`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`MAXELL, LTD.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00407
`U.S. Patent No. 6,748,317
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,748,317
`
`
`
`
`
`

`

`
`
`IPR2020-00407
`U.S. Patent No. 6,748,317
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. SUMMARY OF THE ’317 PATENT .......................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’317 PATENT .................... 1
`B. PROSECUTION HISTORY OF THE ’317 PATENT ................................................. 3
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ............... 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ......................................................................................................... 5
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 5
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 5
`C. THE BOARD’S DISCRETION UNDER § 314(A).................................................. 6
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................... 9
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’317 PATENT ARE
`UNPATENTABLE ......................................................................................16
`A. GROUND 1: HAYASHIDA IN VIEW OF THE KNOWLEDGE OF A PHOSITA RENDERS
`CLAIMS 1-3, 5, 15, AND 17 OBVIOUS .............................................................16
`B. GROUND 2: HAYASHIDA AND ABOWD RENDER CLAIMS 1-3, 5, 10-15, 17, AND 18
`OBVIOUS ......................................................................................................46
`V. CONCLUSION ............................................................................................64
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .....................66
`A. REAL PARTY-IN-INTEREST ...........................................................................66
`B. RELATED MATTERS .....................................................................................66
`C. LEAD AND BACK-UP COUNSEL ....................................................................66
`
`
`
`
`
`
`i
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`

`

`I.
`
`INTRODUCTION
`
`IPR2020-00407
`U.S. Patent No. 6,748,317
`
`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
`
`of claims 1-3, 5, 10-15, 17, and 18 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 6,748,317 (“the ’317 Patent”).
`
`II.
`
`SUMMARY OF THE ’317 PATENT
`A. Description of the alleged invention of the ’317 Patent
`The ’317 Patent generally describes “a portable terminal provided with the
`
`function of walking navigation, which can supply location-related information to the
`
`walking user.” ’317 Patent (Ex. 1001), 1:16–18. According to the ’317 Patent,
`
`conventional navigation systems at the time of the invention were unsuitable for
`
`walking navigation because they were too large to be carried by a walking user,
`
`while maps provided by conventional map information services could not be
`
`displayed clearly on the small screens of portable telephones. Id. at 1:31–38; 1:46–
`
`52. The ’317 Patent purports to address these problems by providing a portable
`
`terminal that can “supply location information easier for the user to understand
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`during walking.” Id. at 2:53–54.
`
`The ’317 Patent describes a “portable terminal . . . with the function of
`
`walking navigation [that] is provided with data communication, input, and display
`
`devices just like those of ordinary portable telephones and PHS [Personal
`
`Handyphone System] terminals, as well as a device for getting location information
`
`and a device for getting direction information denoting the user’s present place.” Id.
`
`
`
`1
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`at 2:62–3:1. Figure 10 of the ’317 Patent depicts the primary components of the
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`described portable device:
`
`
`
`Id. at Fig. 10. The portable terminal obtains location information and orientation
`
`information of the terminal from, for example, “device for getting location
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`information” 77 and “device for getting direction information” 78 as depicted above.
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`Id. at Abstract, 2:66–3:4, 9:40-63. Based on this information, the portable terminal
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`obtains and displays information such as route guidance for reaching a destination,
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`which in some circumstances may be the location of another portable terminal. Id.
`
`at Abstract, 3:5–42; 8:45-48; Fig. 5. In one embodiment, the direction of a
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`destination is indicated with an orientation of a line that always points in the
`
`direction of the destination. Id. at Abstract. Figure 1, below, illustrates this direction-
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`indicating line that adjusts as the device is rotated:
`
`
`
`2
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`

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`IPR2020-00407
`U.S. Patent No. 6,748,317
`
`
`
`Id. at Fig. 1; see also id. at Figs 3(a) and 3(b).
`
`Prosecution history of the ’317 Patent
`
`B.
`Hitachi filed the Application that resulted in the ’317 Patent on May 5, 2003
`
`as US App. No. 10/428,755 and claimed priority to Japanese Patent 11-197010,
`
`which was filed July 12, 1999. ’317 Patent (Ex. 1001). Petitioner applies July 12,
`
`1999 as the priority date for the Challenged Claims, but reserves the right to
`
`challenge priority in this or any other proceeding.
`
`The Examiner rejected all pending claims of the application that resulted in
`
`the ’317 Patent under the non-statutory doctrine of double patenting as obvious in
`
`view of U.S. Patent No. 6,430,498 (the “’498 Patent”) (Ex. 1039). ’317 Patent File
`
`
`
`3
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`

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`IPR2020-00407
`U.S. Patent No. 6,748,317
`History (Ex. 1002), 97-98.1 Applicant filed a terminal disclaimer in response, and
`
`also amended the claims to reflect certain display-specific features of the ’317 Patent
`
`disclosure including “said display displays positions of said destination and said
`
`present place, and a relation of said direction and a direction from said present place
`
`to said destination” and “said display changes according to a change of said direction
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`of said portable terminal orientation for walking navigation.” Id. at 105-06. A Notice
`
`of Allowability issued on January 29, 2004. Id. at 127.
`
`Level of skill of a person having ordinary skill in the art
`
`C.
`A person having ordinary skill in the art (PHOSITA) at the time of the ’317
`
`Patent would have been a person having (i) a Bachelor degree (or higher degree) in
`
`an academic area emphasizing electrical engineering or computer engineering or
`
`equivalent and (ii) at least one year of experience working in the field of location-
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`or sensor-based human-computer interaction. Additional industry experience or
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`technical training may offset less formal education, while advanced degrees or
`
`additional formal education may offset lesser levels of industry experience. Kotzin
`
`Decl. (Ex. 1003), ¶¶ 35-36.
`
`
`1 Petitioner cites to the exhibit numbers on the bottom right of the page.
`
`
`
`4
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’317 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of
`
`the ’317 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
`
`’317 Patent, (2) Petitioner has not filed a civil action challenging the validity of any
`
`claim of the ’317 Patent, and (3) this Petition is filed less than one year after the
`
`Petitioner was served with a complaint alleging infringement of the ’317 Patent.
`
`B.
`
`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
`
`In view of the prior art and evidence presented, claims 1-3, 5, 10-15, 17, and
`
`18 of the ’317 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1). Further, based on the prior art references identified below, IPR of
`
`the Challenged Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1-3, 5, 15, and 17 are obvious under § 103(a)
`over U.S. Patent No. 6,067,502 to Hayashida et al. (“Hayashida”)
`in view of the knowledge of a person of ordinary skill in the art
`(“PHOSITA”)
`Ground 2: Claims 1-3, 5, 10-15, 17, and 18 are obvious under §
`103(a) over Hayashida in view of Cyberguide: A Mobile Context-
`Aware Tour Guide by Abowd et al. (“Abowd”)
`
`Exhibits
`
`Ex. 1004
`
`Ex. 1004,
`Ex. 1005
`
`
`
`
`
`5
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the relevance
`
`of the evidence to the challenges raised are provided in Section IV. 37 C.F.R.
`
`§ 42.104(b)(5). Ex. 1001–Ex. 1041 are also attached.
`
`C.
`
`The Board’s Discretion Under § 314(a)
`i.
`An IPR was previously filed by another, unrelated petitioner challenging
`
`The General Plastic Factors
`
`claims 1-3, 6-8, 10, 15-17, and 20 of the ’317 Patent. ZTE Corporation et al. v.
`
`Maxell, Ltd., IPR2018-00235, Paper 9 (June 1, 2018) (“the ’317 IPR”) (Ex. 1013).
`
`The Board declined to institute because Petitioner failed to identify sufficient
`
`corresponding structure in certain limitations governed by 35 U.S.C. § 112 ¶ 6. Id.
`
`at Paper 9. Applying the General Plastic factors weighs in favor of instituting the
`
`present IPR. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, slip op. at 16 (P.T.A.B. Sept. 6, 2017) (Paper 19) (precedential as to §
`
`II.B.4.i).
`
`Factor 1: Petitioner has not previously filed a petition against the ’317 Patent.
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`Patent Owner asserted the ’317 Patent against ZTE in a lawsuit filed November 18,
`
`2016. The ’317 IPR, Paper 9 at 2. In a separate lawsuit filed more than 2 years later
`
`on March 15, 2019, Patent Owner asserted the ’317 Patent against Petitioner. Maxell,
`
`
`
`6
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`

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`IPR2020-00407
`U.S. Patent No. 6,748,317
`Ltd. v. Apple Inc, 5:19-cv-00036, No. 1 (E.D. Tex. Mar. 15, 2019) (“Maxell
`
`Complaint”) (Ex. 1010). There is no relationship between ZTE and Petitioner with
`
`respect to the Challenged Patent or Patent Owner. Therefore, factor 1 favors
`
`institution.
`
`Factor 2: The references in the grounds of unpatentability in the present IPR
`
`(Hayashida and Abowd) were located by Petitioner’s counsel since the March 15,
`
`2019, filing of the Maxell v. Apple litigation. Therefore, factor 2 favors institution.
`
`Factor 3: A preliminary response and an institution decision were issued in
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`the ’317 IPR prior to the filing of the present Petition. Therefore, factor 3 weighs
`
`against institution.
`
`Factor 4: Petitioner and its counsel commenced prior-art searches no earlier
`
`than approximately May 2019 and continued to perform prior art searching as late
`
`as August/September 2019. The references applied in this IPR were located in the
`
`May-September timeframe. Petitioner then immediately proceeded to preparing the
`
`present IPR along with IPR petitions directed to the nine other patents asserted in
`
`the litigation by Patent Owner, which the Board can appreciate takes significant time
`
`to prepare. There has been no delay between the time of locating the presently-
`
`applied base references and filing of this IPR. Therefore, factor 4 favors institution.
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`Factor 5: Petitioner was not sued by Patent Owner until March 15, 2019, more
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`than two years after ZTE was sued. With respect to the timing of filing of this IPR
`
`
`
`7
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`from when Petitioner was sued, Petitioner has been diligently engaged, searching for
`
`prior art and preparing this IPR petition. Therefore, factor 5 favors institution.
`
`Factors 6 and 7: The Board’s finite resources will not be adversely affected
`
`by this IPR. The ’317 IPR involved different prior art references, so the Board will
`
`not be repeating work or engaging in duplicative efforts. These factors also favor
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`institution.
`
`Because the majority of the General Plastic factors favor institution,
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`Petitioner respectfully requests the Board not exercise its discretion under § 314(a)
`
`to deny this Petition.
`
`ii.
`
`Petitioner Has Not Delayed in Filing This Petition
`
`While there is a parallel district court proceeding involving the ’317 patent,
`
`no preliminary injunction motion has been filed, the district court has not been
`
`presented with or invested any time in the analysis of prior art invalidity issues, and
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`no Markman hearing has been held. (Ex. 1041, Maxell v. Apple Docket Control
`
`Order). Apple also timely filed its petition within the statutorily prescribed 1-year
`
`window. Declining to institute IPR here in view of the co- pending district court
`
`litigation would essentially render nugatory the 1-year filing period of § 315(b).
`
`Notably, § 315(b) originally contained only a 6-month filing window which was
`
`amended to 1-year prior to passage of the America Invents Act to “afford defendants
`
`a reasonable opportunity to identify and understand the patent claims that are
`
`
`
`8
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`relevant to the litigation” before having to file an IPR petition. 157 Cong. Rec. S5429
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Kyl). Moreover, making the status of the
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`district court litigation a threshold consideration before institution also ignores the
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`common scenario, contemplated by Congress, of obtaining a district court stay based
`
`on institution. Cf. 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Chuck Schumer); H. Rep. No. 112-98, Part I, at 48 (2011). For these reasons, and
`
`those explained below, the instant petition should be instituted.
`
`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`In this proceeding, claims are interpreted under the same standard applied by
`
`Article III courts (i.e., the Phillips standard). See 37 C.F.R. § 42.100(b); see also 83
`
`Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`
`Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
`
`meaning, which is the meaning understood by a person of ordinary skill in the art in
`
`view of the patent and file history. Phillips, 415 F.3d 1303, 1312-13. Dictionaries or
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`other extrinsic sources may assist in determining the plain and ordinary meaning but
`
`cannot override a meaning that is unambiguous from the intrinsic evidence. Id.
`
`Certain Challenged Claims recite the generic term “device” for performing a
`
`specific function. Because “device” is a “nonce word” that can operate as a substitute
`
`for “means,” the claim construction principles of 35 U.S.C. § 112, ¶ 6 (“112-6”)
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`must be applied to these limitations. Williamson v. Citrix Online, LLC, 792 F.3d
`
`
`
`9
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`

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`IPR2020-00407
`U.S. Patent No. 6,748,317
`1339, 1350 (Fed. Cir. 2015) (“[N]once words that reflect nothing more than verbal
`
`constructs may be used in a claim in a manner that is tantamount to using the word
`
`‘means’ because they typically do not connote sufficiently definite structure and
`
`therefore may invoke § 112, para. 6.”) (internal quotations omitted). Corresponding
`
`structure for each 112-6 limitation is identified below, and Petitioner proposes that
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`the claimed functions recited in each of these limitations be given its plain and
`
`ordinary meaning that the term would have to one of ordinary skill in the art.
`
`A number of terms in Challenged Claims have previously been construed by
`
`the Board as well as district court, and Patent Owner and Petitioner have submitted
`
`claim construction briefing in parallel district court litigation. Maxell, Ltd. v. Apple
`
`Inc, 5:19-cv-00036, No. 99 (“Joint Claim Construction and Prehearing Statement”)
`
`(Ex. 1011) and No. 136 (“Opening Claim Construction Brief”) (Ex. 1012) (E.D.Tex.
`
`Nov. 18, 2019). Petitioner identifies below relevant citations to these prior and
`
`ongoing claim construction undertakings.
`
`
`
`10
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`“a device for getting location information denoting a [p]resent2
`place of said portable terminal”
`
`1.
`
`Claims 1 and 10 recite “a device for getting location information denoting a
`
`present place of said portable terminal.” ’317 Patent (Ex. 1001), 10:43-44; 11:36-
`
`37. A prior Board ruled that this limitation is governed by 112-6 and declined to
`
`institute because the petitioner failed to identify corresponding structure. The ’317
`
`IPR (Ex. 1013), Paper 9 at 10.3 A separate Board reached the same conclusion with
`
`respect to this term in parent patent the ’498 Patent, finding the corresponding
`
`structure is “(1) a wireless or cellular antenna, or a GPS, or a Personal Handyphone
`
`System (PHS); and (2) an infrared ray sensor; and (3) a control unit for analyzing
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`received data, with the control unit calculating location information as disclosed in
`
`the ’498 Patent at 5:48-56,4 and Fig. 2.5” ASUSTeK Computer Inc. et al. v. Maxell,
`
`
`2 Based on context, including subsequent claim limitations referring to a “present
`place,” Petitioner understands Claim 1’s recitation of “resent” to be the result of a
`typo and has replaced it with “present” throughout this Petition.
`3 Patent Owner has also previously agreed that this term is governed by 112-6. See
`(Ex. 1015) Maxell, Ltd. v. ASUSTeK Computer Inc., et al., 3:18-cv-01788, No. 113-
`0 (N.D. Cal. Aug. 27, 2018).
`4 Petitioner identifies the corresponding cite for the ’317 Patent as 5:59-67.
`5 Petitioner notes that to the extent the Board adopts the construction put forth by
`Patent Owner in district court litigation, the structures identified by Petitioner in the
`prior art satisfy this construction.
`
`
`
`11
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`Ltd., IPR2019-00071, Paper 7 (Ex. 1014), 7-9. The Board expressly noted in that
`
`proceeding that “Patent Owner does not dispute this construction.” Id. at 9. Patent
`
`Owner’s concession made during this prior IPR proceeding should be relied on to
`
`support a finding of prosecution disclaimer during claim construction. Aylus
`
`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017). Patent Owner
`
`should not be allowed to argue claims in one way in order to maintain their
`
`patentability and in a different way against accused infringers in subsequent
`
`proceedings. See id.
`
`For a number of reasons, Petitioner proposes the Board adopt the same
`
`construction in this proceeding. First, the proposed structure aligns with the intrinsic
`
`record, which teaches three distinct components for getting location information—a
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`wireless receiver (e.g., wireless or cellular antenna, GPS, or PHS), an infrared ray
`
`sensor, and a control unit for analyzing received data to determine location
`
`information. See, e.g., ’317 Patent (Ex. 1001), 4:17-19 (“For example, such a
`
`wireless antenna as a GPS, a PHS, etc., as well as an infrared ray sensor is used to
`
`measure location information.”); 9:51-56 (“The device for getting location
`
`information 77 is provided with [1] such a wireless antenna, a GPS, a PHS, or the
`
`like; [2] such a data receiver as an infrared ray sensor, or the like; and [3] a control
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`unit for analyzing received data, thereby calculating location information.”)
`
`(emphases added).
`
`
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`12
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`Second, a PHOSITA would have understood that infrared beacon systems
`
`were a common solution for navigation systems generally as well as for walking
`
`navigation systems. A PHOSITA would have recognized that navigation systems at
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`the time of the ’317 Patent often used infrared beacons to correct GPS positions. See
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`Kotzin Decl. at ¶¶ 43-45, 127-128 (discussing the need for corrective information
`
`due to Selective Availability of GPS signals). And a PHOSITA would also have
`
`recognized that walking navigation systems often demanded location information
`
`indoors where traditional location technology such as GPS is not available. Id. at ¶¶
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`45, 128. The goal of ’317 Patent is to provide location and navigation information,
`
`specifically to a walking user. ’317 Patent (Ex. 1001), 1:17-19. Although satellite
`
`positioning technology such as GPS was well-established for determining a location
`
`outdoors, it was known at the time of the ’317 Patent that these technologies were
`
`not suitable for determining a location when indoors. Kotzin Decl. (Ex. 1003), ¶¶ 45,
`
`128 (discussing known ineffectiveness of GPS when indoors). A PHOSITA would
`
`have further known at the time of the ’317 Patent that infrared beacons were a
`
`solution to provide location information indoors. Id. at ¶¶ 45, 128.
`
`Because Patent Owner did not dispute the proposed construction in a prior
`
`proceeding, the intrinsic record supports this prior construction, and the construction
`
`is consistent with the known limitations of satellite-based positioning at the time of
`
`the ’317 Patent, this prior construction should be adopted here.
`
`
`
`13
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`

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`IPR2020-00407
`U.S. Patent No. 6,748,317
`“a device for getting [a] direction information denoting an
`orientation of said portable terminal”
`
`2.
`
`Claims 1 and 10 recite “a device for getting [a] direction information denoting
`
`an orientation of said portable terminal.” ’317 Patent (Ex. 1001), 10:45-46; 11:38-
`
`39. As with the first term, a prior Board found that this limitation is governed by
`
`112-6. The ’317 IPR, Paper 9 (Ex. 1013), 10. And both Petitioner and Patent Owner
`
`agree in current parallel litigation that this term should in fact be construed pursuant
`
`to 112-6. Joint Claim Construction and Prehearing Statement, (Ex. 1011), 2,
`
`Opening Claim Construction Brief (Ex. 1012), 26.
`
`Further, both Petitioner and Patent Owner agree that the corresponding
`
`structure is “a compass, a gyroscope, and/or sensor such as a clinometer in
`
`conjunction with a CPU, or equivalents thereof.” (Joint Claim Construction and
`
`Prehearing Statement (Ex. 1011), 2), which is the express definition set forth in the
`
`’317 Patent. Namely, the ’317 Patent expressly defines the structure of the devices
`
`as follows:
`
`The device for getting direction information 78 is provided with a
`compass, a gyro, such a sensor as a clinometer, and a control unit for
`analyzing sensor-measured data,
`thereby calculating direction
`information.
`
`’317 Patent (Ex. 1001), 9:56-59. The specification further provides that the CPU
`
`performs analysis of sensor-measured data to get direction information. Id. at 4:23-
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`39, 5:67-6:6, and Fig. 2.
`
`
`
`14
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`3.
`
`IPR2020-00407
`U.S. Patent No. 6,748,317
`“a device for getting a location information of another portable
`terminal from said another terminal via connected network”
`and “a device for retrieving a route from said present place to
`said destination”
`
`Claim 10 recites “a device for getting a location information of another
`
`portable terminal from said another terminal via connected network” and Claims 15
`
`and 18 recite “a device for retrieving a route from said present place to said
`
`destination.” ’317 Patent (Ex. 1001), 11:40-42; 12:21-22; 12:36-37. Both Petitioner
`
`and Patent Owner agree in current parallel litigation that these terms should be
`
`construed pursuant to 112-6. Joint Claim Construction and Prehearing Statement,
`
`(Ex. 1011), 2; Opening Claim Construction Brief, (Ex. 1012), 28.
`
`As has been permitted previously, Petitioner proposes this Board adopt the
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`claim constructions advanced by Patent Owner in the parallel district court litigation
`
`for these claimed phrases. See Western Digital Corporation v. Spex Technologies,
`
`Inc., IPR2018-00084, (2018) (finding Petition based on claim constructions urged
`
`by Patent Owner satisfies the claim construction requirements and that Petitioner is
`
`not required to express its subjective agreement regarding correctness of the
`
`proffered claim construction or take ownership of the construction); see also
`
`General Electric v. Vestas, IPR2018-00928 (clarifying that while the petitioner does
`
`not have “to express its subjective agreement regarding [the] correctness of its
`
`proffered claim constructions,” the Petitioner nevertheless “cannot expressly
`
`disagree with the proffered constructions”) (citing Western Digital).
`
`
`
`15
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`IPR2020-00407
`U.S. Patent No. 6,748,317
`For both “a device for getting a location information of another portable
`
`terminal from said another terminal via connected network” and “a device for
`
`retrieving a route from said present place to said destination,” Patent Owner has
`
`identified the device for data communication 76 as the proposed structure. Opening
`
`Claim Construction Brief, (Ex. 1012), 28-29. In support, Patent Owner identified the
`
`following disclosures in the ’317 Patent in support of this corresponding structure:
`
`Abstract, 1:10-15, 2:23-26, 2:51-3:1, 3:43-66, 4:14-39, 5:17- 21, 5:64-6:4, 6:9-18,
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`8:17-9:39, 9:40-63, 10:29-34, Figures 5-7, 9, 10. Joint Claim Construction and
`
`Prehearing Statement, (Ex. 1011), 8, 10.
`
`As Patent Owner has asserted in the parallel litigation, the Board should adopt
`
`“a CPU and a device for data communication 76 of a portable terminal; or
`
`equivalents thereof” is the structure performing the claimed functions of getting
`
`location information of another portable terminal from said another terminal via
`
`connected network and retrieving a route from said present place to said destination.
`
`Opening Claim Construction Brief, (Ex. 1012), 28.
`
`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’317 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Hayashida in view of the Knowledge of a PHOSITA
`renders claims 1-3, 5, 15, and 17 obvious
`
`Overview of the Prior Art
`
`
`
`16
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`Hayashida was filed on August 21, 1997 and issued on May 23, 2000 and is
`
`prior art to the ’317 Patent under at least 35 U.S.C. § 102(e) (pre-AIA) (“§ 102(e)”).6
`
`Hayashida was not cited or considered during prosecution of the ’317 Patent.
`
`Hayashida is directed to a navigation system. See Hayashida (Ex. 1004),
`
`Abstract. The system described by Hayashida uses a satellite GPS system and land-
`
`based beacon system to obtain the location of the user as well as an electronic
`
`compass and gyroscope to obtain the traveling direction of the user. Id. at 7:60-8:8.
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`Hayashida uses this information to retrieve information such as destinations and
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`routes to destinations. Id. at 54:33-46. Hayashida teaches that this information may
`
`be presented to the user through various techniques, including the display of whole
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`routes, sections of routes, and simple maps that allow the user to grasp the
`
`information in an intuitive manner. Id. at 21:15-50; 22:32-39. While the specific
`
`details of Hayashida’s system are described within the context of a vehicle-based
`
`navigation system embodiment, Hayashida expressly contemplates that its invention
`
`is applicable to portable “carrying-type navigation device[s]” for use by pedestrians.
`
`Id. at 76:13-20.
`
`
`6 To the extent Patent Owner attempts to swear behind the August 21, 1997 priority
`date, Petitioner reserves the right to rely on the disclosures of Hayashida’s foreign
`priority applications to demonstrate its status as prior art under 102(e) should be
`assessed at an earlier date.
`
`
`
`17
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`Because Hayashida, like the ’317 Patent, teaches a small portable “carrying-
`
`type navigation device” for pedestrians that includes both wireless data connectivity
`
`and satellite and land-based beacon positioning, Hayashida is in the same field of
`
`endeavor as the ’317 Patent. Compare id. at 7:60-8:8, 76:13-20 with ’317 Patent
`
`(Ex. 1001) at 2:36-61; Kotzin Decl. (Ex. 1003), ¶¶ 56-60. Hayashida is reasonably
`
`pertinent to the claims in the ’317 Patent because both Hayashida and the ’317 Patent
`
`are concerned with displaying various position, destination, and direction
`
`information in a manner that the user can clearly grasp. Compare Hayashida (Ex.
`
`1004) at 58:37-43; see also id. at 50:64-51:2; with ’317 Patent (Ex. 1001) at 6:23-
`
`24 (“[T]he information is thus displayed more easily for the walker to understand.”);
`
`see also id. at 10:29-34. Kotzin Decl. (Ex. 1003), ¶ 60.
`
`i. Claim 1
`
`1[P]. A portable terminal, comprising:
`
`To the extent that the preamble is limiting, Hayashida teaches a portable
`
`terminal:
`
`“[T]his invention may be applied to the carrying-type navigation
`device in addition to the navigation device which is attached to the
`movement bodies such as the car. In other words, this invention may
`be applied to the small navigation device which can be
`
`
`
`18
`
`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`accompanied by the human and which is used in a cycling, a travel,
`a mountaineering, a hike, a fishing or so on.7
`
`Hayashida (Ex. 1004), 76:13-20.
`
`[1(a)] a device for getting location information denoting a [p]resent place of said
`portable terminal;
`
`As discussed above in Section III(D)(1), the corresponding structure for this
`
`limitation is “(1) a wireless or cellular antenna, or a GPS, or a Personal Handyphone
`
`System [PHS]; and (2) an infrared ray sensor; and (3) a control unit for analyzing
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`received data, with the control unit calculating location information as disclosed in
`
`the ’317 Patent at 5:59-67, and Fig. 2.” Satisfying this limitation, Hayashida teaches
`
`a device (i.e., central processor 1, including CPU 2, and present position detector 20,
`
`including GPS receiver 25, and beacon receiver 26) for getting location information
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`(i.e., latitude and longitude information) denoting a present place of said portable
`
`terminal.8 Kotzin Decl. (Ex. 1003), ¶¶ 61-62.
`
`Specifically, Hayashida teaches that central processor 1, including CPU 2,
`
`controls the operation of the navigation device. Hayashida (Ex. 1004), 6:47-49 (“A
`
`central processor 1 controls the operation of the whole navigation device. The central
`
`
`7 Unless otherwise indicated, all emphasis added by Petitioner.
`
`8 To the extent the Board adopts the construction put forth by Patent Owner for this
`limitation, Petitioner notes that the identified structure satisfies this broader
`construction as well.
`
`
`
`19
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`processor 1 is comprised with a CPU 2…”); 6:65-67 (“These programs 38b
`
`correspond to various processing by each flow chart to mention later and are
`
`executed in CPU 2.”). “[P]resent position detector 20 outputs data for detecting the
`
`present position of the car.” Id. at 7:60-61. Present position detector 20, includes
`
`GPS receiver 25 and beacon receiver 26, which provide information related to the
`
`present position of the navigation device. Id. at 7:50-54. GPS receiver unit 25
`
`receives GPS signals to detect position data such as longitude and latitude, while
`
`beacon receiver 26 receives VICS data, which are used for correcting an error in the
`
`position of the vehicle detected by GPS receiver 25. See id. at 7:66-8:8. Hayashida’s
`
`device for getting location information is depicted below:
`
`
`
`Id. at Fig. 1.
`
`A PHOSITA would have known that VICS was a specific Japan-based beacon
`
`system that utilized infrared technology to communicate information to beacon
`
`
`
`20
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`

`

`IPR2020-00407
`U.S. Patent No. 6,748,317
`receivers such as those disclosed by Hayashida. Kotzin Decl. (Ex. 1003), ¶¶ 61, 42-
`
`45 (describing VICS and PICS). Further, a PHOSITA would have understood that
`
`correcting a GPS-based position with beacon information in a pedestrian context
`
`(e.g., in a hiking/traveling application expressly disclosed by Hayashida) is an
`
`obvious application of the Hayashida teachings. Id. at ¶ 62. Hayashida expressly
`
`discloses correcting GPS position with beacon information only in the context of
`
`vehicle-based navigation. But a PHOSITA would have known that VICS data had
`
`been expanded to pedestrian applications, referred to as Pedestrian Information and
`
`Communication System (PICS) and that such pedestrian-focused VICS information
`
`could be easily deployed on Hayashida’s pedestrian-focused e