PTAB

IPR2018-00818

Apple Inc. v. AGIS Software Development LLC

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1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’055 patent describes a method for rapidly establishing an ad hoc communication network between mobile devices. The system allows users to join a network using a common name and password, after which their locations are displayed as selectable symbols on a shared, georeferenced map for communication and data exchange.

3. Grounds for Unpatentability

Ground 1: Claims 1-54 are obvious over Patent 7,630,724.

  • Prior Art Relied Upon: Patent 7,630,724 (the ’724 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’724 patent is valid prior art due to a broken priority chain, making the ’055 patent’s effective filing date much later than claimed (see Section 4). Petitioner argued that the ’724 patent discloses nearly every limitation of the independent claims. This includes obtaining contact information, sending SMS messages to initiate communication, displaying device locations as symbols on a map, selecting symbols to interact, and adding new user-specified entities to the map. The petition contended that the only element not expressly disclosed is receiving an IP-based response to the initial SMS message that contains location information. The ’724 patent teaches a similar process but involves exchanging IP addresses via SMS before commencing IP-based location reporting.
    • Motivation to Combine (Modify): Petitioner argued that a person of ordinary skill in the art (POSA) would have been motivated to modify the ’724 patent’s method to respond to the initial SMS with a direct IP-based message rather than a second SMS message. This modification would eliminate a superfluous step, making the network initiation more efficient. Because the ’724 patent already teaches the benefits of high-speed IP-based communications for location sharing once the network is established, a POSA would have found it obvious to use IP for the very first response to streamline the process.
    • Expectation of Success: A POSA would have had a high expectation of success because the ’724 patent already discloses all the underlying technologies: SMS messaging for initiation, IP-based protocols for data and location exchange, and the dynamic display of participants on a map. Modifying the protocol of the response message from SMS to IP would have been a predictable and straightforward implementation for a POSA.

4. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain: The central technical contention is that the ’055 patent is not entitled to the early priority date of its ancestor applications, which makes its own ancestor, the ’724 patent, available as invalidating prior art. Petitioner argued the priority chain was broken at the ’410 application (the grandparent of the ’055 patent) for two primary reasons:
    • Improper Incorporation: The ’410 application contained an ambiguous incorporation-by-reference statement that, Petitioner argued, failed to properly incorporate the disclosure of the ’724 patent. The statement mentioned both the ’728 patent and the ’724 patent, but its grammatical structure ("...U.S. Patent No. 7,031,728 which is hereby incorporated...") only incorporated the immediately preceding ’728 patent, leaving the necessary disclosures of the ’724 patent out.
    • Lack of Written Description: The ’410 application itself allegedly lacks sufficient written description to support key limitations present in all independent claims of the ’055 patent. Specifically, it does not describe initiating IP-based location sharing by sending an SMS with an IP address and receiving an IP-based response. Instead, the ’410 application describes an entirely different method of joining a network by manually entering a server's IP address. Furthermore, the ’410 application allegedly fails to describe the claimed feature of a user specifying a particular symbol to represent a new entity on the map. Because the ’410 application lacks support for these claimed features and failed to incorporate the ’724 patent which did, the chain of priority was severed. This would give the ’055 patent an effective filing date no earlier than its parent, rendering the ’724 patent prior art.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-54 of the ’055 patent as unpatentable under 35 U.S.C. §103.