`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`MAXELL, LTD.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00408
`U.S. Patent No. 6,430,498
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,430,498
`
`
`
`
`
`

`

`
`
`IPR2020-00408
`U.S. Patent No. 6,430,498
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. SUMMARY OF THE ’498 PATENT .......................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’498 PATENT .................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ’498 PATENT ..................... 3
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ............... 5
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ......................................................................................................... 5
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 5
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 5
`C. THE BOARD’S DISCRETION UNDER § 314(A).................................................. 7
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ..............................10
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’498 PATENT ARE
`UNPATENTABLE ......................................................................................15
`A. GROUND 1: HAYASHIDA IN VIEW OF THE KNOWLEDGE OF A PHOSITA RENDERS
`CLAIMS 1, 3, 5, AND 7-8 OBVIOUS .................................................................15
`B. GROUND 2: HAYASHIDA IN VIEW OF THE KNOWLEDGE OF A PHOSITA IN
`FURTHER VIEW OF IKEDA RENDERS CLAIMS 3 AND 7 OBVIOUS .......................38
`C. GROUND 3: HAYASHIDA AND ABOWD RENDER CLAIMS 1, 3-5, 7-11, AND 13
`OBVIOUS ......................................................................................................42
`D. GROUND 4: HAYASHIDA, ABOWD, AND IKEDA RENDER CLAIMS 3, 7, 11, AND 13
`OBVIOUS ......................................................................................................63
`V. CONCLUSION ............................................................................................66
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .....................67
`A. REAL PARTY-IN-INTEREST ...........................................................................67
`B. RELATED MATTERS .....................................................................................67
`C. LEAD AND BACK-UP COUNSEL ....................................................................67
`
`
`
`
`
`
`i
`
`

`

`I.
`
`INTRODUCTION
`
`IPR2020-00408
`U.S. Patent No. 6,430,498
`
`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
`
`of claims 1, 3-5, 7-11, and 13 (collectively, the “Challenged Claims”) of U.S. Patent
`
`No. 6,430,498 (“the ’498 Patent”). ’498 Patent (Ex. 1001).
`
`II.
`
`SUMMARY OF THE ’498 PATENT
`A. Description of the alleged invention of the ’498 Patent
`The ’498 Patent generally describes “a portable terminal provided with the
`
`function of walking navigation, which can supply location-related information to the
`
`walking user.” ’498 Patent (Ex. 1001), 1:10-13. According to the ’498 Patent,
`
`conventional navigation systems at the time of the invention were unsuitable for
`
`walking navigation because they were too large to be carried by a walking user,
`
`while maps provided by conventional map information services could not be
`
`displayed clearly on the small screens of portable telephones. Id. at 1:25-32; 1:40-
`
`46. The ’498 Patent purports to address these problems by providing a portable
`
`terminal that can “supply location information easier for the user to understand
`
`during walking.” Id. at 2:47-48.
`
`The ’498 Patent describes a “portable terminal . . . with the function of
`
`walking navigation [that] is provided with data communication, input, and display
`
`devices just like those of ordinary portable telephones and PHS [Personal
`
`Handyphone System] terminals, as well as a device for getting location information
`
`and a device for getting direction information denoting the user’s present place.” Id.
`
`
`
`1
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`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`at 2:56–62. Figure 10 of the ’498 Patent depicts the primary components of the
`
`described portable device:
`
`
`
`Id. at Fig. 10.
`
`The portable
`
`terminal obtains
`
`location
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`information and orientation
`
`information of the terminal from, for example, “device for getting location
`
`information” 77 and “device for getting direction information” 78 as depicted above.
`
`Id. at Abstract, 2:60-65, 9:28-51. Based on this information, the portable terminal
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`obtains and displays information such as route guidance for reaching a destination,
`
`which in some circumstances may be the location of another portable terminal. Id.
`
`at Abstract, 2:66-3:35; 8:33-36; Fig. 5. In one embodiment, the direction of a
`
`destination is indicated with an orientation of a line that always points in the
`
`
`
`2
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`

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`IPR2020-00408
`U.S. Patent No. 6,430,498
`direction of the destination. Id. at Abstract. Figure 1, below, illustrates this direction-
`
`indicating line that adjusts as the device is rotated:
`
`
`
`Id. at Fig. 1; see also id. at Figs 3(a) and 3(b) (showing other displays).
`
`Summary of the prosecution history of the ’498 Patent
`
`B.
`The Application that resulted in the ’498 Patent was filed on July 11, 2000 as
`
`US App. No. 09/613,634 and claims priority to Japanese Patent 11-197010, which
`
`was filed July 12, 1999. ’498 Patent (Ex. 1001). For purposes of this proceeding,
`
`Petitioner applies July 12, 1999 as the priority date for the Challenged Claims.
`
`On June 27, 2001, the Examiner rejected all claims of the application that
`
`resulted in the ’498 Patent under 35 U.S.C. Section 102(b) as anticipated by U.S.
`
`Patent No. 5,146,231 to Ghaem et al. (“Ghaem”). ’498 Patent File History (Ex.
`
`
`
`3
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`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`1002), 112-13. Applicant argued that Ghaem required a user to input present position
`
`and destination information and therefore did not include devices for obtaining
`
`location information and direction information. Id. at 125.
`
`The Examiner rejected all claims in a final rejection on November 19, 2001
`
`as obvious over Ghaem in view of U.S. Patent No. 6,124,826 to Garthwaite et al.
`
`(“Garthwaite”) under 35 U.S.C. Section 103. Id. at 136. Applicant then cancelled all
`
`claims, replacing them with a new set of 13 claims. Id. at 144. The new claims
`
`introduced limitations relating to the display of the guidance information, including
`
`“wherein a direction and a distance of a destination from said present place are
`
`denoted with an orientation and a length of a line that is distinguished between
`
`starting and ending points to supply route guidance information as said walking
`
`navigation information,” “wherein a local route around said present place is shown
`
`with a bent line and a direction of movement is shown with an arrow on said bent
`
`line to supply route guidance information as said walking navigation information”
`
`and “a full route from said starting point to said destination is shown with a bent line
`
`that is distinguished between starting and ending points and said present place is
`
`shown with a symbol on said line to supply said route guidance information as said
`
`walking navigation information.” Id. at 139-41, 143.
`
`A Notice of Allowability issued on March 13, 2002, noting the display
`
`limitations distinguished the new claims from prior art of record. Id. at 148-50.
`
`
`
`4
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`

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`IPR2020-00408
`U.S. Patent No. 6,430,498
`Level of skill of a person having ordinary skill in the art
`
`C.
`A person having ordinary skill in the art (PHOSITA) at the time of the ’498
`
`Patent would have been a person having (i) a Bachelor degree (or higher degree) in
`
`an academic area emphasizing electrical engineering or computer engineering or
`
`equivalent and (ii) at least one year of experience working in the field of location-
`
`or sensor-based human-computer interaction. Additional industry experience or
`
`technical training may offset less formal education, while advanced degrees or
`
`additional formal education may offset lesser levels of industry experience. Kotzin
`
`Decl. (Ex. 1003), ¶¶ 35-36.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’498 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of
`
`the ’498 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
`
`’498 Patent, (2) Petitioner has not filed a civil action challenging the validity of any
`
`claim of the ’498 Patent, and (3) this Petition is filed less than one year after the
`
`Petitioner was served with a complaint alleging infringement of the ’498 Patent.
`
`B.
`
`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
`
`In view of the prior art and evidence presented, claims 1, 3-5, 7-11, and 13 of
`
`the ’498 Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`
`
`5
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`Further, based on the prior art references identified below, IPR of the Challenged
`
`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1, 3, 5, 7, and 8 are obvious under § 103(a) over
`U.S. Patent No. 6,067,502 to Hayashida et al. (“Hayashida”) in
`view of the knowledge of a person of ordinary skill in the art
`(“PHOSITA”).
`Ground 2: Claims 3 and 7 are obvious under § 103(a) over U.S.
`Patent No. 6,067,502 to Hayashida et al. (“Hayashida”) in view of
`the knowledge of a person of ordinary skill in the art (“PHOSITA”)
`in further view of JPH09-311625 to Ikeda.
`Ground 3: Claims 1, 3-5, 7-11, and 13 are obvious under § 103(a)
`over U.S. Patent No. 6,067,502 to Hayashida et al. (“Hayashida”)
`in view of Cyberguide: A Mobile Context-Aware Tour Guide by
`Abowd et al. (“Abowd”).
`Ground 4: Claims 3, 7, 11, and 13 are obvious under § 103(a) over
`Hayashida in view of Abowd in further view of JPH09-311625.
`
`Exhibits
`
`EX1004,
`
`
`EX1004,
`EX1007
`
`EX1004,
`EX1005
`
`EX1004,
`EX1005,
`EX1007
`
`Section IV identifies where each element of the Challenged Claims is found
`
`
`
`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the relevance
`
`of the evidence to the challenges raised are provided in Section IV. 37 C.F.R.
`
`§ 42.104(b)(5). Exhibits EX1001–EX1041 are also attached.
`
`
`
`6
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`

`

`C.
`
`IPR2020-00408
`U.S. Patent No. 6,430,498
`
`The Board’s Discretion Under § 314(a)
`i.
`An IPR was previously filed by another, unrelated petitioner challenging
`
`The General Plastic Factors
`
`claims 1-13 of the ’498 Patent. ASUSTeK Computer Inc. et al. v. Maxell, Ltd.,
`
`IPR2019-00071, Paper 7 at 2 (PTAB Mar. 14, 2019) (“the ’498 IPR”) (Ex. 1014).
`
`The Board declined to institute because Petitioner failed to identify sufficient
`
`corresponding structure in certain limitations governed by 35 U.S.C. § 112 ¶ 6. Id.
`
`at 11. Applying the General Plastic factors weighs in favor of institution of the
`
`present IPR. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper 19) (precedential as to § II.B.4.i).
`
`Factor 1: Petitioner has not previously filed a petition against the ’498 Patent.
`
`Patent Owner asserted the ’498 Patent against ASUSTeK in a lawsuit filed March
`
`22, 2019. The ’498 IPR, Paper 7 at 2. In a separate lawsuit filed nearly 1 year later
`
`on March 15, 2019, Patent Owner asserted the ’498 Patent against Petitioner. Maxell,
`
`Ltd. v. Apple Inc., 5:19-cv-00036, No. 1 (E.D. Tex. March 15, 2019) (“Maxell
`
`Complaint”) (Ex. 1010). There is no relationship between ASUSTeK and Petitioner
`
`with respect to the Challenged Patent or Patent Owner. Therefore, factor 1 favors
`
`institution.
`
`Factor 2: The references in the grounds of unpatentability in the present IPR
`
`(Hayashida, Abowd, and Ikeda) were located by Petitioner’s counsel since the March
`
`
`
`7
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`15, 2019, filing of the Maxell v. Apple litigation. Therefore, factor 2 favors
`
`institution.
`
`Factor 3: A preliminary response and an institution decision were issued in
`
`the ’498 IPR prior to the filing of the present Petition. Therefore, factor 3 weighs
`
`against institution.
`
`Factor 4: Petitioner and its counsel commenced prior-art searches no earlier
`
`than approximately May 2019 and continued to perform prior art searching as late
`
`as August/September 2019. The references applied in this IPR were located in the
`
`May-September timeframe. Petitioner then immediately proceeded to preparing the
`
`present IPR along with IPR petitions directed to the nine other patents asserted in
`
`the litigation by Patent Owner, which the Board can appreciate takes significant time
`
`to prepare. There has been no delay between the time of locating the presently-
`
`applied base references and filing of this IPR. Therefore, factor 4 favors institution.
`
`Factor 5: Petitioner was not sued by Patent Owner until March 15, 2019,
`
`nearly 1 year after ASUSTeK was sued. With respect to the timing of filing of this
`
`IPR from when Petitioner was sued, Petitioner has been diligently engaged,
`
`searching for prior art and preparing this IPR petition. Therefore, factor 5 favors
`
`institution.
`
`Factors 6 and 7: The Board’s finite resources will not be adversely affected
`
`by this IPR. The ’498 IPR involved different prior art references, so the Board will
`
`
`
`8
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`

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`IPR2020-00408
`U.S. Patent No. 6,430,498
`not be repeating work or engaging in duplicative efforts. These factors also favor
`
`institution.
`
`Because the majority of the General Plastic factors favor institution,
`
`Petitioner respectfully requests the Board not exercise its discretion under § 314(a)
`
`to deny this Petition.
`
`Petitioner Has Not Delayed in Filing This Petition
`
`ii.
`While there is a parallel district court proceeding involving the ’498 patent,
`
`no preliminary injunction motion has been filed, the district court has not been
`
`presented with or invested any time in the analysis of prior art invalidity issues, and
`
`no Markman hearing has been held. (Ex. 1041, Maxell v. Apple Docket Control
`
`Order). Apple also timely filed its petition within the statutorily prescribed 1-year
`
`window. Declining to institute IPR here in view of the co-pending district court
`
`litigation would essentially render nugatory the 1-year filing period of § 315(b).
`
`Notably, § 315(b) originally contained only a 6-month filing window which was
`
`amended to 1-year prior to passage of the America Invents Act to “afford defendants
`
`a reasonable opportunity to identify and understand the patent claims that are
`
`relevant to the litigation” before having to file an IPR petition. 157 Cong. Rec. S5429
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Kyl). Moreover, making the status of the
`
`district court litigation a threshold consideration before institution also ignores the
`
`common scenario, contemplated by Congress, of obtaining a district court stay based
`
`
`
`9
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`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`on institution. Cf. 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Chuck Schumer); H. Rep. No. 112-98, Part I, at 48 (2011). For these reasons, and
`
`those explained below, the instant petition should be instituted.
`
`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`
`In this proceeding, claims are interpreted under the same standard applied by
`
`Article III courts (i.e., the Phillips standard). See 37 C.F.R. § 42.100(b); see also 83
`
`Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`
`Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
`
`meaning, which is the meaning understood by a person of ordinary skill in the art in
`
`view of the patent and file history. Phillips, 415 F.3d 1303, 1312-13. Dictionaries or
`
`other extrinsic sources may assist in determining the plain and ordinary meaning but
`
`cannot override a meaning that is unambiguous from the intrinsic evidence. Id.
`
`Certain Challenged Claims recite the generic term “device” for performing a
`
`specific function. Because “device” is a “nonce word” that can operate as a substitute
`
`for “means,” the claim construction principles of 35 U.S.C. § 112, ¶ 6 (“112-6”)
`
`must be applied to these limitations. Williamson v. Citrix Online, LLC, 792 F.3d
`
`1339, 1350 (Fed. Cir. 2015) (“[N]once words that reflect nothing more than verbal
`
`constructs may be used in a claim in a manner that is tantamount to using the word
`
`‘means’ because they typically do not connote sufficiently definite structure and
`
`therefore may invoke § 112, para. 6.”) (internal quotations omitted). Corresponding
`
`
`
`10
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`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`structure for each 112-6 limitation is identified below, and Petitioner proposes that
`
`the claimed functions recited in each of these limitations be given its plain and
`
`ordinary meaning that the term would have to one of ordinary skill in the art.
`
`A number of terms in Challenged Claims have previously been construed by
`
`the Board as well as district court, and Patent Owner and Petitioner have submitted
`
`claim construction briefing in parallel district court litigation. Maxell Ltd. v. Apple
`
`Inc, 5:19-cv-00036, No. 99 (“Joint Claim Construction and Prehearing Statement”)
`
`(Ex. 1011) and No. 136 (“Opening Claim Construction Brief”) (Ex. 1012) (E.D.Tex.
`
`Nov. 18, 2019). Petitioner identifies below relevant citations to these prior and
`
`ongoing claim construction undertakings.
`
`1.
`
` “a device for getting location information denoting a present
`place of said portable terminal”
`
`Claims 1, 6, and 10 recite “a device for getting location information denoting
`
`a present place of said portable terminal.” ’498 Patent (Ex. 1001), 10:32-33; 10:62-
`
`63; 11:30-31. A prior Board ruled that this limitation is governed by 112-61 and
`
`found the corresponding structure is “(1) a wireless or cellular antenna, or a GPS, or
`
`a Personal Handyphone System [PHS]; and (2) an infrared ray sensor; and (3) a
`
`
`1 Petitioner notes that a separate Board also found the limitation is governed by 112-
`6 with respect to related U.S. Patent No. 6,748,317 (the “’317 Patent”) (Ex. 1040),
`and declined to institute because the petitioner failed to identify corresponding
`structure ZTE Corporation et al. v. Maxell, Ltd., IPR2018-00235, Paper 9 at 10.
`
`
`
`11
`
`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`control unit for analyzing received data, with the control unit calculating location
`
`information as disclosed in the ’498 Patent at 5:48-56, and Fig. 2.” ASUSTeK
`
`Computer Inc. et al. v. Maxell, Ltd., IPR2019-00071, Paper 7 (Ex. 1014), at 7-9. The
`
`Board expressly noted in that proceeding that “Patent Owner does not dispute this
`
`construction.” Id. at 9. Patent Owner’s concession made during this prior IPR
`
`proceeding should be relied on to support a finding of prosecution disclaimer during
`
`claim construction. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed.
`
`Cir. 2017). Patent Owner should not be allowed to argue claims in one way in order
`
`to maintain their patentability and in a different way against accused infringers in
`
`subsequent proceedings. Id.
`
`For a number of reasons, Petitioner proposes the Board adopt the same
`
`construction in this proceeding. First, the proposed structure aligns with the intrinsic
`
`record, which teaches three distinct components for getting location information—a
`
`wireless receiver (e.g., wireless or cellular antenna, GPS, or PHS), an infrared ray
`
`sensor, and a control unit for analyzing received data to determine location
`
`information. See, e.g., ’498 Patent (Ex. 1001) at 4:9-11 (“For example, such a
`
`wireless antenna as a GPS, a PHS, etc., as well as an infrared ray sensor is used to
`
`measure location information.”); 9:39-44 (“The device for getting location
`
`information 77 is provided with [1] such a wireless antenna, a GPS, a PHS, or the
`
`like; [2] such a data receiver as an infrared ray sensor, or the like; and [3] a control
`
`
`
`12
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`unit for analyzing received data, thereby calculating location information.”)
`
`(emphases added).
`
`Second, a PHOSITA would have understood that infrared beacons were a
`
`common solution for navigation systems generally as well as for walking navigation
`
`systems. A PHOSITA would have recognized that navigation systems at the time of
`
`the ’498 Patent often used infrared beacons to correct GPS positions. Kotzin Decl.
`
`at ¶¶ 43-45, 127-128 (discussing the need for corrective information due to Selective
`
`Availability of GPS signals). And a PHOSITA would also have recognized that
`
`walking navigation systems often demanded location information indoors where
`
`traditional location technology such as GPS is not available. Id. at ¶¶ 45, 128. The
`
`goal of ’498 Patent is to provide location and navigation information, specifically to
`
`a walking user. ’498 Patent (Ex. 1001), 1:11-13. Although satellite positioning
`
`technology such as GPS was well-established for determining a location outdoors,
`
`it was known at the time of the ’498 Patent that these technologies were not suitable
`
`for determining a location when indoors. Kotzin Decl. (Ex. 1003), ¶¶ 45, 128
`
`(discussing known ineffectiveness of GPS when indoors). A PHOSITA would have
`
`further known at the time of the ’498 Patent that infrared beacons were a solution to
`
`provide location information indoors. Id. at ¶¶ 45, 128.
`
`Because Patent Owner did not dispute the proposed construction in a prior
`
`proceeding, the intrinsic record supports this prior construction, and the construction
`
`
`
`13
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`

`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`is consistent with the known limitations of satellite-based positioning at the time of
`
`the ’498 Patent, this prior construction should be adopted here. 2
`
`2.
`
`“a device for getting direction information denoting an
`orientation of said portable terminal”
`
`Claims 1, 5, and 10 recite “a device for getting [a] direction information
`
`denoting an orientation of said portable terminal.” ’498 Patent (Ex. 1001), 10:34-
`
`35; 10:64-65; 12:1-2. As with the first term, a prior Board found that this limitation
`
`is governed by 112-6 with respect to related U.S. Patent No. 6,748,317. ZTE
`
`Corporation et al. v. Maxell, Ltd., IPR2018-00235, Paper 9 (Ex. 1013), at 10. And
`
`both Petitioner and Patent Owner agree in current parallel litigation that this term
`
`should in fact be construed pursuant to 112-6. Joint Claim Construction and
`
`Prehearing Statement, (Ex. 1011), 2, Opening Claim Construction Brief (Ex. 1012),
`
`26.
`
`Further, both Petitioner and Patent Owner agree that the corresponding
`
`structure is “a compass, a gyroscope, and/or sensor such as a clinometer in
`
`conjunction with a CPU, or equivalents thereof.” (Joint Claim Construction and
`
`Prehearing Statement (Ex. 1011), 2), which is the express definition set forth in the
`
`
`2 Petitioner notes that to the extent the Board adopts the construction put forth by
`Patent Owner in district court litigation, the structures identified by Petitioner in the
`prior art satisfy this construction.
`
`
`
`14
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`

`IPR2020-00408
`U.S. Patent No. 6,430,498
`’498 Patent. Namely, the ’498 Patent expressly defines the structure of the devices
`
`as follows:
`
`The device for getting direction information 78 is provided with a
`compass, a gyro, such a sensor as a clinometer, and a control unit for
`analyzing sensor-measured data,
`thereby calculating direction
`information.
`’498 Patent (Ex. 1001), 9:48-51. The specification further provides that the CPU
`
`performs analysis of sensor-measured data to get direction information. Id. at 4:14-
`
`30, 5:56-62, and Fig. 2.
`
`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’498 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Hayashida in view of the Knowledge of a PHOSITA
`renders claims 1, 3, 5, and 7-8 obvious
`
`Overview of the Prior Art
`
`Hayashida was filed on August 21, 1997 and issued on May 23, 2000 and is
`
`prior art to the ’498 Patent under at least 35 U.S.C. § 102(e) (pre-AIA) (“§ 102(e)”).3
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`Hayashida was not cited or considered during prosecution of the ’498 Patent.
`
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`3 To the extent Patent Owner attempts to swear behind the August 21, 1997 priority
`date, Petitioner reserves the right to rely on the disclosures of Hayashida’s foreign
`priority applications to demonstrate its status as prior art under 102(e) should be
`assessed at an earlier date.
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`Hayashida is directed to a navigation system. Hayashida (Ex. 1004), Abstract.
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`The system described by Hayashida uses a satellite GPS system and land-based
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`beacon system to obtain the location of the user as well as an electronic compass and
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`gyroscope to obtain the traveling direction of the user. Id. at 7:60-8:8. Hayashida
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`uses this information to retrieve information such as destinations and routes to
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`destinations. Id. at 54:33-46. Hayashida teaches that this information may be
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`presented to the user through various techniques, including the display of whole
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`routes, sections of routes, and simple maps that allow the user to grasp the
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`information in an intuitive manner. Id. at 21:15-50, 22:32-39. While the specific
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`details of Hayashida’s system are described within the context of a vehicle-based
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`navigation system embodiment, Hayashida expressly contemplates that its invention
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`is applicable to portable “carrying-type navigation device[s]” for use by pedestrians.
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`Id. at 76:13-20.
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`Because Hayashida, like the ’498 Patent, teaches a small portable “carrying-
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`type navigation device” for pedestrians that includes both wireless data connectivity
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`and satellite and land-based beacon positioning, Hayashida is in the same field of
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`endeavor as the ’498 Patent. Compare id. at 7:60-8:8, 76:13-20 with ‘498 Patent
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`(Ex. 1001) at 2:30-55; Kotzin Decl. (Ex. 1003), ¶¶ 56-60. Hayashida is reasonably
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`pertinent to the claims in the ’498 Patent because both Hayashida and the ’498 Patent
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`are concerned with displaying various position, destination, and direction
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`information in a manner that the user can clearly grasp. Compare Hayashida (Ex.
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`1004) at 58:37-43; see also id. at 50:64-51:2 (discussing display of position and
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`direction of previous guide route); with ’498 Patent (Ex. 1001) at 6:12-13 (“[T]he
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`information is thus displayed more easily for the walker to understand.”); see also
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`id. at 10:17-22 (teaching a “user-friendly interface that enables the walker (user) to
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`understand condition inputs intuitively.”); Kotzin Decl. (Ex. 1003), ¶ 60.
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`i. Claim 1
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`1[P]. A portable terminal with the function of walking navigation, comprising:
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`To the extent that the preamble is limiting, Hayashida teaches a portable
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`terminal with the function of walking navigation:
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`“[T]his invention may be applied to the carrying-type navigation
`device in addition to the navigation device which is attached to the
`movement bodies such as the car. In other words, this invention may
`be applied to the small navigation device which can be
`accompanied by the human and which is used in a cycling, a travel,
`a mountaineering, a hike, a fishing or so on.4
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`Hayashida (Ex. 1004), 76:13-20.
`
`
`4 Unless otherwise indicated, all emphasis added by Petitioner.
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`
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`[1(a)] a device for getting location information denoting a present place of said
`portable terminal; and
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`As discussed above in Section III(D)(1), the corresponding structure for this
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`limitation is “(1) a wireless or cellular antenna, or a GPS, or a Personal Handyphone
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`System [PHS]; and (2) an infrared ray sensor; and (3) a control unit for analyzing
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`received data, with the control unit calculating location information as disclosed in
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`the ’498 Patent at 5:48-56, and Fig. 2.” Satisfying this limitation, Hayashida teaches
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`a device (i.e., central processor 1, including CPU 2, and present position detector 20,
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`including GPS receiver 25, and beacon receiver 26) for getting location information
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`(i.e., latitude and longitude information) denoting a present place of said portable
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`terminal.5 Kotzin Decl. (Ex. 1003), ¶¶ 61-62.
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`Specifically, Hayashida teaches that central processor 1, including CPU 2,
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`controls the operation of the navigation device. Hayashida (Ex. 1004, 6:47-49 (“A
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`central processor 1 controls the operation of the whole navigation device. The central
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`processor 1 is comprised with a CPU 2…”; 6:65-67. (“These programs 38b
`
`correspond to various processing by each flow chart to mention later and are
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`executed in CPU 2.”) “[P]resent position detector 20 outputs data for detecting the
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`present position of the car.” Id. at 7:60-61. Present position detector 20, includes
`
`
`5 To the extent the Board adopts the construction put forth by Patent Owner for this
`limitation, Petitioner notes that the identified structure satisfies this broader
`construction as well.
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`
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`18
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`GPS receiver 25 and beacon receiver 26, which provide information related to the
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`present position of the navigation device. Id. at 7:50-54. GPS receiver unit 25
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`receives GPS signals to detect position data such as longitude and latitude, while
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`beacon receiver 26 receives VICS data, which are used for correcting an error in the
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`position of the vehicle detected by GPS receiver 25. Id. at 7:66-8:8. Hayashida’s
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`device for getting location information is depicted below:
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`
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`Id. at Fig. 1.
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`A PHOSITA would have known that VICS was a specific Japan-based beacon
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`system that utilized infrared technology to communicate information to beacon
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`receivers such as those disclosed by Hayashida. Kotzin Decl. (Ex. 1003), ¶¶ 61, 42-
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`45 (describing VICS and PICS). Further, a PHOSITA would have understood that
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`correcting a GPS-based position with beacon information in a pedestrian context
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`(e.g., in a hiking/traveling application expressly disclosed by Hayashida) is an
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`19
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`obvious application of the Hayashida teachings. Id. at ¶ 62. Hayashida expressly
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`discloses correcting GPS position with beacon information only in the context of
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`vehicle-based navigation. But a PHOSITA would have known that VICS data had
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`been expanded to pedestrian applications, referred to as Pedestrian Information and
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`Communication System (PICS) and that such pedestrian-focused VICS information
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`could be easily deployed on Hayashida’s pedestrian-focused embodiments to
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`provide more accurate positioning than GPS was capable of providing alone. Id. at
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`¶¶ 62, 42-45. A PHOSITA would have recognized that this supplemental positioning
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`information would have been particularly beneficial in urban environments with tall
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`structures that were well known at the time to have caused problems with GPS-
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`positioning due to blocked GPS satellite signals. Id. at ¶¶ 62, 42-45. Indeed, such
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`infrared systems could even be used to allow the navigation system to function
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`indoors. Id. at ¶¶ 62, 42-45.
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`Although Hayashida describes this navigation device in the context of a
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`vehicle navigation application, a PHOSITA would have understood that both a GPS
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`and infrared ray sensor controlled by a CPU would be desirable in a portable
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`embodiment for pedestrians, as portable devices at the time commonly included
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`these components for getting location information. Kotzin Decl. (Ex. 1003), ¶¶ 62,
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`41-45.
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`IPR2020-00408
`U.S. Patent No. 6,430,498
`Accordingly, Hayashida renders obvious a central processor including a CPU,
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`a GPS, and an infrared ray sensor, which perform the claimed function of getting
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`location