Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 1 of 8 PageID #: 25968
`Case 5:19-cv-00036—RWS Document 473-3 Filed 08/03/20 Page 1 of 8 PageID #: 25968
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`EXHIBIT 22
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`EXHIBIT 22
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`Case 5:19-cv-00036—RWS Document 473-3 Filed 08/03/20 Page 1 of 8 PageID #: 25968
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`EXHIBIT 22
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`EXHIBIT 22
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 2 of 8 PageID #: 25969
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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
`
`v.
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`MAXELL, LTD.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00409
`U.S. Patent No. 6,580,999
`____________
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`
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,580,999
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 3 of 8 PageID #: 25970
`IPR2020-00409
`U.S. Patent No. 6,580,999
`The device for getting direction information 78 is provided with a
`compass, a gyro, such a sensor as a clinometer, and a control unit for
`analyzing sensor-measured data,
`thereby calculating direction
`information.
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`’999 Patent (Ex. 1001), 9:52-55. The specification further provides that the CPU
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`performs analysis of sensor-measured data to get direction information. Id. at 4:17-
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`33, 5:63-6:2, and Fig. 2.
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`3.
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` “a device for getting the location information of another
`portable terminal [from said another terminal via connected
`network]”
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`Claims 1, 5, and 6 recite “a device for getting the location information of
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`another portable terminal [from said another terminal via connected network].” ’999
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`Patent (Ex. 1001), 10:45-46; 11:8-9; 12:7-9. Both Petitioner and Patent Owner agree
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`in current parallel litigation that these terms should be construed pursuant to 112-6.
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`Joint Claim Construction and Prehearing Statement, (Ex. 1011), 2; Opening Claim
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`Construction Brief, (Ex. 1012), 28.
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`As has been permitted previously, Petitioner proposes this Board adopt the
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`claim constructions advanced by Patent Owner in the parallel district court litigation
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`for these claimed phrases. See Western Digital Corporation v. Spex Technologies,
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`Inc., IPR2018-00084, (2018) (finding Petition based on claim constructions urged
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`by Patent Owner satisfies the claim construction requirements and that Petitioner is
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`not required to express its subjective agreement regarding correctness of the
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`12
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 4 of 8 PageID #: 25971
`IPR2020-00409
`U.S. Patent No. 6,580,999
`proffered claim construction or take ownership of the construction); see also
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`General Electric v. Vestas, IPR2018-00928 (clarifying that while the petitioner does
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`not have “to express its subjective agreement regarding [the] correctness of its
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`proffered claim constructions,” the Petitioner nevertheless “cannot expressly
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`disagree with the proffered constructions”) (citing Western Digital).
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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 (Ex. 1040) in support of this corresponding
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`structure: Abstract, 1:10-15, 2:23-26, 2:51-3:1, 3:43-66, 4:14-39, 5:17- 21, 5:64-6:4,
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`6:9-18, 8:17-9:39, 9:40-63, 10:29-34, Figures 5-7, 9, 10.3 Joint Claim Construction
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`and 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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`3 The identified ’317 Patent citations correspond to the following citations of the
`’999 Patent (Ex. 1001): Abstract, 1:8-13, 2:19-22, 2:47-52, 3:39-45, 3:58-60, 4:8-
`33; 5:13-17, 5:60-67; 6:5-14; 8:13-9:35, 9:40-59, and 10:25-30.
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`13
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 5 of 8 PageID #: 25972
`IPR2020-00409
`U.S. Patent No. 6,580,999
`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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`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’999 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Hayashida and Abowd render claims 1-6 obvious
`Overview of the Prior Art
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`Hayashida was filed on August 21, 1997 and issued on May 23, 2000 and is
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`prior art to the ’999 Patent under at least 35 U.S.C. § 102(e) (pre-AIA) (“§ 102(e)”).4
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`Hayashida was not cited or considered during prosecution of the ’999 Patent.
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`Hayashida is directed to a navigation system. Hayashida (Ex. 1004), Abstract.
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`The system described by Hayashida uses a satellite GPS system and land-based
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`beacon system to obtain the location of the user as well as an electronic compass and
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`gyroscope to obtain the traveling direction of the user. Id. at 7:60-8:8. Hayashida
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`uses this information to retrieve information such as destinations and routes to
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`destinations. See e.g., id. at 54:33-46 (describing extraction of facilities along a
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`4 To the extent Patent Owner attempts to swear behind the August 21, 1997 priority
`date, Petitioner reserves the right to rely on the disclosures of Hayashida’s foreign
`priority applications to demonstrate its status as prior art under 102(e) should be
`assessed at an earlier date.
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`14
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 6 of 8 PageID #: 25973
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`CERTIFICATION OF WORD COUNT
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`The undersigned certifies pursuant to 37 C.F.R. §42.24 that the foregoing
`Petition for Inter Partes Review, excluding any table of contents, mandatory notices
`under 37 C.F.R. §42.8, certificates of service or word count, or appendix of exhibits,
`contains 11,013 words according to the word-processing program used to prepare
`this document (Microsoft Word).
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`BY: /s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
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`
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`COUNSEL FOR PETITIONER
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`Dated: January 13, 2020
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 7 of 8 PageID #: 25974
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
`January 13, 2020, a complete and entire copy of this Petition for Inter Partes Review
`including exhibits was provided via Federal Express to the Patent Owner by serving
`the correspondence address of record for the ’999 Patent as listed on PAIR:
`
`Mattingly, Stanger & Malur
`1800 Diagonal Road, Suite 370
`Alexandria, VA 22314
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`Further, a courtesy copy of this Petition for Inter Partes Review was sent via
`Federal Express to the assignee of record:
`
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`P.O. Box 5398
`Texarkana, TX 75505-5398
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`William J. Barrow
`Bryan Nese
`Alison T. Gelsleichter
`Mayer Brown LLP
`1999 K. Street, NW
`Washington, DC 20006
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`Case 5:19-cv-00036-RWS Document 473-3 Filed 08/03/20 Page 8 of 8 PageID #: 25975
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`IPR2020-00409
`U.S. Patent No. 6,580,999
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`Robert G. Pluta
`Amanda S. Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
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`BY: /s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
`
`COUNSEL FOR PETITIONER
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