UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ASUSTEK COMPUTER INC. AND ASUS COMPUTER INTERNATIONAL,
`Petitioners,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2019-00071
`
`U.S. Patent No. 6,430,498
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,430,498
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`
`TABLE OF AUTHORITIES ................................................................................. IV
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`BACKGROUND ............................................................................................ 3
`A.
`Technology Background ...................................................................... 3
`B.
`Overview of the ’498 Patent Invention ................................................ 3
`C.
`Summary of Petitioner’s Proposed Grounds of Unpatentability
`and the References Cited ...................................................................... 5
`III. CLAIM CONSTRUCTION ........................................................................... 6
`A.
`“a device for getting location information denoting a present
`place of said portable terminal” and “a device for getting
`direction information denoting an orientation of said portable
`terminal” (Claims 1, 5, and 10) ............................................................ 8
`“walking navigation,” “walking navigation information,” and
`“said walking navigation” (Claims 1, 5, and 10)” ............................. 11
`“route guidance information” and “neighborhood guidance
`information” (Claims 1, 5, 8, and 10) ................................................ 11
`LEGAL STANDARD .................................................................................. 12
`THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM ............................................................................. 13
`A.
`Ground 1: Petitioner Failed To Establish That Claims 1-3, 5-8
`are Obvious Over Suzuki and Nosaka. .............................................. 13
`1.
`Ground 1 Has No Reasonable Likelihood of Succeeding
`Because the Suzuki/Nosaka Combination Does Not
`Disclose or Suggest Each and Every Element of the
`Challenged Claims ................................................................... 13
`Ground 1 Has No Reasonable Likelihood of Succeeding
`Because Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Arguments
`for Suzuki/Nosaka. ................................................................... 21
`
`IV.
`V.
`
`2.
`
`i
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`B.
`
`C.
`
`D.
`
`E.
`
`2.
`
`Ground 2: Petitioner Failed to Established That Claims 1-3 and
`5-8 are Obvious Over Suzuki in view of Colley. ............................... 27
`1.
`Ground 2 Has No Reasonable Likelihood of Succeeding
`Because the Suzuki/Colley Combination Does Not
`Disclose or Suggest Each and Every Element of the
`Challenged Claims. .................................................................. 27
`Ground 2 Has No Reasonable Likelihood of Succeeding
`Because Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Arguments
`for Suzuki/Colley. .................................................................... 33
`Ground 3: Petitioner Failed to Established That Claims 1-3 and
`5-7 are Rendered Obvious By Suzuki in view of Colley and
`Ellenby. ............................................................................................... 34
`1.
`Ground 3 Has No Likelihood of Succeeding Because the
`Suzuki/Colley/Ellenby Combination Does Not Disclose
`or Suggest Each and Every Element of the Challenged
`Claims. ..................................................................................... 34
`Ground 3 Has No Reasonable Likelihood of Succeeding
`Because Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Combination
`of Suzuki and Colley and Ellenby. .......................................... 36
`Ground 4: Petitioner Failed to Established That Claims 1-7, 9-
`13 are Rendered Obvious By Norris in view of Colley. .................... 37
`1.
`Ground 4 Has No Reasonable Likelihood of Succeeding
`Because Norris in view of Colley Does Not Disclose or
`Suggest Each and Every Element of the Challenged
`Claims. ..................................................................................... 37
`Ground 4 Has No Reasonable Likelihood of Succeeding
`Because Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Combination
`of Norris With Colley. ............................................................. 43
`Ground 5: Petitioner Failed to Established That Claims 1-2, 5-6,
`8, 10, and 12 are Rendered Obvious by Norris in view of
`Nosaka and Colley.............................................................................. 48
`
`2.
`
`2.
`
`ii
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`1.
`
`2.
`
`2.
`
`Ground 5 Has No Likelihood of Succeeding Because
`Norris in view of Nosaka and Colley Does Not Disclose
`or Suggest Each and Every Element of the Challenged
`Claims. ..................................................................................... 48
`Ground 5 Has No Likelihood of Succeeding Because
`Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Combination
`of Norris With Nosaka and Colley. ......................................... 49
`Ground 6: Petitioner Failed to Established That Claims 1-2, 5-6,
`8, 10, and 12 are Rendered Obvious By Norris in view of
`Colley and Ellenby. ............................................................................ 51
`1.
`Ground 6 Has No Likelihood of Succeeding Because
`Norris in view of Colley and Ellenby Does Not Disclose
`or Suggest Each and Every Element of the Challenged
`Claims. ..................................................................................... 52
`Ground 6 Has No Likelihood of Succeeding Because
`Petitioner Does Not Articulate Any Rational
`Underpinning for Petitioner’s Obviousness Combination
`of Norris With Colley and Ellenby. ......................................... 53
`The Board Should Disregard Mr. Andrews’s Conclusory
`Declaration and Most of Petitioner’s Exhibits ................................... 54
`THE PETITION SHOULD BE DENIED BECAUSE IT EXCEEDS
`THE WORD LIMIT BY IMPROPERLY INCORPORATING
`ARGUMENTS BY REFERENCE ............................................................... 57
`VII. CONCLUSION ............................................................................................. 59
`
`VI.
`
`F.
`
`G.
`
`iii
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`A. C. Dispensing Equipment Inc. v. Prince Castle LLC,
`
`IPR2014-00511, Paper No. 16 (P.T.A.B. March 17, 2014) ............................... 59
`ActiveVideo Networks, Inc. v. Verizon Comm’s, Inc.,
`
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 22, 44
`Apple Inc., v. Immersion Corporation,
`
`IPR2016-01372, Paper No. 7 (January 11, 2017) ................................................. 9
`Facebook, Inc. v. Sound View Innovations, LLC,
`
`IPR2017-01004, Paper No. 13 (Aug. 29, 2017) ................................................... 9
`Facebook, Inc. v. Sound View Innovations, LLC,
`
`IPR2017-01006, Paper No. 14 (Aug. 29, 2017) ................................................... 9
`Ferring B.V. v. Watson Laboratories, Inc.-Florida,
`
`764 F.3d 1401 (Fed. Cir. 2014) .......................................................................... 24
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper No. 59 (P.T.A.B. Nov. 13, 2013) ................................ 7, 8
`Graham v. John Deere Co. of Kansas City,
`
`383 U.S. 1 (1966) .........................................................................................passim
`Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.,
` Case IPR2017-00152, Paper No. 8 (P.T.A.B. Mar. 23, 2017) ....................passim
`In re Abbott Diabetes Care, Inc.,
`
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 7
`In re Am. Acad. Of Sci. Tech. Ctr.,
`
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 6
`In re Kahn,
`
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 22, 45
`
`iv
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`In re NTP, Inc.,
`
`654 F.3d 1279 (Fed. Cir. 2011) ........................................................................ 6, 7
`In re Suitco Surface, Inc.,
`
`603 F.3d 1255 (Fed. Cir. 2010) ........................................................................ 7, 8
`In re Translogic Tech., Inc.,
`
`504 F.3d 1249 (Fed. Cir. 2007) ............................................................................ 7
`Innogenetics, N. V. v. Abbott Labs.,
`
`512 F.3d 1363 (Fed. Cir. 2008) .............................................................. 22, 45, 56
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 12
`Kinetic Techs., Inc. v. Skyworks Sol’ns, Inc.,
`
`IPR2015-00529, Paper No. 8 (P.T.A.B. Sept. 23, 2014 ..................................... 57
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007) .....................................................................................passim
`LG Electronics, Inc. v. Cellular Communications Equipment LLC,
`
`IPR2016-00197, Paper No. 7 (PTAB Apr. 29, 2016)............................. 25, 27, 48
`
`Liberty Mutual Insurance Company v. Progressive Casualty
`Insurance Company,
` CBM2012- 00003, Paper No. 8 (P.T.A.B. Sept. 16, 2012) ................................ 59
`Medichem, S.A. v. Rolabo, S.L.,
`
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 12
`Microsoft Corp. v. Proxyconn, Inc.,
`
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 6
`Pride Solutions LLC v. Not Dead Yet Manufacturing, Inc.,
`
`IPR2013-00627, Paper No. 14 (March 17, 2014) ................................................. 9
`Renishaw PLC v. Marposs Societa’ per Azioni,
`
`158 F.3d 1243 (Fed. Cir. 1998) ............................................................................ 8
`Trivascular, Inc. v. Samuels,
`
`812 F.3d 1056 (Fed. Cir. 2016) .................................................................... 23, 45
`
`v
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`
`655 F.3d 1352 (Fed. Cir. 2011) .................................................................... 22, 45
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`
`IPR2013-00054, Paper No. 12 (P.T.A.B. Apr. 8, 2013) .................................... 58
`Statutes
`37 C.F.R. § 1.75(d)(1) ................................................................................................ 7
`37 C.F.R. § 42.6(a)(3). ............................................................................................. 57
`37 C.F.R. § 42.65(a). ............................................................................................ 2, 56
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`37 C.F.R. § 42.104(b)(4) ..................................................................14, 16, 29, 30, 40
`35 U.S.C. § 103(a) ............................................................................................passim
`77 Fed. Reg. 48756 (Aug. 14, 2012).......................................................................... 6
`
`vi
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`I.
`
`INTRODUCTION
`Patent Owner Maxell, Ltd. (“Patent Owner”) respectfully requests that the
`
`Board deny institution because Petitioner Asustek Computer Inc. and Asus
`
`Computer International (hereinafter “Petitioner”) have failed to demonstrate a
`
`reasonable likelihood of success on the grounds submitted in its Petition for
`
`challenging the patentability of claims 1-13 (“challenged claims”) of U.S. Patent
`
`No. 6,430,498 (“the ’498 patent”).
`
`First, Petitioner fails to show a reasonable likelihood of prevailing because
`
`it has not shown that the cited references anticipate or render obvious claims 1-13
`
`of the ’498 patent. Neither Suzuki nor Norris disclose the arrangement of claims
`
`as set forth in the Petition. Further, none of Petitioner’s obviousness arguments,
`
`whether modifications of Suzuki or Norris alone, or the Suzuki/Nosaka,
`
`Suzuki/Colley/Ellenby,
`
`Norris/Colley,
`
`Norris/Nosaka/Colley,
`
`and
`
`Norris/Colley/Ellenby combinations, disclose each limitation.
`
`Second, Petitioner also fails to show a reasonable likelihood of prevailing
`
`because the entire Petition relies on hindsight reconstruction of the invention
`
`without any explanation why a person having ordinary skill in the art (POSITA)
`
`would have been motivated to modify and/or combine the primary references
`
`(Suzuki, Norris) with various secondary references or purported knowledge of a
`
`POSITA, none of which disclose a limitation required by all of the challenged
`
`1
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`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`claims. Often, Petitioner does not explain which elements from each reference it
`
`contends would have been obvious to combine with specified elements of the other
`
`references or knowledge of a POSITA. Rather, Petitioner states what a POSITA
`
`“would understand,” but such statements cannot satisfy the obviousness test under
`
`KSR. In the absence of such an identification, there can be no discussion at all of
`
`why those particular elements would or would not have been obvious to combine
`
`to arrive at the claimed invention. Petitioner therefore falls short of carrying its
`
`burden to explain the grounds of unpatentability on which its Petition is based.
`
`Finally, throughout the Petition, Petitioner makes a number of conclusory
`
`statements regarding its arguments. Additionally, the Declaration provided by Mr.
`
`Andrews simply parrots these same conclusory statements found in the Petition
`
`without any additional analysis. See 37 C.F.R. §42.65(a) (“Expert testimony that
`
`does not disclose the underlying facts or data on which the opinion is based is
`
`entitled to little or no weight.”). These conclusory statements by Petitioner and
`
`Petitioner’s expert do not assist in demonstrating obviousness because they do not
`
`provide the rational underpinning necessary to establish obviousness. As the
`
`evidence discussed herein will show, Petitioner has failed to meet its burden of
`
`showing a reasonable likelihood of prevailing because the cited references simply
`
`do not disclose each and every element of the challenged claims and Petitioner’s
`
`expert provides no additional support for many of the conclusory statements
`
`2
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`located throughout the Petition.
`
`Accordingly, the Board should refuse to institute this inter partes review.
`
`II.
`
`BACKGROUND
`A.
`Technology Background
`The claims at issue in the ’498 Patent generally relates to a mobile device,
`
`such as a smartphone, that can determine the location and orientation of the device
`
`and directional information that a user can view to assist with walking navigation.
`
`In addition, one embodiment of the ’498 Patent allows a user to get the location of
`
`location of another mobile device, such as another smartphone.
`
`Overview of the ’498 Patent Invention
`B.
`The ’498 Patent is entitled “Portable Terminal with the Function of Walking
`
`Navigation,” and has a priority date of no later than July 12, 1999. The ’498 Patent
`
`was filed on July 11, 2000, and issued on August 6, 2002.
`
`The ’498 Patent solves a problem that existed in conventional navigation
`
`systems at the time. Prior to the ’498 Patent, conventional navigation systems were
`
`unsuitable for walking navigation. ASUS-1001 at 1:25-37.1 Conventional systems
`
`1 Accordingly, the referenced navigation systems in the Petition or by Mr.
`Andrews—e.g., the Telepath 100, TravTek In-Vehicle System, and Acura RL
`Navigation Systems—are all mounted in a vehicle and suitable for use only in
`vehicles. See Petition at 9-11; ASUS-1003, §5. Further, ASUS does not rely on
`(Footnote continued)
`
`3
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`were too large to be carried by a walking user, would not provide information
`
`about the direction and orientation of a user, and were unsuitable for display on the
`
`smaller screens of portable devices, among other problems. Id. at 1:25-46.
`
`Recognizing these shortcomings with conventional systems, the inventors
`
`of the ’498 Patent conceived a portable terminal that would aid users who wished
`
`to have real-time directions while walking. Id. at 2:44-54. These inventors
`
`implemented a portable terminal that displays information about the direction a
`
`user is facing. Additionally, it displays navigation information that can be
`
`displayed on screens to aid the user to walk to a desired destination. These displays
`
`were of different sizes including, for example, a narrow screen of a portable
`
`terminal. Id. at 2:66-3:35.
`
`The popularity and use of smart phones with GPS functionality has made
`
`traditional GPS standalone systems obsolete, and GPS is now considered a
`
`necessary feature for smart phones. End users of smart phones expect to be able to
`
`use their phones to get walking directions, instead of relying on maps. The ’498
`
`Patent addressed this need and provides a solution to the problem of providing
`
`walking navigation including orientation of the user while walking such that the
`
`any of these references for anticipation or obviousness and, thus, these references
`are irrelevant.
`
`4
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`position information is updated precisely and in real time. The inventors conceived
`
`these solutions as early as July 12, 1999–well before the wide acceptance of smart
`
`phones and eight years before the first release of the first iPhone in June 2007.
`
`C.
`
`Summary of Petitioner’s Proposed Grounds of Unpatentability
`and the References Cited
`Petitioner contends that claims 1-13 would have been obvious under pre-
`
`AIA 35 U.S.C. § 103(a). The Petition raises nine grounds of alleged invalidity
`
`based on the following five references.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Japanese Patent No. H07-280583 (“Japanese Suzuki”) and the
`corresponding English translation (“Suzuki”)
`
`Japanese Patent No. H10-170301 (“Japanese Nosaka”) and the
`corresponding English translation (“Nosaka”)
`
`U.S. Patent No. 5,781,150 (“Norris”)
`
`U.S. Patent No. 5,592,382 (“Colley”)
`
`U.S. Patent No. 5,815,411 (“Ellenby”)
`
`The Petition asserts the following six anticipation and/or obviousness grounds:
`
`Ground
`1
`2
`3
`4
`5
`
`6
`
`’498 Patent
`Claims
`Claims 1-3, 5-8
`Claims 1-3, 5-8
`Claims 1-3, 5-7
`Claims 1-7, 9-13
`Claims 1-2, 5-6, 8,
`10, 12
`Claims 1-2, 5-6, 8,
`10, 12
`
`Type of
`Challenge
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Primary
`Reference
`Suzuki
`Suzuki
`Suzuki
`Norris
`Norris
`
`Secondary
`Reference
`Nosaka
`Colley
`Colley, Ellenby
`Colley
`Nosaka, Colley
`
`§ 103
`
`Norris
`
`Colley, Ellenby
`
`5
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`III. CLAIM CONSTRUCTION
`When considering whether to institute a patent trial, the Board has indicated
`
`that it will interpret the claims of a challenged patent using a “broadest reasonable
`
`construction” approach. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48766 (Aug. 14, 2012). In applying such a standard, it is important to recognize
`
`that the broadest reasonable construction of claim language is not one that permits
`
`any reading thereof. Instead, it is one that must be made “in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art.” In re
`
`Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also In re
`
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (vacating Board decision based on
`
`erroneous claim construction; “While the Board must give the terms their broadest
`
`reasonable construction, the construction cannot be divorced from the specification
`
`and the record evidence” (internal citation omitted)). Moreover, the Board “should
`
`also consult
`
`the patent’s prosecution history
`
`in
`
`[inter partes
`
`review]
`
`proceedings . . . .” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015) (internal citation omitted). ). Of course, patent claims must “conform to
`
`the invention as set forth in the remainder of the specification and the terms and
`
`phrases used in the claims must find clear support or antecedent basis in the
`
`description so that the meaning of the terms in the claims may be ascertainable by
`
`reference to the description.” 37 C.F.R. § 1.75(d)(1). That is, “[c]laim terms are
`
`6
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`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`also given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure.” Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 59 at 8 (P.T.A.B. Nov. 13,
`
`2013) (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).
`
`Given that claims are construed in the context of the description of the
`
`invention, it is error to construe claims in a way that conflicts with the description.
`
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (vacating Board
`
`decision based on erroneous claim construction and stating: “The broadest-
`
`construction rubric coupled with the term ‘comprising’ does not give the PTO an
`
`unfettered license to interpret claims to embrace anything remotely related to the
`
`claimed invention. Rather, claims should always be read in light of the
`
`specification and teachings in the underlying patent.”); see also, In re NTP, Inc.,
`
`654 F.3d 1279, 1288 (Fed. Cir. 2011) (vacating Board decision based on erroneous
`
`claim construction and stating: “While the Board must give the terms their
`
`broadest reasonable construction, the construction cannot be divorced from the
`
`specification and the record evidence.”); In re Abbott Diabetes Care, Inc., 696 F.3d
`
`1142, 1149 (Fed. Cir. 2012) (vacating Board decision based on erroneous claim
`
`construction and stating: “Although the PTO emphasizes that it was required to
`
`give all claims their broadest reasonable construction, . . . this court has instructed
`
`that any such construction be consistent with the specification, and that claim
`
`7
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`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art.” (quoting In re Suitco Surface, Inc., 603 F.3d at
`
`1260) (ellipses in original)). Ultimately, “[t]he construction that stays true to the
`
`claim language and most naturally aligns with the inventor’s description is likely
`
`the correct interpretation.” Garmin Int’l, Inc., IPR2012-00001, Paper 59 at 8
`
`(citing Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
`
`Cir. 1998)).
`
`Patent Owner objects to certain of Petitioner’s statements related to its
`
`proposed constructions:
`
`A.
`
`“a device for getting location information denoting a present place
`of said portable terminal” and “a device for getting direction
`information denoting an orientation of said portable terminal”
`(Claims 1, 5, and 10)
`Patent Owner agrees that both of these terms are means-plus-function terms.
`
`However, Patent Owner disagrees with Petitioner that these terms are indefinite for
`
`lack of sufficient corresponding structure (i.e., lack of sufficient algorithm). See
`
`Petition, at 14-18.2
`
`2 Petitioner raises certain indefiniteness allegations against the identified means-
`plus-function terms that Petitioner claims it intends to argue in district court.
`Patent Owner disputes these allegations and notes that Petitioner has been able to
`identify the associated structures for each of these terms in the Petition. Patent
`Owner reserves the right to provide further arguments in response to Petitioner’s
`(Footnote continued)
`
`8
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`If a challenged claim has a means-plus-function term, the petitioner is
`
`required to “identify the specific portions of the specification that describe the
`
`structure, material, or acts corresponding to each claimed function.” 37 C.F.R. §
`
`42.104(b)(3). The Board has routinely denied
`
`institution or
`
`terminated
`
`proceedings for failure to identify the corresponding structure in the specification.
`
`See, e.g. Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-01006, Paper
`
`No. 14 (Aug. 29, 2017); Facebook, Inc. v. Sound View Innovations, LLC,
`
`IPR2017-01004, Paper No. 13 (Aug. 29, 2017); Apple Inc., v. Immersion
`
`Corporation, IPR2016-01372, Paper 7 (January 11, 2017); Pride Solutions LLC v.
`
`Not Dead Yet Manufacturing, Inc., IPR2013-00627, Paper No. 14 (March 17,
`
`2014).
`
`Accordingly, Petitioner forwarded constructions for the corresponding
`
`structure for these two means-plus-function terms as follows:
`
` “a device for getting location information denoting a present place of
`
`said portable terminal” means “a wireless or cellular antenna, or a
`
`GPS, or a Personal Handyphone System; and an infrared ray sensor;
`
`and a control unit for analyzing received data, with the control unit
`
`indefiniteness allegations at the district court, or to the extent Petitioner attempts to
`pursue such arguments in this proceeding.
`
`9
`
`

`

`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
`
`calculating location information as disclosed in 5:48-56, and Fig. 2.”
`
`Petition at 18-19.
`
` “a device for getting direction information denoting an orientation of
`
`said portable terminal” means “a compass, a gyro, a clinometer, and a
`
`control unit for analyzing sensor-measured data, thereby calculating
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`direction information denoting an orientation of said portable
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`terminal, with the control unit calculating direction information as
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`disclosed in 4:14-29, 5:56-62, and Fig. 2.” Petition at 19.
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`Petitioner claims that they “have applied [Patent Owner]’s proposed
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`algorithm as the claimed structure for purposes of this IPR, as the alleged BRI.”
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`Petition at 18. That is not accurate. See ASUS-1023.
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`However, for purposes of this Preliminary Response only, Patent Owner
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`does not dispute Petitioner’s proposed constructions for the corresponding
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`structure for these two means-plus-function terms.3
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`3 Patent Owner reserves all rights regarding arguments for the construction of these
`terms under the Phillips standard, i.e., as set forth in litigation and/or in Patent
`Owner’s response to the extent the PTAB decides to institute this Petition. For
`example, the Petitioner’s proposed structure are overly narrow and conflate various
`alternative structures disclosed in the specification. However, Patent Owner will
`apply Petitioner’s forwarded constructions to the prior art in its Preliminary
`(Footnote continued)
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`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`B.
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`“walking navigation,” “walking navigation information,” and
`“said walking navigation” (Claims 1, 5, and 10)”
`As Petitioner notes, a previous court has construed the terms “walking
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`navigation” and “walking navigation information” as “information to navigate a
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`user who is walking” and Petitioner has applied that construction in its analysis.
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`Petition at 20. Patent Owner agrees that this construction is proper and have
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`adopted this construction in its Preliminary Response.
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`For “said walking navigation,” Petitioner states that this term is indefinite
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`for lack of antecedent basis and, for purposes of the IPR, means “walking
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`navigation information.” Petition at 20. Patent Owner disagrees that this term is
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`indefinite and does not believe it needs to be construed differently than the
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`“walking navigation” and “walking navigation information” terms. However, for
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`purposes of this IPR, Patent Owner adopts Petitioner’s proposed construction in its
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`Preliminary Response.
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`C.
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`information” and “neighborhood guidance
`“route guidance
`information” (Claims 1, 5, 8, and 10)
`Patent Owner disagrees with Petitioner that these terms are indefinite.
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`Patent Owner agrees that the proper construction of these terms is “plain and
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`ordinary meaning” and has applied that construction in its Preliminary Response.
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`Response because it is Petitioner’s burden to propose a construction and then apply
`these constructions in the prior art analysis, which Petitioner fails to do.
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`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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` To the extent Patent Owner has further objections to Petitioner’s proposed
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`or implicit constructions, such objections are not pertinent to this Preliminary
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`Response. Accordingly, Patent Owner reserves all rights to provide additional
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`arguments relating to Petitioner’s claim construction positions if institution occurs.
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`IV. LEGAL STANDARD
`A claim is not patentable if the differences between it and the prior art are
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`such that the subject matter as a whole would have been obvious to a person of
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`ordinary skill in the art at the time of the invention. 35 U.S.C. § 103(a) (pre-AIA).
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`Obviousness requires assessing (1) the “level of ordinary skill in the pertinent art,”
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`(2) the “scope and content of the prior art,” (3) the “differences between the prior
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`art and the claims at issue,” and (4) “secondary considerations” of non-obviousness
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`such as “commercial success, long felt but unsolved needs, failure of others, etc.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
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`Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
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`It is the petitioner’s burden “to demonstrate both ‘that a skilled artisan would
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`have been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention, and that the skilled artisan would have had a reasonable
`
`expectation of success in doing so.’” Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (quotations and citations
`
`omitted). However, a petitioner must first show that all of the claimed elements
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`12
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`Patent No. 6,430,498
`Patent Owner’s Preliminary Response
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`are disclosed in the prior art. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
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`1164 (Fed. Cir. 2006) (considering motivation to combine and reasonable
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`expectation of success only “if all the elements of an invention are found in a
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`combination of prior art references”). The Petition fails under this legal standard.
`
`V.
`
`SHOW A REASONABLE
`THE PETITION DOES NOT
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM
`A.
`Ground 1: Petitioner Failed To Establish That Claims 1-3, 5-8 are
`Obvious Over Suzuki and Nosaka.
`Petitioner failed to show a reasonable likelihood of success that claims 1-3,
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`5-8 are obvious over Suzuki in view of Nosaka. The Petition fails to demonstrate
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`that the Suzuki/Nosaka combination discloses multiple limitations.
`
`1.
`
`Ground 1 Has No Reasonable Likelihood of Succeeding
`Because the Suzuki/Nosaka Combination Does Not Disclose
`or Suggest Each and Every Element of the Challenged
`Claims
`(a)
`The Suzuki/Nosaka combination does not disclose “a
`device for getting location information denoting a present
`place of said portable terminal” (claims 1 and 5)
`Using Petitioner’s own proposed construction of “a device for getting
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`location information denoting a present place of said portable terminal,” the
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`Suzuki/Nosaka combination does not disclose this limitation. Petitioner’s
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`proposed construction for the corresponding structure for this means-plus-function
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`term is “a wireless or cellular antenna, or a GPS, or a Personal Handyphone
`
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`Patent No. 6,