Case 5:19-cv-00036-RWS Document 473-4 Filed 08/03/20 Page 1 of 7 PageID #: 25976
`Case 5:19-cv-00036—RWS Document 473-4 Filed 08/03/20 Page 1 of 7 PageID #: 25976
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`EXHIBIT 23
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`EXHIBIT 23
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`Case 5:19-cv-00036—RWS Document 473-4 Filed 08/03/20 Page 1 of 7 PageID #: 25976
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`EXHIBIT 23
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`EXHIBIT 23
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`Case 5:19-cv-00036-RWS Document 473-4 Filed 08/03/20 Page 2 of 7 PageID #: 25977
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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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`Case 5:19-cv-00036-RWS Document 473-4 Filed 08/03/20 Page 3 of 7 PageID #: 25978
`IPR2020-00407
`U.S. Patent No. 6,748,317
`“a device for getting a location information of another portable
`terminal from said another terminal via connected network”
`and “a device for retrieving a route from said present place to
`said destination”
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`3.
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`Claim 10 recites “a device for getting a location information of another
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`portable terminal from said another terminal via connected network” and Claims 15
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`and 18 recite “a device for retrieving a route from said present place to said
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`destination.” ’317 Patent (Ex. 1001), 11:40-42; 12:21-22; 12:36-37. Both Petitioner
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`and Patent Owner agree in current parallel litigation that these terms should be
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`construed pursuant to 112-6. Joint Claim Construction and Prehearing Statement,
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`(Ex. 1011), 2; Opening Claim 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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`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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`15
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`Case 5:19-cv-00036-RWS Document 473-4 Filed 08/03/20 Page 4 of 7 PageID #: 25979
`IPR2020-00407
`U.S. Patent No. 6,748,317
`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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`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’317 PATENT ARE
`UNPATENTABLE
`A. 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 473-4 Filed 08/03/20 Page 5 of 7 PageID #: 25980
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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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 12,584 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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`COUNSEL FOR PETITIONER
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`Dated: January 13, 2020
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`Case 5:19-cv-00036-RWS Document 473-4 Filed 08/03/20 Page 6 of 7 PageID #: 25981
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
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`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 ’317 Patent as listed on PAIR:
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`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:
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`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 473-4 Filed 08/03/20 Page 7 of 7 PageID #: 25982
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`IPR2020-00407
`U.S. Patent No. 6,748,317
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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
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`COUNSEL FOR PETITIONER
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