PTAB

IPR2019-00141

Apple Inc. v. IXI IP, LLC

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1. Case Identification

  • Case #: IPR2019-00141
  • Patent #: 7,039,033
  • Filed: November 8, 2018
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): IXI
  • 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 local personal area network (PAN) and a wide area network like the Internet. The gateway manages routing and access between the two networks.

3. Grounds for Unpatentability

Ground 1: Obviousness of Core Gateway Functionality - Claims 101, 103, 104, 105, 107, and 110 are obvious over Marchand, Nurmann, Vilander, Williams, 802.11b, and JINI Spec.

  • 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 published Jan. 2000), and JINI Spec. (a 1999 technical specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Marchand, Nurmann, and Vilander taught the core functionality of a gateway device routing between a local ad-hoc network and an external cellular network (GPRS), including managing public and private IP addresses. Marchand was argued to disclose a mobile phone acting as a gateway between a local Bluetooth/JINI ad-hoc network and a 3G network, performing routing and network address translation. Nurmann allegedly taught a gateway with a DHCP server to allocate private IP addresses, and Vilander taught a GPRS network allocating a public IP address to a mobile terminal. The petition asserted that substituting the Bluetooth network in Marchand with a higher-rate 802.11b network would have been an obvious design choice for a POSITA seeking better performance. Williams was cited for teaching common handheld device features like a touchscreen, speaker, microphone, and location/email applications. Finally, the JINI Spec. was argued to provide the framework for service discovery, registration, and management (including disconnection via lease expiration), which maps to the claimed network management and service repository functions.
    • Motivation to Combine: A POSITA would combine these references to improve upon Marchand's basic gateway concept. Combining Nurmann and Vilander with Marchand would provide a robust, conventional method for IP address management. A POSITA would substitute Marchand's Bluetooth with the well-known 802.11b standard to achieve higher data rates and longer range, a simple substitution of one known element for another to obtain predictable results. Adding Williams’ common hardware and software features and JINI’s service architecture would have been obvious ways to build a full-featured, commercially desirable device.
    • Expectation of Success: The combination involved integrating well-known, standardized components (802.11, GPRS, DHCP, JINI) that were designed to be interoperable. A POSITA would have had a high expectation of success in implementing these known techniques to create the claimed gateway device.

Ground 2: Obviousness Including a Watch Terminal - Claim 102 is obvious over the combination for Ground 1 in view of Narayanaswami.

  • Prior Art Relied Upon: The references from Ground 1, plus Narayanaswami (Patent 6,556,222).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1. Petitioner argued that Narayanaswami disclosed a "wrist watch" capable of wireless communication, including using protocols like IEEE 802.11, to connect to other devices and the Internet. Claim 102 adds the limitation that the terminal in the wireless network is a watch. Narayanaswami was argued to explicitly teach this element.
    • Motivation to Combine: A POSITA, having already designed the 802.11b-based ad-hoc network from Ground 1, would have been motivated to include various types of terminals. Narayanaswami demonstrated that a watch was a known type of terminal device for such networks. Including a watch would simply be incorporating another known type of peripheral into the existing network architecture to expand its utility, a predictable combination of prior art elements.

Ground 5: Obviousness Including VPN and Tunneling - Claims 109 and 111 are obvious over the combination for Ground 1 in view of Larsson.

  • Prior Art Relied Upon: The references from Ground 1, plus Larsson (Patent 6,836,474).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Larsson to the base combination to teach the limitations of a virtual private network (VPN) and data tunneling. Petitioner asserted that Larsson disclosed a gateway connecting a mobile terminal on a public network to a private network, which could be a VPN. Larsson allegedly taught using a firewall and proxy components to provide secure, authenticated access, where subsequent data requests are "tunneled directly through the firewall" (e.g., using SSL/TLS tunneling). This, Petitioner argued, directly teaches the claimed "VPN software component" and transmitting data "via a tunnel."
    • Motivation to Combine: A POSITA would have been motivated to add Larsson's security features to Marchand's gateway to provide secure access between the public cellular network and the private ad-hoc network. Implementing a firewall and tunneling was a well-known method for enhancing security and providing efficient, authenticated access, representing a common solution to a known problem.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (over the base combination plus Chen, Patent 6,728,323, for teaching baseband processing software for a GPRS modem) and Ground 4 (over the base combination plus RFC 2543 for teaching the use of DNS in a SIP environment).

4. Arguments Regarding Discretionary Denial

  • Petitioner dedicated substantial argument that this IPR petition should not be time-barred under §315(b). The core of the argument was that the challenged claims (101-111) were new claims added during an ex parte reexamination initiated by the Patent Owner after a previous IPR had found the original claims unpatentable.
  • Petitioner argued that these new claims are "substantively different" and not "substantially identical" to the original claims, and therefore the reexamination certificate created a "new patent" for time-bar purposes. Because this "new patent" had never been asserted in a complaint against Apple, the one-year time bar had not started.
  • In the alternative, Petitioner argued that the Board should exercise its discretion to join this proceeding with the earlier IPR to prevent the Patent Owner from using ex parte reexamination to circumvent the Board’s prior adverse judgment and frustrate the purpose of IPR.

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 101-111 as unpatentable.