Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-00408
• Patent #: 6,430,498
• Filed: January 13, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1, 3-5, 7-11, and 13

2. Patent Overview

• Title: Portable Terminal with Walking Navigation
• Brief Description: The ’498 patent describes a portable terminal with walking navigation functions that supplies location-related information to a user. The invention purports to solve problems of conventional systems being too large for pedestrians and maps being difficult to read on small screens by providing a terminal that obtains and displays location, direction, and route guidance information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hayashida and POSITA Knowledge - Claims 1, 3, 5, and 7-8 are obvious over Hayashida in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Hayashida (Patent 6,067,502) and the general knowledge of a person of ordinary skill in the art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hayashida, while primarily describing a vehicle navigation system, expressly contemplated its application to portable "carrying-type" devices for pedestrians. Hayashida taught a navigation device with a central processor, a GPS receiver, and a beacon receiver for determining location, as well as a compass and gyroscope for determining travel direction, satisfying the core limitations of independent claim 1. For dependent claims, Hayashida's display of routes as bent lines with start/end points met limitations for displaying route guidance. Petitioner contended a POSITA would have found it obvious to display orientation relative to the device's screen (claim 3) for a handheld device and to display local route details like footpaths, which Hayashida disclosed as "backlanes" (claim 5).
  • Motivation to Combine (for §103 grounds): The primary motivation was the straightforward application of Hayashida's established navigation features to the pedestrian context it explicitly suggested. A POSITA would have been motivated to adapt these features to a portable device to meet the known demand for pedestrian navigation.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because implementing known navigation features in a smaller, portable form factor for pedestrians involved predictable design choices, not undue experimentation.

Ground 2: Obviousness over Hayashida and Abowd - Claims 1, 3-5, 7-11, and 13 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 printed publication).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted this combination strengthened the arguments from Ground 1 by using Abowd to explicitly teach the pedestrian-specific features. Abowd described a hand-held, context-aware "Cyberguide" for walking tours. It taught combining GPS with an indoor infrared (IR) beacon system to address weak GPS signals, directly mapping to the construed structure of the '498 patent's location-getting device. Abowd also taught using an electronic compass to determine user orientation (not just travel direction) and a communications module to determine the location of other users ("partners"), mapping to limitations in claims 4, 9, and 10. For claim 11, Abowd taught determining orientation from the hand-held unit itself, which a POSITA would understand could be the direction pointed by the tip of the device.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hayashida’s robust navigation engine with Abowd's pedestrian-focused features to create a more versatile portable device. Abowd itself noted that some of its features were already present in automobile navigation systems, suggesting a natural and logical convergence of the technologies for the pedestrian market.
  • Expectation of Success (for §103 grounds): Success was predictable because the references disclosed similar system architectures (e.g., both use GPS and IR sensors). Furthermore, Abowd's disclosure of a modular system would have made integration with Hayashida's teachings straightforward for a POSITA.

• Additional Grounds: Petitioner asserted that claims 3 and 7 are obvious over Hayashida and POSITA knowledge in further view of Ikeda (Japanese Patent Application H9-311625). Petitioner also asserted that claims 3, 7, 11, and 13 are obvious over the combination of Hayashida, Abowd, and Ikeda. These grounds relied on Ikeda to further reinforce the teaching of getting orientation information from the device's display and the tip of the terminal.

4. Key Claim Construction Positions

Petitioner argued that two key claim limitations are governed by 35 U.S.C. §112, ¶ 6 (pre-AIA) as means-plus-function limitations because the term "device" is a nonce word lacking sufficient structure.

• "a device for getting location information...": Petitioner proposed that the corresponding structure is "(1) a wireless or cellular antenna, or a GPS, or a Personal Handyphone System [PHS]; (2) an infrared ray sensor; and (3) a control unit for analyzing received data..." Petitioner noted this construction was adopted by the Board in a prior IPR against the same patent (IPR2019-00071) and was not disputed by the Patent Owner in that proceeding.
• "a device for getting direction information...": Petitioner proposed that the corresponding structure is "a compass, a gyroscope, and/or sensor such as a clinometer in conjunction with a CPU, or equivalents thereof." This structure is expressly defined in the '498 patent's specification and was agreed upon by both parties in parallel district court litigation.

5. Arguments Regarding Discretionary Denial

Petitioner argued that the Board should not exercise its discretion to deny institution.

• Prior IPR (General Plastic factors): Petitioner argued that a prior IPR filed by ASUSTeK (IPR2019-00071) should not preclude institution because (1) Petitioner is an unrelated party, (2) the current petition relies on new prior art (Hayashida, Abowd, Ikeda) not previously considered, and (3) the prior denial was based on the former petitioner's failure to identify sufficient corresponding structure under §112, an issue Petitioner claimed to have corrected.
• Co-pending Litigation (Fintiv factors): Petitioner argued that the parallel district court litigation was in its early stages, with no Markman hearing held and no significant investment of judicial resources in analyzing prior art invalidity issues. Therefore, an IPR would be a more efficient resolution of the validity questions.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-5, 7-11, and 13 of Patent 6,430,498 as unpatentable.