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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`Filed on behalf of Apple Inc.
`By: Adam P. Seitz, Reg. No. 52,206
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`Jennifer C. Bailey, Reg. No. 52,583
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`ERISE IP, P.A.
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`7015 College Blvd., Suite700
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`Overland Park, KS 66211
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`Tel: (913) 777-5600
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`Email:
`adam.seitz@eriseip.com
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`jennifer.bailey@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
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`ERISE IP, P.A.
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`Tel: (913) 777-5600
`Email:
`paul.hart@eriseip.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
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`APPLE INC.,
`Petitioner,
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`v.
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`MAXELL, LTD.,
`Patent Owner.
`_________________________________________________
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`Case IPR2020-00407
`U.S. Patent No. 6,748,317 B2
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`PETITIONER’S NOTICE OF APPEAL
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`Pursuant to 35 U.S.C. §§ 141-142 and 319, 5 U.S.C. §§ 701-706, 28 U.S.C.
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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`§ 1295(a)(4)(A), and 28 U.S.C. § 1651, and in accordance with 37 C.F.R. §§ 90.2-
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`90.3, and Federal Circuit Rule 15(a)(1), notice is hereby given that Petitioner
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`Apple Inc. appeals to the U.S. Court of Appeals for the Federal Circuit from the
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`Decision Denying Institution of Inter Partes Review entered on August 11, 2020
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`(Paper 12) in IPR2020-00407, attached as Exhibit A, and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner states that the issues
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`for appeal include, but are not limited to:
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`(1) whether the U.S. Patent and Trademark Office (PTO) exceeded its
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`statutory authority and violated the text, structure, and purpose of the Leahy-Smith
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`America Invents Act, 35 U.S.C. §§ 311-319 (AIA), and Administrative Procedure
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`Act, 5 U.S.C. §§ 701-706 (APA), by adopting a rule—and applying that rule to
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`deny institution here—that purports to authorize the Patent Trial and Appeal Board
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`(Board) to deny institution of inter partes review (IPR) based on non-statutory,
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`discretionary factors related to the pendency of parallel patent-infringement
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`litigation;
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`(2) whether the PTO exceeded its statutory authority and violated the APA
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`by adopting a rule governing institution decisions—and applying the rule to deny
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`institution here—that incorporates non-statutory, discretionary factors that are
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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`arbitrary and capricious;
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`(3) whether the PTO exceeded its statutory authority and violated the AIA
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`and the APA by adopting a rule to govern all institution decisions—and applying
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`that rule to deny institution here—without following the procedures for notice-and-
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`comment rulemaking; and
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`(4) whether the court of appeals has jurisdiction over this appeal,
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`notwithstanding 35 U.S.C. § 314(d), because the PTO acted in excess of its
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`statutory authority and outside its statutory limits or because the grounds for
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`attacking the decision to deny institution depend on statutes, including the APA,
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`that are less closely tied to the application and interpretation of statutes related to
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`the decision to initiate IPR.
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`This Notice of Appeal is timely, having been duly filed 16 days after the
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`date of the Decision Denying Institution of Inter Partes Review.
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`A copy of this Notice of Appeal is being filed simultaneously with the
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`Board, the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit, and the Director of the PTO.
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`Dated: August 27, 2020
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`Respectfully submitted,
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`ERISE IP, P.A.
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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`BY: /s/Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`P: (913) 777-5600
`F: (913) 777-5601
`paul.hart@eriseip.com
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E) system, a true and correct original version of the
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`foregoing Petitioner’s Notice of Appeal is being filed by Priority Express Mail
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`on this 27th day of August, 2020, with the Director of the U.S. Patent and
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`Trademark Office, at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a), (e), I hereby certify that a true and correct copy of the foregoing
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`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
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`for the Federal Circuit using the Court’s CM/ECF filing system on this 27th day
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`of August, 2020, and the filing fee is being paid electronically using pay.gov.
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` hereby certify that on August 27, 2020, I caused a true and correct copy
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`of the foregoing Petitioner’s Notice of Appeal to be served via email on the
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`following counsel for Patent Owner:
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`Robert G. Pluta (rpluta@mayerbrown.com)
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`Maxell-Apple-Service@mayerbrown.com
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`IPR2020-00407
`U.S. Patent 6,748,317 B2
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`Dated: August 27, 2020
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`Respectfully submitted,
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONERS
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`Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: August 11, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
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`IPR2020-00407
`Patent 6,748,317 B2
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`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition for inter partes review of
`claims 1–3, 5, 10–15, 17, and 18 of U.S. Patent No. 6,748,317 B2 (Ex. 1001,
`“the ’317 patent”). Paper 1 (“Pet.”). Patent Owner, Maxell, Ltd., filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to our
`authorization for supplemental briefing, Petitioner filed a Reply to Patent
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`Owner’s Preliminary Response, and Patent Owner filed a Sur-reply. Paper 8
`(“Pet. Reply”); Paper 10 (“PO Sur-reply”); see Paper 7, 4 (authorizing reply
`and sur-reply).
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`institute an inter partes review if “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
`discretion to deny a petition even when a petitioner meets that threshold.
`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
`May 7, 2019).
`Having considered the parties’ submissions, and for the reasons
`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
`deny institution of inter partes review.
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`II. BACKGROUND
`A. Related Matters
`The parties identify the following pending district court proceeding
`related to the ’317 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036
`(E.D. Tex., filed Mar. 15, 2019) (“the underlying litigation”). Pet. 6;
`Paper 4, 1 (Patent Owner’s Mandatory Notices). The parties also identify an
`earlier proceeding in which the Board denied institution of inter partes
`review of claims 1–3, 6–8, 10, 15–17, and 20 of the ’317 patent: ZTE Corp.
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`2
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`v. Maxell, Ltd., IPR2018-00235, Paper 9 (PTAB June 1, 2018). Pet. 6;
`Paper 4, 1.
`Petitioner also has filed petitions in IPR2020-00409 and IPR2020-
`00408 respectively challenging claims of U.S. Patent No. 6,580,999 B2 (“the
`’999 patent”), which is the parent of the ’317 patent, and U.S. Patent No.
`6,430,498 B1, which is the parent of the ’999 patent. See Ex. 1001, code
`(63).
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`B. Overview of the ’317 Patent
`The ’317 patent describes “a portable terminal provided with the
`function of walking navigation, which can supply location-related
`information to the walking user.” 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. Id. at 1:31–38. At the same time, maps provided
`by conventional map information services could not be displayed clearly on
`the small screens of portable telephones. Id. at 1:46–52. The invention of
`the ’317 patent purportedly addressed these problems by providing a
`portable terminal that can “supply location information easier for the user to
`understand during walking.” Id. at 2:53–54.
`The portable terminal described in the ’317 patent obtains location
`information and direction information of the terminal (i.e., the direction of
`the tip of the terminal). Id. at code (57), 2:66–3:4. Based on this terminal
`information, the portable terminal obtains and displays information such as
`route guidance for reaching a destination or neighborhood guidance relating
`to entertainment, businesses, and restaurants. Id. at code (57), 3:5–42. In
`addition, the portable terminal displays the direction of a destination with an
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`indicating arrow that always points in the direction of the destination. Id. at
`code (57), Fig. 1.
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`C. Illustrative Claims
`Challenged claims 1 and 10 are independent. Challenged claims 2, 3,
`5, 15, and 17 depend directly or indirectly from claim 1; challenged claims
`11–14 and 18 depend directly or indirectly from claim 10. Claims 1 and 10
`are illustrative of the claimed subject matter:
`1. A portable terminal, comprising:
`a device for getting location information denoting a [p]resent
`place of said portable terminal;
`a device for getting a direction information denoting an
`orientation of said portable terminal;
`an input device for inputting a destination; and
`a display,
`wherein
`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 of said portable terminal orientation for walking
`navigation.
`10. A portable terminal, comprising:
`a device for getting location information denoting a present
`place of said portable terminal;
`a device for getting direction information denoting an
`orientation of said portable terminal;
`a device for getting a location information of another portable
`terminal from said another terminal via connected network; and
`a display,
`wherein
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`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 of said portable terminal orientation for walking
`navigation.
`Ex. 1001, 10:42–57, 11:34–51.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 5):
`Claims Challenged
`35 U.S.C. §
`1–3, 5, 15, 17
`103(a)1
`1–3, 5, 10–15, 17, 18
`103(a)
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`Reference(s)
`Hayashida2,3
`Hayashida, Abowd4
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`In support of its contentions, Petitioner relies on the Declaration of
`Dr. Michael D. Kotzin (Ex. 1003).
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`III. ANALYSIS
`Patent Owner contends we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
`advanced stage of the underlying litigation in the United States District
`Court for the Eastern District of Texas. Prelim. Resp. 2–24; PO
`Sur-reply 1–10. According to Patent Owner, instituting an inter partes
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`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the ’317 patent has an effective filing date prior to the effective date
`of the applicable AIA amendment, we refer to the pre-AIA version of § 103.
`2 U.S. Patent No. 6,067,502, issued May 23, 2000 (Ex. 1004).
`3 Petitioner presents this ground as obviousness over Hayashida and the
`knowledge of a person of ordinary skill in the art. Pet. 5.
`4 Gregory D. Abowd et al., Cyberguide: A mobile context-aware tour guide,
`Wireless Networks 3 (1997) 421–33 (Ex. 1005).
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`review “would needlessly duplicate” the district court action and
`“unnecessarily waste the Board’s resources.” Prelim. Resp. 4 (citing NHK,
`Paper 8 at 20 (denying institution)).
`After Patent Owner filed its Preliminary Response, we authorized the
`parties to submit supplemental briefing on the issue of discretionary denial
`under 35 U.S.C. § 314(a). Paper 7, 4. We specifically authorized the parties
`to address the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020)
`(“Fintiv”). Id. Fintiv provides several factors that balance considerations of
`system efficiency, fairness, and patent quality when a patent owner raises an
`argument for discretionary denial due to the advanced state of a parallel
`proceeding. Fintiv, Paper 11 at 5–6. These factors are:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Id.
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`We now consider these factors to determine whether we should
`exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n
`evaluating the factors, the Board takes a holistic view of whether efficiency
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`and integrity of the system are best served by denying or instituting review.”
`Id. at 6.
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`A. Fintiv Factor 1: Stay in the Underlying Litigation
`Petitioner moved for a stay in the underlying litigation, but the district
`court denied the motion. See Pet. Reply 7; PO Sur-reply 2; Exs. 1045, 1052,
`2018. Among other reasons, the court stated “[t]he case is not in its infancy
`and is far enough along that a stay would interfere with ongoing
`proceedings.” Ex. 1052, 4. Notably, the court denied the motion without
`prejudice. Id. at 6. Although the court stated that “[t]he late stage of the
`proceedings will certainly weigh against granting a stay” if Petitioner were
`to file a renewed motion for a stay, the court also stated it could not “say
`now that the late stage would necessarily outweigh the potential
`simplification of issues following institution decisions” in this and other
`inter partes review proceedings. Id. Given the court’s apparent willingness
`to reconsider a motion to stay if an institution decision simplified issues for
`trial, but also considering the late stage of the district court proceeding, with
`trial scheduled to begin in about four months, we view the first Fintiv factor
`as neutral in determining whether to exercise discretion to deny institution.
`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
`The district court trial date, previously set for October 26, 2020, has
`been reset for December 7, 2020. Ex. 3001 (August 10, 2020 Order
`resetting trial date); see Pet. Reply 7; PO Sur-reply 2; Ex. 2001. A trial
`beginning this December would be completed about eight months before a
`final written decision would be due in this proceeding.
`Petitioner notes that the COVID-19 pandemic may affect the trial
`schedule, and indeed the trial has been delayed by six weeks due to the
`effects of COVID-19. Pet. Reply 7 n.4; Ex. 3001, 1. Patent Owner cites a
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`standing order in the court where the underlying litigation is pending “to
`keep cases moving” despite COVID-19. PO Sur-reply 4 (quoting Ex. 2027,
`1). In any event, Patent Owner argues, even if the trial date were delayed by
`three months, the trial still would precede a final written decision by several
`months. Id. at 3. Although we consider further delays due to the COVID-19
`pandemic to be a real possibility despite the trial court’s standing order and
`the recent order resetting the trial date for December 7, 2020, a delayed trial
`still may precede a final written decision in this proceeding, which would be
`due in August 2021. This factor, therefore, favors the exercise of
`discretionary denial.
`C. Fintiv Factor 3: Investment by the Court and the Parties in
`the Underlying Litigation
`Petitioner asserts that briefing on dispositive issues and other pre-trial
`efforts have not yet begun, and the district court has not made any rulings on
`the merits. Pet. Reply 8–9. According to Petitioner, these facts outweigh
`the amount of work the court has invested in claim construction. Id. at 9.
`As evidence of the court’s investment of time and resources, Patent
`Owner highlights the court’s claim construction hearing and order and its
`rulings on various motions. PO Sur-reply 5. As for the parties’ investment
`in the underlying litigation, Patent Owner notes that fact discovery closed on
`March 31, 2020, except for some depositions postponed due to COVID-19
`that are now complete, and expert discovery was scheduled to close on
`June 25, 2020. Id. at 5–6.
`At least some of the court’s and the parties’ work related to invalidity
`has been completed in preparation for the upcoming trial. Because some of
`this invested effort, including claim construction and expert discovery, likely
`has relevance to issues in the Petition, this factor favors the exercise of
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`discretionary denial in this case to prevent duplication of work on similar
`issues by the Board and the district court.
`D. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Underlying Litigation
`Petitioner contends there is little overlap between the issues in this
`case and those in the underlying litigation. Pet. Reply 9–10. First, Petitioner
`asserts that the Petition challenges claims 1–3, 5, 10–15, 17, and 18, whereas
`only claims 1 and 17 are at issue in the underlying litigation. Id. Second,
`Petitioner argues that the Petition and the underlying litigation present
`different grounds of unpatentability and invalidity. Id. at 10. In particular,
`Petitioner contends that neither of the two unpatentability grounds asserted
`here—obviousness over Hayashida in view of the knowledge of a person of
`ordinary skill in the art, and obviousness over Hayashida in view of
`Abowd—remains at issue in the underlying litigation. Id. Rather, Petitioner
`points out that two of the four obviousness grounds in the district court rely
`on NavTalk as a base reference, a third ground combines Hayashida with
`Maruyama, which is not asserted here, and the final ground relies on the
`Cyberguide system in combination with Hayashida. Id. (citing Ex. 1047, 2).
`Although Abowd describes the Cyberguide system, which is asserted as
`system prior art in the underlying litigation, Petitioner argues that the
`Cyberguide/Hayashida obviousness ground is materially different from the
`Hayashida/Abowd obviousness ground asserted in the Petition. Id.
`According to Petitioner, only some pertinent details of the Cyberguide
`system are described in Abowd, and the proposed modified systems and
`motivations to combine will be significantly different. Id.
`Patent Owner contends that the district court ordered it to elect a
`narrower set of claims in the underlying litigation and this narrowing should
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`have no impact on the Board’s decision whether to exercise discretion to
`deny institution. PO Sur-reply 8. Patent Owner also contends that although
`independent claim 10 is no longer at issue in the underlying litigation,
`Petitioner itself acknowledges the substantial overlap between claims 1
`and 10 by substantially relying on its claim 1 analysis for claim 10. Id. As
`for the asserted grounds, Patent Owner argues that the combination of
`Hayashida and Abowd in the Petition is substantially similar to the
`combination of Cyberguide and Hayashida asserted in the underlying
`litigation because Cyberguide is system prior art described in Abowd and
`developed by its authors and Petitioner is relying on Abowd as part of its
`Cyberguide set of references. Id. (citing Exs. 2009, 2010).
`After considering the parties’ arguments and the record before us, we
`determine that the two asserted grounds in the Petition are substantially the
`same as two of the grounds asserted in the underlying litigation. The first
`ground in the Petition—obviousness over Hayashida and the knowledge of a
`person having ordinary skill in the art—is substantially similar to the
`obviousness ground based on Hayashida and Maruyama in the underlying
`litigation. Claim 1 is the only independent claim challenged in the Petition
`on the first ground, and the Petition includes many of the same citations to
`Hayashida for claim 1 as the Petitioner’s expert report in the district court
`for the combination of Hayashida and Maruyama. Compare Pet. 18–34
`(analysis of claim 1 for obviousness over Hayashida and the knowledge of a
`person of ordinary skill in the art), with Ex. 2008, 1–28 (expert report claim
`chart for claim 1); see also Prelim. Resp. 8–9 (comparing alleged support
`from Hayashida relied on in the Petition and in the district court expert
`report). Indeed, the expert report cites only Hayashida for teaching the
`limitations of claim 1 and dependent claim 17, and relies on Maruyama as
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`additional support for just one limitation of claim 15, from which claim 17
`depends but which is not challenged in the underlying litigation. Ex. 2008,
`1–42. Petitioner does not argue, nor do we see based on the present record,
`that the proposed combination of Hayashida with Maruyama in the
`underlying litigation differs materially from the obviousness ground based
`on Hayashida and the knowledge of a person having ordinary skill in the art
`asserted in the Petition.
`Regarding the second ground in the Petition—obviousness over the
`combination of Hayashida and Abowd—we agree with Patent Owner that it
`is substantially similar to obviousness over Cyberguide and Hayashida as
`asserted in the underlying litigation. Cyberguide is system prior art, but in
`the district court Petitioner relies on Abowd and two other publications as
`evidence of “the features and functionalities” of Cyberguide. Ex. 2009, 1
`(expert report explaining that the features and functionalities of the
`Cyberguide system are described in various printed publications, including
`Abowd5); Ex. 2010, 2 n.1 (Final Election of Prior Art indicating that the
`Cyberguide system and its associated references are considered “one
`reference” consistent with a court order); see Ex. 2007, 1–2 (Apple’s
`preliminary invalidity contentions relying on Abowd as evidence of the
`features and functionalities of Cyberguide). Importantly, the expert report’s
`
`
`5 The district court expert report uses “Abowd” to refer to an article with the
`same author and title as the Abowd reference before us, but with an earlier
`date. Ex. 2009, 1. The numerous quotations from “Abowd” in the expert
`report suggest that its content is substantially the same as, if not identical to,
`that of the Abowd reference cited in the Petition. Compare Ex. 2009, 1–29,
`with Ex. 1005, 421–32. Neither party addresses the difference in the dates
`of Abowd, and we do not view the difference as materially impacting our
`analysis.
`
`11
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`EXHIBIT A
`
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`IPR2020-00407
`Patent 6,748,317 B2
`claim chart in the district court primarily quotes Abowd to show that
`Cyberguide teaches limitations of claims 1, 15, and 17. Ex. 2009, 1–29.
`Thus, Petitioner appears to rely primarily on the same or similar teachings
`from Abowd in the underlying litigation, albeit under the guise of
`Cyberguide system prior art. Moreover, even though Petitioner argues that
`“only some pertinent details . . . are described in the Abowd publication”
`(Pet. Reply 10), Petitioner does not purport to show any material differences
`between its unpatentability analysis based on Hayashida and Abowd here
`and its invalidity analysis based on Hayashida and Cyberguide in the
`underlying litigation. For these reasons, we find that the assertion of
`Hayashida and Abowd in both proceedings likely will result in duplication
`of work and create the potential for inconsistent decisions.
`As for the challenged claims, independent claim 1 and dependent
`claim 17 are at issue in both proceedings, and the limitations of dependent
`claim 15 also must be addressed as part of the analysis of claim 17.
`Claim 10, the other independent claim challenged in the Petition, is no
`longer asserted in the underlying litigation. See PO Sur-reply 8. As Patent
`Owner points out, however, the Petition substantially relies on its analysis of
`claim 1 for claim 10. Id. (citing Pet. 57–60). Claim 10 also recites the
`following limitation not present in claim 1: “a device for getting a location
`information of another portable terminal from said another terminal via
`connected network.” Ex. 1001, 11:40–42. A similar limitation appears in
`independent claim 1 of the ’999 patent, the parent of the ’317 patent, and
`will be considered in the underlying litigation as part of the analysis of
`dependent claim 3 of the ’999 patent. See Ex. 1001, code (63) (identifying
`the ’999 patent as the parent of the ’317 patent); Apple Inc. v. Maxell, Ltd.,
`IPR2020-00409, Ex. 1001, 10:38–51, 10:56–61 (claims 1 and 3 of the
`
`12
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`EXHIBIT A
`
`
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`IPR2020-00407
`Patent 6,748,317 B2
`’999 patent); Apple Inc. v. Maxell, Ltd., IPR2020-00409, Ex. 2012 (expert
`report claim chart for obviousness of claims 1 and 3 of the ’999 patent over
`Cyberguide and Hayashida in the underlying litigation). Thus, the district
`court proceeding will address substantially all of the limitations of claim 10
`of the ’317 patent.6 As for the remaining dependent claims challenged here,
`they do not add limitations that are materially different from those of the
`claims challenged in the underlying litigation. See, e.g., Pet. 34–35, 43–44
`(relying on Figure 26 of Hayashida for teaching limitations of both claim 2
`and claim 17).
`This fourth Fintiv factor involves consideration of inefficiency
`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
`Therefore, “if the petition includes the same or substantially the same
`claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial.” Id. As discussed, there is
`substantial overlap between the grounds asserted in the underlying litigation
`and those asserted in the Petition, so that institution of an inter partes review
`likely will result in duplicative efforts by the Board and the trial court as to
`how the references teach limitations of the challenged claims. Further, both
`tribunals would address the material issues with respect to whether the
`asserted prior art teaches the limitations of claims 1, 10, 15, and 17. Finally,
`the remaining dependent claims challenged here raise similar issues as those
`
`
`6 We also note that claim 10 recites “wherein said display displays positions
`of said destination and said present place” without providing clear
`antecedent basis for “said destination.” Ex. 1001, 11:34–50 (emphasis
`added). This ambiguity might present problems in applying the prior art to
`claim 10 if we were to institute an inter partes review in this case. See
`Pet. 60 (acknowledging ambiguity of this limitation).
`
`13
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`EXHIBIT A
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`IPR2020-00407
`Patent 6,748,317 B2
`asserted in the underlying litigation. For these reasons, we determine that
`this factor on balance favors the exercise of discretionary denial.
`E. Fintiv Factor 5: Whether Petitioner is the Defendant in the
`Underlying Litigation
`Both parties acknowledge that Petitioner here is the defendant in the
`underlying litigation. Pet. Reply 10; PO Sur-reply 10. Because the trial
`court may reach the overlapping issues before the Board would in a final
`written decision, this factor favors the exercise of discretionary denial in this
`case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 15 (PTAB
`May 13, 2020) (informative, designated July 13, 2020) (determining factor 5
`weighs in favor of discretionary denial when the parallel proceeding
`involves the same parties and the trial court may reach overlapping issues
`before the Board would in a final written decision).
`F. Fintiv Factor 6: Other Considerations
`Under the sixth Fintiv factor, which takes into account any other
`relevant circumstances, Patent Owner argues that Petitioner unreasonably
`delayed in filing the Petition. Prelim. Resp. 15–18; PO Sur-reply 10.
`Petitioner explains that the underlying litigation initially involved ten
`different patents and “132 possibly-asserted claims,” and that it needed time
`to locate relevant prior art and prepare petitions for inter partes review. Pet.
`Reply 8. Having considered the particular factual circumstances of this case,
`we do not consider Petitioner’s filing untimely.
`Petitioner also presents extensive policy arguments against the
`Board’s application of Fintiv and NHK in determining whether to exercise
`discretion to deny institution under 35 U.S.C. § 314(a). Pet. Reply 1–7. We
`need not address these arguments, as the Under Secretary of Commerce for
`
`14
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`EXHIBIT A
`
`
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`IPR2020-00407
`Patent 6,748,317 B2
`Intellectual Property and Director of the U.S. Patent and Trademark Office
`has designated Fintiv and NHK precedential decisions of the Board.
`As noted in Fintiv, a balanced assessment of factors may include
`consideration of the merits. Fintiv, Paper 11 at 14–15. Although we do not
`undertake here a full analysis of the merits, our initial inspection of the
`record and the parties’ arguments suggests a potential deficiency in
`Petitioner’s evidence supporting its contention that Abowd was publicly
`accessible before the effective filing date of the ’317 patent. See Pet. 46;
`Prelim. Resp. 45–56; Ex. 1009. This issue is also the subject of a pending
`motion for partial summary judgment filed by Patent Owner in the
`underlying litigation. See Paper 11, 2–3 (summarizing conference call with
`the parties in which the summary judgment motion was discussed); Ex. 1057
`(transcript of conference call). In a balanced assessment of the relevant
`circumstances, and in view of the possible weakness in Petitioner’s showing
`with regard to Abowd on the present record, this factor is neutral or weighs
`slightly in favor of discretionary denial.
`G. Conclusion
`Based on the particular circumstances of this case, we determine that
`instituting an inter partes review would be an inefficient use of Board
`resources. As discussed above, the trial in the
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