Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-00204
• Patent #: 6,928,306
• Filed: December 20, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell Ltd.
• Challenged Claims: 2, 5-6, and 12-15

2. Patent Overview

• Title: Portable Mobile Unit
• Brief Description: The ’306 patent discloses a portable telephone capable of generating customized ringing sounds. The system uses multiple sound sources (e.g., FM, PCM, MIDI) to create alerts that can provide users with information about current conditions, such as the time of day or caller identity, in addition to notifying them of an incoming call.

3. Grounds for Unpatentability

Ground 1: Obviousness over Van der Salm and Huang - Claims 2 and 13 are obvious over Van der Salm in view of Huang.

• Prior Art Relied Upon: Van der Salm (WO 1996/27974) and Huang (CN Patent No. 1190303A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van der Salm, a reference concerning telecommunications devices with distinctive ringing sounds, discloses a portable mobile unit with a controller and a "ringing sound generator" that uses a plurality of sound sources, such as music and voice, to create alerts based on caller identity. However, Van der Salm did not explicitly teach combining a musical ringtone with a synthesized voice announcement. Petitioner asserted that Huang remedies this by teaching a telephone system that generates both a standard ring tone and a synthesized voice announcement (e.g., the caller's number) upon receiving a call. The combination of these references, Petitioner contended, renders the limitations of independent claims 2 and 13 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Huang's voice announcement feature with Van der Salm's customizable, multi-source ringing system to enhance user-friendliness. Van der Salm's stated goal was providing a variety of distinctive alerting sounds, and adding a clear, spoken identifier from Huang would be a logical and intuitive improvement over relying solely on assigned musical tones to identify callers.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both references operate in the same field of telephone alerts, and Van der Salm's disclosure of speech synthesizers and combining different sounds provides the necessary technical foundation to integrate Huang's teachings with predictable results.

Ground 2: Obviousness over Van der Salm, Huang, and Miura - Claims 5-6, 12, and 14-15 are obvious over Van der Salm in view of Huang, in further view of Miura.

• Prior Art Relied Upon: Van der Salm (WO 1996/27974), Huang (CN Patent No. 1190303A), and Miura (Patent 6,763,105).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Van der Salm and Huang to address the limitations of the dependent claims. Petitioner argued that Miura teaches the additional features required by these claims. Specifically, Miura discloses a portable phone that allows a user to customize ringtone patterns based on pre-set conditions. This includes using a timer to change the ringtone within a specific "time zone" (a set period of hours), as required by claims 5 and 14, and using a "calendar function" to change ringtones based on the day or month, as required by claims 6 and 15. Miura also teaches user-programmable ringing patterns, satisfying the "plurality of patterns" limitation of claim 12.
  • Motivation to Combine: A POSITA would be motivated to incorporate Miura's time- and date-based customization into the device of Van der Salm and Huang to provide greater user control and improve usability. For instance, Miura explicitly discusses the desirability of setting quieter or slower ringtone patterns at night to avoid annoyance, a feature that directly enhances the customization goals of Van der Salm.
  • Expectation of Success: The combination would have been straightforward and predictable. Miura's teachings are applicable to portable phones, and Van der Salm already discloses a timing control unit and microprocessor, providing the basic hardware for implementing Miura's software-based scheduling functions with only minor modifications.

• Additional Grounds: Petitioner asserted an alternative ground (Ground 3) that claims 2, 5-6, and 13-15 are obvious over the same combination of Van der Salm, Huang, and Miura, but under a narrower construction of "ringing sound generator" that expressly requires the use and storage of "patterns," incorporating the analysis from claim 12 into the arguments for claims 2 and 13 and their dependents.

4. Key Claim Construction Positions

• "a time zone which is set up in advance": Petitioner argued for the construction "a duration of time or a range of hours set up in advance," consistent with an agreement in co-pending litigation. This construction clarifies that the term refers to a time period (e.g., 10 PM to 7 AM) rather than a geographical time zone.
• "ringing sound generator": Petitioner contended this is a means-plus-function term under 35 U.S.C. § 112, para. 6. The function is generating a ringing sound using multiple sound sources, and the corresponding structure identified in the ’306 patent includes sound data sources (3a-3c), reproduction portions (4a-4c), and a reproduction timing memory (1) as shown in Figure 1. This interpretation is central to Petitioner's mapping of the prior art.

5. Arguments Regarding Discretionary Denial

• §325(d) (Same or Substantially Same Prior Art): Petitioner argued against discretionary denial under §325(d), asserting that the primary reference, Van der Salm, was not previously presented to the U.S. Patent and Trademark Office during prosecution or in any prior post-grant proceeding. While Huang and Miura were cited as secondary references in a prior IPR (IPR2019-00640), that proceeding was terminated via settlement before an institution decision, meaning the Board never substantively evaluated the art.
• §314(a) (General Plastic Factors): Petitioner argued that the General Plastic factors strongly favored institution. Key reasons included: (1) Apple had not previously filed a petition against the ’306 patent; (2) the prior IPR was filed by an unrelated party (Huawei) and was dismissed pre-institution, so Board resources would not be duplicated; and (3) Petitioner acted diligently in searching for prior art and filing the petition after being sued for infringement.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2, 5-6, and 12-15 of Patent 6,928,306 as unpatentable.