`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`MAXELL, LTD.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00409
`U.S. Patent No. 6,580,999
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,580,999
`
`
`
`
`
`
`
`
`
`IPR2020-00409
`U.S. Patent No. 6,580,999
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`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. SUMMARY OF THE ’999 PATENT .......................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’999 PATENT .................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ’999 PATENT ..................... 3
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ............... 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ......................................................................................................... 4
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 4
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 5
`C. THE BOARD’S DISCRETION UNDER § 314(A).................................................. 5
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................... 6
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’999 PATENT ARE
`UNPATENTABLE ......................................................................................14
`A. GROUND 1: HAYASHIDA AND ABOWD RENDER CLAIMS 1-6 OBVIOUS ...............14
`V. CONCLUSION ............................................................................................57
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .....................59
`A. REAL PARTY-IN-INTEREST ...........................................................................59
`B. RELATED MATTERS .....................................................................................59
`C. LEAD AND BACK-UP COUNSEL ....................................................................59
`
`
`
`
`
`
`i
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`
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`I.
`
`INTRODUCTION
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`
`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
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`of claims 1-6 (collectively, the “Challenged Claims”) of U.S. Patent No. 6,580,999
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`(“the ’999 Patent”). ’999 Patent (Ex. 1001).
`
`II.
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`SUMMARY OF THE ’999 PATENT
`A. Description of the alleged invention of the ’999 Patent
`The ’999 Patent generally describes “a portable terminal provided with the
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`function of walking navigation, which can supply location-related information to the
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`walking user.” ’999 Patent (Ex. 1001), 1:14-16. According to the ’999 patent,
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`conventional navigation systems at the time of the invention were unsuitable for
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`walking navigation because they were too large to be carried by a walking user,
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`while maps provided by conventional map information services could not be
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`displayed clearly on the small screens of portable telephones. Id. at 1:29–36; 1:44–
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`50. The invention of the ’999 patent purportedly addressed these problems by
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`providing a portable terminal that can “supply location information easier for the
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`user to understand during walking.” Id. at 2:49–50.
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`The ’999 Patent describes a “portable terminal . . . with the function of
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`walking navigation [that] is provided with data communication, input, and display
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`devices just like those of ordinary portable telephones and PHS [Personal
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`Handyphone System] terminals, as well as a device for getting location information
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`and a device for getting direction information denoting the user’s present place.” Id.
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`
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`1
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`at 2:58–64. Figure 10 of the ’999 Patent depicts the primary components of the
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`described portable device:
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`
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`Id. at Fig. 10.
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`The portable terminal obtains location information and direction information
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`of the terminal. Id. at Abstract, 2:62–67. Based on this terminal information, the
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`portable terminal obtains and displays information such as route guidance for
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`reaching a destination, which in some circumstances may be the location of another
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`portable terminal. Id. at Abstract, 3:1–37; 8:41-44; Fig. 5. The portable terminal
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`displays the direction of a destination with an orientation of a line in the form of an
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`
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`2
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`indicating arrow that always points in the direction of the destination. Id. at Abstract.
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`Such a display is depicted below:
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`
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`Id. at Fig. 1; see also id. at Figs 3(a) and 3(b) (showing other displays).
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`Summary of the prosecution history of the ’999 Patent
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`B.
`The Application that resulted in the ’999 Patent was filed on June 18, 2002 as
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`US App. No. 10/173,423 and claims priority to Japanese Patent 11-197010, which
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`was filed July 12, 1999. ’999 Patent (Ex. 1001). For purposes of this proceeding,
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`Petitioner applies July 12, 1999 as the priority date for the Challenged Claims.
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`On June 18, 2002, the Examiner rejected all claims of the application that
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`resulted in the ’999 Patent under the non-statutory doctrine of double patenting as
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`unpatentable over the claims of U.S. Patent No. 6,430,498 (the “’498 Patent”). ’999
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`3
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`Patent File History (Ex. 1002), 98-99. Applicant responded by filing a terminal
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`disclaimer. Id. at 103-104. A Notice of Allowability was sent on January 30, 2003.
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`Id. at 112-13.
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`C.
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`Level of skill of a person having ordinary skill in the art
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`A person having ordinary skill in the art (PHOSITA) at the time of the ’999
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`Patent would have been a person having (i) a Bachelor degree (or higher degree) in
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`an 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. Kotzin
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`Decl. (Ex. 1003), ¶¶ 35-36.
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`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 ’999 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’999 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`’999 Patent, (2) Petitioner has not filed a civil action challenging the validity of any
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`claim of the ’999 Patent, and (3) this Petition is filed less than one year after the
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`Petitioner was served with a complaint alleging infringement of the ’999 Patent.
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`4
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`
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
`
`B.
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`In view of the prior art and evidence presented, claims 1-6 of the ’999 Patent
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`are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1). Further, based
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`on the prior art references identified below, IPR of the Challenged Claims should be
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`granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1-6 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”)
`
`Exhibits
`
`EX1004,
`EX1005
`
`
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`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
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`evidence relied upon to support the challenges are provided above and the relevance
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`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.
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`C.
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`The Board’s Discretion Under § 314(a)
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`While there is a parallel district court proceeding involving the ’999 patent,
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`no preliminary injunction motion has been filed, the district court has not been
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`presented with or invested any time in the analysis of prior art invalidity issues, and
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`no Markman hearing has been held. (Ex. 1041, Maxell v. Apple Docket Control
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`Order). Apple also timely filed its petition within the statutorily prescribed 1-year
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`
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`5
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`window. Declining to institute IPR here in view of the co- pending district court
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`litigation would essentially render nugatory the 1-year filing period of § 315(b).
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`Notably, § 315(b) originally contained only a 6-month filing window which was
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`amended to 1-year prior to passage of the America Invents Act to “afford defendants
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`a reasonable opportunity to identify and understand the patent claims that are
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`relevant to the litigation” before having to file an IPR petition. 157 Cong. Rec. S5429
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`(daily ed. Sept. 8, 2011) (statement of Sen. Kyl). Moreover, making the status of the
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`district court litigation a threshold consideration before institution also ignores the
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`common scenario, contemplated by Congress, of obtaining a district court stay based
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`on institution. Cf. 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Chuck Schumer); H. Rep. No. 112-98, Part I, at 48 (2011). For these reasons, and
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`those explained below, the instant petition should be instituted.
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`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`In this proceeding, claims are interpreted under the same standard applied by
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`Article III courts (i.e., the Phillips standard). See 37 C.F.R. § 42.100(b); see also 83
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`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
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`meaning, which is the meaning understood by a person of ordinary skill in the art in
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`view of the patent and file history. Phillips, 415 F.3d 1303, 1312-13. Dictionaries or
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`
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`6
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`other extrinsic sources may assist in determining the plain and ordinary meaning but
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`cannot override a meaning that is unambiguous from the intrinsic evidence. Id.
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`Certain Challenged Claims recite the generic term “device” for performing a
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`specific function. Because “device” is a “nonce word” that can operate as a substitute
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`for “means,” the claim construction principles of 35 U.S.C. § 112, ¶ 6 (“112-6”)
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`must be applied to these limitations. Williamson v. Citrix Online, LLC, 792 F.3d
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`1339, 1350 (Fed. Cir. 2015) (“[N]once words that reflect nothing more than verbal
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`constructs may be used in a claim in a manner that is tantamount to using the word
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`‘means’ because they typically do not connote sufficiently definite structure and
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`therefore may invoke § 112, para. 6.”) (internal quotations omitted). Corresponding
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`structure for each 112-6 limitation is identified below, and Petitioner proposes that
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`the claimed functions recited in each of these limitations be given its plain and
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`ordinary meaning that the term would have to one of ordinary skill in the art.
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`A number of terms in Challenged Claims have previously been construed by
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`the Board as well as district court, and Patent Owner and Petitioner have submitted
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`claim construction briefing in parallel district court litigation. Maxell, Ltd. v. Apple
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`Inc, 5:19-cv-00036, No. 99 (“Joint Claim Construction and Prehearing Statement”)
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`(Ex. 1011) and No. 136 (“Opening Claim Construction Brief”) (Ex. 1012) (E.D.Tex.
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`Nov. 18, 2019). Petitioner identifies below relevant citations to these prior and
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`ongoing claim construction undertakings.
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`7
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`“a device for getting location information denoting a present
`place of said portable terminal”
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`1.
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`Claims 1, 5, and 6 recite “a device for getting location information denoting a
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`present place of said portable terminal.” ’999 Patent (Ex. 1001), 10:40-41; 11:3-4;
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`12:3-4. Petitioner asserts that this term is governed by 112-6 and proposes that the
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`corresponding structure is “(1) a wireless or cellular antenna, or a GPS, or a Personal
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`Handyphone System [PHS]; and (2) an infrared ray sensor; and (3) a control unit for
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`analyzing received data, with the control unit calculating location information as
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`disclosed in the ’999 Patent at 5:55-63 and at Fig. 2.”
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`A prior Board ruled that this limitation as used in related patent U.S. 6,748,317
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`(the “’317 Patent”) (Ex. 1040) is governed by 112-6 and declined to institute because
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`the petitioner failed to identify corresponding structure. ZTE Corporation et al. v.
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`Maxell, Ltd., IPR2018-00235, Paper 9 at 10 (“the ’317 IPR”) (Ex. 1013).1 A separate
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`Board reached the same conclusion with respect to this term in parent patent, U.S.
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`Patent No. 6,430,498 (the “’498 Patent”), finding the corresponding structure is “(1)
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`a wireless or cellular antenna, or a GPS, or a Personal Handyphone System (PHS);
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`and (2) an infrared ray sensor; and (3) a control unit for analyzing received data,
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`with the control unit calculating location information as disclosed in the ’498 Patent
`
`
`1 Patent Owner has also previously agreed that this term is governed by 112-6. See
`Maxell, Ltd. v. ASUSTeK Computer Inc., et al., 3:18-cv-01788, No. 113-0 (N.D. Cal.
`Aug. 27, 2018) (Ex. 1015).
`
`
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`8
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`at 5:48-56 and at Fig. 2.” ASUSTeK Computer Inc. et al. v. Maxell, Ltd., IPR2019-
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`00071, Paper 7 at 7-9 (Ex. 1014). The Board expressly noted in that proceeding that
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`“Patent Owner does not dispute this construction.” Id. at 9. Patent Owner’s
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`concession made during this prior IPR proceeding should be relied on to support a
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`finding of prosecution disclaimer during claim construction. Aylus Networks, Inc. v.
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`Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017). Patent Owner should not be
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`allowed to argue claims in one way in order to maintain their patentability and in a
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`different way against accused infringers in subsequent proceedings. See id.
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`For a number of reasons, Petitioner proposes the Board adopt the same
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`construction in this proceeding. First, the proposed structure aligns with the intrinsic
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`record, which teaches three distinct components for getting location information—a
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`wireless receiver (e.g., wireless or cellular antenna, GPS, or PHS), an infrared ray
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`sensor, and a control unit for analyzing received data to determine location
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`information. See, e.g., ’999 Patent (Ex. 1001) at 4:11-13 (“For example, such a
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`wireless antenna as a GPS, a PHS, etc., as well as an infrared ray sensor is used to
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`measure location information.”); 9:47-52 (“The device for getting location
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`information 77 is provided with [1] such a wireless antenna, a GPS, a PHS, or the
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`like; [2] such a data receiver as an infrared ray sensor, or the like; and [3] a control
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`unit for analyzing received data, thereby calculating location information.”).
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`9
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`Second, a PHOSITA would have understood that infrared beacons were a
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`common solution for navigation systems generally as well as for walking navigation
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`systems. A PHOSITA would have recognized that navigation systems at the time of
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`the ’999 Patent often used infrared beacons to correct GPS positions. Kotzin Decl.
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`(Ex. 1003), ¶¶ 43-45, 127-128 (discussing the need for corrective information due
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`to Selective Availability of GPS signals). And a PHOSITA would also have
`
`recognized that walking navigation systems often demanded location information
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`indoors where traditional location technology such as GPS is not available. Id. at ¶¶
`
`45, 128. The goal of ’999 Patent is to provide location and navigation information,
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`specifically to a walking user. See ’999 Patent (Ex. 1001), 1:13-16. Although
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`satellite positioning technology such as GPS was well-established for determining a
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`location outdoors, it was known at the time of the ’999 Patent that these technologies
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`were not suitable for determining a location when indoors. Kotzin Decl. (Ex. 1003),
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`¶¶ 45, 128 (discussing known ineffectiveness of GPS when indoors). A PHOSITA
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`would have further known at the time of the ’999 Patent that infrared beacons were
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`a solution to provide location information indoors. Id. at ¶¶ 45, 128.
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`Because Patent Owner did not dispute the proposed construction in a prior
`
`proceeding, the intrinsic record supports this prior construction, and the construction
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`
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`10
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`is consistent with the known limitations of satellite-based positioning at the time of
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`the ’999 Patent, this prior construction should be adopted here. 2
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`2.
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`“a device for getting direction information denoting an
`orientation of said portable terminal”
`
`Claims 1, 5, and 6 recite “a device for getting [a] direction information
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`denoting an orientation of said portable terminal.” ’999 Patent (Ex. 1001), 10:42-
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`43; 11:6-7; 12:5-6. As with the first term, a prior Board found that this limitation is
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`governed by 112-6 with respect to the related ’317 Patent. The ’317 IPR, Paper 9
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`(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.
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`Further, both Petitioner and Patent Owner agree that the corresponding
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`structure is “a compass, a gyroscope, and/or sensor such as a clinometer in
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`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
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`’999 Patent. Namely, the ’999 Patent expressly defines the structure of the devices
`
`as follows:
`
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`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.
`
`
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`11
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`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.
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`’999 Patent (Ex. 1001), 9:52-55. The specification further provides that the CPU
`
`performs analysis of sensor-measured data to get direction information. Id. at 4:17-
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`33, 5:63-6:2, and Fig. 2.
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`3.
`
` “a device for getting the location information of another
`portable terminal [from said another terminal via connected
`network]”
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`Claims 1, 5, and 6 recite “a device for getting the location information of
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`another portable terminal [from said another terminal via connected network].” ’999
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`Patent (Ex. 1001), 10:45-46; 11:8-9; 12:7-9. Both Petitioner and Patent Owner agree
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`in current parallel litigation that these terms should be construed pursuant to 112-6.
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`Joint Claim Construction and Prehearing Statement, (Ex. 1011), 2; Opening Claim
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`Construction Brief, (Ex. 1012), 28.
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`As has been permitted previously, Petitioner proposes this Board adopt the
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`claim constructions advanced by Patent Owner in the parallel district court litigation
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`for these claimed phrases. See Western Digital Corporation v. Spex Technologies,
`
`Inc., IPR2018-00084, (2018) (finding Petition based on claim constructions urged
`
`by Patent Owner satisfies the claim construction requirements and that Petitioner is
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`not required to express its subjective agreement regarding correctness of the
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`
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`12
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`proffered claim construction or take ownership of the construction); see also
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`General Electric v. Vestas, IPR2018-00928 (clarifying that while the petitioner does
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`not have “to express its subjective agreement regarding [the] correctness of its
`
`proffered claim constructions,” the Petitioner nevertheless “cannot expressly
`
`disagree with the proffered constructions”) (citing Western Digital).
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`For both “a device for getting a location information of another portable
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`terminal from said another terminal via connected network” and “a device for
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`retrieving a route from said present place to said destination,” Patent Owner has
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`identified the device for data communication 76 as the proposed structure. Opening
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`Claim Construction Brief, (Ex. 1012), 28-29. In support, Patent Owner identified the
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`following disclosures in the ’317 Patent (Ex. 1040) in support of this corresponding
`
`structure: Abstract, 1:10-15, 2:23-26, 2:51-3:1, 3:43-66, 4:14-39, 5:17- 21, 5:64-6:4,
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`6:9-18, 8:17-9:39, 9:40-63, 10:29-34, Figures 5-7, 9, 10.3 Joint Claim Construction
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`and Prehearing Statement, (Ex. 1011), 8, 10.
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`As Patent Owner has asserted in the parallel litigation, the Board should adopt
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`“a CPU and a device for data communication 76 of a portable terminal; or
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`equivalents thereof” is the structure performing the claimed functions of getting
`
`
`3 The identified ’317 Patent citations correspond to the following citations of the
`’999 Patent (Ex. 1001): Abstract, 1:8-13, 2:19-22, 2:47-52, 3:39-45, 3:58-60, 4:8-
`33; 5:13-17, 5:60-67; 6:5-14; 8:13-9:35, 9:40-59, and 10:25-30.
`
`
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`13
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`location information of another portable terminal from said another terminal via
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`connected network and retrieving a route from said present place to said destination.
`
`Opening Claim Construction Brief, (Ex. 1012), 28.
`
`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’999 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Hayashida and Abowd render claims 1-6 obvious
`Overview of the Prior Art
`
`Hayashida was filed on August 21, 1997 and issued on May 23, 2000 and is
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`prior art to the ’999 Patent under at least 35 U.S.C. § 102(e) (pre-AIA) (“§ 102(e)”).4
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`Hayashida was not cited or considered during prosecution of the ’999 Patent.
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`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. See e.g., id. at 54:33-46 (describing extraction of facilities along a
`
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`4 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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`14
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`U.S. Patent No. 6,580,999
`route). Hayashida teaches that this information may be presented to the user through
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`various techniques, including the display of whole routes, sections of routes, and
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`simple maps that allow the user to grasp the information in an intuitive manner. Id.
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`at 21:15-50; 22:32-39. While the specific details of Hayashida’s system are
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`described within the context of a vehicle-based navigation system embodiment,
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`Hayashida expressly contemplates that its invention is applicable to portable
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`“carrying-type navigation device[s]” for use by pedestrians. Id. at 76:13-20.
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`Because Hayashida, like the ’999 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 ’999 Patent. Compare id. at 7:60-8:8, 76:13-20 with ’999 Patent
`
`(Ex. 1001) at 2:33-57; Kotzin Decl. (Ex. 1003), ¶¶ 56-60. Hayashida is reasonably
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`pertinent to the claims in the ’999 Patent because both Hayashida and the ’999 Patent
`
`are concerned with displaying various position, destination, and direction
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`information in a manner that the user can clearly grasp. Compare Hayashida (Ex.
`
`1004), 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 ’999 Patent (Ex. 1001), 6:19-20 (“[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 10:25-30 (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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`15
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`U.S. Patent No. 6,580,999
`Abowd was publicly available no later than October 1997 and therefore
`
`qualifies as prior art to the ’999 Patent under 35 U.S.C. § 102(b) (pre-AIA). Abowd
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`(Ex. 1005); see generally Munford Decl. (Ex. 1009). Abowd was not cited or
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`considered during prosecution of the ’999 Patent.
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`As further evidence that Abowd is prior art to the ’999 Patent, Petitioner
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`provides as Exhibit 1009 a declaration from Jacob Munford, who obtained a copy of
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`the MARC (Machine Readable Catalog) record and examined a physical copy of
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`Abowd from the University of Pittsburgh and Carnegie Mellon. Mr. Munford
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`explains that field code 008 of the respective MARC records identified the date
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`Abowd was publicly available at each of these libraries occurred in October 1997.
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`Munford Decl. (Ex. 1009), ¶ 10; see also, Symantec Corp. v. Finjan, Inc., IPR2015-
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`01892, 2017 WL 1041718, at *13 (Mar. 15, 2017) (finding librarian’s declaration
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`regarding MARC records as sufficient evidence of public availability). Accordingly,
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`Abowd qualifies as a printed publication and is prior art with regard to the ’999 Patent
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`under at least 35 U.S.C. § § 102(b) (pre-AIA).
`
`Abowd describes a contextually-aware, hand-held navigation device
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`developed by a team at Georgia Tech called the Cyberguide (earlier versions called
`
`the CyBARguide). Abowd (Ex. 1005), 421, 428. Abowd teaches a modular system
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`that includes a map module, providing a visual display of the surroundings, an
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`information module, providing
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`the user with
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`information relating
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`to
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`the
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`16
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`surroundings, a positioning module, which determines the location of the user, and
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`a communications module, which allows the user to communicate data to other users
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`and to centralized servers. Id. at 423-24.
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`Because Abowd teaches a portable hand-held navigation device for pedestrian
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`use, it is in the same field of endeavor and is reasonably pertinent to the claims of
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`the ’999 Patent. Compare id. at 422 (“One major application of mobile context-
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`aware devices are personal guides…[w]alking tours of cities or historical sites could
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`be assisted by these electronic guidebooks.”) with ’999 Patent (Ex. 1001) at 2:47-
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`57; Kotzin Decl. (Ex. 1003), ¶¶ 86-88. Therefore, Abowd is also analogous to the
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`claimed invention in the ’999 Patent. Kotzin Decl. (Ex. 1003), ¶ 88.
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`Reason to Combine Hayashida and Abowd
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`Both Hayashida and Abowd describe portable navigation devices. While
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`Hayashida generally describes the invention in the context of a vehicle embodiment,
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`Hayashida also notes that the invention may be applied to a pedestrian embodiment.
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`Hayashida (Ex. 1004), 76:13-20. A PHOSITA would have looked to other portable
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`navigation devices at the time that used the same functions taught by Hayashida in
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`a vehicle in a pedestrian context. Kotzin Decl. (Ex. 1003), ¶¶ 89-92. A PHOSITA
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`would have been motivated to modify the system taught by Hayashida according to
`
`the teachings of Abowd because Abowd expressly describes these functions in a
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`pedestrian context. Id. at ¶ 89. A PHOSITA would have been motivated to include
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`17
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`IPR2020-00409
`U.S. Patent No. 6,580,999
`the modules taught by Abowd, including the map module, information module,
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`positioning module, and communications module in the system of Hayashida.
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`Abowd (Ex. 1005), 423-24; Kotzin Decl (Ex. 1003), ¶ 91. Indeed, with respect to
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`many desirable functions of the Cyberguide, Abowd notes that “[s]ome of these
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`functions are currently being provided by automobile on-board navigation systems.”
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`Abowd (Ex. 1005), 422. Accordingly, it would have been obvious to a PHOSTIA
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`that the functions as performed by a vehicle navigation system would be provided
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`in a pedestrian navigation system. Kotzin Decl. (Ex. 1003), ¶¶ 89-91.
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`Because of the similarity in the architecture of Hayashida and Abowd, a
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`PHOSITA would have had a reasonable expectation of success in modifying the
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`portable system of Hayashida to include the modules taught by Abowd. Kotzin Decl.
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`(Ex. 1003), ¶ 92. For example, both Hayashida and Abowd teach the use of a GPS
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`device and infrared ray sensor for positioning, both Hayashida and Abowd teach
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`devices relating to the orientation of the device, and both references provide for
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`display of this information in relation to a desired destination to assist users with
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`traveling to that destination. Compare Hayashida (Ex. 1004), 7:66-8:8, 7:60-64,
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`8:22-31 with Abowd (Ex. 1005), 431, 422, 428; Kotzin Decl. (Ex. 1003), ¶¶ 91-92.
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`And because Abowd describes a modular system, such modifications would not only
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`have been straightforward, but would have been anticipated due to the modularity of
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`the system. Abowd (Ex. 1005), 424; Kotzin Decl. (Ex. 1003), ¶ 92. Accordingly, such
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`18
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`U.S. Patent No. 6,580,999
`modifications would not have required undue experimentation and would have
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`yielded predictable results. Id.
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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.5
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`Hayashida (Ex. 1004), 76:13-20.
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`[1(a)] a device for getting location information denoting a present place of said
`portable terminal;
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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 ’999 Patent at 5:55-63, and Fig. 2.” Hayashida in view of Abowd teaches this
`
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`5 Unless otherwise indicated, all emphasis added by Petitioner.
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`19
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`limitation.6 Kotzin Decl. (Ex. 1003), ¶¶ 93-97; see also id. at ¶¶ 61-62 (discussing
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`Hayashida’s teachings regarding a device for getting location information); 41-45
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`(discussing background of the technology).
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`Hayashida teaches a device (i.e., central processor 1, including CPU 2, and
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`present position detector 20, including GPS receiver 25, and beacon receiver 26) for
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`getting location information (i.e., latitude and longitude information) denoting a
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`present place of said portable terminal. Kotzin Decl. (Ex. 1003), ¶¶ 61-62, 41-45.
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`Specifically, Hayashida teaches that central processor 1, including CPU 2, controls
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`the operation of the navigation device. Hayashida (Ex. 1004), 6:47-49; (“A central
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`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
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`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
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`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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`6 To the extent the Board adopts the construction put forth by
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