Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Patent #: 9,445,251
• Filed: March 22, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-35

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’251 patent describes methods and systems for establishing ad hoc communication networks, particularly for users like first responders. The technology enables users to join a network, exchange location information via a server, and view participants' locations as symbols on an interactive, georeferenced map on their devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-35 are obvious over Patent 7,630,724.

• Prior Art Relied Upon: Patent 7,630,724 (’724 patent)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’724 patent, which it contended is valid prior art due to a broken priority chain, teaches nearly every element of the challenged claims. Independent claims 1 and 24 recite a sequence of steps: (a) joining a group based on a message from another device; (b) participating by exchanging location data via a server; (c) presenting a first georeferenced map with symbols; (d-e) requesting and receiving a second, different georeferenced map from a server; (f) presenting the second map; (g) interacting with symbols on the second map to send data; and (h) doing so anonymously without access to the recipient's IP address. Petitioner asserted that the Patent Owner admitted during prosecution that the ’724 patent provides written description support for most of these limitations, including joining a group by being "polled," exchanging location via a server, displaying a first map with symbols, requesting a second map, and anonymous communication. The only element Petitioner conceded was not expressly taught is displaying and interacting with symbols on the second georeferenced map after it is retrieved.
  • Motivation to Modify: Petitioner contended it would have been an obvious modification for a person of ordinary skill in the art (POSA) to display participant symbols on the second retrieved map. The ’724 patent already taught this functionality for the first map. A user requesting a new map (e.g., to zoom in or view an adjacent area) would expect the core functionality—viewing participant locations—to persist on the new map. A POSA would have been motivated to meet this clear user expectation and avoid the frustrating result of the map updating but the participant locations disappearing. This modification would have used known techniques for a predictable result.
  • Expectation of Success: A POSA would have had a high expectation of success in making this modification. The '724 patent already described the system's capability to receive location data, convert it to map coordinates, and display symbols on a georeferenced map. Applying this same existing functionality to a newly loaded map image would have been a straightforward and predictable programming task.

4. Key Claim Construction Positions

• "georeferenced map": Petitioner argued this term is central to the patent's claims and was used to overcome prior art during prosecution. Based on the claims and prosecution history, Petitioner asserted the term should be construed as "a map that includes data relating positions on the map (e.g., x/y coordinates) to spatial coordinates (e.g., latitude and longitude)." This construction is critical because the Patent Owner previously distinguished prior art by arguing it disclosed "maps" but not "georeferenced maps" that intrinsically link map imagery to real-world coordinates, a feature Petitioner argued is taught by the ’724 patent.

5. Key Technical Contentions (Beyond Claim Construction)

• Broken Priority Chain Renders ’724 Patent Prior Art: The central technical argument of the petition is that the ’251 patent is not entitled to its claimed priority date, which makes its ancestor, the ’724 patent, available as prior art under §102(a)(1).
  • Petitioner argued that for the ’251 patent to claim priority to the 2006 filing date of the ’724 patent, every application in the long priority chain must provide continuous written description support for the challenged claims, as required by §112.
  • Petitioner contended this chain was broken at the ’251 patent’s grandparent, the ’410 application. It argued the ’410 application fails to disclose key limitations of the ’251 patent, such as requesting and receiving a second, different georeferenced map from a server, the full scope of "groups" (including closed/invitation-only groups), and joining a group "based on receiving a message."
  • Petitioner asserted that the Patent Owner relied on the disclosure of the ’724 patent to add these limitations during prosecution of the ’251 patent. However, the intervening ’410 application allegedly failed to properly incorporate the ’724 patent by reference, creating a fatal break in the continuity of disclosure.
  • As a result, Petitioner argued the effective filing date of the ’251 patent is no earlier than October 31, 2014, the filing date of its immediate parent application. This later date makes the ’724 patent, issued in 2009, valid prior art against all challenged claims.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-35 of the ’251 patent as unpatentable.