Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 1 of 9 PageID #: 25350
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`EXHIBIT 25
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`Public Version
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`EXHIBIT 25
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`Public Version
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 2 of 9 PageID #: 25351
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`MAXELL, LTD.
`Patent Owner
`____________
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`Case No. IPR2020-00409
`U.S. Patent No. 6,580,999
`____________
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,580,999
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`Public Version
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 3 of 9 PageID #: 25352
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................ 1
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`II. SUMMARY OF THE ’999 PATENT .......................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’999 PATENT .................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ’999 PATENT ..................... 3
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ............... 4
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ......................................................................................................... 4
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 4
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 5
`C. THE BOARD’S DISCRETION UNDER § 314(A).................................................. 5
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................... 6
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’999 PATENT ARE
`UNPATENTABLE ......................................................................................14
`A. GROUND 1: HAYASHIDA AND ABOWD RENDER CLAIMS 1-6 OBVIOUS ...............14
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`V. CONCLUSION ............................................................................................57
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`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .....................59
`A. REAL PARTY-IN-INTEREST ...........................................................................59
`B. RELATED MATTERS .....................................................................................59
`C. LEAD AND BACK-UP COUNSEL ....................................................................59
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`i
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 4 of 9 PageID #: 25353
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
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`of claims 1-6 (collectively, the “Challenged Claims”) of U.S. Patent No. 6,580,999
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`(“the ’999 Patent”). ’999 Patent (Ex. 1001).
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`II.
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`SUMMARY OF THE ’999 PATENT
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`A.
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`Description of the alleged invention of the ’999 Patent
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`The ’999 Patent generally describes “a portable terminal provided with the
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`function of walking navigation, which can supply location-related information to the
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`walking user.” ’999 Patent (Ex. 1001), 1:14-16. According to the ’999 patent,
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`conventional navigation systems at the time of the invention were unsuitable for
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`walking navigation because they were too large to be carried by a walking user,
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`while maps provided by conventional map information services could not be
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`displayed clearly on the small screens of portable telephones. Id. at 1:29–36; 1:44–
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`50. The invention of the ’999 patent purportedly addressed these problems by
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`providing a portable terminal that can “supply location information easier for the
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`user to understand during walking.” Id. at 2:49–50.
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`The ’999 Patent describes a “portable terminal . . . with the function of
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`walking navigation [that] is provided with data communication, input, and display
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`devices just like those of ordinary portable telephones and PHS [Personal
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`Handyphone System] terminals, as well as a device for getting location information
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`and a device for getting direction information denoting the user’s present place.” Id.
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 5 of 9 PageID #: 25354
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`Accordingly, Hayashida as modified by Abowd renders obvious a central
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`processor including a CPU and a gyroscope and a compass that perform the claimed
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`function of getting direction information denoting the orientation of the portable
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`terminal.
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`[1(c)] a device for getting the location information of another portable terminal,
`wherein
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`As discussed above in Section III(D)(3), the corresponding structure for this
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`limitation is “a CPU and a device for data communication 76 of a portable terminal;
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`or equivalents thereof.” Under Patent Owner’s proposed claim construction,
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`Hayashida and Abowd teach a CPU 2, and data transmitter/receiver 27, for getting a
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`location information of another portable terminal from said another terminal via
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`connected network. Kotzin Decl. (Ex. 1003), ¶¶ 106-108; see also id. at ¶¶ 89-92
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`(discussing reasons to combine Hayashida and Abowd).
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`Abowd teaches a Messenger (Communications Component) that sends and
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`receives information via a set of wireless communication services. Abowd (Ex.
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`1005), 423-24. Abowd teaches that one use for these wireless communication
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`services is to get location information of another portable terminal via connected
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`network. See id (“In order to find out where other tourists are located, each tourist
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`can communicate her current location to some central service that others can
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`access”). Abowd notes the importance of communications between users. Id. at 421
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`(“As the prototypes of Cyberguide evolve, we have been able to handle more of the
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`user's context, such as where she and others have been, and we have increased the
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`amount in which the tourist can interact and communicate with the place and people
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`she is visiting.”). For example, Abowd teaches that “knowing where everyone else
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`is located might suggest places of potential interest.” Id. at 431. Abowd explains that
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`the data may be communicated in several different ways: mailing out from a mobile
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`unit to the network, broadcasting from the network to all mobile unit, and updating
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`positioning information. Id. at 427.
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`Abowd provides that “[i]n order to find out where other tourists are located,
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`each tourist can communicate her current location to some central service that others
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`can access.” Id. at 423-24. Abowd suggest that such a central service could be the
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`Internet. See id. at 425 (discussing communication component); see also id. at 431
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`(suggesting leveraging the Internet).
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`A PHOSITA would have modified Hayashida to upload position information
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`in the form of latitude and longitude coordinates to a central service such as the
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`Internet as suggested by Abowd. Kotzin Decl. (Ex. 1003), ¶ 107. Hayashida already
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`exchanges this information with the VICS server using data transmitter/receiver 27
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`and stores the information for use in map display. Id. at ¶ 108. Because such
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`information is already obtained and stored, such a modification would not have
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`required undue experimentation and would have yielded predictable results. Id. at ¶
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`108. And a PHOSITA would have recognized that many portable navigation devices
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`at the time already performed such a function. Id. at ¶¶ 108, 49.
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`A PHOSITA would have been motivated to modify Hayashida according to
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`the teachings of Abowd in order to increase the versatility of Hayashida. Id. at ¶ 106.
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`As suggested by Abowd, such functionality may suggest places of potential interest
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`to users. Abowd (Ex. 1005), 431; Kotzin Decl. (Ex. 1003), ¶ 106.
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`Accordingly, Hayashida in view of Abowd renders obvious CPU 2, and data
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`transmitter/receiver 27, which would connect to the Internet via a cellular connection
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`performing the claimed function of getting location information of another portable
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`terminal from said another terminal via connected network. Kotzin Decl. (Ex. 1003),
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`¶¶ 106-108; see also id. at ¶¶ 89-92 (describing reasons to combine Hayashida and
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`Abowd).
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`[1(d)(i)] a direction from said present place to the location of said another portable
`terminal is displayed with the distance information between said locations
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`Hayashida in view of Abowd teaches this limitation. Hayashida teaches a
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`variety of display techniques for use in navigation devices. In one such technique,
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`Hayashida discloses “simultaneously displaying different classifications of routes in
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`the same scale, or different routes from a present position or starting point to a
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`destination.” Hayashida (Ex. 1004), Abstract. Hayashida explains that the purpose
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`is to show both a direction which the user should travel and geographical information
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`around the user. Id. at 3:4-8. It would have been obvious that the location information
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 8 of 9 PageID #: 25357
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`For the same reasons, discussed in claim [1(c)], it would have been obvious
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`to modify Hayashida in light of Abowd to include a device for getting the location
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`information of another portable terminal from said another terminal via connected
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`network in a portable navigation device for pedestrians. See Section IV(A)(i), claim
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`[1(c)], supra. Accordingly, Hayashida as modified by Abowd teaches data
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`transmitter receiver 27 and CPU 2 utilizing a cellular connection to retrieve the
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`location information of another portable terminal from another portable terminal via
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`connected network.
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`[6(d)(i)] a relation between said orientation and a direction from said present place
`to the location of said another portable terminal is displayed
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`Hayashida in view of Abowd teaches this limitation. As discussed above,
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`Hayashida in view of Abowd teaches displaying a relation between said orientation
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`and a direction from said present place to the location of said another portable
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`terminal. See Section IV(A)(v), claim [5(d)(i)], supra.
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`[6(d)(ii)] to supply route guidance information as said walking navigation
`information.
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`See Section IV(A)(i), claim [1(d)(ii)], supra.
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`V.
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`CONCLUSION
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`For the forgoing reasons, Petitioner respectfully requests inter partes review
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`of claims 1-6 of the ’999 Patent.
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`Case 5:19-cv-00036-RWS Document 451-6 Filed 07/27/20 Page 9 of 9 PageID #: 25358
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`Respectfully submitted,
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`
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
`Jennifer C. Bailey, Reg. No. 52,583
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`COUNSEL FOR PETITIONER
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`Public Version
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