Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 1 of 23 PageID #: 33050
`Case 5:19-cv-00036—RWS Document 646-5 Filed 03/08/21 Page 1 of 23 PageID #: 33050
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`EXHIBIT 5
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`Case 5:19-cv-00036—RWS Document 646-5 Filed 03/08/21 Page 1 of 23 PageID #: 33050
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`EXHIBIT 5
`EXHIBIT 5
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 2 of 23 PageID #: 33051
`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.
`
`90/014,639
`
`12/23/2020
`
`6748317
`
`2638-19.03
`
`3087
`
`02/16/2021
`7590
`MATTINGLY, STANGER & MALUR
`1800 DIAGONAL ROAD
`SUITE 370
`ALEXANDRIA, VA 22314
`
`EXAMINER
`
`WHITTINGTON. KENNETH
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`02/16/2021
`
`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 646-5 Filed 03/08/21 Page 3 of 23 PageID #: 33052
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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. 90/014,639.
`
`PATENT UNDER REEXAMINATION 6748317.
`
`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 646-5 Filed 03/08/21 Page 4 of 23 PageID #: 33053
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,639
`
`Examiner
`
`Patent Under Reexamination
`
`6748317
`
`Art Unit
`
`AIA (FITF) Status
`
`KENNETH WHITTINGTON
`
`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.
`
`'KENNETH WHITTINGTON/
`Primary Examiner, Art Unit 3992
`
`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. 20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 5 of 23 PageID #: 33054
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`ORDER GRANTING EX PARTEREEXAMINATION
`
`Page 2
`
`Ex parte reexamination has been requested for Claims 1, 15 and 17 of United
`
`States Patent No. 6,748,317 to Kishiko Maruyama et al., entitled PORTABLE
`
`TERMINAL WITH THE FUNCTION OF WALKING NAVIGATION (hereinafter the "317
`
`5
`
`Patent"). Substantial new questions of patentability (SNQs) affecting claims 1, 15 and
`
`17 of the 317 Patent are raised by the request for ex parte reexamination filed
`
`December 23, 2020 (hereinafter the "Request"). Accordingly, reexamination is
`
`GRANTED.
`
`10
`
`I.
`
`REFERENCES/DOCUMENTS CITED HEREIN
`
`(a)
`
`U.S. Patent No. 6,067,502 to Hayashida et al., issued November 21, 2000
`
`(hereinafter "Hayashida").
`
`(b)
`
`Japanese Unexamined Patent Application Publication H10-197277 to Satoshi
`
`Maruyama et al., published July 31, 1998 (hereinafter "Maruyama").
`
`15
`
`(c)
`
`U.S. Patent No. 6,124,826 to Garthwaite et al., issued September 26, 2000
`
`(hereinafter "Garthwaite").
`
`(d)
`
`U.S. Patent No. 5,146,231 to Ghaem et al., issued September 8, 1992
`
`(hereinafter "Ghaem").
`
`(e)
`
`Japanese Patent Application JP06-282796 to Konishi et al., published March 29,
`
`20
`
`1993 (hereinafter "Konishi").
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 6 of 23 PageID #: 33055
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`Application/Control Number: 90/014,639
`Art Unit: 3992
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`Page 3
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`II.
`
`ACKNOWLEDGEMENTS
`
`The references noted above, particularly the Hayashida and Maruyama, have
`
`been asserted in the Request as providing disclosures and/or teachings relevant to the
`
`claims of the 317 Patent. The Request and all of its accompanying documents and
`
`5
`
`evidence have been fully considered in the Examiners' determinations and findings
`
`discussed below.
`
`Ill.
`
`RELATED PROCEEDINGS/LITIGATION
`
`After reviewing the Request, performing a litigation search and reviewing the file
`
`10
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`history of the 317 Patent, Examiners are aware of the following:
`
`(a)
`
`(b)
`
`(c)
`
`IPR2018-00235 filed November 22, 2017. This proceeding was not instituted.
`
`IPR2020-00407 filed January 13, 2020. This proceeding was not instituted.
`
`Maxell, Ltd. v. Zte Corporation et al., 5:16cv179 (E.D. Texas). This litigation was
`
`dismissed without any final holding of invalidity of the claims of the 317 Patent.
`
`15
`
`(d)
`
`Maxell, Ltd. v. Apple Inc., 5:19cv36 (E.D. Texas). This litigation is currently
`
`pending. Examiners are not aware of the current status of this litigation and
`
`further are not aware of any final holding of invalidity of any claims of the 317
`
`Patent.
`
`The patent owner is reminded of the continuing responsibility under 37 C.F.R.
`
`20
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`§1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, throughout the course of this reexamination proceeding involving the 317
`
`Patent. The third party requester is also reminded of the ability to similarly apprise the
`
`Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§2207, 2282 and 2286.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 7 of 23 PageID #: 33056
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`Application/Control Number: 90/014,639
`Art Unit: 3992
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`Page 4
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`IV.
`
`PRIORITY
`
`After careful review of the prosecution history of the 317 Patent, Examiners find
`
`that the 317 Patent was filed as U.S. Application No. 10/428,755 on May 5, 2003
`
`5
`
`(hereinafter the "755 Application"). Examiners further find the 755 Application was
`
`filed as a continuation of U.S. Application No. 10/173,423, filed June 18, 2002
`
`(hereinafter the "423 Application"), now U.S. Patent No. 6,580,999 (hereinafter the
`
`"999 Patent"), which was filed as a continuation of U.S. Patent Application No.
`
`09/613,634, filed July 11, 2000 (hereinafter the "634 Application"), now U.S. Patent No.
`
`10
`
`6,430,498. Examiners finally find these applications/patents claim priority to Japanese
`
`Application No. JP11-197010, filed July 12, 1999.
`
`V.
`
`RELEVANT PROSECUTION HISTORY
`
`The 317 Patent, particularly claims 1, 15 and 17, is generally directed to a
`
`15
`
`portable terminal that is used to help the user thereof to navigate about an area. The
`
`portable terminal is generally a portable telephone, personal handyphone system or a
`
`personal data assistance terminal. See 317 Patent col. 1, lines 10-18. Such portable
`
`terminal has a device for getting location information, such as a GPS, wireless antenna,
`
`a PHS or the like, a device for getting directional information such a compass or a gyro
`
`20
`
`sensor, an input device such as a button keys, a pen, etc., and a display such as a
`
`liquid crystal display. See 317 Patent FIG. 10, reprinted below, location information
`
`device 77, direction information device 78, input device 73, a display device 72 and a
`
`CPU 71.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 8 of 23 PageID #: 33057
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 5
`
`317 Patent FIG. 10
`
`The display device displays certain information based on input from the input device
`
`and data from the location information device and the direction information device. For
`
`5
`
`example, the display displays positions of said destination and said present place and a
`
`relation of said direction. See claim 1 and FIGS. 3(a)-3(f). Further, the display displays
`
`a direction from said present place to said destination. See claim 1 and FIG. 1 .
`
`Additionally, the display changes according to a change of said direction of said
`
`portable terminal orientation for walking navigation. See claim 1. Furthermore, the
`
`10
`
`display displays a route and displays a direction of movement by an arrow. See claim
`
`15. Finally, the display displays the route with a bent line. See claim 17.
`
`The following are the Examiners findings of fact related to the prosecution of the
`
`755 Application that led to the 317 Patent:
`
`05/05/2003 Patent Owner filed the 755 Application. Therein, Applicant filed a
`
`15
`
`preliminary amendment presenting prosecuted claims 15-28 for
`
`examination. Of importance herein, prosecuted claim 15 was an
`
`independent apparatus claim.
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`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 9 of 23 PageID #: 33058
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 6
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`Furthermore, along with the filing of the 755 Application, Patent Owner
`
`filed an Information Disclosure Statement (hereinafter the "May 2003
`
`IDS") which cited Garthwaite, Steiner and Ghaem.
`
`09/02/2003 The original examiners issued a non-final Office action (hereinafter the
`
`5
`
`"2003 NF Action") rejecting all claims under double patenting over the
`
`999 Patent. No art based rejections were made. The original examiner
`
`also indicated consideration of the May 2003 IDS.
`
`12/16/2003 Patent Owner filed an amendment and terminal disclaimer in response to
`
`10
`
`15
`
`20
`
`25
`
`30
`
`the 2003 NF Action (hereinafter the "2003 Response"). The terminal
`
`disclaimer overcame the double patenting rejection over the 999 Patent.
`
`In the amendment, prosecuted claim 15 was amended as follows:
`
`15.
`
`A portable terminal, comprising:
`a device for getting location information denoting a resent place of
`said portable terminal;
`a device for getting a direction information denoting an orientation
`of said portable terminal;
`an input device for inputting a destination; and
`a display,
`wherein
`a direotion from said present plaoe to said inputted destination is
`displayed aooording to said inputted destination on said display
`said display displays positions of said destination and said present
`place, and a relation of said direction and a direction from said present
`place to said destination, and
`said display changes according to a change of said direction of said
`portable terminal orientation for walking navigation.
`
`In the amendment, Patent Owner also added new prosecuted claims 29-
`
`34. Furthermore, along with the 2003 Response, Patent Owner filed an
`
`Information Disclosure Statement (hereinafter the "Dec 2003 IDS") which
`
`cited Konishi.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 10 of 23 PageID #: 33059
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 7
`
`01/28/2004 The original examiners issued a Notice of Allowance of all claims of the
`
`755 Application (hereinafter the "2004 NOA'').
`
`In a statement of reasons
`
`for allowance, the original examiner reiterated the general features of
`
`prosecuted claim 15 without identifying any specific claim language that
`
`5
`
`overcame the prior art. Along with the Notice Examiners also indicated
`
`consideration of the Dec 2003 IDS.
`
`06/08/2004 The 755 Patent issued as the 317 Patent. Original prosecuted claims 15,
`
`29 and 31 were renumbers Patent Claims 1, 15 and 17, respectively.
`
`10
`
`VI.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`For a substantial new question of patentability (SNQ) to be present, it is only
`
`necessary that: (A) the prior art patents and/or printed publications raise a substantial
`
`question of patentability regarding at least one claim, i.e., the teaching of the (prior art)
`
`patents and printed publications is such that a reasonable examiner would consider the
`
`15
`
`teaching to be important in deciding whether or not the claim is patentable; and (B) the
`
`same question of patentability as to the claim has not been decided by the Office in a
`
`previous examination or pending reexamination of the patent or in a final holding of
`
`invalidity by the Federal Courts in a decision on the merits involving the claim. See
`
`MPEP §2242. Furthermore, "[i]t must first be demonstrated that a patent or printed
`
`20
`
`publication that is relied upon in a proposed rejection presents a new, non-cumulative
`
`technological teaching that was not previously considered and discussed on the record
`
`during the prosecution of the application that resulted in the patent for which
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 11 of 23 PageID #: 33060
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`Application/Control Number: 90/014,639
`Art Unit: 3992
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`Page 8
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`reexamination is requested, and during the prosecution of any other prior proceeding
`
`involving the patent for which reexamination is requested. See MPEP §2216.
`
`Based on the forgoing Examiners' findings of fact related to the prosecution
`
`history of the patent claims requested for reexamination, Examiners make the following
`
`5
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`findings:
`
`EF-1 Examiners find that the original examiner did not provide any art based
`
`rejections on the prosecuted claims.
`
`EF-2 Examiners find that while Patent Owner filed a terminal disclaimer to
`
`overcome the double patenting rejections in the 2003 NF Action, Patent
`
`10
`
`Owner nevertheless substantially amended prosecuted claim 15, now
`
`patent claim 1 .
`
`EF-3 Examiners find that the original examiner did not provide any specific
`
`reasons for allowance of prosecuted claim 15. Rather Examiners find
`
`herein that the original examiner merely restated the general features of
`
`15
`
`the claim.
`
`EF-4 Examiners find that Garthwaite, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`location information, an input device for destination and an output display
`
`which displays the position of the present place within a map. See
`
`20
`
`Garthwaite FIG. 1 , reprinted below, navigation unit 1, input unit 3 and
`
`display unit 5 within portable electronic device 10. See also Garthwaite
`
`col. 3, lines 46-59.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 12 of 23 PageID #: 33061
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`Application/Control Number: 90/014,639
`Art Unit: 3992
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`Page 9
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`20
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`10
`/
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`4
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`Output Unit
`~..vttf1 Dlsp!a-y
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`3
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`/
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`Input Unit
`
`_9
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`Power Supply
`
`/
`
`r...iavigation
`Unit
`
`Garthwaite FIG. 1
`
`EF-5 Examiners find that Ghaem, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`5
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`location information, a device for getting directional information and a
`
`display wherein the display displays an orientation direction of the portable
`
`electronic device and further wherein the display changes according to a
`
`change of the orientation direction of the portable electronic device. See
`
`Ghaem FIG. 2, reprinted below and FIG. 1, GPS sensor 28, directional
`
`10
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`sensors 30, 31 and 28 and display 14 within portable electronic device 10.
`
`See also Ghaem col. 5, line 57 to col. 6, line 34 wherein the display has a
`
`rotatable pointer 29.
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`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 13 of 23 PageID #: 33062
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 10
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`Ghaem FIG. 2
`
`EF-6 Examiners find that Konishi, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`5
`
`location information, a device for getting directional information, input
`
`device and a display wherein the display displays an orientation direction
`
`of the portable electronic device and further wherein the display displays
`
`the present location on a map. See Konishi FIG. 1, reprinted below, GPS
`
`sensor 8, compass 6, input device 1 A and 18, and display 2 which
`
`10
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`displays maps and present location as shown in FIG. 3.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 14 of 23 PageID #: 33063
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`3
`
`Page 11
`
`I
`
`,v'
`!
`
`4
`
`Konishi FIG. 1
`
`EF-7 Examiners find that in comparison of patent claim 1 to the disclosures of
`
`the referenced before the original examiner of the 317 Patent, the only
`
`5
`
`features recited in claim 1 not disclosed or taught by the art considered by
`
`the original examiners were related to the display characteristics of the
`
`recited device, namely "wherein said display displays positions of said
`
`destination and said present place, and a relation of said direction and a
`
`direction from said present place to said destination."
`
`10
`
`Based on the above findings, Examiners determine herein that the technological
`
`features that overcame or would overcome the prior art cited during the prosecution of
`
`the 755 Application that became the 317 Patent were those features of amended into
`
`prosecuted claim 15, specifically related to the displaying of the positions of the present
`
`place and the destination and their relation. Accordingly, Examiners conclude that
`
`15
`
`these technological features would be important to an examiner because these features
`
`provided the basis for allowance of the claims and the issuance of the 317 Patent.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 15 of 23 PageID #: 33064
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 12
`
`In view of these findings, Examiners conclude that if the Request presents a new
`
`reference or combination of references that discloses or teaches the technological
`
`features (i.e., the combination of elements specified in the claims) of
`
`[1] "wherein said display displays positions of said destination and said present
`
`5
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`place, and a relation of said direction and a direction from said present place to said
`
`destination" as recited in patent claim 1 and those patent claims depending therefrom,
`
`then that new reference or combination of references would be important to an
`
`examiner as such teachings would be directed to those technological features for which
`
`the claims were allowed and/or argued to overcome the applied prior art. Thus, the new
`
`10
`
`reference or combination of references disclosing feature [1] would raise a substantial
`
`new questions (SNQs) of patentability for the respective claims.
`
`VII.
`
`SUMMARY OF PROPOSED SNQS OUTLINED IN THE REQUEST
`
`The Request proposes several com bi nations of references to raise SNQs for
`
`15
`
`patent claims 1, 15 and 17 of the 317 Patent (See Request Part VII, pages 20-64).
`
`Issue 1 - The Request submits that Hayashida and ordinary skill in the art raise SNQs
`
`for patent claims 1, 15 and 17. See Request Part Vll(A), pages 20-40. The
`
`basis for the SNQ is that Hayashida in view of ordinary skill in the art renders
`
`20
`
`patent claims 1, 15 and 17 obvious.
`
`Issue 2- The Request submits that Hayashida and Maruyama in the art raise SNQs for
`
`patent claims 1, 15 and 17. See Request Part Vll(A), pages 40-64. The basis
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`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210212
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`
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`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 16 of 23 PageID #: 33065
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`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 13
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`for the SNQ is that Hayashida in view of Maruyama renders patent claims 1, 15
`
`and 17 obvious.
`
`VIII. DISCUSSION OF PROPOSED SNQS
`
`5
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`Issue 1
`
`Hayashida and ordinary skill raises SNQs for Patent Claims 1, 15 and 17.
`
`The Request submits that Hayashida taken with ordinary skill raises SNQs for
`
`patent claims 1, 15 and 17. Examiners agree as follows.
`
`First, Examiners find herein that Hayashida is a patent or patent publication (See
`
`MPEP §2210 and §2244--SNQs must be based on patents and printed publications).
`
`10
`
`Examiners further find that Hayashida qualifies as a prior art patent and printed
`
`publications under 35 U.S.C. §102 based on its filing date before the earliest filing date
`
`of the 317 Patent.
`
`Second, Examiners find that Hayashida was not cited or considered during
`
`prosecution of the 755 Application that led to the 317 Patent or any of the previous IPR
`
`15
`
`proceedings. Accordingly, Examiners conclude an SNQ may be based on Hayashida
`
`alone or in combination with ordinary skill. See MPEP §2216.
`
`Third Examiners find that Hayashida discloses or teaches sufficient features to
`
`raise SNQs for patent claims 1, 15 and 17. A discussion of the specifics follows:
`
`Regarding feature [1] of patent claim 1, Examiners find that Hayashida teaches a
`
`20
`
`portable electronic device (See Hayashida FIG. 1, reprinted below. See col. 1, lines 5-9
`
`wherein the invention relates to "a map display device to guiding and searching a
`
`movement route ... " See also col. 76, lines 17-20 wherein the invention is applicable to
`
`"a carrying-type navigation device" including a "small navigation device which can be
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 17 of 23 PageID #: 33066
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 14
`
`accompanied by the human and which is used in a cycling, a travel, a mountaineering, a
`
`hike, a fishing ... ") comprising a GPS receiver unit for getting location information
`
`Hayashida FIG. 1
`
`5
`
`denoting a resent place of said device (See FIG. 1 above, unit 25), a magnetic sensor
`
`for getting direction information denoting an orientation of said device (See FIG. 1, unit
`
`21 ), n touch panel for inputting a destination (See FIG. 1 above, touch switch 34), and a
`
`display (See FIG. 1 above, display 33). Furthermore, Hayashida teaches with reference
`
`regard to feature [1] that the display displays positions of said destination and said
`
`10
`
`present place, and a relation of said direction (See Hayashida FIG. 16, reprinted
`
`below, wherein the positions of the destination 152 and a present place 112 are shown
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 18 of 23 PageID #: 33067
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 15
`
`152
`
`CSP
`
`110
`
`108
`'
`\
`l
`t,;,rr:===:::=~_...._-rr-r.:===N==:-,-........::~
`--P-
`
`' 800
`
`400
`
`\ \
`150
`
`CSP
`
`{
`102
`
`\
`112
`
`Hayashida FIG. 16
`
`in relation to each other) and a direction from said present place to said destination
`
`(See FIG. 17, reprinted below, note directional arrow 122 showing direction from the
`
`104
`)
`(
`
`122
`\ l
`f
`
`124
`'l
`I
`
`I
`
`20 km
`ro DES ..
`
`( z;l
`~
`
`120
`)
`I
`
`[±J
`
`,,
`,,-' ,,
`
`126"'_.. . .--
`
`5
`
`Hayashida FIG. 17
`
`present place 126 towards the destination is also showable on the display).
`
`Furthermore, Hayashida teaches the display changes according to a change of said
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 19 of 23 PageID #: 33068
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 16
`
`direction of said device for walking navigation (See Hayashida col. 22, lines 22-31
`
`wherein the maps are showable as head up which will rotate the map while maintaining
`
`the heading direction up. See also col. 76, lines 17-20 wherein the invention is
`
`applicable to "a carrying-type navigation device" including a "small navigation device
`
`5
`
`which can be accompanied by the human and which is used in a cycling, a travel, a
`
`mountaineering, a hike, a fishing ... ").
`
`Furthermore, Examiners agree with and incorporate the Request at pages 20-40
`
`thereof regarding the disclosure and teachings of Hayashida as further support of the
`
`Examiners specific findings above.
`
`10
`
`Examiners thus find that Hayashida provides technological teachings (feature
`
`[1]) that a reasonable examiner would consider important in determining the
`
`patentability of patent claim 1. Examiners further find the teachings of Hayashida as
`
`discussed herein are not cumulative to any written discussion on the record of the
`
`teachings of the prior art, were not previously considered nor addressed in this manner
`
`15
`
`during a prior examination, and the same questions were not the subject of a final
`
`holding of invalidity in the Federal Courts. Accordingly, Examiners conclude herein
`
`Hayashida raises an SNQ for patent claim 1.
`
`In regard to patent claims 15 and 17, such claims are dependent on patent claim
`
`1. Furthermore, dependent claims are construed to include all of the limitations of the
`
`20
`
`independent claims. Thus, Examiners conclude Hayashida taken either alone or in view
`
`of ordinary skill in the art raises SNQs for patent claims 15 and 17 in the same manner
`
`as for patent claim 1 .
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 20 of 23 PageID #: 33069
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 17
`
`Issue 2
`
`Hayashida and Maruyama raises SNQs for Patent Claims 1, 15 and 17.
`
`The Request submits that Hayashida taken with Maruyama raises SNQs for
`
`patent claims 1, 15 and 17. Examiners agree as follows.
`
`First, Examiners find herein that Hayashida is a patent or patent publication as
`
`5
`
`discussed above. Furthermore, Examiners find herein that Maruyama is a patent or
`
`printed publication (See MPEP §2210 and §2244--SNQs must be based on patents and
`
`printed publications). Examiners further find that Maruyama qualifies as a prior art
`
`patent and printed publication under 35 U.S.C. §102 based on its publication date
`
`before the earliest filing date of the 317 Patent.
`
`10
`
`Second, Examiners find that neither Hayashida nor Maruyama was cited or
`
`considered during prosecution of the 755 Application that led to the 317 Patent or any of
`
`the previous IPR proceedings. Accordingly, Examiners conclude an SNQ may be
`
`based on Hayashida and Maruyama. See MPEP §2216.
`
`Third Examiners find that Hayashida and Maruyama discloses or teaches
`
`15
`
`sufficient features to raise SNQs for patent claims 1, 15 and 17. A discussion of the
`
`specifics follows:
`
`Regarding feature [1] of patent claim 1, Examiners incorporate the discussion
`
`above regarding Hayashida disclosing or teachings regarding this features and the
`
`entirety of claim 1. Furthermore, Examiners find Maruyama discloses or teaches a
`
`20
`
`portable electronic device/terminal (See Maruyama FIGS. 3 and 6, reprinted below, item
`
`20 and see ,r,r004) comprising a GPS device for getting location information (See
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 21 of 23 PageID #: 33070
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 18
`
`!••••••••-- ...................................... .,............ .... ,..............
`
`,.,,....._.,,..,,
`
`,
`-,•u•---- _,_ ...... ..., ..................... - - • 0 • • • • • •~ ............. .,.. .......... - , ! - I ! ' , ~ "'-•••••••••J
`
`Maruyama FIG. 3
`
`Maruyama FIG. 6
`
`FIG. 6 above, GPS unit 16), a compass device for getting a direction information (See
`
`FIG. 6 above, unit 18), an input device (See FIG. 6 above, input device 15), and a
`
`5
`
`display device (FIG. 6 above, display 13). Furthermore, as shown in FIG. 3, Maruyama
`
`discloses and teaches a portion of feature [1] wherein the display displays a direction
`
`from said present place to said destination (See FIG. 3 above and ,r,r0015-0017,
`
`direction arrow 5 points in direction of destination).
`
`Furthermore, Examiners agree with and incorporate the Request at pages 40-64
`
`10
`
`thereof regarding the disclosure and teachings of Hayashida and Maruyama as further
`
`support of the Examiners specific findings above.
`
`Examiners thus find that Hayashida and Maruyama provide technological
`
`teachings (feature [1]) that a reasonable examiner would consider important in
`
`determining the patentability of patent claim 1. Examiners further find the teachings of
`
`15
`
`Hayashida and Maruyama as discussed herein are not cumulative to any written
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 22 of 23 PageID #: 33071
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 19
`
`discussion on the record of the teachings of the prior art, were not previously
`
`considered nor addressed in this manner during a prior examination, and the same
`
`questions were not the subject of a final holding of invalidity in the Federal Courts.
`
`Accordingly, Examiners conclude herein Hayashida and Maruyama raise an SNQ for
`
`5
`
`patent claim 1 .
`
`In regard to patent claims 15 and 17, such claims are dependent on patent claim
`
`1. Furthermore, dependent claims are construed to include all of the limitations of the
`
`independent claims. Thus, Examiners conclude Hayashida taken with and/or in
`
`combination with Maruyama raises SNQs for patent claims 15 and 17 in the same
`
`10
`
`manner as for patent claim 1.
`
`IX.
`
`SCOPE OF REEXAMINATION
`
`On the basis of the findings above, Examines agree that Issues 1 and 2 raise
`
`SNQs for patent claims 1, 15 and 17 Patent. Accordingly, patent claims 1, 15 and 17 of
`
`15
`
`the 317 Patent will be reexamined as requested in this reexamination proceeding.
`
`X.
`
`CONCLUDING REMARKS
`
`Reexamination of patent claims 1, 15 and 17 is ordered herein.
`
`Extensions of time under 37 C.F.R. §1.136(a) will not be permitted in these
`
`20
`
`proceedings because the provisions of 37 C.F.R. §1.136 apply only to "an applicant"
`
`and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. §305 requires
`
`that reexamination proceedings "will be conducted with special dispatch" (37 C.F.R.
`
`§1.550(a)). Extension of time in reexamination proceedings are provided for in 37
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210212
`
`
`
`Case 5:19-cv-00036-RWS Document 646-5 Filed 03/08/21 Page 23 of 23 PageID #: 33072
`
`Application/Control Number: 90/014,639
`Art Unit: 3992
`
`Page 20
`
`C.F.R. §1.550(c). After the filing of a request for reexamination by a third party
`
`requester, any document filed by either the patent owner of the third party requester
`
`must be served on the other party (or parties where two or more third-party-requester
`
`proceedings are merged) in the reexamination proceeding in the manner provided in 37
`
`5
`
`C.F.R. §1.248. See 37 C.F.R. §1.550(f).
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1 )(i) (C) and
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