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 is directed to vehicle navigation systems that simultaneously display two maps at different scales. This allows a user to view a zoomed-out, large-scale map for broad context while also viewing a zoomed-in, small-scale map for detailed information like the current vehicle location and street names.

3. Grounds for Unpatentability

Ground 1: Obviousness over Katou and Sato - 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 argued that the combination of Katou and Sato taught every limitation of claim 25. Claim 25 depends from now-disclaimed independent claim 18, which recites a display showing a first map and a second, smaller-scale map simultaneously. Petitioner asserted that Katou’s "two-screen mode," which displays a zoomed-out "present-location map screen" alongside a zoomed-in "architectural structure-shape map," taught the limitations of claim 18. The sole additional limitation of claim 25 is a "current heading field...displaying a current compass heading of a vehicle." Petitioner contended that Sato explicitly disclosed this feature in its Figure 9, which shows a "Direction of travel" field with a compass and an arrow indicating the vehicle's precise heading (e.g., "east-northeastern direction"). This teaching directly addresses the limitation that allowed claim 25 to survive previous reexaminations, where the prior art of record was distinguished for only showing a static north-up indicator rather than the vehicle’s actual direction of travel.
  • Motivation to Combine (for §103 grounds): Petitioner asserted multiple reasons why a person of ordinary skill in the art (POSITA) would combine Katou and Sato. A POSITA would combine the references to improve the usability of Katou's navigation display for real-world driving, as Sato’s explicit heading indicator provides more useful information than a map without one. The combination was presented as the application of a known technique (Sato’s heading display) to a similar device (Katou’s map display) to yield the predictable result of a more functional navigation system. Both references are analogous art in the field of vehicle navigation.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because integrating Sato's heading indicator into Katou's display would have been a mere addition of a visual element using straightforward software coding. Petitioner noted that the underlying data needed for such a display (azimuth and GPS information) was already disclosed as being available in the Katou system.

4. Key Claim Construction Positions

• Petitioner argued that the term "a current heading field, said current heading field displaying a current compass heading of a vehicle" should be construed to mean a display that "includes an explicit indication of direction of travel."
• This proposed construction was based directly on the Patent Owner's own arguments during a prior ex parte reexamination ('733 Reexamination). During that proceeding, the Patent Owner distinguished prior art that showed arrows always pointing north by arguing that the ’380 patent requires an explicit indication of the vehicle’s travel direction. Petitioner adopted this construction to demonstrate that the Sato reference, unlike the art previously considered by the Examiner, squarely meets the limitation as defined by the Patent Owner.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) was unwarranted because the petition presented new prior art and arguments that were not previously considered by the USPTO during prosecution or three prior reexaminations of the ’380 patent.
• The primary argument was that Sato was a new reference that directly teaches the specific feature—an explicit direction-of-travel indicator—that the Examiner previously found lacking in other prior art. Petitioner contended that the combination of Katou (also a new reference) with Sato was substantially different from any combination previously reviewed. It asserted that while Katou has some overlap with a previously considered reference (Nimura), it is not cumulative because it has an earlier filing date and uses terminology that more closely matches the patent's claims. Therefore, Petitioner argued the ground presented a new question of patentability that warranted institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 25 of the ’380 patent as unpatentable.