UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-00235
`Patent 6,748,317 B2
`____________
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`IPR2020-00408
`Apple EX1013 Page 1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-00235
`Patent 6,748,317 B2
`____________
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`IPR2020-00408
`Apple EX1013 Page 1
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`
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`I. INTRODUCTION
`ZTE Corporation and ZTE (USA) Inc. (collectively, “Petitioner”)
`filed a Petition for inter partes review of claims 1–3, 6–8, 10, 15–17, and 20
`of U.S. Patent No. 6,748,317 B2 (Ex. 1001, “the ’317 patent”). Paper 1
`(“Pet.”). Maxell, Ltd. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`authorizes institution when “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.”
`For the reasons explained below, we decline to institute an inter
`partes review of the challenged claims of the ’317 patent.
`
`A. Related Matters
`The parties indicate that the ’317 patent has been asserted against
`Petitioner in the following district court action, filed on November 18, 2016:
`Maxell, Ltd. v. ZTE Corp., Case No. 5:16-cv-00179-RWS (E.D. Tex.) (“the
`district court litigation”). Pet. 1; Paper 5, 1 (Patent Owner’s Mandatory
`Notices).
`
`B. 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
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`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 obtains
`location information and direction information of the terminal (i.e., the
`direction of the tip of the terminal). Id. at Abstract, 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 Abstract, 3:5–
`42. In addition, the portable terminal displays the direction of a destination
`with an indicating arrow that always points in the direction of the
`destination. Id. at Abstract, Fig. 1.
`
`C. Illustrative Claims
`Claims 1, 6, and 10 are independent and 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
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`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.
`6. 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 connected to a server; and
`a display,
`wherein
`said device connected to said server outputting
`said location information and said direction information
`and receiving retrieved information based on said
`outputted information at said server, and
`said display displays said retrieved information.
`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
`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,
`
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`and said display changes according to a change of said
`direction of said portable terminal orientation for walking
`navigation.
`Ex. 1001, 10:42–57, 11:6–21, 11:34–51 (formatting modified).
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–3, 6–8, 10, 15–17, and 20 are
`unpatentable on the following grounds of unpatentability (Pet. 9–10):
`
`Reference(s)
`
`Norris1
`
`Norris
`
`Norris and Lauro3
`
`Norris and Colley4
`
`Norris, Lauro, and Colley
`
`Nojima5
`
`Nojima
`
`Basis
`§ 103(a)2
`
`§ 102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 102(b)
`
`Challenged Claims
`1–3, 10, 15, and 16
`
`1–3, 10, 15, and 16
`
`1–3, 10, 15, and 16
`
`17 and 20
`
`17 and 20
`
`6–8
`
`6–8
`
`1 U.S. Patent No. 5,781,150, issued July 14, 1998 (Ex. 1005, “Norris”).
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’317 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA version of §§ 102 and
`103.
`3 U.S. Patent No. 5,173,709, issued Dec. 22, 1992 (Ex. 1006, “Lauro”).
`4 U.S. Patent No. 5,592,382, issued Jan. 7, 1997 (Ex. 1007, “Colley”).
`5 Japanese Patent Application Publication No. H10-232992, published
`Sept. 2, 1998 (Ex. 1008, “Nojima”).
`
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`Behr6 and Bertrand7
`
`Ohmura8 and Colley
`
`
`§ 103(a)
`
`§ 103(a)
`
`6–8
`
`1–3, 15–17, and 20
`
`II. DISCUSSION
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A claim term that invokes § 112, sixth paragraph is “construed to
`cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.9 Construction
`under § 112, sixth paragraph involves two steps: (1) identifying the claimed
`function, and (2) determining what structure, if any, disclosed in the
`
`6 U.S. Patent No. 5,543,789, issued Aug. 6, 1996 (Ex. 1009, “Behr”).
`7 U.S. Patent No. 5,552,989, issued Sept. 3, 1996 (Ex. 1010, “Bertrand”).
`8 U.S. Patent No. 6,125,326, filed Sept. 19, 1997, issued Sept. 26, 2000
`(Ex. 1011, “Ohmura”).
`9 The AIA re-designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C.
`§ 112(f). Because the ’317 patent has an effective filing date before the
`effective date of the applicable AIA amendment, we refer to § 112, sixth
`paragraph in this decision.
`
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`specification corresponds to the claimed function. IPCom GmbH & Co. v.
`HTC Corp., 861 F.3d 1362, 1370 (Fed. Cir. 2017).
`A petition for inter partes review must identify how the challenged
`claims are to be construed. 37 C.F.R. § 42.104(b)(3). For claims with
`limitations that invoke § 112, sixth paragraph, our rules require the
`following specific construction: “Where the claim to be construed contains
`a means-plus-function or step-plus-function limitation as permitted under
`35 U.S.C. 112(f), the construction of the claim must identify the specific
`portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function.” Id.
`Petitioner proposes constructions for several claim terms and phrases,
`including “portable terminal” (claims 1, 6, and 10), “inputting a destination”
`(claim 1), “said display changes according to a change of said direction of
`said portable terminal orientation for walking navigation” (claims 1 and 10),
`and “connected to a server” (claim 6). Pet. 10–13. Petitioner’s other
`proposed constructions involve clarifying the antecedent basis for certain
`claim language. Id. at 13–14. For any terms not specifically construed,
`Petitioner asserts “they do not require specific construction and should be
`interpreted according to their ordinary and customary meaning, as would
`have been understood by a [person having ordinary skill in the art] at the
`time of the invention.” Id. at 10.
`Patent Owner faults Petitioner for failing to provide a construction for
`“said device connected to said server outputting said location information
`and said direction information and receiving retrieved information based on
`said outputted information at said server,” recited in independent claim 6.
`Prelim. Resp. 11–12. As Patent Owner explains, the parties disputed the
`
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`construction of this limitation in the district court litigation. Id. at 11 (citing
`Ex. 2005, 36 (Defendants’ Claim Construction Brief)); see also Ex. 2002, 10
`(claim chart of disputed claim terms in the district court litigation). In that
`case, Petitioner argued the limitation was a means-plus-function limitation
`governed by 35 U.S.C. § 112, sixth paragraph. Ex. 2002, 10; Ex. 2005, 36;
`see Prelim. Resp. 11. Petitioner further argued claim 6 was invalid for
`indefiniteness under 35 U.S.C. § 112, second paragraph, because the written
`description of the ’317 patent did not disclose sufficient structure
`corresponding to the claimed functions. Ex. 2002, 10; Ex. 2005, 36.10
`Although Patent Owner initially proposed construing the limitation
`according to its plain and ordinary meaning in the district court litigation,
`Patent Owner agreed to a means-plus-function interpretation at the Markman
`hearing. Ex. 2004, 71 & n.6 (Claim Construction Memorandum and Order).
`The district court construed the limitation under § 112, sixth paragraph, but
`rejected Petitioner’s contention that the ’317 patent did not disclose
`sufficient corresponding structure. Id. at 71–74; see Prelim. Resp. 12.
`On the record before us, and for purposes of this decision, we agree
`that “said device connected to said server outputting said location
`information and said direction information and receiving retrieved
`information based on said outputted information at said server,” recited in
`claim 6, should be construed under § 112, sixth paragraph. The generic term
`“device” is a “nonce word” that can operate as a substitute for “means” in
`
`10 Dr. Scott Andrews, who is Petitioner’s declarant in this proceeding, also
`provided a declaration supporting Petitioner’s arguments in the district court
`litigation. Ex. 2003 ¶¶ 44–52 (Declaration of Scott Andrews in Support of
`Defendants’ Responsive Claim Construction Brief); see Prelim. Resp. 12.
`
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`the context of § 112, sixth paragraph. Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1350 (Fed. Cir. 2015) (en banc in relevant part) (“Generic terms
`such as . . . ‘device’ . . . that reflect nothing more than verbal constructs may
`be used in a claim in a manner that is tantamount to using the word ‘means’
`because they ‘typically do not connote sufficiently definite structure’ and
`therefore may invoke § 112, para. 6.” (citations omitted)). Although there is
`a rebuttable presumption that a claim term lacking the word “means” does
`not invoke § 112, sixth paragraph, the presumption may be overcome if “the
`claim term fails to ‘recite sufficiently definite structure’ or else recites
`‘function without reciting sufficient structure for performing that function.’”
`Id. at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
`2000)).
`In this case, we have not been directed to any evidence that a person
`of ordinary skill in the art would understand “device” as used in the
`limitation at issue to have a sufficiently definite meaning as the name for a
`structure. See id. Thus, on the present record, we determine that the
`presumption is overcome, and “said device connected to said server
`outputting said location information and said direction information and
`receiving retrieved information based on said outputted information at said
`server” invokes § 112, sixth paragraph. Moreover, because Petitioner does
`not provide a construction for this limitation, much less one that identifies
`specific portions of the specification that describe the structure
`corresponding to the claimed functions, we agree with Patent Owner that the
`Petition fails to satisfy the specific claim construction requirement in
`37 C.F.R. § 42.104(b)(3) for limitations subject to § 112, sixth paragraph.
`Petitioner’s violation of § 42.104(b)(3) is particularly evident given that
`
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`Petitioner sought § 112, sixth paragraph, treatment for the very same
`limitation in the district court litigation. See Ex. 2002, 10; Ex. 2005, 36.
`Although Patent Owner’s argument focuses on a particular limitation
`in claim 6, all of the independent claims contain other “device” limitations
`that appear to invoke § 112, sixth paragraph. For example, claim 1 recites “a
`device for getting location information denoting a [p]resent place of said
`portable terminal” and “a device for getting a direction information denoting
`an orientation of said portable terminal.” Ex. 1001, 10:45–48. Claims 6
`and 10 recite virtually identical limitations. Id. at 11:7–10, 11:36–39. The
`district court did not construe these limitations. See generally Ex. 2004.
`Nevertheless, based on the present record, we determine for purposes of this
`decision that these two limitations should be construed under § 112, sixth
`paragraph, for reasons similar to those discussed above.
`The Petition does not provide a construction for either of these
`limitations. Because these limitations are recited in every independent claim
`of the ’317 patent, Petitioner has failed to meet the specific claim
`construction requirement set forth in 37 C.F.R. § 42.104(b)(3) for every
`claim challenged in the Petition. We note that although the Petition does not
`propose constructions for these “device” limitations, the declaration of
`Dr. Andrews submitted in support of the Petition contemplates the
`possibility that these limitations are governed by § 112, sixth paragraph.
`See, e.g., Ex. 1002 ¶¶ 166 (“In the event that the Board determines this
`limitation is governed by 35 U.S.C. § 112(6), Norris discloses the function
`of getting a location information of the portable terminal . . . .”), 170 (“In the
`event that the Board determines this limitation is governed by 35 U.S.C.
`§ 112(6), Norris discloses the function of getting a direction or orientation
`
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`information of the portable terminal . . . .”). Dr. Andrews, however, does
`not identify specific portions of the ’317 patent disclosing structures
`corresponding to the recited functions; rather, he specifies structures in the
`asserted prior art that perform the recited functions. See, e.g., id. Thus, even
`if we were to consider Dr. Andrews’s references to § 112, sixth paragraph,
`notwithstanding the rule prohibiting incorporating arguments by reference
`from one document (i.e., Dr. Andrews’s declaration) into another (i.e., the
`Petition), see 37 C.F.R. § 42.6(a)(3), Petitioner still fails to provide the
`requisite claim construction analysis under 37 C.F.R. § 42.104(b)(3).
`For these reasons, Petitioner has not satisfied the claim construction
`requirement set forth in 37 C.F.R. § 42.104(b)(3) with respect to certain
`limitations in independent claims 1, 6, and 10. Based on this deficiency in
`the Petition, which affects all of the challenged claims, we deny institution
`of inter partes review.
`
`III. CONCLUSION
`After considering the evidence and arguments presented in the
`Petition and Preliminary Response, we determine the information presented
`does not demonstrate a reasonable likelihood that Petitioner would prevail in
`showing that at least one challenged claim of the ’317 patent is unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that the Petition is denied, and no inter partes review is
`
`instituted.
`
`
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`
`
`PETITIONER:
`Steven A. Moore
`Cheng (Jack) Ko
`Brian Nash
`Howard N. Wisnia
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`jack.ko@pillsburylaw.com
`brian.nash@pillsburylaw.com
`howard.wisnia@pillsburylaw.com
`
`PATENT OWNER:
`Robert G. Pluta
`James A. Fussell
`Saqib J. Siddiqui
`Amanda S. Bonner
`Bryan C. Nese
`Jamie B. Beaber
`MAYER BROWN, LLP
`rpluta@mayerbrown.com
`jfussell@mayerbrown.com
`ssiddiqui@mayerbrown.com
`asbonner@mayerbrown.com
`bnese@mayerbrown.com
`jbeaber@mayerbrown.com
`
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