Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 1 of 9 PageID #: 25370
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`EXHIBIT 27
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`Public Version
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 2 of 9 PageID #: 25371
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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. IPR2020-00407
`U.S. Patent No. 6,748,317
`____________
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,748,317
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`Public Version
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 3 of 9 PageID #: 25372
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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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 ’317 PATENT .......................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’317 PATENT .................... 1
`B. PROSECUTION HISTORY OF THE ’317 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 ......................................................................................................... 5
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 5
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 5
`C. THE BOARD’S DISCRETION UNDER § 314(A).................................................. 6
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................... 9
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’317 PATENT ARE
`UNPATENTABLE ......................................................................................16
`A. GROUND 1: HAYASHIDA IN VIEW OF THE KNOWLEDGE OF A PHOSITA RENDERS
`CLAIMS 1-3, 5, 15, AND 17 OBVIOUS .............................................................16
`B. GROUND 2: HAYASHIDA AND ABOWD RENDER CLAIMS 1-3, 5, 10-15, 17, AND 18
`OBVIOUS ......................................................................................................46
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`V. CONCLUSION ............................................................................................64
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`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .....................66
`A. REAL PARTY-IN-INTEREST ...........................................................................66
`B. RELATED MATTERS .....................................................................................66
`C. LEAD AND BACK-UP COUNSEL ....................................................................66
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`i
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 4 of 9 PageID #: 25373
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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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 1-3, 5, 10-15, 17, and 18 (collectively, the “Challenged Claims”) of U.S.
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`Patent No. 6,748,317 (“the ’317 Patent”).
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`II.
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`SUMMARY OF THE ’317 PATENT
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`A.
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`Description of the alleged invention of the ’317 Patent
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`The ’317 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.” ’317 Patent (Ex. 1001), 1:16–18. According to the ’317 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 1:31–38; 1:46–
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`52. The ’317 Patent purports to address these problems by providing a portable
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`terminal that can “supply location information easier for the user to understand
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`during walking.” Id. at 2:53–54.
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`The ’317 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 451-8 Filed 07/27/20 Page 5 of 9 PageID #: 25374
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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`For both “a device for getting a location information of another portable
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`terminal from said another terminal via connected network” and “a device for
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`retrieving a route from said present place to said destination,” Patent Owner has
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`identified the device for data communication 76 as the proposed structure. Opening
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`Claim Construction Brief, (Ex. 1012), 28-29. In support, Patent Owner identified the
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`following disclosures in the ’317 Patent in support of this corresponding structure:
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`Abstract, 1:10-15, 2:23-26, 2:51-3:1, 3:43-66, 4:14-39, 5:17- 21, 5:64-6:4, 6:9-18,
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`8:17-9:39, 9:40-63, 10:29-34, Figures 5-7, 9, 10. Joint Claim Construction and
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`Prehearing Statement, (Ex. 1011), 8, 10.
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`As Patent Owner has asserted in the parallel litigation, the Board should adopt
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`“a CPU and a device for data communication 76 of a portable terminal; or
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`equivalents thereof” is the structure performing the claimed functions of getting
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`location information of another portable terminal from said another terminal via
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`connected network and retrieving a route from said present place to said destination.
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`Opening Claim Construction Brief, (Ex. 1012), 28.
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`IS A REASONABLE LIKELIHOOD THAT THE
`IV. THERE
`CHALLENGED CLAIMS OF THE
`’317 PATENT ARE
`UNPATENTABLE
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`A.
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`Ground 1: Hayashida in view of the Knowledge of a PHOSITA
`renders claims 1-3, 5, 15, and 17 obvious
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`Overview of the Prior Art
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`16
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 6 of 9 PageID #: 25375
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`embodiment for pedestrians and that portable devices at the time typically included
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`this display technique. See Kotzin Decl. (Ex. 1003), ¶¶ 71, 80, 52.
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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`v.
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`Claim 15
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`15. A portable terminal with walking navigation according to claim 1, further
`comprising: [15(a)] a device for retrieving a route from said present place to said
`destination, 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 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 teaches a CPU 2, and data transmitter/receiver 27, for retrieving a route
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`from said present place to said destination. Kotzin Decl. (Ex. 1003), ¶¶ 66-68.
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`Specifically, Hayashida teaches “[t]he guide route data MW stored in the
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`RAM 5 represent an optimum route or a recommended route up to the destination,
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`and are found by a processing for searching a route.” Hayashida (Ex. 1004), 11:25-
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`28. The guide route data MW are constituted by connections from a start point to an
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`end point. Id. at 11:30-33. “For example the destination setting processing (step
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`SA3) of FIG. 5 and route search processing (step SA4) and so on are executed in the
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`information processing center where map information is accumulated.” Id. at 75:34-
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`38. Such actions are performed by data transmitter/receiver 27 via a cellular
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`connection. Hayashida at 8:9-21, 75:33-42.
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 7 of 9 PageID #: 25376
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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`Although Hayashida teaches the above device for retrieving a route in the
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`context of a vehicle navigation application, it would have been obvious that a device
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`for retrieving a route would have been desirable in a portable embodiment for
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`pedestrians. Kotzin Decl. (Ex. 1003), ¶¶ 66-68, 70, 44, 48. Indeed, Hayashida
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`expressly notes that the described invention is applicable to portable navigation
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`devices for pedestrians. Id. at 76:13-20. Hayashida teaches that routes may include
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`backlanes, which may be footpaths, which would not have been applicable to a
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`vehicle navigation system. Id. at 12:21-25; see also id. at 10:6-14; Kotzin Decl. (Ex.
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`1003), ¶ 70. Hayashida also teaches that various functions such as the guidance
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`beginning, searching the return route and identifying the route only operate at slow
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`speeds. Hayashida (Ex. 1004), 50:10-14. Therefore, a PHOSITA would have had a
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`reasonable expectation of success in implementing these features in a portable
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`navigation device. Kotzin Decl. (Ex. 1003), ¶ 70. Additionally, a PHOSITA would
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`have been aware that portable devices at the time included devices for retrieving
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`routes. Kotzin Decl. (Ex. 1003), ¶¶ 66-68, 70, 44, 48.
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`[15(b)]; said display displays said route and displays a direction of movement by
`the arrow.
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`Hayashida teaches that said display displays said route and displays a
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`direction of movement by the arrow. Hayashida teaches that the processing of a
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`guidance display is executed based on guide route data. Hayashida (Ex. 1004),
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 8 of 9 PageID #: 25377
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`in claim limitations [15(a)] and [15(b)], supra, it would be obvious that such a
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`feature would be included on the navigation device taught by Hayashida as modified
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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`by Abowd. Kotzin Decl. (Ex. 1003), ¶¶ 116-121.
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`ix.
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`Claim 18
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`18. A portable terminal with walking navigation according to claim 10, further
`comprising: [18(a)] a device for retrieving a route from said present place to said
`destination, wherein
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`Hayashida in view of Abowd teaches a device for retrieving a route from said
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`present place to said destination. See Section IV(B)(vii), claim [15(a)], supra.
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`To the extent said destination corresponds to said location of another portable
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`terminal, because it would be obvious that the location of another portable terminal
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`would serve as a destination (see Section IV(B)(v), claim [10(c)], supra), it would
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`have been obvious to include a device for retrieving a route from said present place
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`to the location of another portable terminal in the same way as a destination. See
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`Section IV(B)(vii), claim [15(a)], supra.
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`[18(b)] said display displays said route and displays a direction of movement by
`the arrow.
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`Hayashida in view of Abowd teaches this limitation. See Section IV(B)(vii),
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`claim [15(b)], 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 1-3, 5, 10-15, 17, and 18 of the ’317 Patent.
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`Case 5:19-cv-00036-RWS Document 451-8 Filed 07/27/20 Page 9 of 9 PageID #: 25378
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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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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`65
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