UNIFIED PATENTS INC. v. Beacon Navigation GmbH

1. Case Identification

• Case #: IPR2018-01024
• Patent #: 6,178,380
• Filed: May 4, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Beacon Navigation GMBH
• Challenged Claims: 25

2. Patent Overview

• Title: Vehicle Location Display of a Navigation System
• Brief Description: The ’380 patent discloses a vehicle navigation system capable of simultaneously displaying two maps of a surrounding area. The maps are shown at different scales, such as a larger-scale "zoomed out" map for overall context and a smaller-scale "zoomed in" map to show specific details like street names or the vehicle's immediate location.

3. Grounds for Unpatentability

Ground 1: Claim 25 is obvious over Katou in view of Sato.

• Prior Art Relied Upon: Katou (Patent 6,006,161) and Sato (Japanese Application S62-245111).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 25 depends on the now-disclaimed independent claim 18, which recites the core dual-map display. Petitioner argued that Katou teaches all limitations of claim 18, including a navigation apparatus with a two-screen mode that simultaneously displays a zoomed-out "present-location map" and a zoomed-in "architectural structure-shape map." The key limitation of dependent claim 25 is the addition of "a current heading field...displaying a current compass heading of a vehicle." Petitioner argued that while Katou provided the base system, Sato teaches this specific feature. Sato discloses a navigation display with a field explicitly labeled "Direction of travel," which includes a compass showing the vehicle's actual travel direction (e.g., "east-northeastern"), not merely a static north-indicator.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine the teachings of Katou and Sato for several reasons. Both are analogous art in the field of vehicle navigation. A POSITA would have been motivated to incorporate Sato's explicit direction-of-travel indicator into Katou's dual-map display to improve its usability for real-world driving. Adding an explicit heading indicator as taught by Sato would be a predictable improvement to Katou's system, which already contained the necessary GPS and azimuth sensor hardware to generate the required data. The combination would yield the predictable result of a more user-friendly navigation system that shows both position and direction of travel simultaneously.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The integration would involve known software coding techniques to add a visual element (the heading indicator) to an existing map display, using data already available from the system's sensors.

4. Key Claim Construction Positions

• Term: "a current heading field, said current heading field displaying a current compass heading of a vehicle"
  • Petitioner's Proposed Construction: Petitioner argued that, based on the patent's prosecution history, this term should be construed to mean a display that provides an "explicit indication of direction of travel."
  • Relevance: This construction was central to Petitioner's argument. During reexamination of the ’380 patent, the Patent Owner distinguished prior art (Nimura) by arguing its north-pointing arrow was not a true "current compass heading," which required showing the vehicle's travel direction. Petitioner adopted this narrow construction, arguing that while the reexamination art lacked this feature, the newly cited Sato reference explicitly discloses it, thereby overcoming the examiner's reason for allowance.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d) because the petition raises new issues based on prior art not previously considered by the Patent Office.
  • New Art and Arguments: The petition asserted that Sato is new prior art that was not cited or considered during the original examination or any of the three subsequent reexaminations of the ’380 patent.
  • Addressing Examiner's Findings: Petitioner argued that the combination of Katou and Sato is substantially different from any combination previously before the examiner. Specifically, the examiner allowed claim 25 during reexamination after the Patent Owner argued that the cited art (Nimura) only showed an arrow pointing north, not the vehicle's actual direction of travel. Petitioner contended that Sato directly and explicitly teaches this exact missing feature, thus addressing the specific deficiency the examiner found in the prior art of record.
  • Non-Cumulative Art: Petitioner asserted that Sato is not cumulative of the reexamination art because it discloses a different technology—a dynamic compass showing travel heading, rather than a static north-indicator. While acknowledging an overlap between Katou and the previously considered Nimura reference (as they share an assignee), Petitioner argued Katou was a better reference due to its earlier filing date and use of claim-matching terminology.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review (IPR) for claim 25 and, after trial, issue a Final Written Decision canceling claim 25 of Patent 6,178,380 as unpatentable.