Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2020-00409
• Patent #: 6,580,999
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-6

2. Patent Overview

• Title: Portable Terminal with Walking Navigation Function
• Brief Description: The ’999 patent describes a portable terminal for walking navigation that provides location-related information to a user. The invention aims to solve problems with then-conventional systems by displaying maps and guidance clearly on small screens for pedestrians.

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 (a 1997 article titled "Cyberguide: A Mobile Context-Aware Tour Guide").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hayashida taught a navigation system with all the core components of the claimed invention, including a portable "carrying-type" device for pedestrians. Hayashida disclosed using a GPS and a land-based beacon system (VICS, which Petitioner asserted was infrared-based) to get location, and an electronic compass and gyroscope to get direction. It also taught displaying routes with distance information. Petitioner contended that Abowd, which described a hand-held, context-aware tour guide specifically for pedestrians, supplied the missing elements and motivation. Abowd taught combining GPS for outdoor location with an infrared beacon system for indoor location. Crucially, Abowd also disclosed a communications module allowing users to find the locations of other users ("tourists") on the network, directly teaching the limitation of getting another terminal's location.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references to adapt Hayashida’s robust, vehicle-oriented navigation features for the specific pedestrian-use case that Hayashida itself contemplated. Abowd provided an explicit blueprint for such a pedestrian system, including solving GPS weaknesses indoors with infrared beacons and adding inter-user location sharing. Abowd noted that many of its desirable functions were already being provided by automobile navigation systems, creating a clear rationale for a POSITA to integrate the teachings.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the architectures of Hayashida and Abowd were similar, both employing GPS and infrared positioning. Furthermore, Abowd described its system as modular, which would have made integration of its pedestrian-focused features into Hayashida’s framework straightforward and predictable.

4. Key Claim Construction Positions

Petitioner argued that several claim terms reciting a "device for" performing a function were means-plus-function limitations under 35 U.S.C. §112, ¶ 6, and proposed constructions based on the specification and arguments from parallel litigation.

• "a device for getting location information denoting a present place of said portable terminal": Petitioner asserted the corresponding structure was three-fold: (1) a wireless or cellular antenna, GPS, or Personal Handyphone System (PHS); (2) an infrared ray sensor; and (3) a control unit for analyzing the data. This construction was central to mapping the combined GPS and infrared teachings of the prior art.
• "a device for getting direction information denoting an orientation of said portable terminal": Petitioner adopted the agreed-upon construction from parallel litigation, identifying the corresponding structure as "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 ’999 patent.
• "a device for getting the location information of another portable terminal...via connected network": Petitioner adopted the Patent Owner's proposed construction from parallel litigation, identifying 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 presented arguments that discretionary denial under §314(a) would be inappropriate.

• Petitioner argued that the parallel district court proceeding involving the ’999 patent was in its early stages. At the time of filing, no preliminary injunction motions had been filed, no substantive analysis of prior art invalidity issues had occurred, and no Markman hearing had been held.
• Denying institution based on the co-pending litigation would, in Petitioner's view, effectively nullify the one-year statutory filing window provided by §315(b), undermining the purpose of the inter partes review (IPR) system as an efficient alternative to district court litigation.

6. Relief Requested

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