Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 1 of 35 PageID #: 5811
`Case 5:19-cv-00036—RWS Document 136-11 Filed 11/18/19 Page 1 of 35 PageID #: 5811
`
`EXHIBIT 11
`
`EXHIBIT 11
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 2 of 35 PageID #: 5812
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`v.
`APPLE INC.
`
`Plaintiff,
`
`Defendants
`
`
`
`
`
`Case No. 5:19-cv-0036-RWS
`LEAD CASE
`JURY TRIAL DEMANDED
`
`EXPERT DECLARATION OF
`DR. CRAIG ROSENBERG CONCERNING CLAIM CONSTRUCTION
`
`
`October 4, 2019
`
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 3 of 35 PageID #: 5813
`
`
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. QUALIFICATIONS .............................................................................................................. 1
`III. MATERIALS CONSIDERED .............................................................................................. 6
`IV. LEGAL STANDARDS ......................................................................................................... 7
`V. OVERVIEW OF THE ’139 PATENT ................................................................................... 9
`VI. OPINIONS ........................................................................................................................... 11
`
`
`
`
`CURRICULUM VITAE ATTACHED AS APPENDIX
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 4 of 35 PageID #: 5814
`
`
`I.
`
`INTRODUCTION
`
`
`
`1.
`
`Inc.
`
`2.
`
`I have been retained by Maxell, Ltd. as an expert witness in this litigation against Apple
`
`I have been asked to provide my expert opinion related to the meaning of certain claim
`
`terms in U.S. Patent Nos. 6,748,317 (“the ’317 Patent”), U.S. Patent No. 6,580,999 (“the ’999
`
`Patent”), and U.S. Patent No. 6,430,498 (“the ’498 Patent”).
`
`3.
`
`I am being compensated for the time I spend on this case at my normal consulting rate of
`
`$450 per hour. No part of my compensation is dependent upon the outcome of this case or any
`
`issue in it. I have no other interests in this litigation or with any of the parties.
`
`II.
`
`4.
`
`QUALIFICATIONS
`
`I hold a Bachelor of Science in Industrial Engineering, a Master of Science in Human
`
`Factors, and a Ph.D. in Human Factors from the University of Washington School of
`
`Engineering. For 30 years, I have worked in the areas of human factors, user interface design,
`
`software development, software architecture, systems engineering, and modeling and simulation
`
`across a wide variety of application areas, including aerospace, communications, entertainment,
`
`and healthcare.
`
`5.
`
`I graduated from the University of Washington in 1988 with a B.S. in Industrial
`
`Engineering. After graduation, I continued my studies at the University of Washington. In 1990,
`
`I obtained an M.S. in Human Factors. In 1994, I graduated with a Ph.D. in Human Factors. In the
`
`course of my doctoral studies, I worked as an Associate Assistant Human Factors Professor at
`
`the University of Washington Industrial Engineering Department. My duties included teaching,
`
`writing research proposals, designing and conducting funded human factors experiments for the
`
`National Science Foundation, as well as hiring and supervising students. While studying at the
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 5 of 35 PageID #: 5815
`
`
`University of Washington, I also worked as a human factors researcher and designed and
`
`
`
`performed advanced human factors experiments relating to virtual environments and interface
`
`design, stereoscopic displays, and advanced visualization research, which was funded by the
`
`National Science Foundation. My duties included user interface design, systems design, software
`
`development, graphics programming, experimental design, as well as hardware and software
`
`interfacing.
`
`6.
`
`I have published twenty-one research papers in professional journals and proceedings
`
`relating to user interface design, computer graphics, and the design of spatial, stereographic, and
`
`auditory displays. I also authored a book chapter on augmented reality displays in the book
`
`“Virtual Environments and Advanced Interface Design” (Oxford University Press, 1995). In
`
`addition, I created one of the first spatial musical instruments called the MIDIBIRD that utilized
`
`the MIDI protocol, two six-dimensional spatial trackers, a music synthesizer, and a computer
`
`graphics workstation to create an advanced and novel musical instrument.
`
`7.
`
`My Ph.D. dissertation was titled “Evaluating Alternative Controllers using the MIDI
`
`Protocol for Human-Computer Interaction.” This research explored the use of programming a
`
`musical keyboard to be used as a human-computer interaction device for controlling computer
`
`graphics.
`
`8.
`
`For the past 21 years, I have served as a consultant for Global Technica, Sunny Day
`
`Software, Stanley Associates, Techrizon, CDI Corporation, and the Barr Group. In this capacity,
`
`I have provided advanced engineering services for many companies.
`
`9.
`
`I consulted for the Boeing Company for over 16 years as a senior human factors engineer,
`
`user interface designer, and software architect for a wide range of advanced commercial and
`
`military programs. Many of the projects that I have been involved with include advanced
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 6 of 35 PageID #: 5816
`
`
`software development, user interface design, agent-based software, and modeling and
`
`
`
`simulations in the areas of missile defense, homeland security, battle command management,
`
`computer aided design, networking and communications, air traffic control, location-based
`
`services, and Unmanned Aerial Vehicle (“UAV”) command and control. Additionally, I was the
`
`lead system architect developing advanced air traffic controller workstations and air traffic
`
`control analysis applications, toolsets, and trade study simulations for Boeing Air Traffic
`
`Management.
`
`10.
`
`I was also the architect of the Boeing Human Agent Model. The Boeing Human Agent
`
`Model is an advanced model for the simulation of human sensory, cognitive, and motor
`
`performance as applied to the roles of air traffic controllers, pilots, and UAV operators. In
`
`another project, I was the lead human factors engineer and user interface designer for Boeing’s
`
`main vector and raster computer aided drafting and editing system that produces the maintenance
`
`manuals, shop floor illustrations, and service bulletins for aircraft produced by the Boeing
`
`Commercial Aircraft Company. Additional responsibilities in my time as a consultant include
`
`system engineering, requirements analysis, functional specification, use case development, user
`
`stories, application prototyping, modeling and simulation, object-oriented software architecture,
`
`graphical user interface analysis and design, as well as UML, C++, C#, and Java software
`
`development.
`
`11.
`
`In 1995 and 1996, I was hired as the lead human factors engineer and user interface
`
`designer for the first two-way pager produced by AT&T. Prior to this technology, people could
`
`receive pages but had no way to respond utilizing their pager. This new technology allowed users
`
`to use a small handheld device to receive and send canned or custom text messages, access and
`
`update an address book, and access and update a personal calendar. This high-profile project
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 7 of 35 PageID #: 5817
`
`
`involved designing the entire feature set, user interface/user interaction design and specification,
`
`
`
`as well as all graphical design and graphical design standards.
`
`12.
`
`From 1999–2001, I was the lead human factors engineer and user interface designer for a
`
`company called Eyematic Interfaces that was responsible for all user interface design and
`
`development activities associated with real-time mobile handheld 3D facial tracking, animation,
`
`avatar creation and editing software for a product for Mattel. My work involved user interface
`
`design, human factors analysis, requirements gathering and analysis, and functional
`
`specifications.
`
`13.
`
`I was the lead user interface designer for a company called ObjectSpeed that developed a
`
`portable handheld telephone for use in homes and businesses that had many of the same
`
`capabilities that we take for granted in mobile cellular phones. This portable multifunction
`
`device supported voice, email, chat, video conferencing, internet radio, streaming media,
`
`Microsoft Outlook integration, photo taking and sharing, etc. The ObjectSpeed device was
`
`specifically designed and developed as a portable handheld device.
`
`14.
`
`I am the founder, inventor, user interface designer, and software architect of WhereWuz.
`
`WhereWuz is a company that produces advanced mobile software running on GPS-enabled
`
`smartphones and handheld devices. WhereWuz allows users to record exactly where they have
`
`been and query this data in unique ways for subsequent retrieval based on time or location.
`
`WhereWuz was specifically designed and developed to run on small handheld devices.
`
`15.
`
`I am the co-founder of a medical technology company called Healium. Healium
`
`developed advanced wearable and handheld user interface technology to allow physicians to
`
`more effectively interact with electronic medical records. I am also the co-founder of a medical
`
`technology company called StratoScientific. StratoScientific is developing an innovative case for
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 8 of 35 PageID #: 5818
`
`
`a smartphone that turns a standard handheld smartphone into a full featured digital stethoscope
`
`
`
`that incorporates visualization and machine learning that can be utilized for telemedicine and
`
`automated diagnosis.
`
`16.
`
`I designed and developed a large software project for Disney World called xVR that
`
`allowed the operational employees of Disney World to utilize a handheld device to view the
`
`current and historical status of all of the guests of Disney World within multiple attractions as
`
`well as within one of their restaurants. The application could run in a real-time/live mode where
`
`it would display data collected from sensors that showed the location and status of all guests
`
`within the attraction; the application could also be run in a fast-time/simulated mode. The
`
`application was developed on a laptop computer and was specifically designed to run on a
`
`variety of devices, including laptops, PCs, smartphones, and tablets.
`
`17.
`
`I have received several awards for my engineering work relating to interface design,
`
`computer graphics, and the design of spatial, stereographic, and auditory displays, including a
`
`$10,000 scholarship from the I/ITSEC for advancing the field of interactive computer graphics
`
`for flight simulation and a Link Foundation award for furthering the field of flight simulation and
`
`virtual interface design. I have also created graphics for several popular book covers as well as
`
`animations for a movie produced by MIRAMAR.
`
`18.
`
`I have designed many advanced systems that utilize GPS and other mapping and
`
`location-based technologies in the areas of:
`
`• Advanced air traffic control
`
`• Army tracking of soldiers, equipment and vehicles
`
`• Routing of wireless signals for Army vehicles based on location
`
`• Routing, planning, and surveillance of unmanned aerial vehicles
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 9 of 35 PageID #: 5819
`
`
`
`
`
`• Terrorist Tracking application for the Department of Homeland Security
`
`• Personal tracking applications for iOS and Android
`
`• Tracking of visitors at Disney World in Orlando, Florida
`
`19.
`
`I designed and developed a GPS enabled Location Based Services application for iOS
`
`and Android that sold for seven years on the iTunes App Store and Google Play Store.
`
`20.
`
`I have developed advanced geographic information systems for a proprietary Boeing
`
`research and development project for the Department of Homeland Security
`
`21.
`
`I have developed location based Unmanned Air Vehicle routing, control, and tracking
`
`algorithms for a proprietary Boeing research and development program
`
`22.
`
`I have been retained and/or testified as an expert in at least twelve other cases involving
`
`GPS, Tracking, and Location Based Services.
`
`III. MATERIALS CONSIDERED
`
`23.
`
`In forming my opinions, I have relied on my knowledge and experience in designing,
`
`developing and deploying a wide range of software application and graphical user interfaces
`
`including in the context of GPS, and on the documents and information referenced in this
`
`declaration. Specifically, I have considered
`
`• The ’317, ’999, and ’498 Patents
`
`• The file histories of the ’317, ’999, and ’498 Patents
`
`• The parties proposed constructions for the terms discussed herein
`
`• This Court’s Markman Order in Maxell Ltd. v. Huawei Device USA Inc. et al.,
`
`297 F.Supp.3d 668 (E.D. Tex. 2018)
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 10 of 35 PageID #: 5820
`
`
`IV.
`
`LEGAL STANDARDS
`
`
`
`24.
`
`In forming my opinions, I am relying upon certain legal principles that counsel has
`
`explained to me.
`
`25.
`
`I understand that a patent may include two types of claims: independent claims and
`
`dependent claims. An independent claim stands alone and includes only the limitations it recites.
`
`A dependent claim can depend from an independent claim or another dependent claim and
`
`includes all the limitations that it recites in addition to all of the limitations recited in the claim or
`
`claims from which it depends.
`
`26.
`
`I understand that the claim construction exercise begins with the language of the claims
`
`themselves, and that the general rule is that claim terms are given their plain and ordinary
`
`meaning to a person of ordinary skill in the art, in view of the specification of the patent, at the
`
`time of the invention. I also understand that the intrinsic evidence (i.e., the claims, written
`
`description, and prosecution history) are the primary sources used in interpreting claim language.
`
`27.
`
`I understand that if disputed claim language is clear on its face, the intrinsic evidence
`
`should be consulted to determine whether some deviation from the ordinary meaning of the
`
`claim language is warranted.
`
`28. When the disputed claim language is not clear on its face, I understand that the intrinsic
`
`evidence should be used to resolve, if possible, the lack of clarity. I also understand that the
`
`specification is the best evidence of what the patentee intended the term to mean when there is
`
`no clear meaning of a claim term, and that the prosecution history may also shed light on the
`
`meaning of ambiguous terms. However, I understand that it is improper to import limitations
`
`from the specification into a patent claim through claim construction.
`
`7
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 11 of 35 PageID #: 5821
`
`
`29.
`
`I have been informed that sometimes the ordinary meaning of claim language as
`
`
`
`understood by a person of ordinary skill in the art may be readily apparent even to lay persons. I
`
`understand that claim construction in such cases involves little more than the application of the
`
`widely accepted meaning of commonly understood words.
`
`30.
`
`I further understand that a patentee may act as his own lexicographer by giving a
`
`definition for a particular claim term. I understand that, in order for this principle to apply, the
`
`patentee must clearly set forth a definition and clearly express an intent to define that term.
`
`Simply disclosing a single embodiment is not sufficient.
`
`31.
`
`I understand that if the intrinsic evidence fails to clearly disclose the meaning of a claim
`
`term, the court may look to extrinsic evidence outside the patent and prosecution history, such as
`
`expert testimony, treatises, and dictionaries.
`
`32.
`
`I further understand that, under pre-AIA 35 U.S.C. § 112, ¶ 6, a claim element may be
`
`expressed as a means or step for performing a specified function without the recital of structure,
`
`material, or acts in support thereof, and that such elements are called “means-plus-function”
`
`terms. I understand that a patentee’s use of the word “means” in a claim element creates a
`
`presumption that the term is a means-plus-function term. I further understand that the lack of the
`
`word “mean” creates a presumption that a term is not a means-plus-function term.
`
`33.
`
`In forming my opinions stated in this Declaration, I have adopted the following level of
`
`one of ordinary skill in the art for the ’317, ’999, and ’498 patents: a person of ordinary skill in
`
`the art in the field of the ’317, ’999, and ’498 patents would be someone with a working
`
`knowledge of GPS systems. The person would have gained this knowledge through an
`
`undergraduate Bachelor of Science degree in Electrical Engineering/Computer Engineering or
`
`Computer Science or an equivalent degree (such as software engineering, human factors
`
`8
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 12 of 35 PageID #: 5822
`
`
`engineering, or information technology) and at least one year of experience working in the field
`
`
`
`of GPS systems. A person with less education but more relevant experience, or more relevant
`
`education but less experience, may also meet this standard.
`
`34.
`
`I had at least the level of skill of one of ordinary skill in the art as of the priority date of
`
`the ’317, ’999, and ’498 patents.
`
`V.
`
`35.
`
`OVERVIEW OF THE ’317, ’999, AND ’498 PATENTS
`
`The ’498 Patent is entitled “Portable Terminal With The Function of Walking Navigation.”
`
`The ’498 Patent was filed on July 11, 2000 and has a priority date of July 12, 1999. The ’498
`
`Patent issued on August 6, 2002.
`
`36.
`
`The ’999 Patent has the same title as the ’498 Patent and was filed on June 18, 2002 as a
`
`continuation of the ’498 Patent. The ’999 Patent issued on June 17, 2003.
`
`37.
`
`The ’317 Patent also has the same title as the ’498 Patent and was filed on May 5, 2003 as
`
`a continuation of the ’999 Patent. The ’317 Patent issued on June 8, 2004.
`
`38.
`
`All three patents have the same specification and are generally directed to the field of
`
`implementing navigation systems in portable terminals such that users could use these portable
`
`terminals for purposes of walking navigation. ’498 Patent, Abstract.1 The ’498 Patent explains
`
`that examples of portable terminals included a portable telephone, a personal handyphone system
`
`PHS), and a personal data assistance (PDA) terminal with portable telephone or PHS data
`
`communication functions. ’498 Patent at 1:5-10.
`
`39.
`
`These patents are directed to solving the problems that existed in conventional navigation
`
`systems at the time. Specifically, prior to the inventions of these patents, conventional navigation
`
`
`1 For purposes of consistency I will be citing to the ’498 Patent in my declaration even though similar
`disclosures is also included in the specifications of the ’999 and ’317 patents.
`
`9
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 13 of 35 PageID #: 5823
`
`
`
`systems were unsuitable for the use in walking navigation because they were too large to be carried
`
`by a walking user and would not provide information about the direction and orientation of a
`
`walker. ’498 Patent at 1:14-24.
`
`40.
`
`To the extent portable terminal existed they had smaller screens and downloading route
`
`and maps in relatime required “an enormous amount of cost for the communications with the
`
`server.” 498 Patent at 1:47-65. Thus, conventional systems were too large to be carried by a
`
`walking user, would not provide information about the direction and orientation of a user, and
`
`were unsuitable for display on the smaller screens of portable devices.
`
`41.
`
`In view of these shortcomings, the inventors of these patents conceived a portable terminal
`
`that would aid users who wished to have real-time directions while walking. ’498 Patent at 2:44-
`
`54. These inventors implemented a portable terminal that displays information about the direction
`
`a user is facing and displays navigation information that can be displayed on screens of different
`
`sizes including, for example, a narrow screen of a portable terminal. ’498 Patent at 2:66-3:20.
`
`42.
`
`The portable terminal conceived by the inventors include devices for obtaining a location
`
`and direction of the user’s present place, so that the user does not have to input information
`
`regarding the present place. ’498 Patent at 2:56–65. The portable terminal may also display one
`
`or more arrows to guide the user during walking. ’498 Patent at Figs. 3(a) – 3(f).
`
`43.
`
`In addition, the portable terminal may provide different services such as “route guidance
`
`service,” “neighborhood guidance service,” “meeting by appointment guidance service,” and
`
`“present place guidance service.” ’498 Patent at 3:21-35. Among other things these services
`
`include provide a route for the user to navigate and walk on, enabling the user to share or retrieve
`
`the location of a friend who is also using a portable terminal such that the user could navigate to
`
`his friend, and/or identify shops and/or services in the neighborhood.
`
`10
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 14 of 35 PageID #: 5824
`
`
`44.
`
`
`Claims of the three patents are directed to different aspects and services disclosed in the
`
`specification but include some common terms that I will be addressing together. For example, I
`
`will be providing opinions with respect to the following terms that appear in numerous claims:
`
`Patent Term
`
`Applicable Claims
`
`’498: claims 1, 5, 10
`’317: claims 1, 6, 10
`’999: claims 1, 5, 6
`
`’498: claims 1, 5, 10
`’317: claims 1, 6, 10
`’999: claims 1, 5, 6
`
`’317: claim 10
`’999: claim 6
`
`’999: claims 1, 5
`’317: claim 15, 18
`
`’317: claim 6
`
`“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 portable terminal via connected
`network”
`“a device for getting the location
`information of another portable terminal”
`“a device for retrieving a route from said
`present place to said destination”
`
`“a device connected to a server . . . said
`server outputting said location information
`and said direction information and receiving
`retrieved information based on said
`outputting information at said server”
`
`
`VI. OPINIONS
`
`“a device for getting location information denoting a present place of said portable
`terminal”
`
`Maxell’s Proposed Construction
`Governed by pre-AIA 35 U.S.C. § 112, ¶6
`
`Function: getting location information
`denoting a present place of said portable
`terminal
`
`Defendants’ Proposed Construction
`Governed by pre-AIA 35 U.S.C. § 112, ¶6
`
`Function: getting location information
`denoting a present place of said portable
`terminal
`
`11
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 15 of 35 PageID #: 5825
`
`
`
`
`
`
`Structure: a wireless or cellular antenna, a
`GPS, a Personal Handyphone System (PHS),
`or the like; such a data receiver as an infrared
`sensor, or the like; and a CPU for analyzing
`received data; or equivalents thereof
`
`
`Structure: a wireless or cellular antenna, or a
`GPS, or a Personal Handyphone System
`(PHS); and an infrared ray sensor; and a
`control unit for analyzing received data, with
`the control unit calculating location
`information as disclosed in ’498 at 5:48-56
`and Fig. 2; or equivalents thereof
`
`
`45.
`
`It is my understanding that the parties agree that this term is a means-plus-function term
`
`and I have analyzed it under the legal framework as explained to me by counsel. Further, the parties
`
`agree that the proper function is getting location information denoting a present place of said
`
`portable terminal.
`
`46.
`
`Even with respect to the structure, both Maxell and Apple have identified similar structures
`
`but Apple’s proposal is unduly limiting. It is my opinion, however, that looking at the
`
`specification, a person of ordinary skill in the art will find that Maxell’s proposed structure is
`
`correct. This is because Maxell’s proposed structure is verbatim from the specification of the
`
`patents. For example, the ’498 Patent discloses:
`
`device for getting location information 77 is provided with such a
`wireless antenna, a GPS, a PHS, or the like; such a data receiver as
`an infrared ray sensor, or the like; and a control unit for analyzing
`received data, thereby calculating location information.
`
`
`’498 Patent at 9:39-44.
`
`47. Maxell’s proposed construction adopts this disclosure verbatim from the specification
`
`while Apple’s proposed construction rewrites this passage of the specification by narrowing the
`
`claim in multiple ways. For example, Apple rewrites the non-limiting phrase of “such a data
`
`receiver as an infrared ray sensor, or the like” to “and an infrared ray sensor.” The specification
`
`of the patents, however, do not limit the structure to an infrared sensor. Instead, they recite the
`
`infrared sensor as an example of a data receiver and/or as an alternative to a GPS or PHS
`
`12
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 16 of 35 PageID #: 5826
`
`
`
`components. The patents explicitly state that “[f]or example, the location information is measured
`
`with use of a Cellular antenna and such an infrared ray sensor as a GSP, PHS, or the like.” ’498
`
`Patent at 5:53-56. Thus, the patents have disclosed the infrared ray sensor as examples of a data
`
`receiver, GPS, or PHS and does not require the “ device for getting location information denoting
`
`a present place of said portable terminal” to necessarily always have an infrared ray sensor in
`
`addition to the GPS, PHS, or data receiver as required by Apple’s limiting proposed construction.
`
`Apple’s proposal is excluding embodiments disclosed in the specification.
`
`48.
`
`In addition, Apple’s proposal uses the phrase “control unit” instead of a CPU. It is my
`
`opinion that the proper construction should include “CPU” because the patents explicitly state that
`
`“[t]he portable terminal 61 is provided with a CPU 71, which is a control unit.” ’498 Patent at
`
`9:30-31 (emphasis added). Given that specification defines the control unit as a CPU it is my
`
`opinion that a person of ordinary skill in the art would understand the structure to include a CPU.
`
`49.
`
`Apple’s proposal also attempts to limit the construction by requiring that the “control unit
`
`calculate[e] location information as disclosed in ’498 at 5:48-56 and Fig. 2.” First, it is unclear
`
`what Apple is referring to in Figure 2 and also there is no reason to limit the claim to Figure 2
`
`when additional figures also provide examples of calculating location information. See e.g., Fig. 1
`
`(showing distance of 200 meters from present location); Figs. 3(a)-3(f) (showing different
`
`scenarios where the walker’s present location is used to help him navigate); Fig. 4 (showing
`
`different stores relative to present location); Fig. 5 (showing distance of 200 meters from present
`
`location); Fig. 6 (“get location information); Fig. 7 (“get location information”); Fig. 8 (showing
`
`different roads/stores relative to present location).
`
`13
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 17 of 35 PageID #: 5827
`
`
`50.
`
`
`Apple proposes limiting the control unit’s functions using the disclosure at 5:48-56 but this
`
`unnecessarily excludes additional examples provided in the specification. For example, the ’498
`
`Patent explains:
`
`Furthermore, in the portable terminal of the present invention with
`the function of walking navigation, location information to get is
`represented by a latitude/longitude or coordinates and an altitude.
`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.
`The portable terminal of the present invention may also be
`provided with any one of the above methods for measuring a
`position or some possible methods combined for measuring a
`position.
`
`’498 Patent at 4:6-13.
`
`51.
`
`As an additional example, the ’498 Patent explains that it was known to get location
`
`information from a GPS system and without using an infrared ray sensor. ’498 Patent at 1:25-34;
`
`2:30-41. These examples in the patents indicate that the inventors were not limiting the CPU to
`
`perform only the calculation of location information as disclosed in ’498 at 5:48-56 but that the
`
`CPU/control unit could simply analyze received data to calculate the location information.
`
`52.
`
`It is correct that as one example, the patents disclose using latitude/longitude or coordinates
`
`and an altitude for purposes of determining location information but this is just an example and
`
`the claim is directed to a “device for getting location information” and there is no need to limit the
`
`claim to require CPU to calculate location information in the specific way recited in 5:48-56. The
`
`only function required to be performed by the CPU is analyzing and/or receiving the data as
`
`explicitly mentioned in the disclosed structure and claim. ’498 Patent at 9:43-47. In addition, a
`
`person of ordinary skill in the art would understand that analyzing received data by a CPU is
`
`sufficient to get location information when the received data could be from one or more of a
`
`14
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 18 of 35 PageID #: 5828
`
`
`
`wireless or cellular antenna, a GPS, a Personal Handyphone System (PHS), or the like; a data
`
`receiver as an infrared sensor, or the like.
`
`53.
`
`Thus, it is my opinion that this term should be construed consistent with the examples
`
`provided in the specification and should not be improperly limited as required by Apple’s proposal.
`
`“a device for getting direction information denoting an orientation of said portable
`terminal”
`
`Maxell’s Proposed Construction
`Governed by pre-AIA 35 U.S.C. § 112, ¶6
`
`Function: getting direction information
`denoting an orientation of said portable
`terminal
`
`Structure: a compass, gyroscope, and/or
`sensor such as a clinometer in conjunction
`with a CPU, or equivalents thereof
`
`Defendants’ Proposed Construction
`Governed by pre-AIA 35 U.S.C. § 112, ¶6
`
`Function: getting direction information
`[denoting an orientation of said portable
`terminal]
`
`Structure: a compass, a gyro, a sensor such
`as a clinometer, and a control unit for
`analyzing sensor-measured data; or
`equivalents thereof
`
`
`54.
`
`It is my understanding that the parties agree that this term is a means-plus-function term
`
`and I have analyzed it under the legal framework as explained to me by counsel. Further, the parties
`
`agree that the proper function is getting direction information denoting an orientation of said
`
`portable terminal.
`
`55.
`
`Even with respect to the structure, both Maxell and Apple have identified similar structures
`
`but Apple’s proposal is unduly limiting because it does not account for the alternative structures
`
`disclosed in the specification. Looking at the entirety of the specification, it is my opinion that a
`
`person of ordinary skill in the art will find that Maxell’s proposed structure is correct.
`
`56.
`
`It is correct that as an example of the device for getting direction information the patents
`
`disclose that a:
`
`device for getting direction information 78 is provided with a
`compass, a gyro, such a sensor as a clinometer, and a control unit
`
`15
`
`

`

`Case 5:19-cv-00036-RWS Document 136-11 Filed 11/18/19 Page 19 of 35 PageID #: 5829
`
`
`
`
`
`for analyzing sensor-measured data, thereby calculating direction
`information.
`
`’498 Patent at 9:44-47.
`
`57.
`
`But this is not the only disclosure of the corresponding structure. For example, the patents
`
`also disclose that:
`
`[d]irection information to get is a direction and/or an angle of
`elevation representing the leading direction of the portable terminal
`or the orientation of the display. For ex