Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: March 14, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASUSTEK COMPUTER INC. AND
`ASUS COMPUTER INTERNATIONAL,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00071
`Patent 6,430,498 B1
`____________
`
`
`
`Before TERRENCE W. McMILLIN, JOHN A. HUDALLA, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
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`

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`IPR2019-00071
`Patent 6,430,498 B1
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`I. INTRODUCTION
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`ASUSTek Computer Inc. and ASUS Computer International
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`(“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes
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`review of claims 1–13 of U.S. Patent No. 6,430,498 B1 (Ex. 1001, “the
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`’498 patent”). Maxell, Ltd. (“Patent Owner”) filed a Preliminary Response
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`(Paper 6, “Prelim. Resp.”).
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`We have authority under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted unless the information presented in
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`the Petition and the Preliminary Response shows that “there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R.
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`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon
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`consideration of the Petition, the Preliminary Response, and the supporting
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`evidence, we conclude that the information presented in the Petition does not
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`establish a reasonable likelihood that Petitioner will prevail with respect to
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`any of the claims challenged in the Petition. Accordingly, we do not
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`institute an inter partes review as to the challenged claims of the
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`’498 patent.
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`A.
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`Related Matter
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`The parties indicate that the ’498 patent has been asserted in Maxell,
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`Ltd. v. ASUSTek Computer Inc. & ASUS Computer International, 3-18-cv-
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`01788 (C.D. Cal.), filed March 22, 2018. Pet. 2; Paper 5, 1.
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`2
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`IPR2019-00071
`Patent 6,430,498 B1
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`B. The ’498 Patent
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`The ’498 patent is titled, “Portable Terminal With The Function of
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`Walking Navigation.” Ex. 1001, (54). “[T]he portable terminal of the
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`present invention with the function of walking navigation is provided with
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`data communication, input, and display devices just like those of ordinary
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`portable telephones and PHS [Personal Handyphone System] terminals, as
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`well as a device for getting location information and a device for getting
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`direction information denoting the user’s present place.” Id. at 2:56–62.
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`Figure 1 of the ’498 patent is reproduced below.
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`IPR2019-00071
`Patent 6,430,498 B1
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`Figure 2 depicts the data display of the portable terminal of a user 10
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`walking towards destination 11. Id. at 5:1–4. Figure 10 of the ’498 patent is
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`reproduced below.
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`Figure 10 depicts “a block diagram of the portable terminal of the present
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`invention with the function of walking navigation.” Id. at 4:61–62.
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`IPR2019-00071
`Patent 6,430,498 B1
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`C. Illustrative Claim
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`Petitioner challenges claims 1–13 (all claims) of the ’498 patent.
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`Pet. 1. Claims 1, 5, and 10 are independent claims. Independent claim 1,
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`reproduced below, is illustrative of the claimed subject matter:
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`1. A portable terminal with the function of walking navigation,
`comprising:
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`a device for getting location information denoting a present place
`of said portable terminal; and
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`a device for getting direction information denoting an orientation
`of said portable terminal,
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`wherein a direction and a distance of a destination from said
`present place are denoted with an orientation and a length of
`line that is distinguished between starting and ending points
`to supply route guidance information as said walking
`navigation information.
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`Ex. 1001, 10:30–40. The “device for getting location information denoting a
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`present place of said portable terminal” limitation is recited in all of the
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`independent claims. Id., see also id. at 10:62–63 (claim 5), 11:31–32
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`(claim 10).
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`D. Asserted Grounds of Unpatentability
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`Petitioner challenges claims 1–3 and 5–8 of the ’498 patent as obvious
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`in view of Suzuki1 and Nosaka.2 Pet. 3 (statement of ground), 37–38
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`(motivation to combine), 45–72 (application of cited art to claims).
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`
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`1 Japanese Patent No. H07-280583 (Ex. 1004) (English translation
`Ex. 1005).
`2 Japanese Patent No. H10-170301 (Ex. 1007) (English translation
`Ex. 1008).
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`IPR2019-00071
`Patent 6,430,498 B1
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`Petitioner challenges claims 1–3 and 5–8 of the ’498 patent as obvious
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`in view of Suzuki and Colley.3 Pet. 4 (statement of ground), 38–39
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`(motivation to combine), 72–80 (application of cited art to claims).
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`Petitioner challenges claims 1–3 and 5–7 of the ’498 patent as obvious
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`in view of Suzuki, Colley, and Ellenby.4 Pet. 4 (statement of ground), 39–40
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`(motivation to combine), 81–84 (application of cited art to claims).
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`Petitioner challenges claims 1–7 and 9–13 of the ’498 patent as
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`obvious in view of Norris5 and Colley. Pet. 4 (statement of ground), 41–42
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`(motivation to combine), 85–97 (application of cited art to claims).
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`Petitioner challenges claims 1, 2, 5, 6, 8, 10, and 12 of the ’498 patent
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`as obvious in view of Norris, Colley, and Nosaka. Pet. 4 (statement of
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`ground), 42–43 (motivation to combine), 98 (application of cited art to
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`claims).
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`Petitioner challenges claims 1, 2, 5, 6, 8, 10, and 12 of the ’498 patent
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`as obvious in view of Norris, Colley, and Ellenby. Pet. 4 (statement of
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`ground), 43–44 (motivation to combine), 98–99 (application of cited art to
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`claims).
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`The following table summarizes Petitioner’s challenges to the claims
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`of the ’498 patent.
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`Claims
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`Basis
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`Cited Art
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`1–3 and 5–8
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`§ 103
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`Suzuki and Nosaka
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`1–3 and 5–8
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`§ 103
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`Suzuki and Colley
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`1–3 and 5–7
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`§ 103 Suzuki, Colley, and Ellenby
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`
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`3 US 5,592,382 (Ex. 1011).
`4 US 5,815,411 (Ex. 1022).
`5 US 5,781,150 (Ex. 1010).
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`IPR2019-00071
`Patent 6,430,498 B1
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`Claims
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`Basis
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`Cited Art
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`1–7 and 9–13
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`§ 103
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`Norris and Colley
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`1, 2, 5, 6, 8, 10, and 12 § 103 Norris, Colley, and Nosaka
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`1, 2, 5, 6, 8, 10, and 12 § 103 Norris, Colley, and Ellenby
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`
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`Petitioner relies on the Declaration of Mr. Scott Andrews (Ex. 1003)
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`to support its challenges to the claims of the ’498 patent.
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`
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`E. Cited Art
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`The earliest priority date claimed for the ’498 patent is July 12, 1999.
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`Ex. 1001, (30). Suzuki was published on October 27, 1995. Ex. 1005, (43).
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`Nosaka was published on June 26, 1998. Ex. 1008, (43). Colley was issued
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`on January 7, 1997. Ex. 1011, (45). Ellenby was issued on September 29,
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`1998. Ex. 1022, (22). Norris was issued on July 14, 1998. Ex. 1010, (45).
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`Patent Owner does not challenge the prior art status of any of the cited art.
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`See generally Prelim. Resp. We find that the cited art qualifies as prior art to
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`the ’498 patent.
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`II. ANALYSIS
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`A. Claim Construction
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`“a device for getting location information denoting a
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`present place of said portable terminal”
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`Petitioner contends that “a device for getting location information
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`denoting a present place of said portable terminal” is a means-plus-function
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`limitation. Pet. 15. Petitioner argues, “[t]he term ‘device’ is a non-
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`structural, nonce word that is tantamount to using the word ‘means’ because
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`IPR2019-00071
`Patent 6,430,498 B1
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`it does not connote sufficiently definite structure.” Id. Patent Owner agrees
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`that this limitation is a means-plus-function term. Prelim. Resp. 8. We
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`determine that this limitation is a means-plus-function term because this
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`limitation does not define the structure of the device but instead recites the
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`functions performed by the device. Construing a means-plus-function claim
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`term is a two-step process: first, we must identify the claimed function; then,
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`we must determine what structure, if any, disclosed in the specification
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`corresponds to the claimed function. Williamson v. Citrix Online, LLC, 792
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`F.3d 1339, 1351 (Fed. Cir. 2015) (en banc).
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`
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`Petitioner proposes “a device for getting location information
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`denoting a present place of said portable terminal” should be construed as “a
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`wireless or cellular antenna, OR a GPS, OR a Personal Handyphone System
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`[PHS]; AND an infrared ray sensor; AND a control unit for analyzing
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`received data, with the control unit calculating location information as
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`disclosed in in [sic] 5:48–56, and Fig. 2.” Pet. 18–19 (emphasis in original).
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`Petitioner cites the following passages from the Specification, “[f]or
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`example, such a wireless antenna as a GPS, a PHS, etc., as well as an
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`infrared sensor is used to measure location information” (Ex. 1001, 4:9–11
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`(emphasis added)) and “[t]he device for getting location information 77 is
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`provided with such a wireless antenna, a GPS, a PHS, or the like; such a data
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`receiver as an infrared sensor, or the like; and a control unit for analyzing
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`received data, thereby calculating location information” (id. at 9:39–44
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`(emphasis added)) in support of this proposed construction. Pet. 16. Patent
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`Owner “does not dispute Petitioner’s proposed construction[] for the
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`corresponding structure” for this means-plus-function limitation. Prelim.
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`Resp. 8–10.
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`IPR2019-00071
`Patent 6,430,498 B1
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`For purposes of this institution decision, we adopt the construction
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`proposed by Petitioner for the first “device” limitation in independent claims
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`1, 5, and 10. This construction is supported by the cited portions of the
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`Specification of the ’498 patent. See Ex. 1001, 4:9–11, 9:39–44. We further
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`note that Patent Owner does not dispute this construction.
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`It is not necessary to construe any other claim terms in order to make
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`a decision whether to institute inter partes review. See Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those
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`terms need be construed that are in controversy, and only to the extent
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`necessary to resolve the controversy”).
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`B. Unpatentability
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`“a device for getting location information denoting a present place of
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`said portable terminal”
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`As discussed directly above, our construction of the “a device for
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`getting location information denoting a present place of said portable
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`terminal” requires an infrared ray sensor. See supra § II.A. Patent Owner
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`argues “neither Suzuki nor Nosaka disclose an ‘infrared ray sensor’—the
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`phrase is completely absent from the translated copies of the references—a
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`necessary component of Petitioner’s proposed construction.” Prelim.
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`Resp. 14. With regard to Colley and Norris, Patent Owner similarly argues,
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`“as with Suzuki . . . , Colley [and Norris] do[ ] not disclose an ‘infrared ray
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`sensor’—the phrase is completely absent from the reference[s]—a necessary
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`component of Petitioner’s proposed construction.” Id. at 28 (Colley), 38
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`(Norris), see also id. at 35, 52–53 (the combinations of references including
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`Ellenby do not disclose this element).
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`IPR2019-00071
`Patent 6,430,498 B1
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`We agree with Patent Owner. Petitioner fails to provide any evidence
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`that the cited art teaches or suggests an infrared ray sensor. In its arguments
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`mapping the art to the claims, Petitioner discusses an infrared ray sensor
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`only in connection with Suzuki and only in the following passage from the
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`Petition:
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`To the extent that it is determined that the device for
`getting location information must include an “antenna, a GPS, a
`PHS, or the like; such a data receiver as an infrared ray sensor,
`or the like; and a control unit for analyzing received data” as
`described in the ‘498 patent, Suzuki discloses a GPS receiver,
`which a POSITA would understand necessarily also includes an
`antenna, and includes a beacon receiver, which a POSITA
`would recognize as a “data receiver as an infrared ray sensor,
`or the like”, and it includes the current position measuring unit,
`which a POSITA would have understood to be a “control unit for
`analyzing received data”. ASUS-1003, ¶ 162. Thus, Suzuki
`describes all of the elements described by the ‘498 patent as
`being associated with claimed “a device for getting location
`information denoting a present place of said portable terminal.”
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`Pet. 47–48 (emphasis added). In this paragraph, Petitioner does not clearly
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`contend that Suzuki teaches or suggests an infrared ray sensor but includes
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`the indefinite phrase “or the like.” The cited paragraph (¶ 162) from
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`Exhibit 1003 (Andrews Decl.) merely repeats the paragraph from the
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`Petition verbatim. And there is no support in Suzuki for interpreting the
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`“beacon receiver” as an infrared ray sensor. The only description of the
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`“beacon receiver” in Suzuki states: “the beacon receiver 36 receives position
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`information from a beacon arranged on the road.” Ex. 1005 ¶ 12. As such,
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`Petitioner provides no reasoning or explanation as to how or why the
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`disclosure of a “beacon receiver” in Suzuki teaches or suggests an infrared
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`ray sensor. There is no disclosure of an infrared ray sensor in Suzuki.
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`IPR2019-00071
`Patent 6,430,498 B1
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`In a petition for inter partes review, a petitioner is required to
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`“identif[y], in writing and with particularity, each claim challenged, the
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`grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” 35 U.S.C.
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`§ 312(a)(3); see also 37 C.F.R. § 42.104(b) (stating that a petition must
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`identify how the challenged claim is to be construed and where each element
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`of the claim is found in the prior art patents or printed publications relied
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`upon). Petitioner cannot satisfy its burden of proving obviousness by
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`employing “mere conclusory statements.” In re Magnum Oil Tools Int’l,
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`Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). In this case, Petitioner’s
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`obviousness contentions do not identify with particularity evidence showing
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`how the cited art teaches or suggests an infrared ray sensor commensurate
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`with our construction discussed above. Thus, based on this record,
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`Petitioner has not established that the cited art teaches or suggests “a device
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`for getting location information denoting a present place of said portable
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`terminal.” Because this limitation is a part of each claim of the ’498 patent
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`(i.e., either by direct recitation or by dependency from another claim), we
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`determine that Petitioner has not established a reasonable likelihood of
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`prevailing against any claim challenged in the Petition.
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`III. CONCLUSION
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`On the record before us, we conclude that there is not a reasonable
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`likelihood that Petitioner would prevail with respect to at least 1 of the
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`claims challenged in the Petition. Petitioner fails to establish that the prior
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`art teaches or suggests at least one limitation of the independent claims
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`under the construction proposed by Petitioner and adopted by the Board.
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`IPR2019-00071
`Patent 6,430,498 B1
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`Therefore, we do not institute inter partes review on any claims or any
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`challenge to the claims.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that the Petition is denied.
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`IPR2019-00071
`Patent 6,430,498 B1
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`PETITIONER:
`
`
`Christopher Douglas
`Christopher.douglas@alston.com
`
`Thomas Davison
`Tom.davison@alston.com
`
`Derek Neilson
`Derek.neilson@alston.com
`
`PATENT OWNER:
`
`Robert Pluta
`rpluta@mayerbrown.com
`
`Michael Word
`mword@mayerbrown.com
`
`Amanada Bonner
`astreff@mayerbrown.com
`
`Luiz Miranda
`lmiranda@mayerbrown.com
`
`Saqib Siddiqui
`ssiddiqui@mayerbrown.com
`
`
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`13
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