Thaddeus Gabara

Patent Trials and Appeals Board

May 25, 2021

IPR2021-00200 (P.T.A.B. May. 25, 2021)

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