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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`____________
`
`IPR2020-00408
`Patent 6,430,498
`____________
`
`
`DECLARATION OF MICHAEL D. KOTZIN
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`Table of Contents
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`Introduction ...................................................................................................... 5
`I.
`II. Qualifications and Professional Experience .................................................. 7
`III. RELEVANT LEGAL STANDARDS ........................................................... 12
`A. Obviousness ...................................................................................................................... 12
`B. Claim Construction ........................................................................................................... 17
`IV. OPINION ........................................................................................................ 18
`A. Level of Skill of a Person Having Ordinary Skill in the Art ............................................ 18
`B. Overview of the Challenged Patents ................................................................................. 19
`C. Background of the Technology ......................................................................................... 21
`i.
`Portable Navigation System Position Detection ....................................................... 22
`ii.
`Navigation to a Desired Destination ......................................................................... 25
`iii.
`Display in Navigation Devices ................................................................................. 27
`D. Hayashida in View of the Knowledge of a PHOSITA ..................................................... 31
`i.
`Overview of Hayashida ........................................................................................... 31
`ii.
`Hayashida’s Position Determination ..................................................................... 33
`a. Limitations [1(a)] and [10(a)] of the ’317 Patent; limitations [1(a)], [5(a)], and [10(a)]
`getting location information…” ........................................................................................ 33
`b. Limitations [1(b)] and [10(b)] of the ’317 Patent, limitations [1(b)], [5(b)], and [10(b)]
`getting direction information…” ....................................................................................... 35
`c. Claims 3 and 7 of the ’498 Patent: getting orientation of a display of said portable
`terminal ............................................................................................................................. 36
`iii.
`and claim 17 of the ’317 Patent; and claim 8 of the ’498 Patent .................................... 38
`a. Limitation [15(a)], [18(a)] and claim 17 of the ’317 Patent: “a device for retrieving a
`route…” ............................................................................................................................. 38
`b. Claim 8 of the ’498 Patent: Retrieving Neighborhood Guidance Information ......... 40
`iv.
`Hayashida’s Display ............................................................................................... 41
`
`of the ’498 Patent; and limitations [1(a)], [5(a)], and [6(a)] of the ’999 Patent: “a device for
`
`of the ’498 Patent and limitations [1(b)], [5(b)], and [6(b)] of the ’999 Patent: “a device for
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`Hayashida’s Navigation to a Destination—limitations [1(c)], [15(a)] and [18(a)]
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`[10(e)(iii)], [15(b)], and [18(b)] and claims 2, 3, 5, 11, 12, 13, 14, 17, of the ’317 Patent;
`limitations [1(d)(ii)], [5(d)(ii)], and [6(d)(ii)] and Claims 2, 3, and 4, of the ’999 Patent;
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`Patent; limitations [1(e)(i)] and [10(e)(i)], and claims 2, 5, 11, 14, and 17 of the ’317 Patent;
`
`and claims 12 and 17 of the ’317 Patent; limitations [1(d)(i)], [5(d)(i)], and [6(d)(i)], and
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`Patent; claim 4 of the ’999 Patent; and limitations [1(c)(i)] and [10(e)(i)] of the ’498 Patent
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`11 of the ’317 Patent; claim 2 of the ’999 Patent; and limitation [1(c)(i)] of the ’498 Patent
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`a. Hayashida’s Display in a Pedestrian Navigation Device—limitations [1(e)(iii)],
`and limitations [1(c)(ii)], [5(c)(ii)], and [10(e)(ii)] of the ’498 Patent ............................. 41
`b. Hayashida’s Route Display—limitations [1(c)(i)], [5(c)(i)], and [10(e)(i)] of the ’498
`and limitations [1(d)(i)], [5(d)(i)], and [6(d)(i)] of the ’999 Patent .................................. 43
`c. Hayashida’s Symbol Display—limitations [1(e)(i)], [10(e)(i)], [15(b)], and [18(b)]
`claim 3 of the ’999 Patent; and limitations [1(c)(i)] and [10(e)(i)] of the ’498 Patent ..... 45
`d. Claims 3 and 13 of the ’317 Patent; and Claim 2 of the ’999 Patent: Denoting Distance
`with a Number ................................................................................................................... 48
`e. Hayashida Displays Routes as Arrows—limitations [15(b)] and [18(b)] of the ’317
`49
`f. Hayashida’s Head Up Display—limitations [1(e)(i)] and [10(e)(i)] and claims 2 and
`50
`g. Modifying Hayashida’s Route Display—limitation [1(c)(i)] of the ’498 Patent; and
`claims 5 and 14 of the ’317 Patent .................................................................................... 52
`h. Hayashida’s Simple Figure Display—limitations [1(e)(i)] and [10(e)(i)] of the ’317
`53
`E. Hayashida in View of Ikeda ............................................................................................. 54
`Overview of Ikeda ................................................................................................... 54
`i.
`ii.
`Hayashida in View of Ikeda—claims 3 and 7 of the ’498 Patent ........................ 55
`F. Hayashida in View of Abowd ........................................................................................... 56
`Overview of Abowd ................................................................................................. 56
`i.
`ii.
`Reasons to Combine Hayashida and Abowd ........................................................ 58
`iii.
`Position Determination in Hayashida as modified by Abowd ............................ 60
`a. Limitations [1(e)(i)] and [10(e)(i)] of the ’317 Patent; limitations [1(c)(i)], [5(c)(i)],
`Patent: “a device for getting location information…” ...................................................... 60
`b. Limitations [1(e)(i)] and [10(e)(i)] of the ’317 Patent; limitations [1(c)(i)], [5(c)(i)],
`Patent: “a device for getting direction information…” ..................................................... 62
`c. Claims 3, 7, 11, and 13 of the ’498 Patent: getting portable terminal display orientation
`or getting information in a direction pointed by the tip of said portable terminal ............ 64
`d. Limitations [4(a)], [9(a)], and [10(c)] of the ’498 Patent: Determining User’s Location
`According to Location Information and Direction Information ....................................... 66
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`Patent; claim 4 of the ’999 Patent; and limitations [1(c)(i)] and [10(e)(i)] of the ’498 Patent
`
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`and [10(e)(i)] of the ’498 Patent; and limitations [1(d)(i)], [5(d)(i)], and [6(d)(i)] of the ’999
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`and [10(e)(i)] of the ’498 Patent; and limitations [1(d)(i)], [5(d)(i)], and [6(d)(i)] of the ’999
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`Patent; and limitations [4(b)], [9(b)], and [10(d)] of the ’498 Patent: Navigation to Another
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`
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`Navigation to Desired Destination in Hayashida as modified by Abowd .......... 66
`iv.
`a. Limitations [10(c)] of the ’317 Patent; limitations [1(c)], [5(c)], and [6(c)] of the ’999
`Portable Terminal .............................................................................................................. 66
`b. Limitations [15(a)] and [18(a)] of the ’317 Patent: “a device for retrieving a route…”
`68
`c. Claim 8 of the ’498 Patent: Retrieving Neighborhood Guidance Information ......... 70
`v.
`[5(d)(i)], [5(d)(ii)], [6(d)(i)], [6(d)(ii)], and claims 2 and 4 of the ’999 Patent .................... 71
`G. Hayashida in View of Abowd in further view of Ikeda—claims 3, 7, 11, and 13 of the ’498
`Patent ......................................................................................................................................... 75
`V. Opinions Concerning Claim Constructions ................................................ 78
`VI. Conclusion ...................................................................................................... 79
`
`Displaying Navigation Information in Hayashida as modified by Abowd—
`limitations [1(e)(i)], [1(e)(ii)], [1(e)(ii)], [10(e)(i)], [10(e)(ii)], and [10(e)(iii), and claims 2,
`3, 5, 11, 12, 13, 14, [15(b)], 17, and [18(b)] of the ’317 Patent; limitations [1(c)(i)], [1(c)(ii)],
`[5(c)(i)], [5(c)(ii)], [10(e)(i)], [10(e)(ii)] of the ’498 Patent; and claims [1(d)(i)], [1(d)(ii)],
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`
`I, Dr. Michael D. Kotzin, hereby declare the following:
`
`I.
`
`INTRODUCTION
`1. My name is Michael D. Kotzin.
`
`2.
`
`I am making this declaration at the request of Apple Inc. in the matter
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`of the Inter Partes Review of U.S. Patent No. 6,748,317 (the “’317 Patent”), U.S.
`
`No. 6,430,498 (the “’498 Patent”), and U.S. No. 6,580,999 (“’999 Patent”)
`
`(collectively the “Challenged Patents”) each of which issued to Maruyama et al.1
`
`3.
`
`I am being compensated for my work in this matter at the rate of
`
`$300/hour. My compensation in no way depends upon the outcome of this
`
`proceeding.
`
`4. As part of my work and in forming my opinions in connection with this
`
`proceeding, I have reviewed the following materials, each of which I believe experts
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`in my field would reasonably rely upon in forming opinions regarding the subject
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`matter of this proceeding:
`
`• U.S. Patent No. 6,430,498 (the “’498 Patent”) (Ex. 1001)
`• File History for U.S. Patent 6,430,498 (the “’498 Patent File History) (Ex.
`1002);
`• U.S. Patent 6,067,502 to Hayashida et al. (“Hayashida”) (Ex. 1004);
`• Cyberguide: A Mobile Context-Aware Tour Guide by Abowd et al.
`(“Abowd”) (Ex. 1005);
`• JPH09-311625 to Ikeda (Ex. 1006)
`• English Translation of Ikeda (“Ikeda”) (Ex. 1007)
`• CV of Michael D. Kotzin (Ex. 1008)
`
`1 Appendix A of this Declaration includes a roadmap for each patent showing which
`paragraphs discuss each limitation
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`
`• Munford Declaration (Ex. 1009)
`• Maxell Ltd. v. Apple Inc, 5:19-cv-00036, No. 1 (E.D. Tex. Mar. 15, 2019)
`(“Maxell Complaint”) (Ex. 1010)
`• Maxell Ltd. v. Apple Inc, 5:19-cv-00036, No. 99 (E.D.Tex. Nov. 16, 2019)
`(“Joint Claim Construction Statement and Prehearing Statement”) (Ex.
`1011)
`• Maxell Ltd. v. Apple Inc, 5:19-cv-00036, No. 136 (E.D.Tex. Nov. 18,
`2019) (“Opening Claim Construction Brief”) (Ex. 1012)
`• ZTE Corporation et al. v. Maxell, Ltd., IPR2018-00235, Paper 9 (Ex. 1013)
`• ASUSTeK Computer Inc. et al., v. Maxell, Ltd., IPR2019-00071, Paper 7
`(P.T.A.B. Mar. 14, 2019) (“the ’498 IPR”) (Ex. 1014)
`• Maxell, Ltd. v. ASUSTeK Computer Inc., et al., 3:18-cv-01788, No. 113-1
`(N.D. Cal. Aug. 27, 2018) (Ex. 1015)
`• Taubes, The Global Positioning System, The Role of Atomic Clocks,
`Beyond Discovery, National Academy of Science (1997) (“Taubes”) (Ex.
`1016)
`• A Brief History of Satellite Navigation, Stanford University News Service
`(June 13, 1995) (“A Brief History of Satellite Navigation”) (Ex. 1017)
`• Georgiadou et al., The Issue of Selective Availability (“Georgiadou”) (Ex.
`1018)
`• Thompson, Global Positioning System: The Mathematics of GPS
`Receivers, Mathematics Magazine (“Thompson”) (Ex. 1019)
`• U.S. Patent No. 5,589,835 to Gildea et al. (“Gildea”) (Ex. 1020)
`• USRE42,927 to Want et al. (“Want”) (Ex. 1021)
`• Tamura et al., Toward Realization of VICS – Vehicle Information and
`Communications System (1993) (“Tamura”) (Ex. 1022)
`• Intelligent Transportation Systems Benefits: 1999 Update, U.S.
`Department of Transportation (May 28, 1999) (“ITS Benefits”) (Ex. 1023)
`• Teruyuki, et al., Pedestrian Information and Communication Systems for
`Visually Impaired Persons, 2001 Conference Proceedings, available at
`http://www.csun.edu/~hfdss006/conf/2001/proceedings/0148ohkubo.htm
`(“Teruyuki”) (Ex. 1024)
`• JPH10-197277 to Maruyama et al. (Ex. 1025)
`• English translation of Maruyama (“Maruyama”) (Ex. 1026)
`• NavTalk Owner’s Manual and Reference Guide (Rev. A) (January 1999)
`(“Garmin NavTalk”) (Ex. 1027)
`• JPH07-280583 to Suzuki (Ex. 1028)
`• English Translation of Suzuki (“Suzuki”) (Ex. 1029)
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`• U.S. Patent No. 6,525,768 to Obradovich (“Obradovich”) (Ex. 1030)
`• U.S. Patent No. 5,781,150 to Norris (“Norris”) (Ex. 1031)
`• Trimble unveils GPS for small mobile devices, Digital Photography
`Review,
`(June
`22,
`2000),
`available
`at
`https://www.dpreview.com/articles/7140605260/trimblegps
`(“Digital
`Photography Review”) (Ex. 1032)
`• Trimble GPS Technology Enables Seiko Epson Communication Device
`and Wireless Data Service, Trimble News Release (November 8, 1999)
`(“Trimble News Release”) (Ex. 1033)
`• JPH08-285613 to Akiyama et al. (Ex. 1034)
`• English Translation of Akiyama (“Akiyama”) (Ex. 1035)
`• JPH05-264711 (Ex. 1036)
`• English Translation of the ’711 Patent (the “711 Patent”) (Ex. 1037)
`• “A Collaborative Wearable System with Remote Sensing” by Bauer et al.
`(“Bauer”) (Ex. 1038)
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a) The documents listed above,
`
`b) The relevant legal standards, including the standard for obviousness
`
`provided in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
`
`(2007), and
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`c) My knowledge and experience based upon my work in this area, as
`
`described below.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`6.
`I am a technical expert and do not offer any legal opinions. However, I
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`have been informed about certain legal principles regarding patentability and related
`
`matters under United States patent law, which I have applied in performing my
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`analysis and arriving at my technical opinions in this matter.
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`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`I received a B.S. in chemistry and a B.S. in electrical engineering from
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`7.
`
`the University of Illinois in 1975, an M.S. in electrical engineering from
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`Northwestern University in 1977, and a Ph.D. in electrical engineering and computer
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`science from Northwestern University in 1981. During my graduate study at
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`Northwestern (1975-1981), I performed research on communications and signal
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`processing. My research dissertation was titled “Short Range Communication Using
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`Diffusely Scattered Infrared Radiation.”
`
`8. My knowledge and experience to address the ’317, ’498 and ’999
`
`Patents arises from activities and projects I was involved with over my career at
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`Motorola. Specifically, I have been deeply involved in the technologies of location
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`and positioning, GPS, handheld devices and infrared communications.
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`9. With regard to location and positioning, I designed and built a
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`demonstration dead reckoning vehicle location system based on the use of a novel
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`solid state rate gyroscope. The successful results of this activity were published and
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`presented at an IEEE conference. The presentation included a video showing real-
`
`time map tracking of a vehicle in a Chicago suburb.
`
`10. Between 1989 and 1998, I was the Vice President of Technical Staff
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`and Director of Research and Advanced Technology in Motorola’s Cellular
`
`Infrastructure and Networks division. Between 1998 and 2007, I transitioned to the
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`Office of the Chief Technology Officer for Motorola’s Mobile Devices division. In
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`these roles, I provided leadership and strategic directions for the adoption and
`
`creation of new technology for cellular base station and handheld devices.
`
`11. Between 2006 and 2009, I was the Vice President of Technical Staff in
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`the Corporate Law Department of Motorola’s Patent Operations division. In this
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`role, I created technology portfolio strategy across businesses including quantitative
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`goals for new and retained intellectual property assets. I also managed processes and
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`corporate-wide teams related to creating and maintaining patent portfolios.
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`12. Since 2009, I have been the President of MDK Consulting, Inc., where
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`I regularly provide technical consulting services on all aspects of wireless systems,
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`products and technology.
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`13. Over the past several decades I have performed extensive research on
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`various aspects of systems, devices, and networks that acquire, store, process and
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`transmit information, including for the purposes of navigation. My research has
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`addressed software, algorithms, hardware, networking, protocols and other aspects
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`of these systems and devices, and has included work on wireless mobile devices and
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`systems, signal processing and communications, hardware design methodologies,
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`and cybersecurity. For example, in the 1970s and 1980s, I worked on technologies
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`that formed the basis and was essential to several new digital radio systems (cellular,
`
`public safety, and private mobile).
`
`14.
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`I am an inventor on approximately 133 issued U.S. patents and over
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`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`500 issued patents worldwide in areas including signal processing, provision of
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`navigation information, communications, GPS, and wireless systems. I have
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`published approximately 20 technical articles in peer-reviewed engineering journals
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`and conference proceedings.
`
`15. Since the availability of GPS, I have been involved in innovating
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`improvement techniques and applications utilizing its capabilities in radio
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`infrastructure and handsets. I was actively involved in investigating the inclusion of
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`positioning technologies in Motorola devices. Evidence of some of my relevant GPS
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`experience is apparent from an exemplary subset of US patents of which I am a
`
`named inventor:
`
`• Infrastructure transceiver and method for configuration based on location
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`information (US 5864764)
`
`• Method and apparatus for GPS time determination (US6323804)
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`• GPS enabled mobile stations and location methods therefor (US6427077)
`
`• Method and apparatus for location determination of a cellular telephone
`
`(US6438381)
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`• Method and device for choosing a system selection algorithm that is location
`
`dependent (US6954649)
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`• Emergency deployable GPS antenna (US7098855)
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`• Method and apparatus for storing a message for playback during a user-
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`
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`U.S. Patent 6,430,498
`initiated emergency telephone call from a wireless device (US8374574)
`
`16. My work in the use of infrared radiation for the purposes of
`
`communication is extensive. My Northwestern Ph.D. dissertation, entitled, Short
`
`Range Communications Using Diffusely Scattered Infrared Radiation, was based on
`
`independent research as well as activities performed at Motorola. As part of this
`
`investigation, I designed and built a demonstration
`
`infrared
`
`in-building
`
`communication system providing two full duplex channels of digitized speech.
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`Results were published and presented at an IEEE conference.
`
`17. Of my career in Motorola, more than 30 years were spent in research
`
`and product development groups innovating in areas related to private and public
`
`radio systems. Nearly 10 of those years was specifically dedicated to improvements
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`targeted to handheld cellular devices within the handset division.
`
`18.
`
`In addition to my professional experience, I have previously taught
`
`courses in electrical engineering at Northwestern University as an Adjunct
`
`Professor. I have also served as Chairman and member of numerous Motorola patent
`
`committees.
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`19. My curriculum vitae, attached to this declaration as Exhibit 1008, lists
`
`my publication record in archival journals, international conferences, and
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`workshops.
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`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`20. Based on my experience and education, I believe that I am qualified to
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`opine as to the knowledge and level of skill of one of ordinary skill in the art at the
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`time of the alleged invention of the Challenged Patents (which I further describe
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`below) and what such a person would have understood at that time, and the state of
`
`the art during that time.
`
`III. RELEVANT LEGAL STANDARDS
`
`A. Obviousness
`21.
`I have been asked to provide my opinions regarding whether the claims
`
`1-3, 5, 10-15, 17, and 18 of the ’317 Patent; claims 1, 3-5, 7-11, and 13 of the ’498
`
`Patent; and claims 1-6 of the ’999 Patent and (collectively, the “Challenged Claims”)
`
`would have been obvious to a person having ordinary skill in the art (“PHOSITA”)
`
`at the time of the alleged invention, in light of the prior art.
`
`22.
`
`I have been informed and understand that a patent claim is not
`
`patentable under 35 U.S.C. § 103 if the differences between the patent claim and the
`
`prior art are such that the claimed subject matter as a whole would have been obvious
`
`at the time the claimed invention was made to a person having ordinary skill in the
`
`art to which the subject matter pertains. Obviousness, as I have been informed, is
`
`based on the scope and content of the prior art, the differences between the prior art
`
`and the claim, the level of ordinary skill in the art, and, to the extent that they exist
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`and have an appropriate nexus to the claimed invention (as opposed to prior art
`
`features), secondary indicia of non-obviousness.
`
`23.
`
`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of a
`
`person of ordinary skill in the art at the time of the invention. As such, my opinions
`
`below as to a person of ordinary skill in the art are as of the time of the invention,
`
`even if not expressly stated as such; for example, even if stated in the present tense.
`
`24.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if
`
`any, of such differences on the obviousness or non-obviousness of the invention as
`
`a whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`25. An invention is obvious if a person of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the applicant. When there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, it would be obvious to a person of ordinary skill to try the
`
`known options. If a technique has been used to improve one device, and a person of
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`ordinary skill in the art would recognize that it would improve similar devices in the
`
`same way, using the technique would have been obvious.
`
`26.
`
`I have been informed that a precise teaching in the prior art directed to
`
`the subject matter of the claimed invention is not needed. I have been informed that
`
`one may take into account the inferences and creative steps that a person of ordinary
`
`skill in the art would have employed in reviewing the prior art at the time of the
`
`invention. For example, if the claimed invention combined elements known in the
`
`prior art and the combination yielded results that were predictable to a person of
`
`ordinary skill in the art at the time of the invention, then this evidence would make
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`it more likely that the claim was obvious. On the other hand, if the combination of
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`known elements yielded unexpected or unpredictable results, or if the prior art
`
`teaches away from combining the known elements, then this evidence would make
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`it more likely that the claim that successfully combined those elements was not
`
`obvious.
`
`27.
`
`I have been informed that hindsight must not be used when comparing
`
`the prior art to the invention for obviousness.
`
`28. Obviousness may also be shown by demonstrating that it would have
`
`been obvious to modify what is taught in a single piece of prior art to create the
`
`subject matter of the patent claim. Obviousness may be shown by showing that it
`
`would have been obvious to combine the teachings of more than one item of prior
`
`
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`art. In determining whether a piece of prior art could have been combined with other
`
`prior art or combined with or modified in view of other information within the
`
`knowledge of one of ordinary skill in the art, the following are examples of
`
`approaches and rationales that may be considered:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results;
`
`• Simple substitution of one known element for another to obtain predictable
`
`results;
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`• Use of a known technique to improve similar devices (methods, or products)
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`in the same way;
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`• Applying a known technique to a known device (method, or product) ready
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`for improvement to yield predictable results;
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`• Applying a technique or approach that would have been “obvious to try”
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`(choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success);
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`• Known work in one field of endeavor may prompt variations of it for use in
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`either the same field or a different one based on design incentives or other
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`market forces if the variations would have been predictable to one of ordinary
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`skill in the art; or
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`• Some teaching, suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior art reference or to combine prior art
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`reference teachings to arrive at the claimed invention.
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`29.
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`I have been informed that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) lack of independent simultaneous invention
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`within a comparatively short space of time; (h) teaching away from the invention in
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`the prior art. I have been informed and further understand that secondary
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`considerations evidence is only relevant if the offering party establishes a
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`connection, or nexus, between the evidence and the claimed invention. The nexus
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`cannot be to prior art features. The establishment of a nexus is a question of fact.
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
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`B. Claim Construction
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`30.
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`I have been informed by counsel that the first step in an unpatentability
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`analysis involves construing the claims, as necessary, to determine their scope.
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`Second, the construed claim language is then compared to the disclosures of the prior
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`art. I am informed that claims are generally given their ordinary and customary
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`meaning as understood by one of ordinary skill in the art at the time of the invention,
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`in light of the patent specification. For purposes of this proceeding, with the below
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`noted exceptions, I have applied the plain and ordinary meaning of all remaining
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`claim terms.
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`31.
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`I have been informed that a special claim construction analysis is
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`applied to claim limitations drafted in means-plus-function format pursuant to 35
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`U.S.C. § 112, ¶ 6. When construing a means-plus-function limitation, I understand
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`that the claimed function must first be identified and then the corresponding structure
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`that actually performs the claimed function must be identified from the specification.
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`A means-plus-function claim term is limited to the disclosed structures and
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`equivalents.
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`32.
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`I have been informed that where the disclosed structure for a means-
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`plus-function limitation is a computer, or microprocessor, programmed to carry out
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`an algorithm, the corresponding structure is not the general purpose computer or
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`processor, but rather is a special purpose computer or processor programmed to
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`perform the disclosed algorithm. In other words, I understand the disclosed
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`algorithm is part of the corresponding structure for computer-implemented means-
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`plus-function limitations.
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`33.
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`I have been informed that where a patent specification fails to
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`adequately disclose corresponding structure for a means-plus-function claim
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`limitation, that claim is invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2. But I
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`also understand that indefiniteness may not be challenged in an Inter Partes Review.
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`Accordingly, though it is my opinion that certain means-plus-function claim
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`limitations in the Challenged Claims of the Challenged Patents may not have
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`sufficiently described corresponding structure, I have assumed they are definite and
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`have assessed their validity based on the structure actually disclosed.
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`34.
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`I have reviewed the proposed claim constructions in Section III(D) of
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`the Petition and have applied these constructions in my analyses herein.
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`IV. OPINION
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`A. Level of Skill of a Person Having Ordinary Skill in the Art
`35.
`I am familiar with the knowledge and capabilities of persons of ordinary
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`skill in portable navigation systems in the period around July 1999, the earliest
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`claimed priority date for each of the Challenged Patents. I base this on my experience
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`with personal navigation systems.
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`IPR2020-00408 Kotzin Declaration
`U.S. Patent 6,430,498
`36. The level of ordinary skill in the art that one would need in order to
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`have the capability of understanding the scientific and engineering principles
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`applicable to the Challenged Patent is (i) a Bachelor degree (or higher degree) in an
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`academic area emphasizing electrical engineering or computer engineering or
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`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
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`additional formal education may offset lesser levels of industry experience.
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`B. Overview of the Challenged Patents
`37. This overview is not meant to describe my full understanding of the
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`Challenged Patents, but is only used to generally describe the relevant functionalities
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`of the Challenged Patents. For the purposes of this summary, I cite to the relevant
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`cites of the ’317 Patent, which has an identical specification to the remaining
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`Challenged Patents.
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`38. The Challenged Patents generally describes a portable navigation
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`device for pedestrian use. ’317 Patent (Ex. 1001), 1:16–18. The portable navigation
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`device obtains terminal information, which includes location information and
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`direction information. Id. at 2:62–65. Location information, which is represented by
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`a latitude/longitude or coordinates and an altitude is measured through the use of a