Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-00819
• Patent #: 9,467,838
• Filed: March 22, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-84

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’838 patent describes a system and method for mobile devices to join a group communication network, share location information via a server, and display the locations of other group members as interactive symbols on a georeferenced map. A central claimed feature is the ability to request, receive, and display a second, different georeferenced map from a second server while maintaining the display of member locations.

3. Grounds for Unpatentability

Ground 1: Claims 1-84 are obvious over the ’724 patent.

• Prior Art Relied Upon: ’724 patent (Patent 7,630,724)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’724 patent, which is alleged to be prior art due to a broken priority chain, discloses nearly every limitation of the challenged claims. Specifically, the ’724 patent teaches a system where a device has a first, pre-loaded georeferenced map displaying symbols for other users in a group. The reference further discloses the device requesting and receiving a second, different georeferenced map (e.g., a satellite image) from a remote image server, which is then displayed. Petitioner contended that the only element not explicitly disclosed in the ’724 patent is the final step of plotting the user-location symbols on this newly displayed second map. The mapping of limitations in independent claims 55 and 84 (server-side method and system) followed the same logic as for device-side claims 1 and 54.
  • Motivation to Combine (Modify): Petitioner asserted that a person of ordinary skill in the art (POSA) would have been motivated to modify the system of the ’724 patent to display user symbols on the second georeferenced map. The primary motivation was to provide a consistent and expected user experience. A user requesting a new map (e.g., to view a different geographic area or a higher-resolution image) would expect the core functionality—viewing the locations of other group members—to persist. Petitioner argued that a system that ceased displaying user locations after a new map was loaded would be frustrating and commercially undesirable, making the modification a simple matter of applying a known technique (plotting symbols on a map) in a predictable way.
  • Expectation of Success: A POSA would have had a high expectation of success in implementing this modification. The ’724 patent already taught the methods for receiving location data and plotting corresponding symbols on the first georeferenced map. Applying this same established technique to the second map after it was received from the server would have been a straightforward and predictable implementation for a skilled artisan.

4. Key Claim Construction Positions

• "georeferenced map data": Petitioner proposed this term be construed as "data relating positions on a map to spatial coordinates," such as latitude and longitude. This construction was argued to be critical because it defines the specific type of map data required by the claims.
• "georeferenced map": Correspondingly, this term was proposed to mean "a map that includes georeferenced map data." Petitioner supported this by citing the ’838 patent's prosecution history, where the Patent Owner allegedly distinguished prior art by arguing that a "georeferenced map" was not just any map but one that explicitly included data linking map positions to real-world spatial coordinates.

5. Key Technical Contentions (Beyond Claim Construction)

• Broken Priority Chain: The central technical and legal contention underpinning the entire petition was that the ’838 patent is not entitled to the filing date of its ancestor applications, including the ’724 patent. Petitioner argued that the priority chain was broken because the ’838 patent's immediate parent, the ’410 application, failed to provide adequate written description support for key limitations recited in the challenged claims.
• Lack of Written Description in Parent Application: Specifically, the petition contended that the ’410 application lacked disclosure for "retrieving second georeferenced map data from a server" and for the full scope of a "network corresponding to a group" (i.e., closed or invitation-only groups). Furthermore, it was argued that the ’410 application failed to properly incorporate the ’724 patent by reference, which was the only document in the chain containing the necessary disclosure. As a result, Petitioner asserted the ’838 patent's effective filing date is its actual filing date of October 31, 2014, making the ’724 patent (issued in 2009) invalidating prior art under 35 U.S.C. §102(a)(1).

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-84 of Patent 9,467,838 as unpatentable.