Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 1 of 20 PageID #: 17319
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`vs.
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`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 5:19-cv-00036-RWS
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`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`APPLE INC.’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF SUBJECT
`MATTER INELIGIBILITY UNDER 35 U.S.C. § 101 FOR U.S. PATENT NOS. 6,748,317,
`6,430,498, AND 6,580,999
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`

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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 2 of 20 PageID #: 17320
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`III.
`IV.
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`V.
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`B.
`
`STATEMENT OF ISSUE.................................................................................................. 1 
`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................ 1 
`A.
`Summary Of The ’317, ’498, And ’999 Patents (“Navigation Patents”) ............... 1 
`B.
`State Of The Known Art ........................................................................................ 4 
`C.
`Maxell’s Prior Litigation Against ZTE .................................................................. 5 
`LEGAL STANDARDS ..................................................................................................... 5 
`ARGUMENT ..................................................................................................................... 6 
`A.
`Alice Step One: The Asserted Claims Are Directed To An Abstract Idea ............ 6 
`1.
`The Asserted Claims Are Directed To The Idea Of Presenting
`Navigation And Location Information To A Walking User ...................... 6 
`The Asserted Claims’ Idea Of Presenting Navigation And Location
`Information To A Walking User Is A Basic, Ancient Human
`Activity ...................................................................................................... 7 
`The Asserted Claims Do Not Recite A Specific Technical
`Improvement In Computer Capabilities, But Only Desired Results.......... 8 
`The Asserted Claims’ Idea Has Been Found Abstract In Past Cases ...... 10 
`4.
`Alice Step Two: The Asserted Claims Do Not Disclose An Inventive
`Concept ................................................................................................................ 11 
`1.
`The Claimed Subject Matter Is Not Inventive Or Technological ............ 12 
`2.
`Prior Art Confirms The Lack Of An Inventive Concept ......................... 14 
`CONCLUSION ................................................................................................................ 15 
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`2.
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`3.
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`
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`-i-
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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 3 of 20 PageID #: 17321
`TABLE OF AUTHORITIES
`
`
`Pages
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`Cases 
`
`Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................... 5, 6, 11, 12
`
`Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016) ................................................................................................ 14
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016) .................................................................................................. 9
`
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018) ................................................................................................ 13
`
`Enfish LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) .................................................................................................. 9
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .................................................................................................. 6
`
`Location Based Servs., LLC v. Niantic, Inc.,
`295 F. Supp. 3d 1031 (N.D. Cal. 2017) .................................................................................... 11
`
`Maxell, Ltd. v. ZTE Corp., et al.,
`No. 5:16-cv-00179-RWS (E.D. Tex.) ......................................................................................... 5
`
`Move, Inc. v. Real Estate All., Ltd.,
`221 F. Supp. 3d 1149 (C.D. Cal. 2016), aff’d, 721 F. App’x 950 (Fed. Cir. 2018) ................. 11
`
`Peschke v. Rouse Properties,
`168 F. Supp. 3d 881 (E.D. Va. 2016) ....................................................................................... 11
`
`Rothschild v. Geotab USA
`No. 6:15-CV-682-RWS-JDL, 2016 WL 3584195 (E.D. Tex. Jan. 4, 2016) ............................ 11
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018) ................................................................................................ 13
`
`Thales Visionix Inc. v. U.S.,
`850 F.3d 1343 (Fed. Cir. 2017) .................................................................................................. 7
`
`Rules 
`
`Fed. R. Civ. P. 56(a) ....................................................................................................................... 5
`
`
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`ii
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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 4 of 20 PageID #: 17322
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`Defendant Apple Inc. (“Apple”) moves for partial summary judgment that the asserted
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`claims of three related patents―U.S. Patent Nos. 6,748,317, 6,580,999, and 6,430,498 (the
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`“Navigation Patents”)―are directed to ineligible subject matter under 35 U.S.C. § 101 and Alice.
`
`At Alice step one, the Navigation Patents’ claims are directed to the abstract idea of
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`presenting navigation and location information to a walking user. Humans have used maps with
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`arrows and symbols to aid in walking navigation since the prehistoric age. The Navigation Patents
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`simply carry out these activities in a conventional computer environment with generic components
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`like a “portable terminal,” “input device,” and “display.” By their own terms, the Navigation
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`Patents do not claim any improved portable navigation device. Rather, the patents adopt primitive
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`techniques for displaying routes (e.g., arrows or lines), precisely because they were simpler than
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`prior art techniques and compatible with existing prior art devices.
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`At Alice step two, the claims do not disclose an inventive concept as they recite only
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`conventional “devices” performing routine functions. The “devices” are combined to form a
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`“portable terminal,” which the specification itself characterizes as a “conventional,” “low in
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`performance” and “just like” an “ordinary portable telephone.” On this same record, in a prior
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`lawsuit before this Court concerning the ’317 Patent, a jury found the claims “well-understood,
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`routine, and conventional.” Accordingly, the Navigation Patents are invalid under § 101.
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`I.
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`STATEMENT OF ISSUE
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`Whether Claims 1 and 17 of the ’317 Patent, Claims 3 and 13 of the ’498 Patent, and Claim
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`3 of the ’999 Patent (“Asserted Claims”) are invalid under 35 U.S.C. § 101.
`
`II.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`A.
`
`Summary Of The ’317, ’498, And ’999 Patents (“Navigation Patents”)
`
`1.
`
`Plaintiff Maxell asserts ten patents against Apple, including the three Navigation
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`Patents. D.I. 111. The Navigation Patents, each titled “Portable Terminal With The Function Of
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`1
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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 5 of 20 PageID #: 17323
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`Walking Navigation,” are in the same family, share a common specification, and all claim priority
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`to July 12, 1999. ’317 (Ex. A) at Cover; ’498 (Ex. B) at Cover; ’999 (Ex. C) at Cover.
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`2.
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`The alleged invention is “a portable terminal provided with the function of walking
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`navigation, which can supply location-related information to the walking user.” ’317 at 1:16-18.
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`The specification admits that displaying location-related information to a walking user through
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`“maps and other map-related contents” was known in “conventional” prior art devices, such as a
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`“conventional PDA terminal with GPS.” Id. at 1:19-49, 2:3-39. The only problem the
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`specification identifies in the prior art is that “portable telephones . . . [were] low in processing
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`capacity” and had “small-size display screen[s],” and were thus unable to clearly display maps.
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`Id. at 1:31-38, 1:46-52, 3:20-26, 3:64-66.
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`3.
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`Rather than display maps, the specification proposes displaying navigation
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`information in three simpler ways that would be compatible with the small screens of existing
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`portable devices, as depicted in Figures 3(a)-(f) below: (1) showing an arrow to the destination
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`along with distance indicators (Figs. 3(a)-(b)); (2) showing a turn arrow to indicate the next turn
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`to reach the destination (Figs. 3(c)-(d)); and (3) showing a segment of the overall route as a “bent”
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`line and the user’s current position along the line (Figs. 3(e)-(f)). Id. at 6:51-7:10.
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`2
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`4.
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`The lines and arrows of Figure 3 are displayed using a “portable terminal” that is
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`“assumed to be low in performance just like a portable telephone and a PHS [Personal Handyphone
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`System].” Id. at 9:64-67. The specification identifies the components within its “portable
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`terminal” as a “CPU” and other generic “devices,” including a “display device,” “input device,”
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`“memory device,” “device for data communication,” “device for getting location information,”
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`and “device for getting direction information.” Id. at 9:42-59, Fig. 10. These components are “just
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`like those of ordinary portable telephones and PHS terminals.” Id. at 2:62-3:1.
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`5.
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`The asserted claims are directed to a “portable terminal” for “walking navigation”
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`comprising generic “devices” as in the specification and applies them to display directions using
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`the basic lines and arrows of Figure 3. The ’317 Patent, Claim 1 is representative and recites:
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`A portable terminal, comprising:
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`a device for getting location information denoting a [p]resent place
`of said portable terminal;
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`a device for getting a direction information denoting an orientation
`of said portable terminal;
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`an input device for inputting a destination; and
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`a display, wherein said display displays positions of said
`destination and said present place, and a relation of said direction
`and a direction from said present place to said destination, and
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`said display changes according to a change of said direction of said
`portable terminal orientation for walking navigation.
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`6.
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`The other asserted claims recite only minor variations. For example, some claims
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`recite that navigation information is displayed using a simple “arrow” or “bent line” (’317 at
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`Claim 17; ’498 at Claim 13), and/or “symbols” (’999 at Claim 3), as depicted in Figure 3. Two
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`claims are directed to applying these same techniques to locating and displaying directions to
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`“another portable terminal” or a “partner’s portable terminal.” ’498 at Claim 13; ’999 at Claim 3.
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`3
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`

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`B.
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`7.
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`State Of The Known Art
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`In his deposition, Maxell’s expert, Dr. Craig Rosenberg, testified that the
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`Navigation Patents are not “about improvements to hardware and all of [the components] that
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`we’re talking about right now, a compass, gyroscope, a sensor such as a clinometer, a CPU.” Ex.
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`D at 69:9-25, 205:2-10; see also id. at 54:5-15, 60:10-23, 71:11-72:3, 86:9-20. He also testified
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`that the patents “don’t require any specific arrangement of the components.” Id. at 46:47:4.
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`8.
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`Dr. Rosenberg added that “the patents seem to me are clearly about user interface
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`enhancement as opposed to hardware enhancement.” Id. at 209:25-210:10. But he conceded that
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`the Navigation Patents’ user interface of displaying a “direction indicator” or “route line” was
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`known by 1999 in the “context of portable devices.” Id. at 78:2-24. He also testified that the user
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`interface “presents navigation information on a small size screen . . . through lines, arrows,” and
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`thus presents “less or simpler information” compared to the prior art. Id. at 206:4-7, 209:5-15.
`
`9.
`
`Dr. Rosenberg opined that although the recited hardware components and user
`
`interfaces were known in the “context of portable devices,” he was not aware of them being applied
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`to the “context of walking navigation.” Id. at 8:16-24, 60:10-23, 78:2-24. But Dr. Rosenberg
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`admitted that no part of the specification suggested “walking navigation wasn’t known or was
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`impossible in the prior art.” Id. at 17:21-19:1. Dr. Rosenberg also conceded that “walking
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`navigation” is a human activity and “[p]eople have used maps, papers, and pencils, and other pre-
`
`computer devices to engage in walking navigation before computers.” Id. at 83:2-19.
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`10.
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`Apple’s expert, Dr. Joseph Paradiso, opined that prior art references applied the
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`simplified user interfaces claimed by the Navigation Patents to walking navigation, including:
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`a. In January 1999, Garmin sold the NavTalk GPS cellular phone that displayed real-
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`time navigation information with direction arrows and “route lines.” See Ex. E at 67-71; Ex. F at
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`¶¶ 132-44. A former Garmin engineer, Kent Broddle, testified that NavTalk’s intended uses
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`4
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`included outdoor activities like hiking and gave examples of how NavTalk could be used for
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`walking navigation. Ex. G at 47:11-48:1, 159:25-162:4.
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`b. U.S. Patent No. 6,067,502 (“Hayashida”), filed in 1997, disclosed a portable
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`navigation device that could be used for hiking and displayed real-time navigation information
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`using route lines and direction arrows. Ex. H at 22:32-38, 29:66-30:6, 34:52-67, 76:5-20, Figs.
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`17, 23, 32, 33; Ex. F at ¶¶ 153-60.
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`C. Maxell’s Prior Litigation Against ZTE
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`11.
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`In 2016, Maxell sued ZTE (USA) Inc., alleging infringement of the ’317 Patent,
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`among other patents. Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-00179-RWS (E.D. Tex.)
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`(“ZTE Action”). During the ZTE Action, this Court denied ZTE’s motion for summary judgment
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`that the ’317 Patent’s claims are invalid under § 101, finding that there was a fact dispute as to
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`whether the claims covered an inventive concept under Alice step two. Ex. I at 9-10.
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`12.
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`The jury later resolved this fact dispute: following a seven-day trial and after
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`hearing all of the parties’ evidence, the jury found that the claim elements of Claim 1 of the ’317
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`Patent to be “well-understood, routine, and conventional.” Ex. J at 7.
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`13.
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`ZTE filed a Motion for Judgment as a Matter of Law requesting that the Court find
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`Claim 1 of the ’317 Patent invalid under § 101. See Ex. K. The parties settled before the Court
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`decided the motion. See Ex. L.
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`III. LEGAL STANDARDS
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`Summary judgment should be granted “if the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). The Supreme Court has established a two-step framework for determining when a claim is
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`invalid under § 101. The court must first determine whether a claim is “directed to” a patent-
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`ineligible abstract idea. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014). If a claim is
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`5
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`directed to an abstract idea, the court moves to step two where the court considers the elements of
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`each claim individually and “as an ordered combination” to determine whether the additional
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`elements “transform the nature of the claim” into a patent-eligible application. Id.
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`IV. ARGUMENT
`A. Alice Step One: The Asserted Claims Are Directed To An Abstract Idea
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`The asserted claims are directed to presenting navigation and location information to a
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`walking user. This idea is abstract because: (1) it is an ancient activity; (2) it does not improve
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`computer capabilities, but instead invokes conventional computers to display directions in
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`primitive ways, simpler than the prior art; and (3) courts have rejected similar ideas as abstract.
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`1.
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`The Asserted Claims Are Directed To The Idea Of Presenting
`Navigation And Location Information To A Walking User
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`At Alice step one, the claims are considered in their entirety to ascertain whether their
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`“character as a whole” is directed to excluded subject matter. Internet Patents Corp. v. Active
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`Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Here, the claims demonstrate that their basic
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`idea is presenting navigation and location information to a walking user. Claim 3 of the ’999
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`Patent and Claims 3 and 13 of the ’498 Patent each begin with a preamble that discloses a “portable
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`terminal” with the “function of walking navigation.” Claim 17 of the ’317 Patent similarly
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`begins with preamble “[a] portable terminal with walking navigation,” and Claim 1 of the ’317
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`Patent recites a “portable terminal” with a “display . . . for walking navigation.”
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`The body of each claim recites generic “devices” used to obtain navigation-related
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`information and then display it. All the claims recite that the “portable terminal” includes a “device
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`for getting location information” and “device for getting a direction information.” Using the
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`obtained information, directions to a destination are displayed using basic lines or arrows that are
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`intended to be simpler than prior art display interfaces and compatible with existing “low in
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`6
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`performance” portable devices with small screens. The ’3 17 Patent, Claim 1 recites “display[ing]
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`positions of said destination and said present place, and a relation of said direction and a direction
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`from said present place to said destination.” Similarly, Claim 17 of the ’3 17 Patent and Claim
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`13 of the ’498 Patent recite displaying a “route with a bent line using symbols” while Claim 3 of
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`the ’498 Patent recites using the “orientation and length of a line” to denote direction and distance.
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`The common specification confirms the claims’ core idea.
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`It explains that the alleged
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`invention is “a portable terminal provided with the function of walking navigation, which can
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`supply location-related information to the walking user.” ’3 17 at 1:16-18. It also confirms that
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`the “devices” in the claims are used only to obtain location and direction and that the patents’ goal
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`is to display “route information,” “location information of both present place and
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`destination,” and “direction and distance” as in Figure 3. Id. at 6:27-7:42. Further, Maxell’s
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`expert Dr. Rosenberg characterized the patents as trying “to solve the problem of walking
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`navigation.” Ex. D at 8: 16-24. The claims, specification, and Maxell’s expert all support that the
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`the asserted claims’ idea is presenting navigation and location information to a walking user.
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`2.
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`The Asserted Claims’ Idea Of Presenting Navigation And Location
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`Information To A Walking User Is A Basic, Ancient Human Activity
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`The abstract nature of the Navigation Patents is confirmed by the fact that they merely
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`claim using generic “devices” to carry out a “mental process[] that could be performed by humans”
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`with paper, pen, and maps, as the following analogy demonstrates. Ilmles Visionix, Inc. v. US,
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`850 F.3d 1343, 1346-47 Ged. Cir. 2017).
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`location.
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`A paper map (“device for getting location
`information”) that shows the terrain and
`landmarks of a region and helps Alice find her
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`’317 Patent, Claim 1
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`A portable terminal, comprising:
`a device for getting location information
`denoting a [p]resent place of said portable
`terminal;
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`’317 Patent, Claim 1
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`a device for getting a direction
`information denoting an orientation of
`said ortable terminal;
`
`Alice looks at a compass (“device for getting a
`direction information”) to determine that she is
`facin East.
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`an input device for inputting a destination; Alice uses a pencil (“input device for inputting a
`destination” to mark a destination on the ma .
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`and a display, wherein said display
`displays positions of said destination and
`said present place, and a relation of said
`
`Alice looks at her compass and map, which has
`North facing up, and after determining that the
`destination is South, draws an arrow pointing
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`
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`direction and a direction from said present South on the map from her current location to the lace to said destination, and
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`Alice turns South to walk towards the destination.
`said display changes according to a
`Alice then turns the paper map so that North on
`change of said direction of said portable
`the map matches North on her compass.
`terminal orientation for walking
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`navigation.
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`destination
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`This analogy is easily extended to apply to the other asserted claims. To satisfy the
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`limitation of displaying the route with “a bent line” and “symbols” (’317: Claim 17, ’498: Claim
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`13, ’999: Claim 3), Alice could draw on the paper map circles around her location and the
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`destination, and a route line between them. To satisfy the limitation of displaying “distance
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`information between said locations” (’498: Claim 3), Alice could write an estimated distance on
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`the map based on the map’s scale. To satisfy claims requiring two terminals to share their locations
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`(’498: Claim 13, ’999: Claim 13), Alice could radio her location to a friend.
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`These analogies are not oversirnplifications or contrived. Maxell’s expert Dr. Rosenberg
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`himself analogized walking navigation to the “common” activity of “one person .
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`.
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`. tell[ing]
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`another person verbally how to get from A to B without a computer.” Ex. D at 80:21-81:16. He
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`also agreed that “[p]eople have used maps, papers, and pencils, and other pre—computer devices to
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`engage in walking navigation before computers.” Id.
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`3.
`
`The Asserted Claims Do Not Recite A Specific Technical
`Improvement In Computer Capabilities, But Only Desired Results
`
`Under Enfish LLC v. Microsoft Corp, at Alice step one, courts should assess “whether the
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`focus of the claims is on the specific asserted improvement in computer capabilities .
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`.
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`. or, instead,
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`on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”
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`822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Applying Enfish, the Navigation Patents do not claim
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`any improved computer technology, such as an improved portable terminal. Instead, they admit
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`that the claimed “portable terminal” is “just like those of ordinary portable telephones and PHS
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`terminals” that already existed. ’317 at 2:62-3:1. Although the specification identifies the inability
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`of such “ordinary” prior art terminals to display maps (id. at 1:49-52), the proposed solution is not
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`to improve the capabilities of those terminals so that they could display maps. Rather, as Maxell’s
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`expert Dr. Rosenberg described, the patents propose displaying interfaces with “less or simpler
`
`information” compared to prior art interfaces by presenting basic arrows and lines as humans have
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`done using “maps, papers, and pencils . . . before computers.” Ex. D at 200:15-201:13, 206:4-7.
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`Further, “a claim that merely describes an ‘effect or result dissociated from any method by
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`which [it] is accomplished’ is not directed to patent-eligible subject matter.” Apple, Inc. v.
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`Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016). Here, every claim recites a “portable
`
`terminal” comprising a few generic “devices,” each performing a function that is recited at only
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`the highest level of generality―e.g., “a device for getting location [or direction] information,” “an
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`input device for inputting direction,” “a display” that “displays positions . . . and a direction,” and
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`a “device for getting the location information of another portable terminal.” ’317 at Claim 1; ’999
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`at Claim 3. These recitations are so broad and generic that they amount to little more than a wish
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`list of desired results. They are broad even under the Court’s constructions. The Court construed
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`four terms as means-plus-function limitations, with three distinct structures:
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` “a device for getting location information denoting a present place of said portable
`terminal” construed to have a structure of: “a wireless or cellular antenna, a GPS, a PHS,
`or the like; a data receiver; and a CPU for analyzing received data; or equivalents
`thereof.” D.I. 235 at 15.
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` “a device for getting a direction information denoting an orientation of said portable
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`9
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`terminal” construed to have a structure of: “a compass, gyroscope, and/or sensor such as
`a clinometer in conjunction with a CPU, or equivalents thereof.” D.I. 167 at 22-23.
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` “a device for getting the location information of another portable terminal” construed to
`have a structure of: “CPU 71 and device for data communication 76 of a portable
`telephone and a Personal Handyphone System (PHS) terminal (Figure 10, ’317 Patent
`at 9:40-50); or equivalents thereof.” D.I. 235 at 18.
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`The components in the defined structures are generic and conventional. In fact, every one
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`of them is described in columns 9-10 and Figure 10 of the specification as being part of a “portable
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`terminal [that] is assumed to be low in performance just like a portable telephone and a PHS.”
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`’317 at 9:40-10:22; see id. at 9:51-54 (describing “wireless antenna, a GPS, a PHS . . . data
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`receiver”), 9:56-59 (describing “compass, a gyro[scope]” or “clinometer”), 9:42-43 (describing
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`“GPS”); see also id. at 2:36-39 (describing “conventional PDA terminal with GPS”). The
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`specification emphasizes that the collection of these components together is typical of an existing,
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`“ordinary portable telephone and a PHS terminal.” Id. at 9:48-49, 2:62-66.
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`Maxell’s expert Dr. Rosenberg confirmed that the patents disclose no “improvements to
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`hardware” and that none of the user interfaces or structures in the Court’s means-plus-function
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`constructions were invented or improved by the patents. Ex. D at 46:3-47-4, 54:5-15, 60:10-23,
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`69:9-25, 86:9-20, 205:2-10. He contended only that no portable terminal with those elements had
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`been applied to the “context of walking navigation.” Id. at 60:10-23, 78:2-24. But even accepting
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`Dr. Rosenberg’s contention, applying known technologies to the human activity of “walking
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`navigation” does nothing to improve computer capabilities. The claims thus fail under Enfish.
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`4.
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`The Asserted Claims’ Idea Has Been Found Abstract In Past Cases
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`Courts have found claims directed to presenting navigation and location information
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`abstract in past cases. In Rothschild v. Geotab USA, this Court found claims reciting “a processing
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`module configured to . . . determine route guidance based on the location of the first positional
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`information device and the received address” and “a display module for displaying the route
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`guidance” were abstract. No. 6:15-CV-682-RWS-JDL, 2016 WL 3584195, at *2 (E.D. Tex. Jan.
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`4, 2016). The “route guidance” in Rothschild is comparable to the asserted claims’ “portable
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`terminal” that displays “route,” “distance,” and/or “direction” from a location to a destination.
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`Further, the Rothschild court reasoned that the claims at issue were directed to “a well-understood,
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`fundamental concept of retrieving and sending data along with the requirement that it be performed
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`between two ‘positional information devices.’” Id. at *5. This “fundamental concept” of
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`exchanging data between two “positional information devices” parallels ’999 Patent, Claim 3 and
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`’498 Patent, Claim 13, which recite retrieving “location information of another portable terminal”
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`and “location information from [a] partner’s portable terminal,” respectively.
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`Numerous other decisions have invalidated similar patents directed to the display of
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`navigation and location information without disclosing a technological improvement, including:
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` A patent directed to a “computer based map navigation and display system” that used
`“navigation symbols correspond[ing] to different physical directions.” Peschke v.
`Rouse Properties, 168 F. Supp. 3d 881, 885 (E.D. Va. 2016).
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` A patent directed to a “method for providing map-related data” consisting of “receiving
`a request for information,” “determining status of locations on the map” and
`“generating a signal to display on the map.” Location Based Servs., LLC v. Niantic,
`Inc., 295 F. Supp. 3d 1031, 1045 (N.D. Cal. 2017).
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` A patent directed at the idea of “displaying … information on a digital map that can be
`manipulated by the user.” Move, Inc. v. Real Estate All., Ltd., 221 F. Supp. 3d 1149,
`1162 (C.D. Cal. 2016), aff’d, 721 F. App’x 950 (Fed. Cir. 2018).
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`B. Alice Step Two: The Asserted Claims Do Not Disclose An Inventive Concept
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`At Alice step two, the Court asks whether the claims recite an “inventive concept.” Alice,
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`573 U.S. at 217-18. Here, the inventive concept inquiry and any related factual disputes were
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`resolved by the jury’s verdict in the prior ZTE Action before this Court. Addressing a verdict
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`question directed to Alice step two, the jury found Claim 1 of the ’317 Patent to be “well-
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`understood, routine, and conventional.” Ex. J at 7. Because the other four asserted claims are
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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 15 of 20 PageID #: 17333
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`directed to the same “portable terminal” with the same component “devices” performing similar
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`routine steps as Claim 1 of the ’317 Patent, the jury’s finding applies equally to those claims.
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`It is unnecessary and wasteful to ask another jury to decide the inventive concept inquiry
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`again for a second time. This is particularly true given that the jury’s finding in the ZTE Action
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`is well supported by the intrinsic record, Maxell’s own expert, and prior art as detailed below.
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`1.
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`The Claimed Subject Matter Is Not Inventive Or Technological
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`Alice established that applying an abstract idea to “purely functional and generic”
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`computers fails to add an inventive concept. 573 U.S. at 226. Yet that is exactly what the asserted
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`claims do here. The claims each recite a generic “portable terminal,” comprising a few equally
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`generic “devices.” The specification emphasizes that the claimed “portable terminal” is “just like
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`those of ordinary portable telephones and PHS terminals.” E.g., ’317 at 2:62-3:1.
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`There is no merit to any contention by Maxell that the Court’s means-plus-function claim
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`constructions make the claims sufficiently narrow and specific to pass muster. As discussed above
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`in Section V.A.3, even under the Court’s constructions, the terminal’s component “devices”
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`comprise nothing more than conventional parts like a CPU, GPS, compass, or equivalents thereof.
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`Maxell’s expert Dr. Rosenberg confirmed that the patents were not “about improvements to
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`hardware” and that the specific structures in the Court’s means-plus-function constructions were
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`all known in the prior art. Ex. D at 54:5-15, 60:10-23, 69:9-25, 86:9-20, 205:2-10. What’s more,
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`the function of each “device”―e.g., “getting location information,” “getting direction
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`information”―is similarly routine and recited in a cursory manner as desired results.
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`As an ordered combination, the component “devices” also fail to disclose an inventive
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`concept. Collectively, the “devices” make up a “portable terminal” that the specification
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`characterizes as “conventional,” “low in processing capacity,” “low in performance,” and typical
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`of “an ordinary portable telephone and a PHS terminal.” ’317 at 2:37-39, 3:64-66; 9:40-49,
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`Case 5:19-cv-00036-RWS Document 378 Filed 07/02/20 Page 16 of 20 PageID #: 17334
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`9:64-67. The claims recite no specific arrangement of the “devices” and the specification requires
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`no arrangement either, as Figure 10 just depicts the “devices” as blocks within a larger block that
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`is a “portable terminal.” Id. at Fig. 10, 9:40-63. Dr. Rosenberg confirmed that the patents “don’t
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`require any specific arrang