Case 5:19-cv-00036-RWS Document 136-12 Filed 11/18/19 Page 1 of 3 PageID #: 5846
`Case 5:19-cv-00036—RWS Document 136-12 Filed 11/18/19 Page 1 of 3 PageID #: 5846
`
`EXHIBIT 12
`
`EXHIBIT 12
`
`

`

`Case 5:19-cv-00036-RWS Document 136-12 Filed 11/18/19 Page 2 of 3 PageID #: 5847
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`
`
`
`Defendant.
`
`DECLARATION OF DR. JOSEPH A. PARADISO IN SUPPORT OF
`APPLE INC.’S PROPOSED CLAIM CONSTRUCTIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 136-12 Filed 11/18/19 Page 3 of 3 PageID #: 5848
`
`
`some means of indoor location determination, likely an infrared sensor, would be required to
`
`cover as many potential use scenarios as possible. Extrinsic evidence confirms that a POSITA at
`
`the time of the alleged invention would have known that an infrared ray sensor was commonly
`
`used, in conjunction with GPS, to obtain location information. Specifically, those skilled in the
`
`art understood that infrared ray sensors were especially adept at determining location when a
`
`walking user is indoors. See, e.g.:
`
`• Starner at 1-2 (noting that radio frequencies used for GPS at that time prevented GPS
`from being effective indoors and proposing a solution that incorporates the use of a
`system of infrared receivers and transmitters);
`
`• Abowd at 8-9 (noting the same problem and proposing as a solution the use of infrared
`receivers tuned to the same frequency as intermittently placed infrared beacons); and
`
`• Marmasse, “comMotion: a context-aware communication system,” Mass. Inst. of Tech.
`(Sept. 1999) (noting the use of infrared receivers and transmitters for “interior location
`sensing”).
`
`32.
`
`I have also been informed that the Patent Trial and Appeal Board adopted in
`
`IPR2019-00071 (ASUSTek Computer Inc., et al. v. Maxell, Ltd.) the construction that Apple now
`
`proposes. There, the Petitioner ASUSTek proposed the same construction offered by Apple
`
`here, and Maxell did not dispute it. The PTAB noted that the construction was “supported by the
`
`cited portions of the Specification of the ’498 patent” (IPR2019-00071, Paper No. 7 at 9) which
`
`were also excerpted above.
`
`33.
`
`I therefore agree with Apple’s proposed construction because it reflects the
`
`understanding of a POSITA as of the priority date of the Asserted Navigation Patents: July 12,
`
`1999.
`
`34.
`
`I am further informed that Maxell agrees that this term should be construed in
`
`means-plus-function format, but contends that the function should be “getting location
`
`information denoting a present place of said portable terminal” and that the corresponding
`
`structure is “a wireless or cellular antenna, a GPS, a PHS, or the like; such a data receiver as an
`
`12
`
`