Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 1 of 14 PageID #: 24865
`Case 5:19-cv-00036—RWS Document 447-2 Filed 07/27/20 Page 1 of 14 PageID #: 24865
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`EXHIBIT 1
`EXHIBIT 1
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 2 of 14 PageID #: 24866
`HIGHLY CONFIDENTIAL - ATTORNEYS’ EYES ONLY
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
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`Plaintiff,
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`vs.
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`APPLE INC.,
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` Civil Action No. 5:19-cv-00036-RWS
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`
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`
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`Defendant.
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`OPENING EXPERT REPORT OF DR. JOSEPH A. PARADISO REGARDING
`INVALIDITY OF U.S. PATENT NOS. 6,748,317, 6,580,999, 6,430,498
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 3 of 14 PageID #: 24867
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`
`I.
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`II.
`III.
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`IV.
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`V.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
`A.
`Qualifications ......................................................................................................... 2
`B.
`Previous Testimony ............................................................................................... 8
`C.
`Materials Considered ............................................................................................. 8
`D.
`Compensation ...................................................................................................... 10
`SUMMARY OF OPINIONS ........................................................................................... 10
`RELEVANT LEGAL STANDARDS ............................................................................. 11
`A.
`Invalidity .............................................................................................................. 11
`B.
`Invention Date / Priority Date .............................................................................. 11
`C.
`Anticipation.......................................................................................................... 13
`D.
`Obviousness ......................................................................................................... 14
`E.
`Claim Construction .............................................................................................. 17
`F.
`Patent-Eligibility .................................................................................................. 18
`TECHNOLOGY BACKGROUND ................................................................................. 20
`A.
`Navigation In Ancient Times ............................................................................... 20
`B.
`Annotating Maps With Direction Information .................................................... 22
`C.
`Compasses, Gyroscopes and Accelerometers ...................................................... 26
`D.
`Early Electronic Navigation And Coordination Among Devices ........................ 30
`E.
`Navigation Using GPS ......................................................................................... 33
`F.
`Portable GPS Navigation Systems And Displays In The 1990s .......................... 37
`G.
`Personal Handyphone System.............................................................................. 41
`BACKGROUND ON THE ASSERTED PATENTS ...................................................... 43
`A.
`Overview Of The Asserted Patents ...................................................................... 43
`B.
`Prosecution Histories Of The Asserted Patents ................................................... 48
`1.
`’498 Patent Prosecution History .............................................................. 48
`2.
`’999 Patent Prosecution History .............................................................. 49
`3.
`’317 Patent Prosecution History .............................................................. 49
`The Asserted Claims ............................................................................................ 50
`1.
`’317 Patent - Claims 1, 17 (15) ................................................................ 50
`2.
`’999 Patent - Claim 3 (1) ......................................................................... 51
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`C.
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`-i-
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 4 of 14 PageID #: 24868
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`TABLE OF CONTENTS
`(continued)
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`Page
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`D.
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`VI.
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`’498 Patent - Claims 3 (1), 13 (10) .......................................................... 51
`3.
`Claim Construction .............................................................................................. 52
`1.
`Agreed Constructions............................................................................... 52
`2.
`Parties’ Proposed Claim Constructions And Court’s Claim
`Constructions ........................................................................................... 53
`Priority Date ......................................................................................................... 54
`E.
`Level Of Ordinary Skill In The Art ..................................................................... 55
`F.
`INVALIDITY OF THE ASSERTED CLAIMS IN VIEW OF PRIOR ART ................. 56
`A.
`Summary Of Prior Art References ....................................................................... 56
`1.
`Cyberguide System (“Cyberguide”) And Related Publication,
`Cyberguide: A Mobile Context-Aware Tour Guide by Abowd et al.
`(“Abowd”)................................................................................................ 56
`Garmin NavTalk (“NavTalk”) ................................................................. 62
`Japanese Patent Publication No. JPH10-197277 to Maruyama et al.
`(“Maruyama”) .......................................................................................... 73
`U.S. Patent No. 6,067,502 to Hayashida et al. (“Hayashida”) ................. 76
`4.
`Obviousness: Combinations And Motivations To Combine ............................... 81
`1.
`Summary Of Combinations And Motivations To Combine .................... 81
`2.
`NavTalk, In View Of Maruyama ............................................................. 84
`3.
`NavTalk, In View Of Hayashida ........................................................... 103
`4.
`Hayashida, In View Of Maruyama ........................................................ 114
`5.
`Cyberguide Or Abowd, In View Of Hayashida ..................................... 121
`Secondary Considerations Of Non-Obviousness ............................................... 138
`C.
`VII. PATENT-ELIGIBILITY OF THE ASSERTED CLAIMS ........................................... 145
`VIII. CONCLUSION .............................................................................................................. 155
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`2.
`3.
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`B.
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`-ii-
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 5 of 14 PageID #: 24869
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`opinion and for the purposes of my analysis, the priority date for all Asserted Claims is July 12,
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`1999.
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`F.
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`Level Of Ordinary Skill In The Art
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`117. Based on my review of the patents and their prosecution histories, and based on
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`my years of experience working, researching, and teaching in the field of human-computer
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`interfaces, my opinion is that a person of ordinary skill in the art around the filing of the Asserted
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`Patents would have had a Bachelor of Science Degree in Electrical/Computer Engineering or
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`Computer Science (or equivalent degree) and at least one year of experience working in the field
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`of location- or sensor-based human-computer interaction. For the remainder of this report, I
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`shall refer to a person ordinary skill in the art meeting (or exceeding) this definition as a
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`“PHOSITA.”
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`118. Based on Maxell’s interrogatory responses, Maxell’s definition for PHOSITA is a
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`Bachelor of Science Degree in Electrical/Computer Engineering or Computer Science or an
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`equivalent degree and at least one year of experience working in the field of GPS systems. See
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`Maxell’s Third Supplemental Objections and Responses to Apple’s First Set of Interrogatories at
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`35 (March 31, 2020). My opinion is not affected by Maxell’s definition.
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`119. Around the filing of the Asserted Patents, I would have qualified as a person of
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`ordinary skill in the art under the definition I provided above and under Maxell’s definition. As
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`stated above, I hold a Bachelor of Science Degree in Electrical Engineering, and I have
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`performed research and development of sensor technology in a variety of applications, including
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`underwater sonar, wearable movement detection, and wireless sensor networks, among many
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`others. In addition, I trained many students in these areas at that time, via my lectures and
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`through their research projects in my group. The opinions expressed in this declaration would
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`not change if the level of experience varied by a few years.
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 6 of 14 PageID #: 24870
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`INVALIDITY OF THE ASSERTED CLAIMS IN VIEW OF PRIOR ART
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`VI.
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`A.
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`Summary Of Prior Art References
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`1.
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`Cyberguide System (“Cyberguide”) And Related Publication,
`Cyberguide: A Mobile Context-Aware Tour Guide by Abowd et al.
`(“Abowd”)
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`120. Cyberguide was a handheld intelligent tour guide developed and demonstrated
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`between 1995 and 1998, by researchers at Georgia Tech, including Dr. Gregory Abowd. Dr.
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`Abowd and his colleagues described their work through webpages (e.g.,
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`https://www.cc.gatech.edu/fce/cyberguide/), as well as several publications. One such
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`publication that described Cyberguide’s technical details and development is: Gregory D.
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`Abowd, et al., Cyberguide: A Mobile Context-Aware Tour Guide, Baltzer Journals (“Abowd”).
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`121. The Abowd paper is dated September 23, 1996, and I have been informed that the
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`Abowd paper was published or publicly available no later than October 1997. It is thus effective
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`as prior art under at least § 102(a) and (b). According to the Abowd paper, before its date on
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`September 23, 1996, Dr. Abowd’s team had developed fully operational prototypes of
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`Cyberguide and demonstrated or tested them in public. See Abowd at 2, 9-11, 15-16 (APL-
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`MAXELL_00713088, -95-97, -101-102) (describing prototypes tested in past six months and
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`demonstrations in the past year at “open houses”). Thus, Cyberguide was conceived and reduced
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`to practice by no later than September 29, 1996, without being suppressed, concealed, or
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`abandoned, and it was also in public use by that date. Cyberguide is therefore effective as prior
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`art under at least § 102(a), (b), and (g).
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`122. Neither Abowd nor Cyberguide was considered by the U.S. Patent Office during
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`prosecution of the Asserted Patents or in the ZTE or ASUS IPR Petitions. Abowd is being
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`presented in the pending Apple IPR Petitions.
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 7 of 14 PageID #: 24871
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`123. Cyberguide was a software and hardware system that Dr. Abowd and his
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`colleagues implemented on a number of popular portable devices that were popular in the late
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`1990s, including an “Apple MessagePad with the Newton Operating System, a MagicCap
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`machine or a pen-based palmtop/tablet PC.” Abowd at 5 (APL-MAXELL00713091). For
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`example, Figures 3 and 4 of Abowd below depict the Cyberguide system installed on a portable
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`Apple MesagePad.
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`Id. at 9 (APL-MAXELL_00713095).
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`Id. at 10 (APL-MAXELL_00713096).
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 8 of 14 PageID #: 24872
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`124. When installed on a portable device, Cyberguide provided the device’s user with
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`a tour guide that would provide the user with “knowledge of [its] position and orientation.”
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`Cyberguide: Prototyping Context-Aware Mobile Applications (“Cyberguide Prototyping”) at
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`APL-MAXELL_00713283.38 This position and orientation information was obtained “us[ing]
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`position measurement systems such as indoor beacons or the Global Positioning System (GPS)
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`to locate the user, and an electronic compass or inertial navigation system to find user
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`orientation.” Abowd at 3 (APL-MAXELL_00713089).
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`125. Cyberguide displayed the user’s current position and orientation using an arrow or
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`pointer as shown in the figures excerpted below.
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`Id. at 10 (APL-MAXELL_00713096).
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`38Available at: https://www.cc.gatech.edu/fce/cyberguide/pubs/chi96-cyberguide.html.
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 9 of 14 PageID #: 24873
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`Id. at 15 (APL-MAXELL_00713101).
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`126. Abowd explained that: “As the tourist moves around the room and passes into the
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`range of a new cell, the position (indicated by an arrowhead) is updated on the map. Keeping
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`track of the last recorded cell location provides a good guess as to the location the tourist is
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`heading, so we indicate an assumed orientation by pointing the position icon accordingly.”
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`Abowd at 9 (APL-MAXELL_00713095).
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`127. The Cyberguide Prototyping webpage also describes with respect to Figure 1
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`below: “The map is the view the visitor is using to navigate. Visualizing and manipulating the
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`map dominates the user interface of Cyberguide. It can be viewed at varying levels of detail and
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`scrolled around. The visitor is indicated by location and orientation on the map (the arrowhead
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 10 of 14 PageID #: 24874
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`in Figure 1) and various demonstrations are also marked (as stars in Figure 1).” APL-
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`MAXELL_00713284.
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`APL-MAXELL_00713284.
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`128. AThe foregoing screenshots and descriptions also describe how different
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`destinations or points of interest could be marked by stars or other symbols.
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`129. Abowd and the other Cyberguide publications also describe the components that
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`make up the Cyberguide system. Abowd describes four components: (1) Map Component; (2)
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`Information Component; (3) Positioning Component; and (4) “Messenger” or Communications
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`Component:
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`• Cartographer (Map Component) This person has intimate knowledge of the
`physical surroundings, such as the location of buildings, interesting sights
`within a building, or pathways that the tourist can access. This component is
`realized in our systems by a map (or maps) of the physical environments that
`the tourist is visiting.
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`• Librarian (Information Component) This person provides access to all of the
`information about sights that a tourist might encounter during their visit. This
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 11 of 14 PageID #: 24875
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`would include descriptions of buildings or other interesting sights and the
`identities of people associated with the areas. The librarian can answer specific
`question about certain sights (“Who works in that building?” or “What artist
`painted that picture?” or “What other demonstrations are related to what I am
`looking at?”). This component is realized as a structured repository of
`information relating to objects and people of interest in the physical world.
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`• Navigator (Positioning Component) The interests of the tourist lie relatively
`close to their physical location. Therefore, it is important to know exactly
`where the tourist is, in order to show the immediate surroundings on the map or
`answer questions about those surroundings (“What am I looking at?"). The
`navigator is responsible for charting the location of the tourist within the
`physical surroundings. This component is realized by a positioning module
`that delivers accurate information on tourist location and orientation.
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`• Messenger (Communications Component) A tourist will want to send and
`receive information, and so the messenger provides a delivery service. For
`example, when visiting an exhibit or demonstration, the tourist might want to
`speak with the owner of the exhibit. If the owner is not present, the tourist can
`leave a message. In order to find out where other tourists are located, each
`tourist can communicate her current location to some central service that others
`can access. It might also be desirable to broadcast information to a set of
`tourists (“The bus will be leaving from the departure point in 15 minutes.”).
`This component is realized as a set of (wireless) communications services.
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`Abowd at 5-6 (APL-MAXELL_00713091-92).
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`130. The “Communications Component” described above permits multiple Cyberguide
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`users to communication and locate each other. Related to this feature of communication among
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`users, another passage of Abowd describes: “We have defined a simple protocol to support three
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`different kinds of messages: mailing out from a mobile unit to the network (as shown in Figure
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`8); broadcasting from the network to all mobile units (Figure 9); and updating positioning
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`information.” Id. at 11 (APL-MAXELL_00713097). The Cyberguide Prototyping web page
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`likewise explains that: “We have designed an application-level protocol on top of AppleTalk to
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`facilitate communication between the Newton and the Internet. This communication mechanism
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`permits a user to send e-mail, print documents, and eventually communicate with other
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`Cyberguide users.” Cyberguide Prototyping at APL-MAXELL_00713285.
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`131.
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`In my opinion, Cyberguide and Abowd each render obvious in combination with
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`other prior art references all Asserted Claims. The bases for my opinions are detailed in the
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`claim chart attached as Exhibits C4, D4, E5, and Section VI.B.5 below.
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`2.
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`Garmin NavTalk (“NavTalk”)
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`132. NavTalk was a handheld electronic navigation device and cellphone that was
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`conceived and reduced to practice by no later than January 31, 1999, without being suppressed,
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`concealed, or abandoned, and it was put on public sale and in public use in the U.S. on or before
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`that same date. Thus, NavTalk is effective as prior art under at least § 102(a), (g). NavTalk was
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`not considered by the U.S. Patent Office during prosecution of the Asserted Patents or any past
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`or pending IPRs.
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`133. With respect to NavTalk’s public release date, I have reviewed several news
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`articles and press releases supporting that NavTalk went on sale to the public in January 1999.
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`For example, a January 4, 1999 article from the publication Wireless Week stated that NavTalk
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`would go on sale that month at a price of $625 per unit. Bill Menezes, GPS Cellular Phone Hits
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`Stores This Month, Wireless Week (January 4, 1999). Other articles from early 1999 provide
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`product reviews, identify the list price for NavTalk, and describe its release as “recent.”
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`• Ron Eldridge, Cruising Into The Millennium; Boating Electronics, Trailer Boats (March
`1, 1999) (“Space saving versatility is the idea behind Garmin’s NavTalk, which combines
`a handheld GPS with a cellular phone. Communications and nav functions have never
`been married closer than in this device, which lists for $625.”).
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`• Terry Trucco, Don’t Forget To Pack The Microchips, The New York Times (February 7,
`1999) (“The Navtalk ($625) is a new cell phone from Garmin with a built-in Global
`Positioning System receiver that almost guarantees the user won’t get lost”).
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 13 of 14 PageID #: 24877
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`• Phil Garlington, Global Positioning For The Layman; The Winning Of An Obscure
`Desert Parcel In An Auction Provides An Opportunity For A Technological Test, The
`Orange County Register (Mar. 23, 1999) (“Garmin also offers a cellular GPS, The
`NavTalk ($ 585), which can send the user’s current position to a friend with a similar
`receiver.”).
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`• Henry J. Holcomb, Getting Good Directions The Newest Auto Navigation Devices Can
`Plot Your Route, Call Out Instructions, And Even Warn Of Traffic Jams Ahead, The
`Philadelphia Inquirer (March 25, 1999) (“Garmin recently introduced a handheld
`waterproof NAVTALK unit that is a GPS unit and cell phone.”).
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`134.
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`I have also reviewed the March 24, 2020 Declaration of David Ayres, a Garmin
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`in-house attorney, and Exhibits 1 to 6 to his declaration, which have been produced as
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`GARMIN_000001 - 148. The declaration supports the following facts: (1) Exhibit 5 to the
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`declaration is a copy of sales records and customer shipments for NavTalk and it shows
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`shipments to customers dating back to as early as March 6, 1999; (2) Exhibit 1 to the declaration,
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`the NavTalk Owner’s Manual (“NavTalk Manual”), a version of which was produced in this
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`action as APL-MAXELL_00713785 - 789, was approved for public distribution on February 5,
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`1999; and (3) Garmin issued a press release on October 1, 1998 (Exhibit 4 to the declaration)
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`announcing the public sale and release of NavTalk at a suggested list price of $425 per unit.
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`135. At his deposition, Mr. Broddle reviewed the Declaration of David Ayres and
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`testified about Exhibits 1, 2, 4, and 5 to the declaration. Mr. Broddle confirmed and elaborated
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`on Mr. Ayres’s declaration statements. For example, Mr. Broddle stated that the NavTalk
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`Manual would have been completely drafted by the end of January 1999 and Garmin had
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`approved its public release by February 5, 1999. Broddle Rough Dep. at 41:4-20, 123:17-
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`124:16, 127:7-12. Mr. Broddle also confirmed that Exhibit 5 reflected dates in March 1999 by
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`which customers (e.g., Office Depot) had placed orders for NavTalk and units of the NavTalk
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`had been shipped to customers. Id. at 141:24-142:25.
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`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 14 of 14 PageID #: 24878
`Case 5:19-cv-00036-RWS Document 447-2 Filed 07/27/20 Page 14 of 14 PageID #: 24878
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`311.
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`In light of the above, it is my opinion that all of the Asserted Claims of the
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`Asserted Patents are invalid as being either anticipated or rendered obvious by the prior art
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`references discussed above.
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`It is also my opinion that the Asserted Claims of the Asserted
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`Patents do not claim any improvements in computer technology and are instead directed to
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`features that were well-understood, routine, and conventional to a person of ordinary skill by the
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`alleged priority date of the Asserted Claims.
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`Dated: May 7, 2020
`
` Dr. J
`ph A. Paradiso
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