Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01080 (Petition for Joinder)
• Patent #: 9,408,055
• Filed: December 13, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1, 2, 5-7, 14, 15, 17, 21-25, 27, 28, 30, 32-34, 36, 37, 40-43, 45, 49, and 54

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’055 patent describes a system and method for establishing a temporary, ad hoc communication network among first responders using mobile wireless devices. The system centers on an interactive map display that shows the GPS-derived locations of participants, allowing users to initiate communications by selecting participant icons on the map.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fumarolo, Sheha, and Lazaridis - Claims 1, 2, 5, 6, 7, 14, 15, 17, 21-25, 28, 30, 32-34, 36, 40-43, 45, 49, and 54 are obvious over Fumarolo, Sheha, and Lazaridis.

• Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), and Lazaridis (Application # 2004/0157590).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the core features of the challenged claims were taught by the combination. Fumarolo disclosed a system for first responders that used a display-based terminal with an interactive map to show unit locations and initiate communications. Sheha taught using mobile wireless phones with interactive maps for location-based dispatch services and associating map objects with telephone numbers. Lazaridis disclosed using a first communication path (e.g., SMS) to exchange identification information (e.g., IP addresses) to establish a second, more robust IP-based communication path between mobile devices. The combination allegedly taught obtaining contact information (Fumarolo's identifiers, modified to be Sheha's telephone numbers), using SMS to initiate an IP-based link (Lazaridis), exchanging location information over that link, and displaying participant locations on an interactive map (Fumarolo, Sheha).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Fumarolo and Sheha as a simple substitution of Fumarolo’s "two-way wireless data terminal" with Sheha’s well-known "mobile wireless phone" for use in dispatcher applications. A POSA would then incorporate Lazaridis to improve the Fumarolo/Sheha system by replacing basic data communication with more efficient, high-speed IP-based communication, which would be highly desirable in an emergency response context. Lazaridis expressly taught improving peer-to-peer systems that use centralized gateways, analogous to Fumarolo's terminal.
  • Expectation of Success: A POSA would have had a high expectation of success, as the combination involved the predictable use of known prior art elements according to their established functions to achieve a more efficient and capable emergency communication system.

Ground 2: Obviousness over Fumarolo, Sheha, Lazaridis, and Liu - Claim 27 is obvious over Fumarolo, Sheha, Lazaridis, and Liu.

• Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), Lazaridis (Application # 2004/0157590), and Liu (Application # 2002/0027901).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the additional limitation of claim 27: "initiating voice-over-IP (VOIP) communication." Petitioner asserted that the base combination of Fumarolo, Sheha, and Lazaridis taught all elements of claim 27 except for the specific use of VoIP. Liu was introduced to supply this final element, as it explicitly disclosed mobile devices participating in a packet-switched network, such as the Internet, that supports VoIP communications.
  • Motivation to Combine: Petitioner argued a POSA would be motivated to integrate Liu's VoIP functionality into the Fumarolo-based system to provide an efficient and robust form of voice communication for first responders in an emergency. Replacing Fumarolo’s general voice and data communications with the specific, well-known implementation of VoIP would have been an obvious design choice to improve performance and leverage modern network capabilities.
  • Expectation of Success: The integration of VoIP was presented as a predictable upgrade to a communication system, yielding no unexpected results.

Ground 3: Obviousness over Fumarolo, Sheha, Lazaridis, and Van Bosch - Claim 37 is obvious over Fumarolo, Sheha, Lazaridis, and Van Bosch.

• Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), Lazaridis (Application # 2004/0157590), and Van Bosch (Application # 2005/0221876).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 37, which depends from claim 30 and adds the specific data type of "a video clip or a video transmission." Petitioner argued that the combination of Fumarolo, Sheha, and Lazaridis rendered the base claim 30 obvious. Van Bosch was then added to teach the specific video element. Van Bosch disclosed a system for posting and receiving location-based messages that could be "textual, audio, video, or pictorial" and could be superimposed on maps.
  • Motivation to Combine: A POSA would have been motivated to combine Van Bosch's location-based video messaging with the Fumarolo system to provide richer, more detailed information to first responders. The ability to transmit video from an incident scene would be a clear and obvious improvement for an emergency communication platform. Petitioner contended that transmitting video is merely a special type of data transmission, making its inclusion an obvious design choice over the basic data transmission taught by Fumarolo.
  • Expectation of Success: Adding video transmission capability to a data communication system was a predictable variation that would have been expected to function as intended.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that denial under §314(a) or §325(d) was not justified. The petition was filed concurrently with a motion for joinder to an identical petition, IPR2018-01080, which had already been instituted by the Board. Petitioner contended that joinder of an understudy "effectively neutralizes" the General Plastic factors concerning serial petitions, as it does not alter the schedule or unduly burden the Patent Owner. Furthermore, Petitioner argued this was not a "roadmap" petition, as it was substantively identical to the -01080 petition and was filed before any preliminary response or Board decision in other related proceedings could have guided its drafting.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5-7, 14, 15, 17, 21-25, 27, 28, 30, 32-34, 36, 37, 40-43, 45, 49, and 54 of the ’055 patent as unpatentable.