throbber
Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 1 of 24 PageID #: 28032
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`
`
`
`
`
`Filed on behalf of Apple Inc.
`By: Adam P. Seitz, Reg. No. 52,206
`
`Jennifer C. Bailey, Reg. No. 52,583
`
`ERISE IP, P.A.
`
`7015 College Blvd., Suite700
`
`Overland Park, KS 66211
`
`Tel: (913) 777-5600
`
`Email:
`adam.seitz@eriseip.com
`
`
`
`jennifer.bailey@eriseip.com
`
`
`
`Paul R. Hart, Reg. No. 59,646
`
`ERISE IP, P.A.
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`Tel: (913) 777-5600
`Email:
`paul.hart@eriseip.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`_________________________________________________
`
`Case IPR2020-00408
`U.S. Patent No. 6,430,498 B1
`____________________________________________________
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 2 of 24 PageID #: 28033
`
`Pursuant to 35 U.S.C. §§ 141-142 and 319, 5 U.S.C. §§ 701-706, 28 U.S.C.
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`
`
`§ 1295(a)(4)(A), and 28 U.S.C. § 1651, and in accordance with 37 C.F.R. §§ 90.2-
`
`90.3, and Federal Circuit Rule 15(a)(1), notice is hereby given that Petitioner
`
`Apple Inc. appeals to the U.S. Court of Appeals for the Federal Circuit from the
`
`Decision Denying Institution of Inter Partes Review entered on August 11, 2020
`
`(Paper 13) in IPR2020-00409, attached as Exhibit A, and all prior and
`
`interlocutory rulings related thereto or subsumed therein.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner states that the issues
`
`for appeal include, but are not limited to:
`
`(1) whether the U.S. Patent and Trademark Office (PTO) exceeded its
`
`statutory authority and violated the text, structure, and purpose of the Leahy-Smith
`
`America Invents Act, 35 U.S.C. §§ 311-319 (AIA), and Administrative Procedure
`
`Act, 5 U.S.C. §§ 701-706 (APA), by adopting a rule—and applying that rule to
`
`deny institution here—that purports to authorize the Patent Trial and Appeal Board
`
`(Board) to deny institution of inter partes review (IPR) based on non-statutory,
`
`discretionary factors related to the pendency of parallel patent-infringement
`
`litigation;
`
`(2) whether the PTO exceeded its statutory authority and violated the APA
`
`by adopting a rule governing institution decisions—and applying the rule to deny
`
`1
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 3 of 24 PageID #: 28034
`
`
`institution here—that incorporates non-statutory, discretionary factors that are
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`arbitrary and capricious;
`
`(3) whether the PTO exceeded its statutory authority and violated the AIA
`
`and the APA by adopting a rule to govern all institution decisions—and applying
`
`that rule to deny institution here—without following the procedures for notice-and-
`
`comment rulemaking; and
`
`(4) whether the court of appeals has jurisdiction over this appeal,
`
`notwithstanding 35 U.S.C. § 314(d), because the PTO acted in excess of its
`
`statutory authority and outside its statutory limits or because the grounds for
`
`attacking the decision to deny institution depend on statutes, including the APA,
`
`that are less closely tied to the application and interpretation of statutes related to
`
`the decision to initiate IPR.
`
`This Notice of Appeal is timely, having been duly filed 16 days after the
`
`date of the Decision Denying Institution of Inter Partes Review.
`
`A copy of this Notice of Appeal is being filed simultaneously with the
`
`Board, the Clerk’s Office for the United States Court of Appeals for the Federal
`
`Circuit, and the Director of the PTO.
`
`
`
`Dated: August 27, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`ERISE IP, P.A.
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 4 of 24 PageID #: 28035
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY: /s/Adam P. Seitz
`
`
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`
`Paul R. Hart, Reg. No. 59,646
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`P: (913) 777-5600
`F: (913) 777-5601
`paul.hart@eriseip.com
`
`ATTORNEYS FOR PETITIONER
`APPLE INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 5 of 24 PageID #: 28036
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
`
`
`
`
`
`addition to being filed electronically through the Patent Trial and Appeal Board’s
`
`End to End (PTAB E2E) system, a true and correct original version of the
`
`foregoing Petitioner’s Notice of Appeal is being filed by Priority Express Mail
`
`on this 27th day of August, 2020, with the Director of the U.S. Patent and
`
`Trademark Office, at the following address:
`
`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Pursuant to 37 C.F.R. 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
`
`Rule 52(a), (e), I hereby certify that a true and correct copy of the foregoing
`
`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
`
`for the Federal Circuit using the Court’s CM/ECF filing system on this 27th day
`
`of August, 2020, and the filing fee is being paid electronically using pay.gov.
`
` I
`
` hereby certify that on August 27, 2020, I caused a true and correct copy
`
`of the foregoing Petitioner’s Notice of Appeal to be served via email on the
`
`following counsel for Patent Owner:
`
`Robert G. Pluta (rpluta@mayerbrown.com)
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 6 of 24 PageID #: 28037
`
`
`
`Maxell-Apple-Service@mayerbrown.com
`
`IPR2020-00408
`U.S. Patent 6,430,498 B1
`
`Dated: August 27, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`
`
`
`
`
`COUNSEL FOR PETITIONERS
`
`5
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 7 of 24 PageID #: 28038
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Entered: August 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`Before MINN CHUNG, JASON W. MELVIN, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 8 of 24 PageID #: 28039
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc., filed a Petition for inter partes review of
`
`claims 1, 3–5, 7–11, and 13 (the “challenged claims”) of U.S. Patent
`
`No. 6,430,498 B1 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Patent
`
`Owner, Maxell, Ltd., filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”). Pursuant to our authorization for supplemental briefing, Petitioner
`
`filed a Reply to Patent Owner’s Preliminary Response, and Patent Owner
`
`filed a Sur-reply. Paper 8 (“Pet. Reply”); Paper 11 (“PO Sur-reply”); see
`
`Paper 7, 4 (authorizing reply and sur-reply).
`
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`
`institute an inter partes review if “the information presented in the
`
`petition . . . and any response . . . shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
`
`discretion to deny a petition even when a petitioner meets that threshold.
`
`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`
`Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
`
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
`
`May 7, 2019) (“NHK”).
`
`Having considered the parties’ submissions, and for the reasons
`
`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
`
`deny institution of inter partes review.
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 9 of 24 PageID #: 28040
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`II. BACKGROUND
`
`A. Related Matters
`
`The parties identify the following pending district court proceeding
`
`related to the ’498 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036
`
`(E.D. Tex., filed Mar. 15, 2019) (“the underlying litigation”). Pet. 7;
`
`Paper 4, 1 (Patent Owner’s Mandatory Notices).
`
`Petitioner also has filed petitions in IPR2020-00409 and IPR2020-
`
`00407 respectively challenging claims of U.S. Patent No. 6,580,999 B2 (“the
`
`’999 patent”), which is a continuation of the ’498 patent, and U.S. Patent
`
`No. 6,748,317 B2 (“the ’317 patent”), which is a continuation of the
`
`’999 patent. See ’317 patent, code (63).
`
`B. Overview of the ’498 Patent
`
`The ’498 patent describes “a portable terminal provided with the
`
`function of walking navigation, which can supply location-related
`
`information to the walking user.” Ex. 1001, 1:10–13. According to the
`
`’498 patent, conventional navigation systems at the time of the invention
`
`were unsuitable for walking navigation because they were too large to be
`
`carried by a walking user. Id. at 1:25–29. At the same time, maps provided
`
`by conventional map information services could not be displayed clearly on
`
`the small screens of portable telephones. Id. at 1:39–45. The invention of
`
`the ’498 patent purportedly addressed these problems by providing a
`
`portable terminal that can “supply location information easier for the user to
`
`understand during walking.” Id. at 2:44–47.
`
`The portable terminal described in the ’498 patent obtains location
`
`information and direction information of the terminal (i.e., the direction of
`
`the tip of the terminal). Id. at code (57), 2:59–64. Based on this terminal
`
`3
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 10 of 24 PageID #: 28041
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`information, the portable terminal obtains and displays information such as
`
`route guidance for reaching a destination or neighborhood guidance relating
`
`to entertainment, businesses, and restaurants. Id. at code (57), 2:65–3:35. In
`
`addition, the portable terminal displays the direction of a destination with an
`
`indicating arrow that always points in the direction of the destination. Id. at
`
`code (57), Fig. 1.
`
`C. Illustrative Claim
`
`Challenged claims 1, 5, and 10 are independent. Challenged claims 3
`
`and 4 depend directly from claim 1, challenged claims 7–9 depend directly
`
`from claim 5, and challenged claims 11 and 13 depend directly from
`
`claim 10. Claims 1 and 10 are illustrative of the claimed subject matter:
`
`1. A portable terminal with the function of walking
`navigation, comprising:
`
`a device for getting location information denoting a present
`place of said portable terminal; and
`
`a device for getting direction information denoting an
`orientation of said portable terminal,
`
`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 supply route guidance information as said
`walking navigation information.
`
`10. A portable terminal with the function of walking
`navigation, comprising:
`
`a device for getting location information denoting a present
`place of said portable terminal; and
`
`a device for getting direction information denoting an
`orientation of said portable terminal,
`
`wherein location of a user is of said portable terminal is
`determined according to said location information and said
`direction information,
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 11 of 24 PageID #: 28042
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`wherein location of a partner of the user is determined
`according to a location information from the partner's
`portable terminal, and
`
`wherein a full route from said starting point to said destination
`is shown with a bent line that is distinguished between
`starting and ending points and said present place is shown
`with a symbol on said line to supply said route guidance
`information as said walking navigation information.
`
`Ex. 1001, 10:30–41, 11:28–12:14.
`
`D. Prior Art and Declaration Evidence
`
`Petitioner cites the following references in its challenge to
`
`patentability:
`
`U.S. Patent No. 6,067,502, issued May 23, 2000 (Ex. 1004,
`
`“Hayashida”);
`
`Gregory D. Abowd et al., Cyberguide: A mobile context-aware tour
`
`guide, Wireless Networks 3 (1997) 421–433 (Ex. 1005, “Abowd”); and
`
`Japanese Unexamined Patent Application Publication No. H9-311625,
`
`published December 2, 1997 (Ex. 1007, “Ikeda”).1
`
`Petitioner supports its challenge with a declaration from Dr. Michael
`
`D. Kotzin (Ex. 1003).
`
`
`1 Ikeda is a Japanese-language publication (Ex. 1006) that was filed with an
`English-language translation (Ex. 1007) and an affidavit attesting to the
`accuracy of the translation, as required by 37 C.F.R. § 42.63(b) (id. at 1).
`Patent Owner does not dispute the accuracy of the English translation in
`Exhibit 1007 at this time. Our citations to Ikeda are to the certified English
`translation.
`
`5
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 12 of 24 PageID #: 28043
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts that the challenged claims are unpatentable based on
`
`the following ground (Pet. 6):
`
`Claims Challenged
`
`35 U.S.C. §
`
`1, 3, 5, 7, and 8
`
`103(a)2
`
`3, 7
`
`1, 3–5, 7–11, 13
`
`3, 7, 11, 13
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`References
`
`Hayashida3
`
`Hayashida, Ikeda4
`
`Hayashida, Abowd
`
`Hayashida, Abowd, Ikeda
`
`III. ANALYSIS
`
`Patent Owner contends we should exercise our discretion under
`
`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
`
`advanced stage of the underlying litigation in the United States District
`
`Court for the Eastern District of Texas. Prelim. Resp. 2–22;
`
`PO Sur-reply 1–10. According to Patent Owner, instituting an inter partes
`
`review “would needlessly duplicate” the district court action and
`
`“unnecessarily waste the Board’s resources.” Prelim. Resp. 4 (citing NHK,
`
`Paper 8 at 20 (denying institution)).
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. §103 effective March 16, 2013. Because the
`’498 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version of § 103.
`
`3 Petitioner presents this ground as obviousness over Hayashida and the
`knowledge of a person of ordinary skill in the art. Pet. 6.
`
`4 Petitioner presents this ground as obviousness over Hayashida, Ikeda, and
`the knowledge of a person of ordinary skill in the art. Id.
`
`6
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 13 of 24 PageID #: 28044
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`After Patent Owner filed its Preliminary Response, we authorized the
`
`parties to submit supplemental briefing on the issue of discretionary denial
`
`under 35 U.S.C. § 314(a). Paper 7, 4. We specifically authorized the parties
`
`to address the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020)
`
`(“Fintiv”). Id. Fintiv provides several factors that balance considerations of
`
`system efficiency, fairness, and patent quality when a patent owner raises an
`
`argument for discretionary denial due to the advanced state of a parallel
`
`proceeding. Fintiv, Paper 11 at 5–6. These factors are:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id.
`
`We now consider these factors to determine whether we should
`
`exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n
`
`evaluating the factors, the Board takes a holistic view of whether efficiency
`
`and integrity of the system are best served by denying or instituting review.”
`
`Id. at 6.
`
`7
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 14 of 24 PageID #: 28045
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`A. Fintiv Factor 1: Stay in the Underlying Litigation
`
`Petitioner moved for a stay in the underlying litigation, but the district
`
`court denied the motion. See Pet. Reply 7; PO Sur-reply 2; Exs. 1045, 1052,
`
`2018. Among other reasons, the court stated “[t]he case is not in its infancy
`
`and is far enough along that a stay would interfere with ongoing
`
`proceedings.” Ex. 1052, 4. Notably, the court denied the motion without
`
`prejudice. Id. at 6. Although the court stated that “[t]he late stage of the
`
`proceedings will certainly weigh against granting a stay” if Petitioner were
`
`to file a renewed motion for a stay, the court also stated it could not “say
`
`now that the late stage would necessarily outweigh the potential
`
`simplification of issues following institution decisions” in this and other
`
`inter partes review proceedings. Id. Given the court’s apparent willingness
`
`to reconsider a motion to stay if an institution decision simplified issues for
`
`trial, but also considering the late stage of the district court proceeding, with
`
`trial scheduled to begin in about four months, we view the first Fintiv factor
`
`as neutral in determining whether to exercise discretion to deny institution.
`
`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
`
`The district court trial date, previously set for October 26, 2020, has
`
`been reset for December 7, 2020. Ex. 3001 (August 10, 2020 Order
`
`resetting trial date); see Pet. Reply 7; PO Sur-reply 2; Ex. 2001. A trial
`
`beginning this December would be completed about eight months before a
`
`final written decision would be due in this proceeding.
`
`Petitioner notes that the COVID-19 pandemic may affect the trial
`
`schedule, and indeed the trial has been delayed by six weeks due to the
`
`effects of COVID-19. Pet. Reply 7 n.4; Ex. 3001, 1. Patent Owner cites a
`
`standing order in the court where the underlying litigation is pending “to
`
`8
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 15 of 24 PageID #: 28046
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`keep cases moving” despite COVID-19. PO Sur-reply 4 (quoting Ex. 2024,
`
`1). In any event, Patent Owner argues, even if the trial date were delayed by
`
`three months, the trial still would precede a final written decision by several
`
`months. Id. at 3. Although we consider further delays due to the COVID-19
`
`pandemic to be a real possibility despite the trial court’s standing order and
`
`the recent order resetting the trial date for December 7, 2020, a delayed trial
`
`still may precede a final written decision in this proceeding, which would be
`
`due in August 2021. This factor, therefore, favors the exercise of
`
`discretionary denial.
`
`C. Fintiv Factor 3: Investment by the Court and the Parties in
`the Underlying Litigation
`
`Petitioner asserts that briefing on dispositive issues and other pre-trial
`
`efforts have not yet begun, and the district court has not made any rulings on
`
`the merits. Pet. Reply 8–9. According to Petitioner, these facts outweigh
`
`the amount of work the court has invested in claim construction. Id. at 9.
`
`As evidence of the court’s investment of time and resources, Patent
`
`Owner highlights the court’s claim construction hearing and order and its
`
`rulings on various motions. PO Sur-reply 5. As for the parties’ investment
`
`in the underlying litigation, Patent Owner notes that fact discovery closed on
`
`March 31, 2020, except for some depositions postponed due to COVID-19
`
`that are now complete, and expert discovery was scheduled to close on
`
`June 25, 2020. Id. at 5–6.
`
`At least some of the court’s and the parties’ work related to invalidity
`
`has been completed in preparation for the upcoming trial. Because some of
`
`this invested effort, including claim construction and expert discovery, likely
`
`has relevance to issues that would arise in this proceeding, this factor favors
`
`the exercise of discretionary denial in this case to prevent duplication of
`
`9
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 16 of 24 PageID #: 28047
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`work on similar issues by the Board and the district court, and by the parties
`
`in multiple forums.
`
`D. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Underlying Litigation
`
`Petitioner contends there is little overlap between the issues in this
`
`case and those in the underlying litigation. Pet. Reply 9–10. First, Petitioner
`
`asserts that the Petition challenges claims 1, 3–5, 7–11, and 13, whereas only
`
`claims 3 and 13 are at issue in the underlying litigation. Id. Second,
`
`Petitioner argues that the Petition and the underlying litigation present
`
`different grounds of unpatentability and invalidity. Id. at 10. In particular,
`
`Petitioner contends that none of the unpatentability grounds asserted here—
`
`two primary obviousness grounds based on the combinations of Hayashida
`
`and the knowledge of a person of ordinary skill in the art or Hayashida and
`
`Abowd, and two additional grounds adding Ikeda to each of those
`
`combinations—remains at issue in the underlying litigation. Id. Rather,
`
`Petitioner points out that two of the four obviousness grounds in the district
`
`court rely on NavTalk as a base reference, a third ground combines
`
`Hayashida with Maruyama, which is not asserted here, and the final ground
`
`relies on the Cyberguide system in combination with Hayashida. Id. (citing
`
`Ex. 1047, 2). Although Abowd describes the Cyberguide system, which is
`
`asserted as system prior art in the underlying litigation, Petitioner argues that
`
`the Cyberguide/Hayashida obviousness ground is materially different from
`
`the Hayashida/Abowd obviousness ground asserted in the Petition. Id.
`
`According to Petitioner, only some pertinent details of the Cyberguide
`
`system are described in Abowd, and the proposed modified systems and
`
`motivations to combine will be significantly different. Id.
`
`10
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 17 of 24 PageID #: 28048
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`Patent Owner contends that the district court ordered it to elect a
`
`narrower set of claims in the underlying litigation and this narrowing should
`
`have no impact on the Board’s decision whether to exercise discretion to
`
`deny institution. PO Sur-reply 8. Patent Owner also contends that although
`
`independent claims 5 and 10 are no longer at issue in the underlying
`
`litigation, Petitioner itself acknowledges the substantial overlap between
`
`claims 1, 5, and 10 by substantially relying on its claim 1 analysis for
`
`claims 5 and 10. Id. (citing Pet. 58–61). As for the asserted grounds, Patent
`
`Owner argues that the combination of Hayashida and Abowd in the Petition
`
`is substantially similar to the combination of Cyberguide and Hayashida
`
`asserted in the underlying litigation because Cyberguide is system prior art
`
`described in Abowd and developed by its authors and Petitioner is relying on
`
`Abowd as part of its Cyberguide set of references. Id. (citing Exs. 2009,
`
`2010).
`
`After considering the parties’ arguments and the record before us, we
`
`determine that the asserted ground in the Petition is substantially the same as
`
`the ground asserted in the underlying litigation. The first ground in the
`
`Petition—obviousness over Hayashida and the knowledge of a person
`
`having ordinary skill in the art—is substantially similar to the obviousness
`
`ground based on Hayashida and Maruyama in the underlying litigation.
`
`Claims 1 and 5 are the independent claims challenged in the Petition on the
`
`first ground, and the Petition includes many of the same citations to
`
`Hayashida for claims 1 and 5 as the Petitioner’s expert report in the district
`
`court for the combination of Hayashida and Maruyama. Compare Pet. 17–
`
`36 (analysis of claims 1 and 5 for obviousness over Hayashida and the
`
`knowledge of a person of ordinary skill in the art), with Ex. 2008, 1–17
`
`(expert report claim chart for claim 1); see also Prelim. Resp. 8–9
`
`11
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 18 of 24 PageID #: 28049
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`(comparing alleged support from Hayashida relied on in the Petition and in
`
`the district court expert report). The relatively insignificant role of
`
`Murayama in the underlying litigation is highlighted by the fact that the
`
`expert report cites only Hayashida for teaching all the limitations of
`
`claims 1, 3, and 13, and relies on Maruyama as additional support for just
`
`one limitation of claim 10. Ex. 2008, 1–28. Petitioner does not argue, nor
`
`do we see based on the present record, that the proposed combination of
`
`Hayashida with Maruyama in the underlying litigation differs materially
`
`from the obviousness ground based on Hayashida and the knowledge of a
`
`person of ordinary skill in the art asserted in the Petition.
`
`The asserted ground in the Petition adding Ikeda to Hayashida’s
`
`teachings is not materially different because Petitioner relies on similar
`
`teachings from both references. Indeed, Petitioner’s expert explains that
`
`“given the similarity between the architecture of the two disclosures [from
`
`Hayashida and Ikeda] (e.g., use of GPS for location, compass and gyroscope
`
`for direction, and map display), a [person of ordinary skill in the art] would
`
`have understood that the devices [of Hayashida and Ikeda] would have been
`
`able to perform the same functions.” Ex. 1003 ¶ 85.
`
`Addressing the remaining grounds in the Petition, we agree with
`
`Patent Owner that obviousness over the combination of Hayashida and
`
`Abowd is substantially similar to obviousness over Cyberguide and
`
`Hayashida as asserted in the underlying litigation. Cyberguide is system
`
`prior art, but in the district court Petitioner relies on Abowd as part of the
`
`Cyberguide set of references. Ex. 2010, 2 n.1 (Final Election of Prior Art
`
`indicating that the Cyberguide system and its associated references are
`
`considered “one reference” consistent with a court order); IPR2020-00409,
`
`Ex. 2012, 1 (expert report in IPR2020-00409 explaining that the features and
`
`12
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 19 of 24 PageID #: 28050
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`functionalities of the Cyberguide system are described in various printed
`
`publications, including Abowd).5 Importantly, the expert report’s claim
`
`chart in the district court primarily quotes Abowd to show that Cyberguide
`
`teaches limitations of claims 1 and 3 of the ’999 patent. IPR2020-00409,
`
`Ex. 2012, 1–27. Claim 1 of the ’999 patent and claim 10 of the ’498 patent
`
`recite substantially similar subject matter. Compare Ex. 1001, 11:28–12:14,
`
`with IPR2020-00409, Ex. 1001, 10:38–50. Thus, Petitioner appears to rely
`
`primarily on the same or similar teachings from Abowd in the underlying
`
`litigation, albeit through the Cyberguide system prior art. Moreover, even
`
`though Petitioner argues that “only some pertinent details . . . are described
`
`in the Abowd publication” (Pet. Reply 10), Petitioner does not purport to
`
`show any material differences between its unpatentability analysis based on
`
`Hayashida and Abowd here and its invalidity analysis based on Hayashida
`
`and Cyberguide in the underlying litigation. For these reasons, we find that
`
`the assertion of Hayashida and Abowd in both proceedings likely will result
`
`in duplication of work and create the potential for inconsistent decisions.
`
`Regarding the ground based on Hayashida, Abowd, and Ikeda, it is
`
`not materially different from the ground based on Hayashida and Abowd
`
`because Petitioner relies on similar teachings from the references. See
`
`Ex. 1003 ¶ 126 (“[G]iven the similarity between the architecture of the
`
`Hayashida-Abowd combination and Ikeda (e.g., use of GPS for location,
`
`compass and gyroscope for direction, and map display), a [person of
`
`
`5 Although the parties have not submitted a Cyberguide claim chart for the
`’498 patent, we infer that it would be similar to the Cyberguide claim chart
`for the ’999 patent submitted in IPR2020-00409 due to the similarities in the
`independent claims from the two patents. Compare ’498 patent, claim 10,
`with ’999 patent, claim 1.
`
`13
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 20 of 24 PageID #: 28051
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`ordinary skill in the art] would have understood that the devices would have
`
`been able to perform the same functions.”).
`
`As for the challenged claims, independent claims 1 and 10 and
`
`dependent claims 3 and 13 are at issue in both proceedings because claims 3
`
`and 13 respectively depend from claims 1 and 10. See Ex. 2008, 1–28
`
`(showing claim charts for claims 1, 3, 10, and 13 from Petitioner’s expert
`
`report in the district court). In addition, as Patent Owner points out,
`
`Petitioner acknowledges the substantial overlap between claims 1, 5, and 10
`
`by substantially relying on its claim 1 analysis for claims 5 and 10.
`
`Sur-reply 8 (citing Pet. 58–61).
`
`As for the remaining dependent claims challenged here, most of them
`
`do not add limitations that are materially different from those of the claims
`
`at issue in the underlying litigation. Petitioner relies on substantially the
`
`same analysis for claims 4 and 10. Pet. 60. For claim 7, Petitioner relies on
`
`its analysis for claims 3 and 5 (id. at 58), and for claim 9, Petitioner relies on
`
`its analysis for claims 4 and 5 (id. at 60).
`
`This fourth Fintiv factor involves consideration of inefficiency
`
`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
`
`Therefore, “if the petition includes the same or substantially the same
`
`claims, grounds, arguments, and evidence as presented in the parallel
`
`proceeding, this fact has favored denial.” Id. As discussed, there is
`
`substantial overlap between the grounds asserted in the underlying litigation
`
`and those asserted in the Petition, so that institution of an inter partes review
`
`likely will result in duplicative efforts by the Board and the trial court as to
`
`how the references teach limitations of the challenged claims. Further, both
`
`tribunals would address the material issues with respect to whether the
`
`asserted prior art teaches the limitations of claims 1, 3, 10, and 13. Finally,
`
`14
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 21 of 24 PageID #: 28052
`
`IPR2020-00408
`Patent 6,430,498 B1
`
`independent claim 5 and dependent claims 4, 7, and 9 challenged here raise
`
`similar issues as those asserted in the underlying litigation. For these
`
`reasons, we determine that this factor on balan

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket