Apple Inc v. IXI IP LLC

1. Case Identification

• Case #: IPR2019-00125
• Patent #: 7,039,033
• Filed: November 8, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): IXI
• Challenged Claims: 65, 75-78, 80-82

2. Patent Overview

• Title: System, device and computer readable medium for providing a managed wireless network using short-range radio signals
• Brief Description: The ’033 patent describes a gateway device that connects a local, short-range Personal Area Network (PAN) to a wide-area network like the Internet. The gateway communicates with local devices via short-range radio signals (e.g., Bluetooth) and connects to the Internet via a cellular network.

3. Grounds for Unpatentability

Ground 1: Claims 65 is obvious over Marchand, Nurmann, Vilander, and Williams

• 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 primary combination of Marchand, Nurmann, and Vilander taught the core functionality of a gateway device routing IP packets between a local ad-hoc network and a cellular network. Marchand was cited for the fundamental gateway architecture; Nurmann for using a DHCP server on the gateway to manage local private IP addresses; and Vilander for teaching the gateway obtaining a public IP address from the cellular network. Petitioner asserted that Williams was added to teach the well-known features that were newly added to claim 65 during reexamination: a speaker, microphone, touchscreen, and software for email and location services (GPS), all of which were common in cellular phones before the patent’s critical date.
  • Motivation to Combine: A POSITA would combine Marchand with Nurmann and Vilander to implement a predictable and robust IP address allocation scheme, which was a known method to improve network reliability and avoid packet routing errors. A POSITA would further incorporate the standard handheld device features taught by Williams into Marchand’s mobile gateway to improve user functionality, representing an obvious application of known techniques to a known device.
  • Expectation of Success: Petitioner contended that combining well-understood networking protocols (DHCP, GPRS IP allocation) and integrating standard hardware and software features (touchscreen, GPS) into a mobile gateway would have been straightforward, yielding predictable results and a high expectation of success.

Ground 2: Claims 75 and 76 are obvious over Marchand, Nurmann, Vilander, Williams, and Cannon

• Prior Art Relied Upon: Marchand, Nurmann, Vilander, Williams, and Cannon (Patent 7,155,163).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the teachings of the Ground 1 combination and added Cannon to address the limitations of claims 75 and 76, which require a "PIN number management component" for initial Bluetooth pairing. Petitioner argued that Cannon disclosed an application-layer function on a master Bluetooth device that associates PINs with unique device addresses, thereby simplifying the user pairing process. This software would act as a server on the master device (Marchand's gateway), maintaining a local database of PINs and attributes.
  • Motivation to Combine: A POSITA would be motivated to add Cannon’s user-friendly PIN management system to the Marchand-based gateway to solve the well-known problem of Bluetooth pairing being difficult and error-prone. As both Marchand and Cannon describe Bluetooth piconets with master and slave devices, this was presented as an obvious improvement to a similar device.
  • Expectation of Success: Because Cannon’s PIN management software was described as an application-layer function operating outside the core Bluetooth protocol, a POSITA would expect to integrate it into the Marchand system without disrupting its underlying functionality.

Ground 3: Claims 77, 78, and 80-82 are obvious over Marchand, Nurmann, Vilander, Williams, and JINI Spec.

• Prior Art Relied Upon: Marchand, Nurmann, Vilander, Williams, and JINI Spec. (K. Arnold et al., The JINI™ Specification, June 1, 1999).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the core combination from Ground 1, adding the JINI Spec. to teach the service management limitations recited in claims 77, 78, and 80-82. These claims require functions such as service unregistration, disabling a service, and disconnecting a terminal. Petitioner asserted that the JINI Spec. explicitly described these features as part of its leasing mechanism, which Marchand already disclosed using. For instance, JINI services that fail to renew a lease with the Lookup Service (LUS) are automatically unregistered, which disables the service, ceases its offering, and forces applications to disconnect from it.
  • Motivation to Combine: Since Marchand already employed JINI technology for service discovery, a POSITA would naturally consult the full JINI Spec. to implement a complete and robust service management framework. This would provide a predictable method for managing a dynamic network where services can be added or withdrawn, which is the express purpose of the JINI architecture.
  • Expectation of Success: A POSITA would have a high expectation of success in applying the full, intended feature set of the JINI architecture to a system already designed to use its basic components, as it would constitute a natural and complete implementation.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the petition should not be time-barred under 35 U.S.C. §315(b) because the challenged claims, added during ex parte reexamination after an earlier IPR found original claims unpatentable, are not "substantially identical" to the original claims. Petitioner asserted that these new claims created a materially different patent, thereby resetting the one-year time bar, and that Patent Owner's use of reexamination was an improper attempt to circumvent the Board's prior adverse decision. As an alternative, Petitioner requested joinder with the previous IPR.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 65, 75-78, and 80-82 as unpatentable under 35 U.S.C. §103.