Thaddeus GabaraDownload PDFPatent Trials and Appeals BoardMay 25, 2021IPR2021-00200 (P.T.A.B. May. 25, 2021) Copy Citation Trials@uspto.gov Paper 13 571-272-7822 Date: May 25, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ FACEBOOK, INC., Petitioner, v. THADDEUS GABARA, Patent Owner. ____________ IPR2021-00200 Patent 8,620,545 B1 ____________ Before BART A. GERSTENBLITH, JOHN D. HAMANN, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-00200 Patent 8,620,545 B1 2 I. INTRODUCTION A. Background Facebook, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting institution of inter partes review of claims 1–22 (“the Challenged Claims”) of U.S. Patent No. 8,620,545 B1 (Ex. 1001, “the ’545 patent”). Thaddeus Gabara (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Petitioner requested, but was not authorized, to file a preliminary reply to the Preliminary Response because Petitioner did not establish good cause for its request. Paper 8. An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’545 patent. Accordingly, we do not institute an inter partes review. B. Related Proceedings Petitioner and Patent Owner identify the following related matter: Gabara v. Facebook, Inc., No. 2020-2333 (Fed. Cir.), which is an appeal from Gabara v. Facebook, Inc., No. 19-cv-09890 (S.D.N.Y). Pet. 2–3; Paper 5 (Patent Owner’s Mandatory Notices), 1. Petitioner challenges claims of related patents—U.S. Patent Nos. 8,930,131 B2 and 8,706,400 B1—in IPR2021-00116 and IPR2021-00118, respectively. Paper 5, 1–2. Additionally, Petitioner and Patent Owner are involved in IPR2021-00201, in which Petitioner challenges the claims of U.S. Patent IPR2021-00200 Patent 8,620,545 B1 3 No. 8,836,698 B2 that issued from related co-filed U.S. Appl. No. 13/337,253. Id. at 2. Petitioner and Patent Owner are also the parties in IPR2021-00117 wherein Petitioner challenges the claims of unrelated U.S. Patent No. 9,299,348 B2. C. Real Parties in Interest Petitioner identifies Facebook, Inc. as the real party in interest. Pet. 1. Patent Owner identifies Thaddeus Gabara as the real party in interest. Paper 5, 1. D. The Asserted Grounds of Unpatentability and Declaration Evidence Petitioner challenges the patentability of claims 1–22 of the ’545 patent on the following grounds: Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis 8–10, 12, 13, 16–18, 20 103(a) Kim2 1, 3–7, 14, 15, 21, 22 103(a) Kim, Marvit3 11, 19 103(a) Kim, Hakala4 2 103(a) Kim, Marvit, Hakala Pet. 4–5. Petitioner supports its challenge with a Declaration by Sandeep Chatterjee, Ph.D. (Ex. 1002). 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’545 patent has an effective filing date before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 2 KR Patent No. 10-2006-0027180, filed Sept. 22, 2004, issued Mar. 27, 2006. Petitioner filed a certificate of translation with the original Korean- language document as Exhibit 1009. We refer to the English-language translation, filed as Exhibit 1004 (“Kim”). 3 U.S. Patent No. 7,365,736 B2, issued Apr. 29, 2008 (Ex. 1005, “Marvit”). 4 U.S. Patent No. 6,452,544 B1, issued Sept. 17, 2002 (Ex. 1006, “Hakala”). IPR2021-00200 Patent 8,620,545 B1 4 E. The ’545 Patent The ’545 patent is directed to a method and apparatus of physically moving a portable unit to view an image of a stationary map. Ex. 1001, code (54). The ’545 patent explains that touch screens on portable devices have been used to change the scale and location of maps displayed on those devices, but that “minimization and magnification processes may cause the user to lose bearing, particularly since the distance between locations is difficult to sense from scrolling the map across the screen of a portable device.” Id. at 1:49–52. The ’545 patent is intended to help “overcome this shortcoming in current portable systems for providing map directions.” Id. at 1:53–54. One embodiment of the ’545 patent “introduces a background map that remains stationary.” Ex. 1001, 2:3–4. A portable unit is moved within a plane parallel to the screen of the unit and as the unit is moved, “images of the background map appear on the screen of the portable device.” Id. at 2:6– 9. The ’545 patent describes that “[t]he handheld or portable unit is like a Sliding Window which provides a view of this image of a stationary map lying in the background of the portable unit.” Id. at 2:17–20. IPR2021-00200 Patent 8,620,545 B1 5 Figure 6a is reproduced below: Figure 6a of the ’545 patent “shows a sub-scale portion of the representative map of FIG. 5a can be viewed on the screen of a portable hand held device when the scale is magnified.” Ex. 1001, 6:52–55. Figure 6a shows portable unit 5-7 being held by a user’s thumb 6-5 and fingers 6-1 through 6-4 and the screen of portable unit 5-7 “presents a portion of the image of a stationary map 6-9 showing the rectangle 5-6.” Id. at 12:5–7. Figure 6a “uses a stationary map while the portable unit is moved.” Id. at 12:8–11. Other objects of the image of stationary map 6-9 (e.g., star 5-2, oval 5-3, structure 5-4, and triangle 5-5) are not currently displayed by screen 5-7. Id. at 12:11–18, Fig. 6a. As the portable unit is moved, however, one or more of those other objects is displayed on the screen, as described in the context of Figure 6b. See id. at 13:1–3. IPR2021-00200 Patent 8,620,545 B1 6 Figure 6b is reproduced below: Figure 6b of the ’545 patent “illustrates a first sub-scale portion of the representative map of FIG. 5a that can be viewed on the screen of a portable hand held device after the portable hand held device is physically moved.” Ex. 1001, 6:56–59. In Figure 6b, the portable device was moved through a distance and direction corresponding to vector 6-11 until display 5-7 presents oval 5-3 within the display screen of the portable unit. Id. at 13:1– 5. IPR2021-00200 Patent 8,620,545 B1 7 Figures 10a and 10b are reproduced below: Figure 10a of the ’545 patent “illustrates the conventional map movement performed in a stationary portable device,” while Figure 10b “shows the inventive portable device movement to view a stationary map that provides a Sliding Window perspective of a map.” Ex. 1001, 7:57–61. The ’545 patent explains that Figures 10a and 10b “illustrate the difference between the two systems of when the map is moved and when the device is moved.” Id. at 16:54–56. In Figure 10a, “the map 10-1 is moved while the portable unit 4-2 remains stationary.” Id. at 15:56–57. In contrast to Figure 10a, Figure 10b “shows the innovative embodiment of the device movement technique.” Id. at 17:11–12. In Figure 10b, “[t]he screen of the portable unit 5-7 moves to the upper right and displays the stationary map on the screen of the portable unit. Thus, the user moves the portable unit 5-7 in the IPR2021-00200 Patent 8,620,545 B1 8 direction 10-4 while the map 10-3 remains stationary.” Id. at 17:14–18. One critical aspect of the “innovative device movement” is that “map 10-3 remains stationary.” Id. at 17:16–18. F. Illustrative Claim Claims 1, 8, and 16 are the independent claims challenged in this proceeding. Claim 8 is illustrative of the claimed subject matter and is reproduced below with Petitioner’s bracketing added for reference: 8. [pre] A portable unit comprising: [1a] a background image of a stationary map stored at a given scale in a memory; [1b] a first location and at least one other location presented in an image displayed on a screen of the portable unit at the given scale, wherein; [1c] the image displayed on the screen matches and remains superimpose[d] over a corresponding portion of the background image of the stationary map; and [1d] the at least one other location located by a known vector with respect to the first location displayed on the screen, wherein [1e] the given scale of the background image and the image presented on the screen of the portable unit is magnified to display a larger scaled image containing only the first location and [1f] the portable unit is moved by a user along the known vector to display the at least one other location on the screen in the corresponding portion of the background image of the stationary map. Ex. 1001, 22:49–67. G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Chatterjee’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would IPR2021-00200 Patent 8,620,545 B1 9 “possess[] at least a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years of experience with software application development, including experience in developing software and systems for portable devices that can manipulate and render digital images, such as maps.” Pet. 15 (citing Ex. 1002 ¶¶ 29–31). Additionally, Petitioner explains that “a person could also qualify as a [person of ordinary skill in the art] with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1002 ¶¶ 29–31). Patent Owner “does not dispute Petitioner’s definition” for purposes of this proceeding and its Preliminary Response. Prelim. Resp. 28. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’545 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision. II. CLAIM CONSTRUCTION In this inter partes review, claims are construed using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH IPR2021-00200 Patent 8,620,545 B1 10 Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 15; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision. III. ANALYSIS A. Legal Standards – Obviousness The U.S. Supreme Court set forth the framework for applying the statutory language of 35 U.S.C. § 103(a) in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966): Under § 103[(a)], the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., IPR2021-00200 Patent 8,620,545 B1 11 might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As explained by the Supreme Court in KSR International Co. v. Teleflex Inc.: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). “Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)). B. Petitioner’s Challenges of Claims 1–22 Petitioner relies principally on Kim to contend claims 1–22 are unpatentable. Pet. 4–5. For the obviousness contentions in Ground 1, IPR2021-00200 Patent 8,620,545 B1 12 Petitioner relies on Kim alone for claims 8–10, 12, 13, 16–18, and 20; for the contentions in Ground 2, Petitioner relies on Kim and Marvit for claims 1, 3–7, 14, 15, 21, and 22; for the contentions in Ground 3, Petitioner relies on Kim and Hakala for claims 11 and 19; and for the contentions in Ground 4, Petitioner relies on Kim, Marvit, and Hakala for claim 2. Id. Patent Owner asserts that each of these contentions is deficient because Petitioner fails to show the prior art references, either alone or in combination, disclose each and every limitation recited in independent claims 1, 8, and 16. Prelim. Resp. 29–40, 45. In particular, Patent Owner asserts Petitioner does not show Kim discloses a stationary map as the background image and neither Marvit nor Hakala are alleged to cure this deficiency. Id. at 29–34, 36–38, 45. Patent Owner argues that Kim instead “teaches a different background image that is not stationary as the portable unit moves.” Id. at 33. For the following reasons, we find Patent Owner’s assertions have merit because Petitioner has not carried its burden of showing Kim discloses or suggests a background image of a stationary map, which is a necessary limitation in each of the challenged independent claims. Because this deficiency is dispositive and leads us to the conclusion that the Petition fails to demonstrate a reasonable likelihood Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’545 patent, our discussion below focuses on Petitioner’s contentions regarding Kim’s disclosure of a stationary map. 1. Overview of Kim Kim, titled “Portable device and method for reflecting movement of the same in a three-dimensional space in video data,” relates generally to a IPR2021-00200 Patent 8,620,545 B1 13 “video data processing device able to reflect movement of a portable device in video data.” Ex. 1004, code (54), 2. Kim states that the prior art was “insufficient for reflecting the various movements of a terminal in a three- dimensional or two-dimensional image accurately and in real time.” Id. at 2. The purpose of the disclosed technology, according to Kim, is to address this insufficiency by “provid[ing] a device and method for accurately reflecting, in real time, the position, attitude and movement of a portable device which processes a three-dimensional or two-dimensional game program or video data, in such video data.” Id. at 3. Kim describes using a portable device “equipped with an accelerometer and a gyroscope to detect changes in the velocity and angle of the portable device on the vertical, horizontal and distal axes, and the detected values are converted into position data and attitude data through sensor compensation and an inertial measurement calculator.” Ex. 1004, 3. The portable device includes a control unit that “converts the position data and attitude data of the portable device into vector data,” which may be used “to generate three-dimensional video data” or “to accurately reflect the movement or attitude of the portable device in a three-dimensional or 2- dimensional image.” Id. Kim describes the control unit as having, among other things, a central processing unit with an attitude data initialization means and a position data initialization means. Ex. 1004, 4. The attitude data initialization means “carries out (i) the establishment of a reference axis, wherein the direction of [the portable device] attitude data (roll, pitch and yaw) are matched to the actual x, y and z axes of the terminal, and offset correction values for each are configured; (ii) unit configuration, wherein IPR2021-00200 Patent 8,620,545 B1 14 data units and size are configured, and; (iii) direction configuration, wherein direction of rotation (clockwise or counterclockwise) is configured.” Id. The position data initialization means “sets a reference axis for position data and configures units (mm, cm, etc.) and direction (back to front, left to right, down to up, etc.).” Id. Using the coordinates and attitude data received from the portable device, Kim describes several conversion equations used by the control unit to reflect a corresponding movement of an object. Id. at 5–6. As an example, Kim describes an application of the disclosed technology in which the object is a map from a map viewing program or map searching program. Ex. 1004, 7–8. To begin, an image of a map is loaded into a first memory from a database, a portion of the image is displayed, and a point selected by a user upon startup is set as the present reference point with the reference coordinates at the center of the screen. Id. at 7, Fig. 9. Due to movement of the portable device, the image displayed on the screen is modified according to the respective attitude data using the conversion equations. Id. First, the conversion equation for converting the coordinates of each pixel of the map according to yaw (i.e., rotation) data is applied to establish a new x′ and y′ coordinate for the respective pixel and the resulting rotated map image is stored in a second memory space. Ex. 1004, 7, Fig. 10. “Next, the coordinates of the respective pixels are transformed according to the data for roll and pitch” using another conversion equation to find x′′ and y′′. Id. “Changes in roll and pitch cause the map image displayed on the screen to move horizontally in the x axis or y axis direction” and the “reference point for the new coordinates of the horizontally moved image IPR2021-00200 Patent 8,620,545 B1 15 becomes (x′′, y′′) = (0, 0).” Id. at 8, Fig. 12. As a result of this movement of the map image, parts of the image may become empty and the control unit may load additional map data from the database to fill in the empty areas. Id. at 8. Kim explains that “the step of horizontal movement using roll and pitch data and the step of rotating using yaw data may be performed in any order, and the process is repeated according to the image refresh time of the screen every 1/60 second, for example.” Id. 2. Whether Kim Discloses or Suggests a Stationary Map Each independent claim of the ’545 patent recites, “a background image of a stationary map.” Ex. 1001, 22:3 (claim 1), 22:50 (claim 8), 23:37 (claim 16). For claim 8, Petitioner contends that A1 (the full sized map image from which a portion B1 is displayed on a screen) in Figure 9 of Kim, reproduced below, shows this limitation. Pet. 24–25 (citing Ex. 1004, 4, 7, Figs. 2, 9–14; Ex. 1002 ¶¶ 82–84). IPR2021-00200 Patent 8,620,545 B1 16 Figure 9 illustrates an example of a map image that has been loaded into the memory of a portable unit from a database. Ex. 1004, 7. Petitioner reasons, Kim describes modifying/moving the displayed image B1 in response to movement of the PT (100). . . . Neither the loaded image nor the displayed image is moved using any buttons on the portable terminal (100). Therefore, the loaded map image A1 is “a background image of a stationary map stored” “in a memory.” Pet. 25 (citing Ex. 1004, 7–8; Ex. 1002 ¶ 84). Petitioner contends Figures 13a, 13b, 14a, and 14b in Kim, and the description thereof, show a user moving portable unit 100 along a known vector V to display a second location on the screen in the corresponding portion of “the loaded image A1, i.e., ‘the background image of the stationary map.’” Id. at 34–40 (citing Ex. 1004, 3, 7–8, Figs. 2, 9, 13a, 13b, 14a, 14b; Ex. 1002 ¶¶ 105–114). For independent claims 1 and 16, Petitioner also relies on the map image A1 in Figure 9 of Kim to disclose a stationary map as the background image. See id. at 49, 53–54, 57. Petitioner does not contend either Marvit or Hakala disclose a background image of a stationary map. See generally id. at 23– 40, 48–55, 57–77. Patent Owner contends “[t]he ’545 patent [S]pecification makes clear that the background image of a stationary map . . . ‘remains stationary,’ as the portable device is moved, to create the illusion that the display of the portable device is a slidable window onto this background image.” Prelim. Resp. 29 (citing Ex. 1001, 2:4–17, 2:47–57, 13:45–53, 17:11–31, Fig. 10b). According to Patent Owner, the Specification describes conventional techniques as moving the map while the portable unit remains stationary. Id. 29–30 (citing Ex. 1001, 16:54–17:3, Fig. 10a). Patent Owner argues that the “Petition does not explain how A1 is ‘stationary’” and that Kim discloses a IPR2021-00200 Patent 8,620,545 B1 17 technique that is akin to what was conventional because the map moves to reflect the movement of portable unit. See id. at 29–34. In particular, Patent Owner asserts “Kim’s specification makes clear that A1 does not remain ‘stationary’—A1 instead shifts, rotates, or distorts, as part of generating a new image to display on the portable terminal (“PT”)” and “Figures 9 through 12 illustrate this by showing how the background map changes as the portable terminal is rotated.” Prelim. Resp. 30 (citing Ex. 1004, 7–8, 13–15). Patent Owner compares Kim’s Figures 9 and 10, which show that A1 is rotated by motion input to create A2, as shown below: Id. at 31. Kim’s Figure 9 is a map image showing an example of Kim’s invention applied to a map program. Ex. 1004, 2. Kim’s Figure 10 is a map image showing an example of Kim’s invention applied to a map program, “wherein the map image has been rotated following rotation of the portable device.” Id. Patent Owner asserts that “[a]s is apparent, the entire map is shifting to rotate the field of view shown in the display image (B2), rather than staying stationary. The blank corners in Figure 10 in A2 prove this, showing IPR2021-00200 Patent 8,620,545 B1 18 where the map started in its original orientation.” Prelim. Resp. 31. Patent Owner points to Kim’s description that “A1 is ‘modified according to the respective data’ and transformed into A2—a new background image that is stored in a separate memory—by converting ‘the coordinates of each pixel according to yaw data’ . . . .” Id. (citing Ex. 1004, 7). Patent Owner contends that Kim teaches that A2 suffers “distortion of pixels” due to rotation and is not used in further rotation transformations. Id. at 31–32. Patent Owner argues that Kim’s portable terminal “displays a portion (B2) of this new image (A2), not a new portion of the original background image (A1).” Id. at 32. Additionally, Patent Owner points to Kim’s description of Figure 12 as a “horizontally shifted image” of A2. Prelim. Resp. 32. Patent Owner compares Figures 10 and 12 below: Id. Kim’s Figure 10 is a map image showing an example of Kim’s invention applied to a map program, “wherein the map image has been rotated following rotation of the portable device.” Ex. 1004, 2. Kim’s Figure 12 is a map imagine showing an example of Kim’s invention applied to a map program, “which shows a map image in a case wherein the portable device IPR2021-00200 Patent 8,620,545 B1 19 has been moved in the horizontal direction.” Id. Patent Owner asserts that in this comparison, map A3 moves (shifting left) to change what is shown on display B3. Prelim. Resp. 32. Patent Owner explains that the shift from A2 to A3 “is effected by taking ‘the coordinates of the respective pixels’ which are ‘transformed according to the data for roll and pitch.’” Id. (citing Ex. 1004, 7). Patent Owner contends that “Kim rotates or shifts the original map (A1) to create new images (A2 and A3)” and accomplishes this “by recalculating every single pixel in the underlying image based on the type of motion input it receives.” Prelim. Resp. 32–33. Patent Owner thus asserts that “Kim teaches a different background image that is not stationary as the portable unit moves” and, therefore, does not disclose a “stationary map” as recited in claim 1. Id. at 33. Patent Owner identifies a deficiency in Petitioner’s argument and evidence. Specifically, Petitioner relies upon A1 as disclosing the recited “stationary map,” but fails to demonstrate that the map is stationary. Kim teaches that after the portable terminal is moved, A1 is no longer the background image for the display. Rather, the image displayed on the screen is modified according to Equation 6 disclosed by Kim. Ex. 1004, 7. In particular, with reference to Figure 10, Kim explains that a rotation transformation occurs creating the image shown as A2 and the newly converted image A2 is saved in a different domain of the memory space (referred to as “second memory”). Id. Thereafter, Kim does not use this new image A2 in new rotation transformations because the transformation from A1 to A2 “caused distortion of pixels.” Id. Kim discloses a similar process with reference to Figure 12, where, after transformation in IPR2021-00200 Patent 8,620,545 B1 20 accordance with Kim’s Equation 7, Kim uses image A3, also saved in second memory. Id. at 7–8. These transformations are identifiable when comparing Kim’s Figures 9, 10, and 12, reproduced below: IPR2021-00200 Patent 8,620,545 B1 21 Kim’s Figure 9 “is a map image showing an example wherein [Kim’s] invention is applied to a map program, wherein the map image has been initialized.” Ex. 1004, 2. Kim’s Figure 10 “is a map image showing an example wherein [Kim’s] invention is applied to a map program, wherein the map image has been rotated following rotation of the portable device.” Id. And, Kim’s Figure 12 “is an example wherein [Kim’s] invention has been applied to a map program which shows a map image in a case wherein the portable device has been moved in the horizontal direction.” Id. When Kim’s portable terminal is moved, it is apparent that the background image A1 also is moved, creating A2 and, subsequently, A3. Our understanding is consistent with Kim’s description of the disclosed processing techniques wherein “changes in roll and pitch cause the map image displayed on the screen to move horizontally in the x axis or y axis direction.” Ex. 1004, 8 (emphasis added). Kim explains that, “[u]sing the amount of change in position (a, b, c) from current reference coordinates as received from [the portable unit], the current IPR2021-00200 Patent 8,620,545 B1 22 coordinates x’, y’ and z’ in a case wherein an object has moved by a, b and c in the respective directions from its previous coordinates x, y and z can be calculated.” Id. at 5. In the context of the exemplary map viewing or searching program, Kim treats the map as the object that is being moved to the coordinates x’, y’ and z’ to reflect the change in position of the portable unit by a, b, and c. See id. at 7–8, Figs. 9, 10, 12. Regarding Figures 13a, 13b, 14a, and 14b, which Petitioner references in the Petition, Kim suggests that these illustrations are just another implementation of the above techniques discussed in the context of Figures 9, 10, and 12. Because the background image A1 moves, Petitioner has not shown sufficiently5 that Kim’s image A1 is a stationary map,6 as recited by independent claims 1, 8, and 16. As noted above, Petitioner does not rely on Marvit or Hakala to cure this deficiency in any of the grounds. Therefore, 5 Dr. Chatterjee’s testimony also does not explain why one of ordinary skill in the art would have understood Kim’s image A1 to disclose a “stationary background image” when Kim shows that image A1 moves when the portable terminal is moved. See Ex. 1002 ¶¶ 79–112. 6 As indicated previously, the parties agree that the claim terms should be construed according to their plain and ordinary meaning. See supra § II. We note that the Specification of the ’545 patent repeatedly refers to the background map/image as “stationary.” See, e.g., Ex. 1001, 2:3–4 (“a background map that remains stationary”), 2:17–20 (“The handheld or portable unit is like a Sliding Window which provides a view of this image of a stationary map lying in the background of the portable unit.”), 2:30 (“stationary background image”), 16:53–17:31 (contrasting Figure 10b, showing “the innovative embodiment of the device movement technique,” in which “map 10-3 remains stationary,” with Figure 10a, in which “the map is moved”), Figs. 10a, 10b. A stationary background image is a critical aspect of what the ’545 patent refers to as “innovative.” See, e.g., id. at Fig. 10b (text at the bottom of the figure referring to “Innovative Device Movement”). IPR2021-00200 Patent 8,620,545 B1 23 Petitioner has not shown sufficiently that Kim, either alone or in combination with Marvit and/or Hakala, would have rendered the subject matter of claims 1–22 obvious to one of ordinary skill in the art at the time of the invention. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’545 patent is unpatentable. V. 35 U.S.C. § 314(a) Patent Owner contends that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a). Prelim. Resp. 3–12. Petitioner opposes Patent Owner’s argument. See Paper 12 (Decision Denying Petitioner’s Request to File Preliminary Replies to Patent Owner’s Preliminary Responses), 3 (noting that Petitioner requested authorization to file a preliminary reply to respond to Patent Owner’s argument regarding discretionary denial under § 314(a)). Because we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’545 patent is unpatentable, we need not reach the issue of discretionary denial pursuant to § 314(a). VI. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the Challenged Claims of the ’545 patent; and FURTHER ORDERED that no inter partes review is instituted. IPR2021-00200 Patent 8,620,545 B1 24 For PETITIONER: Sanjeet K. Dutta Suhrid Wadekar Naomi L. Birbach GOODWIN PROCTER LLP sdutta@goodwinlaw.com swadekar@goodwinlaw.com nbirbach@goodwinlaw.com For PATENT OWNER: Micah Rappazzo Ryan J. Singer STROOCK & STROOCK & LAVAN LLP mrappazzo@stroock.com rsinger@stroock.com Copy with citationCopy as parenthetical citation