Case 5:19-cv-00036-RWS Document 452-3 Filed 07/29/20 Page 1 of 19 PageID #: 25403
`Case 5:19-cv-00036—RWS Document 452-3 Filed 07/29/20 Page 1 of 19 PageID #: 25403
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`Case 5:19-cv-00036-RWS Document 452-3 Filed 07/29/20 Page 2 of 19 PageID #: 25404
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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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`REBUTTAL EXPERT REPORT OF CRAIG ROSENBERG, PH.D.
`CONCERNING VALIDITY OF U.S. PATENT NOS. 6,748,317,
`6,430,498, AND 6,580,999
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`
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` REBUTTAL EXPERT REPORT OF CRAIG ROSENBERG, Ph.D.
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`CONFIDENTIAL - ATTORNEYS' EYES ONLY
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`

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`TABLE OF CONTENTS
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`INTRODUCTION............................................................................................................. 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................................. 2
`II.
`III. UNDERSTANDING OF LEGAL STANDARDS .......................................................... 4
`A.
`Presumption of Validity .......................................................................................... 4
`B.
`Anticipation............................................................................................................. 5
`C.
`Obviousness ............................................................................................................ 7
`D.
`Secondary Considerations ..................................................................................... 10
`E.
`Claim Construction ............................................................................................... 11
`F.
`Level of Ordinary Skill in the Art ......................................................................... 12
`IV. MATERIALS CONSIDERED ....................................................................................... 14
`V.
`BACKGROUND OF THE TECHNOLOGY OF THE ’ 317/’999/’498 patents ....... 14
`A.
`Background of the 317/’999/’498 Patents ............................................................ 15
`B.
`Problems the Inventors Set Out to Solve .............................................................. 16
`C.
`Prosecution History of the ’317/’999/’498 Patents ............................................... 30
`D.
`Unsuccessful Petitions for Inter Partes Review ................................................... 33
`VI. RESPONSE TO DR. PARADISO’S “BACKGROUND OF THE TECHNOLOGY”
`DISCUSSION .................................................................................................................. 33
`VII. SUMMARY OF MY VALIDITY OPINIONS ............................................................. 38
`VIII. DETAILED RESPONSE TO DR. PARADISO’S INVALIDITY OPINIONS ......... 39
`Dr. Paradiso Has Failed to Prove Clearly and Convincingly That NavTalk in view
`A.
`of Maruyama Render Obvious Any of the Asserted Claims of the ’317/’999/’498
`patents. .................................................................................................................. 40
`Dr. Paradiso Has Not Proven That the NavTalk (APL-MAXELL_P01)
`1.
`Device Referenced in His Report Was Actually Sold And/or Known in the
`United States Prior to July 12, 1999 and Was Sold with the User Manual
`Produced at APL-MAXELL_00713773 ................................................... 40
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Is A Portable Terminal
`With a Function of Walking Navigation ................................................... 48
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [1(a)] “a device for getting location information denoting a
`present place of said portable terminal” .................................................... 65
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
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`2.
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`3.
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`4.
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`Maxell, Ltd. v. Apple Inc.
`REBUTTAL EXPERT REPORT OF CRAIG ROSENBERG, Ph.D.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`Element [1(b)] “a device for getting a direction information denoting an
`orientation of said portable terminal” ....................................................... 70
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [1(e)] of the ’317 Patent “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” .............................. 90
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [1(f)] of the ’317 Patent “said display changes according to a
`change of said direction of said portable terminal orientation for walking
`navigation” ................................................................................................ 93
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [15(a)] of the ’317 Patent “a device for retrieving a route from
`said present place to said destination” ...................................................... 95
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [15(b)] of the ’317 Patent “said display displays said route and
`displays a direction of movement by the arrow” ...................................... 98
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [17(a)] of the ’317 Patent “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” ............ 98
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [1(d)] of the ’999 Patent “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.” ........................... 102
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [3(a)] of the ’999 Patent “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” ...................................................................... 103
`Dr. Paradiso Has Not Shown by Clear and Convincing Evidence That the
`Garmin NavTalk Device in view of Maruyama Renders Obvious Claim
`Element [1(c)] of the ’498 Patent “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
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`Case No. 5:19-cv-00036-RWS
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`Maxell, Ltd. v. Apple Inc.
`REBUTTAL EXPERT REPORT OF CRAIG ROSENBERG, Ph.D.
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`650. Accordingly, secondary considerations further support that the claims at issue
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`here are not obvious.
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`F.
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`Additional Potential Grounds
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`651.
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`It is my understanding that Apple was required to elect a certain number of prior
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`art reference and combinations to for its invalidity case and elected the following grounds:
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`Apple’s Final Election of Prior Art, April 7, 2020
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`652. Dr. Paradiso has presented these grounds and I have addressed/rebutted each one
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`of these grounds. Nevertheless, Dr. Paradiso also states in his report that “all of the Asserted
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`Claims of the Asserted Patents are invalid as being either anticipated, or rendered obvious by the
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`prior art references, in combination with the knowledge of one of ordinary skill, as discussed
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`below in this Report.” Paradiso Inv. Rep. ¶27. It is my understanding that Dr. Paradiso is not
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`allowed to and/or has not set forth any invalidity grounds based on anticipation.
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`653. Nevertheless, to the extent Dr. Paradiso asserts that any of the prior art anticipates
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`a particular claim, it is my opinion that this prior art will not anticipate the claims or the same
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`reasons as noted above with respect to non-obviousness.
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`654. Further, to the extent that Dr. Paradiso relies on Maruyama as an anticipation
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`reference as or as a preliminary reference, I note that Maruyama also has significant deficiencies
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`as note about and would not anticipate and/or render obvious the asserted claims for the
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`’317/’999/’498 patents for the reasons discussed above.
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`655.
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`If Dr. Paradiso is allowed to explain a particular ground beyond Apple’s Final
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`Election of Prior Art, I reserve all rights to address these positions and rebut them.
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`IX.
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`PATENT-ELIGIBILITY OF THE ASSERTED CLAIMS
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`656.
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`In ¶¶293—310 Dr. Paradiso surmises that the asserted claims of the ’317/’999/’498
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`patents are directed to routine and conventional components, do not disclose any inventive
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`concept, and use conventional techniques. For example, paragraph ¶293 of Dr. Paradiso’s report
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`is excerpted below:
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`Paradiso Inv. Rep. ¶293
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`657.
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`In providing these opinions, Dr. Paradiso oversimplifies the claims and
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`contradicts positions he took earlier in this case. These opinions oversimplify the inventions
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`claimed in the ’317/’999/’498 patents and contradict Dr. Paradiso himself. Now, Dr. Paradiso
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`abstracts the claim and presents a theme that the claimed inventions are just a combination of
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`well-known components that a POSITA would have been able to build. But, earlier in the case,
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`Dr. Paradiso himself testified that “the claim talks clearly about a device. The [claimed] device is
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`described in a very limited part of the patent” and that “other things are possible, sure, but if you
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`really look at what this device is, the patent gives a very clear, clear description of it.” Paradiso
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`Dep. Tr. at 67:3-18.
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`658. Specifically, the inventors of these patents conceived a portable terminal that
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`would aid users who wished to have real-time directions while walking. ’498 Patent at 2:44-54.
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`These inventors implemented a portable terminal that displays information about the direction a
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`user is facing and displays navigation information that can be displayed on screens of different
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`sizes including, for example, a narrow screen of a portable terminal. ’498 Patent at 2:66-3:20.
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`659. The portable terminal conceived by the inventors include a device for obtaining a
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`location and orientation, so that the user does not have to input information regarding the present
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`place. ’498 Patent at 2:56–65. As shown below, the portable terminal may also display one or
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`more arrows to guide the user during walking:
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`’498 Patent at Figs. 3(a) – 3(f).
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`660.
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`In addition, the portable terminal may provide different services such as “route
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`guidance service,” “neighborhood guidance service,” “meeting by appointment guidance
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`service,” and “present place guidance service.” ’498 Patent at 3:21-35. Among other things these
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`services include provide a route for the user to navigate and walk on, enabling the user to share
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`or retrieve the location of a friend who is also using a portable terminal such that the user could
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`navigate to his friend, and/or identify shops and/or services in the neighborhood.
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`661. Dr. Paradiso explained that: “[t]he goal of the Asserted Navigation Patents is to
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`facilitate walking navigation, i.e., providing location information to a walking user. See ’498
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`Patent at 1:10-13. To achieve this, a POSITA would understand that the experience of the walking
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`user would be improved by providing functional location determination for both open/outdoor
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`areas and in obstructed/indoor areas.” Paradiso Claim Construction Decl. (October 4, 2019) at ¶29.
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`662. During his deposition Dr. Paradiso agreed that the “goal” of the ’317/’999/’498
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`patents is “to facilitate walking navigation.”
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`Paradiso Dep. Tr. at 36:16-24
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`663. Further, Dr. Paradiso agreed that the ’317/’999/’498 patents achieve this goal by
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`“improving the experience of a walking user by providing functional location determination for
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`both open outdoors areas and in obstructed indoor areas”:
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`Paradiso Dep. Tr. at 37:1-6
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`664. Further, Dr. Paradiso explained that the ’317/’999/’498 patents used “technical
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`aspects” to achieve these goals and that multiple people including engineers at MIT were working
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`on overcoming similar problems. Paradiso Dep. Tr. at 37:7-38:8 (“indoors, radio is problematics,
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`especially around that time, it definitely was, GPS still is problematic indoors.”)
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`665. Dr. Paradiso also agreed that the ’317/’999/’498 patents were trying to overcome
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`some of the problems in the walking navigation systems in indoor areas and that even his GPS
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`phone by Nokia was of very limited use for walking navigation, indicating that even Nokia had
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`not solved the problems that the inventors of the ’317/’999/’498 patents solved. In fact, Dr.
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`Paradiso explained that his Nokia phone was “using GPS and it was poor.” Paradiso Dep. Tr. at
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`58:2-6.
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`Paradiso Dep. Tr. at 38:9-18
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`666. Dr. Paradiso further explained that this Nokia phone was “using GPS and it was
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`poor.” Paradiso Dep. Tr. at 58:2-6.
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`667. Dr. Paradiso also agreed that at the time of the ’317/’999/’498 patents he himself
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`at MIT was working on a system “to overcome these challenges in the technology” that the
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`inventors of the ’317/’999/’498 patents were attempting to overcome because “GPS was not an
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`option indoors, you could not use it” and “Radio location -- ultra-wideband was in its infancy and
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`still very flaky, and even now it's not established, really.” Paradiso Dep. Tr. at 39:16-40:11. Dr.
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`Paradiso himself continued to work on performing research in the subject of handheld navigation
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`systems that use annotations to provide user orientation and published a paper about seven years
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`after the priority of the patents in 2007 where he discusses “a mobile, location and orientation
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`aware device for browsing an interacting with real-time sensor network data,” where:
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`See Ubicorder: A Mobile Device for Situated Interactions with Sensor Networks by Manas Mittal
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`and Joseph A. Paradiso. Dr. Paradiso’s paper in 2007 states that situating a user by using physical
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`location and orientation simplifies navigation and further describes the benefits of using a
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`directional arrow to “indicate orientation”:
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`See Ubicorder: A Mobile Device for Situated Interactions with Sensor Networks at 2-3.
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`668. The above shows that Dr. Paradiso and his colleague were doing research and
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`developing a “mobile, location and orientation aware device” in 2007, which was similar subject
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`matter as that of the ’317/’999/’498 patents. The inventors of the ’317/’999/’498 patents were
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`working on this subject matter in 1999 and showing how to denote orientation prior to Dr.
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`Paradiso’s work.
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`669. Dr. Paradiso further testified that even Microsoft radar came out “some years later”
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`to the’317/’999/’498 patents to address these challenges, but even then the Microsoft system “was
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`was still very flaky in terms of how well you knew where someone was.” Paradiso Dep. Tr. at
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`39:16-40:11.
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`Paradiso Dep. Tr. at 39:16-40:11
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`670. Dr. Paradiso further agreed that at the time of the ’317/’999/’498 patents, there were
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`challenges with the technology in cellular positioning and GPS positioning because “[i]ndoors
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`they quite often didn’t even work . . . they just wouldn’t work [and o]utdoors there were challenges,
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`yes.” Paradiso Dep. Tr. at 40:19-24.
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`Paradiso Dep. Tr. at 40:19-24
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`671. Dr. Paradiso further agreed, that at the time of the ’317/’999/’498 patents, the
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`inventors were trying to overcome these challenges and “the patent was trying to build the device
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`for walking navigation, and to realistically do that, you had to consider the various ways people
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`were locating people” because GPS “is very coarse location.” Paradiso Dep. Tr. at 41:5-20.
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`Paradiso Dep. Tr. at 41:5-20.
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`672. Dr. Paradiso further agreed that an additional advantage of the claimed system is to
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`“compress the display of the information” to be able to convey it on a small screen. Paradiso Dep.
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`Tr. at 42:10-14.
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`Paradiso Dep. Tr. at 42:10-14.
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`673. Dr. Paradiso further testified that “there were always challenges” and “a lot of
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`people were working on” these challenges of displaying information in a compressed manner on
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`a small screen at the “same time” as the inventors of the ’317/’999/’498 patents including Dr.
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`Paradiso’s friends at “Georgia Tech,” Paradiso Dep. Tr. at 42:19-43:3. Dr. Paradiso further
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`elaborated that “one of the things the patent talks 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.” Paradiso Dep. Tr. at 44:18-23.
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`Paradiso Dep. Tr. at 44:17-23.
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`674. Thus, according to Dr. Paradiso’s testimony noted above, the inventors of the
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`’317/’999/’498 patents were working on overcoming the same challenges that “a lot of people
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`were working on” including himself at MIT and his friends at Georgia Tech. According to Dr.
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`Paradiso, companies like Nokia and Microsoft had systems that used GPS but these products
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`provided “very coarse location” and “[i]ndoors they quite often didn’t even work.”
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`675.
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`It is with this backdrop that the inventors of the ’317/’999/’498 patents disclosed
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`and received patents for their claimed inventions with the goal of providing a system to facilitate
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`walking navigation and improve “the experience of a walking user by providing functional location
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`determination for both open outdoors areas and in obstructed indoor areas.” Paradiso Dep. Tr. at
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`36:16-37:6.
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`676.
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`It is my opinion that the ’317/’999/’498 patents achieve these goals by claiming
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`systems that are directed to different aspects and services disclosed in the specification and each
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`provide a specific technical solution. For example, claims 1, 15, and 17 of the ’317 Patent are
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`generally directed to providing a portable terminal with specific devices that provide a pedestrian
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`with navigation information about his/her walk including, for example, route information,
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`destination symbol, starting point symbol, and present place identification. The claims further
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`explain that the portable terminal can change the display according to a change in orientation of
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`the portable terminal. For example, the portable terminal is able to use the calculated location
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`and orientation information to provide the user with accurate walking navigation information
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`including, for example, the current location, route information, destination symbol, starting
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`symbol, and present place identification. As part of providing walking navigation information,
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`the patent explains that the portable terminal changes the display to account for a change in
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`orientation of the device, which allows the user to see which direction he/she is facing/walking
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`along the route.
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`677. Further, claims 1 and 3 of the ’999 Patent are generally directed to providing a
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`portable terminal with specific devices that provide a pedestrian with location information about
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`another portable terminal that may, for example, be owned by his friend. The portable terminal
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`further provides the pedestrian with route guidance information as walking navigation
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`information to this another portable terminal. This way the pedestrian is able to identify the
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`location of his friend and is then able to get walking navigation information that guides him/her
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`to walk to the friend. For example, these devices enable the portable terminal to connect to a
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`server and get the location of his friend’s device. Using this information, the portable terminal
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`provides the user with navigation information and a route such that the user is able to walk to his
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`friend. As part of providing walking navigation information, the patent explains that the portable
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`terminal changes the display to account for a change in orientation of the device, which allows
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`the user to see which direction he/she is facing/walking along the route to the friend.
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`678.
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`In addition, claims 1 and 3 of the ’498 Patent are generally directed to providing a
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`portable terminal with specific devices that provide a pedestrian with navigation information
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`about his/her walk including, for example, route information, starting and ending points and lines
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`providing navigation information. The claims further explain that the portable gets orientation
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`information of the display of the portable terminal. This way the display can be adjusted
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`according to the orientation information.
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`679. Claims 10 and 13 of the ’498 Patent are generally directed to providing a portable
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`terminal with specific devices that provide a pedestrian with location information about another
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`portable terminal and also providing a full route from the starting point to the destination, that is
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`the location of another portable terminal. The portable terminal further gets orientation
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`information of the display of the portable terminal. This way the display can be adjusted
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`according to the orientation information.
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`680. Specifically, claims 3 and 13 additionally require the portable terminal to
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`calculate orientation of the display of the portable terminal. As part of the pedestrian’s walk to
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`an end point or to a friend’s location, these claims enable the user to account for the display
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`orientation such that the user is able to rotate his/her device (e.g., portrait/landscape) to see
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`additional views of the route and/or to look at the route from a different perspective. This
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`provides the user with flexibility of holding the device in different ways and also see additional
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`details about the route.
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`681. Consistent with the Court’s finding, it is my opinion that the claimed inventions
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`as a whole—including the various devices—work together as claimed to overcome the technical
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`challenges described by Dr. Paradiso and to meet the goals of the patent including at least
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`providing a device that “enable[es] the navigation information to be displayed on a small-sized
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`screen in a manner easily understood to the user/walker” (Paradiso Dep. Tr. at 44:18-23) and a
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`device that improves “the experience of a walking user by providing functional location
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`determination for both open outdoors areas and in obstructed indoor areas.” (Paradiso Dep. Tr. at
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`36:16-37:6). For example, in his declaration, even Dr. Paradiso explained that “to achieve the
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`goal of walking navigation, a POSITA would have understood, consistent with the disclosures in
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`the specification, that a combination of GPS and some means of indoor location
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`determination, likely an infrared sensor, would be required to cover as many potential use
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`scenarios as possible.” Paradiso Claim Construction Decl. (October 4, 2019) at ¶31.
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`682. The inventors arrived at these solutions no later than July 12, 1999. This was well
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`before the massive popularity of smart phones and over eight years before the release of the first
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`iPhone by Apple in June 2007. Further, this was over a decade before Apple included a compass
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`in its iPhone;14 over eleven years before Apple included a gyroscope in its iPhone;15 over thirteen
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`years before Apple developed its own Maps application in iOS 6;16 and eight years before Dr.
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`Paradiso and his colleague published a paper regarding development of “a mobile, location and
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`orientation aware device for browsing an interacting with real-time sensor network data,” where
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`he identified one of the main contributions as a “location and orientation aware sensor.”
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`683. Thus, as Dr. Paradiso previously acknowledged that the claimed inventions are
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`not directed to just any combination of the parts for a navigation system but are directed to a
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`specific device configuration. Paradiso Dep. Tr. at 67:3-18. Further, it is my opinion that this
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`configuration is novel, non-obvious, and directed to patentable subject matter.
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`684.
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`I further note the following:
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`• Dr. Paradiso has not explained that if the claimed arrangement was so “routine and
`conventional” then why have two experts by Apple (Dr. Paradiso and Dr. Kotzin at the
`PTAB) failed to identify even a single prior art system or patent which include all the
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`14 The Compass App was first made available on iPhone 3GS that was released in June 2009. See
`https://www.dummies.com/consumer-electronics/smartphones/iphone/how-to-use-the-iphone-compass/
`[MAXELL_APPLE0274084 - MAXELL_APPLE0274094].
`15See https://www.youtube.com/watch?v=ORcu-c-qnjg (Steve Jobs announcing the inclusion of a gyroscope in the
`iPhone 4 that was released on June 24, 2010).
`16 See https://www.theguardian.com/technology/2012/sep/28/apple-maps-tim-cook-apology
`[MAXELL_APPLE0274095 - MAXELL_APPLE0274100] (Tim Cooks apologizing for Apple’s Maps application
`including numerous errors when it was released in September 19, 2012 with iOS 6).
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`claimed elements. Both of Apple’s experts have only set forth obviousness grounds
`explicitly acknowledging that they could not find a single prior art system or patent that
`included all of the claimed elements.
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`• Dr. Paradiso has not explained that if the claimed arrangement was so “routine and
`conventional” then why did Apple’s engineers not achieve it when they released the
`iPhone 2G in 2007 (almost eight years after the priority date of the patent). For
`example, as shown in the following timeline, the iPhone 2G did not include a compass,
`compass application, or a gyroscope. Further, the iPhone 2G did not include a walking
`navigation application designed by Apple. As shown below, the screenshots show that
`the Maps application in the original iPhone 2G was a “Google” application and only
`shows a “car” icon:
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`[APL-MAXELL_00991270—APL-MAXELL_00991283] (“Positioning” presentation)
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`X.
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`RESERVATION OF RIGHTS
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`687.
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`In addition to the opinions and evidence expressed herein, I reserve the right to
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`rebut any arguments made or evidence presented in response to this report. I also reserve the right
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`to supplement this report based on further investigation or analysis. .
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`688. At
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`trial,
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`I
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`reserve the right
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`to use graphic exhibits, demonstratives,
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`live
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`demonstrations of physical exhibits, or other Visual aids to help illustrate the facts and opinions I
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`express herein.
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`I swear that the foregoing is true and accurate to the best ofrny knowledge, information, and belief.
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`Dated: June 4, 2020
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