Case 5:19-cv-00036-RWS Document 438 Filed 07/24/20 Page 1 of 24 PageID #: 24142
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSITION TO 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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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 438 Filed 07/24/20 Page 2 of 24 PageID #: 24143
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`Table of Contents
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`PAGE
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`I.
`II.
`III.
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`IV.
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`RESPONSE TO STATEMENTS OF ISSUES AND UNDISPUTED FACTS ................ 2
`LEGAL STANDARDS ..................................................................................................... 3
`ARGUMENT ..................................................................................................................... 3
`A.
`Claim 1 of the ’317 Patent is Not a Representative Claim .................................... 4
`B.
`The Challenged Claims are Valid at Alice Step-One ............................................ 5
`1.
`Claims 1 and 17 of the ’317 Patent (“Walking Navigation Claims”) ........ 7
`2.
`Claim 3 of the ’999 Patent (“Locate a Friend Claim”) .............................. 9
`3.
`Claim 3 (“Walking Navigation and Display Orientation Claim”)
`and Claim 13 (“Locate a Friend and Display Orientation Claim”)
`of the ’498 Patent ..................................................................................... 10
`The Challenged Claims are Valid at Alice Step-Two .......................................... 12
`C.
`CONCLUSION ................................................................................................................ 15
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ...................................................................................................................3
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..........................................................................................13, 14
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`Cellspin Soft, Inc. v. Fitbit, Inc.,
`927 F.3d 1306 (Fed. Cir. 2019)..................................................................................................3
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`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`880 F.3d 1356 (Fed. Cir. 2018)..............................................................................................3, 7
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`CXT Sys. v. Acad., Ltd.,
`No. 2:18-CV-00171, 2019 U.S. Dist. LEXIS 51915 (E.D. Tex. March 19,
`2019) ..................................................................................................................................4, 5, 9
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`Data Engine Techs. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018)......................................................................................7, 8, 9, 11
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`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)............................................................................................1, 12
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`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..........................................................................................2, 3, 5
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`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00161, 2020 U.S. Dist. LEXIS 14412 (E.D. Tex. Jan. 29, 2020) ....................4, 5
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`IDB Ventures, LLC v. Charlotte Russe Holdings, Inc.,
`No. 2:17-CV-660, 2018 U.S. Dist. LEXIS 186215 (E.D. Tex. Oct. 31, 2018) .........................7
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`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)..................................................................................................3
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`PPS Data, LLC v. Jack Henry & Assocs.,
`404 F. Supp. 3d 1021 (E.D. Tex. 2019) .....................................................................................4
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`Uniloc USA, Inc. v. LG Elecs. USA, Inc.,
`957 F.3d 1303 (Fed. Cir. 2020)..................................................................................................7
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`X One, Inc., v. Uber Technologies, Inc.,
`239 F. Supp. 3d 1174 (N.D. Cal. 2017) ...................................................................................12
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`Case 5:19-cv-00036-RWS Document 438 Filed 07/24/20 Page 4 of 24 PageID #: 24145
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`Statutes
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`35 U.S.C. § 101 ................................................................................................................................3
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`35 U.S.C. § 282(a) ...........................................................................................................................4
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`ii
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`Case 5:19-cv-00036-RWS Document 438 Filed 07/24/20 Page 5 of 24 PageID #: 24146
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`APPENDIX 1: CLAIM LANGUAGE AT ISSUE
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`U.S. Patent No. 6,748,317
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`1. A portable terminal, comprising:
`a device for getting location information denoting a [p]resent place of said portable
`terminal;
`a device for getting a direction information denoting an orientation of said portable
`terminal;
`an input device for inputting a destination; and
`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
`said display changes according to a change of said direction of said portable
`terminal orientation for walking navigation.
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`15. A portable terminal with walking navigation according to claim 1, further comprising:
`a device for retrieving a route from said present place to said destination,
`wherein said display displays said route and displays a direction of movement by the
`arrow.
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`17. A portable terminal with walking navigation according to claim 15,
`wherein said display displays said route with a bent line using symbols denoting starting
`and ending points and displays symbols denoting said present place on said route.
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`U.S. Patent No 6,430,498
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`1. A portable terminal with the function of walking navigation, comprising
`a device for getting location information denoting a present place of said portable
`terminal; and
`a device for getting direction information denoting an orientation of said portable
`terminal,
`wherein a direction and a distance of a destination from said present place are denoted
`with an orientation and a length of a line that is distinguished between starting and
`ending points to supply route guidance information as said walking navigation
`information.
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`3. A portable terminal with the function of walking navigation according to claim 1,
`wherein said device for getting direction information gets orientation information of a
`display of said portable terminal.
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`10. A portable terminal with the function of walking navigation, comprising
`a device for getting location information denoting a present place of said portable
`terminal; and
`a device for getting direction information denoting an orientation of said portable
`terminal,
`wherein location of a user is of said portable terminal is determined according to said
`location information and said direction information,
`wherein location of a partner of the user is determined according to a location
`information from the partner's portable terminal, and
`wherein a full route from said starting point to said destination is shown with a bent line
`that is distinguished between starting and ending points and said present place is
`shown with a symbol on said line to supply said route guidance information as
`said walking navigation information.
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`13. The portable terminal with said function of walking navigation according to claim 10,
`wherein said device for getting direction information gets orientation information of a
`display of said portable terminal.
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`U.S. Patent No 6,580,999
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`1. A portable terminal with the function of walking navigation, comprising:
`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; and
`a device for getting the location information of another portable terminal,
`wherein a direction from said present place to the location of said another portable
`terminal is displayed with the distance information between said locations to
`supply route guidance information as said walking navigation information.
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`3. A portable terminal with the function of walking navigation according to claim 1;
`wherein said direction from said present place to the location of said another portable
`terminal is displayed using the symbols denoting the said present location and
`said location of another portable terminal.
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`Apple’s motion is an attempt to erase a genuine invention, something even Apple’s own
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`expert admits could not be done before the asserted patents came along. According to Dr.
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`Paradiso (Apple’s expert on the subject), in or around 1999—a decade before the first iPhone
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`with GPS—engineers at Nokia, MIT, and Microsoft were experimenting with ways to improve
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`the ability of cellular phones to calculate location accurately. Ex. A (Paradiso Claim
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`Construction Dep. Tr.) at 38:9-18, 39:16-40:11 (discussing shortcomings of Nokia phones with
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`GPS, Microsoft radar, and the system Dr. Paradiso was developing at MIT). As confirmed by Dr.
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`Paradiso, this was because “GPS was very limited use”; cellular positioning and GPS positioning
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`“quite often didn’t even work [indoors], so not even being accurate, they just wouldn’t work;”
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`and “[o]utdoors there were challenges [with GPS positioning systems]”; “radio location—ultra-
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`wideband was in its infancy and still very flaky”; and Microsoft’s radar “was still very flaky in
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`terms of how well you knew where someone was.” Ex. A (Paradiso CC Dep. Tr.) at 38:9-18,
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`40:19-24, 39:16-40:11. Providing accurate location information to a portable terminal was “a
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`problem specifically arising in the realm of [mobile/GPS] networks.” DDR Holdings, LLC v.
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`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
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`To overcome these challenges, the inventors of U.S. Patent Nos. 6,748,317 (the “’317
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`Patent”), 6,430,498 (the “’498 Patent”), and 6,580,999 (the “’999 Patent”) (collectively, the
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`“Navigation Patents”) proposed various solutions. These solutions included novel arrangements
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`of hardware1 such as a “device for getting location information” being included with “a device
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`for getting direction information denoting an orientation” and/or “an input device,” “a device for
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`1 Dr. Paradiso agreed that the various claims require specific combinations of hardware. See Ex.
`B (Paradiso Claim Construction Decl. (Oct. 4, 2019)) at ¶ 31 (“to achieve the goal of walking
`navigation, a POSITA would have understood, consistent with the disclosures in the
`specification, that a combination of GPS and some means of indoor location determination,
`likely an infrared sensor, would be required”).
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`retrieving a route” or a “device for getting the location information of another portable terminal.”
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`Using these new arrangements of hardware, a portable terminal could generate and display novel
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`user interfaces and thus was an improved navigation device that facilitated walking navigation
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`by overcoming the accuracy challenges of devices using GPS or cellular-location of that time.
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`Apple argues that the inventors of the Navigation Patents should never have been granted
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`these patents at all—not because the claimed solutions already existed or because they might
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`have been obvious—but because the solutions are ineligible for patenting. But Apple improperly
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`groups all of the Navigation Patents together and relies on generalizations of the patents entirely
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`untethered to claim language to make the flawed argument that: “[t]he asserted claims are
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`directed to presenting navigation and location information to a walking user.” Mot. at 6. Such a
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`characterization misses the claim language, which shows that the inventors proposed specific
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`“implementation[s] of a solution to [the] problem” of accurately facilitating walking
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`navigation—namely by claiming specific devices in an unconventional arrangement that together
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`could be used to generate novel user interfaces. See Enfish, LLC v. Microsoft Corp., 822 F.3d
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`1327, 1339 (Fed. Cir. 2016).
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`The challenged claims are not directed to the high-level abstraction that Apple identifies,
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`but rather are directed to practical improvements to devices carrying out navigation functionality.
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`Thus, the Navigation Patents are not categorically excluded from patent protection as Apple
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`contends, and the Court should deny Apple’s Motion for Partial Summary Judgment of Subject
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`Matter Ineligibility under 35 U.S.C. § 101.
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`I.
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`RESPONSE TO STATEMENTS OF ISSUES AND UNDISPUTED FACTS
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`Maxell agrees with Apple’s Statement of Issues. Mot. at 1. The parties’ factual disputes
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`are numerous and best addressed in the context of the Section 101 inquiry below. But in general,
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`looking to Apple’s “Statement of Undisputed Material Facts,” Maxell disputes (A) Apple’s
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`summary of the Navigation Patents (Mot. at 1-3); (B) what the “asserted claims are directed to”
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`(Mot. at 3); (C) that Claim 1 of the ’317 Patent is representative (Mot. at 3); (D) Apple’s
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`summary of the “State of the Known Art” (Mot. at 4-5); and (E) that the jury in the ZTE
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`litigation “resolved” a factual dispute about whether elements of the ’317 Patent were “well-
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`understood, routine, and conventional” (Mot. at 5).
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`II.
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`LEGAL STANDARDS
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`Section 101 of the Patent Act defines the scope of patentable subject matter eligibility
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`broadly. 35 U.S.C. § 101. The Federal Circuit has been explicit that software inventions fall
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`squarely within this definition of eligibility. Enfish, 822 F.3d at 1335; see also Core Wireless
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`Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018) (finding eligible “an
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`improved user interface for computing devices”).
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`The Supreme Court has set forth the well-known Alice test to determine whether a patent
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`merely claims an abstract idea and is thus patent ineligible. Enfish, 822 F.3d at 1334 (citing Alice
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`Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014)). At step-one, Courts consider the
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`claims in their entirety to ascertain whether “their character as a whole is directed to excluded
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`subject matter.” Enfish, 822 F.3d at 1335. Courts “must be careful to avoid oversimplifying the
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`claims by looking at them generally and failing to account for the specific requirements of the
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`claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).
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`If the claims are directed to excluded subject matter, step-two determines whether the
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`claims provide an “inventive concept.” Alice, 573 U.S. at 217-18. This is a factual inquiry. See
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`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1318 (Fed. Cir. 2019) (citing Berkheimer v. HP
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`Inc., 881 F.3d 1360 (Fed. Cir. 2018)). A claim will be eligible at step-two if it recites “concrete
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`improvements in the recited computer technology.” Enfish, 822 F.3d at 1339.
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`III.
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`ARGUMENT
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`A.
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`Claim 1 of the ’317 Patent is Not a Representative Claim
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`“Each claim of a patent [] shall be presumed valid independently of the validity of other
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`claims.” 35 U.S.C. § 282(a). The burden of showing that all challenged claims should be
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`evaluated according to a representative claim belongs to Apple, a burden that Apple fails to
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`carry. See PPS Data, LLC v. Jack Henry & Assocs., 404 F. Supp. 3d 1021, 1030-31 (E.D. Tex.
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`2019) (“when a defendant seeks to invalidate multiple claims based only on allegations relating
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`to a subset of those claims, the defendant must justify treating that subset as representative of the
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`other claims”); accord. GREE, Inc. v. Supercell Oy, No. 2:19-CV-00161, 2020 U.S. Dist. LEXIS
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`14412, *4-5 (E.D. Tex. Jan. 29, 2020); CXT Sys. v. Acad., Ltd., No. 2:18-CV-00171, 2019 U.S.
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`Dist. LEXIS 51915, *13-15 (E.D. Tex. March 19, 2019).
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`“In all cases, the representativeness inquiry must be ‘directly tethered to the claim
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`language.’” PPS Data, 404 F. Supp. 3d. at 1031. “[A] claim is not representative merely because
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`it generally deals with the same subject matter as the other asserted claims,” and “[i]n general,
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`claims in one patent will not represent claims in another patent because patents must contain
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`distinct inventions.” Id. Only if a defendant meets its burden of showing “a prima facie case
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`demonstrating representativeness” (which Apple has not done) is a patent owner required to
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`“identify limitations that are present in the asserted claims but that are not represented by the
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`allegedly representative claim.” Id.; see also id. at 1032 (“if the plaintiff identifies legally
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`distinctive limitations, then any claims which contain those limitations are excluded from the
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`scope of the relief sought by the defendant”). “[I]n close cases, courts should err on the side of
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`finding a claim is not representative.” Id. at 1033.
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`As an initial (and dispositive) matter, Apple does not make “a prima facie case
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`demonstrating representativeness” of Claim 1 of the ’317 Patent. Apple merely makes the
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`conclusory statements that “[t]he ’317 Patent, Claim 1 is representative” and that “[t]he other
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`asserted claims recite only minor variations.” Mot. at 3. Apple makes no attempt to tether its
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`statement to the claim language of the challenged claims, address Claim 3 of the ’498 Patent
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`(another asserted claim) at all, or explain why it contends that any “variations” are supposedly
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`“minor.” Id. Such conclusory statements are insufficient for Apple to carry its burden. See CXT
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`Sys., 2019 U.S. Dist. LEXIS 51915 at *14 (“Defendant does not provide any further support for
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`its conclusory statement that the other claims of the patent are substantially and substantively
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`similar to Claim 16”); GREE, 2020 U.S. Dist. LEXIS 14412 *5 (“Supercell does not explain
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`why… or how the Court could conclude that ‘there are no legally relevant distinctions’”).
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`There are substantial and legally relevant distinctions between the challenged claims of
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`the ’317 Patent, the ’498 Patent, and the ’999 Patent, which will be addressed according to the
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`Alice framework below. Accordingly, the use of a representative claim is not appropriate.
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`B.
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`The Challenged Claims are Valid at Alice Step-One
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`None of the challenged claims are directed to an abstract idea. Rather, while the specifics
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`vary between the claims, as explained above, each is directed to a mobile device comprising a
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`particular combination of components that together constitute a “concrete improvement[] in the
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`recited… technology,” such as “a specific improvement to the way [mobile devices] operate.”
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`Enfish, 822 F.3d at 1334, 1336.
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`For each of the Navigation Patents, the inventors set out “to provide a portable terminal
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`with the function of walking navigation, which can supply location information easier for the
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`user to understand during walking with use of a narrow screen.” ’317 Patent at 2:52-55. At the
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`time, existing mapping applications had shortcomings that made them suboptimal for use on a
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`mobile device. For example, such applications were frequently “optimized on the assumption
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`that the maps can be displayed at a resolution… of personal computers” rather than the small
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`screens of the day’s mobile devices. Id. at 1:47-49. Thus, the mapping applications were “not
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`always easy for walkers to understand” on small screens, or provided information in a format
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`that was “too wide to obtain detailed information” or on a “plurality of pages.” Id. at 2:5-11.
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`These challenges were also acknowledged by engineers at Georgia Tech at that time.2
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`The limited hardware of the day’s mobile devices also provided hurdles. For example, the
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`inventors noted that “character information is often supplied as contents” on the screens of the
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`mobile devices, but “when the user wants to know such a spatial position as a place and a route,”
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`text-based displays would not work well. Id. at 2:26-31; see also Ex. A (Paradiso CC Dep. Tr.) at
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`44:17-23 (“one of the things the patent[s] talk[] about, very definitely,” is “enabling the
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`navigation information to be displayed on a small-sized screen in a manner easily understood to
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`the user/walker”). Moreover, there was an input problem: the portable devices were “just
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`provided with some button keys including dialing buttons used as input devices, so they will not
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`[be] able to cope with inputs of complicated retrieving conditions.” ’317 Patent at 2:32-36. Even
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`Apple’s expert acknowledged that limited hardware presented challenges for map displays. See
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`Ex. D (Paradiso Inv. Rep.) at ¶ 269 (“At the time in the late 1990s, the capabilities of portable
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`computer displays, memories, and processors were more limited. Presenting full map displays
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`with routes could not be done effectively or feasibly, particularly in lower cost portable
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`devices”); Ex. A (Paradiso CC Dep. Tr.) at 38:9-18, 40:19-24, 39:16-40:11 (discussing problems
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`with the then-prevalent mobile devices that used GPS or cellular services alone).
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`The inventors’ ideas thus got around these problems by equipping a mobile device with a
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`device for getting its location as well as its orientation, paired with new user interfaces. Id. at
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`2:62-3:4. This provides a specific solution—even Apple’s expert testified that “if you really look
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`2 See Ex. C, (“Cyberguide: A Mobile Context-Aware Tour Guide”) (APL-MAXELL_00713087)
`at 17 (it was “computationally overwhelming to manage the display” and “it was difficult to
`control the display of the decorations” on a map in a portable device) (emphasis added).
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`at what this device is, the patent gives a very clear, clear description of it.” Ex. A (Paradiso CC
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`Dep. Tr.) at 67:3-18. Thus, the inventors made it “possible to realize [] user-friendly interface[s]
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`that enable[] the user to understand displayed items intuitively.” ’317 Patent at 3:16-18. By
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`providing for particular hardware with functionality that is combined with features of various
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`user interfaces, each of the ’317 Patent, ’498 Patent, and ’999 Patent are “directed to a specific
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`asserted improvement to the functionality of the [portable terminal] system itself.” Uniloc USA,
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`Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1309 (Fed. Cir. 2020).
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`1.
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`Claims 1 and 17 of the ’317 Patent (“Walking Navigation Claims”)
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`Claims 1 and 17 of the ’317 Patent are “generally directed to providing a portable
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`terminal with specific devices that provide a pedestrian with navigation information about his/her
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`walk including, for example, route information, destination symbol, starting point symbol, and
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`present place identification.” Ex. E (Inf. Rep. of Dr. Rosenberg) at ¶ 59.
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`Indeed, the claim language (see Appendix 1) confirms that these claims are patent
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`eligible because they recite particular hardware and “require a specific, structured graphical user
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`interface paired with a prescribed functionality directly related to the graphical user interface’s
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`structure that is addressed to and resolves a specifically identified problem in the prior state of
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`the art.” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009-10 (Fed. Cir. 2018); Core
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`Wireless, 880 F.3d at 1362 (the asserted claims “are directed to an improved user interface for
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`computing devices, not to the abstract idea of an index”); IDB Ventures, LLC v. Charlotte Russe
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`Holdings, Inc., No. 2:17-CV-660, 2018 U.S. Dist. LEXIS 186215, *6-10 (E.D. Tex. Oct. 31,
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`2018) (“the Federal Circuit has applied that principle in finding specific user interfaces in
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`computer-related inventions to be patent-eligible and not abstract”).3
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`3 Apple’s chosen precedents about “navigation,” such as Rothschild v. Geotab USA (see Mot. at
`10-11), are inapposite. Not one of the cases that Apple cites addressed patents that “require[d]
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`The “specific, structured graphical user interface” required by Claims 1 and 17 of the
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`’317 Patent is such that the display:
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`
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`
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`
`
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`“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” (Claims 1 and 17);
`“changes according to a change of said direction of said portable terminal orientation
`for walking navigation” (Claims 1 and 17);
`“displays said route and displays a direction of movement by the arrow” (Claim 17);
`“displays said route with a bent line using symbols denoting starting and ending points
`and displays symbols denoting said present place on said route” (Claim 17).
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`As construed by the Court, these interface requirements are “paired with a prescribed
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`functionality directly related to the graphical user interface’s structure,” specifically the
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`functionality of the following hardware required to perform specific, Court-construed functions:
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`
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`“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” with a function of “getting a location
`information denoting a present place of said portable terminal” (Claims 1 and 17) (see
`Dkt. 235 at 15);
`“a compass, gyroscope, and/or sensor such as a clinometer in conjunction with a CPU,
`or equivalents thereof” with a function of “getting a direction information denoting an
`orientation of said portable terminal” (Claims 1 and 17) (see Dkt. 235 at 7-8);
`“an input device for inputting a destination” (Claims 1 and 17); and
`“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” with a function of “retrieving a route from said present place to said
`destination” (Claim 17) (see Dkt. 235 at 18).
`For example, displaying the position of the destination, present place, and their relation requires,
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`and is thus paired with, the functionality of a device for “getting location information” of the
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`present place, a device for “inputting a destination,” and a device for “retrieving a route”
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`between the two. And for the display to change according to the direction of the portable
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`terminal orientation, it requires, and is thus paired with, the functionality of a device for “getting
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`specific, structured graphical user interface paired with a prescribed functionality directly related
`to the graphical user interface’s structure that is addressed to and resolves a specifically
`identified problem in the prior state of the art.” Data Engine Techs., 906 F.3d at 1009-10.
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`a direction information denoting an orientation of said portable terminal.”
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`Thus, this combination of functionality paired with specific features of a graphical user
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`interface solves the problems identified by the inventors in the prior art, such as the poor
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`accuracy and performance of then-existing navigation applications, which is patent eligible. Data
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`Engine Techs., 906 F.3d at 1009-10; see also CXT Sys., 2019 U.S. Dist. LEXIS 51915 at *13 (a
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`user interface requiring that “two different display regions with specific information are
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`presented in the display and [are] simultaneously visible” was patent eligible because it was
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`“directed to a technology-based solution to a problem that existed with message boards at the
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`time of the invention”). Accordingly, Claims 1 and 17 of the ’317 Patent are patent eligible.
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`2.
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`Claim 3 of the ’999 Patent (“Locate a Friend Claim”)
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`Claim 3 of the ’999 Patent is “directed to providing a portable terminal with specific
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`devices that provide a pedestrian with location information about another portable terminal that
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`may, for example, be owned by his friend.” Ex. E (Inf. Rep. of Dr. Rosenberg) at ¶ 60.
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`Indeed, as with Claims 1 and 17 of the ’317 Patent, Claim 3 of the ’999 Patent is directed
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`to a patent eligible device, which includes a “specific, structured graphical user interface paired
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`with a prescribed functionality directly related to the graphical user interface’s structure.” Data
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`Engine Techs., 906 F.3d at 1009-10. Specifically, the claimed device enables a graphical user
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`interface to display direction and distance information to another, specified portable terminal, as
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`well as a visual representation of the user’s location as well as the other device’s location. ’999
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`Patent at 10:38-51, 10:56-61.
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`Thus, the “specific, structured graphical user interface” required by Claim 3 of the ’999
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`Patent is such that the claim requires the display of:
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`“a direction from said present place to the location of said another portable terminal”
`[which] “is displayed with the distance information between said locations to supply
`route guidance information as said walking navigation information”;
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`“wherein said direction from said present place to the location of said another portable
`terminal is displayed using the symbols denoting the said present location and said
`location of another portable terminal.”
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`As construed by the Court, these interface requirements are also “paired with a prescribed
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`functionality directly related to the graphical user interface’s structure,” specifically the hardware
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`construed by the Court as a part of means-plus-functions claim elements, with functionality that
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`enables the distinct user interface functionality claimed by Claim 3. Dkt. 235 at 7-8, 15, 18 (e.g.,
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`GPS, data receiver, CPU, compass/gyroscope, device for data communication, with specified
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`functions required to implement the claimed user interfaces).
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`For example, displaying the direction to another user’s portable terminal using distance
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`information and a visual representation of the user’s location as well as the other device’s
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`location requires, and thus is paired with, the hardware requirements specified by the claims
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`including a CPU and a device for data communication of a portable telephone and a PHS.
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`Thus, this combination of functionality paired with specific features of a graphical user
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`interface solves the problems identified by the inventors in the prior art relating to getting the
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`location of a friend’s device or getting the location of a user’s own device. Accordingly, Claim 3
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`of the ’999 Patent is also patent eligible at Alice step-one.
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`3.
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`Claim 3 (“Walking Navigation and Display Orientation Claim”) and
`Claim 13 (“Locate a Friend and Display Orientation Claim”) of the ’498
`Patent
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`Claim 3 of the ’498 Patent is “generally directed to providing a portable terminal with
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`specific devices that provide a pedestrian with navigation information about his/her walk
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`including, for example, route information, starting and ending points and lines providing
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`navigation information.” Ex. E (Inf. Rep. of Dr. Rosenberg) at ¶ 61. And Claim 13 of the ’498
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`Patent is “generally directed to providing a portable terminal with specific devices that provide a
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`pedestrian with location information about another portable terminal and also providing a full
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`route from the st