Apple Inc v. IXI IP LLC

1. Case Identification

• Case #: IPR2019-00181
• Patent #: 7,039,033
• Filed: November 8, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): IXI
• Challenged Claims: 112-122

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 devices in a short-range Personal Area Network (PAN) and an external network, such as the Internet. The system utilizes both short-range radio signals (e.g., Bluetooth) to form the PAN and cellular signals to connect to the external network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core References - Claims 112-119 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), and JINI Spec. (a 1999 specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references taught every limitation of independent claim 112 and its dependent claims. Marchand was asserted as the primary reference, disclosing a mobile phone acting as a gateway between a local ad-hoc network (Bluetooth) and a 3G cellular network. The combination with Nurmann and Vilander allegedly taught the claimed IP address allocation functions, including the gateway providing private IP addresses to local devices and receiving a public IP address from the cellular network. Williams was cited for teaching common features of handheld devices, such as a touchscreen, speaker, microphone, and software applications for location services (GPS) and personal information management (email). Petitioner argued for replacing Marchand’s Bluetooth with the 802.11b standard to provide a higher-rate local wireless network. Finally, the JINI Spec. was used to disclose the claimed functionalities for managing network services, including service discovery, registration, unregistration, and disabling services via a leasing mechanism.
  • Motivation to Combine: A POSITA would combine these references to improve the functionality and performance of Marchand’s gateway system. Petitioner asserted it would have been a simple substitution to replace Bluetooth with the well-known, higher-speed 802.11b standard to achieve predictable improvements in data rates. Adding features from Williams, such as a touchscreen and GPS, was argued to be an obvious integration of known technologies to enhance the user interface and utility of a portable device.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success because the combination involved applying conventional technologies and components to a known system architecture to achieve their expected functions and predictable results.

Ground 2: Obviousness over Core References and RFC 2543 - Claim 120 is obvious over Marchand, Nurmann, Vilander, Williams, 802.11b, JINI Spec., and RFC 2543.

• Prior Art Relied Upon: The core combination from Ground 1, plus RFC 2543 (The Internet Society, March 1999).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added RFC 2543 to the primary combination to address the limitations of claim 120, which required a router software component with a domain naming service (DNS) component. Petitioner argued that Marchand already disclosed a Session Initiation Protocol (SIP) client. RFC 2543, as a foundational standard for SIP, taught that a SIP client queries a DNS server to resolve human-readable hostnames into IP addresses.
  • Motivation to Combine: A POSITA would combine the DNS teachings of RFC 2543 with the Marchand system to implement full, standard-compliant SIP capabilities. This would have been a natural and obvious step to ensure the interoperability and functionality of the disclosed SIP client.

Ground 3: Obviousness over Core References and Larsson - Claims 121-122 are obvious over Marchand, Nurmann, Vilander, Williams, 802.11b, JINI Spec., and Larsson.

• Prior Art Relied Upon: The core combination from Ground 1, plus Larsson (Patent 6,836,474).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Larsson to the primary combination to teach the limitations of claims 121-122, which added a virtual private network (VPN) software component and the transfer of IP packets via a secure tunnel. Petitioner asserted that Larsson disclosed a gateway with a firewall and two-stage proxy components that enable secure, tunneled access from a public network to a private network, which could be a VPN.
  • Motivation to Combine: A POSITA would add Larsson’s security features (firewall, proxies, tunneling) to the Marchand gateway to provide secure access between the external cellular network and the local PAN. The motivation stemmed from the well-understood benefits of adding firewall security and providing a more efficient, tunnel-based authentication method for network access.

4. Arguments Regarding Discretionary Denial

• Petitioner argued this petition, its second against the ’033 patent, should not be time-barred under 35 U.S.C. §315(b). The core contention was that the challenged claims were newly added during an ex parte reexamination that the Patent Owner initiated after an earlier IPR invalidated the original claims. Petitioner asserted these new claims were not “substantially identical” in scope to the original claims, effectively creating a new patent for which the one-year time-bar had not been triggered by prior litigation. In the alternative, Petitioner requested that the Board join this proceeding with the earlier IPR.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 112-122 of Patent 7,039,033 as unpatentable under 35 U.S.C. §103.