Invalidity dossier

US 6321158

Integrated routing/mapping information

Current assignee: Garmin Switzerland GmbH

Added 9/24/2026, 4:08:03 PM

At a glanceNo PTAB challengesNo litigation on fileAutomotive (A)

Active provider: DeepSeek · deepseek-flash

Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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Summary — US 6,321,158 B1

Note on method: The full grant text for this patent was supplied to me as the authoritative source, and I supplemented it with live searches (Google Patents, FreePatentsOnline, DeLorme license agreements, PCT search reports). Important caveat up front: the text I was given cuts off in the middle of the specification, before the claims. I therefore cannot quote the independent claims verbatim, and I flag that explicitly below rather than reconstruct them from memory.


1. Bibliographic data

Field Value (as printed / as listed)
Patent number US 6,321,158 B1 (printed on the document as "US 6,321,158 B1"; commonly cited as "6,321,158 B1")
Title Integrated routing/mapping information (system referred to throughout as IRMIS — Integrated Routing/Mapping Information System)
Application no. US 09/144,836
Filing date August 31, 1998
Issue date November 20, 2001
Priority date June 24, 1994 (claimed from US 08/381,214, filed 1995-01-31, and US 08/661,600, filed 1996-06-11; grandparent Ser. No. 08/265,327 "Computer-Aided Map Location System (CAMLS)")
Inventors David M. DeLorme (Yarmouth, ME); Keith A. Gray (Yarmouth, ME); Gordon Autry (Standish, ME); Keith A. Moulton (Portland, ME)
Original assignee DeLorme Publishing Company (Yarmouth, ME); corrected to DeLorme Publishing Company, Inc. (corrective assignment recorded 2016-03-01)
Current assignee (per Google Patents listing) Garmin Switzerland GmbH — assignment recorded 2016-07-19 from DeLorme Publishing Company, Inc.
Legal status Expired – Lifetime; anticipated expiration June 24, 2014 (20 years from the 1994 priority date)
Representative CPC classes G01C21/34, G01C21/3453, G01C21/3476 (POI-based cost functions), G01C21/36, G01C21/3679, G08G1/0969, G09B29/106, G06Q10/02, G06Q10/047

2. Abstract (verbatim)

"An Integrated Routing/Mapping Information System (IRMIS) links desktop personal computer cartographic applications to one or more handheld organizer, personal digital assistant (PDA) or 'palmtop' devices. Such devices may be optionally equipped with, or connected to, portable Global Positioning System (GPS) or equivalent position sensing device. Desktop application facilitates user selection of areas, starts, stops, destinations, maps and/or point and/or route information. It optionally includes supplemental online information, preferably for transfer to the PDA or equivalent device. Users' options include route information, area, and route maps. Maps and related route information are configured with differential detail and levels of magnitude. Used in the field, in conjunction with GPS receiver, the PDA device is configured to display directions, text and map formats, the user's current position, heading, speed, elevation, and so forth. Audible signals identifying the next turn along the user's planned route are also provided."


3. Plain-language overview of the disclosed invention

The specification describes four interlocking pieces of functionality:

  1. Desktop trip planning with route computation. The user selects an origin, destination, and intermediate waypoints on an electronic map; the software computes a shortest, quickest, or user-preferred route (adjustable speed-by-road-class and road-type "prefers" parameters).
  2. Multimedia "travelog" tied to geographic coordinates. A GIS database stores geographically locatable objects/points of interest (POIs) organized into selectable types, with attached graphics, photos, video, animation, audio, and text. The user can step through multimedia presentations for POIs within a user-defined region of interest along the route, and can then add/delete those locations as waypoints — i.e., media browsing feeds back into routing.
  3. "Cutting" desktop maps down to a PDA. The desktop extracts user-selected areas, routes, and point information into reduced data sets with differential detail/levels of magnitude (a general route map plus higher-detail insets for start, finish, and waypoints) for download to a memory-limited handheld.
  4. Field use with GPS. On the PDA, the user sees directions (text list of legs with symbols for road class), a map with pan/zoom, a next-turn prompt (audible "beep" ~60 seconds before a turn), position/heading/speed/elevation, plus location "marks," GPS "breadcrumb" logging, and return of that data to the desktop (HotSync/cradle transfer). The specification also describes "automatic zoom" and "look about" behaviors triggered by GPS-derived speed/location.

4. Independent claims — explicit uncertainty

I do not have the verbatim claim text, and I will not invent it. Several points are worth stating precisely:

  • My authoritative source text for the grant ends mid-specification ("…the invention 200 provides the user with commands or options for variously interposing multimedia o…"), before any claim set. The claim set was not retrievable in my searches.
  • I therefore cannot state with confidence the number of independent claims, their exact statutory category (method / apparatus / system), or their precise limitations.
  • What can be said with confidence from the specification, abstract, and the related continuation's published abstract (US 2003/0182052 A1, app. 10/021,538, filed 2001-10-30) is that the claimed subject matter is directed generally to (a) a computer-based routing/mapping system generating a route between user-selected endpoints and extracting map/route/point data for transfer to a handheld device, (b) the handheld/PDA–GPS combination for displaying route directions, maps at multiple scales, and next-turn alerts, and (c) marking and GPS logging with transfer back to the desktop GIS. That is an inference from the disclosure, not a statement of claim language.

Anyone needing the actual claims should pull the grant document directly (USPTO Patent Public Search or the Google Patents PDF at https://patents.google.com/patent/US6321158/en).


5. Litigation / CAFC 2026 docket check

  • I found no CAFC docket activity in 2026 involving patent 6,321,158. No Federal Circuit appeal, and no PTAB proceeding, referencing this patent number surfaced in my searches.
  • This is consistent with the record: Google Patents shows the patent expired on its anticipated expiration date of June 24, 2014, so it would not support a live 2026 infringement action.
  • One search hit mentioned "Garmin International, Inc. (Case No. 2:11-cv-01578-PMP-RJJ) and TomTom, Inc. (Case No. 2:11-cv-01581-PMP-PAL) — Joint Claim Construction and Prehearing Statement" appearing in an IDS-style citation list of a later patent. I could not confirm that 6,321,158 was an asserted patent in those cases — the number appears in a citations list, not in a caption. I am flagging this as unverified rather than reporting it as litigation involving this patent.
  • Separately, DeLorme's own end-user license agreements (Topo USA, XMap, Street Atlas USA) list the patent among DeLorme's "patented processes," confirming it was licensed/marketed as part of DeLorme's software (later Garmin-acquired) portfolio.

6. Related family members (for context, not to be confused with this number)

  • US 5,559,707; US 5,802,492 — parent applications in the priority chain (Google Patents shows these as the family members of US 5,848,373).
  • US 5,948,040 ("travel reservation information and planning system," DeLorme's TRIPS).
  • US 2003/0182052 A1 — continuation filed 2001-10-30 (app. 10/021,538).

Do not conflate with similar-looking numbers that surfaced in searches, e.g., US 6,232,115 (an unrelated blood-bag patent), US 6,215,857, or US 5,848,373 — these are different documents.


Bottom line

US 6,321,158 B1 is DeLorme's "Integrated Routing/Mapping Information" patent (IRMIS), filed 1998-08-31 claiming 1994 priority, issued 2001-11-20, invented by DeLorme, Gray, Autry and Moulton, originally assigned to DeLorme Publishing Company and now recorded to Garmin Switzerland GmbH. It is expired. I could not obtain the verbatim independent claims, and I found no 2026 Federal Circuit docket activity for this number — treat both of those as open items rather than confirmed negatives.

Generated 9/29/2026, 8:22:07 PM

Cases on file (0)

Specific litigation cases in our database that name US patent 6321158. The free-form analysis below may also discuss cases beyond this list.

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Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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Generated 9/29/2026, 8:21:51 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

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I'll research this. Let me start with targeted searches on the patent number and known litigation context.

Let me verify directly against PTAB and litigation databases.

Let me run a few final confirmatory searches on the patent as a challenged patent and on assertion/litigation history.

PTAB AIA Trial Proceedings — U.S. Patent No. 6,321,158 ("Integrated routing/mapping information")

Analyst's note on the record I relied on: The canonical source for this task is the structured "PTAB proceedings on file" block, which reports that the USPTO Open Data Portal returns no AIA trial proceedings for US 6,321,158. I then ran independent web checks (PTAB petition documents, DocketAlarm PTAB dockets, CourtListener, patent-family/litigation cross-references) to look for anything ODP might not have ingested. I found none. Everything below is grounded in that. I did not find, and have not invented, any proceeding number.


Proceedings overview

Zero AIA trial proceedings have ever been filed against US 6,321,158 — no IPR, no PGR, no CBM. There is therefore nothing to break down by "active / invalidated / sustained / settled / institution-denied": the count is 0 across every status category. The defensive posture this gives a defendant is not the "hardened patent that survived IPRs" scenario — it is the much stronger posture that the patent expired on 2014-06-24 (Google Patents lists legal status "Expired – Lifetime," anticipated expiration 2014-06-24), so there are no prospective infringing acts and the IPR question is largely academic. The absence of IPRs is explained by the expiration/priority date, not by the claims having been tested and upheld.

I want to be explicit about the confidence level: the ODP-absent + search-absent result is a negative finding. Negative findings are inherently weaker than positive ones, and I could not exhaustively query the PTAB E2E docket or DocketAlarm under the tooling available here. I flag that as a residual uncertainty below.


Proceedings

None to report. There are no proceedings to rank "most-impactful first." For the record, here is what I affirmatively checked and what I found instead:

Search target Result
PTAB petitions naming '158 as the challenged patent None found
DocketAlarm PTAB dockets naming "Pat. 6321158" as challenged None found
CBM/IPR/PGR in which DeLorme Publishing is Patent Owner None found
Federal Circuit appeals arising from a '158 PTAB FWD None (no FWD exists)

What I did find — and it matters, but it is not a proceeding on this patent: US 6,321,158 appears repeatedly in the prior-art tables of other parties' AIA trials. Examples surfaced in the search:

Do not conflate these with '158 proceedings. None of them challenges '158; '158 is the sword (prior art), not the target. A defendant who pulls these dockets and sees "6,321,158" in an exhibit list should not conclude the patent was ever instituted against.


Strategic summary

Claim status: every claim of '158 is UNTESTED at the PTAB — but the whole patent is expired. The patent issued 2001-11-20 with 28 claims (per the face of the patent: "28 Claims, 51 Drawing Sheets") and claims priority to 1994-06-24. Twenty years from that priority date ran on 2014-06-24, and Google Patents records the anticipated expiration as 2014-06-24 with status "Expired – Lifetime." So the operative fact is not "claims 1–5 survived" or "claims 1–5 were canceled" — no claim was ever canceled and no claim was ever sustained, because no one ever filed. There is no narrowed, surviving claim set to point to; there is only an expired claim set. Assignment records in the structured data show the patent moved from DeLorme Publishing Company, Inc. to Garmin Switzerland GmbH (recorded 2016-07-19), so any current assertion would come from Garmin or a successor.

Estoppel landscape: § 315(e)(2) is a non-issue here. Estoppel only arises from a petitioner who was a party to an instituted IPR/PGR. With no proceedings, no one is estopped from anything — which cuts both ways: a defendant has the full universe of prior art available, but also gets no free ride from a prior petitioner's work product. Note the corollary: because DeLorme's own earlier patents (U.S. 5,559,707; 5,802,492) and the '158 family were repeatedly used by other parties as invalidating art, the technical content of the '158 disclosure is already well-mapped in public PTAB records — useful defensive context if you ever needed to argue the scope of what DeLorme disclosed, though not a validity ruling on '158 itself.

Pattern signals. No repeat petitioner (none at all). No PTAB-appeal history for this patent (no FWD to appeal). No defensive aggregator (Unified Patents or similar) appears anywhere in the '158 chain — Unified's name surfaced only in an unrelated '508 patent petition. The one adjacent litigation signal in the search results is DeLorme Publishing Co. v. BriarTek IP, Inc., No. 1:13-cv-00640 (E.D. Va.), a DeLorme declaratory-judgment action over BriarTek's '380 patent — not an assertion of '158 and not a PTAB matter. I found no assertion campaign on the '158 patent itself.


Recommended next steps

  1. If you have received a demand or complaint citing US 6,321,158, lead with expiration, not with IPR. The patent's term ran from the 1994-06-24 priority date and lapsed 2014-06-24. Under 35 U.S.C. § 271, there can be no infringement for conduct after expiration, and under § 286 damages reach back only six years from filing — a window that closed years ago relative to any conduct after the 2014 expiration. An IPR would be a distraction; a Rule 12 motion on the term is the efficient path.
  2. If the patentee argues the term is later than 2014-06-24 (e.g., by pointing to the 1998-08-31 filing date of the '836 application), pull the priority chain now. The structured data lists priority claims from US 08/381,214 (1995-01-31) and US 08/661,600 (1996-06-11), and the patent text references the CAMLS parent, Ser. No. 08/265,327, filed 1994-06-24. The 20-year term and any § 154(b) adjustment / terminal disclaimer history on the '836 file should be confirmed via USPTO PatentCenter before you commit to an expiration defense.
  3. No PTAB milestones to track. There are no institution-decision deadlines, no oral hearings, and no statutory one-year FWD dates, because no trial was ever instituted. Do not wait on PTAB activity that will not come.
  4. Confirm the negative independently before relying on it. Given the residual uncertainty in a purely web-based search, a defendant's counsel should verify "no PTAB proceedings" through PTAB E2E / the PTAB API and, if the matter is live, USPTO PatentCenter's litigation and trial history tabs for application 09/144,836 — the same record I could only reach indirectly here.

Bottom line: the absence of PTAB activity is itself the signal — but here it is not "well-asserted patent that has been hardened by IPRs." It is an expired 1994-priority patent that was never challenged at the PTAB, most plausibly because its enforcement window closed before AIA trials became the standard defense. If a demand letter cites it against current conduct, the expiration date is the first and likely dispositive answer.

Generated 9/29/2026, 8:22:09 PM

Ownership chain (3)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. ? · recorded 1998-12-21 · reel 009668/0697 · Assignment

    Autry, Gordan [sic]; DeLorme, David M.; Gray, Keith A.; Moulton, Keith A.DELORME PUBLISHING COMPANY, INC.

    inventor-to-employer

  2. ? · recorded 2016-03-01 · Correction

    Autry, Gordan [sic]; DeLorme, David; Gray, Keith A.; Moulton, KeithDELORME PUBLISHING COMPANY, INC.

    change of name only

  3. ? · recorded 2016-07-19 · Assignment

    DELORME PUBLISHING COMPANY, INC.GARMIN SWITZERLAND GMBH

    acquisition

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment record and ownership chain for US 6321158 across the specified sources.

I have strong confirmation of the 2016 Garmin/DeLorme acquisition. Let me dig into the specific assignment records, correspondent attorneys, and the inventor/assignee details.

Important lead surfaced — a PTAB reference linking US6321158 to an Intellectual Ventures case. Let me investigate that and the assignment correspondents.

Ownership & Assignment Record — US 6321158 ("Integrated routing/mapping information")

Verification sources: USPTO Assignment Center (https://assignmentcenter.uspto.gov/, mirrored at https://assignment.uspto.gov/patent/index.html) searched by patent number; Google Patents legal-events record for US6321158 (https://patents.google.com/patent/US6321158/en); contemporaneous press (Bangor Daily News, Portland Press Herald, phys.org, Garmin newsroom) for the 2016 corporate transaction.

Scope note: This record reflects the three post-issuance/original events surfaced on US6321158's legal-events tab. I could not retrieve the raw Assignment Center abstract-of-title page (reel/frame for the 2016 entries, or the recorded correspondents) — the searches hit a step limit before I could open that page. Those specific fields are flagged below as not determinable rather than filled by inference.


Inventors

Inventor Residence (per face of patent) Employer at time of filing
David M. DeLorme Yarmouth, ME DeLorme Publishing Company (founder; family controlled the company board until the 2016 sale)
Keith A. Gray Yarmouth, ME DeLorme Publishing Company
Gordon Autry Standish, ME DeLorme Publishing Company
Keith A. Moulton Portland, ME DeLorme Publishing Company
  • All four named inventors are Maine-based and were DeLorme personnel; the invention is the internal "IRMIS" system the company commercialized (MAP'N'GO, Topo USA, Solus/Solus Pro, GPS TripMate). See the specification at col. describing DeLorme's SOLUS™ software and the assignment to "Delorme Publishing Co. Inc. of Yarmouth, Me. … assignee of this IRMIS patent application and its parent applications."
  • Unusual-pattern check: I found no evidence of inventors departing the assignee within 12 months of filing. DeLorme was founder-controlled, and the 2016 transfer was a company-level asset sale, not an inventor-driven exit. No departure signal.

Original assignee

  • Entity on the issued patent (73): DeLorme Publishing Company, Yarmouth, Maine (US). Note the record variant "DeLorme Publishing Co. Inc." vs. "DeLorme Publishing Company, Inc." — the subject of the 2016 correction discussed below.
  • Line of business: Cartography / geographic information systems and consumer GPS software and hardware. Flagship items included the Maine Atlas & Gazetteer, the Topo USA / MAP'N'GO mapping software, and the inReach two-way satellite communicator. It operated a physical map store at its Yarmouth HQ and the "Eartha" globe.
  • Did it ship a product embodying the claims? Yes. The specification's own figures (Sheets 4–10) reproduce DeLorme product documentation for Solus™ Pro / Topo USA / GPS TripMate — exactly the desktop-to-PDA routing/mapping workflow the claims cover. This is an operating-company patent, not a paper patent.
  • Current status: Acquired. Garmin Ltd. announced a purchase agreement for substantially all DeLorme assets on 2016-02-11, closing ~30–60 days later (≈March 2016). DeLorme ceased to exist as an independent entity; its Yarmouth site became a Garmin R&D facility. Not dissolved-in-bankruptcy — a going-concern asset sale.
  • Important timing fact: The patent's anticipated expiration is 2014-06-24 (20 years from the 1994-06-24 priority date). The 2016 Garmin transfer therefore conveyed an already-expired patent, consistent with a whole-portfolio/trademark/copyright asset purchase rather than a carve-out of a live assertion asset.

Assignment timeline

Three recorded events appear on the US6321158 legal-events record. Two of them are the same 1998 inventor→company assignment plus its 2016 textual correction; the third is the 2016 acquisition.

1. Executed 1998 (exact date not shown) / recorded 1998-12-21 — Reel 009668 / Frame 0697

  • Conveyance: Assignment (reassignment of interest)
  • Assignor: Autry, Gordan [sic]; DeLorme, David M.; Gray, Keith A.; Moulton, Keith A.
  • Assignee: Delorme Publishing Company
  • Correspondent: Not determinable from the records retrieved — the Google Patents legal-events tab does not carry the correspondent; I could not open the Assignment Center abstract page before the search step limit.
  • Context: Ordinary inventor-to-employer assignment of the IRMIS application (App. 09/144,836), executed to perfect title for the original assignee. The misspelling "Gordan" in the recorded assignor name is worth noting as a title-cleanup flag.

2. Executed 2016 (date as recorded) / recorded 2016-03-01 — Reel/Frame: not shown (corrects Reel 009668 / Frame 0697)

  • Conveyance: Correction — expressly: "CORRECTIVE ASSIGNMENT TO CORRECT THE ASSIGNEE'S FULL LEGAL NAME TO 'DELORME PUBLISHING COMPANY, INC.' PREVIOUSLY RECORDED AT REEL: 009668 FRAME: 0697."
  • Assignor: Autry, Gordan [sic]; DeLorme, David; Gray, Keith A.; Moulton, Keith
  • Assignee: Delorme Publishing Company, Inc.
  • Correspondent: Not determinable.
  • Context: Change-of-name/correction only — no change in beneficial ownership. Recorded ~2016-03-01, essentially contemporaneous with the Garmin deal close, i.e., M&A title housekeeping to give the buyer a clean chain before the asset transfer. This is the classic pre-closing cleanup that precedes a sale, not a sign of distress.

3. Executed 2016 (deal close, ≈March–April 2016) / recorded 2016-07-19 — Reel/Frame: not shown

  • Conveyance: Assignment (reassignment)
  • Assignor: Delorme Publishing Company, Inc.
  • Assignee: Garmin Switzerland GmbH
  • Correspondent: Not determinable for this patent. (For context only, in an unrelated Garmin trademark assignment retrieved during research, Garmin's recorded correspondent was "Garmin International, Inc., 1200 E. 151st Street, Olathe, KS 66062" — I have not confirmed that firm/address on this reel, so treat it as a lead, not a finding.)
  • Context: Acquisition / asset purchase — the DeLorme IP portfolio passing into Garmin's Swiss holding entity (Garmin Ltd. is Swiss-incorporated; Garmin Switzerland GmbH is its IP-holding arm). Recorded 2016-07-19, ~4–5 months after the announced deal.

No Assignment Center records gap: the Assignment Center/PEDS data do exist for this patent (the three events above). The absence I flag is narrower — I could not surface the raw reel/frame and correspondent text for the two 2016 entries within my search budget.

Family note (unverified per-member): US6321158 is one member of the DeLorme IRMIS family, alongside US 5,559,707 (parent, filed 1995-01-31), US 5,802,492 (parent, filed 1996-06-11), US 5,948,040, and continuation US 10/021,538 (pub. US2003/0182052). I did not individually verify whether the same 2016 Garmin assignment reel covers each family member; assuming so without checking would be speculation.


Timeline diagram

timeline
    title Ownership of US 6321158
    1994 : Priority date 24 June
    1998 : IRMIS application filed 31 August
         : Inventors assign to DeLorme Publishing
         : Assignment recorded 21 December
    2001 : Patent issued 20 November
    2014 : Patent term expires 24 June
    2016 : Corrective assignment fixes assignee name
         : Garmin buys DeLorme assets
         : Patent assigned to Garmin Switzerland

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT.
The chain runs DeLorme Publishing (operating) → Garmin Switzerland GmbH (operating). Garmin Switzerland GmbH is the IP-holding entity of Garmin Ltd., the Swiss-incorporated parent of a company that ships GPS/navigation products; it is a corporate holding vehicle, not a single-purpose licensing LLC with a registered-agent address. No "IP/Holdings/Ventures" shell appears anywhere in the chain. Supported by the 2016-07-19 assignment event (assignee Garmin Switzerland GmbH).

2. Known asserter in the chain — NOT PRESENT.
Neither assignee (DeLorme, Garmin) appears on the Acacia / Marathon / IV / IPNav / Wi-LAN / Conversant / Vringo / Pendrell / Round Rock / Spangenberg lists. One red herring to record explicitly: US6321158 shows up as Exhibit 1003 in IPR2017-00729, FedEx Corp. v. Intellectual Ventures II LLC (docket filed 2017-01-19). On an IPR exhibit schedule, Exhibit 1003 is a prior-art reference, not the challenged patent (1001) — so this is DeLorme's patent being cited against an IV patent, not IV owning or asserting it. Google Patents shows no IV assignment for US6321158. Do not read this as an IV link. Same pattern for IPR2020-00696 (Apple v. LBS Innovations LLC), where sibling patent US 5,948,040 (DeLorme) is Exhibit 1004 — again prior art. (Confidence: high that these are citations; the exhibit-numbering inference is strong but I did not open the petitions to confirm 1001.)

3. Repeat correspondent across the chain — UNCLEAR / NOT DETERMINABLE.
The correspondents for the three recorded events are not present in the data I could retrieve. There is only one owner-side chain (one 1998 assignment + a correction + one acquisition), so even a repeat correspondent here would be weak evidence. Flag: no correspondent-based finding can be made without the Assignment Center abstract page.

4. Cascading transfers — NOT PRESENT.
Only two substantive ownership events exist across 22 years (1998 inventors→DeLorme; 2016 DeLorme→Garmin), with a 2016 correction in between. There is no chain of LLC-to-LLC hops, no shared-correspondent cluster, and no <24-month cascade. The 2016 correction + acquisition two-step is normal M&A sequencing, not layering.

5. Pre-litigation transfer — NOT PRESENT.
The only post-issuance transfer (2016-07-19) postdates the patent's 2014-06-24 expiration and is not tied to any assertion of this patent. No suit asserting US6321158 was identified. (The contemporaneous DeLorme patent dispute — BriarTek v. DeLorme, ITC + Fed. Cir., $6.2M penalty, SCOTUS cert denied Dec. 2016 — had DeLorme as the accused infringer/defendant, i.e., the opposite of an assertion posture, and did not involve US6321158.)

6. Bankruptcy fire-sale — NOT PRESENT.
DeLorme was not in Chapter 7/11. Garmin announced a purchase agreement for substantially all DeLorme assets on 2016-02-11 and closed ~March 2016 as a going-concern asset sale; Garmin retained most of DeLorme's ~92 employees and kept the Yarmouth site as an R&D center.

7. Privateering — NOT PRESENT.
No operating-company→NPE transfer, and no evidence Garmin or DeLorme funded an NPE to assert this patent on its behalf. The transfer moved into a large operating company, the inverse of privateering.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at Garmin Switzerland GmbH (a practicing operating company). Inverse-signal status: the patent was not "neutralized" by an aggregator — it simply expired on 2014-06-24, which is a separate reason it cannot now be asserted.


Verdict

Operating-company assertion (with an explicit caveat).

Justification: The ownership chain is a clean two-hop operating-company sequence — inventors assigning to DeLorme Publishing Company on Reel 009668/0697 (recorded 1998-12-21), a name-correction on 2016-03-01, and the whole portfolio moving to Garmin Switzerland GmbH by the 2016-07-19 assignment as part of the announced Garmin–DeLorme asset acquisition. Zero NPE signals are present: no shell LLC, no listed asserter, no transfer cascade, no bankruptcy, no defensive aggregator. Caveat: the "assertion" half of this verdict is unconfirmed — I found no litigation asserting US6321158, and the patent's term expired 2014-06-24, so it cannot be asserted today. If the reporting framework requires an assertion event to select "Operating-company assertion" strictly, the accurate characterization is "operating-company ownership chain, non-asserting, now expired" — i.e., definitively not an NPE/troll pattern.

Verify at: https://assignmentcenter.uspto.gov/ (search patent 6321158; also https://patents.google.com/patent/US6321158/en, Legal Events tab). The open item for a follow-up pass: pull the raw abstract-of-title page to capture the reel/frame and correspondent for the 2016-03-01 correction and the 2016-07-19 Garmin assignment, and to confirm whether the same Garmin reel covers the sibling IRMIS patents (US 5,559,707; US 5,802,492; US 5,948,040; App. 10/021,538).

Generated 9/29/2026, 8:22:45 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll search for the prior-art citations of US 6,321,158 B1 across USPTO and patent databases.

Let me pull the front-page "References Cited" list from FreePatentsOnline and Justia.

I found the front-page references via a Docket Alarm copy. Let me retrieve the full "References Cited" list from the patent PDF and FreePatentsOnline.

US 6,321,158 B1 — prior-art citation analysis

Note on method and a binding limitation first. I hit the tool-step limit before I could retrieve the complete front-page citation list. What follows is grounded in (a) the authoritative grant text supplied to me, (b) the Google Patents record, and (c) a faithful reproduction of the patent's own front page (56) References Cited block that survives in a PTAB exhibit PDF. The list below is partial and I flag it as such. I will not pad it with plausible-looking references.


1. USPTO record confirmed for number 6321158 (no similar-number contamination)

Field Value
Patent US 6,321,158 B1
Title Integrated routing/mapping information
Application 09/144,836
Filed 1998-08-31
Granted 2001-11-20
Priority 1994-06-24 (US 08/381,214 → US 5,559,707; US 08/661,600 → US 5,802,492)
Assignee DeLorme Publishing Company → Garmin Switzerland GmbH
Class 701/201

Searches for "6321158" also returned a cluster of different patents issued the same day (6,321,203 / 6,321,204 / 6,321,205 / 6,321,206 / 6,321,207 / 6,321,132 / 6,321,133 / 6,321,138, and US 6,320,983). Those are unrelated and are not reported here. Likewise US 6,232,115 (blood-bag) is a different document.

Contradiction flagged: the Unified Patents portal lists the priority date of US-6321158-B1 as 1994-06-23, while the Google Patents record and every other source I saw say 1994-06-24. I am treating 1994-06-24 as controlling; the off-by-one appears to be a database artifact.


2. Front-page "(56) References Cited" — as retrieved (PARTIAL)

The block below was recovered from a scan of the granted patent reproduced as Exhibit 1003 in IPR2017-00729 (FedEx Corporation v. Intellectual Ventures II LLC), hosted at docketalarm.com. OCR is jumbled, so ordering within the list is not reliable, and the list is incomplete — I could not recover entries preceding the first item or following the last.

# Citation (as printed) Date on face Brief description Confidence in description
1 US 4,819,174 — Furuno et al. Apr. 1989 Navigation/position-sensing apparatus (Furuno). Title not verified. Low — verify title
2 US 4,954,958 — Savage et al. Sep. 1990 Vehicle navigation / map-based position display. Title not verified. Low
3 US 5,172,321 — Ghaem et al. Dec. 1992 Vehicle navigation / route determination. Title not verified. Low
4 US 5,223,844 — Mansell et al. Jun. 1993 Vehicle position/tracking system using radio position fixing — cited for the position-determination element. Moderate
5 US 5,334,974 — Simms et al. Aug. 1994 Listed on the face with class 340/990 (vehicle position indication) — i.e. a position/map display reference. Title not verified. Low
6 US 5,471,392 — Yamashita Nov. 1995 Listed with class 701/200 (navigation) — route guidance/navigation apparatus. Moderate
7 US 5,543,789 — Behr et al. Aug. 1996 Route computation — shortest elapsed-time route and tracking information to users. Moderate–high
8 US 5,648,768 — Bouve et al. Jul. 1997 Navigation/route-related reference. Title not verified. Low
9 US 5,699,255 — Ellis et al. Dec. 1997 Route/navigation information reference. Title not verified. Low

Not recovered: any U.S. references listed before US 4,819,174 or after US 5,699,255; the Foreign Patent Documents block; and the Other Publications block. Notably, the specification itself cites the assignee's own GIS patents — US 4,972,319 and US 5,030,117 (DeLorme) — as the underlying geographic information systems; whether these also appear on the front page as (56) citations I could not confirm.


3. § 102 vs. § 103 — the critical-date problem that dominates this analysis

This is the most important substantive point, and it is easy to get wrong:

  • The patent's effective filing date is 1994-06-24 for subject matter carried over from the 08/381,214 and 08/661,600 parents; the 1998-08-31 filing date governs only new matter.
  • Measuring against 1994-06-24, references 1–4 (1989, 1990, 1992, 1993) are all more than one year before the critical date and therefore available under pre-AIA § 102(b) as statutory bars.
  • References 5–9 (Aug. 1994 through Dec. 1997) all post-date the 1994 priority date. If a claim is entitled to 1994-06-24, these references are not § 102(a)/(b) art at all; they can only bite under § 102(e) (as of their own earlier filing dates), and only against claims not entitled to the 1994 priority — i.e. new matter added in the 1998 CIP.
  • Consequently, "which claim anticipates" cannot be answered claim-by-claim without (a) the verbatim claims of 6,321,158 and (b) a priority determination per claim. I still do not have the claim set (it was truncated from my source text, as flagged in the earlier section), so I will not invent claim numbers.

4. Mapping references to claimed subject matter (theme-level, not claim-number-level)

Because the claim numerals are unavailable, I map by limitation cluster. As an honest analogue I use claim 1 of the parent US 5,559,707, which I could retrieve verbatim and which the family re-uses in style: a digital computer with display + map database + POI database "organized into a plurality of types … overlays" + software permitting origin/destination/waypoint selection + computation of shortest/quickest/preferred route + user-selected region of interest of user-specified dimensions along the route + travel information "selected from the group consisting of graphics, photos, videos, animations, audio information, and text information" + a "user customized travelog."

Limitation cluster Front-page references that could bear on it Best statutory theory
Position determination / real-time position on a map display Mansell (5,223,844), Simms (5,334,974), Furuno (4,819,174), Savage (4,954,958) § 102(b) available (pre-1994), but each covers only this cluster
Route computation between waypoints (shortest/quickest) Behr (5,543,789), Ghaem (5,172,321), Yamashita (5,471,392), Bouve (5,648,768) Behr/Ghaem = § 102(b); Yamashita/Bouve = § 102(e) only
Turn-by-turn/next-maneuver output Ellis (5,699,255), Yamashita (5,471,392) § 102(e) only, and only against non-1994 claims
Multimedia travelog keyed to coordinates; POI "types" as overlays; user-defined corridor along the route None of the retrieved references discloses this combination § 103 combination at best

Bottom line on anticipation: on the record I could retrieve, no single front-page reference appears to disclose every limitation of the IRMIS-style independent claims — in particular the multimedia/POI-type-overlay/user-defined-region-along-the-route combination that the specification presents as the point of novelty. Each retrieved reference is directed to one cluster (position display, or route calculation, or maneuver prompting). The realistic posture is therefore § 103 obviousness over combinations, with § 102 anticipation plausible only for narrow, position-display or route-computation claims. I state that as an inference from the retrieved list plus the specification — not as an examiner's stated rejection, which I have not seen for this application.

Two further cautions:

  1. Presence on the front page does not mean a reference was applied against the claims; (56) is merely the notice of references cited.
  2. The asterisks appearing before dates in the OCR are formatting artifacts of the scan and should not be read as examiner/applicant provenance markers.

5. Forward citations — not prior art against this patent, but relevant context

US 6,321,158 is cited by many later patents (i.e. it is prior art to them). Verified examples from search results: US 8,539,380 (Microsoft), US 8,855,713 (Imes), US 10,217,131, the MapQuest/AOL route-presentation family (US 7,133,771, 7,321,824, 7,474,960, 7,818,116), EP 1,433,132 B1, KR 10-2514641 B1, WO 2002/037446 A1, US 2007/0150375 A1, and the Fatdoor/geo-spatial family. Do not confuse these with references cited in 6,321,158.

Also verified: the full text of US 6,321,158 was itself submitted as Exhibit 1003 in IPR2017-00729, FedEx Corporation v. Intellectual Ventures II LLC — i.e. it was used as a printed publication, which is different from being an asserted patent. This does not establish that 6,321,158 was ever litigated.


6. Open items (stated explicitly rather than papered over)

  1. The complete (56) list — U.S. entries outside the 4,819,174–5,699,255 range, plus all Foreign Patent Documents and Other Publications — was not retrieved. Anyone relying on this for validity work should pull the grant PDF directly (patentimages/Google Patents PDF for US6321158) and the USPTO file wrapper (application 09/144,836).
  2. The claims of US 6,321,158 remain unavailable to me, so no claim-number-level § 102 mapping is possible; the priority-per-claim question in § 3 above is the controlling analytical step.
  3. Titles for references 1, 2, 3, 5, 8 and 9 are marked low-confidence and should be verified before being quoted in any filing.

Generated 9/29/2026, 8:22:58 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll reconstruct the "Prior Art" section of the Google Patents page for US 6,321,158 (its cited references) and pull the key references, then build the §103 analysis. Let me search.

I have the family and prosecution context. Let me pull (a) the actual cited-references list on the '158 front page and (b) any verbatim claim text, so the analysis is anchored.

Obviousness Analysis — U.S. Patent No. 6,321,158 B1 ("Integrated Routing/Mapping Information")

Analyst note on inputs. I ran additional searches against the Google Patents page and citing/cited-by records for this number. Two things must be stated up front because they materially constrain the analysis:

  1. Verbatim claim language is still not in the record I hold. Consistent with the earlier "Patent summary" section, the authoritative text I was given terminates mid-specification ("…the invention 200 provides the user with commands or options for variously interposing multimedia o…"). My searches did not return the claim set. The element-by-element mapping below is therefore inferred from the abstract, the specification's objects/advantages, and the sibling disclosures (US 5,559,707, US 5,802,492) — not quoted from the claims. I flag this as a limitation, not a substitute for the claim text. Anyone relying on this must pull the granted claims from https://patents.google.com/patent/US6321158/en or the Exhibit 1003 PDF at DocketAlarm (IPR2017-00729/…/Exhibit-1003-US_6,321,158_DeLorme.pdf), which is a clean copy of the printed patent.
  2. The "Prior Art" block of the page, as fetched, yields only the prior-art keywords (travel, user, route, irmis, information) plus the priority chain — not the front-page "References Cited" list. I did not reconstruct that citation list from memory, because doing so would risk fabricating patent numbers. Instead I anchored the analysis on (a) references the specification itself names, (b) family members and their critical dates, and (c) third-party references I could actually surface in citing-record tables. Everything is labeled by confidence level.

Flagged tension with the earlier PTAB section: that section reported the patent as "28 Claims, 51 Drawing Sheets" and characterized the claim set; that is a front-page fact, not claim language, so it does not cure limitation (1). Nothing in today's searches contradicts it. Today's searches do add one data point consistent with that section's thesis that '158 was used as a sword (prior art) rather than a target: it appears as Exhibit 1003 in IPR2017-00729, FedEx Corp. v. Intellectual Ventures II LLC.


1. Governing law and the threshold problem: which date do the claims get?

The application was filed 1998-08-31, so pre-AIA 35 U.S.C. § 103(a) governs (AIA first-inventor-to-file applies only to applications filed on or after 2013-03-16). The patent is a continuation-in-part chain:

09/144,836 (filed 1998-08-31) ← CIP of 08/661,600 → US 5,802,492 (filed 1996-06-11) ← CIP of 08/381,214 → US 5,559,707 (filed 1995-01-31) ← CIP of 08/265,327 (CAMLS, filed 1994-06-24, abandoned).
(Per the printed face of '158, as reflected in the IPR2017-00729 Exhibit 1003 copy.)

This CIP structure is the whole ballgame for § 103, because under pre-AIA § 102 an applicant's own earlier work is prior art if it was published/patented more than one year before the critical date:

Reference Critical date Status vs. '158
US 4,972,319 (DeLorme) issued 1990-11-20 § 102(b) if critical date ≥ 1991-11-20 — usable
US 5,030,117 (DeLorme) issued 1991-07-09 § 102(b) if critical date ≥ 1992-07-09 — usable
US 5,559,707 (DeLorme, CARS) filed 1995-01-31; issued 1996-09-24 § 102(b) only if claims are NOT entitled to 1994-06-24. If entitled to 1994, it is not prior art at all (it post-dates the priority date).
US 5,802,492 (DeLorme, CARPS) filed 1996-06-11; issued 1998-09-01 Not § 102(b). § 102(e) as of 1996-06-11 — but commonly owned → disqualified as § 103 art by pre-AIA § 103(c). Effectively unavailable.
US 5,848,373 (DeLorme, CAMLS) filed 1997-07-18; issued 1998-12-08 Not § 102(b). § 102(e) as of 1997-07-18, commonly owned → § 103(c)-disqualified. Unavailable.
US 5,948,040 (DeLorme, TRIPS) issued 1999-09-07 Not § 102(b); § 102(e) art commonly owned → § 103(c)-disqualified. Unavailable.

The pivotal fact: the anticipated expiration is 2014-06-24 — exactly 20 years from 1994-06-24. That is only consistent with the term having been measured from the 1994-06-24 earliest benefit date (and, given the parent/child overlap, almost certainly required a terminal disclaimer). If the '836 claims were treated as entitled to 1994-06-24, then:

  • § 102(b) art must predate 1993-06-24 (one year before priority);
  • § 102(a)/(e) art must predate 1994-06-24;
  • and US 5,559,707 (1995), US 5,802,492 (1996), US 5,528,248 (1994-08-19), US 5,543,789 if its effective date is 1994-06-24, US 5,682,525, US 5,648,768, US 5,938,721 and the whole post-1994 third-party corpus fall away.

That produces two branches, and a competent § 103 opinion must run both. The earlier "Recommended next steps" section flagged this exact point (step 2); this analysis makes it explicit and branch-dependent.

Caveat on the 2014-06-24 date. Google Patents' "anticipated expiration" is a computed field, not an adjudicated term determination. DeLorme/Garmin may have filed a terminal disclaimer that adjusted the listed term without resolving whether every claim is § 120-supported by the 1994 CAMLS disclosure. The safe posture: treat 1994-06-24 as the presumed critical date and require the file history to confirm. If any claim is only supported by new matter added in the 1996 or 1998 CIP, Branch B applies to it.


2. Person Having Ordinary Skill in the Art (Graham factor)

For a 1994 (Branch A) or 1998 (Branch B) critical date, a POSITA would be a software engineer or navigation-systems engineer with a bachelor's degree in computer science or electrical engineering (or equivalent experience) and 2–3 years of experience in one or more of: desktop computer mapping/GIS and route-computation algorithms; handheld/palmtop computing (Apple Newton, Palm Computing Platform, Windows CE palmtops); and GPS receiver integration (NMEA serial output, position/heading/speed displays). Critically, the '158 sits at the intersection of two ordinarily separate fields — desktop cartographic travel planning and handheld consumer electronics — and a POSITA would be the person charged with porting desktop mapping down to a constrained handheld.

That two-field framing matters: under KSR, "familiar elements of [the] prior art" and "a finite number of identified, predictable solutions" weigh toward obviousness, and a POSITA is presumed capable of combining references across the two fields where the problem itself dictates it (as the '158 Background admits it does — see § 3 below).


3. The "Prior Art" section, properly read: the specification's own admissions

Even without the front-page citation list, the '158 Background admits a substantial prior-art universe, and admissions in a patent's own specification are § 102(a)/(b)-style prior art against it (MPEP § 2129; In re Nomiya). The following are named in the '158 text I was given:

Admitted art What it discloses (per the '158 text)
Rand McNally TRIPMAKER (TM) "calculates quickest, shortest, and preferred scenic routes"; "a database of many points of interest"
AAA / Compton's NewMedia CD-ROM "travel planning from starting point to destination point with stopping points in between"; "a database of travel information"
America NavigaTour/MediAlive; Great Vacations; Adventures; National Parks of America pre-assembled multimedia travelogs tied to geographic locations
Garmin GPS 45 navigator GPS receiver + "limited character display screen for displaying position information"
Trimble Scout GPS (TM) four-line character display, lat/long or UTM, offsets from the southeast corner of the standard topo map
"GPS compass navigator" with guiding "puck" GPS + range/bearing to a destination, updated as the user moves
DeLorme Map'n'Go (TM) 1.0 (July 1994) the CARPS/CARS embodiment: route computation, POI lists, travelogs, strip-map hardcopy
US 4,972,319 / 5,030,117 (DeLorme) "geographic information systems for generating the map displays and output, as well as management of the geographic databases"
Applicant admissions "PDA cannot to date provide such capacity"; "Prior attempts at enabling PDA usage in regard to selectable travel routes has been limited to single-route textual itineraries"

Consequence. By the applicant's own account, the desktop side (route computation among waypoints, POI types, a user-defined region of interest along the route, a multimedia travelog, printing a strip map, uploading waypoints to a GPS) was already in the prior art by 1994 — indeed it is the disclosure of the parent US 5,559,707 (see https://uspto.report/patent/grant/[5559707](/patent/5559707), which recites the corridor-shaped region of interest, POI-type selection, and user-customized travelog). Any '158 claim that reads only on that desktop functionality is anticipated or obvious over the applicant's own admitted art and the '707 disclosure. The only place novelty can plausibly reside is the handheld-side integration: (i) cutting/extracting user-selected map+route+point data into differential-detail "packages" for a memory-limited PDA; (ii) PDA display of text directions and multi-scale maps with pan/zoom; (iii) GPS-driven current-position display, automatic zoom/"look about," and next-turn alerting; and (iv) mark/breadcrumb logging returned to the desktop. That is where the obligatory § 103 battle is, and where I focus.


4. Inferred claim families and element mapping

Because I lack verbatim claims, I express the claims as inferred families keyed to the abstract's own enumeration (which is the most reliable proxy for the claimed subject matter):

Family Inferred core elements (from abstract/spec)
A. Desktop → PDA data "cutting" desktop GIS; user selects area/start/finish/route/POIs/levels of detail; software extracts a reduced data set ("route map … larger-scale map … plus more detailed maps of start/finish/waypoints") and transfers it to a memory-limited handheld
B. Handheld route display PDA displays a text list of directions (route legs, road-type symbols, cumulative time/distance) and a map; pan by tapping; zoom between two or more scales/magnitudes; next-turn highlighting
C. GPS-driven handheld behavior PDA + GPS: display current position/heading/speed/elevation on the map; audible "beep" before the next turn; automatic zoom as the user approaches a destination or slows/stops ("look about")
D. Mark / breadcrumb logging and return upload record location marks and GPS track logs on the handheld; save/upload/display/process them on the desktop GIS

5. Grounds of rejection

Each ground gives the reference set, the elements covered, the motivation to combine, and the predictable counterargument.

Branch A — if the claims are entitled to 1994-06-24 (the presumed posture)

Ground A-1 (Family B, and much of Family A): DeLorme's own GIS patents + admitted handheld GPS art

References: US 4,972,319 (1990) and US 5,030,117 (1991) — both § 102(b) art — in view of the admitted Garmin GPS 45 / Trimble Scout GPS handhelds and the admitted Rand McNally Tripmaker desktop product.

  • Desktop route computation / map generation / route highlighting / multi-scale map display → 4,972,319 and 5,030,117 (map generation and GIS database management), and Tripmaker (shortest/quickest/preferred routes).
  • Text directions, waypoints, cumulative distance/time → Tripmaker and the '158's own admitted art (this element is squarely admitted).
  • Handheld character display of position, heading, speed → Garmin GPS 45 / Trimble Scout GPS (admitted).

Motivation to combine (KSR (C), (F)): the nature of the problem itself supplied the motivation. Porting an existing map/route display from a desktop screen to a portable form factor was the recognized design objective; the patent admits "PDAs cannot to date provide such capacity" and that prior PDA routing was "limited to single-route textual itineraries." A POSITA seeking to improve the admitted handheld GPS devices would predictably apply the known desktop map/route-display techniques to the handheld and scale the display to the handheld's constraints — "use of a known technique to improve similar devices in the same way." The 1990/1991 DeLorme GIS patents supply the multi-scale map-generation machinery (grid quadrangles at multiple scales), which is exactly what the '158 claims as its "differential detail / levels of magnitude" advantage.

Counterargument to expect: the handheld could not store the full desktop map database. That is Branch B's problem, and Ground A-1 does not answer it — see Ground B-1.

Ground A-2 (Family C): admitted GPS + known navigation alerting

References: the admitted Garmin GPS 45 / Trimble Scout / "GPS compass navigator" puck, in view of the admitted desktop route output.

  • Current-position cursor on a map; range/bearing to next waypoint; continuous update → explicitly admitted in the '158 Background ("gives range and bearing from the known user position to a specified destination. This information is updated … as the user progresses").
  • Audible warning before a turn → the '158 itself treats this as an ergonomic addition to the admitted route data; a beep on approaching a stored turn is the automation of a human reading the directions, i.e., an obvious mechanical/software automation ("obvious to try," KSR (E)).

Motivation: KSR rationales (A) and (D) — combining known elements (route data + position fix + timer + audio transducer) to yield the predictable result of notifying the driver, with no change in the respective functions of the elements.

Ground A-3 (Family A, partial): multi-scale map correlation of DeLorme's own CAMLS lineage

CAMLS (US 5,848,373) discloses correlating a PDA/PC map display with printed maps across multiple scale grids, which maps onto the '158's "maps configured with differential detail and levels of magnitude." But note the disqualification: 5,848,373 issued 1998-12-08 and its § 102(e) date (1997-07-18) is later than a 1994-06-24 critical date, and it is commonly owned → § 103(c) bars its use as § 103 art. Do not cite CAMLS in a § 103 combination under Branch A. The usable substitute is 4,972,319 / 5,030,117, whose multi-scale map-generation is § 102(b) art.


Branch B — if any claim depends on new matter added in the 1996/1998 CIP (e.g., the PDA "data-cutting" and automatic-zoom features)

This branch opens the pre-1998 third-party corpus and the applicant's own post-1994 parents.

Ground B-1 (Family A — the extraction/"cutting" limitation): the strongest ground

References: US 5,559,707 (DeLorme CARS; § 102(b) only in this branch, issued 1996-09-24) in view of a handheld GPS/mapping device such as US 5,528,248 (Trimble Navigation, "Personal digital location assistant including a memory cartridge, a GPS smart antenna and a personal computing device," filed 1994-08-19, issued 1996-06-18), and optionally US 5,543,789 (Shields Enterprises / Behr et al., "Method and apparatus for providing travel instructions and navigational information," filed 1994-06-24, issued 1996-08-06).

  • Route computation among user-selected waypoints; user-defined region of interest along the route; POI-type selection; multimedia travelog; upload/download of a waypoint list to a GPS device → US 5,559,707, verbatim (see the uspto.report/CARS summary: corridor/circle/polygon regions of interest along the route, POI-type selection, user-customized travelog, "downloading waypoints electronically").
  • Transferring a selected subset of map/route data to a memory-limited portable device with its own map store → US 5,528,248 (PDA + memory cartridge holding map/location data + GPS).
  • Transmitting route instructions to a mobile unit that reconstructs and graphically displays the route from local mapping data → US 5,543,789 (Behr), the reference the field itself treats as the seminal "base unit / mobile unit" navigation disclosure (it recurs throughout later AIA petitions in this exact field — see https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1493335](/patent/1493335)/download-documents).

Motivation to combine (KSR (C), (D), (F)): Design incentive from the admitted problem. The '158 concedes the prior art was "limited to pre-cut, one-size-fits-all maps for specific regions, areas, or cities." A POSITA given (i) '707's desktop route/POI engine, (ii) Trimble's PDA-plus-memory-cartridge hardware, and (iii) Behr's mobile-unit-with-local-mapping-data architecture, would predictably implement user-selected extraction rather than fixed map cuts — because the only barrier identified in the art was storage capacity, and selecting and reducing the data set is the canonical, predictable solution (map tiling/clipping was already standard GIS practice, cf. DeLorme's own 4,972,319/5,030,117 grid-quadrangle tiling). "If a technique has been used to improve one device, and a person of ordinary skill would recognize it would improve similar devices in the same way, using the technique is obvious."

Counterargument to expect: nothing in '707/Trimble/Behr suggests the specific "route map plus higher-detail insets at start/finish/waypoints" configuration. Anticipated rebuttal: KSR forecloses the "specific configuration" argument where the configuration is a predictable design choice among a finite set (where to spend the memory budget); the specification itself frames the insets as an obvious allocation choice ("more detail … around waypoints, less detail … along the routes between waypoints").

Ground B-2 (Family B — dual text + map, pan/zoom on the handheld)

References: US 5,543,789 (Behr: mobile unit receives and displays both textual directions and graphical intersection representations) in view of US 5,528,248 (Trimble PDA) and the admitted Garmin/Trimble handheld displays.

  • Text directions list → Behr (and admitted Tripmaker/printouts).
  • Map with pan and multi-scale zoom on a handheld → Trimble PDA + the known desktop multi-scale map technique (4,972,319 / 5,030,117).
    Motivation: KSR (A), (C). Adding a map view to a device that already displays text directions is combining known elements with predictable results; pan/zoom are standard map-viewer operations.

Ground B-3 (Family C/D — automatic zoom, "look about," mark/breadcrumb logging, upload)

References: US 5,528,248 (Trimble PDA+GPS) and/or US 5,938,721 (Trimble, "Position based personal digital assistant," filed 1996-10-24, issued 1999-08-17) in view of US 5,559,707 (upload/download of waypoint lists, recording locations in the field).

  • Recording a series of positions along a traveled path (breadcrumbs) and uploading as an ordered waypoint list → US 5,559,707, which already discloses that "sequences of locations may be transferred from the GPS receiver … as an ordered waypoint list that designates a new travel route" (matching the CARPS disclosure at https://uspto.report/patent/grant/[5,802,492](/patent/5802492): "uploading said second series of waypoints to said GPS receiver for remote guidance").
  • Position-triggered display changes (zoom in near destination; show nearby POIs when stopped) → the automation of a monotonic, well-understood input (speed/location) into a display parameter. KSR (E) "obvious to try": setting a scale as a function of GPS distance-to-destination is one of a finite number of predictable rules.

Motivation: (D) applying a known technique (triggered display configuration) to a known device (a GPS PDA) ready for improvement, yielding predictable results, plus the admitted market pressure to make handhelds usable without the driver manually zooming.

Ground B-4 (Family A/B — "download supplemental online information to the PDA")

References: the admitted online/CD-ROM travel guides (AAA/Compton's; NavigaTour) + '707. Downloading an editorial POI content set to a portable device is disclosed or obvious in view of the admitted art; the only asserted advantage (user-selectable rather than editorially "preassembled") is addressed by '707's user-selectable POI types and region of interest.


6. § 102 / double-patenting overlaps worth flagging

  • Anticipation risk on the desktop-side claims. To the extent any '158 claim reads only on route computation + POI-type selection + a user-defined region of interest + a multimedia travelog, it is anticipated by, or at minimum obvious over, US 5,559,707 (Branch B) — or, in Branch A, is unpatentable for obviousness-type double patenting over the parent '707/'492 claims. The '158's 2014-06-24 expiration is consistent with a terminal disclaimer having been filed to overcome exactly this; the disclaimer should be confirmed in the file history.
  • Own-work exception does not exist pre-AIA. If the '158 claims are not § 120-supported by the 1994 CAMLS application as to a given limitation, the applicant's own '707 patent is a § 102(b) bar for that limitation. This is the single most dangerous vulnerability and the reason the priority branch is dispositive.

7. Secondary considerations (Graham factors 2–4)

Objective indicia cut both ways here, and the nexus is weak:

  • Long-felt need / failure of others: supported by the '158's own admissions that PDAs could not display maps and that prior PDA routing was "limited to single-route textual itineraries." This favors the patentee — but the admission also supplies the motivation to combine, so it cannot be used both ways without contradiction (In re Fulton-type tension).
  • Commercial success / licensing: DeLorme's Map'n'Go, Topo USA, Street Atlas, XMap and Solus products, and DeLorme's later acquisition by Garmin, evidence market success. Nexus problem: the same success is attributable to the parent '707/'492 disclosures (admitting the desktop system into the prior art), so any success attributable to the desktop side provides no nexus to the differentiating handheld-extraction features.
  • Copying: the industry-wide migration to GPS-equipped PDAs and automotive navigation in the late 1990s is as consistent with independent, parallel development as with copying. I found no evidence of copying of '158 specifically.
  • Note on the record: '158 was used by others as invalidating art (Exhibit 1003 in IPR2017-00729, FedEx v. Intellectual Ventures II; and DeLorme's TRIPS disclosure as the primary reference against Ameranth's patents, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1458318](/patent/1458318)/download-documents). That is evidence the disclosure is broad and well-mapped in the art — not a validity ruling on '158.

8. Bottom line

  1. The § 103 outcome is dominated by the priority question, not by the merits. If the '158 claims are entitled to 1994-06-24 (which the 2014-06-24 expiration implies), the usable prior-art universe narrows sharply to pre-1993-06-24 § 102(b) art — principally DeLorme's own US 4,972,319 and US 5,030,117 plus the admitted commercial systems (Rand McNally Tripmaker, AAA/Compton's, Garmin GPS 45, Trimble Scout) — and the entire DeLorme family ('707, '492, '373, '040) is unavailable as § 103 art (§ 120 benefit for the family; § 103(c) disqualification for the § 102(e) art). That branch yields a weaker but real obviousness case built on the applicant's own admissions and 1990/1991 GIS patents.
  2. If any claim depends on new matter added in the 1996 or 1998 CIP ("data cutting" for the handheld, automatic zoom/"look about", mark/breadcrumb upload), the case becomes strong: US 5,559,707 (now § 102(b) art) + US 5,528,248 (Trimble PDA + memory cartridge) + US 5,543,789 (Behr mobile-unit-with-local-mapping) renders Families A and B obvious under KSR rationales (C)/(D)/(F), with US 5,938,721 and the admitted art covering Families C and D. The applicant's own admission that prior PDA routing was confined to "single-route textual itineraries" supplies the motivation.
  3. Do not cite CAMLS/US 5,848,373, US 5,802,492, or US 5,948,040 in a § 103 combination — under pre-AIA § 103(c) they are disqualified (common ownership), and their § 102(e) dates are too late for a 1994 critical date. Using them is a self-inflicted wound.
  4. Verify before relying: (a) the granted claim text (Exhibit 1003 / Google Patents PDF); (b) the terminal disclaimer and the priority determination in the 09/144,836 file history; (c) the § 102(e) date of Behr/US 5,543,789 (its US priority appears to be 1994-06-24 — the same day as the '158 priority — so whether it reaches back to a 1993 PCT filing is outcome-determinative and must be checked); and (d) the front-page "References Cited" list, which I could not retrieve and deliberately did not reconstruct from memory.

Explicit uncertainty. I could not obtain the verbatim claims or the front-page citation list; the claim families above are inferred from the specification and the sibling patents, and the "2014-06-24 = 1994 priority" inference is drawn from a computed expiration field. Both are flagged rather than asserted as fact. If the actual claim 1 differs from my Family A/B/C/D reconstruction, the grounds must be re-mapped to the real limitations before being relied upon.

Generated 9/29/2026, 8:23:50 PM

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