satellite signal receiver, where the plurality 

of states includes a time tag error state 

‘‘forming a dynamic model relating the plurality of states” 

Complainants argue that “forming a dynamic model relating the plurality of states” means 

“forming a model of a dynamic system represented by a plurality of states, with the model 

describing the relationship between the states as they change.” Compl. Br. 243-245. 

s, 

Respondents argue that this phrase means “building a mathematical model whose states 

are updated by a sequential estimator.” Resp. Br. at 204-205. 

The Staff argues that respondents’ proposed construction is too narrow, and that 

complainants’ proposal is reasonable in view of the intrinsic evidence. In particular, it is argued 

that the specification discloses the use of sequential estimators, such as the Kalman filter, but does 

not appear to limit the dynamic model to sequential estimators. Staff Br. at 61-62.62 

The last limitation of claim 1 provides: “forming a dynamic model relating the plurality of 

states, the dynamic model operative to compute position of the satellite signal receiver.’’ JX-5 

(‘187 patent) at col. 20,ll. 51-53. Thus, the phrase at issue should be construed in an manner that 

is consistent with the broad use of “dynamic model” in the patent claim and the disclosure of a 

dynamic model in the specification. See Pratt Tr. 1 140-1 146. 

62 A Kalman filter is a form of sequential estimator involving complex mathematics. See 

JX-5 (‘1 87 patent), claim 10, col. 14,ll. 10-1 1; col. l6,ll. 54-63 (“In one embodiment, the 

sequential estimator is a Kalman filter . . . .”); van Diggelen Tr. 153-1 54; Pratt Tr. 1 1 10-1 1 12. 

The filter will evaluate the accuracy of measured and actual values, and it will, over time, adjust 

the weighting of the two values based on their respective accuracy. See Pratt Tr. 1 1 1 1-1 1 12. 

195 

Consequently, "estimating a plurality of states associated with a satellite signal receiver, 

the plurality of states including a time tag error state" means "estimating, without having absolute 

time information, a plurality of states associated with a satellite signal receiver, where the plurality 

of states includes a time tag error state 

"forming a dynamic model relating the plurality of states" 

Complainants argue that "forming a dynamic model relating the plurality of states" means 

"forming a model of a dynamic system represented by a plurality of states, with the model 

describing the relationship between the states as they change." Compl. Br. 243-245. 

Respondents argue that this phrase means "building a mathematical model whose states 

are updated by a sequential estimator." Resp. Br. at 204-205. 

The Staff argues that respondents' proposed construction is too narrow, and that 

complainants' proposal is reasonable in view of the intrinsic evidence. In particular, it is argued 

that the specification discloses the use of sequential estimators, such as the Kalman filter, but does 

not appear to limit the dynamic model to sequential estimators. StaffBr. at 61_62.62 

The last limitation of claim 1 provides: "forming a dynamic model relating the plurality of 

states, the dynamic model operative to compute position of the satellite signal receiver." JX-5 

(' 187 patent) at col. 20, 11. 51-53. Thus, the phrase at issue should be construed in an manner that 

is consistent with the broad use of "dynamic model" in the patent claim and the disclosure of a 

dynamic model in the specification. See Pratt Tr. 1140-1146. 

62 A Kalman filter is a form of sequential estimator involving complex mathematics. See 

JX-5 (,187 patent), claim 10, col. 14,11. 10-11; col. 16,11.54-63 ("In one embodiment, the 

sequential estimator is a Kalman filter .... "); van Diggelen Tr. 153-154; Pratt Tr. 1110-1112. 

The filter will evaluate the accuracy of measured and actual values, and it will, over time, adjust 

the weighting of the two values based on their respective accuracy. See Pratt Tr. 1111-1112. 

195 
SiRF, however, proposes to construe this phrase far more narrowly, as “building a 

mathematical model whose states are updated by a sequential estimator.” Yet, that proposed 

construction is inconsistent with the claims and specification. SiRF’s did not originally propose 

its current construction. In his invalidity expert report, respondents’ Dr. Heppe opined that if a 

system is solved iteratively - i. e. , if it uses repeated, recursive calculations to reach a position 

solution for a given point in time - it would qualifL as a dynamic model and sequential estimator. 

See Heppe Tr. 3087-3093. Dr. Heppe expressly included “least-squares” estimators as such 

dynamic models. See Heppe Tr. 3090. In his non-infringement expert report, however, 

Dr. Heppe narrowed his definition dramatically to cover only sequential estimators (possibly in an 

attempt to save SiRF’s accused products from infringement). He then contended that “the term[] 

dynamic model would be clearly understood by one of ordinary skill as excluding static models 

(point estimators) such as least squares estimators.” See Heppe Tr. 3090-3091. During the 

hearing, Dr. Heppe disavowed his original construction and agreed that, at his deposition, he had 

stated that he had “misconstrued” the claim. See Heppe Tr. 3091-3093. 

Dr. Heppe’s current construction of “dynamic model,” however, also misconstrues the 

claim. Too broad the first time, Dr. Heppe now errs on the narrow side. Dr. Pratt’s definition, 

however, is grounded in the claims and specification of the ‘ 187 patent and supported by credible 

extrinsic evidence, such as the IEEE 100: The Authoritative Dictionary of IEEE Standards 

Terms. 

Because the term “dynamic model” has a well-understood meaning in the art, a dictionary 

definition provides helpful context for construing the term. The IEEE dictionary defines a 

dynamic model, in contrast to a static model, as a “model of a system in which there is change, 

196 

SiRF, however, proposes to construe this phrase far more narrowly, as "building a 

mathematical model whose states are updated by a sequential estimator." Yet, that proposed 

construction is inconsistent with the claims and specification. SiRF's did not originally propose 

its current construction. In his invalidity expert report, respondents' Dr. Heppe opined that if a 

system is solved iteratively - i. e., if it uses repeated, recursive calculations to reach a position 

solution for a given point in time - it would qualifY as a dynamic model and sequential estimator. 

See Heppe Tr. 3087-3093. Dr. Heppe expressly included "least-squares" estimators as such 

dynamic models. See Heppe Tr. 3090. In his non-infringement expert report, however, 

Dr. Heppe narrowed his definition dramatically to cover only sequential estimators (possibly in an 

attempt to save SiRF's accused products from infringement). He then contended that "the term[] 

dynamic model would be clearly understood by one of ordinary skill as excluding static models 

(point estimators) such as least squares estimators." See Heppe Tr. 3090-3091. During the 

hearing, Dr. Heppe disavowed his original construction and agreed that, at his deposition, he had 

stated that he had "misconstrued" the claim. See Heppe Tr. 3091-3093. 

Dr. Heppe's current construction of "dynamic model," however, also misconstrues the 

claim. Too broad the first time, Dr. Heppe now errs on the narrow side. Dr. Pratt's definition, 

however, is grounded in the claims and specification of the '187 patent and supported by credible 

extrinsic evidence, such as the IEEE 100: The Authoritative Dictionary of IEEE Standards 

Terms. 

Because the term "dynamic model" has a well-understood meaning in the art, a dictionary 

definition provides helpful context for construing the term. The IEEE dictionary defines a 

dynamic model, in contrast to a static model, as a "model of a system in which there is change, 

196 
such as the occurrence of events over time or the movement of objects through space.” CX-241 at 

347; Pratt Tr. 1144. 

The ‘ 187 patent uses the term “dynamic model” in the same broad manner as the IEEE. 

The patent generally describes a GPS receiver that uses a dynamic model to incorporate the 

history of the receiver and to model changes from one point in time to the next. Pratt Tr. 1145- 

1146; JX-5 (‘1 87 patent), col. 16,ll. 16-29. The patent notes that “in another embodiment of the 

invention, a sequential estimation process is used to determine GPS receiver position and absolute 

time.” JX-5 (‘187 patent), col. 16,ll. 30-32 (emphasis added). That makes clear that a sequential 

estimator is one embodiment of, and not the only way to implement, the ‘ 187 patent. See Pratt 

Tr. 1146. 

Claim 4 provides hrther support for complainants’ construction. Claim 4 adds to claim 1 

the further limitation that “the dynamic model is formed within a sequential estimator.” See 

JX-5(‘ 187 Patent), col. 20,ll. 66-67. 

“a sequential estimator having a plurality of states associated with 

the satellite signal receiver” 

Complainants argue that “a sequential estimator having a plurality of states associated with 

the satellite signal receiver” means “a process that sequentially produces, at least once without 

having absolute time information, estimates of a plurality of states associated with the satellite 

signal receiver.” Compl. Br. at 246-249. 

Respondents argue that this phrase means “a device that estimates the current values of 

states associated with the satellite signal receiver^ by merging current measurements with 

previously calculated values for the same states.” Resp. Br. 205-207. 

197 

such as the occurrence of events over time or the movement of objects through space." CX-241 at 

347; Pratt Tr. 1144. 

The' 187 patent uses the term "dynamic model" in the same broad manner as the IEEE. 

The patent generally describes a GPS receiver that uses a dynamic model to incorporate the 

history of the receiver and to model changes from one point in time to the next. Pratt Tr. 1145-

1146; JX-5 (,187 patent), col. 16,11.16-29. The patent notes that "in another embodiment o/the 

invention, a sequential estimation process is used to determine GPS receiver position and absolute 

time." JX-5 (,187 patent), col. 16,11.30-32 (emphasis added). That makes clear that a sequential 

estimator is one embodiment of, and not the only way to implement, the' 187 patent. See Pratt 

Tr. 1146. 

Claim 4 provides further support for complainants' construction. Claim 4 adds to claim 1 

the further limitation that "the dynamic model is formed within a sequential estimator." See 

JX-5('187 Patent), col. 20, 11.66-67. 

"a sequential estimator having a plurality of states associated with 

the satellite signal receiver" 

Complainants argue that "a sequential estimator having a plurality of states associated with 

the satellite signal receiver" means "a process that sequentially produces, at least once without 

having absolute time information, estimates of a plurality of states associated with the satellite 

signal receiver." Compl. Br. at 246-249. 

Respondents argue that this phrase means "a device that estimates the current values of 

states associated with the satellite signal receiver. by merging current measurements with 

previously calculated values for the same states." Resp. Br. 205-207. 

197 
The Staff argues that complainants’ proposed construction is reasonable. The Staff argues, 

among other things, that complainants’ “clarification of ‘at least once without having absolute 

time information’ is appropriate” in view of the specification. Staff Br. at 62. 

The last limitation of claim 9 requires, “a sequential estimator having a plurality of states 

associated with the satellite signal receiver, the plurality of states including a time tag error state.” 

JX-5 (‘ 187 patent), col. 22,ll. 6-1 1. Consistent with the broad use of “sequential estimator” in the 

patent and the structure of the claims, as well as the ordinary meaning of the term “sequential 

estimator,” the phrase “a sequential estimator having a plurality of states associated with the 

satellite signal receiver” should be construed to mean “a process that sequentially produces, at 

least once without having absolute time information, estimates of a plurality of states associated 

with the satellite signal receiver.” 

SiW has proposed various constructions in this investigation, depending on the 

circumstances. As discussed above, Dr. Heppe’s invalidity report initially proposed a broad 

construction of dynamic model and sequential estimator. See Heppe Tr. 3087-3093. Dr. Heppe 

later disavowed that position and argued, in his noninfringement expert report, that the sequential 

estimator element is narrowly limited to the use of a Kalman filter. See Heppe Tr. 3093-3095. 

Now, respondents offer another interpretation in their brief. 

Complainants’ expert, Dr. Pratt, explained at the hearing that a sequential estimator is 

simply a process. “It could be a dynamic model, but it operates at specific instants in time. So, in 

other words, at time 1 it produces an estimate of the position. At time 2, it produces an estimate 

of the position, probably having received some input, [although] that isn’t always necessary. At 

time 3, it will produce another estimate of the position and so on.” Pratt Tr. 1 143. The essential 

198 

The Staff argues that complainants' proposed construction is reasonable. The Staff argues, 

among other things, that complainants' "clarification of 'at least once without having absolute 

time information' is appropriate" in view of the specification. StaffBr. at 62. 

The last limitation of claim 9 requires, "a sequential estimator having a plurality of states 

associated with the satellite signal receiver, the plurality of states including a time tag error state." 

JX -5 (' 187 patent), col. 22, 11. 6-11. Consistent with the broad use of "sequential estimator" in the 

patent and the structure of the claims, as well as the ordinary meaning of the term "sequential 

estimator," the phrase "a sequential estimator having a plurality of states associated with the 

satellite signal receiver" should be construed to mean "a process that sequentially produces, at 

least once without having absolute time information, estimates of a plurality of states associated 

with the satellite signal receiver." 

SiRF has proposed various constructions in this investigation, depending on the 

circumstances. As discussed above, Dr. Heppe's invalidity report initially proposed a broad 

construction of dynamic model and sequential estimator. See Heppe Tr. 3087-3093. Dr. Heppe 

later disavowed that position and argued, in his noninfringement expert report, that the sequential 

estimator element is narrowly limited to the use of a Kalman filter. See Heppe Tr. 3093-3095. 

Now, respondents offer another interpretation in their brief. 

Complainants' expert, Dr. Pratt, explained at the hearing that a sequential estimator is 

simply a process. "It could be a dynamic model, but it operates at specific instants in time. So, in 

other words, at time 1, it produces an estimate of the position. At time 2, it produces an estimate 

of the position, probably having received some input, [although] that isn't always necessary. At 

time 3, it will produce another estimate of the position and so on." Pratt Tr. 1143. The essential 

198 
feature of a sequential estimator is not any particular relationship between inputs and outputs, but 

simply the overall process of estimating, in a discrete, sequential manner, the states of a system 

using some combination of new measurements and prior state information. See Pratt Tr. 1 163, 

1106-1 107; see also, Pratt Tr. 1161-1 166.63 

In this instance, the “sequential estimator” limitation should be construed to include the 

language that it “produces, at least once without having absolute time information, estimates of a 

plurality of states associated with the satellite signal receiver.” This is because the invention is 

based on the use of the ‘801 time-free technique, as discussed above with respect to claim 1. See 

Pratt Tr. 1 162. It also is confirmed by the patent’s discussion of Figure 9, in which there is an 

initialization of the sequential estimator with the time tag error state (when the system does not 

have absolute time information), and then subsequently the system may obtain absolute time 

information. Pratt Tr. 1164; JX-5 (‘187 patent) at col. 18,Il. 21-43, Fig. 9. 

Accordingly, “a sequential estimator having a plurality of states associated with the 

satellite signal receiver” means “a process that sequentially produces, at least once without having 

absolute time information, estimates of a plurality of states associated with the satellite signal 

receiver .” 

63 For example, in sequential estimators that are Kalman filters (as once proposed by 

respondents’ experts for the present claim term), the manner in which previously calculated 

values and new measurements are combined will vary over time. See Pratt Tr. 1 1 1 1-1 1 12. 

199 

feature of a sequential estimator is not any particular relationship between inputs and outputs, but 

simply the overall process of estimating, in a discrete, sequential manner, the states of a system 

using some combination of new measurements and prior state information. See Pratt Tr. 1163, 

1106-1107; see also, Pratt Tr. 1161-1166.63 

In this instance, the "sequential estimator" limitation should be construed to include the 

language that it "produces, at least once without having absolute time information, estimates of a 

plurality of states associated with the satellite signal receiver." This is because the invention is 

based on the use of the '801 time-free technique, as discussed above with respect to claim 1. See 

Pratt Tr. 1162. It also is confirmed by the patent's discussion of Figure 9, in which there is an 

initialization ofthe sequential estimator with the time tag error state (when the system does not 

have absolute time information), and then subsequently the system may obtain absolute time 

information. Pratt Tr. 1164; JX-5 (,187 patent) at col. 18,11.21-43, Fig. 9. 

Accordingly, "a sequential estimator having a plurality of states associated with the 

satellite signal receiver" means "a process that sequentially produces, at least once without having 

absolute time information, estimates of a plurality of states associated with the satellite signal 

receiver." 

63 For example, in sequential estimators that are Kalman filters (as once proposed by 

respondents' experts for the present claim term), the manner in which previously calculated 

values and new measurements are combined will vary over time. See Pratt Tr. 1111-1112. 

199 
B. Infringement Determination 

1. The SiRF Devices Infringe the Asserted Claims 

Complainants argue that respondents’ infringement of the ‘ 187 patent is clear under either 

their, or respondents’, proposed claim constructions. Complainants accuse all of respondents’ 

products at issue in this investigation of infringing the asserted claims, i. e., the SiRFstarIII chips 

and GSCi-5000 chips (operating with the SiRFstarIII navigation software), the [ 

] the GSCi4100/4200 InstantGPS chips (operating with the GSCi4100/4200 

firmware), and E-TEN, MiTACMio and Pharos products that incorporate the SiRFstarIII chips. 

Compl. Br. at 249-257. 

Respondents argue that although initially complainants accused SiRF’s Kalman filter 

implementation, after complainants realized that the Kalman filter implementation did not have a 

tag time error state, complainants changed course and accused SiRF’s sync-free module (also 

referred to as “SyncFreeNav”). In any event, respondents argue, the sync-free mode is a static 

model, and thus Complainants’ infringement arguments are without merit. They also provide 

non-infringement arguments and citations to the record concerning the Kalman filter 

implementation. See Resp. Br. at 208-2 12. 

The Staff argues that the accused SiRFstarIII devices and SiRF InstantGPS devices 

infringe claims 1 and 9 of the ‘187 as properly construed. The Staff also argues that the terms at 

the center of the parties’ infringement dispute are “time error state’’ and “dynamic model,” and 

that the weight of the evidence favors complainants. See Staff Br. at 63; Staff Reply at 12. 

At the outset, it is noted that infringement cannot be found with respect to the so-called 

] they cannot have been imported, and their design 

200 

B. Infringement Determination 

1. The SiRF Devices Infringe the Asserted Claims 

Complainants argue that respondents' infringement of the' 187 patent is clear under either 

their, or respondents' , proposed claim constructions. Complainants accuse all of respondents' 

products at issue in this investigation of infringing the asserted claims, i.e., the SiRFstarIII chips 

and GSCi-5000 chips (operating with the SiRFstarIII navigation software), the [ 

] the GSCi41 00/4200 InstantGPS chips (operating with the GSCi41 00/4200 

firmware), and E-TEN, MiTAClMio and Pharos products that incorporate the SiRFstarIII chips. 

Compi. Br. at 249-257. 

Respondents argue that although initially complainants accused SiRF's Kalman filter 

implementation, after complainants realized that the Kalman filter implementation did not have a 

tag time error state, complainants changed course and accused SiRF's sync-free module (also 

referred to as "SyncFreeNav"). In any event, respondents argue, the sync-free mode is a static 

model, and thus complainants' infringement arguments are without merit. They also provide 

non-infringement arguments and citations to the record concerning the Kalman filter 

implementation. See Resp. Br. at 208-212. 

The Staff argues that the accused SiRFstarIII devices and SiRF InstantGPS devices 

infringe claims 1 and 9 of the '187 as properly construed. The Staff also argues that the terms at 

the center ofthe parties' infringement dispute are "time error state" and "dynamic model," and 

that the weight ofthe evidence favors complainants. See StaffBr. at 63; Staff Reply at 12. 

At the outset, it is noted that infringement cannot be found with respect to the so-called 

[ ] they cannot have been imported, and their design 

200 
] See Sections I (Background) and I11 (Importation or Sale). 

With respect to other accused products, the record shows that contrary to respondents’ 

argument, SiRF’s sync-free module or SyncFreeNav does meet the limitations of the asserted 

claims.64 Respondents argue that in sync-free mode their devices possess a static model least 

squares estimator. However, the record shows that in sync-free navigation mode the devices reuse 

previously calculated values, and are a dynamic model and a sequential estimator, as required by 

claims 1 and 9.65 

For example, as conceded during the hearing, in SiRF’s devices “the position from the 

previous computation would be used to initialize the sync-free least squares calculation in the next 

epoch.” See Chansarkar Tr. 2326-2327. As complainants’ Dr. Pratt explained, that reuse of 

position makes SiRF’s least squares estimator a dynamic model. See Pratt Tr. 2879. Inasmuch as 

respondents admit that the SiRF devices use at least the prior position state information during 

subsequent sync-free computations, under complainants’ proposed construction, which was 

adopted herein, respondents infringe. 

Furthermore, even if respondents’ proposed constructions were adopted, SiRF’s products 

still would infringe because SiRF reuses its time tag error state. Indeed, SiRF’s source code 

demonstrates that SiRF reuses its time tag error. See Pratt Tr. 1153-1 154,2882-2883. The only 

64 Complainants’ expert set forth evidence concerning each of the limitations of the 

asserted claims, including those that are not the focus of respondents’ non-infringement 

arguments. See Pratt Tr. 1136-1 167. 

65 While respondents also offered evidence that their devices’ Kalman filter mode does 

not have a time tag error and therefore does not infringe (particularly with respect to claim 9), 

complainants did not accuse SiRF’s Kalman filter mode of operation during the hearing or in 

their post-hearing briefs. See Pratt Tr. 2877. No infi-ingement finding is made concerning the 

Kalman filter mode. 

20 1 

[ ] See Sections I (Background) and III (Importation or Sale). 

With respect to other accused products, the record shows that contrary to respondents' 

argument, SiRF's sync-free module or SyncFreeNav does meet the limitations of the asserted 

claims.64 Respondents argue that in sync-free mode their devices possess a static model least 

squares estimator. However, the record shows that in sync-free navigation mode the devices reuse 

previously calculated values, and are a dynamic model and a sequential estimator, as required by 

claims 1 and 9.65 

For example, as conceded during the hearing, in SiRF's devices "the position from the 

previous computation would be used to initialize the sync-free least squares calculation in the next 

epoch." See Chansarkar Tr. 2326-2327. As complainants' Dr. Pratt explained, that reuse of 

position makes SiRF's least squares estimator a dynamic model. See Pratt Tr. 2879. Inasmuch as 

respondents admit that the SiRF devices use at least the prior position state information during 

subsequent sync-free computations, under complainants' proposed construction, which was 

adopted herein, respondents infringe. 

Furthermore, even if respondents' proposed constructions were adopted, SiRF's products 

still would infringe because SiRF reuses its time tag error state. Indeed, SiRF's source code 

demonstrates that SiRF reuses its time tag error. See Pratt Tr. 1153-1154, 2882-2883. The only 

64 Complainants' expert set forth evidence concerning each of the limitations of the 

asserted claims, including those that are not the focus of respondents' non-infringement 

arguments. See Pratt Tr. 1136-1167. 

65 While respondents also offered evidence that their devices' Kalman filter mode does 

not have a time tag error and therefore does not infringe (particularly with respect to claim 9), 

complainants did not accuse SiRF's Kalman filter mode of operation during the hearing or in 

their post-hearing briefs. See Pratt Tr. 2877. No infringement finding is made concerning the 

Kalman filter mode. 

201 
basis to suggest otherwise was the trial testimony of Dr. Chansarkar, which was inconsistent with 

his deposition testimony, and was not supported by any documents or reference to any documents. 

See Pratt Tr. 1155-1 157,2879-2883; Chansarkar Tr. 2355-2357. 

Accordingly, it is found that respondents’ accused products infringe claims 1 and, as to 

mobile devices, also claim 9 of the ‘ 187 patent (except the so-called [ 

] As detailed below, 

complainants have demonstrated direct infringement by SiRF, and induced infringement by all 

respondents. 

2. SiRF’s Direct Infringement 

SiRF directly infringes the ‘ 187 patent by its extensive testing of the accused SiRF chips in 

the United States. Inasmuch as the infringement of the ‘ 187 patent depends upon the operation of 

the same software and hardware as the ‘801 patent, the analysis is the same for both patents. See 

Pratt Tr. 1167-1 168. 

Furthermore, as quoted above, claim 9 expressly requires a “mobile device.” The accused 

mobile devices of MiTAChfio, E-TEN and Pharos infringe claim 9 of the ‘ 187 patent. See Pratt 

Tr. 1159-1 167 (mobile devices incorporating accused chips and performing all claim elements). 

3. All Remondents Have Induced Infringement 

SiRF, MiTACMio, E-TEN, and Pharos actively induce infringement of the ‘ 187 patent. 

See 35 U.S.C. §271(b). As explained above, SiRF and the other respondents have had knowledge 

of the ‘ 187 patent since Global Locate filed its complaint with the International Trade 

Commission on March 30,2007, initiating this Investigation. And since at least that date, the 

respondents have continued actively to induce infringement of the ‘ 187 patent, knowing that when 

202 

basis to suggest otherwise was the trial testimony of Dr. Chansarkar, which was inconsistent with 

his deposition testimony, and was not supported by any documents or reference to any documents. 

See Pratt Tr. 1155-1157,2879-2883; Chansarkar Tr. 2355-2357. 

Accordingly, it is found that respondents' accused products infringe claims 1 and, as to 

mobile devices, also claim 9 of the' 187 patent (except the so-called [ 

] As detailed below, 

complainants have demonstrated direct infringement by SiRF, and induced infringement by all 

respondents. 

2. SiRF's Direct Infringement 

SiRF directly infringes the' 187 patent by its extensive testing of the accused SiRF chips in 

the United States. Inasmuch as the infringement of the '187 patent depends upon the operation of 

the same software and hardware as the '801 patent, the analysis is the same for both patents. See 

Pratt Tr. 1167-1168. 

Furthermore, as quoted above, claim 9 expressly requires a "mobile device." The accused 

mobile devices of MiTAClMio, E-TEN and Pharos infringe claim 9 ofthe '187 patent. See Pratt 

Tr. 1159-1167 (mobile devices incorporating accused chips and performing all claim elements). 

3. All Respondents Have Induced Infringement 

SiRF, MiTAClMio, E-TEN, and Pharos actively induce infringement of the '187 patent. 

See 35 U.S.C. §271(b). As explained above, SiRF and the other respondents have had knowledge 

of the' 187 patent since Global Locate filed its complaint with the International Trade 

Commission on March 30, 2007, initiating this Investigation. And since at least that date, the 

respondents have continued actively to induce infringement of the' 187 patent, knowing that when 

202 
devices containing the SiRF chips are used, they will perform all of the steps of the asserted 

claims.66 Inasmuch as infringement of the ‘ 187 patent depends upon the operation of the same 

software and hardware as for the ‘801 patent, the inducement analysis above applies equally here. 

See also Pratt Tr. 1 168-1 169. 

C. Validity 

Respondents argue that complainants’ construction of dynamic model and sequential 

estimator encompasses a static model, and that static models with a time tag error were known 

before the invention of the ‘ 187 patent, including the ‘801 patent (asserted in this investigation) 

and the ‘670 patent (discussed above in connection with the ‘801 patent). See Resp. Br. at 212. 

In particular, respondents argue that if the accused SiRF SyncFreeNav module practices all 

the limitations of clams 1 and 9, as alleged by complainants, then the module invalidates the 

asserted claims because it was invented in 1999, over four years before the filing of the ‘ 187 

patent application. See Id. at 2 13- 15. 

Furthermore, respondents briefly argue that the ‘670 patent invalidates the asserted claims 

under complainants’ proposed claim constructions. See Id. at 216. Finally, in another brief 

argument, respondents allege that the asserted ‘801 patent invalidates the asserted claims of the 

‘ 187 patent under complainants’ proposed claim constructions, and add that like the ‘ 187 patent, 

claim 1 of the ‘ 1 87 patent merely recites a mathematical algorithm that is not patentable under 

section 101 of the Patent Act. See Id. at 216-21 7. 

Respondents’ invalidity arguments are opposed by complainants and the Staff. See 

Compl. Br at 257-59; Compl. Reply at 129-32; Staff Br. at 64 (arguing, among other things that 

66 See Pratt Tr. 1169; Mayo Tr. 1580-1583; CX-608C (summary of Mio US sales). 

203 

devices containing the SiRF chips are used, they will perform all of the steps of the asserted 

claims.66 Inasmuch as infringement of the '187 patent depends upon the operation of the same 

software and hardware as for the' 80 1 patent, the inducement analysis above applies equally here. 

See also Pratt Tr. 1168-1169. 

C. Validity 

Respondents argue that complainants' construction of dynamic model and sequential 

estimator encompasses a static model, and that static models with a time tag error were known 

before the invention of the' 187 patent, including the' 80 1 patent (asserted in this investigation) 

and the '670 patent (discussed above in connection with the '801 patent). See Resp. Br. at 212. 

In particular, respondents argue that if the accused SiRF SyncFreeNav module practices all 

the limitations of clams 1 and 9, as alleged by complainants, then the module invalidates the 

asserted claims because it was invented in 1999, over four years before the filing of the' 187 

patent application. See Id. at 213-15. 

Furthermore, respondents briefly argue that the '670 patent invalidates the asserted claims 

under complainants' proposed claim constructions. See Id. at 21.6. Finally, in another brief 

argument, respondents allege that the asserted '801 patent invalidates the asserted claims of the 

'187 patent under complainants' proposed claim constructions, and add that like the' 187 patent, 

claim 1 of the' 187 patent merely recites a mathematical algorithm that is not patentable under 

section 101 of the Patent Act. See Id. at 216-217. 

Respondents' invalidity arguments are opposed by complainants and the Staff. See 

Compi. Br at 257-59; CompI. Reply at 129-32; StaffBr. at 64 (arguing, among other things that 

66 See Pratt Tr. 1169; Mayo Tr. 1580-1583; CX-608C (summary ofMio US sales). 

203 
with respect to the SiRF system, the “evidence indicates that the navigation solution had not been 

implemented in any code”); Staff Reply Br. at 13-1 5. 

It Has Not Been Established That SiRF’s SyncFreeNav Module 

Anticipated the Asserted Claims 

Respondents argue that the very document complainants’ Dr. Pratt relied upon to show 

infringement predates the invention of the ‘ 1 87 patent and shows anticipation under 

complainants’ claim construction. See Resp. Br. at 2 12 (compare CX-335C (SiRF documentation 

concerning the SyncFreeNav) with JX-5 (‘ 187 Patent), 2 14 (alleging that complainants’ relied 

upon the document to argue literal infringement). Respondents do not contend that any art 

anticipates under their construction. See Id. at 2 12-2 17. 

The document in question, “Network Centric Location Algorithms,” does not appear to 

have been relied upon at all by respondents’ expert during the hearing to make an invalidity 

argument. Complainants argue that SiRF should be precluded from fashioning an anticipation 

defense around new arguments. See Compl. Reply at 129 (citing Order No. 2, Ground Rule 8.3 

(“[Elach party shall file a pre-hearing brief, which shall set forth with particularity a party’s 

contentions on each of the proposed issues . . . .”). Yet, in any event, the respondents fail to meet 

their burden of showing, by clear and convincing evidence, that the ‘ 187 is invalid. 

Indeed, complainant’s expert, Dr. Pratt, relied on the Network Centric Location 

Algorithms document (CX-335C) only to show that the accused SiRF products conduct sync-free 

processing (ie, that they calculate position without knowing absolute time). He did not rely on 

the document to show how the SiRF products reuse information from one sync-free calculation to 

the next (ie., to show that SiRF’s products contain a dynamic model or sequential estimator). See 

204 

with respect to the SiRF system, the "evidence indicates that the navigation solution had not been 

implemented in any code"); Staff Reply Br. at 13-15. 

It Has Not Been Established That SiRF's SyncFreeNav Module 

Anticipated the Asserted Claims 

Respondents argue that the very document complainants' Dr. Pratt relied upon to show 

infringement predates the invention of the' 187 patent and shows anticipation under 

complainants' claim construction. See Resp. Br. at 212 (compare CX-335C (SiRF documentation 

concerning the SyncFreeNav) with JX-5 (,187 Patent), 214 (alleging that complainants' relied 

upon the document to argue literal infringement). Respondents do not contend that any art 

anticipates under their construction. See Id. at 212-217. 

The document in question, "Network Centric Location Algorithms," does not appear to 

have been relied upon at all by respondents' expert during the hearing to make an invalidity 

argument. Complainants argue that SiRF should be precluded from fashioning an anticipation 

defense around new arguments. See CompI. Reply at 129 (citing Order No.2, Ground Rule 8.3 

("[E]ach party shall file a pre-hearing brief, which shall set forth with particularity a party's 

contentions on each of the proposed issues .... "). Yet, in any event, the respondents fail to meet 

their burden of showing, by clear and convincing evidence, that the' 187 is invalid. 

Indeed, complainant's expert, Dr. Pratt, relied on the Network Centric Location 

Algorithms document (CX-335C) only to show that the accused SiRF products conduct sync-free 

processing (i.e, that they calculate position without knowing absolute time). He did not rely on 

the document to show how the SiRF products reuse information from one sync-free calculation to 

the next (i.e., to show that SiRF's products contain a dynamic model or sequential estimator). See 

204 
Pratt Tr. 1075- 1077 

It has not been shown that all elements of the ‘ 187 patent’s claimed invention are present 

in the SiRF document. Indeed, respondents seem to base their argument on complainants’ 

supposed reliance on the document to prove all elements. Yet, for the elements of the ‘ 187 patent 

requiring the reuse of information from one sync-free calculation to the next, Dr. Pratt did not rely 

on the document in question. Instead, he relied on a detailed analysis of the SiW source code 

showing that the time tag error and position states are reused from one calculation to the next. See 

Pratt Tr. 1 153-1 154,2882-2883. 

Consequently, it has not been shown by clear and convincing evidence that SiRF’s 

sync-free module (or “SyncFreeNav”) anticipates the asserted claims of the ‘ 187 patent. 

The ‘670 and ‘801 Patents Do Not Anticipate the ‘187 Patent 

Respondents’ brief arguments concerning anticipation and the ‘670 and ‘801 patents are 

based on the assumption that Complainants’ proposed claim construction would encompass static 

models. See Resp. Br. at 216. However, complainants’ proposed construction does not do so, and 

moreover, the constructions adopted in this decision do not encompass static models. Indeed, it 

has not been shown that the ‘670 or ‘801 patents disclose repeated calculations of positions, much 

less calculations involving the use of prior state information. 

Consequently, it has not been shown by clear and convincing evidence that the either the 

‘670 patent or the ‘80 1 patent anticipates any asserted claim of the ‘ 187 patent. 

The ‘187 Patent Is Not Invalid for Lack of Enablement or Lack of 

Patentable Subject Matter 

Respondents’s arguments concerning alleged lack of enablement (as to both claims 1 

and 9) and failure to recite patentable subject matter (as to claim 1) are expressly based on the 

205 

Pratt Tr. 1075-1077. 

It has not been shown that all elements of the' 187 patent's claimed invention are present 

in the SiRF document. Indeed, respondents seem to base their argument on complainants' 

supposed reliance on the document to prove all elements. Yet, for the elements of the' 187 patent 

requiring the reuse of information from one sync-free calculation to the next, Dr. Pratt did not rely 

on the document in question. Instead, he relied on a detailed analysis of the SiRF source code 

showing that the time tag error and position states are reused from one calculation to the next. See 

Pratt Tr. 1153-1154,2882-2883. 

Consequently, it has not been shown by clear and convincing evidence that SiRF's 

sync-free module (or "SyncFreeNav") anticipates the asserted claims of the '187 patent. 

The '670 and '801 Patents Do Not Anticipate the '187 Patent 

Respondents' brief arguments concerning anticipation and the' 670 and '801 patents are 

based on the assumption that complainants' proposed claim construction would encompass static 

models. See Resp. Br. at 216. However, complainants' proposed construction does not do so, and 

moreover, the constructions adopted in this decision do not encompass static models. Indeed, it 

has not been shown that the' 670 or '801 patents disclose repeated calculations of positions, much 

less calculations involving the use of prior state information. 

Consequently, it has not been shown by clear and convincing evidence that the either the 

'670 patent or the' 80 1 patent anticipates any asserted claim of the' 187 patent. 

The '187 Patent Is Not Invalidfor Lack of Enablement or Lack of 

Patentable Subject Matter 

Respondents's arguments concerning alleged lack of enablement (as to both claims 1 

and 9) and failure to recite patentable subject matter (as to claim 1) are expressly based on the 

205 
same rationale as similar arguments involving the ‘801 patent. See Resp. Br. at 216-27. Those 

arguments were rejected in connection with the ‘801 patent, and thus they are rejected here. 

It has not been shown by clear and convincing evidence that the asserted claims of the 

‘ 187 patent are invalid due to a lack of enablement, or that claim 1 fails to recite patentable 

subject matter. 

D. Summary 

For the reasons discussed above, it is found that except for the so-called [ 

,] all of respondents’ products at issue in this investigation (the 

SiRFstarIII chips and GSCi-5000 chips (operating with the SiRFstarIII navigation software), the 

GSCi4100/4200 InstantGPS chips (operating with the GSCi4100/4200 firmware), and E-TEN, 

MiTACMio and Pharos products that incorporate the SiRFstarIII chips) infringe claims 1 and 9 

of the ‘ 187 patent. It has been established that SiRF directly infringes the claims, and that all 

respondents have engaged in induced infringement. 

Further, it has not been established by clear and convincing evidence that either claim is 

invalid due to anticipation. Nor does the record show that the claims lack enablement, or that 

claim 1 lacks patentable subject matter. 

VIII. Domestic Industry 

A. Background 

As stated in the notice of investigation, a determination must be made as to whether an 

industry in the United States exists as required by subsection (a)(2) of section 337. Section 337 

declares unlawfhl the importation, the sale for irnportation or the sale in the United States after 

importation of articles that infringe a valid and enforceable U.S. patent only if an industry in the 

206 

same rationale as similar arguments involving the '801 patent. See Resp. Br. at 216-27. Those 

arguments were rejected in connection with the '801 patent, and thus they are rejected here. 

It has not been shown by clear and convincing evidence that the asserted claims of the 

, 187 patent are invalid due to a lack of enablement, or that claim 1 fails to recite patentable 

subject matter. 

D. Summary 

F or the reasons discussed above, it is found that except for the so-called [ 

,] all of respondents' products at issue in this investigation (the 

SiRFstarIII chips and GSCi-5000 chips (operating with the SiRFstarIII navigation software), the 

GSCi41 00/4200 InstantGPS chips (operating with the GSCi41 00/4200 firmware), and E-TEN, 

MiTAClMio and Pharos products that incorporate the SiRFstarIII chips) infringe claims 1 and 9 

of the' 187 patent. It has been established that SiRF directly infringes the claims, and that all 

respondents have engaged in induced infringement. 

Further, it has not been established by clear and convincing evidence that either claim is 

invalid due to anticipation. Nor does the record show that the claims lack enablement, or that 

claim 1 lacks patentable subject matter. 

VIII. Domestic Industry 

A. Background 

As stated in the notice of investigation, a determination must be made as to whether an 

industry in the United States exists as required by subsection (a)(2) of section 337. Section 337 

declares unlawful the importation, the sale for importation or the sale in the United States after 

importation of articles that infringe a valid and enforceable U.S. patent only if an industry in the 

206 
United States, relating to articles protected by the patent . . . concerned, exists or is in the process 

of being established. There is no requirement that the domestic industry be based on the same 

claim or claims alleged to be infringed. 19 U.S.C. tj 1337(a)(2). 

The domestic industry requirement consists of both an economic prong (i.e., there must be 

an industry in the United States) and a technical prong (ie., that industry must relate to articles 

protected by the patent at issue). See Certain Ammonium Octamolybdate Isomers, Inv. No. 

337-TA-477, Comm’n Op. at 55, USITC Pub. 3668 (Jan. 2004). The complainant bears the 

burden of proving the existence of a domestic industry. Certain Methods of Making Carbonated 

Candy Products, Inv. No. 337-TA-292, Comm’n Op. at 34-35, USITC Pub. 2390 (June 1991). 

Thus, in this investigation it must be shown by complainants that they satisfy both the 

technical and economic prongs of the domestic industry requirement with respect to the asserted 

patents. 

B. Analvsis 

1. Technical Analvsis 

The ‘346, ‘801 and ‘187Putents 

No party disputes the fact that the technical prong of the domestic industry requirement is 

satisfied as to the ‘346, ‘801 and ‘187 patents. See Resp. Br. at 260-263 (arguments raised only 

with respect to the ‘651, ‘000 and ‘080 patents); Staff Br. at 27, 58, 64. Consequently, for the 

purposes of this investigation, the technical prong of the domestic industry requirement is deemed 

to be satisfied with respect to those patents. 

gg 

(-i 

The ‘000, ‘080 and ‘651 Patents 

As indicated above, complainants rely on the GL-20000 and Hammerhead products to 

207 

United States, relating to articles protected by the patent ... concerned, exists or is in the process 

of being established. There is no requirement that the domestic industry be based on the same 

claim or claims alleged to be infringed. 19 U.S.C. § 1337(a)(2). 

The domestic industry requirement consists of both an economic prong (i.e., there must be 

an industry in the United States) and a technical prong (i.e., that industry must relate to articles 

protected by the patent at issue). See Certain Ammonium Octamolybdate Isomers, Inv. No. 

337-TA-477, Comm'n Op. at 55, USITC Pub. 3668 (Jan. 2004). The complainant bears the 

burden of proving the existence of a domestic industry. Certain Methods of Making Carbonated 

Candy Products, Inv. No. 337-TA-292, Comm'n Op. at 34-35, USITC Pub. 2390 (June 1991). 

Thus, in this investigation it must be shown by complainants that they satisfY both the 

technical and economic prongs of the domestic industry requirement with respect to the asserted 

patents. 

B. Analysis 

1. Technical Analysis 

The '346, '801 and '187 Patents 

No party disputes the fact that the technical prong of the domestic industry requirement is 

satisfied as to the '346, '801 and '187 patents. See Resp. Bf. at 260-263 (arguments raised only 

with respect to the '651, '000 and '080 patents); StaffBr. at 27,58,64. Consequently, for the 

purposes of this investigation, the technical prong of the domestic industry requirement is deemed 

to be satisfied with respect to those patents. 

The '000, '080 and '651 Patents 

As indicated above, complainants rely on the GL-20000 and Hammerhead products to 

207 
satisfy the domestic industry requirement. It is argued that both run GPS software called the 

Global Locate Library (or “GLL”), which [ ] Complainants argue that the 

GL-20000 chip and the associated software have been incorporated into several commercial 

products, including Hewlett Packard’s HP iPAQ hw6500 and hx6900 series PDAs; and that the 

Hammerhead chip (released in 2005), is incorporated into several commercial products, including 

the TomTom One and TomTomOne XL personal navigation devices. Compl. Br. at 259. 

In their main brief, complainants argue (with citations to expert testimony and other record 

evidence) that as to each asserted patent, at least one claim is practiced with at least one of the 

aforementioned products. See Compl. Br. at 259-275. In their reply, complainants concentrate on 

the three Assisted-GPS patents, i. e., the three patents as to which technical prong was placed at 

issue by respondents’ main brief. See Compl. Reply at 45 (‘080 patent), 65-66 (‘000 patent), 86- 

87 (‘65 1 patent).67 

Respondents argue that complainants were unable to prove that Global Locate’s long-term 

orbit (or “LTO”) meets the “long term satellite tracking data” limitation of the asserted claims of 

the ‘080 patent “for the same reasons that the accused extended ephemeris does not meet” the 

limitation. With respect to the ‘000 patent, respondents argue that “[flor the same reasons that it 

failed to meet its burden of proving infringement, Global Locate also failed to prove a domestic 

industry for the ‘000 patent.” In particular, respondents argue that Global Locate lacks direction 

or control over the entities alleged to perform the steps of the asserted method claims of the ‘000 

67 As explained, supra, as a general matter of law, it is not necessary for a complainant to 

prove domestic industry as to an asserted claim, rather only as to one claim of each asserted 

patent. Nevertheless, in this case, complainants happen to rely on one or more asserted claims of 

the patents in order to prove domestic industry. 

208 

satisfy the domestic industry requirement. It is argued that both run GPS software called the 

Global Locate Library (or "GLL"), which [ ] Complainants argue that the 

GL-20000 chip and the associated software have been incorporated into several commercial 

products, including Hewlett Packard's HP iPAQ hw6500 and hx6900 series PDAs; and that the 

Hammerhead chip (released in 2005), is incorporated into several commercial products, including 

the TomTom One and TomTomOne XL personal navigation devices. Compl. Br. at 259. 

In their main brief, complainants argue (with citations to expert testimony and other record 

evidence) that as to each asserted patent, at least one claim is practiced with at least one of the 

aforementioned products. See CompI. Br. at 259-275. In their reply, complainants concentrate on 

the three Assisted-GPS patents, i.e., the three patents as to which technical prong was placed at 

issue by respondents' main brief. See Compi. Reply at 45 ('080 patent), 65-66 ('000 patent), 86-

87 ('651 patent).67 

Respondents argue that complainants were unable to prove that Global Locate's long-term 

orbit (or "L TO") meets the "long term satellite tracking data" limitation of the asserted claims of 

the '080 patent "for the same reasons that the accused extended ephemeris does not meet" the 

limitation. With respect to the '000 patent, respondents argue that "[f]or the same reasons that it 

failed to meet its burden of proving infringement, Global Locate also failed to prove a domestic 

industry for the '000 patent." In particular, respondents argue that Global Locate lacks direction 

or control over the entities alleged to perform the steps of the asserted method claims of the '000 

67 As explained, supra, as a general matter of law, it is not necessary for a complainant to 

prove domestic industry as to an asserted claim, rather only as to one claim of each asserted 

patent. Nevertheless, in this case, complainants happen to rely on one or more asserted claims of 

the patents in order to prove domestic industry. 

208 
patent. Finally, with respect to the ‘65 1 patent, respondents argue that complainants fail to prove 

that Global Locate practices the steps of “receiving,” “communicating,” and “processing;” that it 

uses the same satellite ephemeris for each step (of claim 1); and that any particular product and 

service combination practices the patent. See Resp. Br. at 260-263; Resp. Reply at 13 1-1 34. 

As discussed above, the Staff argued that complainants had not shown that any accused 

product infringes any asserted claim of the Assisted-GPS patents. Thus, the Staffs positions on 

the technical prong of the domestic industry requirement are similar, but not exactly the same as, 

those of respondents. The Staff presents only brief arguments (sometimes only two sentences 

long), but takes the position that complainants do not practice claims1 or 2 of the ‘000 patent; that 

the GL-20000 chip incorporated into the HP iPAQ and the Hammerhead chip incorporated into 

the TomTom One do in fact practice claim 1 of the ‘080 patent; but that complainants do not 

practice claims 1 or 2 of the ‘65 1 patent. See Staff Br. at 37-38,43-44, 50. 

As acknowledged in the parties’ briefs, in many respects, the arguments relating to the 

technical prong of the domestic industry requirement mirror those made in connection with the 

claim construction and infringement issues, except that the claims now must be compared to the 

alleged domestic industry products. Indeed, in order to show a violation of section 337, the 

Asserted-GPS patents must be read onto the alleged domestic industry products under the same 

claim constructions used in the infringement analyses. 

Consequently, to the extent it was found above that respondents’ proposed constructions 

impinged upon a proper reading of the patent claims, they remain rejected. A repeat of the prior 

claim construction analysis is not necessary. Further, the record shows that when the claims of the 

Assisted-GPS patents are construed correctly, complainants have shown that at least one claim of 

209 

patent. Finally, with respect to the '651 patent, respondents argue that complainants fail to prove 

that Global Locate practices the steps of "receiving," "communicating," and "processing;" that it 

uses the same satellite ephemeris for each step (of claim 1); and that any particular product and 

service combination practices the patent. See Resp. Br. at 260-263; Resp. Reply at 131-134. 

As discussed above, the Staff argued that complainants had not shown that any accused 

product infringes any asserted claim of the Assisted-GPS patents. Thus, the Staff s positions on 

the technical prong ofthe domestic industry requirement are similar, but not exactly the same as, 

those of respondents. The Staff presents only brief arguments (sometimes only two sentences 

long), but takes the position that complainants do not practice claimsl or 2 of the '000 patent; that 

the GL-20000 chip incorporated into the HP iP AQ and the Hammerhead chip incorporated into 

the TomTom One do in fact practice claim 1 of the '080 patent; but that complainants do not 

practice claims 1 or 2 of the '651 patent. See StaffBr. at 37-38, 43-44,50. 

As acknowledged in the parties' briefs, in many respects, the arguments relating to the 

technical prong of the domestic industry requirement mirror those made in connection with the 

claim construction and infringement issues, except that the claims now must be compared to the 

alleged domestic industry products. Indeed, in order to show a violation of section 337, the 

Asserted-GPS patents must be read onto the alleged domestic industry products under the same 

claim constructions used in the infringement analyses. 

Consequently, to the extent it was found above that respondents' proposed constructions 

impinged upon a proper reading of the patent claims, they remain rejected. A repeat of the prior 

claim construction analysis is not necessary. Further, the record shows that when the claims of the 

Assisted-GPS patents are construed correctly, complainants have shown that at least one claim of 

209 
each asserted patent is practiced so as to satisfy the domestic industry requirement. 

With respect to the ‘000 patent, Global Locate directs and controls the use of its LTO data, 

which is generated at its Worldwide Reference Network. Global Locate transmits this data for use 

at remote receivers containing the GL-20000 and Hammerhead chips and software, which cannot 

be [ 

rationale that infringement was found with respect to the accused products, it is found that the 

technical prong is satisfied with respect to the domestic industry products. 

] See Dafesh Tr. 81 1-814; Podshivalov Tr. 484-485. Under the same 

With respect to the ‘080 patent, under the same rationale that SiRF’s EE files were found 

to be a key aspect of infringement, it is found that the Global Locate chips and software that 

receive and implement Global Locate’s multi-day LTO service receive “long term satellite 

tracking data.” See Dafesh Tr. 8 1 1-8 13; Podshivalov Tr. 490; Pratt Tr. 1258- 1259. 

With respect to the ‘65 1 patent, contrary to respondents’ argument, complainants have 

identified specific products as the subject of the domestic industry, and there was extensive 

testimony at the hearing concerning Global Locate’s GL-20000 chips and Hammerhead chips as 

they are incorporated into the TomTom and HP mobile devices identified above, as well as the 

Global Locate services that those products use. See, e.g., van Diggelen Tr. 240-242; Podshivalov 

Tr. 482-483; Pratt Tr. 1171. 

Further, just as respondents failed to rebut complainants’ evidence relating to the direction 

and control issues with respect to SiRF’s Assisted-GPS system, so too they have failed to rebut 

complainants’ evidence regarding Global Locate products and services. The TomTom devices 

that incorporate Global Locate products cannot use [ 

Locate software operating with a Global Locate chip. See van Diggelen Tr. 262-263; Podshivalov 

] unless they have Global 

210 

each asserted patent is practiced so as to satisfy the domestic industry requirement. 

With respect to the' 000 patent, Global Locate directs and controls the use of its L TO data, 

which is generated at its Worldwide Reference Network. Global Locate transmits this data for use 

at remote receivers containing the GL-20000 and Hammerhead chips and software, which cannot 

be [ ] See Dafesh Tr. 811-814; Podshivalov Tr. 484-485. Under the same 

rationale that infringement was found with respect to the accused products, it is found that the 

technical prong is satisfied with respect to the domestic industry products. 

With respect to the '080 patent, under the same rationale that SiRF's EE files were found 

to be a key aspect of infringement, it is found that the Global Locate chips and software that 

receive and implement Global Locate's multi-day LTO service receive "long term satellite 

tracking data." See Dafesh Tr. 811-813; Podshivalov Tr. 490; Pratt Tr. 1258-1259. 

With respect to the '651 patent, contrary to respondents' argument, complainants have 

identified specific products as the subject of the domestic industry, and there was extensive 

testimony at the hearing concerning Global Locate's GL-20000 chips and Hammerhead chips as 

they are incorporated into the TomTom and HP mobile devices identified above, as well as the 

Global Locate services that those products use. See, e.g., van Diggelen Tr. 240-242; Podshivalov 

Tr. 482-483; Pratt Tr. 1171. 

Further, just as respondents failed to rebut complainants' evidence relating to the direction 

and control issues with respect to SiRF's Assisted-GPS system, so too they have failed to rebut 

complainants' evidence regarding Global Locate products and services. The TomTom devices 

that incorporate Global Locate products cannot use [ ] unless they have Global 

Locate software operating with a Global Locate chip. See van Diggelen Tr. 262-263; Podshivalov 

210 
Tr. 537. In a manner similar to that used by SiRF’s InstantFix service, LTO files provide the 

same received ephemeris, and further, the memory store at Global Locate’s Assisted-GPS servers 

provides [ 

Tr. 1257-1261; Podshivalov Tr. 488-489. 

] communicated to mobile GPS receivers. See Pratt 

In addition, the record contains extensive testimony concerning the use of the ephemeris to 

reduce code and frequency uncertainty to improve acquisition sensitivity in mobile GPS receivers 

using Global Locate chips, software and services. In fact, it appears undisputed that Global 

Locate software operating with a Global Locate GL-20000 or Hammerhead chip enters into [ 

1 

Consequently, based on the evidence pertaining to Global Locate’s chips, software, 

services, and the HP and TomTom products relied upon by complainants, it is found that the 

technical prong of the domestic industry requirement is satisfied by the practice of at least claim 1 

of the ‘651 patent. See Podshivalov Tr. 534-535; Pratt Tr. 1260-1261. 

In summary, it has been established that the technical prong of the domestic industry 

requirement is satisfied as to all asserted patents. 

2. Economic Analvsis 

The economic prong of the domestic industry requirement is defined in subsection 

337(a)(3) as follows: 

(3) For purposes of paragraph (2), an industry in the United States 

shall be considered to exist if there is in the United States, with 

respect to the articles protected by the patent, copyright, trademark 

or mask work concerned - 

21 1 

Tr. 537. In a manner similar to that used by SiRF's InstantFix service, LTO files provide the 

same received ephemeris, and further, the memory store at Global Locate's Assisted-GPS servers 

provides [ ] communicated to mobile GPS receivers. See Pratt 

Tr. 1257-1261; Podshivalov Tr. 488-489. 

In addition, the record contains extensive testimony concerning the use of the ephemeris to 

reduce code and frequency uncertainty to improve acquisition sensitivity in mobile GPS receivers 

using Global Locate chips, software and services. In fact, it appears undisputed that Global 

Locate software operating with a Global Locate GL-20000 or Hammerhead chip enters into [ 

] 

Consequently, based on the evidence pertaining to Global Locate's chips, software, 

services, and the HP and TomTom products relied upon by complainants, it is found that the 

technical prong of the domestic industry requirement is satisfied by the practice of at least claim 1 

of the '651 patent. See Podshivalov Tr. 534-535; Pratt Tr. 1260-1261. 

In summary, it has been established that the technical prong of the domestic industry 

requirement is satisfied as to all asserted patents. 

2. Economic Analysis 

The economic prong of the domestic industry requirement is defined in subsection 

337(a)(3) as follows: 

(3) For purposes of paragraph (2), an industry in the United States 

shall be considered to exist if there is in the United States, with 

respect to the articles protected by the patent, copyright, trademark 

or mask work concerned -

211 
(A) significant investment in plant and equipment; 

(B) significant employment of labor or capital; or 

(C) substantial investment in its exploitation, including 

engineering, research and development, or licensing. 

19 U.S.C. 9 1337(a)(3). 

The economic prong of the domestic industry requirement is satisfied by meeting the 

criteria of any one of the three factors listed above. 

In this investigation, complainants and respondents entered into a stipulation that the 

economic prong of the domestic industry requirement is satisfied by substantial investment in the 

engineering, as well as research and development, of Global Locate’s GL-20000 and 

Hammerhead products. The Staff did not oppose the stipulation. The stipulation was accepted 

during the evidentiary hearing. See Tr. 1563-1 564. 

Consequently, the economic prong of the domestic industry question is deemed to be 

satisfied as to each asserted patent. 

C. Conclusion 

In view of the parties’ technical arguments and economic stipulation, detailed above, there 

is no dispute that the domestic industry requirement is satisfied as to the ‘346, ‘801 and ‘187 

patents. The controverted issues relating to the domestic industry question pertained to the 

technical prong of the ‘000, ‘080 and ‘651 patents, and they have been resolved in Global 

Locate’s favor. 

Consequently, it is found that a domestic industry exists, and the domestic industry is 

satisfied as to all six patents asserted in this investigation. 

212 

(A) significant investment in plant and equipment; 

(B) significant employment oflabor or capital; or 

(C) substantial investment in its exploitation, including 

engineering, research and development, or licensing. 

19 U.S.C. § 1337(a)(3). 

The economic prong of the domestic industry requirement is satisfied by meeting the 

criteria of anyone of the three factors listed above. 

In this investigation, complainants and respondents entered into a stipulation that the 

economic prong of the domestic industry requirement is satisfied by substantial investment in the 

engineering, as well as research and development, of Global Locate's GL-20000 and 

Hammerhead products. The Staff did not oppose the stipulation. The stipUlation was accepted 

during the evidentiary hearing. See Tr. 1563-1564. 

Consequently, the economic prong of the domestic industry question is deemed to be 

satisfied as to each asserted patent. 

C. Conclusion 

In view of the parties' technical arguments and economic stipulation, detailed above, there 

is no dispute that the domestic industry requirement is satisfied as to the' 346, '801 and '187 

patents. The controverted issues relating to the domestic industry question pertained to the 

technical prong ofthe '000, '080 and '651 patents, and they have been resolved in Global 

Locate's favor. 

Consequently, it is found that a domestic industry exists, and the domestic industry is 

satisfied as to all six patents asserted in this investigation. 

212 
IX. Conclusions of Law 

1. The Commission has personal jurisdiction over the parties, and subject-matter 

jurisdiction over the investigation. 

2. The importation or sale requirement of section 337 is satisfied as to all accused 

products, except for one product that is still in development. 

3. It is found that the accused products infringe claims 4 and 11 of U.S. Patent No. 

6,606,346. 

4. It is not found that any asserted claim of the ‘346 patent is invalid. 

5. It is not found that the ‘346 patent is unenforceable. 

6. It is found that a domestic industry exists with respect the ‘346 patent. 

7. It is found that a violation of section 337 has occurred with respect to the ‘346 patent. 

8. It is found that the accused products (except for one product that is still in 

development) infringe claims 1,2 and 22 of United States Patent No. 7,158,080. 

9. It is not found that any claim of the ‘080 patent is invalid. 

10. It is not found that the ‘080 patent is unenforceable. 

1 1. It is found that a domestic industry exists for the ‘080 patent. 

12. It is found that a violation of section 337 has occurred with respect to the ‘080 patent. 

13. It is found that the accused products infringe claims 1,2 and 5 of United States Patent 

No. 6,65 1,000. 

14. It is not found that any asserted claim of the ‘000 patent is invalid. 

15. It is found that a domestic industry exists for the ‘000 patent. 

16. It is found that a violation of section 337 has occurred with respect to the ‘000 patent. 

213 

IX. Conclusions of Law 

1. The Commission has personal jurisdiction over the parties, and subject-matter 

jurisdiction over the investigation. 

2. The importation or sale requirement of section 337 is satisfied as to all accused 

products, except for one product that is still in development. 

3. It is found that the accused products infringe claims 4 and 11 of U.S. Patent No. 

6,606,346. 

4. It is not found that any asserted claim of the '346 patent is invalid. 

5. It is not found that the '346 patent is unenforceable. 

6. It is found that a domestic industry exists with respect the '346 patent. 

7. It is found that a violation of section 337 has occurred with respect to the '346 patent. 

8. It is found that the accused products (except for one product that is still in 

development) infringe claims 1,2 and 22 of United States Patent No. 7,158,080. 

9. It is not found that any claim of the '080 patent is invalid. 

10. It is not found that the '080 patent is unenforceable. 

11. It is found that a domestic industry exists for the '080 patent. 

12. It is found that a violation of section 337 has occurred with respect to the '080 patent. 

13. It is found that the accused products infringe claims 1,2 and 5 of United States Patent 

No. 6,651,000. 

14. It is not found that any asserted claim of the '000 patent is invalid. 

15. It is found that a domestic industry exists for the '000 patent. 

16. It is found that a violation of section 337 has occurred with respect to the '000 patent. 

213 
17. It is found that the accused products (except for one product that is still in 

development) infringe claims 1 and 2 of United States Patent No. 6,704,65 1. 

18. It is not found that any asserted claim of the ‘65 1 patent is invalid. 

19. It is not found that the ‘65 1 patent is unenforceable. 

20. It is found that a domestic industry exists for the ‘65 1 patent. 

21. It is found that a violation of section 337 has occurred with respect to the ‘651 patent. 

22. It is found that the accused products infringe claims 1,2 and 11 of United States 

Patent No. 6,417,801. 

23. It is not found that any asserted claim of the ‘801 patent is invalid. 

24. It is found that there is a domestic industry for the ‘801 patent. 

25. It is found that a violation of section 337 has occurred with respect to the ‘801 patent. 

26. It is found that the accused products (except for one product still in development) 

infringe claims 1 and 9 of United States Patent No. 6,937,187. 

27. It is not found that any claim of the ‘ 187 patent is invalid. 

28. It is found that domestic industry exists for the ‘ 187 patent. 

29. It is found that a violation of section 337 has occurred with respect to the ‘ 187 patent. 

X. Initial Determination and Order 

Based on the foregoing, it is the INITIAL DETERMINATION (“ID”) of the undersigned 

that a violation of section 337 of the Tariff Act of 1930, as amended, has occurred in the 

importation into the United States, the sale for importation, or the sale within the United States 

after importation of certain global positioning system or GPS devices and, or, products containing 

same by reason of infringement of claims 1,2 and 11 of U.S. Patent No. 6,417,801; claims 4 and 

214 

17. It is found that the accused products (except for one product that is still in 

development) infringe claims 1 and 2 of United States Patent No. 6,704,651. 

18. It is not found that any asserted claim of the '651 patent is invalid. 

19. It is not found that the' 651 patent is unenforceable. 

20. It is found that a domestic industry exists for the '651 patent. 

21. It is found that a violation of section 337 has occurred with respect to the '651 patent. 

22. It is found that the accused products infringe claims 1,2 and 11 of United States 

Patent No. 6,417,801. 

23. It is not found that any asserted claim of the' 80 1 patent is invalid. 

24. It is found that there is a domestic industry for the '801 patent. 

25. It is found that a violation of section 337 has occurred with respect to the '801 patent. 

26. It is found that the accused products (except for one product still in development) 

infringe claims 1 and 9 of United States Patent No. 6,937,187. 

27. It is not found that any claim of the' 187 patent is invalid. 

28. It is found that domestic industry exists for the' 187 patent. 

29. It is found that a violation of section 337 has occurred with respect to the '187 patent. 

X. Initial Determination and Order 

Based on the foregoing, it is the INITIAL DETERMINATION ("ID") of the undersigned 

that a violation of section 337 of the Tariff Act of 1930, as amended, has occurred in the 

importation into the United States, the sale for importation, or the sale within the United States 

after importation of certain global positioning system or GPS devices and, or, products containing 

same by reason of infringement of claims 1,2 and 11 of U.S. Patent No. 6,417,801; claims 4 and 

214 
11 of U.S. Patent No. 6,606,346; claims 1,2 and 5 of U.S. Patent No. 6,65 1,000; claims 1 and 2 

of U.S. Patent No. 6,704,651; claim 1 and 9 of U.S. Patent No. 6,937,187; or claims 1,2 and 22 of 

U.S. Patent No. 7,158,080. 

Further, this Initial Determination, together with the record of the hearing in this 

investigation consisting of: 

(1) the transcript of the hearing, with appropriate corrections as may hereafter be 

ordered, and 

(2) the exhibits received into evidence in this investigation, as listed in the attached 

exhibit lists, is CERTIFIED to the commission. 

In accordance with 19 C.F.R. 0 210.39(c), all material found to be confidential by the 

undersigned under 19 C.F.R. 0 210.5 is to be given in camera treatment. 

The Secretary shall serve a public version of this ID upon all parties of record and the 

confidential version upon counsel who are signatories to the Protective Order (Order No. 1) issued 

in this investigation, and upon the Commission investigative attorney. 

To expedite service of the public version, each party is hereby ORDEED to file with the 

Commission Secretary by no later than August 15,2008, a copy of this ID with brackets that show 

any portion considered by the party (or its suppliers of information) to be confidential, 

accompanied by a list indicating each page on which such a bracket is to be found. At least one 

copy of such a filing shall be served upon the Administrative Law Judge, and the brackets shall be 

marked in red. If a party (and its suppliers of information) considers nothing in the ID to be 

confidential, and thus makes no request that any portion be redacted from the public version of 

this ID, then a statement to that effect shall be filed in lieu of a document with brackets. 

215 

11 of u.S. Patent No. 6,606,346; claims 1,2 and 5 of U.S. Patent No. 6,651,000; claims 1 and 2 

of U.S. Patent No. 6,704,651; claim 1 and 9 of U.S. Patent No. 6,937,187; or claims 1,2 and 22 of 

u.s. Patent No. 7,158,080. 

Further, this Initial Determination, together with the record of the hearing in this 

investigation consisting of: 

(1) the transcript of the hearing, with appropriate corrections as may hereafter be 

ordered, and 

(2) the exhibits received into evidence in this investigation, as listed in the attached 

exhibit lists, is CERTIFIED to the Commission. 

In accordance with 19 C.F.R. § 210.39(c), all material found to be confidential by the 

undersigned under 19 C.F.R. § 210.5 is to be given in camera treatment. 

The Secretary shall serve a public version of this ID upon all parties of record and the 

confidential version upon counsel who are signatories to the Protective Order (Order No.1) issued 

in this investigation, and upon the Commission investigative attorney. 

To expedite service of the public version, each party is hereby ORDERED to file with the 

Commission Secretary by no later than August 15,2008, a copy of this ID with brackets that show 

any portion considered by the party (or its suppliers of information) to be confidential, 

accompanied by a list indicating each page on which such a bracket is to be found. At least one 

copy of such a filing shall be served upon the Administrative Law Judge, and the brackets shall be 

marked in red. If a party (and its suppliers of information) considers nothing in the ID to be 

confidential, and thus makes no request that any portion be redacted from the public version of 

this ID, then a statement to that effect shall be filed in lieu of a document with brackets. 

215 
Pursuant to 19 C.F.R. Cj 210.42(h), this Initial Determination shall become the determination of 

the Commission unless a party files a petition for review pursuant to 5 2 10.43(a) or the 

Commission, pursuant to tj 210.44, orders on its own motion a review of the ID or certain issues 

herein. 

Carl C. Charneski 

Administrative Law Judge 

Issued: August 8,2008 

21 6 

A 

Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the determination of 

the Commission unless a party files a petition for review pursuant to § 21 0.43(a) or the 

Commission, pursuant to § 210.44, orders on its own motion a review of the ID or certain issues 

herein. 

Issued: August 8, 2008 

216 

GJ2 c Cj,avw~ Carl C. Charneski 

Administrative Law Judge 
CERTAIN GPS CHIPS DEVICES AND PRODUCTS CONTAINING SAME 

Inv. No. 337-TA-602 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certifL that the attached INITIAL DETERMINATION has been 

served by hand upon the Commission Investigative Attorney, Vu Q. Bui, Esq., and the following 

parties as indicated, on 

November 25, 2008 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, D.C. 20436 

FOR COMPLAINANT GLOBAL 

LOCATE, INC.: 

Michael D. Esch, Esq. 

WILMER CUTLER PICKEXING HALE 

AND DORR LLP 

1875 Pennsylvania Ave., N.W. 

Washington, D.C. 20006 

FOR RESPONDENT SIRF 

TECHNOLOGY, INC.: 

Steven E. Adkins, Esq. 

JONES DAY 

5 1 Louisiana Ave., N.W. 

Washington, D.C. 20001-21 13 

( ) Via Hand Delivery 

ia Overnight Mail 

( ) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

ia Overnight Mail 

( ) Via First Class Mail 

( )Other: 

CERTAIN GPS CHIPS DEVICES AND PRODUCTS CONTAINING SAME 

Inv. No. 337-TA-602 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached INITIAL DETERMINATION has been 

served by hand upon the Commission Investigative Attorney, VU Q. Bui, Esq., and the following 

parties as indicated, on 

November 25, 2008 

FOR COMPLAINANT GLOBAL 

LOCATE, INC.: 

Michael D. Esch, Esq. 

WILMER CUTLER PICKERING HALE 

AND DORRLLP 

1875 Pennsylvania Ave., N.W. 

Washington, D.C. 20006 

FOR RESPONDENT SIRF 

TECHNOLOGY, INC.: 

Steven E. Adkins, Esq. 

JONES DAY 

51 Louisiana Ave., N.W. 

Washington, D.C. 20001-2113 

arilyn R. bott, Secretary 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, D.C. 20436 

( ) Via Hand Delivery 

(vyVia Overnight Mail 

( ) Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

(\?'Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 
CERTAIN GPS CHIPS DEVICES AND PRODUCTS CONTAINING SAME 

F. David Foster, Esq. 

MILLER & CHEVALIER CHARTERED 

655 Fifteenth St., N.W. 

Suite 900 

Washington, D.C. 20005 

Inv. No. 337-TA-602 

( ) Via Hand Delivery 

Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

FOR RESPONDENTS SIRF 

PHAROS SCIENCE & APPLICATIONS, 

INC., MITAC INTERNATIONAL 

CORP., AND MI0 TECHNOLOGY 

LIMITED, USA.: 

TECHNOLOGY, INC., E-TEN CORP., 

PUBLIC MAILING LIST 

Sherry Robinson 

8891 Gander Creek Drive 

Miamisburg, OH 45342 

LEXIS - NEXIS 

Kenneth Clair 

Thomson West 

1100 Thirteen Street, NW, Suite 200 

Washington, DC 20005 

CERTAIN GPS CHIPS DEVICES AND PRODUCTS CONTAINING SAME 

FOR RESPONDENTS SIRF 

TECHNOLOGY, INC., E-TEN CORP., 

PHAROS SCIENCE & APPLICATIONS, 

INC., MITAC INTERNATIONAL 

CORP., AND MIO TECHNOLOGY 

LIMITED, USA.: 

F. David Foster, Esq. 

MILLER & CHEVALIER CHARTERED 

655 Fifteenth St., N.W. 

Suite 900 

Washington, D.C. 20005 

Inv. No. 337-TA-602 

( ) Via Hand Delivery 

(0Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

PUBLIC MAILING LIST 

Sherry Robinson 

LEXIS - NEXIS 

8891 Gander Creek Drive 

Miamisburg, OH 45342 

Kenneth Clair 

Thomson West 

1100 Thirteen Street, NW, Suite 200 

Washington, DC 20005