Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01471
• Patent #: 9,749,829
• Filed: July 31, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 1-68

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’829 patent describes server-mediated methods and systems for mobile devices to form ad hoc networks. The claimed invention involves a specific sequence where one device invites another to join a group via a server; upon acceptance, the server authorizes repeated location sharing and remote control operations between devices, with locations displayed on a georeferenced map.

3. Grounds for Unpatentability

Ground 1: Obviousness over '724 Patent Alone or in View of Borghei - Claims 1-68 are obvious over the '724 patent alone or in combination with Borghei.

• Prior Art Relied Upon: Patent 7,630,724 (’724 patent) and Borghei (Application # 2012/0008526).
• Core Argument for this Ground: Petitioner’s primary argument was that the ’829 patent is not entitled to its claimed priority date due to a broken priority chain. Petitioner asserted that the ’829 patent’s grandparent application (the ’410 application) failed to provide written description support for the claims and did not properly incorporate by reference the necessary disclosure from the ’724 patent, an ancestor patent in the same family. This break in priority, Petitioner argued, renders the ’724 patent and Borghei available as prior art under 35 U.S.C. §102(a). The subsequent obviousness argument relied heavily on the patent owner's own admissions during prosecution that the ’724 patent provided support for every claim limitation.
  • Prior Art Mapping: Petitioner contended that the patent owner repeatedly and explicitly represented to the USPTO during prosecution that the ’724 patent’s disclosure supports all limitations of the challenged claims. The ’724 patent teaches a server-centric system where devices can be polled to join a network, share location and status information, display symbols for other devices on a georeferenced map, and engage in remote control operations. For any claim elements not explicitly taught by the ’724 patent, such as an express acceptance of an invitation to join a group, Petitioner asserted that Borghei supplied the missing disclosure. Borghei was cited for its description of a conventional request-acceptance-confirmation process for joining location-sharing groups, facilitated by a central server.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Borghei’s conventional joining process with the system of the ’724 patent to achieve predictable results and improve the user experience. Implementing a well-known consent-based mechanism (request and acceptance) as described in Borghei would enhance user privacy and satisfaction by ensuring users explicitly agree to be tracked and have their devices remotely controlled, which was a known problem to be solved in location-sharing applications.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining a conventional user-invitation and acceptance framework with an existing location-sharing system was a straightforward application of known techniques to achieve a predictable outcome.

4. Key Claim Construction Positions

• "georeferenced map data": Petitioner argued this term should be construed as "data relating positions on a map to spatial coordinates," such as latitude and longitude. This construction was important to distinguish the claimed invention from prior art that might disclose general maps without the specific data needed to correlate map positions with real-world coordinates.
• "georeferenced map": Following the construction above, this term was construed as "a map that includes georeferenced map data." Petitioner emphasized that this is not just any geographical map, but one that contains the underlying data to properly position symbols based on their spatial coordinates. This construction was central to the priority date argument, as the alleged failure of the ’410 application to disclose server-provided "georeferenced map data" was a key part of the written description challenge.

5. Key Technical Contentions (Beyond Claim Construction)

• Broken Priority Chain: The petition’s foundational argument was that the ’829 patent’s effective filing date is no earlier than October 31, 2014, the filing date of its immediate parent. Petitioner alleged that the grandparent ’410 application broke the priority chain by failing to provide written description support for several key features recited in the ’829 patent’s claims. These unsupported features included: (1) the server-mediated, message-based invitation and acceptance sequence for joining a group; (2) server-based remote control operations; (3) a server providing "georeferenced map data" to a device; and (4) anonymous communications where devices do not have access to each other's IP addresses.
• Improper Incorporation by Reference: Crucially, Petitioner argued that the ’410 application also failed to properly incorporate by reference the disclosure of the ’724 patent, which the patent owner later relied upon to support the claims. Petitioner asserted that the incorporation language in the ’410 application was ambiguous and, under a proper reading, only incorporated a different ancestor patent (’728 patent), not the ’724 patent. Because the necessary disclosure was deleted from the ’410 application and not properly incorporated, the priority chain was broken, making the ’724 patent invalidating prior art.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of all challenged claims, 1-68, of the ’829 patent as unpatentable.