Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2021-00047
• Patent #: 7,203,517
• Filed: December 14, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 9-10

2. Patent Overview

• Title: Mobile Communication Terminal with Automatic Interface Switching
• Brief Description: The ’517 patent discloses a mobile communication terminal with multiple, different communication interfaces (e.g., cellular, Wireless LAN, PHS). The terminal automatically switches between these interfaces based not only on connection availability but also on the device's position and movement speed to prevent unstable connections that result from frequent switching, particularly when moving at high speeds.

3. Grounds for Unpatentability

Ground 1: Claim 9 is obvious over Mukai in view of the knowledge of a PHOSITA.

• Prior Art Relied Upon: Mukai (Japanese Patent Application Publication 2001-309445).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mukai, which is analogous art, discloses all elements of claim 9. Mukai teaches a mobile terminal that automatically switches between network interfaces (e.g., wireless LAN, PHS) by considering the device's position, movement speed, and network availability. The central argument focused on Mukai’s disclosure of a database (specifically, the Fig. 4 embodiment) that contains a "connection-priority order field." Petitioner asserted this field is automatically updated based on real-time operating conditions, including "radio field strength," which directly teaches the "communication availability" limitation of claim 9. This counters arguments made by the Patent Owner in a prior IPR that focused on a different, static database embodiment in Mukai.
  • Motivation to Combine (for §103 grounds): Petitioner contended that Mukai is directed to solving the same problem as the ’517 patent—avoiding frequent network switching to improve user experience. A person of ordinary skill in the art (POSITA) would have understood Mukai's system, particularly its dynamic database embodiment that considers signal strength, to render the claimed invention obvious.
  • Expectation of Success (for §103 grounds): As Mukai was argued to disclose a complete system that performs the claimed functions, a POSITA would have had a very high expectation of success in implementing the invention.

Ground 2: Claim 10 is obvious over Mukai in view of Seppanen.

• Prior Art Relied Upon: Mukai (Japanese Patent Application Publication 2001-309445) and Seppanen (Patent 5,903,832).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 10 adds the limitation of "an output unit for notifying a user of the communication availability" to the system of claim 9. While Mukai teaches the base system with a monitor, Seppanen explicitly discloses a user interface on a mobile terminal that notifies the user of available networks and their status, for instance, by displaying icons. Seppanen’s teaching of displaying network availability directly maps to the additional limitation of claim 10.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Seppanen's user notification feature with Mukai's network selection system to further Mukai’s stated goal of improving user convenience. Notifying users of network availability would allow them to make informed decisions (e.g., delaying a large download until a faster wireless LAN is available), representing a predictable and beneficial improvement.
  • Expectation of Success (for §103 grounds): The proposed combination was presented as straightforward. Since Mukai’s device already included a display and the software to determine network availability, implementing a software modification to display this information as taught by Seppanen would have been a simple task with a high expectation of success.

4. Key Claim Construction Positions

• "determining whether... interfaces [are] available for a communication": Petitioner noted this was a key disputed term in a prior IPR, where Patent Owner argued it required determining signal range or strength. Petitioner argued that even under this narrow construction, Mukai’s Fig. 4 embodiment, which updates connection priority based on "radio field strength," satisfies the limitation.
• "selection switching determination unit": Petitioner proposed adopting the construction from the prior IPR, which interpreted this as a means-plus-function term, to promote efficiency and leverage the Board’s prior work.

5. Key Technical Contentions (Beyond Claim Construction)

• The petition’s core technical contention centered on the correct interpretation of the Mukai reference. Petitioner argued that a prior IPR and the Patent Owner had incorrectly focused on a static database embodiment described in Mukai's Fig. 3. The current petition asserted that Mukai’s Fig. 4 embodiment, which discloses a dynamic database that updates connection priorities in real-time based on signal strength, is the relevant teaching for assessing communication availability and was entirely ignored in the previous proceeding.

6. Arguments Regarding Discretionary Denial

• §325(d) (Cumulative Arguments): Petitioner argued that although Mukai was cited in an IDS during prosecution of the ’517 patent, it was never substantively discussed or relied upon by the Examiner. Therefore, the grounds presented in the petition are not the same as or substantially similar to arguments previously presented to the Office.
• §314(a) (General Plastic and Fintiv Factors): Petitioner presented extensive arguments that discretionary denial would be inappropriate.
  • Regarding the General Plastic factors for serial petitions, Petitioner argued this is its first IPR against the ’517 patent and that it has no relationship with the petitioner in the prior Huawei IPR. Further, the petition was intentionally streamlined to reuse grounds from the terminated Huawei IPR, thereby conserving Board resources by allowing it to complete an analysis it had already begun.
  • Regarding the Fintiv factors for parallel litigation, Petitioner contended that the co-pending ITC investigation is not a true parallel proceeding because the ITC lacks authority to invalidate patent claims. For the parallel district court litigation, no trial date was set, meaning the Board’s Final Written Decision would issue long before any potential trial. Petitioner also advanced policy and legal arguments that the Fintiv framework itself is invalid and should be overturned.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 9-10 of Patent 7,203,517 as unpatentable.