Huawei Device Co Ltd v. Maxell Ltd

1. Case Identification

• Patent #: 6,928,292
• Filed: November 20, 2017
• Petitioner(s): Huawei Device Co., Ltd.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Mobile Handset with Position Calculation Function
• Brief Description: The ’292 patent discloses a technique for calculating a mobile handset's geographic position by combining position estimates from two different sources: GPS and cellular network signals. The system calculates a position and a corresponding reliability value for each source, then combines the two position estimates based on their respective reliabilities to derive a final, purportedly more accurate, combined-position estimate.

3. Grounds for Unpatentability

Ground I: Claims 1 and 2 are obvious over Cisneros in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Cisneros (Patent 5,774,829).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cisneros discloses a mobile positioning system that meets nearly all limitations of claims 1 and 2. Cisneros teaches a mobile unit with separate receivers for an absolute positioning system (GPS) and an uncoordinated beacon system (cellular signals). It explicitly discloses calculating a position estimate from each source, calculating an accuracy or reliability value for each estimate (e.g., "GPS ACCURACY" routine), and then combining the weighted position estimates to yield a "composite estimate." Petitioner contended the only limitations not expressly disclosed are the simultaneous reception of signals and simultaneous calculation of positions.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to modify the Cisneros system to perform reception and calculation simultaneously. This was argued to be an obvious design choice from a finite number of predictable solutions (i.e., performing steps sequentially versus simultaneously). The motivation stemmed from known advantages of simultaneous operation, including increased speed, improved accuracy (especially for a moving device where position estimates age quickly), and greater efficiency.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing this modification. The Cisneros system, with its distinct receiver chains for GPS and cellular signals connected by a bidirectional data link, was ready for this improvement, and the outcome—a faster, more accurate position determination—was predictable.

Ground II: Claim 2 is obvious over Cisneros in view of Nir and further in view of Schuchman.

• Prior Art Relied Upon: Cisneros (Patent 5,774,829), Nir (Patent 6,285,316), and Schuchman (Patent 5,422,813).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the "simultaneous" limitations of claim 2, should the Board find Cisneros alone insufficient. Petitioner asserted that Cisneros provides the foundational system for combining GPS and cellular position estimates based on reliability. The combination references explicitly supply the missing elements: Nir teaches prior art techniques that process "signals received simultaneously from ... GPS satellites and BTSs [cellular base transceiver stations]." Schuchman discloses a "hybrid approach of processing both ... GPS signals simultaneously." Together, these references explicitly teach both simultaneous signal reception and simultaneous position calculation.
  • Motivation to Combine: A POSITA would combine the teachings of Nir and Schuchman with the Cisneros system to achieve a known improvement. The motivation was to incorporate the established benefits of simultaneous reception (taught by Nir) and simultaneous processing (taught by Schuchman) into the comprehensive, reliability-based combination system taught by Cisneros. This combination would predictably enhance the performance, speed, and accuracy of the resulting device.
  • Expectation of Success: Success was expected because the combination involved the simple substitution of known elements and techniques (simultaneous operation) into a prior art system (Cisneros) that was ready for such an improvement and directed to the same technical problem.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 1 is obvious over Cisneros in view of Nir (Ground III) and over Cisneros in view of Schuchman (Ground IV). These grounds relied on the same fundamental design modification theories and motivations to combine as presented in Ground II to address the "simultaneously" adapted receiver limitation of claim 1.

4. Key Claim Construction Positions

• To streamline the proceeding and focus on the prior art, Petitioner explicitly adopted the claim constructions for the seven means-plus-function terms in claim 1 that the Patent Owner had proposed in a related district court litigation. Petitioner's central argument was that the claims are rendered obvious by the prior art even under the Patent Owner's own proposed constructions, thus eliminating the need for a construction dispute.
• For other terms, Petitioner noted the parties agreed in litigation that "simultaneously" should be given its plain and ordinary meaning. For the terms "combining" and "combined," Petitioner also adopted the Patent Owner's proposed construction of "a determination based on one or more inputs" for the limited purpose of the IPR.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that none of the asserted grounds or specific prior art combinations were considered by the Examiner during the original prosecution.
• It was further argued that the petition presented new arguments and evidence not before the Examiner, including the declaration of its expert, Dr. Robert Akl, thus raising issues that warrant review.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1 and 2 of Patent 6,928,292 as unpatentable on all grounds asserted.