Facebook Inc v. Gabara Thaddeus

1. Case Identification

• Case #: IPR2021-00118
• Patent #: 8,706,400
• Filed: October 26, 2020
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Thaddeus Gabara
• Challenged Claims: 1-21

2. Patent Overview

• Title: Method and Apparatus of Physically Moving a Portable Unit to View an Image of a Stationary Map
• Brief Description: The ’400 patent discloses methods for navigating a map on a portable electronic device. The invention proposes using the physical movement of the device itself, tracked by internal sensors like accelerometers and gyroscopes, to pan and scroll across a stationary background map, which is analogized to viewing a large map through a "Sliding Window."

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 1 - Claim 1 is anticipated by Kim under 35 U.S.C. §102.

• Prior Art Relied Upon: Kim (Certified Translation of KR Patent No. 10-2006-0027180).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim, which discloses a method for reflecting the real-time movement of a portable device in a 2D or 3D image, teaches every limitation of independent claim 1. Kim describes a "map searching program" on a portable terminal equipped with an Inertial Navigation System (INS). Petitioner asserted Kim teaches displaying a portion of a larger stationary map, mapping a central reference point (0,0) of the map to the center of the device screen, moving the device to display new portions of the map, identifying the new location via sensor data, determining a vector based on the movement, and moving the screen's center to the new location.

Ground 2: Obviousness of Claims 1-6, 8-14, and 16-20 - Claims are obvious over Kim in view of Marvit under 35 U.S.C. §103.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180) and Marvit (Patent 7,365,736).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Kim teaches the foundational method of motion-based map navigation. Marvit, which discloses customizable gesture mappings for motion-controlled handhelds, was argued to supply any elements potentially missing from Kim and render the combination obvious. Specifically, Marvit teaches using multi-axis accelerometers for linear, translation-based input to navigate a map, which Petitioner argued would be an obvious alternative or improvement to the rotational (roll/pitch) based movement in Kim. For dependent claims, Marvit was cited for teaching a "zero point" or "origin" defined relative to a user's body (claim 2), using a microprocessor for processing motion data (claim 3), zooming functionality (claim 6), and using a physical button to engage or disengage motion sensitivity (claim 8).
  • Motivation to Combine: A POSITA would combine Kim and Marvit because they are analogous art addressing the same problem of navigating images on a portable device. A POSITA would have been motivated to incorporate Marvit’s teachings on multi-axis linear motion control into Kim's map navigation system to provide a more intuitive and controllable user experience, which is a predictable result.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The integration involved applying known motion control techniques (Marvit) to a known map navigation system (Kim) to achieve the predictable benefit of improved usability without requiring substantial modification or undue experimentation.

Ground 3: Obviousness of Claims 7, 15, and 21 - Claims are obvious over Kim and Marvit in view of Hakala.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180), Marvit (Patent 7,365,736), and Hakala (Patent 6,452,544).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 7, 15, and 21, which add limitations requiring the system to store a map on an external database and receive data from that database via an RF module. While Petitioner argued Kim and Marvit teach the base methods, Hakala was introduced to supply the external data access elements. Hakala discloses a portable map display system that obtains map information from a remote Map Server and database via a wireless RF Local Area Network (RF LAN).
  • Motivation to Combine: A POSITA would combine Hakala's teachings with the system of Kim and Marvit to overcome the inherent storage limitations of a portable device. Providing access to a larger, external map database via a wireless RF module was a well-known solution for enhancing the capabilities of portable navigation systems.
  • Expectation of Success: The combination was presented as a simple addition of existing technology (wireless data access) to an existing system. A POSITA would have reasonably expected success in implementing this combination to allow Kim's device to access more extensive map data, a predictable and desirable outcome.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It asserted that the petition does not present the "same or substantially the same prior art or arguments" that were presented to the patent office during the original prosecution. Petitioner explicitly stated that none of the prior art references relied upon in the petition (Kim, Marvit, and Hakala) were cited or considered during the prosecution of the ’400 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 8,706,400 as unpatentable.