Facebook Inc v. Gabara Thaddeus

1. Case Identification

• Case #: IPR2021-00200
• Patent #: 8,620,545
• Filed: November 16, 2020
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Thaddeus Gabara
• Challenged Claims: 1-22

2. Patent Overview

• Title: Method and Apparatus of Physically Moving a Portable Unit to View an Image of a Stationary Map
• Brief Description: The ’545 patent describes a method and apparatus for navigating a digital map on a portable device. The system is designed to overcome user disorientation by having the user physically move the portable unit to scroll across a larger, stationary background map, rather than using traditional touch-screen controls. The device uses an inertial guidance system to detect its movement and update the displayed portion of the map accordingly.

3. Grounds for Unpatentability

Ground 1: Claims 8-10, 12, 13, 16-18, and 20 are obvious over Kim.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim, which is directed to reflecting a portable device's movements in a displayed image, discloses all elements of the challenged claims. Kim teaches a portable terminal with an Inertial Navigation System (INS) containing accelerometers and gyroscopes. This system loads a large map image into memory (a "background image") that is larger than the display screen. As the user physically moves the terminal, the INS detects this movement (both linear and rotational), and a processor updates the portion of the background map shown on the screen to reflect the new position. Kim explicitly describes applying this technology to a "map viewing program or a map searching program," matching the core limitations of the independent claims. For example, Kim's loaded map image A1 is the claimed "background image of a stationary map stored...in a memory," and the displayed portion B1 is the "image displayed on a screen."

Ground 2: Claims 1, 3-7, 14, 15, 21, and 22 are obvious over Kim in view of Marvit.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180), Marvit (Patent 7,365,736).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kim provides the primary framework of a motion-controlled map viewing system. Marvit, which teaches customizable gesture mappings for motion-controlled handheld devices, is used to supply any missing details, particularly regarding refined motion control. Marvit discloses using motion sensors to translate a device's movement along multiple axes into on-screen actions, and teaches methods to distinguish dominant, intended motion from inadvertent motion to improve user control. For example, Marvit's disclosure of detecting linear movement along a known vector is used to supplement Kim's teachings to explicitly meet limitations such as moving the unit "along the known vector until the image containing the second location is displayed."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Kim and Marvit to improve the functionality of Kim's map searching feature. Marvit’s techniques for analyzing and minimizing unintended, non-dominant motion would make the map navigation in Kim’s device more intuitive, controllable, and accurate compared to using rotational movement alone.
  • Expectation of Success: A POSA would have a reasonable expectation of success in combining these references, as both operate in the same field of motion-controlled portable devices and use similar sensor technology. The combination would predictably yield an improved map searching interface without requiring substantial modification.

Ground 3: Claims 11 and 19 are obvious over Kim in view of Hakala.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180), Hakala (Patent 6,452,544).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground again used Kim as the base reference. Hakala, which teaches a portable map display system, was added to teach the limitations of claims 11 and 19, specifically an "RF module to receive and store data from an external database." While Kim teaches loading a map from a database into memory, it does not explicitly state the database is external or accessed wirelessly. Hakala explicitly discloses a system where a handheld display uses a wireless link (e.g., short-range RF link) to connect to a map device, which in turn obtains map information from a remote map server over the Internet.
  • Motivation to Combine: A POSA would be motivated to combine Hakala’s wireless data access with Kim’s system to solve a known problem: the significant memory, cost, and size constraints associated with pre-loading multiple, high-resolution maps onto a portable device. Hakala provides a straightforward solution by enabling on-demand access to a vast, up-to-date library of maps from an external source.
  • Expectation of Success: Integrating a standard RF module into Kim's device to access an external database as taught by Hakala would be a predictable and successful modification for a POSA. This would improve Kim's system by minimizing memory requirements and providing access to the latest map versions.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 2 based on the combination of Kim, Marvit, and Hakala. This ground argued that a POSA would have combined all three references for the cumulative benefits of improving the motion-control interface (from Marvit) and enabling remote map data access (from Hakala) in Kim's base system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inappropriate because none of the prior art cited in the petition (Kim, Marvit, or Hakala) was cited or considered during the original prosecution of the ’545 patent.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-22 of the ’545 patent as unpatentable.