Apple Inc v. IXI IP LLC

1. Case Identification

• Case #: IPR2019-00141
• Patent #: 7,039,033
• Filed: November 8, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): IXI IP, LLC
• Challenged Claims: 101-111

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 discloses a gateway device that provides wireless communication between a short-range personal area network (PAN) of terminal devices and an external network, such as the Internet, via a cellular connection. The gateway manages IP addressing and service discovery within the PAN.

3. Grounds for Unpatentability

Ground 1: Obviousness over Marchand, Nurmann, Vilander, Williams, 802.11b, and JINI Spec. - Claims 101, 103-105, 107, 110

• Prior Art Relied Upon: Marchand (WO 2001/76154), Nurmann (Patent 6,560,642), Vilander (Patent 6,771,635), Williams (WO 1999/22338), 802.11b (an IEEE standard), and JINI Spec. (a 1999 specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught all limitations of the challenged claims. Marchand disclosed the core architecture: a mobile phone acting as a gateway between a local ad-hoc network (using Bluetooth and JINI) and a wide-area cellular network (GPRS), routing IP packets between them. To this base system, Petitioner contended it would have been obvious to:
    • Modify Marchand’s gateway to allocate private IP addresses to local devices using a DHCP server as taught by Nurmann, and to receive its public IP address from the cellular network as taught by Vilander.
    • Replace Marchand’s Bluetooth protocol with the higher-speed, longer-range 802.11b standard for the local ad-hoc network.
    • Add common handheld device features taught by Williams, such as a touchscreen, microphone, speaker, and software for location (GPS) and email services.
    • Fully implement the JINI service architecture described in the JINI Spec. for service registration, discovery, and management (including leasing and disconnect functions) within the local network.
  • Motivation to Combine: A POSITA would combine these references to create a more robust and feature-rich system. The motivation to substitute 802.11b for Bluetooth was to achieve higher data rates and longer range, which were known advantages. The motivation to incorporate Nurmann and Vilander was to implement a standard, reliable method for IP address management. Adding features from Williams was a matter of incorporating well-known functionalities to improve user experience. Implementing the JINI Spec. was necessary to realize the full service-oriented architecture only partially described in Marchand.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success, as the combination involved substituting known wireless protocols, adding standard hardware components, and implementing well-documented software architectures (DHCP, JINI) to improve a known system.

Ground 2: Obviousness over Marchand, Nurmann, Vilander, Williams, 802.11b, JINI Spec., and Narayanaswami - Claim 102

• Prior Art Relied Upon: The combination from Ground 1, plus Narayanaswami (Patent 6,556,222).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically addressed claim 102, which adds the limitation of a "watch communicating with the handheld device." Petitioner argued that Narayanaswami explicitly disclosed a wristwatch capable of wireless communication (including 802.11) to connect with networks and other devices like mobile phones.
  • Motivation to Combine: A POSITA would have been motivated to include Narayanaswami’s watch as a terminal device in the network of the primary combination. This amounted to a simple substitution of one known type of terminal for another to yield predictable results, as the primary combination was designed to support various terminal devices.
  • Expectation of Success: A POSITA would have expected success in adding a wireless-capable watch to the ad-hoc network, as both the network (using 802.11b) and the watch (disclosing 802.11 capability) used compatible, well-known technology.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combination of references from Ground 1. These grounds argued for the obviousness of adding a single, well-known functionality to the base system: claim 106 was challenged in view of Chen (Patent 6,728,323) for teaching baseband processing software; claim 108 was challenged in view of RFC 2543 for teaching the use of DNS with the SIP protocol; and claims 109 and 111 were challenged in view of Larsson (Patent 6,836,474) for teaching the use of VPN software and IP packet tunneling.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that this petition should not be time-barred under 35 U.S.C. §315(b), despite a prior lawsuit involving the original claims of the ’033 patent. The core argument was that the challenged claims, which were added during an ex parte reexamination, were not "substantially identical" in scope to the original claims. By adding new limitations (e.g., 802.11 features, touchscreen, specific software applications), the patent owner created what is effectively a new patent for time-bar purposes, resetting the one-year clock. In the alternative, Petitioner requested that the Board join this proceeding with a previous IPR to avoid inefficient, parallel litigation and to frustrate what Petitioner characterized as the patent owner’s "gamesmanship" in using reexamination to circumvent the prior IPR.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 101-111 of the ’033 patent as unpatentable under 35 U.S.C. §103.