Apple Inc v. Ji Soo Lee

1. Case Identification

• Case #: IPR2016-00883
• Patent #: 6,532,413
• Filed: April 13, 2016
• Petitioner(s): Apple Inc.
• Patent Owner(s): One or more of Mr. Ji-Soo Lee, Ms. Jin-Won Oh, and Mr. Heung-Soo Lee
• Challenged Claims: 64, 77, and 79

2. Patent Overview

• Title: Receiving and Displaying Mapping Information
• Brief Description: The 6,532,413 patent describes methods for receiving and displaying mapping information on a user device. The invention purports to efficiently transmit route indication information (RII) as "graphic vectors"—composed of attribute, shape, and position data—which are then used with a locally stored basic map to generate an image representing a path to a location.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 64 and 77 over DeLorme in view of Davis

• Prior Art Relied Upon: DeLorme (Patent 5,848,373) and Davis (Patent 6,057,854).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that DeLorme taught a computer-aided map location system that receives route information as data structures called "locatable objects," which can include "vector geographical" entities representing proposed routes. These objects contain shape data ("image shape") and position data ("coordinate location") and are associated with a map identifier ("gridname") used to select a corresponding stored electronic map for display. Petitioner contended that DeLorme taught all elements of claims 64 and 77 except for an explicit "attribute-designating statement" composed of a command and value. Davis allegedly supplied this missing element by teaching that network-based vector graphics commonly included an "Object Color command" to set an object's color to a specified value.
  • Motivation to Combine: A POSITA would combine Davis’s teaching of color attributes with DeLorme’s vector-based routes to achieve the predictable and beneficial result of accentuating the displayed route in a specific color. This would make the route more readily and quickly identifiable for the user. Additionally, a POSITA would have been motivated to use Davis’s vector graphics, which require less memory space, in DeLorme's system, which was designed for portable devices with limited memory.
  • Expectation of Success: Petitioner asserted that since both DeLorme's and Davis's systems could be implemented on conventional computer hardware, any modifications to integrate their teachings would have been straightforward and well within the skill of a POSITA.

Ground 2: Obviousness of Claim 79 over Furuya in view of Ishihara

• Prior Art Relied Upon: Furuya (Patent 5,257,023) and Ishihara (International Publication No. WO 98/12688).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Furuya disclosed an onboard road map system that receives real-time traffic information (time-variant data) on a per-link basis, where each link represents a road section. This information includes a "mesh number" (map identifier) and data on traffic congestion (e.g., average speed). Furuya’s system determines a graphic style, such as color, for each road section based on the traffic data and produces a road map image for display. However, Furuya selected the underlying map based on the vehicle’s current position determined via "map matching." Petitioner argued that Ishihara taught the missing step: selecting map data from a local database using a received "mesh number" identical to that disclosed in Furuya.
  • Motivation to Combine: A POSITA would have been motivated to replace Furuya's map-matching technique with Ishihara's more direct map selection method. Map matching was known to be computationally intensive and could be inaccurate, potentially causing the wrong map to be displayed. Using the already-received "mesh number" as taught by Ishihara would create a more accurate, efficient, and reliable system.
  • Expectation of Success: The combination was predictable, as it involved applying Ishihara’s software-based map selection technique to the existing hardware architecture of Furuya’s navigation system.

Ground 3: Obviousness of Claim 79 over Degawa in view of Ishihara

• Prior Art Relied Upon: Degawa (Japanese Patent No. JPH 08-7197) and Ishihara (International Publication No. WO 98/12688).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Degawa, like Furuya, taught a navigation system that receives traffic information on a per-link (road section) basis, including a "mesh number" (map identifier) and congestion data. The system then determines the attributes of a traffic display banner (e.g., its length) and displays it on a road map. Degawa selected the map for display based on the vehicle's current position as determined by a GPS receiver. As in Ground 2, Petitioner relied on Ishihara for its teaching of selecting map data directly using a received "mesh number."
  • Motivation to Combine: The motivation was similar to that in Ground 2. A POSITA would have been motivated to modify Degawa's system by incorporating Ishihara's map selection method because GPS-based positioning was known to have limited accuracy. Using the received "mesh number" would yield a more precise and reliable system by ensuring the correct map was displayed with the traffic information.
  • Expectation of Success: The proposed modification was a predictable integration of a known software technique (Ishihara) into a compatible hardware system (Degawa) to improve its performance.

4. Key Claim Construction Positions

• Petitioner argued that two means-plus-function limitations in claim 64 are indefinite under 35 U.S.C. §112, ¶6.
• For the "means for selecting a basic map in accordance with said map identification of the RII," Petitioner contended the ’413 patent specification fails to disclose a corresponding software algorithm or special-purpose circuitry for performing the claimed function, instead describing only a generic controller or microprocessor.
• Similarly, for the "means for producing a route-information containing image," Petitioner argued the specification lacks the requisite corresponding algorithm, rendering the claim indefinite and not amenable to construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate, despite the existence of another pending IPR challenging the ’413 patent (IPR2016-00022). Petitioner asserted that it was not a real party-in-interest in the other proceeding and that this petition relied on different prior art combinations, different arguments regarding the art, and different expert testimony.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 64, 77, and 79 of the ’413 patent as unpatentable.