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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`Filed on behalf of Apple Inc.
`By: Adam P. Seitz, Reg. No. 52,206
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`Jennifer C. Bailey, Reg. No. 52,583
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`ERISE IP, P.A.
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`7015 College Blvd., Suite700
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`Overland Park, KS 66211
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`Tel: (913) 777-5600
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`Email:
`adam.seitz@eriseip.com
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`jennifer.bailey@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
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`ERISE IP, P.A.
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`Tel: (913) 777-5600
`Email:
`paul.hart@eriseip.com
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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 IPR2020-00408
`U.S. Patent No. 6,430,498 B1
`____________________________________________________
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`PETITIONER’S NOTICE OF APPEAL
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 2 of 24 PageID #: 28033
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`Pursuant to 35 U.S.C. §§ 141-142 and 319, 5 U.S.C. §§ 701-706, 28 U.S.C.
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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`§ 1295(a)(4)(A), and 28 U.S.C. § 1651, and in accordance with 37 C.F.R. §§ 90.2-
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`90.3, and Federal Circuit Rule 15(a)(1), notice is hereby given that Petitioner
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`Apple Inc. appeals to the U.S. Court of Appeals for the Federal Circuit from the
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`Decision Denying Institution of Inter Partes Review entered on August 11, 2020
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`(Paper 13) in IPR2020-00409, attached as Exhibit A, and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner states that the issues
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`for appeal include, but are not limited to:
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`(1) whether the U.S. Patent and Trademark Office (PTO) exceeded its
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`statutory authority and violated the text, structure, and purpose of the Leahy-Smith
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`America Invents Act, 35 U.S.C. §§ 311-319 (AIA), and Administrative Procedure
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`Act, 5 U.S.C. §§ 701-706 (APA), by adopting a rule—and applying that rule to
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`deny institution here—that purports to authorize the Patent Trial and Appeal Board
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`(Board) to deny institution of inter partes review (IPR) based on non-statutory,
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`discretionary factors related to the pendency of parallel patent-infringement
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`litigation;
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`(2) whether the PTO exceeded its statutory authority and violated the APA
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`by adopting a rule governing institution decisions—and applying the rule to deny
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 3 of 24 PageID #: 28034
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`institution here—that incorporates non-statutory, discretionary factors that are
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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`arbitrary and capricious;
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`(3) whether the PTO exceeded its statutory authority and violated the AIA
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`and the APA by adopting a rule to govern all institution decisions—and applying
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`that rule to deny institution here—without following the procedures for notice-and-
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`comment rulemaking; and
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`(4) whether the court of appeals has jurisdiction over this appeal,
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`notwithstanding 35 U.S.C. § 314(d), because the PTO acted in excess of its
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`statutory authority and outside its statutory limits or because the grounds for
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`attacking the decision to deny institution depend on statutes, including the APA,
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`that are less closely tied to the application and interpretation of statutes related to
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`the decision to initiate IPR.
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`This Notice of Appeal is timely, having been duly filed 16 days after the
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`date of the Decision Denying Institution of Inter Partes Review.
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`A copy of this Notice of Appeal is being filed simultaneously with the
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`Board, the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit, and the Director of the PTO.
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`Dated: August 27, 2020
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`Respectfully submitted,
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`ERISE IP, P.A.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 4 of 24 PageID #: 28035
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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`BY: /s/Adam P. Seitz
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`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
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`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
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 5 of 24 PageID #: 28036
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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E) system, a true and correct original version of the
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`foregoing Petitioner’s Notice of Appeal is being filed by Priority Express Mail
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`on this 27th day of August, 2020, with the Director of the U.S. Patent and
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`Trademark Office, at the following address:
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`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
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`Pursuant to 37 C.F.R. 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a), (e), I hereby certify that a true and correct copy of the foregoing
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`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
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`for the Federal Circuit using the Court’s CM/ECF filing system on this 27th day
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`of August, 2020, and the filing fee is being paid electronically using pay.gov.
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` hereby certify that on August 27, 2020, I caused a true and correct copy
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`of the foregoing Petitioner’s Notice of Appeal to be served via email on the
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`following counsel for Patent Owner:
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`Robert G. Pluta (rpluta@mayerbrown.com)
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 6 of 24 PageID #: 28037
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`Maxell-Apple-Service@mayerbrown.com
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`IPR2020-00408
`U.S. Patent 6,430,498 B1
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`Dated: August 27, 2020
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`Respectfully submitted,
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONERS
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 7 of 24 PageID #: 28038
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`Trials@uspto.gov
`571-272-7822
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`Paper 13
`Entered: August 11, 2020
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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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`IPR2020-00408
`Patent 6,430,498 B1
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`Before MINN CHUNG, JASON W. MELVIN, and
`FREDERICK C. LANEY, Administrative Patent Judges.
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`CHUNG, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 8 of 24 PageID #: 28039
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`IPR2020-00408
`Patent 6,430,498 B1
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`I. INTRODUCTION
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`Petitioner, Apple Inc., filed a Petition for inter partes review of
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`claims 1, 3–5, 7–11, and 13 (the “challenged claims”) of U.S. Patent
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`No. 6,430,498 B1 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Patent
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`Owner, Maxell, Ltd., filed a Preliminary Response. Paper 6 (“Prelim.
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`Resp.”). Pursuant to our authorization for supplemental briefing, Petitioner
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`filed a Reply to Patent Owner’s Preliminary Response, and Patent Owner
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`filed a Sur-reply. Paper 8 (“Pet. Reply”); Paper 11 (“PO Sur-reply”); see
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`Paper 7, 4 (authorizing reply and sur-reply).
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`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
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`institute an inter partes review if “the information presented in the
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`petition . . . and any response . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
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`discretion to deny a petition even when a petitioner meets that threshold.
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`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
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`(“[T]he agency’s decision to deny a petition is a matter committed to the
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`Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
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`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
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`May 7, 2019) (“NHK”).
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`Having considered the parties’ submissions, and for the reasons
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`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
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`deny institution of inter partes review.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 9 of 24 PageID #: 28040
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`IPR2020-00408
`Patent 6,430,498 B1
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`II. BACKGROUND
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`A. Related Matters
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`The parties identify the following pending district court proceeding
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`related to the ’498 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036
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`(E.D. Tex., filed Mar. 15, 2019) (“the underlying litigation”). Pet. 7;
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`Paper 4, 1 (Patent Owner’s Mandatory Notices).
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`Petitioner also has filed petitions in IPR2020-00409 and IPR2020-
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`00407 respectively challenging claims of U.S. Patent No. 6,580,999 B2 (“the
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`’999 patent”), which is a continuation of the ’498 patent, and U.S. Patent
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`No. 6,748,317 B2 (“the ’317 patent”), which is a continuation of the
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`’999 patent. See ’317 patent, code (63).
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`B. Overview of the ’498 Patent
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`The ’498 patent describes “a portable terminal provided with the
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`function of walking navigation, which can supply location-related
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`information to the walking user.” Ex. 1001, 1:10–13. According to the
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`’498 patent, conventional navigation systems at the time of the invention
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`were unsuitable for walking navigation because they were too large to be
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`carried by a walking user. Id. at 1:25–29. At the same time, maps provided
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`by conventional map information services could not be displayed clearly on
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`the small screens of portable telephones. Id. at 1:39–45. The invention of
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`the ’498 patent purportedly addressed these problems by providing a
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`portable terminal that can “supply location information easier for the user to
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`understand during walking.” Id. at 2:44–47.
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`The portable terminal described in the ’498 patent obtains location
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`information and direction information of the terminal (i.e., the direction of
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`the tip of the terminal). Id. at code (57), 2:59–64. Based on this terminal
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`IPR2020-00408
`Patent 6,430,498 B1
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`information, the portable terminal obtains and displays information such as
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`route guidance for reaching a destination or neighborhood guidance relating
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`to entertainment, businesses, and restaurants. Id. at code (57), 2:65–3:35. In
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`addition, the portable terminal displays the direction of a destination with an
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`indicating arrow that always points in the direction of the destination. Id. at
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`code (57), Fig. 1.
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`C. Illustrative Claim
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`Challenged claims 1, 5, and 10 are independent. Challenged claims 3
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`and 4 depend directly from claim 1, challenged claims 7–9 depend directly
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`from claim 5, and challenged claims 11 and 13 depend directly from
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`claim 10. Claims 1 and 10 are illustrative of the claimed subject matter:
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`1. A portable terminal with the function of walking
`navigation, comprising:
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`a device for getting location information denoting a present
`place of said portable terminal; and
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`a device for getting direction information denoting an
`orientation of said portable terminal,
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`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.
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`10. A portable terminal with the function of walking
`navigation, comprising:
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`a device for getting location information denoting a present
`place of said portable terminal; and
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`a device for getting direction information denoting an
`orientation of said portable terminal,
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`wherein location of a user is of said portable terminal is
`determined according to said location information and said
`direction information,
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`IPR2020-00408
`Patent 6,430,498 B1
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`wherein location of a partner of the user is determined
`according to a location information from the partner's
`portable terminal, and
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`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.
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`Ex. 1001, 10:30–41, 11:28–12:14.
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`D. Prior Art and Declaration Evidence
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`Petitioner cites the following references in its challenge to
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`patentability:
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`U.S. Patent No. 6,067,502, issued May 23, 2000 (Ex. 1004,
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`“Hayashida”);
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`Gregory D. Abowd et al., Cyberguide: A mobile context-aware tour
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`guide, Wireless Networks 3 (1997) 421–433 (Ex. 1005, “Abowd”); and
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`Japanese Unexamined Patent Application Publication No. H9-311625,
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`published December 2, 1997 (Ex. 1007, “Ikeda”).1
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`Petitioner supports its challenge with a declaration from Dr. Michael
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`D. Kotzin (Ex. 1003).
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`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.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 12 of 24 PageID #: 28043
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`IPR2020-00408
`Patent 6,430,498 B1
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts that the challenged claims are unpatentable based on
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`the following ground (Pet. 6):
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`Claims Challenged
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`35 U.S.C. §
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`1, 3, 5, 7, and 8
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`103(a)2
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`3, 7
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`1, 3–5, 7–11, 13
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`3, 7, 11, 13
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`103(a)
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`103(a)
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`103(a)
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`References
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`Hayashida3
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`Hayashida, Ikeda4
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`Hayashida, Abowd
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`Hayashida, Abowd, Ikeda
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`III. ANALYSIS
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`Patent Owner contends we should exercise our discretion under
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`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
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`advanced stage of the underlying litigation in the United States District
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`Court for the Eastern District of Texas. Prelim. Resp. 2–22;
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`PO Sur-reply 1–10. According to Patent Owner, instituting an inter partes
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`review “would needlessly duplicate” the district court action and
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`“unnecessarily waste the Board’s resources.” Prelim. Resp. 4 (citing NHK,
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`Paper 8 at 20 (denying institution)).
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`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.
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`3 Petitioner presents this ground as obviousness over Hayashida and the
`knowledge of a person of ordinary skill in the art. Pet. 6.
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`4 Petitioner presents this ground as obviousness over Hayashida, Ikeda, and
`the knowledge of a person of ordinary skill in the art. Id.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 13 of 24 PageID #: 28044
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`IPR2020-00408
`Patent 6,430,498 B1
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`After Patent Owner filed its Preliminary Response, we authorized the
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`parties to submit supplemental briefing on the issue of discretionary denial
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`under 35 U.S.C. § 314(a). Paper 7, 4. We specifically authorized the parties
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`to address the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020)
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`(“Fintiv”). Id. Fintiv provides several factors that balance considerations of
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`system efficiency, fairness, and patent quality when a patent owner raises an
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`argument for discretionary denial due to the advanced state of a parallel
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`proceeding. Fintiv, Paper 11 at 5–6. These factors are:
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Id.
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`We now consider these factors to determine whether we should
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`exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n
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`evaluating the factors, the Board takes a holistic view of whether efficiency
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`and integrity of the system are best served by denying or instituting review.”
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`Id. at 6.
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`Case 5:19-cv-00036-RWS Document 530-4 Filed 09/04/20 Page 14 of 24 PageID #: 28045
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`IPR2020-00408
`Patent 6,430,498 B1
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`A. Fintiv Factor 1: Stay in the Underlying Litigation
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`Petitioner moved for a stay in the underlying litigation, but the district
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`court denied the motion. See Pet. Reply 7; PO Sur-reply 2; Exs. 1045, 1052,
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`2018. Among other reasons, the court stated “[t]he case is not in its infancy
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`and is far enough along that a stay would interfere with ongoing
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`proceedings.” Ex. 1052, 4. Notably, the court denied the motion without
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`prejudice. Id. at 6. Although the court stated that “[t]he late stage of the
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`proceedings will certainly weigh against granting a stay” if Petitioner were
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`to file a renewed motion for a stay, the court also stated it could not “say
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`now that the late stage would necessarily outweigh the potential
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`simplification of issues following institution decisions” in this and other
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`inter partes review proceedings. Id. Given the court’s apparent willingness
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`to reconsider a motion to stay if an institution decision simplified issues for
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`trial, but also considering the late stage of the district court proceeding, with
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`trial scheduled to begin in about four months, we view the first Fintiv factor
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`as neutral in determining whether to exercise discretion to deny institution.
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`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
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`The district court trial date, previously set for October 26, 2020, has
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`been reset for December 7, 2020. Ex. 3001 (August 10, 2020 Order
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`resetting trial date); see Pet. Reply 7; PO Sur-reply 2; Ex. 2001. A trial
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`beginning this December would be completed about eight months before a
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`final written decision would be due in this proceeding.
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`Petitioner notes that the COVID-19 pandemic may affect the trial
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`schedule, and indeed the trial has been delayed by six weeks due to the
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`effects of COVID-19. Pet. Reply 7 n.4; Ex. 3001, 1. Patent Owner cites a
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`standing order in the court where the underlying litigation is pending “to
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`IPR2020-00408
`Patent 6,430,498 B1
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`keep cases moving” despite COVID-19. PO Sur-reply 4 (quoting Ex. 2024,
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`1). In any event, Patent Owner argues, even if the trial date were delayed by
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`three months, the trial still would precede a final written decision by several
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`months. Id. at 3. Although we consider further delays due to the COVID-19
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`pandemic to be a real possibility despite the trial court’s standing order and
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`the recent order resetting the trial date for December 7, 2020, a delayed trial
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`still may precede a final written decision in this proceeding, which would be
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`due in August 2021. This factor, therefore, favors the exercise of
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`discretionary denial.
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`C. Fintiv Factor 3: Investment by the Court and the Parties in
`the Underlying Litigation
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`Petitioner asserts that briefing on dispositive issues and other pre-trial
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`efforts have not yet begun, and the district court has not made any rulings on
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`the merits. Pet. Reply 8–9. According to Petitioner, these facts outweigh
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`the amount of work the court has invested in claim construction. Id. at 9.
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`As evidence of the court’s investment of time and resources, Patent
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`Owner highlights the court’s claim construction hearing and order and its
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`rulings on various motions. PO Sur-reply 5. As for the parties’ investment
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`in the underlying litigation, Patent Owner notes that fact discovery closed on
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`March 31, 2020, except for some depositions postponed due to COVID-19
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`that are now complete, and expert discovery was scheduled to close on
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`June 25, 2020. Id. at 5–6.
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`At least some of the court’s and the parties’ work related to invalidity
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`has been completed in preparation for the upcoming trial. Because some of
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`this invested effort, including claim construction and expert discovery, likely
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`has relevance to issues that would arise in this proceeding, this factor favors
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`the exercise of discretionary denial in this case to prevent duplication of
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`work on similar issues by the Board and the district court, and by the parties
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`in multiple forums.
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`D. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Underlying Litigation
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`Petitioner contends there is little overlap between the issues in this
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`case and those in the underlying litigation. Pet. Reply 9–10. First, Petitioner
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`asserts that the Petition challenges claims 1, 3–5, 7–11, and 13, whereas only
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`claims 3 and 13 are at issue in the underlying litigation. Id. Second,
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`Petitioner argues that the Petition and the underlying litigation present
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`different grounds of unpatentability and invalidity. Id. at 10. In particular,
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`Petitioner contends that none of the unpatentability grounds asserted here—
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`two primary obviousness grounds based on the combinations of Hayashida
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`and the knowledge of a person of ordinary skill in the art or Hayashida and
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`Abowd, and two additional grounds adding Ikeda to each of those
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`combinations—remains at issue in the underlying litigation. Id. Rather,
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`Petitioner points out that two of the four obviousness grounds in the district
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`court rely on NavTalk as a base reference, a third ground combines
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`Hayashida with Maruyama, which is not asserted here, and the final ground
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`relies on the Cyberguide system in combination with Hayashida. Id. (citing
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`Ex. 1047, 2). Although Abowd describes the Cyberguide system, which is
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`asserted as system prior art in the underlying litigation, Petitioner argues that
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`the Cyberguide/Hayashida obviousness ground is materially different from
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`the Hayashida/Abowd obviousness ground asserted in the Petition. Id.
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`According to Petitioner, only some pertinent details of the Cyberguide
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`system are described in Abowd, and the proposed modified systems and
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`motivations to combine will be significantly different. Id.
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`Patent Owner contends that the district court ordered it to elect a
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`narrower set of claims in the underlying litigation and this narrowing should
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`have no impact on the Board’s decision whether to exercise discretion to
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`deny institution. PO Sur-reply 8. Patent Owner also contends that although
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`independent claims 5 and 10 are no longer at issue in the underlying
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`litigation, Petitioner itself acknowledges the substantial overlap between
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`claims 1, 5, and 10 by substantially relying on its claim 1 analysis for
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`claims 5 and 10. Id. (citing Pet. 58–61). As for the asserted grounds, Patent
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`Owner argues that the combination of Hayashida and Abowd in the Petition
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`is substantially similar to the combination of Cyberguide and Hayashida
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`asserted in the underlying litigation because Cyberguide is system prior art
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`described in Abowd and developed by its authors and Petitioner is relying on
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`Abowd as part of its Cyberguide set of references. Id. (citing Exs. 2009,
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`2010).
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`After considering the parties’ arguments and the record before us, we
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`determine that the asserted ground in the Petition is substantially the same as
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`the ground asserted in the underlying litigation. The first ground in the
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`Petition—obviousness over Hayashida and the knowledge of a person
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`having ordinary skill in the art—is substantially similar to the obviousness
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`ground based on Hayashida and Maruyama in the underlying litigation.
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`Claims 1 and 5 are the independent claims challenged in the Petition on the
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`first ground, and the Petition includes many of the same citations to
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`Hayashida for claims 1 and 5 as the Petitioner’s expert report in the district
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`court for the combination of Hayashida and Maruyama. Compare Pet. 17–
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`36 (analysis of claims 1 and 5 for obviousness over Hayashida and the
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`knowledge of a person of ordinary skill in the art), with Ex. 2008, 1–17
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`(expert report claim chart for claim 1); see also Prelim. Resp. 8–9
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`(comparing alleged support from Hayashida relied on in the Petition and in
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`the district court expert report). The relatively insignificant role of
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`Murayama in the underlying litigation is highlighted by the fact that the
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`expert report cites only Hayashida for teaching all the limitations of
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`claims 1, 3, and 13, and relies on Maruyama as additional support for just
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`one limitation of claim 10. Ex. 2008, 1–28. Petitioner does not argue, nor
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`do we see based on the present record, that the proposed combination of
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`Hayashida with Maruyama in the underlying litigation differs materially
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`from the obviousness ground based on Hayashida and the knowledge of a
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`person of ordinary skill in the art asserted in the Petition.
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`The asserted ground in the Petition adding Ikeda to Hayashida’s
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`teachings is not materially different because Petitioner relies on similar
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`teachings from both references. Indeed, Petitioner’s expert explains that
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`“given the similarity between the architecture of the two disclosures [from
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`Hayashida and Ikeda] (e.g., use of GPS for location, compass and gyroscope
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`for direction, and map display), a [person of ordinary skill in the art] would
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`have understood that the devices [of Hayashida and Ikeda] would have been
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`able to perform the same functions.” Ex. 1003 ¶ 85.
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`Addressing the remaining grounds in the Petition, we agree with
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`Patent Owner that obviousness over the combination of Hayashida and
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`Abowd is substantially similar to obviousness over Cyberguide and
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`Hayashida as asserted in the underlying litigation. Cyberguide is system
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`prior art, but in the district court Petitioner relies on Abowd as part of the
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`Cyberguide set of references. Ex. 2010, 2 n.1 (Final Election of Prior Art
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`indicating that the Cyberguide system and its associated references are
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`considered “one reference” consistent with a court order); IPR2020-00409,
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`Ex. 2012, 1 (expert report in IPR2020-00409 explaining that the features and
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`functionalities of the Cyberguide system are described in various printed
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`publications, including Abowd).5 Importantly, the expert report’s claim
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`chart in the district court primarily quotes Abowd to show that Cyberguide
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`teaches limitations of claims 1 and 3 of the ’999 patent. IPR2020-00409,
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`Ex. 2012, 1–27. Claim 1 of the ’999 patent and claim 10 of the ’498 patent
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`recite substantially similar subject matter. Compare Ex. 1001, 11:28–12:14,
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`with IPR2020-00409, Ex. 1001, 10:38–50. Thus, Petitioner appears to rely
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`primarily on the same or similar teachings from Abowd in the underlying
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`litigation, albeit through the Cyberguide system prior art. Moreover, even
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`though Petitioner argues that “only some pertinent details . . . are described
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`in the Abowd publication” (Pet. Reply 10), Petitioner does not purport to
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`show any material differences between its unpatentability analysis based on
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`Hayashida and Abowd here and its invalidity analysis based on Hayashida
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`and Cyberguide in the underlying litigation. For these reasons, we find that
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`the assertion of Hayashida and Abowd in both proceedings likely will result
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`in duplication of work and create the potential for inconsistent decisions.
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`Regarding the ground based on Hayashida, Abowd, and Ikeda, it is
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`not materially different from the ground based on Hayashida and Abowd
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`because Petitioner relies on similar teachings from the references. See
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`Ex. 1003 ¶ 126 (“[G]iven the similarity between the architecture of the
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`Hayashida-Abowd combination and Ikeda (e.g., use of GPS for location,
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`compass and gyroscope for direction, and map display), a [person of
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`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.
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`ordinary skill in the art] would have understood that the devices would have
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`been able to perform the same functions.”).
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`As for the challenged claims, independent claims 1 and 10 and
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`dependent claims 3 and 13 are at issue in both proceedings because claims 3
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`and 13 respectively depend from claims 1 and 10. See Ex. 2008, 1–28
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`(showing claim charts for claims 1, 3, 10, and 13 from Petitioner’s expert
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`report in the district court). In addition, as Patent Owner points out,
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`Petitioner acknowledges the substantial overlap between claims 1, 5, and 10
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`by substantially relying on its claim 1 analysis for claims 5 and 10.
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`Sur-reply 8 (citing Pet. 58–61).
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`As for the remaining dependent claims challenged here, most of them
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`do not add limitations that are materially different from those of the claims
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`at issue in the underlying litigation. Petitioner relies on substantially the
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`same analysis for claims 4 and 10. Pet. 60. For claim 7, Petitioner relies on
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`its analysis for claims 3 and 5 (id. at 58), and for claim 9, Petitioner relies on
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`its analysis for claims 4 and 5 (id. at 60).
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`This fourth Fintiv factor involves consideration of inefficiency
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`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
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`Therefore, “if the petition includes the same or substantially the same
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`claims, grounds, arguments, and evidence as presented in the parallel
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`proceeding, this fact has favored denial.” Id. As discussed, there is
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`substantial overlap between the grounds asserted in the underlying litigation
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`and those asserted in the Petition, so that institution of an inter partes review
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`likely will result in duplicative efforts by the Board and the trial court as to
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`how the references teach limitations of the challenged claims. Further, both
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`tribunals would address the material issues with respect to whether the
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`asserted prior art teaches the limitations of claims 1, 3, 10, and 13. Finally,
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`independent claim 5 and dependent claims 4, 7, and 9 challenged here raise
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`similar issues as those asserted in the underlying litigation. For these
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`reasons, we determine that this factor on balan