Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 1 of 12 PageID #: 33024
`Case 5:19-cv-00036—RWS Document 646-3 Filed 03/08/21 Page 1 of 12 PageID #: 33024
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`EXHIBIT 3
`EXHIBIT 3
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`Case 5:19-cv-00036—RWS Document 646-3 Filed 03/08/21 Page 1 of 12 PageID #: 33024
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`EXHIBIT 3
`EXHIBIT 3
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`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 2 of 12 PageID #: 33025
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,640
`
`12/23/2020
`
`6580999
`
`2638-19.05
`
`1042
`
`01/21/2021
`7590
`24956
`MATTINGLY & MALUR, PC
`1800 DIAGONAL ROAD
`SUITE 210
`ALEXANDRIA, VA 22314
`
`EXAMINER
`
`TARAE. CATHERINE MICHELLE
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`01/21/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
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`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 3 of 12 PageID #: 33026
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`ERISE IP, P.A.
`7015 COLLEGE BLVD., STE 700
`OVERLAND PARK, KS 66211
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,640.
`
`PATENT UNDER REEXAMINATION 6580999.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 4 of 12 PageID #: 33027
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,640
`
`Examiner
`
`C. M TARAE
`
`Patent Under Reexamination
`
`6580999
`
`Art Unit
`
`AIA (FITF) Status
`
`3992
`
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 12/23/2020 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a) □ PT0-892,
`
`PTO/SB/08,
`
`c)O Other:
`
`1. 0
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`cc:Requester ( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20210112
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 5 of 12 PageID #: 33028
`
`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 2
`
`DECISION ON REQUEST FOR EX PARTE REEXAMINATION
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`A substantial new question (SNQ) of patentability affecting claims 1 and 3 of U.S.
`
`Pat. No. 6,580,999 to Maruyama et al. ("the '999 Patent") is raised by the Request for
`
`Ex Parte reexamination filed December 23, 2020.
`
`Reexamination is granted for claims 1 and 3.
`
`Concurrent Proceedings
`
`The '999 Patent is the subject in Maxell Ltd. v. Apple Inc, No. 5:1 0-cv-0036-
`
`RWS.
`
`References Asserted by Requester as Raising SNQs of Patentability
`
`• U.S. Patent No. 6,067,502 to Hayashida et al. ("Hayashida")
`
`• U.S. Patent No. 6,167,277 to Kawamoto ("Kawamoto")
`
`• JPH10-197277 to Maruyama et al. ("Maruyama")
`
`Prosecution History of the '999 Patent
`
`Application 10/173,423 ('423 Application) that matured into the '999 Patent was
`
`originally filed June 18, 2002. The '423 Application was a continuation of 09/613,634
`
`filed July 11, 2000 and had a foreign priority to Japanese Patent No. 11-197010 filed
`
`July 12, 1999. The '423 Application was filed with a preliminary amendment that
`
`canceled claims 1-14 and added claims 15-20.
`
`
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`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 6 of 12 PageID #: 33029
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 3
`
`A Non-Final Office Action was mailed on October 23, 2002 rejecting claims 15-20
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`under nonstatutory obviousness double patenting over claims 1-13 of U.S. Patent No.
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`6,430,498.
`
`On January 9, 2003, Applicant filed a Terminal Disclaimer, which obviated the
`
`double patenting rejection.
`
`The Examiner issued a Notice of Allowance on February 4, 2003 allowing claims
`
`15-20 with the following allowable subject matter:
`
`"Specifically, the prior art of record fail to suggest a portable terminal with the
`
`function of walking navigation, comprising, among other limitations, a device denoting
`
`an orientation of the terminal, a device for getting location information of another
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`portable terminal, a direction from a present place to the location of the other portable
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`terminal being displayed with distance information between locations, wherein the
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`direction is denoted with an orientation of line and the distance is denoted with number,
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`and wherein the direction from a present place to the location of said another portable
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`terminal is displayed using symbols denoting an orientation of a line that is distinguished
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`between starting and ending points."
`
`Proposed SNQs Raised in the Request
`
`Issue 1 : Hayashida in view of Kawamoto raise an SNQ with respect to claims 1 and 3.
`
`(Request at 6)
`
`Issue 2: Hayashida in view of Kawamoto and in further view of Maruyama raise an
`
`SNQ with respect to claims 1 and 3. (Request at 6)
`
`
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`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 7 of 12 PageID #: 33030
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 4
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`Evaluation of SNQs Raised in Request for Reexamination
`
`Issue 1
`
`Requester asserts a SNQ involving claims 1 and 3 with Hayashida in view of
`
`Kawamoto.
`
`Hayashida discloses a portable terminal that provides walking navigation (76:41-
`
`45, "[t]his invention may be applied to the carrying-type navigation device in addition to
`
`the navigation device which is attached to the movement bodies such as the car. In
`
`other words, this invention may be applied to the small navigation device which can be
`
`accompanied by the human and which is used in a cycling, a travel, a mountaineering, a
`
`hike, a fishing or so on."). The terminal aquires the present position (7:28-31, "The
`
`present position detector 20 includes an absolute direction sensor 21, a relative
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`direction sensor 22, a distance sensor 23 and a vehicle speed sensor 24.") and use the
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`present position and destination information to provide route guidance (8:23-32, "The
`
`input/output device 30 comprises a display 33, a transparent touch panel 34, a printer
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`35 and a speaker 13. The display 33 displays guide data during the navigation
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`operation. The touch panel 34 is constituted by a plurality of transparent touch switches
`
`that are arranged in the form of a matrix on a plane, and is adhered onto the screen of
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`the display 33. By using the touch panel 34, data necessary for setting the destination,
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`such as start point, destination, passing points, drop-in places, etc. are input to the
`
`navigation device.").
`
`Kawamoto discloses a portable terminal that can locate the present position of
`
`another terminal (4:48-52, "At first, at step S1, user A who wants to recognize the
`
`present position of user B (portable remote terminal 20B), operates input section 96A to
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 8 of 12 PageID #: 33031
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 5
`
`instruct CPU 91 to search the present position of portable remote terminal 20B."). The
`
`terminal can display the moving directions of the two terminals on a map (Fig. 12).
`
`As such, it appears Hayashida and Kawamoto disclose all of the claim limitations
`
`of claims 1 and 3.
`
`Since Hayashida and Kawamoto appear to teach all of the claim limitations of
`
`claim 1 and 3, a reasonable examiner would consider these teachings important in
`
`determining the patentability of claims 1 and 3. Hayashida and Kawamoto were not
`
`previously cited in the prosecution history of the '999 Patent; and the issues are not the
`
`subject of a final holding by a Federal Court. The teachings are also not cumulative to
`
`the teachings previously residing in the prior art cited by the '999 Patent. As such, the
`
`Examiner agrees that Hayashida and Kawamoto raise a SNQ of patentability with
`
`respect to claims 1 and 3.
`
`Issue 2
`
`Requester asserts a SNQ involving claims 1 and 3 with Hayashida in view of
`
`Kawamoto and further in view of Maruyama.
`
`The teachings of Hayashida and Kawamoto are discussed above with respect to
`
`Issue 1.
`
`Maruyama discloses a portable navigation device for providing a user with
`
`navigation to a destination (abstract). The portable navigation device can be carried by
`
`a user (10004; Figs. 2-4) and uses a display to indicate direction (10007). GPS is used
`
`to determine current position information (10019) and a bearing detection means that
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 9 of 12 PageID #: 33032
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 6
`
`uses a gyroscope or electronic compass is used to determine orientation of the user
`
`(10005).
`
`Since Hayashida and Kawamoto in further view of Maruyama appear to teach all
`
`of the claim limitations of claim 1 and 3 as discussed above, a reasonable examiner
`
`would consider these teachings important in determining the patentability of claims 1
`
`and 3. Maruyama was not previously cited in the prosecution history of the '999 Patent;
`
`and the issues are not the subject of a final holding by a Federal Court. The teachings
`
`are also not cumulative to the teachings previously residing in the prior art cited by the
`
`'999 Patent. As such, the Examiner agrees that Hayashida and Kawamoto in further
`
`view of Maruyama raise a SNQ of patentability with respect to claims 1 and 3.
`
`Conclusion
`
`Since an SNQ has been raised for at least one claim, the Request for Ex Parte
`
`reexamination of claims 1 and 3 is granted.
`
`Extension of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexaminations proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37 CFR
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 10 of 12 PageID #: 33033
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 7
`
`1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in
`
`37 CFR 1.550(c).
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendment to the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`formally presented pursuant to 37 CFR §1.52(a) and (b), and must contain any fees
`
`required by 37 CFR § 1.20(c). See MPEP §2250(IV) for examples to assist in the
`
`preparation of proper proposed amendments in reexamination proceedings.
`
`Service of Papers
`
`After the filing of a request for reexamination by a third party requester, any
`
`document filed by either the patent owner or the third party requester must be served on
`
`the other party (or parities where two or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1 .248. See
`
`37 CFR 1 .550.
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving the '999 Patent throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`
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`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 11 of 12 PageID #: 33034
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 8
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`the Office of any such activity or proceedings throughout the course of this
`
`reexamination proceeding. See MPEP §§ 2207, 2282, and 2286.
`
`Information Disclosure Statement
`
`Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
`
`"Where patents, publications, and other such items of information are submitted
`
`by a party (patent owner or requester) in compliance with the requirements of the rules,
`
`the requisite degree of consideration to be given to such information will be normally
`
`limited by the degree to which the party filing the information citation has explained the
`
`content and relevance of the information. The initials of the examiner placed adjacent to
`
`the citations on the form PTO/SB/OBA and 088 or its equivalent, without an indication to
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`the contrary in the record, do not signify that the information has been considered by the
`
`examiner any further than to the extent noted above."
`
`Future Correspondence
`
`If attempts to reach Examiner Michelle Tarae by telephone at 571-272-6727 are
`
`unsuccessful, the examiner's supervisor, Andrew Fischer, can be reached on 571-272-
`
`6779.
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed:
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner of Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case 5:19-cv-00036-RWS Document 646-3 Filed 03/08/21 Page 12 of 12 PageID #: 33035
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`Application/Control Number: 90/014,640
`Art Unit: 3992
`
`Page 9
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`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By Hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via
`the electronic filing system EFS-Web, at
`
`https://efs.uspto.qov/efile/myportal/efs-reqistered
`
`EFS-Web offers the benefit of quick submission to the particular area of the
`Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
`scanned" (i.e., electronically uploaded) directly into the official file for the reexamination
`proceeding, which offers parties the opportunity to review the content of their
`submissions after the "soft scanning" process is complete.
`
`Any inquiry concerning this communication should be directed to the Central
`
`Reexamination Unit at (571) 272-7705.
`
`Signed:
`
`/CATHERINE M TARAE/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/BJP/
`Primary Examiner, Art Unit 3992
`
`/ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
`
`
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