PTAB

IPR2019-00071

ASUSTeK Computer Inc v. Maxell Ltd

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1. Case Identification

2. Patent Overview

  • Title: PORTABLE TERMINAL WITH THE FUNCTION OF WALKING NAVIGATION
  • Brief Description: The ’498 patent discloses a portable terminal for pedestrian navigation. The device uses components like GPS and a compass to determine a user's location and orientation, and it displays route guidance information, such as a straight line to a destination, a bent line showing a local route, or a route to a partner's portable device.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 5-8 are obvious over Suzuki in view of Nosaka.

  • Prior Art Relied Upon: Suzuki (Japanese Patent H07-280583) and Nosaka (Japanese Patent Number H10-170301).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Suzuki taught a portable navigation device for walking that included a "heads-up display" which rotates the map to match the user's orientation. Suzuki disclosed getting location information via GPS and direction via an azimuth sensor (compass and gyro). To the extent Suzuki did not explicitly show a route line with starting and ending points, Petitioner asserted Nosaka did. Nosaka taught a pedestrian navigation device that displayed a specific route between a current location and a destination, including guidance for multi-story buildings.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Nosaka’s more complete route guidance features with Suzuki’s superior rotating map display. A POSITA would have appreciated that adding Nosaka's features, such as guidance through complex routes involving elevation changes (e.g., multi-story buildings), would make Suzuki’s system more effective for pedestrians in complicated city streets or buildings.
    • Expectation of Success: The combination involved adding a familiar element (Nosaka's enhanced route display) to another known system (Suzuki’s) to achieve the predictable result of a more complete and useful pedestrian navigation display.

Ground 2: Claims 1-3 and 5-8 are obvious over Suzuki in view of Colley.

  • Prior Art Relied Upon: Suzuki (Japanese Patent H07-280583) and Colley (Patent 5,592,382).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner relied on Suzuki's disclosure of a portable walking navigation device, as in Ground 1. Petitioner argued that Colley taught a "directional steering and navigation indicator" display concept for various applications, including hiking. Colley disclosed displaying a user's position, a destination, and a route composed of waypoints connected by a bent line. It also showed the user's current heading and the direction to the next waypoint.
    • Motivation to Combine: Petitioner asserted that Colley itself suggested retrofitting its display improvements into existing systems like Suzuki's. A POSITA would have understood that adding Colley’s waypoint-based route display to Suzuki would improve the system’s effectiveness. Unlike Suzuki’s display, Colley’s display indicated the specific route to be taken and could guide a user back to the route if they deviated, which was a known problem in navigation systems.
    • Expectation of Success: This combination was presented as a predictable improvement, adding an enhanced navigational display from Colley to Suzuki's directionally sensitive map to create a more robust pedestrian guidance system.

Ground 3: Claims 1, 3-5, 7-11, and 13 are obvious over Norris in view of Colley.

  • Prior Art Relied Upon: Norris (Patent 5,781,150) and Colley (Patent 5,592,382).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Norris disclosed a system of portable GPS devices for displaying the relative position of one device to another, including for pedestrian use. Norris taught determining location via GPS and orientation via an internal compass to keep a directional arrow pointing toward a partner's terminal. Norris also disclosed displaying the distance to the other terminal. Petitioner asserted that Colley taught displaying a more detailed route with waypoints, current heading, and direction to the destination.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Colley's more complete and useful guidance display into Norris's system. While Norris indicated the direct-line direction to a destination (the other terminal), it did not expressly show the user's current heading and the heading they should take simultaneously, nor did it show a route with waypoints. Colley provided these features, representing a clear improvement to Norris's simpler display.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success in combining these known display and navigation techniques to provide more useful information to a user tracking a partner's device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims being obvious over Suzuki, Colley, and Ellenby (Patent 5,815,411); over Norris, Nosaka, and Colley; and over Norris, Colley, and Ellenby. These grounds relied on similar motivations, adding features from secondary and tertiary references to improve the primary systems of Suzuki or Norris.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim terms were indefinite under 35 U.S.C. §112 but, for the purposes of the inter partes review (IPR), proposed constructions based on the broadest reasonable interpretation.
  • "a device for getting location information..." and "a device for getting direction information..." (Claims 1, 5, 10): Petitioner contended these were means-plus-function terms lacking sufficiently definite structure in the specification. The ’498 patent disclosed a "control unit" for performing functions like "analyzing received data" but failed to disclose a corresponding algorithm. Solely for the IPR, Petitioner adopted the Patent Owner's proposed structures (e.g., GPS, infrared sensor, compass, gyro, clinometer, and a control unit with specific algorithms allegedly disclosed in the specification) as the basis for its invalidity analysis.

5. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-13 of Patent 6,430,498 as unpatentable.