Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-00407
• Patent #: 6,748,317
• Filed: January 13, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-3, 5, 10-15, 17, and 18

2. Patent Overview

• Title: Portable Terminal and Information Center
• Brief Description: The ’317 patent describes a portable terminal with walking navigation functions. The invention purports to solve issues with conventional navigation systems being too large for pedestrians and maps being difficult to read on small screens, by providing a portable terminal that supplies location and direction information in a manner easy for a walking user to understand.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 15, and 17 are obvious over Hayashida in view of the knowledge of a Person of Ordinary Skill in the Art (POSITA).

• Prior Art Relied Upon: Hayashida (Patent 6,067,502).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hayashida, though described in the context of a vehicle navigation system, discloses all elements of the challenged claims. Hayashida teaches a navigation system using GPS and land-based beacons for location, a compass and gyroscope for direction, and various display modes including a head-up display and route mapping. Key limitations of independent claim 1 were allegedly met by Hayashida's disclosure of a "carrying-type navigation device" with a "present position detector" (GPS and beacon receiver), direction sensors (compass, gyro), a touch panel for input, and a display. Dependent claims were mapped to Hayashida's teachings of displaying routes as lines, showing distance as a number, and displaying a user's position with an arrow symbol.
  • Motivation to Combine (Modify): Petitioner asserted that Hayashida explicitly states its invention is applicable to portable "carrying-type navigation device[s]" for pedestrians. A POSITA would therefore have been motivated to adapt the vehicle-based system for walking navigation, as the required components and functionalities (e.g., location/direction finding, route display) were well-known and desirable for portable pedestrian devices.
  • Expectation of Success: A POSITA would have had a high expectation of success in applying Hayashida's teachings to a portable pedestrian device. The adaptation would have been a straightforward application of known technologies to a use case expressly contemplated by the reference, yielding predictable results.

Ground 2: Claims 1-3, 5, 10-15, 17, and 18 are obvious over Hayashida in view of Abowd.

• Prior Art Relied Upon: Hayashida (Patent 6,067,502) and Abowd ("Cyberguide: A Mobile Context-Aware Tour Guide," a 1997 publication).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Hayashida as the base reference and Abowd to provide explicit teachings of similar navigation functions within a dedicated pedestrian context. Abowd describes the "Cyberguide," a hand-held electronic tour guide for pedestrians that uses GPS and infrared beacons for indoor/outdoor positioning, determines device orientation, and communicates with other users and servers. Petitioner argued Abowd's teachings reinforce the obviousness of applying Hayashida's features to a walking context. For claim 10, which adds getting location information of another portable terminal, Petitioner argued Abowd teaches this via its "Messenger" component, which communicates user locations to a central service.
  • Motivation to Combine: A POSITA looking to implement Hayashida's system for the contemplated pedestrian use would have been motivated to consult prior art like Abowd, which addresses the specific challenges of pedestrian navigation. Abowd's teachings on integrating GPS with infrared beacons for seamless indoor-outdoor tracking and its focus on device orientation (as opposed to just travel direction) would have been seen as valuable improvements. Abowd itself notes that some of its functions were already present in automobile systems, suggesting a natural convergence.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the teachings. Both references describe similar system architectures (e.g., GPS, infrared sensors, display modules), and Abowd’s system is described as modular, suggesting that its features could be integrated into Hayashida’s framework without undue experimentation to yield predictable results.

4. Key Claim Construction Positions

Petitioner dedicated significant argument to construing several "device for..." limitations as means-plus-function limitations under 35 U.S.C. § 112, ¶ 6, asserting "device" is a nonce word that fails to connote sufficient structure.

• "a device for getting location information..." (claims 1, 10): Petitioner argued this term is governed by §112-6 and proposed the corresponding structure from the ’317 patent's specification is a combination of (1) a wireless receiver (e.g., GPS, PHS antenna), (2) an infrared ray sensor, and (3) a control unit for analyzing the data. This construction was central to mapping Hayashida's and Abowd's use of both GPS and infrared/beacon systems.
• "a device for getting [a] direction information..." (claims 1, 10): Petitioner asserted this is also a means-plus-function term. The agreed-upon corresponding structure is "a compass, a gyroscope, and/or sensor such as a clinometer in conjunction with a CPU, or equivalents thereof," which is expressly defined in the ’317 patent.
• "a device for getting a location information of another portable terminal..." and "a device for retrieving a route..." (claims 10, 15, 18): Petitioner argued these are means-plus-function terms and adopted the Patent Owner's proposed construction from parallel litigation: "a CPU and a device for data communication 76 of a portable terminal; or equivalents thereof."

5. Arguments Regarding Discretionary Denial

Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a), addressing the General Plastic factors.

• Petitioner asserted that a majority of factors favored institution. Specifically, this was Apple's first petition against the ’317 patent; the prior art was located through diligent searching after litigation began; and the grounds relied on different prior art than a previously denied IPR filed by another party (IPR2018-00235), meaning the Board would not be repeating work.
• While acknowledging that the prior denied IPR weighed against institution, Petitioner argued the other factors outweighed it. Petitioner also argued against denial based on the parallel district court proceeding, noting that the case was at an early stage with no Markman hearing held or significant investment of judicial resources in invalidity issues.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5, 10-15, 17, and 18 of the ’317 patent as unpatentable.