Apple Inc v. Zomm LLC

1. Case Identification

• Case #: IPR2019-00277
• Patent #: 8,351,895
• Filed: November 9, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Zomm, LLC
• Challenged Claims: 7-11, 13-15, 21-28

2. Patent Overview

• Title: Wireless Security Device with Location-Based Emergency Calling
• Brief Description: The ’895 patent discloses a wireless security device that pairs with a telephony device, such as a cellphone, via Bluetooth. The device is configured to use the cellphone's GPS location to determine an appropriate emergency phone number from a look-up table and can issue out-of-range notifications if the Bluetooth connection is lost.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berry-351, Ayed, and Forstall/Jang - Claims 7, 9, 11, 14-15, 22, 25, and 27-28 are obvious over Berry-351 in view of Ayed and one of Forstall or Jang.

• Prior Art Relied Upon: Berry-351 (Patent 8,903,351), Ayed (Patent 7,973,657), and either Forstall (Patent 8,275,352) or Jang (Patent 7,113,764).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Berry-351 taught the core system: a vehicle emergency device that pairs with a cellphone, uses the phone's GPS data, and commands the phone to place an emergency call. Berry-351 also disclosed generating a warning when the Bluetooth link is disrupted. However, Petitioner contended Berry-351 did not expressly teach storing the emergency number look-up table locally in the device's memory. This limitation was allegedly supplied by Forstall and Jang, which both disclosed locally stored databases or "mapping tables" that correlate location data with correct emergency numbers. For dependent claims requiring more specific notifications (e.g., vibration motors, specific out-of-range alerts), Petitioner cited Ayed, which taught a proximity alarm that issues visual, audio, or tactile alerts when a paired device moves out of Bluetooth range.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Forstall/Jang with Berry-351 to enhance the system's speed and reliability, which are critical factors for emergency services. Storing the look-up table locally would eliminate the delay and potential failure points of contacting a remote server. A POSITA would incorporate Ayed’s varied notification methods to improve upon Berry-351's basic alerts, as adding tactile feedback (vibration) would make the system more effective for hearing-impaired users or in noisy vehicle environments.
  • Expectation of Success: Petitioner asserted success was expected because all references operate in the same field of Bluetooth-connected devices for vehicles, and the combination represented a predictable integration of known technologies to achieve a more robust and reliable emergency system.

Ground 2: Obviousness over Berry-351, Ayed, Sakamoto, and Forstall/Jang - Claims 8, 13, 21, and 26 are obvious over the combination.

• Prior Art Relied Upon: Berry-351 (Patent 8,903,351), Ayed (Patent 7,973,657), Sakamoto (Application # 2008/0220718), and one of Forstall/Jang.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Sakamoto to address claims concerning the handling of incoming calls. Petitioner asserted that the primary combination focused on placing outbound emergency calls but did not teach generating a notification for an incoming call or providing a mechanism to answer or cancel it via the security device. Sakamoto allegedly supplied these features by disclosing a vehicle Bluetooth headset system that uses an LED indicator to alert the driver of an incoming call and includes a keypad to allow the driver to answer or terminate the call without touching the phone.
  • Motivation to Combine: A POSITA would be motivated to integrate Sakamoto's conventional hands-free features into the Berry-351 system to improve safety and provide comprehensive call-handling functionality. Such a combination would reduce driver distraction by allowing all call functions—both incoming and outgoing—to be managed through the vehicle's integrated system.
  • Expectation of Success: Petitioner argued success would be highly expected, as integrating basic hands-free call control was a standard and routine practice in the art of vehicle Bluetooth systems at the time of the invention.

Ground 3: Obviousness over Berry-351, Ayed, Turner, and Forstall/Jang - Claims 10 and 23 are obvious over the combination.

• Prior Art Relied Upon: Berry-351 (Patent 8,903,351), Ayed (Patent 7,973,657), Turner (Application # 2004/0046658), and one of Forstall/Jang.

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Turner to address claims requiring a unique out-of-range notification for each of multiple paired devices. While Ayed taught pairing with multiple devices and generating an alarm when a device leaves the range, Petitioner argued it did not specify how to distinguish which device was lost. Turner was introduced for its disclosure of a monitoring system (e.g., a parent's watch) that pairs with several remote devices (e.g., children's watches) and uses distinct on-screen indicators to show the status of each, clearly identifying which specific device has gone out of range.
  • Motivation to Combine: A POSITA would combine Turner's teaching to enhance the utility of the Berry-351/Ayed system, particularly in a vehicle that may contain multiple paired phones (e.g., for a driver and passenger). A unique, device-specific notification would be a clear improvement, allowing users to immediately identify which phone was disconnected or left behind, thereby preventing its loss and ensuring the primary device for emergency calls remains connected.
  • Expectation of Success: Petitioner asserted the combination would have been straightforward and yielded predictable results, as it was a logical extension for any system designed to manage multiple wireless peripherals effectively.

• Additional Grounds: Petitioner asserted alternative grounds (Grounds 5-8) substituting Berry-145 (Application # 2009/0002145) for Berry-351, arguing its earlier priority date and substantially identical disclosures rendered the claims obvious for the same reasons. Petitioner also asserted an additional combination (Ground 4) using Schlager (Patent 5,650,770) to teach generating out-of-range notifications on both the security device and the telephony device.

4. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 7-11, 13-15, and 21-28 of the ’895 patent as unpatentable under 35 U.S.C. §103.