PTAB

IPR2019-00124

Apple Inc v. IXI IP LLC

Key Events

Petition

petition Intelligence

Title: System, device and computer readable medium for providing a managed wireless network using short-range radio signals
Brief Description: The ’033 patent discloses a gateway device that provides wireless communication between devices on a local short-range personal area network (PAN) and an external network, such as the Internet. The gateway functions as a bridge, for example, between a local Bluetooth network and a wide-area cellular network.

Prior Art Relied Upon: Marchand (WO 2001/76154), Nurmann (Patent 6,560,642), Vilander (Patent 6,771,635), and Williams (WO 1999/22338).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the combination of Marchand, Nurmann, and Vilander teaches the core functionality of the invention: a mobile phone gateway that routes IP packets between a local ad-hoc network (e.g., Bluetooth) and an external cellular network. Marchand was asserted to disclose the gateway device with router software, Nurmann teaches using a DHCP server for IP address allocation within the local network, and Vilander teaches obtaining a public IP address from the cellular network. The Williams reference, which describes a portable computer with cellular telephone capabilities, was added to teach the new limitations introduced in the challenged claims during reexamination: a speaker, microphone, touchscreen, and software applications for email and location services (GPS).
- Motivation to Combine: A POSITA would combine these references to implement a known technique (IP routing and address allocation) in a known device (mobile gateway) and to add well-understood, conventional features to improve its functionality. Petitioner contended it would have been obvious to add the common handset features taught by Williams to the mobile gateway of Marchand to create a more integrated and user-friendly device, yielding predictable results.

Prior Art Relied Upon: The prior art from Ground 1, plus Larsson (Patent 6,836,474).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the base combination of Ground 1 and added Larsson to teach the limitations of claims 73 and 87, which recite a tunneling component and a virtual private network (VPN) software component. Larsson was asserted to disclose a gateway with a firewall that uses tunneling (e.g., SSL/TLS) to provide secure and efficient authenticated access from a mobile terminal on a public network to a private network.
- Motivation to Combine: A POSITA would combine Larsson with the base combination to improve the security of the Marchand gateway. Adding Larsson’s firewall and tunneling capabilities was argued to be a predictable solution to the known problem of providing secure access between a public network (the cellular side) and a private network (the local PAN side).

Prior Art Relied Upon: The prior art from Ground 1, plus the 802.11b standard (IEEE Std 802.11b-1999).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims requiring an 802.11 transmitter/receiver and baseband software. Petitioner argued that the 802.11b standard was a well-known wireless networking protocol at the time of the invention. The 802.11b standard provides all necessary specifications for an 802.11-compatible radio, including baseband functionality.
- Motivation to Combine: A POSITA would substitute the Bluetooth technology in Marchand’s local ad-hoc network with the 802.11b standard to achieve known benefits, such as higher data rates and longer communication range. Petitioner asserted this was a simple substitution of one known element for another to obtain predictable results, as both technologies operate at the same level of the protocol stack and were known alternatives for creating local wireless networks.
Additional Grounds: Petitioner asserted additional obviousness challenges. Claims 85-86 were challenged over the Ground 1 combination plus RFC 2543 (a SIP standard) to teach using a domain naming service (DNS). Claim 79 was challenged over the Ground 3 combination plus Narayanaswami (Patent 6,556,222) to teach including a wireless-capable watch in the 802.11 network.

Petitioner argued that the inter partes review (IPR) is not barred by the one-year time limit of 35 U.S.C. §315(b). The argument was premised on the fact that the challenged claims were newly issued from an ex parte reexamination and are not "substantially identical" in scope to the original claims that were the subject of prior litigation. Petitioner contended these materially different new claims effectively constitute a new patent for time-bar purposes.
In the alternative, Petitioner requested that the Board join this IPR with a prior, successful IPR (IPR2015-01444) against the original claims of the ’033 patent. This was proposed to prevent the Patent Owner from using reexamination to circumvent the Board’s earlier unpatentability findings and to promote an efficient and just resolution.

Petitioner requests institution of IPR and cancellation of claims 65-69, 71-74, 79, and 85-87 of the ’033 patent as unpatentable.