`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`May 15, 2015
`
`Via E-Mail (alan@loudermilk.com, fumiaki-esaka@maxell.co.jp, kenji-nakamura@maxell.co.jp,
`yukihirotakemoto@maxell.co.jp, hideyuki-kuwajima@maxell.co.jp)
`
`Hitachi Maxell, Ltd.
`5030 Totsuka-cho
`Totsuka-ku
`Yokohama, 244-0003 Japan
`
`Re:
`
`Hitachi Patent Assertions
`
`
`
`Dear Sirs,
`
`This letter follows up on our meeting of April 13, 2015, and is in further response to Hitachi’s cor-
`respondence of April 9, 2015, as well as the previous meeting and correspondence to Apple re-
`garding U.S. Patent Nos. 5,396,443, 8,311,389, 6,748,317, 6,898,078, and 8,214,459. As discussed
`below and during the meeting of April 13, Apple has reviewed each of the patents identified by
`Hitachi Maxell, and does not believe that a license is necessary for these patents. Apple’s addi-
`tional positions responsive to Hitachi’s latest arguments on each patent are summarized below.
`
`1. U.S. Pat. No. 5,396,443 (the ’443 patent)
`
`The ’443 patent expired in October of 2013. In prior correspondence, Hitachi alleged that certain
`features of the iPhone 4/5 series and iPad / iPad2 / iPad mini series infringe claim 1 of the patent.
`In its April 9 letter, Hitachi further alleged that dependent claims 22-24 are infringed. Hitachi ar-
`gues that the display in these devices is set to a non-power saving state if a user finger is detect-
`ed near the screen during a power saving sate and that the screen is set in the power saving state
`if the user finger is distant from the screen for a predetermined period of time. For at least the
`reasons set forth below, Apple does not believe it needs a license to the ’443 patent.
`
`As Apple has explained before, the accused devices do not detect the “approach” of a user’s fin-
`ger. The touch screen detects “touch” or contact. Therefore, the claimed “detecting means” is
`not present. Because claims 22-24 depend from claim 1, those claims too are not infringed.
`
`Hitachi provided an illustration of an iPhone’s ability to sense a large metal box being place prox-
`imal to the touch screen but without touching the screen. Apple’s position is that a metal box is
`not a user finger or user-associated medium of the type intended to be used with the
`touchscreens in Apple’s accused products. The size and electro-magnetic characteristics of a
`metal box are significantly different than those of a finger, a stylus, or the like. During the April 13
`meeting, Hitachi represented that it had obtained similar results using a user’s finger and that it
`
`
`
`
`Apple
`1 Infinite Loop, MS 169-3IPL
`Cupertino, CA 95014
`(408) 783-0569
`hmewes@apple.com
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 1 of 15
`
`

`

`
`
`
`would provide those results to Apple. Apple will consider any such additional information when
`provided. However, Apple’s position is that the touchscreens in Apple’s products are not de-
`signed to detect the “approach” of a finger (or other user object) to the screen, only touch or con-
`tact.
`
`Hitachi further argues that touch falls within the scope of the claimed “detecting means” because
`it was not disclaimed during prosecution and the “phrase ‘at least approach’ includes both an ap-
`proach of the finger and contact of the finger as a result of the approach.” As Apple explained,
`the claim language “at least approach” makes clear that of the possible things that could be de-
`tected with respect to a user-associated medium, the claimed “detecting means” must at the very
`least be able to detect whether a user associated medium approaches the housing. The “detect-
`ing means” must be able to detect “at least approach” in order to meet the claim language. A
`detecting means that only detects touch but not approach fails to meet the claim limitation.
`
`Further, as Apple pointed out, the fact that detecting approach and contact are different is an
`interpretation of the ordinary meaning of those terms in light of the specification. As Apple’s let-
`ter of March 10th stated:
`
`The ordinary meaning of detecting approach does not encompass detecting
`contact. The specification makes this distinction repeatedly referring to when
`the user associated medium ”approaches or comes in contact” with the detect-
`ing means as distinct alternatives throughout the description. See e.g., Abstract
`(“sensor for detecting the approach or contact”); (“approach or contact detec-
`tion sensor”); (“an approach detection type or a contact detection type tablet”);
`(“which can effect both the approach detection and the contact detection”);
`(“the approach or contact detection function are both used”). Accordingly, the
`claims are limited to the approach-detecting function, not both approach and
`contact detection.
`
`Thus, even without considering disclaimer, the ordinary meaning of the terms as used in the
`specification and claims of the ’443 patent, limits the claims scope to detecting approach, not
`contact.
`
`Hitachi also argues that the dimming of the screen before entering sleep mode in Apple’s iOS
`products is a “power saving state” because “Apple products can have numerous ‘states,’ and the
`dimming of the screen brightness moves the devices from one ‘state’ (i.e., a non-dimmed state) to
`another, lower power, ‘state’ (i.e., a dimmed state).” But this argument is circular. As Apple noted,
`Apple’s power saving state is its sleep mode. The temporary dimming of the screen brightness is
`not a “dim state” or “power saving state” as the claims require because it is not a “state” at all; it is
`a user interface feature. As Apple pointed out, power consumption in a device varies for many
`reasons during normal operation. That does not make each change in power consumption is a
`change between a power saving and non-power saving “states” or vice versa as the ’443 patent
`uses that term. Hitachi ignores all the ways in which devices can vary the power consumption
`during normal operation (i.e., non-power saving state). The ‘443 patent does not support Hita-
`chi’s argument that just because more or less power is consumed during a particular operation
`that a claimed “state” is entered.
`
`
`
`
`
`2
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 2 of 15
`
`

`

`
`
`
`Apple has also provided prior art that invalidates the asserted claims, including the US Patent No.
`5,189,393 to Charles Hu (“Hu”). In its latest letter, Hitachi argued that “Hu’s dual sensor is de-
`signed to react when an object is moving away from the sensors” and thus it does not disclose “a
`detecting means for detecting whether a user-associated medium at least approaches at least a
`part of a housing of said apparatus.” During the April 13 meeting, Hitachi acknowledged that the
`ultrasonic and infrared sensors of Hu are precisely the type of sensors the ’443 patent discloses.
`However, Hitachi attempts to distinguish the sensors based on the “intended use” for the sensors
`of Hu, to detect moving away instead of approach. First, as Hitachi previously argued the “inten-
`tion for incorporating the elements of the patented invention” is irrelevant; Hu discloses the same
`sensors. The claims in the ’443 patent are apparatus claims that cover structure capable of per-
`forming the claimed function. The structure disclosed in Hu and the ‘443 patent is exactly the
`same. Further, Hu is not limited to detecting moving away, or entering a room, or moving side-
`ways across the sensors. Hu discloses detecting motion, which includes motion in the direction of
`the sensor, or approach. One of skill in the art would understand motion to include moving to-
`wards a sensor, which would cause the same type of doppler shift that the ultrasonic sensor of Hu
`(and the one disclosed in the ‘443 patent) would detect. Accordingly, Hitachi’s distinctions of Hu
`fail.
`
`Hitachi additionally argues that Hu does not disclose the subject matter of dependent claims 22-
`24, limiting the claimed “control object” to an LCD. As discussed during the meeting of April 13,
`controlling an LCD brightness as a means of conserving power was well known by 1992. For ex-
`ample, U.S. Patent No. 4,980,836 to Carter et al. (“Carter") discloses a power saving “standby
`mode” in a computer system that sets an LCD in a power saving state after a period of inactivity:
`“[i]f the timer counts down to zero, then the system is considered inactive and power is removed
`from …, the LCD, and miscellaneous circuitry, … .” Carter, col. 2:18-21. Similarly, European Patent
`Application Publication Number EP0456012 A2 (“‘012”), discloses a “display control device for re-
`ducing power consumption” in which “[w]hen detecting the counter signal on the signal line 5a,
`the display control circuit 6 delivers … the backlight control signal … so that … the backlight of
`the LCD panel 4 is switched off, thus causing the display of the LCD panel 4 to be turned off
`(Steps S6 - S7).” See ‘012 at [0023]; see also, U.S. Pat. No. 5,428,790 (“Thus power is applied only to
`each section when needed, leaving each section powered down (i.e., turned off) when it is not
`needed. … First, for the display, the power supply circuit 32 as shown in FIG. 2 can be turned off.
`Also, the LCD driver chips 36 which drive the actual display 70 can be disabled.”) Thus, based on
`the prior art, it would have been obvious to use the sensors of Hu to “detect the presence of peo-
`ple in a room for the purpose of automatically turning on lights or other devices” including LCD
`screens as claimed in claims 22-24 of the ‘443 patent by controlling its energizing or power sup-
`ply circuits.
`
`Lastly, Hitachi argues that the prior art Macintosh PowerBook 140 fails to anticipate claim 1 of the
`‘443 patent because “its keyboard does not detect approach or touch; it detects only keyboard
`activation, requiring mechanical displacement of a physical contact switch.” However, as ex-
`plained by Apple, Hitachi misses the point. The “contact switch” of the keyboard under each key
`detects contact of a user-associated medium, the keyboard’s key, with the housing, the electrical
`contact connected to the computer’s circuitry. Thus, the keyboard detects “touch” as described in
`the ‘443 patent. Thus, to the extent Hitachi asserts its claims cover detecting “touch” as a way of
`“at least approaching,” the PowerBook 140 anticipates the claims, including the LCD limitations of
`claims 22-24; the PowerBook 140 included a “backlit Supertwist” LCD that was turned off in sleep
`mode. Moreover, contrary to Hitachi’s suggestion, keyboards do not necessarily require mechani-
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 3 of 15
`
`

`

`
`
`
`cal contact to detect a key. See, e.g., U.S. Patent No. 3,668,697 (June 6, 1972) (“Noncontacting
`Keyboard”).
`
`Further, to the extent the normal operation of a touchscreen, which Hitachi argues is inherently
`able to detect touch without actual touch, is encompassed by the claims, that was also known
`before the ‘443 patent’s earliest priority date. For example, the art cited by Apple in the letter of
`March 10, showed that using touch screens of the types accused by Hitachi with computer sys-
`tems, such as the PowerBook 140, was obvious and well known in the art by 1992. See e.g., U.S.
`Patent No. 4,733,222 (issued in 1988) (“Typically an electrode has one or more enlarged portions
`or plates, hereafter called tabs, which furnish a capacitor plate to complete a capacitive coupling
`between the electrode and the body of an operator, and thereby to system ground, when the tab
`or the area overlying the tab is touched by a finger of the operator.”); see also, U.S. Patent No.
`4,290,052 (issued in 1981) (disclosing a touch-pad with “’touch’ electrodes, is adhesively fastened
`to the surface of the transparent, insulative substrate (formed of glass and the like) opposite that
`surface contactable by user personnel.”) Accordingly, using touchpads that can respond to user
`touch without actual contact and in combination with the disclosed Sleep Mode in the Power-
`Book 140 would render obvious the ‘443 patent as Hitachi asserts it.
`
`In addition, there are numerous other references expressly disclosing using touch detection
`through a touch screen as the basis for triggering power savings modes in a computer system,
`such as the PowerBook 140. For example, touch pads capable of detecting proximity of a user-
`associated medium, such as a stylus, were well known and used in computing devices. See U.S.
`Patent No. 5,347,295 (“The present invention addresses the problem of controlling such a com-
`puter through a stylus. … The present invention senses when the stylus is in proximity to or in
`contact with the front surface of the computer.”) This reference acknowledges that the prior art
`“[c]ertain systems substitute a stylus for a mouse” and expressly teaches the combination of “the
`used [sic] of proximity sensing in the notebook computer of the invention.” Touch pads or panels
`capable of sensing both touch and proximity were well known. See, e.g., U.S. Pat. No. 5,103,085
`(“a proximity detector and switch is relatively simple in construction and circuitry, and highly ac-
`curate and sensitive in use. The principal circuitry can be used for detecting presence of an object
`to produce a binary output, i.e. as a switch, or a continuous output for determining the proximity
`of an object. … The system thus produces a signal which can be used for touch detection, for
`communicating the binary proximity state to electric devices, computers and modems. These may
`be used to control displays of information, thus giving a user control of the displays by touch se-
`lection. “). Thus, combining a proximity sensing stylus with the PowerBook 140 would have been
`obvious.
`
`Moreover, using touch pad input instead of a keyboard as a way to control power states on a
`computer system was also known in the prior art. For example, U.S. Patent No. 5,175,854 teaches
`a microprocessor-based system in which “[t]he processor may invoke the sleep mode in battery
`operate applications to conserve capacity when an absence of activity is detected. The auxiliary
`chip may subsequently be restarted by a high to low transistion [sic] on the PBRST* input via hu-
`man interface by a keyboard, touch pad, etc.” Col. 9:31-37 (emphasis added). Similarly, U.S. Pa-
`tent No. 4,972,496 discloses a “keyboardless computer system” in which “[a]s long as there is no
`contact by stylus 35 at position 38 or any other position on plate 34, no current flows and power
`consumption is minimal. … the invention makes stand-by power requirements minimal.” Thus,
`when the stylus touches the screen, the systems’ power consumption increases, which Hitachi
`alleges is a non-power saving state, while when the stylus is distant from the system, power con-
`
`
`
`4
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 4 of 15
`
`

`

`
`
`
`sumption decreases, resulting in what Hitachi alleges is a power saving state. A similar system
`that increases power consumption when detecting an approaching user-associated medium is
`disclosed in U.S. Patent No. 4,672,154 (“For example, inductive coupling between a power source
`associated with the digitizer tablet could be used to couple AC signals into a sensing circuit locat-
`ed in the cordless pen, which rectifies the induced signals to produce the DC levels necessary to
`operate the pen circuitry.”)
`
`For at least these reasons, we believe that the asserted claims of the ’443 patent are both not in-
`fringed and invalid, and therefore that no license is needed.
`
`
`2. U.S. Pat. No. 8,311,389 (the ’389 patent)
`
`Hitachi alleges that Apple’s iPhone 4/5 series and iPad / iPad 2 / iPad mini and iPad Air series in-
`fringe claim 5 of the ’389 patent based on their ability to download and play rental movies from
`the iTunes store. The ’389 patent has a priority date of December 13, 2000.
`
`Apple’s iOS devices do not fall within the scope of the claims of the ’389 patent. As previously
`pointed out by Apple, the claim language requires receiving and recording “audio/video infor-
`mation.” Downloading and storing mpeg-encoded data files is not receiving and recording au-
`dio/video information. The applicants specifically amended the claims to recite “audio/video”
`information instead of “digital” information. Moreover, the only embodiment disclosed in the
`specification relates to the broadcasting of television signals. If the claims were interpreted to
`cover downloading data files, enablement and written description invalidity issues would apply.
`
`Hitachi provided several cites to the specification of the ’389 patent alleging that it “discloses that
`MPEG digital audio/video information is transmitted and stored.” But the claims require “a receiv-
`er which receives audio/video information.” None of the citations provided show a receiver that
`receives digital MPEG files. The specification cites Hitachi provided referred to either the broad-
`casting station (col. 5:18-25); how the signals may be recorded in a recording medium (col. 7:10);
`or to storage of control information, not audio/video signal (col. 17:41); or to reproduction-only
`embodiments without the recording elements of the claim (col. 17:51). The other citations Hita-
`chi provided are not relevant: col. 4:67- col. 5:3 discusses broadcasting via satellite or cable, and
`col. 5:46-47 discloses that “audiences” can request information via a telephone line and it is
`broadcast via satellite as VOD. None of these citations have anything to do with receiving or
`downloading data files. To the contrary, the fact that the received audio/video information is ul-
`timately stored as digital data in a hard disk or the like shows that the received information itself
`was not in such a format because prior to storing it, the received information is converted to a
`format suitable for storing: “The RF tuner 5 on the receiving side receives and demodulates the
`transmitted information and thereafter, the recording circuit 2 converts it into a signal suitable
`for recording on a recording medium and the recording/reproducing unit 6 records the convert-
`ed signal.” Col. 5:3-7. Thus, it is clear that the audio/video information is received in a format that
`is not suitable for recording (cannot be an MPEG file) and needs to be converted before storing.
`
`Additionally, Apple’s devices do not infringe the claims of the ’389 patent because none of the
`rental periods limit the retention of the rented movie files on a recording medium. In its April 9
`letter, Hitachi notes that “the ’389 Patent controls reproduction using two different kinds of time
`restriction information for different targets, i.e. a first period for retaining the audio/video infor-
`mation on a recording medium, and a second period for enabling reproduction.” Neither the 30-
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 5 of 15
`
`

`

`
`
`
`day period nor the 24 hour period in Apple’s movie rentals affect the retention of the movie files
`on a recording medium. For example, movie files for rented movies remain stored on an iMac’s
`hard drive past the 30-day rental period, even if the movie is no longer available for reproduction
`on iTunes.
`
`Further, the claims, as Hitachi asserts them, are invalid over the prior art. As previously stated, U.S.
`Patent No. 5,400,402 renders the claims obvious as now asserted by Hitachi because the allegedly
`missing two-time-period access limitation was well known in the prior art by December 2000.
`This is shown for example in U.S. Patent No. 5,023,741. Hitachi argues that this reference fails to
`disclose the two time periods being “partially overlapped.” But this is an obvious situation that
`could arise in the system described in the ’741 patent. As Apple explained, the ’741 patent teach-
`es that in a typical rental arrangement, “[f]or example, the duplicator using a password not avail-
`able to either the distributor or rental agent may program the IC module 64 to provide a play lim-
`it at the end of six months.” At the same time, the “rental agent may interrogate and reset a
`transaction counter in the IC module 64” for each rental. Thus, each rental would provide time
`limit for the tape but if a rental is made at or near the end of the distributor’s six month period,
`the IC module 64 would prevent reproduction even if the rental period was not over. This is a
`“partially overlapped” scenario contemplated and obvious in view of the ’741 patent.
`
`In any case, it is abundantly clear that U.S. Pat. No. 5,629,980 (“Stefik”) teaches any partially over-
`lapped time-period scenario covered by the claims of the ’389 patent. Hitachi alleged that Stefik
`fails to disclose a “duration” for the first time period. As discussed during our meeting in April,
`Stefik discloses the first time period in several ways.
`
`First, with respect to any particular download, the Expiration Date in the digital work provides a
`duration during which reproduction is enabled starting with the time when the digital work is
`downloaded and ending at the Expiration Date. The claim expressly requires measuring an
`“elapsed time from the recording of the audio/video information” and does not require the first
`period to have any specific starting time. A person of ordinary skill in the art reading Stefik would
`understand that before downloading a digital work, it cannot be reproduced. The Stefik specifi-
`cation is clear on this point: “The period starts on the first access and ends after the duration has
`passed or the expiration date is reached, whichever comes first.” Thus, the potential period for
`reproduction begins with the first access and ends when the elapsed time from the recording to
`the medium reaches either the Expiration Date (first period) or the end of the Use Duration (se-
`cond period), which ever comes first.
`
`Second, Stefik also discloses yet another “duration” that controls the reproduction of digital
`works. Stefik discloses a “Loan Transaction” that includes an additional “loan period.” Col. 35:32-
`33 (“The maximum duration of the loan is determined by an internal parameter of the digital
`work.”) In the Loan Transaction, digital works are subject to their time restrictions per the rights
`specification. Col. 35:52-56. In addition, “[i]f the time period of the loan is exhausted … [t]he
`requester automatically deactivates its copies of the digital work. It terminates all current uses
`and erases the digital work copies from memory.” Col. 36:16-22. Therefore, in addition to the Ex-
`piration Date, the “loan period” provides another disclosure of the claimed “first period” for each
`loan transaction and unlike Apple’s movie rentals, the rental period in Stefik controls the retention
`of the digital works on the storage medium; the system of Stefik “erases the digital work copies”
`at the end of the rental period.
`
`
`
`6
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 6 of 15
`
`

`

`
`
`
`Hitachi’s April 9 letter also argued that Stefik does not disclose “a time restriction for retaining the
`digital work on the repository.” This argument is not only incorrect as shown above (erasing of
`digital works at the end of the loan period), but also irrelevant because the only “right” controlled
`by the claims of the ’389 patent is the reproduction right. The apparatus of the claims enables or
`disables “reproduction” based on the time periods. The claims do not recite any way to control
`the retaining of the audio/video information on the recording medium.
`
`Accordingly, Stefik clearly anticipates at least claim 5 of the ’389 patent.
`
`3. U.S. Pat. No. 6,748,317 (“the ’317 patent”)
`
`Hitachi alleges that Apple’s iPhone 4/5 series and iPad / iPad 2 / iPad mini and iPad Air series in-
`fringe claims 1, 15, and 17 of the ’317 patent through the “walking directions” feature available in
`Apple Maps. The ’317 patent claims priority to July 12, 1999.
`
`After Apple noted that unlike the claimed requirements, Hitachi’s allegations of infringement
`failed to disclose all the claim elements in a single display, Hitachi’s April 9 letter provided new
`screen shots purporting to show the required claim elements in a single display. The new screen
`shots showed features that do not appear to be present in Apple’s iOS 8. Because we were una-
`ble to reproduce the screen shots, during our April 13 meeting Hitachi agreed to provide addi-
`tional information regarding how the screen shots were generated. Apple will review those and
`provide its response.
`
`Hitachi further argues that the prior art reference provided by Apple, U.S. Pat. No. 6,222,485 to
`Walters and U.S. Patent No. 6,133,853 to Obradovich, do not anticipate claims 1, 15, and 17. First,
`Hitachi argues that neither Walters or Obradovich disclose both claimed devices for getting loca-
`tion information and for getting direction information. As noted by Apple, this conclusion is in-
`correct. Contrary to Hitachi’s argument, the claims do not require a “compass/gyro-type device”
`as the device for getting direction information. Instead, the claims require “a device for getting
`location information denoting a resent [sic] place of said portable terminal” and “a device for get-
`ting a direction information denoting an orientation of said portable terminal.” As Hitachi admits,
`both Walters and Obradovich disclose GPS devices, which provide location information denoting
`a present place. In addition, both references disclose another device, a processor in Walters and a
`microprocessor in Obradovich, which calculate direction information denoting an orientation of
`the terminal. In Walters, the processor uses GPS data and coordinates from adjacent points in the
`cartographic data to calculate the “desired heading orientation” which is used to adapt the dis-
`play of the device “so as to make the desired heading the top of the heading.” ’485 patent, col.
`2:19-26. Obradovich, in addition to the GPS receiver, also discloses a microprocessor (e.g., Fig. 4)
`that displays the computed heading information on the devices display in real time. These are
`the types of devices expressly disclosed by the ’317 patent to obtain direction information. The
`’317 patent discloses that a “device for getting direction information” can include “a control unit
`for analyzing sensor-measured data, thereby calculating direction information.” ’317 patent, col.
`9:55-59. Thus, both Obradovich and Walters disclose both claimed devices. Note also, that com-
`bining orientation sensors, such as gyroscopes, compasses, or other sensors for obtaining orienta-
`tion, with a GPS sensor in a portable terminal was also not new by July of 1999. To the extent
`that combination were an actual requirement of the claims, other prior art would apply. See, e.g.,
`U.S. Patent No. 6,043,778 (Dec. 29, 1997) titled “Navigation system and orientation system incor-
`porating solar sighting”; see also, e.g., U.S. Patent No. 5,146,231 (Oct. 4, 1991) titled “Electronic di-
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 7 of 15
`
`

`

`
`
`
`rection finder”; U.S. Patent No. 5,266,958 (Nov. 27, 1992) titled “Direction Indicating Apparatus and
`Method.”
`
`During the April 13 meeting, Hitachi additionally argued that the GPS-based orientation disclosed
`in Walters and Obradovich is different than that of the ’317 patent because if the devices are not
`moving or if device’s orientation is changed with respect to the direction of travel, that orienta-
`tion would not be reflected in the systems of Obradovich and Walters. No such limitations appear
`in the asserted claims. Instead, the asserted claims of the ’317 patent claim “getting direction in-
`formation denoting an orientation of said portable terminal” and changing the display
`“…according to a change of said direction of said portable terminal orientation for walking navi-
`gation.” Thus, the direction information of both prior art references invalidate the asserted claims.
`
`Hitachi further noted that Walters failed to disclose the subject matter of claims 15 and 17 of the
`’317 patent. However, as Apple noted during the April 13 meeting, the additional limitations in
`these dependent claims do not add any novel features to the independent claim. For example,
`Walters is a patent assigned to Garmin Corporation. The additional limitations in dependent
`claims 15 and 17 are disclosed in many other prior art references, including several patents com-
`monly assigned to Garmin Corporation that would be obvious to combine with the Walters refer-
`ence. For example, U.S. Patent No. 6,076,039 discloses a device that looks just like the embodi-
`ment depicted in Walters’ Figure 2, but also displaying a route with current location, and icons for
`beginning and ending points as in claim 17:
`
`Walters Fig. 2
`
`
`
`‘039 Patent Fig. 1.
`
`
`
`Another Garmin patent, U.S. Patent No. 5,936,553, similarly show displays of routes with curved
`lines, direction of movement by the arrow (compass heading arrows), symbols denoting starting
`and ending points and present place on the route:
`
`
`
`
`
`
`
`
`
`8
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2003
`
`Page 8 of 15
`
`

`

`
`
`
`
`
`Accordingly, Apple does not believe it infringes the claims of the ’317 patent or that they are valid
`and hence Apple does not need a license to the ’317 patent.
`
`4. U.S. Pat. No. 6,898,078 (“the ‘078 patent”)
`
`Hitachi alleges that the iPhone 4 series infringe claim 1 of the ’078 patent. The ’078 patent claims
`priority to April 23, 1997.
`
`Apple maintains its position that the claims of the ’078 patent are invalid because they recite new
`matter that was not disclosed in the original application and similarly the claims lack written de-
`scription support in the specification due to the introduction of the “I/O device” limitation during
`prosecution.
`
`In addition, claim 1 is invalid over the prior art. As Apple has previously explained, U.S. Pat. No.
`5,931,929 (EP 0853414) to Tran anticipates all the elements of claim 1. Hitachi argues, despite the
`express disclosure in the ’929 patent, that it does not “disclose or suggest sending electric power
`with respect to said I/O device to the docking station via the connector.” As previously pointed
`out by Apple, the ’929 patent specification specifically discloses sending and receiving electric
`power through the connector: “Connection to the elements of the docking station 11 is by the
`multiconductor plug-in connector 12 which conveys both logic voltages and power supply volt-
`ages to and from the docking station.” Col. 6, lines 4-7. Hitachi tries to overcome this express
`disclosure in the ’929 patent using several failed arguments.
`
`First, Hitachi argues that because the laptop computer of Tran is powered from the docking sta-
`tion when docked, somehow this prevents power from being sent and received through the con-
`nector 12. As Apple previously noted, that the laptop is powered from the docking station is ir-
`relevant. If that is not the case, Hitachi’s alleged infringement fails; Apple’s iPhone and dock clear-
`ly do not meet this requirement because the iPhone is powered from the Dock when docked.
`But, in any case, the specification of the ’929 patent expressly states that power supply voltages
`are conveyed to and from the docking station. Despite this clear disclosure, Hitachi argues that
`“Tran did not disclose or suggest coupling the power supply from the laptop to the docking sta-
`tion because the description in Tran makes it completely unnecessary.” However, the claims do
`not require directly “coupling the power supply from the laptop to the docking station.” Instead,
`the claims require that the “information processing unit … sends and receives an electric power
`and a signal with respect to said I/O device via said … docking connector ….” This is precisely
`what Tran discloses.
`
`Hitachi argues that the understanding of one of skill in the art must be taken into consideration
`when reading Tran. Apple agrees. As explained during our April 13 meeting, one of skill in the
`art would know that I/O devices, such as mouse 63 or keyboard 16 in Tran, are routinely powered
`through their interface cables and connectors. For example, Revision 1.0 of the Universal Serial
`Bus (USB) specification, dated January 15, 1996 (which would have been known to one of skill in
`the art by April of 1997) specifies that “USB transfers signal and power over a four wire cable,
`shown in Figure 4-2.” See USB 1.0 at 29 (emphasis added). Tran further describes that
`“[c]onnections 61