PTAB

IPR2020-00409

Apple Inc. v. Maxell, Ltd.

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1. Case Identification

2. Patent Overview

  • Title: Portable Terminal with Walking Navigation Function
  • Brief Description: The ’999 Patent describes a portable terminal for walking navigation designed to overcome the challenges of using conventional navigation systems on small-screen devices. The terminal provides location, direction, and route guidance information in a manner intended to be easily understood by a walking user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hayashida and Abowd - Claims 1-6 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: Petitioner asserted that Hayashida taught a navigation system, primarily for vehicles but expressly contemplating a portable, pedestrian application. Hayashida disclosed key components like a GPS, a land-based beacon system (VICS, which utilized infrared), and direction sensors (compass, gyroscope) to provide route information. However, Hayashida's direction sensing was focused on the vehicle's direction of travel. Abowd, in contrast, described a hand-held, context-aware navigation device (Cyberguide) specifically for pedestrians. Abowd taught combining GPS with an indoor infrared beacon system for positioning and using an electronic compass to determine the orientation of the hand-held device itself, which is more relevant for a pedestrian user than direction of travel.
    • Petitioner argued the combination of these references rendered all limitations of independent claims 1, 5, and 6 obvious. Hayashida provided the base system for navigation, including displaying routes with distance information and communicating over a network. Abowd taught the specific modifications needed to adapt such a system for a hand-held pedestrian context, such as using an electronic compass for device orientation and combining location technologies for seamless indoor/outdoor use. For dependent claims 2-4, Petitioner mapped features like displaying direction as an "orientation of line" and distance as a "number" to Hayashida's route and map displays, which showed bent lines for roads and numeric callouts for distance.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA), starting with Hayashida's vehicle system and its suggestion for a pedestrian application, would have been motivated to look to contemporaneous art like Abowd for known techniques to implement a hand-held pedestrian navigator. Abowd expressly described solutions for pedestrian-specific problems, such as determining device orientation and providing indoor positioning, making it a natural source to consult for modifying Hayashida's system for its contemplated "carrying-type" use.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because both references used similar and compatible technologies (GPS, infrared sensors, compasses). Furthermore, Abowd described its system as modular, which would suggest to a POSITA that integrating its pedestrian-focused features into the architecture of Hayashida's system would be straightforward and yield predictable results without undue experimentation.

4. Key Claim Construction Positions

  • Petitioner dedicated significant argument to construing three "device for..." limitations as means-plus-function terms under 35 U.S.C. §112, ¶ 6, asserting that "device" is a nonce word lacking sufficient structure.
  • "a device for getting location information...": Petitioner argued this term is governed by §112 and proposed the corresponding structure from the ’999 patent's specification is a three-part system: "(1) a wireless or cellular antenna, or a GPS, or a Personal Handyphone System [PHS]; and (2) an infrared ray sensor; and (3) a control unit for analyzing received data...". This construction is critical to the invalidity argument, as it requires the presence of both a wide-area positioning system (like GPS) and a local, line-of-sight system (infrared sensor), a combination Petitioner argued was taught by combining Hayashida and Abowd.
  • "a device for getting direction information...": Petitioner noted that both parties in parallel district court litigation agreed this term should be construed under §112 with the corresponding structure being "a compass, a gyroscope, and/or sensor such as a clinometer in conjunction with a CPU, or equivalents thereof."
  • "a device for getting the location information of another portable terminal...": For this term and the related "device for retrieving a route..." limitation, Petitioner proposed adopting the construction advanced by the Patent Owner in parallel litigation, which identified the corresponding structure as "a CPU and a device for data communication 76 of a portable terminal; or equivalents thereof."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial of institution under §314(a) (considering Fintiv factors) would be inappropriate. It was asserted that the parallel district court proceeding was in its early stages, with no Markman hearing held and no significant court resources invested in analyzing prior art invalidity issues. Petitioner contended that denying institution under these circumstances would effectively nullify the one-year statutory window under §315(b) for a defendant to file an inter partes review (IPR) and would run contrary to the common practice of staying district court litigation pending the outcome of an IPR.

6. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-6 of the ’999 patent as unpatentable.