Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-00199
• Patent #: 6,329,794
• Filed: December 19, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-3, 5-14

2. Patent Overview

• Title: Power Management for Information Processing Devices
• Brief Description: The ’794 patent describes power management techniques for portable, battery-powered information processing devices. The invention controls power consumption by prioritizing certain "function devices" (e.g., audio communication) over others (e.g., video communication) based on detected remaining battery capacity and pre-set usage priorities.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hikishima and Tagoshi - Claims 1-3, 8-10, and 14 are obvious over Hikishima in view of Tagoshi.

• Prior Art Relied Upon: Hikishima (Japanese Application Publication No. JP H10-289038) and Tagoshi (Japanese Utility Model Application Publication No. U3064314).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Hikishima taught the core limitations of independent claim 1. Hikishima disclosed a portable device with a video processing device and an audio processing device, where power to the lower-priority video device was cut off when the battery dropped below a first voltage threshold (V1), and power to the higher-priority audio device was cut off when the battery dropped below a second, lower threshold (V2). To the extent Hikishima did not explicitly teach "usage priority," Petitioner asserted Tagoshi supplied this limitation. Tagoshi taught a battery-mounted device that selectively stops functions based on their level of importance to secure critical functions for as long as possible.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Tagoshi’s explicit teaching of classifying functions by importance with Hikishima’s power-management system. This combination would improve Hikishima’s device by implementing a known, readily implemented method for prioritizing functions to prevent the sudden interruption of critical communications, a shared goal of both references.
  • Expectation of Success: The combination involved applying a known prioritization technique to improve a known device, which would yield predictable results.

Ground 2: Obviousness over Hikishima, Tagoshi, and Tanaka - Claims 5-6 and 11-12 are obvious over Hikishima in view of Tagoshi and further in view of Tanaka.

• Prior Art Relied Upon: Hikishima, Tagoshi, and Tanaka (Japanese Application Publication No. JP H7-281798).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims 5 and 11, which added the limitation that usage priorities can be set by a user. Petitioner contended Tanaka taught this element. Tanaka disclosed an information processing device with a graphical interface that allowed a user to designate the power-off order for various components by arranging icons. The combination also addressed claims 6 and 12 (using pre-set priority values if the user does not set them), arguing that Hikishima/Tagoshi already taught a pre-set order, which would logically be used as a default.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Tanaka’s user-setting functionality into the Hikishima/Tagoshi system. Adding user-customizable priorities was a known method for improving battery-powered portable devices by providing enhanced user control, a desirable feature.
  • Expectation of Success: Integrating a software-based settings procedure (Tanaka) into the power management controller of Hikishima was a straightforward programming task for a POSITA.

Ground 3: Obviousness over Hikishima, Tagoshi, and Flynn - Claims 1-3, 8-10, and 14 are obvious over Hikishima in view of Tagoshi and further in view of Flynn.

• Prior Art Relied Upon: Hikishima, Tagoshi, and Flynn (Patent 5,870,685).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented to address a potential narrow construction of the "capacity detector" limitation in claim 1. While Hikishima detected battery capacity by measuring voltage, Petitioner argued Flynn taught a more sophisticated capacity detector. Flynn disclosed a "smart battery" system with an Application-Specific Integrated Circuit (ASIC) that managed battery operations and could report the remaining capacity in specific units of charge (e.g., mAh), consistent with the Smart Battery Data Specification.
  • Motivation to Combine: A POSITA would have been motivated to substitute Flynn’s ASIC-based capacity detector for Hikishima’s voltage-based one. Flynn itself taught that monitoring capacity was an alternative or addition to the "conventional method of checking battery terminal voltage." Therefore, this was a simple substitution of one known element for another to solve the same problem (detecting battery capacity) with greater precision.
  • Expectation of Success: The combination would yield predictable results, as Flynn provided detailed guidance on detecting battery capacity, and a POSITA would have recognized it as an improvement to Hikishima’s system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Morehouse (Patent 4,933,785) for teaching the use of default values when a user does not configure settings, and Sheynblat (Patent 6,314,308) for teaching the reactivation of a previously stopped function (e.g., circuitry for an emergency call) when needed by a higher-priority function.

4. Key Claim Construction Positions

• “function device” / “component device” (Claims 1, 9): Petitioner adopted a construction from a prior district court litigation involving the ’794 patent, defining the structure as "modem devices, audio communication devices and videophone devices, or equivalents thereof."
• “capacity detector [for] detecting a remaining capacity of said battery” (Claims 1, 9): Petitioner argued this term should be construed under 35 U.S.C. §112, ¶ 6 as a means-plus-function limitation. The claimed function was "detecting a remaining capacity of said battery," and the corresponding structure disclosed in the ’794 patent was "capacity detector circuit 107" and the operations it performs as described in the specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a). A previous IPR against the ’794 patent, filed by an unrelated party (ZTE), had been denied institution. Petitioner contended that under the General Plastic factors, the instant petition should be instituted because it was Apple’s first challenge, it relied on completely different prior art references and arguments than the ZTE petition, and Apple did not gain an unfair tactical advantage from the prior denial. Petitioner also argued against denial under the Fintiv factors, asserting that the co-pending district court litigation was in its early stages with no significant investment of judicial resources on invalidity issues.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3 and 5-14 of the ’794 patent as unpatentable.