Unified Patents Inc. v. Silver State Intellectual Technologies, LLC, IPR2017-01198 (PTAB March 31, 2017)

Filed on behalf of Unified Patents Inc.
By: Ashraf A. Fawzy, Reg. 67,914

Jonathan Stroud, Reg. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, DC, 20009
Tel: (202) 871-0110
Email: afawzy@unifiedpatents.com
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________
UNIFIED PATENTS INC.

Petitioner
v.
SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.

Patent Owner
____________________________
Case IPR2017-01198
Patent 8,538,498
____________________________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,538,498

Petition for Inter Partes Review, IPR2017-01198
U.S. Patent No. 8,538,498
TABLE OF CONTENTS
Page
I. INTRODUCTION .......................................................................................... 1
II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8 .................... 2
III. PAYMENT OF FEES UNDER C.F.R. 42.15(a) AND 42.103 ................. 3
IV. GROUNDS FOR STANDING ....................................................................... 3
V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED......... 3
A. Claims for Which Review Is Requested .............................................. 3
B. Statutory Grounds of Challenge ........................................................... 3
VI. THE 498 PATENT ........................................................................................ 4
A. Background & Overview of the 498 Patent ........................................ 4
B. Prosecution History .............................................................................. 5
VII. CLAIM CONSTRUCTION ........................................................................... 7
A. Selected Status .................................................................................. 8
B. Means-Plus-Function Claim Terms ................................................... 10
VIII. DETAILED EXPLANATION OF UNPATENTABILITY GROUNDS ..... 13
A. Ground 1: Maekawa and Dickson Render Claims 14, 716, and 19
24 Obvious ......................................................................................... 13
1. Claim 1 .................................................................................... 13
2. Claim 2 .................................................................................... 27
3. Claim 3 .................................................................................... 30
4. Claim 4 .................................................................................... 30
5. Claim 7 .................................................................................... 31
6. Claim 8 .................................................................................... 33
7. Claim 9 .................................................................................... 34
8. Claim 10 .................................................................................. 35
9. Claim 11 .................................................................................. 35
10. Claim 12 .................................................................................. 36
11. Claim 13 .................................................................................. 36
12. Claim 14 .................................................................................. 48
13. Claim 15 .................................................................................. 49
i
14. Claim 16 .................................................................................. 50

15. Claim 19 .................................................................................. 50
16. Claim 20 .................................................................................. 51
17. Claim 21 .................................................................................. 51
18. Claim 22 .................................................................................. 51
19. Claim 23 .................................................................................. 52
20. Claim 24 .................................................................................. 52
B. Ground 2: Maekawa In View Of Dickson and Spiegel Render Claims
5, 6, 17, and 18 Obvious ..................................................................... 52
1. Claims 5 and 17 ...................................................................... 52
2. Claims 6 and 18 ...................................................................... 56
IX. CONCLUSION ............................................................................................ 60
ii
TABLE OF AUTHORITIES
Page(s)
Cases
Ex parte Erol,
No. 2011-001143, 2013 WL 1341107 (PTAB Mar. 11, 2013) ......................... 11
Ex parte Lakkala,
No. 2011-001526, 2013 WL 1341108 (PTAB Mar. 11, 2013) ......................... 11
Ex parte Smith,
No. 2012-007631, 2013 WL 1341109 (PTAB Mar. 12, 2013) ......................... 12
Fotolia LLC v. Uniloc USA,
IPR2015-00190, Paper No. 10 (May 22, 2015) ................................................. 12
KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398 (2007).................................................................................... passim
Nintendo of America Inc. v. Motion Games, LLC,
IPR2014-00164, Paper No. 12 (May 19, 2014) ........................................... 11, 12
Personalized Media Commcns, LLC v. ITC,
161 F.3d 696 (Fed. Cir. 1998) ........................................................................... 11
Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App. LEXIS
10082 (Fed. Cir. June 16, 2015) .................................................................. 11, 12
Statutes
35 U.S.C. 102(e) ................................................................................................ 3, 4
35 U.S.C. 103(a) .................................................................................................... 4
35 U.S.C. 112 ................................................................................................. 10, 12
Regulations
37 C.F.R. 42.8 ........................................................................................................ 2
37 C.F.R. 42.15 ...................................................................................................... 3
37 C.F.R. 42.100(b) ............................................................................................... 7
37 C.F.R. 42.103 .................................................................................................... 3
37 C.F.R. 42.104(a)................................................................................................ 3
iii
List of Exhibits
1001 U.S. Patent No. 8,538,498 (the 498 patent)

1002 File History of the 498 Patent
1003 Assignment of the 498 Patent
1004 U.S. Patent No. 6,040,824 to Maekawa et al. (Maekawa)
1005 U.S. Patent No. 6,574,603 to Dickson et al. (Dickson)
1006 U.S. Patent No. 6,629,079 to Spiegel et al. (Spiegel)
1007 Declaration of William R. Michalson, Ph.D. (Aug. 14, 2015)
1008 R.L. French, Automobile navigation: Where is it going?,
IEEE Aerospace and Electronic Systems Magazine, pp. 6-12,
May 1987
1009 White, Car Navigation Systems, Geographical Information
Systems: Principles and Applications, D.J. Maguire, et. al., eds.,
Vol. 2, pp. 115-125, Longman Group, 1991
1010 TravTek Evaluation Rental and Local User Study, Pub. No.
FHWA-RD-96-028, March 1996
1011 Green, Potential Safety Impacts of Automotive Navigation
Systems, Proceedings of Automotive Land Navigation
Conference, June 18, 1997
1012 Second Declaration of William R. Michalson, Ph.D. (March 31,
2017)
1013 Petitioners Voluntary Interrogatory Responses
iv
I. INTRODUCTION
Unified Patents Inc. (Petitioner) requests inter partes review of claims 1-24
of U.S. Patent No. 8,538,498 (the 498 patent) (Ex. 1001) assigned on its face to
Silver State Intellectual Technologies, Inc. (Patent Owner).1 This Petition shows
that there is a reasonable likelihood that Petitioner will prevail on claims 1-24 of the
498 patent based on prior art identified herein. This Petition also shows by a
preponderance of the evidence that the prior art renders obvious claims 1-24 of the
498 patent. Claims 1-24 of the 498 patent should be found unpatentable and
cancelled.
The 498 patent was also the subject of an inter partes review petition filed
on August 17, 2015: Google Inc. v. Silver State Intellectual Technologies, Inc.,
IPR2015-01747. Prior to a decision on institution, the parties filed a joint motion to
terminate in view of settlement, which was granted. This petition is substantively
similar to that earlier-filed petition. Further, this petition relies on a second
declaration from Dr. William R. Michalson, Ph.D. (Ex. 1012) that reaffirms and
swears that he supports his earlier-filed declaration (Ex. 1007) in IPR2015-01747.
1
Patent Owner is also identified as the assignee of the 498 patent. (Ex. 1003.)
1
II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8
Real Party-in-Interest: Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies
that Unified Patents Inc. is the real party-in-interest, and further certifies that no other
party exercised control or could exercise control over Petitioners participation in
this proceeding, the filing of this petition, or the conduct of any ensuing trial. In this
regard, Petitioner has submitted voluntary discovery. (Ex. 1013.)
Related Matters: The 498 patent has been asserted against Google Inc.,
Motorola Mobility LLC, and Waze, Inc. in: Silver State Intellectual Technologies,
Inc. v. Google Inc. et al., Case No.: 2:14-cv-00662 (D. Nev.) (filed Apr. 30, 2014).
That case was terminated on October 2, 2015.
As noted above, the 498 patent was also the subject of an inter partes review
petition filed by Google Inc. on August 17, 2015: Google Inc. v. Silver State
Intellectual Technologies, Inc., IPR2015-01747. Prior to a decision on institution,
the parties filed a joint motion to terminate in view of settlement, which was granted.
Lead and Back-Up Counsel and Service Information: Lead counsel is Ashraf
Fawzy (Reg. 67,914) and backup counsel is Jonathan Stroud (Reg. 72,518). Service
information is Unified Patents Inc., 1875 Connecticut Ave. NW, Floor 10,
Washington, D.C. 20009, Telephone: 202-871-0110, E-mail:
afawzy@unifiedpatents.com and jonathan@unifiedpatents.com. Petitioner consents
to electronic service.
2
III. PAYMENT OF FEES UNDER C.F.R. 42.15(a) AND 42.103
Petitioner submits the required fees with this Petition. Please charge any
additional fees required during this proceeding to Deposit Account No. 50-6990.
IV. GROUNDS FOR STANDING
Petitioner certifies that, under 37 C.F.R. 42.104(a), the 498 patent is
available for inter partes review, and that Petitioner is not barred or estopped from
requesting inter partes review of the 498 patent on the grounds identified.
V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
A. Claims for Which Review Is Requested
Petitioner respectfully requests review of claims 1-24 of the 498 patent, and
cancellation of these claims as unpatentable.
B. Statutory Grounds of Challenge
Claims 1-24 should be cancelled as unpatentable in view of the following prior
art2:
Reference 1: U.S. Patent No. 6,040,824 to Maekawa et al. (Maekawa) (Ex.
1004) was filed on June 30, 1997, and is prior art to the 498 patent at least under
pre-AIA 35 U.S.C. 102(e); Reference 2: U.S. Patent No. 6,574,603 to Dickson et
al. (Dickson) (Ex. 1005) was filed on July 21, 1998, and is prior art to the 498
2
For purposes of this Petition, Petitioner has assumed that the 498 patent is entitled
to a priority date of December 23, 1998.
3
patent at least under pre-AIA 35 U.S.C. 102(e); and Reference 3: U.S. Patent No.
6,629,079 to Spiegel et al. (Spiegel) (Ex. 1006) was filed on June 25, 1998, and is
prior art to the 498 patent at least under pre-AIA 35 U.S.C. 102(e).
Claims 1-24 of the 498 patent should be cancelled as unpatentable on the
following grounds:
Ground 1: Claims 1-4, 7-16, and 19-24 are unpatentable under 35 U.S.C.
103(a) in view of Maekawa in view of Dickson; and Ground 2: Claims 5, 6, 17, and
18 are unpatentable under 35 U.S.C. 103(a) based on Maekawa in view of Dickson
and Spiegel.
VI. THE 498 PATENT
A. Background & Overview of the 498 Patent
The 498 patent issued from U.S. Application No. 11/445,685 (the 685
application) and is directed to a technique for communicating information,
including advertising information, with automobiles. (Ex. 1001 at 1:23-25.)
The 498 patent discloses an information and control system for use in a
vehicle capable of communicating with remote servers through a communications
network. (Id. at 3:57-62, Fig. 1.) The system includes a user interface having a
display that presents several options on a main directory page, including an option
to view services or product providers (e.g., restaurants, gas stations, department
stores) within a selected distance of the vehicles current location. (Id. at 10:56-60,
4
13:31-47, Fig. 6.) Upon selection of, for example, the restaurant option, icons (also
called tags) representing location of restaurants around the vehicles current
location are displayed. (Id. at 13:48-14:5, Fig. 7.) Further information about a
particular restaurant is displayed when the user selects a corresponding tag. (Id. at
15:11-14, 15:48-52, Fig. 9.) For example, the restaurants business hours and phone
number are displayed along with options for obtaining directions to the restaurant
(NAVIGATE) and the restaurant menu (RESTAURANT MENU). (Id. at 16:3-
6, 16:15-17, 16:30-35, Fig. 9.) The user may select items from the restaurant menu
and place a corresponding order by selecting an ORDER key. (Id. at 16:28-41,
Fig. 10.) (See also Ex. 1007 at 16-21 and 22-26 (discussing Exs. 1008, 1009,
1010, 1011).)
B. Prosecution History
During prosecution, and in response to a number of Office Actions, Patent
Owner made several changes to the claims and presented arguments in attempt to
distinguish the prior art. (See generally Ex. 1002.) One of the references relied upon
in this Petition (Spiegel, Ex. 1006) was not considered by the Examiner during
prosecution. (See generally Ex. 1002; see also id. at Ex. 1001 at References Cited.)
The primary reference (Maekawa, Ex. 1004) for the proposed grounds in this petition
was listed by Patent Owner in an information disclosure statement, but Patent Owner
did not provide any discussion regarding the relevance of this reference. (See Ex.
5
1002 at 770.) Nor does the file history record of the 498 patent show any substantive
consideration of the reference by the examiner during prosecution, as the reference
was never discussed in any office action or office action response. (See generally
Ex. 1002; id. at 756). The third reference relied upon in this petition (Dickson, Ex.
1005), is not listed on the face of the 498 patent, but was mentioned in the
Examiners reasons for allowance. (See Ex. 1002 at 626-627.) However, in allowing
the 685 application, the Examiner merely indicated that he believed that Dickson
does not, by itself, explicitly teach a method including each and every limitation of
the allowed independent claim. (See id., showing that the Examiner parroted all
limitations of allowed claim 61.)
Here, Petitioner presents Maekawa and Dickson in a new light never
considered by the Office. For instance, Part VIII below explains how Maekawa
discloses many of the features recited in the challenged claims of the 498 patent,
which was never discussed by Patent Owner during prosecution. Further, unlike
what the Examiner suggested in the Reasons for Allowance, Petitioner does not
allege that Dickson discloses each and every limitation of the independent claims.
Instead, Part VIII also explains how Maekawa in combination with Dickson
discloses the features recited in most of the challenged claims of the 498 patent, and
how, Maekawa in combination with Dickson and Spiegel, discloses the features of
the remaining claims. Indeed, Part VIII explains how Dickson discloses features that
6
are consistent with the Examiners view that Dickson discloses vehicular means for
placing orders with product/services providers based on location sensing instruments
in the vehicle. (See id. at 626.) Moreover, Petitioner presents testimony from Dr.
William Michalson, who confirms that the relevant teachings of Maekawa and
Dickson disclose what is claimed by the 498 patent. (See Ex. 1007.) As such, the
identification of Maekawa and Dickson during prosecution should not preclude the
Office from considering and adopting the grounds in this petition that involve these
references.
VII. CLAIM CONSTRUCTION
A claim subject to inter partes review receives the broadest reasonable
construction in light of the specification of the patent in which it appears. 37 C.F.R.
42.100(b). Throughout this Petition, as required by the rules governing it,
Petitioner applies the broadest reasonable interpretation (BRI) of claim terms
appropriate for these proceedings, including claim terms for which a claim
construction is not explicitly discussed. Claim constructions appropriate for these
proceedings may be different than claim constructions appropriate in a federal
district court. Thus, claim constructions relied upon in this Petition do not
necessarily reflect the claim constructions that Petitioner believes should be adopted
by a district court. Any term not construed below should be interpreted in accordance
7
with its plain and ordinary meaning under the broadest reasonable interpretation.
Petitioner applies this understanding in its analysis of the claims of the 498 patent.
A. Selected Status
Claims 5 and 17 recite that the descriptions of the products or services
previously ordered are indicated in a selected status.3 (Ex. 1001 at 19:4-44, 20:34-
36, emphasis added.) For purposes of this proceeding, a selected status should be
construed as a representation reflecting a previous order of a product or service.
This understanding is consistent with the claims and specification of the 498 patent.
The plain language of claims 5 and 17 requires that the descriptions of
products or services previously ordered are presented in a certain manner that
indicates that the products or services were previously ordered. That is, the status or
representation of the descriptions of products or services is selected such that the
status or representation indicates that the product or service was previously ordered.
Thus, a representation reflecting a previous order of a product or service is
3
The phrase, the descriptions of the products or services previously ordered
recited in claims 5 and 17 lacks antecedent basis. Therefore, for purposes of this
proceeding, Petitioner interprets this phrase as the descriptions including
descriptions of products or services previously ordered.
8
consistent with the plain language of claims 5 and 17, and the understanding of a
person of ordinary skill in the art.4
The specification of the 498 patent is also consistent with this understanding.
For instance, it explains that any food and beverage ordered from an exemplary
restaurant is stored in a specified memory space. (Id. at 16:42-46.) The
specification goes on to further explain that:
In the event that the user decides to revisit a restaurant, and

thus re-select the associated tag, when the user comes
upon selectable items on the associated web pages which
were previously selected, for example, those food and
beverages on the RESTAURANT MENU page of FIG. 10
which were previously ordered, such items are also
highlighted in a distinguishable color. Again, such a
color highlight advantageously triggers the users memory
about the selected items, and thereby helps him/her to
decide whether or not to reselect the same items.
(Id. at 16:63-17:4, emphasis added.)
4
A person of ordinary skill in the art would have been an engineer having at least a
bachelors degree in electrical engineering, computer science, or a degree in a related
field, with approximately two or more years of experience in the design and
implementation of navigation systems and/or routing. (Ex. 1007 at 14-15.)
9
In this example, a previously ordered product or service is highlighted in a
distinguishable color, which is a representation indicating that the product or
service was previously ordered. Thus, interpreting selected status as noted above
is consistent with the specifications description of how the alleged invention
indicates that a product or service is a previously ordered product or service, and
how the term is used in the claims. This understanding is also consistent with how
one of ordinary skill in the art would have understood selected status in the context
of the 498 patent. (See also Ex. 1007 at 14, 15, 27, 28.) Petitioner applies this
understanding in its analysis of the claims and the prior art identified in this Petition.
B. Means-Plus-Function Claim Terms
The 498 patent includes means-plus-function claim terms. Claim 13 recites
a device for sensing a location for the vehicle. (Ex. 1001 at 20:9.) Claim 13 also
recites a processor configured to provide for display on the display element of the
indication of the selectable option to order, through a communications network, one
or more of the plurality of products or services based on the information. (Id. at
20:22-26.) For purposes of this proceeding, Petitioner submits that both a device
for . . . and processor configured to . . . terms should be interpreted as means-
plus-function terms.
When a claim term lacks the word means, the presumption [that 112,
para. 6 does not apply] can be overcome and 112, para. 6 will apply if the
10
challenger demonstrates that the claim term fails to recite sufficiently definite
structure or else recites function without reciting sufficient structure for performing
that function. Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App.
LEXIS 10082 at *16 (Fed. Cir. June 16, 2015) (citing Watts v. XL Sys., 232 F.3d
877, 880 (Fed. Cir. 2000)). Claim 13 does not define any structure associated with a
device or its function of sensing a location for the vehicle. Similarly, claim 13
does not define structure associated with a processor or its function of provid[ing]
for display on the display element of the indication of the selectable option to order,
through a communications network, one or more of the plurality of products or
services based on the information. Moreover, a device or processor is a generic
term that does not in itself suggest any particular structure. See, e.g., Personalized
Media Commcns, LLC v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (stating that a
device is a generic structural term like means or element); see also Nintendo
of America Inc. v. Motion Games, LLC, IPR2014-00164, Paper No. 12 at 6 (May 19,
2014) (finding a processing means limitation to invoke means-plus-function).
Indeed, in March 2013, a five-judge PTAB panel issued three decisions, all holding
that processor invokes means-plus-function because processor fails to connote
a sufficiently definite structure. Ex parte Erol, No. 2011-001143, 2013 WL 1341107,
at *8-9 (PTAB Mar. 11, 2013); Ex parte Lakkala, No. 2011-001526, 2013 WL
1341108, at * 6-7 (PTAB Mar. 11, 2013); Ex parte Smith, No. 2012-007631, 2013
11
WL 1341109, at *7-8 (PTAB Mar. 12, 2013). Therefore, a device for and a
processor configured to . . . , as recited in claim 13, should be interpreted under
112, para. 6. That the processor limitation uses the term configured to instead
of for to link the means with the function should not result in a different
conclusion. See, e.g., Fotolia LLC v. Uniloc USA, IPR2015-00190, Paper No. 10 at
8-9 (May 22, 2015) (acknowledging that a module configured to may invoke
112, para. 6).
Construing a means-plus-function claim term requires that the function recited
in the claim term be first identified, and then the written description of the
specification must be consulted to identify the corresponding structure that performs
the identified function and equivalents thereof. See Williamson, 2015 U.S. App.
LEXIS 10082 at *12, *20. For a computer-implemented means-plus-function claim
limitation, the specification must disclose a specific algorithm used by the computer
to perform the recited function, unless the function is a generic function, such as
processing, receiving, and storing, and can be performed by any general-
purpose computer without special programming. Nintendo of America Inc.,
IPR2014-00164, Paper No. 12 at 6-7.
The identified function of the device is sensing a location of the vehicle.
(Ex. 1001 at 20:9.) To the extent the 498 patent discloses structure for the recited
function, it discloses navigation subsystem 141 in FIG. 1 receives signals from a
12
constellation of satellites which is part of the U.S. government's GPS. (Id. at 12:13-
15.) Thus, Petitioner submits that the corresponding structure for the identified
function of sensing a location of the vehicle is a GPS receiver, or equivalents
thereof. (See also Ex. 1007 at 29.)
The identified function of the processor in claim 13 is provid[ing] for
display on the display element of the indication of the selectable option to order,
services based on the information. (Id. at 20:22-26.) To the extent the 498 patent
discloses structure for the recited function, it discloses that a processor 103 controls
the graphics on, and is connected to, display 405. (Id. at 10:56-60.) Thus, Petitioner
submits that the corresponding structure for the identified function of provid[ing]
for display on the display element of the indication of the selectable option to order,
services based on the information, is a processor, or equivalents thereof. (See also
Ex. 1007 at 29.)
VIII. DETAILED EXPLANATION OF UNPATENTABILITY GROUNDS
A. Ground 1: Maekawa and Dickson Render Claims 14, 716, and

1924 Obvious
1. Claim 1
a. A method for use in a system in a vehicle, the vehicle including a

display element, the method comprising:
13
To the extent the preamble is limiting, Maekawa discloses a method for use
in a system in a vehicle, the vehicle including a display element. For example,
Maekawa discloses a method with respect to FIG. 4, which is a flowchart of the
overall operation of the navigation system of FIG. 1. (Ex. 1004 at 2:52-53.) The
navigation system of FIG. 1 is disclosed as a vehicular navigation system, which is
a system in a vehicle. (Id. at 3:48-49.) Maekawa also discloses that the vehicular
navigation system includes a display 12 . . . mounted in the instrument panel of the
vehicle . . . . (Id. at 4:34-35, Fig. 1.) The display 12 is a display element, which
is sometimes referred to by Maekawa as a display unit. (See, e.g., id. at 6:64, 10:9-
15; see also id. at Figs. 5A-9B, analysis and citations below for the remaining
elements of this claim; Ex. 1007 at 31-38, 46.)
b. sensing a location of the vehicle;
Maekawa discloses this limitation. For example, Maekawa discloses that the
disclosed method of Fig. 4 includes a step S2 in which the present position of the
vehicle is detected by a present position detecting unit 2 of the vehicular navigation
system. (Id. at 6:51-54; see also id. at 3:50-53, vehicular navigation system
includes . . . a present position detecting unit 2 for detecting information on the
present position of a vehicle.) (See also id. at Fig. 2, 4:45-53, 6:44-54, Fig. 4; Ex.
1007 at 46.)
14
c. showing, on the display element, at least one indicator indicating

a location of at least one product or service provider in relation to
the sensed location of the vehicle;
Maekawa discloses this limitation. For example, Maekawa discloses
displaying location of landmarks (such as restaurants and convenience stores, which
are at least one product or service provider) around the current position of the
vehicle. (See, e.g., Ex. 1004 at Fig. 6A (excerpted below); see also Ex. 1007 at
46.) Maekawa discloses that in step S2 of the flowchart of Fig. 4, a peripheral map
around the present position is displayed on the display unit, which as noted above
is a display element. (Ex. 1004 at 6:51-54.) The displayed road map around the
present position marker in the display unit provided with the touch panel, includes
a peripheral search touch switch for initiating a search for the facilities around the
present position . . . . (Id. at 6:63-7:2.) Maekawa explains:
If the peripheral search switch is touched as illustrated in

FIG.5B, the screen of FIG. 5C is displayed wherein the
lower portion of the screen shows facility selecting
switches such as switches for selecting a convenience
store, a parking lot or garage, a gas station, a family
restaurant, a bank and so on. For example if the switch
convenience store is selected by touching as shown in FIG.
5D, the screen of FIG. 6A is displayed to show landmarks
of convenience stores at their locations surrounding the
present position.
15
(Id. at 7:9-16.) As described in the above passage, Figures 5A-D and 6A, below,
display the location of product or service providers near the vehicles sensed location
on a map display in the vehicle:
(Id. at Figs. 5A and 5B.)
(Id. at Figs. 5C and 5D.)
16
(Id. at Fig. 6A.)
As shown in Fig. 6A above, indicators of landmarks such as restaurants and
convenience stores (at least one product or service provider) are displayed on the
display unit and labelled with letters, such as D, F, G, etc. (Id. at 7:25-27, an
F mart as indicated by the landmark F, is displayed in the road map). These
indicators indicate a location of the landmarks in relation to the current position of
the vehicle. (Id. at 7:14-16, FIG. 6A is displayed to show landmarks of convenience
stores at their locations surrounding the present position.) Indeed, the way
Maekawa discloses this feature is similar to that described in the 498 patent.
(Compare, Fig. 6A of Ex. 1004, with Fig. 7 of Ex. 1001.) (See also Ex. 1007 at
46.)
17
d. showing, on the display element, information concerning a

plurality of specific products or services which may be purchased
from the provider indicated by the displayed indicator, in response
to a user selection of the indicator; and;
Maekawa in combination with Dickson discloses this limitation. For example,
Maekawa discloses that when the displayed indicator of a landmark of a service
provider (e.g., a restaurant) is selected by the user, further information (e.g., business
hours, the business content and/or the telephone number) about the service provider
is displayed. (Ex. 1004 at 7:23-45, explaining that when a landmark is touched as
shown in the Fig. 6B, the screen of FIG. 7, may display the business hours, the
business content and/or the telephone number of the facility indicated by the
landmark F.) An example of display of such additional information in response to
a user selection of the landmark indicators is shown in Fig. 13B, where a landmark
indicated by Y is selected. (Id. at 9:52-58.)
18
(Id. at Fig. 13B.) Thus, Maekawa discloses showing, on the display unit,
information (e.g., the business hours, telephone number) concerning the service or
product provider in response to a user selection of the indicator of the service
provider. (See also Ex. 1007 at 46.)
While Maekawa does not explicitly disclose that the displayed information
concerns a plurality of specific products or services which may be purchased from
the provider, as required by claim 1, it would have been obvious to one of ordinary
skill in the art at the time of the alleged invention for the 498 patent to implement
such a feature in view of Dickson. Specifically, in view of Dickson, a skilled artisan
would have been motivated to modify Maekawas information display (e.g., Fig.
13B) for a restaurant landmark to add a restaurant menu, which lists a plurality of
items that may be purchased from the restaurant and is information concerning a
plurality of specific products or services which may be purchased from the
19
provider. In the modified Maekawa system, the restaurant menu would have been
provided along with the other information displayed in Fig. 13B when an indicator
of a restaurant provider is selected in Fig. 6B or 13A in Maekawa. (See, e.g., Ex.
1007 at 46, 47.)
Dickson generally relates to an in-vehicle interface allowing occupants of the
vehicle to place orders from within the vehicle for items provided by a . . . restaurant
. . . . Occupants in the vehicle are provided a menu on a display of an in-vehicle
interface. The occupants may select any number of desired items to form an
occupant order. The occupant order is stored and/or transmitted directly or
indirectly to the . . . restaurant for processing. (Ex. 1005 at Abstract, emphases
added.) To accomplish these objectives, Dickson discloses:
[A] vehicle . . . equipped with an intelligent vehicle

controller (IVC) 1100 providing interactive multimedia
access for the driver and passengers of the vehicle. . . . The
primary purpose of the IVC is to provide an interactive
communication medium allowing customers to interface
remote systems to 1) display menu information, 2)
receive advertising, merchandising and possibly menu
indicia and, in return, 3) order and provide payment for
selected items from within the vehicle.
(Id. at 9:31-43, emphases added.) Dickson explains that [o]nce the occupant views
the menu, the IVC will receive occupant selections . . . and store these selections in
20
the IVC as an order and [d]epending on the location of the vehicle and whether or
not the vehicle is within communication range with the corresponding
communication electronics (. . . satellite, cellular or other), the information may be
automatically transmitted or transmitted upon receiving an occupant input to that
effect. (Id. at 18:41-48.) (See also id. at 27:45-60 (Claim 1); Ex. 1007 at 39-42,
47.)
A person of ordinary skill in the art at the time of the alleged invention of
the 498 patent would have found it obvious to add an in-vehicle ordering option
and a restaurant menu to the vehicle dashboard display disclosed in Maekawa for
several reasons. (See Ex. 1007 at 48-53.) First, such a skilled person would have
been motivated to modify Maekawa in such a way given that Dickson discloses
that by providing an in-vehicle ordering system, congestion and wait times at the
restaurant (especially, a drive thru or fast food pick up restaurant) can be reduced
because customers can place their orders from their vehicles before arriving at the
restaurant. (See Ex. 1005 at 1:53-58.) Therefore, customer orders could be ready
for pickup by the time the customer arrives at the restaurant.
Second, in case of a drive thru restaurant, without Dicksons system, only
one person (typically, the driver) could see and interact with the menu displayed
at the drive thru entrance. (See id. at 1:48-53.) Such a skilled person would have
realized that with a menu displayed on the vehicles dashboard as in Dickson,
21
multiple persons in the vehicle would have been able to see and interact with the
menu and select desired items, and place orders in advance of reaching the
restaurant. (See id.)
Moreover, such a skilled person would have been able to make the
modification with predictable success at the time of the alleged invention of the
498 patent. (Ex. 1007 at 52.) For example, a person of ordinary skill in the art
would have realized that obtaining and storing information pertaining to restaurant
menus in association with Maekawas restaurant landmarks so that the menus
could be retrieved when the landmark was selected would have been
straightforward and within the realm of knowledge of such a person. (Id.) Indeed,
such a person would have realized that Maekawa provides in one embodiment a
CD-ROM in the memory unit that stores all the data necessary for the navigation
system such as files of map data, search data, guide data, map matching data,
destination data and registered point data. (Ex. 1004 at 4:60-5:6; Ex. 1007 at
52.) Hence, in the modified systems and processes of Maekawa and Dickson, when
the information about a landmark would have been retrieved (see, e.g., Ex. 1004
at Fig. 13B), the restaurant menus would also have been retrieved and displayed.
(Ex. 1007 at 52.)
22
In view of the above, one of ordinary skill in the art at the time of the alleged
invention for the 498 patent would have been motivated to include a restaurant
menu along with the other information about a restaurant displayed in the display
unit of Maekawa, such as the display of Fig. 13B. Such a person would have
recognized that such an implementation would have enabled the display unit to
display the restaurants menu in addition to its business hours, phone number, etc.
when the user selects a restaurant landmark on the vehicles display unit. Given that
such an implementation could have been achieved with predictable success and
would have provided the advantage of increasing customer and business-owner
convenience, such a skilled person at the time of the alleged invention of the 498
patent would have realized that modifying Maekawa as discussed above would have
been a predictable and common sense implementation to provide additional services
for a consumer in such systems. See KSR Intl Co. v. Teleflex Inc., 550 U.S. 398,
420-21 (2007). (See, e.g., Ex. 1007 at 48-53.)
Moreover, one of ordinary skill in the art at that time would have been
motivated to look to Dickson to compliment the features of the disclosed Maekawa
system discussed above given that Dickson and Maekawa are analogous art. Both
references disclose in-vehicle systems and processes directed to retrieving and
displaying information about nearby businesses in a vehicle. (See Ex. 1007 at 48.)
For instance, such a person would have recognized that both Maekawa and Dickson
23
similarly disclose an interface and navigation system for finding and interacting with
nearby restaurants using wireless communication technologies. (See, e.g., Ex. 1005
at 10:65-11:2, ([i]n addition to determining vehicle location, a GPS or similar
system may be used to provide to the vehicle operator directions and/or listings of
stations capable of interacting with the IV.); Ex. 1004 at 4:15-18 (describing data
communication unit (not shown) for transferring data between an information center
which stories data necessary for navigation to provide the information through
communication lines when demanded by the driver).) (See also Ex. 1007 at 48.)
As such, the proposed modification would have been nothing more than the use of a
known technique to improve a similar product in the same way, and would have
been a simple and obvious change within the abilities of one skilled in the art at that
time. (Id. at 53.) Hence, there would have been nothing non-obvious about adding
a restaurant menu to Maekawas in-vehicle interface and improve the disclosed
Maekawa system in the same way as Dickson. See KSR, 550 U.S. at 417 (2007). (See
also Ex. 1007 at 48-53.)
e. showing, on the display element along with the information, an

indication of a selectable option to order, through a
communications network, one or more of the plurality of specific
products or services.
Maekawa in combination with Dickson discloses this limitation. As discussed
above, Maekawa in combination with Dickson discloses providing an in- vehicle
restaurant menu when a restaurant indicator is selected from a map displayed on a
24
vehicle display unit. (See analysis and citations above for claim element 1.d.) The
combined system thus displays a plurality of menu items (one or more of the
plurality of specific products or services) on the in-vehicle display. (See, e.g., Ex.
1007 at 54.) The combined system also enables ordering one or more of the specific
products or services through a communications network. For example, Dickson
discloses:
In operation, the IVC [in vehicle controller] is configured

to 1) provide pre-stored or downloaded information, such
as menu information, to the occupants of the vehicle, 2)
receive order entries from one or more of the occupants,
and 3) effect transfer of the occupant order to the
necessary communication electronics associated in some
manner with the QSR to effect order processing.
(Ex. 1005 at 18:14-21 (emphasis added).) Dickson discloses that [o]nce the
occupant views the menu, the IVC will receive occupant selections . . . and store
these selections in the IVC as an order and that the order may be transmitted upon
receiving an occupant input to that effect. (Id. at 18:41-48, emphasis added.)
Dickson further discloses that the order may be transmitted via any type of ground-
based or satellite communication network. (Id. at 18:65-67.) Moreover, an occupant
views information provided by the IVC via a display. (See e.g., id. at Abstract.) (See
also id. at 18:23-31; Ex. 1007 at 54.)
25
Given that Dickson discloses that an order may be transmitted upon
receiving an occupant input to that effect (id. at 18:41-48), one of ordinary skill in
the art at the time of the alleged invention for the 498 patent would have been
motivated to show on the display of the combined system an indication of a
selectable option to allow a user to order one or more of the specific products or
services from the displayed restaurant menu. (See, e.g., Ex. 1007 at 55.) Indeed,
providing an indication, such as an order button or the like, along with the displayed
restaurant menu (claimed information), would have been an obvious design
choice within the abilities of a person of ordinary skill at the time of the alleged
invention that would have allowed a user to create an order of one or more items for
submission once selected. Furthermore, displaying an indication for selecting one
or more items along with the other information displayed by the combined system
as described above would provide a user-friendly interface to facilitate transactions
in the vehicle systems and processes disclosed by Maekawa and Dickson. (Id.)
Moreover, it would have been obvious to a person of ordinary skill in the art
at the time of the alleged invention to modify the combined Maekawa and Dickson
systems and processes to enable a vehicle occupant to order the selected items via a
communications network, like that disclosed by Dickson (Ex. 1005 at 18:65-67.)
Indeed, a communications network would have been necessary to transmit an order
from within the vehicle to a restaurant. (See Ex. 1007 at 56.) Furthermore, such a
26
skilled person at that time would have been able to predictably provide such a feature
given that Maekawa discloses the use of a transceiver and similar components for
exchanging information and Dickson likewise discloses using a communication
network to facilitate its information exchange. (See, e.g., Ex. 1004 at 4:16-18, 4:52-
56; Ex. 1005 at 18:65-67.) (See also Ex. 1007 at 56.) In addition, as discussed
above, such a skilled person at that time would have been motivated to look to
Dickson to compliment the features of the disclosed Maekawa system given that
both references disclose systems and processes directed to retrieving and displaying
information about nearby businesses in a vehicle and disclose an interface and
navigation system for finding nearby restaurants and providing wireless
communication. (See e.g., Ex. 1005 at 10:57-11:8; Ex. 1004 at 4:55-59.) (See also
Ex. 1007 at 56.) As such, a skilled artisan at that time would have realized that
modifying Maekawa as discussed above in light of Dickson would have been a
predictable and common sense implementation to provide additional services for a
consumer in such systems. See KSR, 550 U.S. at 420-21. (See Ex. 1007 at 57.)
2. Claim 2
a. The method of claim 1 wherein the communications network

includes a wireless communication network.
Maekawa in combination with Dickson discloses that the communications
network includes a wireless communication network. For instance, as explained
above, the combined system of Maekawa and Dickson discloses a communications
27
network through which one or more of the plurality of specific products or
services may be ordered. (See citations and analysis above for claim element 1.e.)
The combined system further discloses that this communications network includes
a wireless communications network. Dickson, for example, discloses placing an
order through a wireless communication network when it explains that an order may
be transmitted via any type of ground-based or satellite communication network
(Ex. 1005 at 18:65-67) and that [i]n order to communicate with systems apart from
the vehicle, one or more remote communication systems are required to facilitate bi-
directional image and/or data transfer between a vehicle and a desired system
directly or through any number of communication networks as shown in FIG. 4D
(id. at Fig. 4D, 10:56-62). Figure 4D of Dickson discloses satellite and radio
communications networks (i.e., wireless communication network). (See also Ex.
1007 at 58.)
Maekawa similarly discloses that the vehicle has wireless capabilities because
it includes a data transceiver exemplified by a portable telephone or personal
computer for exchanging the information necessary for the navigation with a traffic
communication center (e.g., ATIS) when demanded by the user. (Ex. 1004 at 4:55-
59, emphasis added.) (See also Ex. 1007 at 58.)
In view of the above disclosures of Maekawa and Dickson discussing their
wireless capabilities, it would have been obvious to a person of ordinary skill in the
28
art at the time of the alleged invention for the 498 patent to use a wireless
communication network in the processes performed by the combined system of
Maekawa and Dickson to allow exchange of information with the restaurant from
within a vehicle. (See Ex. 1007 at 59.) Indeed, such a person would have been
motivated to implement these features to provide, for example, the ability to
wirelessly submit an order from within a vehicle to a remote restaurant as disclosed
by Maekawa and Dickson. (See generally citations and analysis above for claim 1.)
Moreover, one of ordinary skill in the art would have been motivated at that time to
use a wireless communication network in the combined system discussed above
because it would have allowed the downloading of a restaurant menu when the user
selects the restaurant landmark from the display unit 12 as discussed above regarding
the combined systems and processes. (See, e.g., Ex. 1005 at 18:25-31; see also Ex.
1007 at 59.) In addition, one of ordinary skill in the art would have realized that
utilizing a wireless communication network in the way described above to place an
order would have been a simple and obvious implementation given the disclosures
of wireless communications in both references, and would have been within the
realm of knowledge of such a skilled person at that time. (See, e.g., Ex. 1007 at
59.) Given the disclosures of Maekawa and Dickson, such a skilled person would
have realized that such a modification would have been a predictable and common
sense implementation to use a wireless communication network in the combined
29
system. See KSR, 550 U.S. at 420-21. (See also reasons for combining Dickson and
Maekawa for claim elements 1.d1.e.) (See Ex. 1007 at 60.)
3. Claim 3
a. The method of claim 1 wherein the information includes

descriptions of the products or services.
Maekawa in combination with Dickson discloses this limitation. For
example, as discussed above with respect to claim 1, the combined systems and
processes of Maekawa and Dickson discloses a restaurant menu displayed in the
vehicle display unit to list items that may be purchased from the restaurant. (See
above citations and analysis for claim elements 1.c1.e.) (See alsoSee also e.g., Ex.
1005 at Abstract, Occupants in the vehicle are provided a menu on a display of an
in-vehicle interface . . . [t]he occupants may select any number of desired items to
form an occupant order.) (See also id. at 2:7-9, 3:15-19, 9:31-43, 27:45-52, 27:64-
66.) (See also Ex. 1007 at 61.) By listing the menu items, the restaurant menu
describes the products available for purchase. Hence, the combined system
discloses that the information includes descriptions of the products or services.
(See Ex. 1007 at 61.) (See also analysis and citations relating to Dickson and
Maekawa for claim elements 1.d1.e.)
4. Claim 4
a. The method of claim 3 wherein the descriptions comprises a

menu.
30
Maekawa in combination with Dickson discloses that the descriptions
comprises a menu. As explained, the display unit in the above discussed combined
Maekawa and Dickson systems and processes displays a restaurant menu. (See
citations and analysis for Maekawa and Dickson, and reasons for combining the
references above for claim elements 1.d1.e and claim 3.) (See also Ex. 1007 at
62.)
5. Claim 7
a. The method of claim 1 further comprising showing, on the display

element, data concerning the provider in response to a user request
for the data.
Maekawa discloses that when the displayed indicator of a landmark of a service
provider (e.g., a restaurant) is selected by the user, further information (such as
business hours, the business content and/or the telephone number) about the service
provider is displayed. (Ex. 1004 at 7:23-45.) An example of display of additional
31
information in response to a user selection of the landmark indicators is shown in
Fig. 13B, where a landmark indicated by Y is selected. (Id. at 9:52-58.)
(Id. at Fig. 13B.) The business hours and telephone numbers are data concerning
the provider. (Ex. 1007 at 63.)
Maekawa also discloses displaying directions to a selected provider, which is
also data concerning the provider (e.g., restaurant), in response to the user setting
the landmark as a destination or transit point. For example, Maekawa discloses that
[i]f a landmark F is then touched as shown in FIG. 6B, the display screen is changed
to the screen shown in FIG. 7 . . . . (Ex. 1004 at 7:23-25.)
32
(Id. at Fig. 7.) Maekawa states that [w]hen a set transit switch or a set destination
switch is then touched, the facility of the landmark F is set as the transit point or a
destination point. (Id. at 7:27-29.) Once the landmark F is set as the destination
point, directions for reaching landmark F are displayed to the user. (Id. at 6:44-58.)
(See also Ex. 1007 at 63.)
6. Claim 8
a. The method of claim 7 wherein the data includes directions for

reaching the location of the provider.
Maekawa discloses displaying directions for reaching the location of a selected
provider. (See analysis and citations above for claim 7 in Part VIII.A.5.) Indeed,
Maekawa discloses that [i]f a landmark F is then touched as shown in FIG. 6B, the
33
display screen is changed to the screen shown in FIG. 7 . . . . (Ex. 1004 at 7:23-25.)
Maekawa further explains that [w]hen a set transit switch or a set destination switch
is then touched, the facility of the landmark F is set as the transit point or a
destination point. (Id. at 7:27-29.) Once the landmark F is set as the destination
point, directions for reaching landmark F are displayed to the user. (See id. at 6:44-
62 (. . . After the route is determined, route guidance (step S4) such as display of
map segments with a present position marker thereon is provided until the
destination is reached . . .); see also id. at Fig. 4.) As explained above and in
Maekawa, landmark F may be a convenience store (id. at 7:9-16), which is a provider
of products or services. (See also id. at 6:44-62 (explaining how routes may be
calculated based on destinations), 7:8-24 (explaining how a destination may be a
provider of products or services); Ex. 1007 at 64.)
7. Claim 9
a. The method of claim 7 wherein the data includes connection

information for communicating with the provider.
Maekawa discloses that [i]f a landmark F is then touched as shown in FIG. 6B
. . . the screen map may remain the same with the selected landmark indicated at a
position not in the center of the screen. Furthermore the screen of FIG. 7, may
display . . . the telephone number of the facility indicated by the landmark F.
(Ex. 1004 at 7:23-45, emphases added.) A vehicle occupant is able to communicate
34
with the restaurant via the telephone number displayed by the disclosed system,
which is connection information. (Ex. 1007 at 65.)
8. Claim 10
a. The method of claim 1 wherein the provider includes a

restaurant
Maekawa in combination with Dickson discloses that the provider includes
a restaurant. For instance, Maekawa discloses that when the peripheral search
switch on the display unit is touched as illustrated in FIG. 5B, the screen of FIG.
5C is displayed wherein the lower portion of the screen shows facility selecting
switches such as switches for selecting a convenience store, a parking lot or garage,
a gas station, a family restaurant, a bank and so on. (Ex. 1004 at 7:9-16, emphasis
added.) (See also id. at Figs. 5A, 5B, 5C, 5D, 6A.) According to Maekawa, if the
family restaurant switch is selected in FIG. 5D, the screen of FIG. 6A is displayed
to show landmarks of [restaurants] at their locations surrounding the present
position. (Id. at 7:9-16, emphasis added.) (See also Ex. 1007 at 66.)
9. Claim 11
a. The method of claim 1 wherein the selectable option is provided

on the display element.
Maekawa in combination with Dickson discloses that the selectable option is
provided on the display element. As discussed above with respect to claim 1, the
combined Maekawa and Dickson systems and processes discloses providing a
35
selectable option on the display unit. (See analysis and citations above for claim
element 1.e in Part VIII.A.1.e.) (Ex. 1007 at 67.)
10. Claim 12
a. The method of claim 1 wherein the location of the vehicle is sensed

using a global positioning system (GPS) technique.
Maekawa discloses that its described method includes a step S2 in which the present
position of the vehicle is detected by a present position detecting unit 2 of the
vehicular navigation system. (Ex. 1004 at 6:51-54; see also id. at 3:50-53; citations
and analysis for claim 1.) The present position detecting unit 2 detects or receives
information on the present position of the vehicle and includes . . . a GPS receiver
utilizing the satellite navigation system (GPS) . . . . (Id. at 4:45-53.) The GPS
receiver is used to sense the location of the vehicle, and thus the disclosed processes
performed by Maekawa use a GPS technique to sense the vehicles location. (See
Ex. 1007 at 68.)
11. Claim 13
a. A system for use in a vehicle, comprising:
To the extent the preamble is limiting, Maekawa discloses a system for use in
a vehicle. For example, Maekawa discloses a vehicular navigation system. (Ex. 1004
at 3:48-49.) (See also citations and analysis above for claim element 1.a in Part
36
VII.A.1.a; citations and analysis below for the remaining limitations of this claim;
Ex. 1007 at 69.)
b. a device for sensing a location for the vehicle;
Maekawa discloses this limitation. As discussed above in Part VII.B,
Petitioner submits that the corresponding structure for the identified function of the
claimed device is a GPS receiver, or equivalents thereof. (See supra Part VII.B.)
Consistent with this structure, Maekawa discloses that the vehicular navigation
system includes . . . a present position detecting unit 2 for detecting information on
the present position of a vehicle. (Ex. 1004 at 3:50-53.) The present position
detecting unit 2 detects or receives information on the present position of the vehicle
and includes . . . a GPS receiver utilizing the satellite navigation system (GPS) . . .
. (Id. at 4:45-53, Fig. 1.) (See also id. at Fig. 4, 6:46-54 (describing step S2 of Fig.
4 where the present position for the vehicle is detected by present position detecting
unit 2); citations and analysis above for claim element 1.b in Part VIII.A.1.b; Ex.
1007 at 69.)
c. a display element configured to show at least one indicator

indicating a location of at least one product or service provider in
relation to the sensed location of the vehicle
Maekawa discloses this limitation. For example, the vehicular navigation
system disclosed by Maekawa includes a display 12 . . . mounted in the instrument
panel of the vehicle . . . . (Ex. 1004 at 4:34-35; Fig. 1.) The display 12 is a display
37
element. (See also citations and analysis above for claim element 1.c in Part
VIII.A.1.c; Ex. 1007 at 69.) For example, Maekawa discloses that a road map is
displayed in Fig. 5A around the present position marker in the display unit
provided with the touch panel. (Ex. 1004 at 6:63-65, emphasis added.) When the
peripheral search switch on the display unit is touched as illustrated in FIG. 5B,
the screen of FIG. 5C is displayed wherein the lower portion of the screen shows
facility selecting switches such as switches for selecting a convenience store, a
parking lot or garage, a gas station, a family restaurant, a bank and so on. For
example, if the switch convenience store is selected by touching as shown in FIG.
5D, the screen of FIG. 6A is displayed to show landmarks of convenience stores
at their locations surrounding the present position. (Id. at 7:9-16, emphasis
added.) (See also id. at Figs. 5A, 5B, 5C, 5D, 6A.) Maekawa discloses that indicators
of landmarks such as restaurants and convenience stores ( at least one product or
service provider) are displayed on the display unit and labelled with letters, such as
D, F, G, etc. (Id. at 7:25-27, an F mart as indicated by the landmark F, is
displayed in the road map, Fig. 6A (excerpted below)).
38
(Id. at Fig. 6A.) Indeed, the way Maekawa discloses this limitation is similar to that
described in the 498 patent. (Compare, Fig. 6A of Ex. 1004, with Fig. 7 of Ex.
1001.)
d. [the display element configured] to show information regarding

a plurality of products or services offered by the provider, and,
Maekawa discloses showing, on the display unit 12, which is a display element,
information (e.g., the business hours, telephone number) regarding the service or
product provider in response to a user selection of the indicator of the service
provider. (See citations and analysis of Maekawa above for claim element 1.d in Part
VIII.1.d.)
As discussed with respect to claim 1, while Maekawa does not explicitly
disclose that the displayed information regarding the service or product provider
in Fig. 13B is information regarding a plurality of products or services offered by
the provider, it would have been obvious to one of ordinary skill in the art at the
39
time of the alleged invention for the 498 patent to implement such a feature in view
of Dickson. As discussed above for claim 1, Dickson discloses a vehicle interface
that allows occupants to place orders from within the vehicle for items provided by
a restaurant. (See above citations and analysis of Dickson for claim element 1.d in
Part VIII.1.d.)
In view of Dickson, one of ordinary skill in the art at that time would have
been motivated to modify Maekawas information display (e.g., Fig. 13B) to add a
restaurant menu, which lists a plurality of items that may be purchased from the
restaurant. (See citations and analysis of Maekawa and Dickson above, including
reasons to combine the references, for claim element 1.d in Part VIII.1.d.) In the
modified Maekawa system, the restaurant menu would have been provided along
with the other information displayed in Fig. 13B when an indicator of a restaurant
provider is selected in Fig. 6B or 13A in Maekawa. (See id.) Such a skilled person
would have been motivated to modify the disclosed systems and processes of
Maekawa in such a way given that Dickson discloses that having a restaurant menu
with displayed items for ordering in a vehicle display would help reduce restaurant
congestion and wait times and allow multiple persons in the vehicle to see and
interact with a menu. (See id., citing Ex. 1005 at 1:48-58.) Furthermore, as discussed
with respect to claim 1, a person of ordinary skill in the art would have been able to
make the modification with predictable success. (See id.) Given that such an
40
implementation could have been achieved with predictable success and would have
provided the advantage of increasing customer and business-owner convenience, a
person of ordinary skill in the art at the time of the alleged invention of the 498
patent would have realized that modifying Maekawa as discussed above would have
been a predictable and common sense implementation to provide additional services
for a consumer in such systems. See KSR, 550 U.S. at 420-21 (2007). (See, e.g., Ex.
1007 at 69-72.)
e. [the display element configured] to show an indication of a

selectable option to order one or more of the plurality of products
or services,
as discussed above for claim 1, Maekawa in combination with Dickson discloses
providing an in-vehicle restaurant menu when a restaurant indicator is selected from
a map displayed on a vehicle display unit. (See analysis and citations above for claim
elements 13.c 13.d, and claim element 1.e, including reasons for combining
Maekawa and Dickson.) The combined system thus displays a plurality of menu
items (e.g., one or more of the plurality of products or services) on the in-vehicle
display. (See, e.g., Ex. 1007 at 73-74.) The combined systems display unit also
displays an indication of a selectable option to order one or more of specific products
or services.
41
For example, Dickson discloses that [o]nce the occupant views the menu,
the IVC will receive occupant selections . . . and store these selections in the IVC
as an order and that the order may be transmitted upon receiving an occupant
input to that effect. (Ex. 1005 at 18:41-48, emphasis added.) (See also id. at
18:14-21, 18:25-31.)
Given that Dickson discloses that an order may be transmitted upon
receiving an occupant input to that effect (Ex. 1005 at 18:41-48), and the
disclosure of Maekawa and Dickson above, one of ordinary skill in the art at the
time of the alleged invention for the 498 patent would have been motivated to
show on the display of the combined system, an indication of a selectable option
to allow a user to order one or more of the products or services from the displayed
restaurant menu. (See, e.g., Ex. 1007 at 73-74.) Indeed, providing an indication,
such as an order button or the like, along with the displayed menu of items, would
have been an obvious design choice within the abilities of a person of ordinary
skill at the time of the alleged invention that would have allowed a user to create
an order of one or more items for submission once selected. Furthermore,
displaying an indication for selecting one or more items along with the other
information displayed by the combined system as described above would provide
a user-friendly interface to facilitate transactions in the vehicle systems and
processes disclosed by Maekawa and Dickson. (See also citations and analysis of
42
Maekawa and Dickson, including reasons for combining the references, for claim
element 1.e in Part VIII.A.1.e; Ex. 1007 at 73-74.)
f. an interface configured to receive a user request to obtain

information concerning a plurality of products or services offered
by the provider indicated by the indicator,
Maekawa in combination with Dickson discloses an interface configured to
receive a user request to obtain information concerning a plurality of products or
services offered by the provider indicated by the indicator.
As discussed above, Maekawa in combination with Dickson discloses
a map displayed on display unit 12 in Maekawa. (See analysis and citations above
regarding Maekawa and Dickson for claim elements 13.c13.e in Parts VIII.A.11.c
VIII.A.11.e, including reasons to combine the references.) The combined system
thus displays a restaurant menu (which corresponds to information concerning a
plurality of products or services offered by the provider) on the display unit 12 in
response to a user selection of a restaurant landmark (e.g., user selection of a
restaurant landmark in Fig. 6B). (See above citations and analysis, including reasons
to combine Maekawa and Dickson, for claim elements 1.c1.e, 13.c13.e.) (See also
Ex. 1007 at 75.) Therefore, as explained above, the combined Maekawa and
Dickson system discloses an interface configured to receive a user request as
claimed. For example, as shown in Fig. 6B, a user can select a landmark in display
43
unit 12 to obtain a restaurant menu for a restaurant, which is a provider of products
or services indicated by an indicator in the display. (See e.g., Ex. 1004 at Figs. 4,
6A, 6:44-62, 7:8-29.) (See also Ex. 1007 at 75.)
g. [an interface configured to] receive a user request to order one or

more of the plurality of products or services; and,
above, Maekawa in combination with Dickson discloses providing an in-vehicle
restaurant menu when a restaurant indicator is selected from a map displayed on
display unit 12 in Maekawa. (See analysis and citations above regarding Maekawa
and Dickson for claim elements 13.c13.f in Parts VIII.A.11.cVIII.A.11.f.) The
combined system thus displays a plurality of menu items (which corresponds to one
or more of the plurality of products or services) on display unit 12. Furthermore,
the combined system allows a user to place an order for the menu items through
display unit 12, thereby disclosing an interface configured to receive a user request
to order one or more of the plurality of products or services. (See above citations
and analysis, including reasons to combine Maekawa and Dickson, for claim
elements 1.c1.e, 13.c-13.f.) (See also Ex. 1007 at 76.) For example, Dickson
discloses that [o]nce the occupant views the menu, the IVC will receive occupant
selections . . . and store these selections in the IVC as an order and that the order
may be transmitted upon receiving an occupant input to that effect. (Ex. 1005
at 18:41-48, emphasis added.) As noted above, occupant views information
44
provided by the IVC via a display. (See, e.g., id. at Abstract.) (See also Ex. 1007 at
77.)
Given that Dickson discloses that an order may be transmitted upon receiving
an occupant input to that effect (Ex. 1005 at 18:41-48), and the disclosure of
Maekawa and Dickson above, it would have been obvious to a person of ordinary
skill in the art at the time of the alleged invention to provide a selectable option on
display unit 12 of the combined system to allow the user to order one or more of the
specific products or services from the restaurant menu. Providing such a selectable
option on display 12, such as an order button or the like, along with the displayed
menu of items, would have been a simple and predictable design choice within the
realm of knowledge and abilities of one of ordinary skill in the art at the time of the
alleged invention that would have allowed a user to create an order of one or more
items for submission once selected. See KSR, 550 U.S. at 421 (A person of ordinary
skill is also a person of ordinary creativity, not an automaton.) (See also Ex. 1007
at 77-78.) Furthermore, providing an interface that is configured to receive a user
request to order a plurality of products or services, as discussed above, would
provide a user-friendly interface to facilitate transactions in the vehicle systems and
processes disclosed by Maekawa and Dickson. (See also Ex. 1007 at 78; reasons
for combining Maekawa and Dickson for claim element 13.d.) As such, because the
45
combined system would have a selectable option on display unit 12 to place, for
example, a restaurant order for products, the combined system discloses an interface
configured to receive a user request to order one or more of the plurality of products
or services. (See, e.g., Ex. 1007 at 77-78.)
h. processor configured to provide for display on the display element

of the indication of the selectable option to order, through a
communications network, one or more of the plurality of products
or services based on the information
above in Part VII.B, Petitioner submits that the corresponding structure for the
identified function of the claimed processor is a processor or equivalents thereof.
(See supra Part VII.B.) Consistent with this structure, Maekawa discloses a central
processing system 4 for controlling the entire [vehicular navigation] system [of Fig.
1] including the display unit 12 (e.g., a display element). (Ex. 1004 at 3:57-58,
emphasis added.) Maekawas central processing system, which includes CPU 40,
is a processor. (See id. at 5:1, The central processing unit 4 includes: a CPU 40 .
. . .) (See also Ex. 1007 at 79.)
As discussed above, Maekawa in combination with Dickson discloses
a map displayed on display unit 12 in Maekawa. (See analysis and citations above
regarding Maekawa and Dickson for claim elements 13.c 13.f, including reasons
46
to combine the references.) The combined system also displays an indication of a
selectable option to order one or more of the products or services through a
communications network based on the displayed menu of items. (See e.g., citations
and analysis regarding Dickson above for claim element 1.e, including Ex. 1005 at
Abstract, 18:14-21, 18:25-31, 18:41-48, 18:65-67, and reasons for combining
Dickson with Maekawa.) (See also Ex. 1007 at 79.) Because the central processing
system 4 controls the entire vehicular navigation system, including the display unit
12, (Ex. 1004 at 3:57-58), the central processing system 4 (processor) in the
combined system of Maekawa and Dickson is configured to provide for display on
the display element of the indication of the selectable option to order, through a
communications network, one or more of the plurality of products or services based
on the information. (See, e.g., Ex. 1007 at 79.)
Given that Dickson discloses that an order may be transmitted upon receiving
an occupant input to that effect (id. at 18:41-48), and the disclosure of Maekawa
and Dickson above, one of ordinary skill in the art at the time of the alleged invention
for the 498 patent would have been motivated to show on the display of the
combined system, an indication of a selectable option to allow a user to order one or
more of the specific products or services from the displayed restaurant menu. (See,
e.g., Ex. 1007 at 80-81.) Indeed, providing such an indication, such as an order
button or the like, along with the displayed menu of items, would have been an
47
obvious design choice within the abilities of a person of ordinary skill at the time of
the alleged invention that would have allowed a user to create an order of one or
more items for submission once selected. See KSR, 550 U.S. at 421. Furthermore,
displaying an indication for selecting one or more items along with the other
information displayed by the combined system as described above would provide a
user-friendly interface to facilitate transactions in the vehicle systems and processes
disclosed by Maekawa and Dickson. (See also Ex. 1007 at 81.) Moreover, it would
have been obvious to one of ordinary skill in the art at the time of the alleged
invention to implement features in the above discussed combined system that would
have allowed a vehicle occupant to order the selected items via a communications
network, like that disclosed by Dickson for the same reasons set forth above for
claim element 1.e. (See analysis and citations for claim element 1.e.)
12. Claim 14
a. The system of claim 13 wherein the communications network

includes a wireless communications network.
Maekawa in combination with Dickson discloses that the communications
network includes a wireless communications network for the same reasons set
forth above for claim 2. (See citations and analysis above for Maekawa and
Dickson for claim 2 in Part VIII.A.2.) (See also Ex. 1007 at 82.)
48
13. Claim 15
a. The system of claim 13 wherein the information includes

descriptions of the products or services, and the display element is
further configured to show the information.
as discussed above with respect to claim 13, the combined systems and processes of
Maekawa and Dickson disclose displaying a restaurant menu in the vehicle display
unit that lists items that may be purchased from the restaurant. (See above citations
and analysis regarding Maekawa and Dickson for claim elements 13.c 13.h.) (See
also e.g., Ex. 1005 at Abstract, 2:7-9, 3:15-19, 9:31-43, 27:45-52, 27:64-66.) (See
also Ex. 1007 at 83.) Given that the restaurant menu lists items that may be
purchased from the restaurant, the menu includes descriptions of the products or
services. (See also citations and analysis above regarding Maekawa and Dickson
for claim 3 in Part VIII.A.3; Ex. 1007 at 83.) Moreover, as discussed above for
claims 1, 3, and 13, in the combined system, the display unit would have been
configured to display the restaurant menu including the list of items offered by the
restaurant and therefore, the display element is further configured to show the
information. (See also Ex. 1007 at 83.) It would have been obvious to one or
ordinary skill in the art to combine the systems and processes of Maekawa and
Dickson as discussed above for the reasons similar to those set forth above for claims
1, 3 and 13. (See above citations and analysis regarding Maekawa and Dickson,
49
including reasons to combine the references, for claims 1 and 3, claim elements 13.c
13.h.)
14. Claim 16
a. The system of claim 15 wherein the descriptions comprise a

menu.
Maekawa in combination with Dickson discloses that the descriptions
comprises a menu for at least the same reasons discussed above for claim 4. (See
citations and analysis for claim 4 in Part VIII.A.4.) (See also citations and analysis
for claim 15; Ex. 1007 at 84.)
15. Claim 19
a. The system of claim 13 wherein the interface is further

configured to receive a user request to obtain data concerning the
provider.
Maekawa in combination with Dickson discloses that the interface is further
configured to receive a user request to obtain data concerning the provider for at
least the same reasons set forth above for claim 7. (See citations and analysis for
claim 7 in Part VIII.A.5.) (See also citations and analysis for claim 13; Ex. 1007 at
85.) Given that the combined system of Maekawa and Dickson includes a display
unit that allows the user to select a landmark indicator and obtain information about
the landmark (such as restaurant hours, directions to restaurant, etc.), the combined
system discloses an interface configured to receive a user request to obtain data
50
concerning the provider, such as a restaurant or the like. (See citations and analysis
for claim element 13.d in Part VIII.A.11.d.; Ex. 1004 at Figs. 6A, 13B.)
16. Claim 20
a. The system of claim 19 wherein the data includes directions for

reaching the location of the provider.
Maekawa in combination with Dickson discloses these limitations for at least
the same reasons discussed above for claim 8. (See citations and analysis for claim
8 in Part VIII.A.6.) (See also supra Part VIII.A.15; Ex. 1007 at 86.)
17. Claim 21
a. The system of claim 19 wherein the data includes connection

information for communicating with the provider.
9 in Part VIII.A.7.) (See also supra Part VIII.A.15; Ex. 1007 at 87.)
18. Claim 22
a. The system of claim 13 wherein the provider includes a

restaurant.
10 in Part VIII.A.8.) (See also supra Part VIII.A.11.c; Ex. 1007 at 88.)
51
19. Claim 23
a. The system of claim 13 wherein the selectable option is provided

on the display element.
11 in Part VIII.A.9.) (See also supra part VIII.A.11.e; Ex. 1007 at 89.)
20. Claim 24
a. The system of claim 13 wherein the device incorporates GPS

technology.
12 in Part VIII.A.10.) (See also supra Part VIII.A.11.b; Ex. 1007 at 90.) For
example, Maekawa discloses that the present position detecting unit 2, (e.g., the
device) includes a GPS receiver utilizing the satellite navigation system (GPS),
which incorporates GPS technology. (Ex. 1004 at 4:45-53.)
B. Ground 2: Maekawa In View Of Dickson and Spiegel Render

Claims 5, 6, 17, and 18 Obvious
1. Claims 5 and 17
a. Claim 5: The method of claim 3 wherein the descriptions of the

products or services previously ordered are indicated in a selected
status.
b. Claim 17: The system of claim 15 wherein the descriptions of the

products or services previously ordered are indicated in a selected
status.
52
Maekawa in combination with Dickson and Spiegel discloses that the
descriptions of the products or services previously ordered are indicated in a selected
status. For instance, as discussed above, the combined Maekawa and Dickson
systems and processes display a menu that lists items offered for purchase by a
restaurant. (See citations and analysis above regarding Maekawa and Dickson for
claims 1, 3, 13, and 15.) While Maekawa and Dickson do not explicitly disclose that
the descriptions of the products or services previously ordered are indicated in a
selected status, it would have been obvious to one of ordinary skill in the art at the
time of the alleged invention of the 498 patent to modify the combined Maekawa
and Dickson vehicular navigation systems and processes discussed above based on
Spiegel to provide a feature where a users previously ordered menu items are
indicated in a selected status on the display, including a representation reflecting a
previous order of a product or service as construed by Petitioner. (See supra Part
VII.A.) (Ex. 1007 at 92, 102.)
Spiegel discloses a computer system for conducting electronic commerce.
(Ex. 1006 at Abstract.) In particular, Spiegel discloses a computerized system and
process for ordering products over a network. (See, e.g., id. at 4:3-27, 6:59-7:31.)
Spiegel explains that the features of presenting a list of items for purchase by a user
and viewing, selecting, and ordering products over a network in a computerized
environment was conventional and known at least as early as June 25, 1998, the
53
filing date of Spiegel. (See id. at 2:1-20, explaining how users could electronically
view a catalog of items to purchase (e.g., books, music, etc.), select certain items,
and order the items over a network.) Spiegel explains that the use of electronic
shopping carts to perform these conventional processes was also known. (Id. at 2:
21-34.) In Spiegels disclosed systems and processes, an electronic cart displays a
current order box 201, the past order box 202, and a general information box 203.
(Id. at 6:17-20.) (See also Fig. 2, illustrating such a cart.) Spiegel explains that [t]he
current order box contains information relating to items currently in the shopping
cart that have not yet been checked out. (Id. at 6:20-22.) When the current order
is checked out, it becomes a past order and status information is displayed in the
past orders box. (Id. at 6:26-28, emphasis added.) (Ex. 1007 at 92.) (Ex. 1007 at
43-44, 93, 102.)
In view of Spiegel, which discloses listing past ordered items in a past orders
box, it would have been obvious to provide a listing of a users previous or past
orders along with the menu items in the combined Maekawa and Dickson system.
First, one of ordinary skill in the art would have been motivated at that time to
provide an indication of past orders so that a user could reselect a past order and save
time while ordering. (See Ex. 1007 at 95.) Moreover, such a skilled person would
have been able to implement this modification with predictable success. (See Ex.
1007 at 96.) For example, in Maekawa, a skilled artisan would have been able to
54
easily provide a listing of past orders by saving a users orders for a particular
restaurant in memory 41 (see Ex. 1004, Fig. 1) of the vehicular navigation system
and retrieving the past orders when the user selects a particular restaurant landmark.
(See Ex. 1007 at 96.)
In addition, one of ordinary skill in the art would have realized that
incorporating a past orders box or listing in the combined Maekawa-Dickson system
would have been nothing more than a predictable use of prior art elements
according to their established functions. See KSR, 550 U.S. at 417. For example,
the modified Maekawa-Dickson system would have allowed a user to remotely order
items from a provider (e.g., restaurant) through a communications network. (See,
e.g., citations and analysis above for claim element 1.e in Part VIII.A.1.e.) Similarly,
Spiegel discloses a computerized system and process for ordering products over a
network. (See, e.g., Ex. 1006 at 4:3-27, 6:59-7:31.) (Ex. 1007 at 94.) Hence,
incorporating an additional feature, such as a past orders box or the like that provides
an indication and descriptions of items previously ordered in the menu display of
the combined Maekawa-Dickson system would not have changed the operation of
the display device and corresponding display processes. (See, e.g., Ex. 1007 at
97, 102.) Given the similarities between the combined systems and processes of
Maekawa, Dickson, and Siegel, one of ordinary skill in the art would have been
motivated to implement the modification discussed above. (Id.) Moreover, there
55
would have been nothing non-obvious about this combination given that it would
have been a predictable combination of old elements into a single device. See KSR,
550 U.S. at 417; Andersons-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969)).
2. Claims 6 and 18
a. Claim 6: The method of claim 1 wherein the information includes

promotional information.
b. Claim 18: The system of claim 13 wherein the information

includes promotional information
Maekawa in combination with Dickson and Spiegel discloses that the
information includes promotional information. As discussed above with respect to
claims 1 and 13, the combined Maekawa-Dickson systems and processes displays a
restaurant menu. (See citations and analysis above for claims 1 and 13.) (See also
citations and analysis for claims 4 and 16.) A restaurant menu may be considered by
one of ordinary skill in the art as promotional information in the context of the
498 patent given that the menu promotes the selections offered by the restaurant.
(See, e.g., Ex. 1007 at 98.) However, to the extent that Patent Owner proposes a
narrower interpretation of promotional information that excludes restaurant
menus, one of ordinary skill in the art at the time of the alleged invention for the
498 patent would still have found it obvious to include promotional information in
56
the information shown in the display unit of the combined Maekawa-Dickson system
based on Spiegel.
Spiegel discloses, for example, that it was well known at least as early as June
25, 1998 (the filing date of Spiegel) to display promotional information to a user for
items for purchase. Indeed, Spiegel states that at that time it was known that server
computer systems may customize recommendations for items to purchase based on
the purchasing or, more generally, access patterns of a user. (Ex. 1006 at 2:46-49.)
Spiegel explains, [f]or example, if a user generally purchases books relating to
current politics, then when the user next connects to the server computer system, it
may recommend that the user purchase a recently released book on current politics.
(Id. at 2:49-52.) Spiegel further discloses that the electronic commerce system can
track the electronic commerce activity of the user . . . and customize advertising and
recommendations when the user is shopping through the electronic commerce
system. (See id. at 3:36-40, 4:23-27.) (See also Ex. 1007 at 99, 103.)
In view of Spiegels disclosure, it would have been obvious to one of ordinary
skill in the art at the time of the alleged invention for the 498 patent to modify the
combined Maekawa-Dickson systems and processes to display recommendations for
menu items (e.g., promotional information) when displaying a restaurant menu in
response to a users selection of a restaurant indicator, as discussed above. Such a
skilled person would have been motivated to implement such a modification because
57
it would have allowed a restaurant or other service provider to target consumers for
advertising items offered by the restaurant during an ordering session in the modified
Maekawa-Dickson systems and processes. (See Ex. 1007 at 99-100, 103.) Indeed,
Dickson discloses that one of the purposes of the IVC is to provide advertising to
the vehicle occupants. (Ex. 1005 at 9:37-43). Moreover, the restaurant menu
displayed by the combined Maekawa-Dickson systems and processes is similar to
promotional information in the context of the 498 patent given that the menu
promotes items offered by the restaurant. (See e.g., Ex. 1007 at 100, 103.)
Accordingly, one of ordinary skill in the art would have been motivated to display
in the display unit of the combined systems and processes of Maekawa and Dickson
not only a restaurants menu but also promotional information, such as a list of
recommended menu items, based on, for example, promotions being run by the
restaurant or the users past order history. (See Ex. 1007 at 100, 103.) Indeed,
such a modification would have been a predictable and common sense
implementation that would have provided additional services for a consumer in the
combined Maekawa-Dickson systems and processes and allow a restaurant or
provider to provide a focused marketing of its products or services offered to
consumers who view such items via the display unit of the combined system. See
KSR, 550 U.S. at 420-21. (See, e.g., Ex. 1007 at 100, 103.)
58
In addition, one of ordinary skill in the art at the time of the alleged invention
would have been motivated to look to Spiegel to compliment the features of the
combined Maekawa-Dickson systems and processes as discussed above given the
similarities between the features disclosed by Maekawa, Dickson, and Spiegel, as
discussed above. (Ex. 1007 at 101.) For example, the modified Maekawa-Dickson
system would have allowed a user to remotely order items from a provider (e.g.,
restaurant) through a communications network. (See, e.g., supra Part VIII.A.1.e.)
Similarly, Spiegel discloses a computerized system and process for ordering
products over a network. (See, e.g., Ex. 1006 at 4:3-27, 6:59-7:31.) Thus, one of
ordinary skill in the art would have realized that the above discussed modification
would have amounted to nothing more than predictable use of prior art elements
according to their established functions. See KSR, 550 U.S. at 417. Indeed,
displaying information reflecting recommended items, or similar promotional
information, in the menu display features discussed above in the combined
Maekawa-Dickson systems and processes would not have changed the function of
the combined system, while allowing businesses to provide promotional information
and thereby potentially increase their sales and exposure to customers. (Ex. 1007 at
101, 103.) Hence, there would have been nothing non-obvious about this
combination given that it is a predictable combination of old elements into a single
device. See KSR, 550 U.S. at 417.
59
IX. CONCLUSION
For the reasons given above, Petitioner requests inter partes review of the
498 patent and cancellation of claims 1-24 of the 498 patent.5
Respectfully Submitted,
/s/ Ashraf A. Fawzy

Ashraf A. Fawzy
Registration No. 67,914
5
Petitioner has not necessarily raised all challenges to the 498 patent, given the
limitations placed by the Rules. Petitioner reserves all rights and defenses.
60
CERTIFICATE UNDER 37 CFR 42.24(d)
Under the provisions of 37 CFR 42.24(d), the undersigned hereby certifies
that the word count for the foregoing Petition for Inter Partes Review totals 13,345
which is less than the 14,000 words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
Dated: March 31, 2017 /s/ Ashraf A. Fawzy

Ashraf A. Fawzy
Unified Patents Inc.

1875 Connecticut Ave., NW
Washington, DC 20009
Tel: (202) 871-0110
CERTIFICATE OF SERVICE
I hereby certify that on March 31, 2017, I caused a true and correct copy of
the foregoing materials:
Petition for Inter Partes Review of U.S. Patent No. 8,538,498, including
Exhibit list
Exhibits for Petition for Inter Partes Review of U.S. Patent No. 8,538,498
Power of Attorney
Word Count Certification Under 37 CFR 42.24(d)
to be served via Priority Mail Express on the following correspondent of record
as listed on PAIR:
Klein, ONeill & Singh, LLP

c/o Daniel Cavanagh
16755 Von Karman Ave, Suite 275
Irvine, CA 92606
/s/ Ashraf A. Fawzy

Ashraf A. Fawzy

Unified Patents Inc. v. Silver State Intellectual Technologies, LLC, IPR2017-01198 (PTAB March 31, 2017)

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Filed on behalf of Unified Patents Inc.

By: Ashraf A. Fawzy, Reg. 67,914

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,538,498

14. Claim 16 .................................................................................. 50

1001 U.S. Patent No. 8,538,498 (the 498 patent)

IPR2015-01747. Prior to a decision on institution, the parties filed a joint motion to

terminate in view of settlement, which was granted. This petition is substantively

similar to that earlier-filed petition. Further, this petition relies on a second

swears that he supports his earlier-filed declaration (Ex. 1007) in IPR2015-01747.

II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8

Real Party-in-Interest: Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies

party exercised control or could exercise control over Petitioners participation in

regard, Petitioner has submitted voluntary discovery. (Ex. 1013.)

That case was terminated on October 2, 2015.

Intellectual Technologies, Inc., IPR2015-01747. Prior to a decision on institution,

Washington, D.C. 20009, Telephone: 202-871-0110, E-mail:

afawzy@unifiedpatents.com and jonathan@unifiedpatents.com. Petitioner consents

III. PAYMENT OF FEES UNDER C.F.R. 42.15(a) AND 42.103

IV. GROUNDS FOR STANDING

Petitioner certifies that, under 37 C.F.R. 42.104(a), the 498 patent is

V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED

A. Claims for Which Review Is Requested

cancellation of these claims as unpatentable.

B. Statutory Grounds of Challenge

Claims 1-24 should be cancelled as unpatentable in view of the following prior

Reference 1: U.S. Patent No. 6,040,824 to Maekawa et al. (Maekawa) (Ex.

pre-AIA 35 U.S.C. 102(e); Reference 2: U.S. Patent No. 6,574,603 to Dickson et

to a priority date of December 23, 1998.

Claims 1-24 of the 498 patent should be cancelled as unpatentable on the

18 are unpatentable under 35 U.S.C. 103(a) based on Maekawa in view of Dickson

VI. THE 498 PATENT

A. Background & Overview of the 498 Patent

application) and is directed to a technique for communicating information,

including advertising information, with automobiles. (Ex. 1001 at 1:23-25.)

vehicle capable of communicating with remote servers through a communications

to view services or product providers (e.g., restaurants, gas stations, department

called tags) representing location of restaurants around the vehicles current

(NAVIGATE) and the restaurant menu (RESTAURANT MENU). (Id. at 16:3-

and place a corresponding order by selecting an ORDER key. (Id. at 16:28-41,

During prosecution, and in response to a number of Office Actions, Patent

consideration of the reference by the examiner during prosecution, as the reference

limitations of allowed claim 61.)

Here, Petitioner presents Maekawa and Dickson in a new light never

placing orders with product/services providers based on location sensing instruments

VII. CLAIM CONSTRUCTION

A claim subject to inter partes review receives the broadest reasonable

construction in light of the specification of the patent in which it appears. 37 C.F.R.

42.100(b). Throughout this Petition, as required by the rules governing it,

Petitioner applies the broadest reasonable interpretation (BRI) of claim terms

construction is not explicitly discussed. Claim constructions appropriate for these

proceedings may be different than claim constructions appropriate in a federal

Claims 5 and 17 recite that the descriptions of the products or services

construed as a representation reflecting a previous order of a product or service.

The plain language of claims 5 and 17 requires that the descriptions of

products or services previously ordered are presented in a certain manner that

representation of the descriptions of products or services is selected such that the

Thus, a representation reflecting a previous order of a product or service is

proceeding, Petitioner interprets this phrase as the descriptions including

descriptions of products or services previously ordered.

person of ordinary skill in the art.4

LEXIS 10082 at 12, 20. For a computer-implemented means-plus-function claim