Facebook Inc v. Gabara Thaddeus

1. Case Identification

• Case #: IPR2021-00201
• Patent #: 8,836,698
• Filed: November 16, 2020
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Thaddeus Gabara
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method and Apparatus of Physically Moving a Portable Unit to View an Image of a Stationary Map
• Brief Description: The ’698 patent describes a method and apparatus for navigating a digital map on a portable device. The system uses an inertial guidance system (e.g., accelerometers, gyroscopes) to detect the physical movement of the device, and in response, updates the portion of a stationary map displayed on the screen, creating an experience analogous to moving a "sliding window" over a large, fixed image.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim and Roussos - Claims 1-6, 8-13, and 15-18 are obvious over Kim in view of Roussos under 35 U.S.C. §103.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180) and Roussos (a 2010 journal article titled "3D Navigation and Collision Avoidance for nonholonomic aircraft-like vehicles").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim discloses the core elements of the challenged claims. Kim teaches a portable device with an internal inertial navigation system (INS) that reflects the device's real-time movement and orientation to manipulate a 3D map or game image on its screen. Kim discloses using an accelerometer and gyroscope to calculate movement vectors, a reference point (0,0,0) where X, Y, and Z axes intersect, and displaying a cross-sectional image of a larger map that updates as the device moves. Petitioner contended the primary element supplied by Roussos is the description of a movement vector's direction using specific angles relative to the coordinate axes (i.e., spherical coordinates). While Kim describes vectors in cartesian (X, Y, Z) components, Roussos explicitly describes modeling 3D movement using bank, elevation, and azimuth angles, which directly corresponds to the claimed "first angle from the first axis and a second angle from the third axis."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Kim and Roussos because both address the same technical problem of tracking and representing 3D movement, with both providing examples in flight simulation. A POSA seeking to implement Kim's map navigation system would have looked to well-known coordinate systems for describing movement vectors. Roussos provides a known, intuitive, and mathematically equivalent alternative (spherical coordinates) to Kim's cartesian system. Using Roussos’s method was presented as an obvious design choice to facilitate simpler or more intuitive vector calculations.
  • Expectation of Success: A POSA would have had a high expectation of success because combining the references involves applying a different but interchangeable mathematical framework to describe a vector. Switching between cartesian and spherical coordinate systems is a routine task in the art, requiring only standard mathematical formulas, and would predictably function within Kim's system without altering its fundamental operation.

Ground 2: Obviousness over Kim, Roussos, and Hakala - Claims 7, 14, and 19-20 are obvious over Kim in view of Roussos, further in view of Hakala under §103.

• Prior Art Relied Upon: Kim (KR Patent No. 10-2006-0027180), Roussos (2010 journal article), and Hakala (Patent 6,452,544).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Kim and Roussos from Ground 1 to address claims requiring an external database. Claims 7, 14, and 19-20 add the limitation that an "external database can be accessed via a communication link to supply the memory with data." While Kim teaches loading map data "from a database," it does not specify that the database is external or teach a communication link. Hakala was introduced to supply these missing elements. Hakala explicitly discloses a portable map display system where a device (e.g., cellular phone) uses a wireless communication link (e.g., a short-range RF link) to connect to the Internet and obtain map information from a remote Map Server, which is connected to an external map database.
  • Motivation to Combine: A POSA implementing the Kim/Roussos system would have recognized the practical limitations of storing large, high-resolution maps on a portable device with finite memory. To solve this known problem, the POSA would be motivated to incorporate Hakala's teaching of accessing an external database on demand. This combination would predictably improve the system by minimizing onboard memory requirements and allowing access to the most up-to-date map data.
  • Expectation of Success: A POSA would have expected the combination to succeed because it involves integrating a conventional feature (remote data access) into a portable device. Using known components like RF modules to connect to external servers was a well-understood technique for extending the capabilities of portable devices, and its application to Kim's map navigation system would yield predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate. The petition asserted that none of the prior art references relied upon (Kim, Roussos, and Hakala) were the same as or substantially the same as art previously presented to or considered by the USPTO during the original prosecution of the ’698 patent.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and issue a final written decision cancelling claims 1-20 of the ’698 patent as unpatentable.