PTAB

IPR2019-00523

Apple Inc. v. AGIS SOFTWARE DEVELOPMENT LLC

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1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’251 patent relates to a method and system for establishing ad hoc networks where a first wireless device displays an interactive map showing the real-time locations of a group of other wireless devices. The system allows users to interact with the map interface to communicate with the other devices in the network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fumarolo-782, Fumarolo-844, Muramatsu, and Liu - Claims 1-2, 4-6, 8, 10, 12, 22-24, 27, 29, 31-32, and 35 are obvious over Fumarolo-782 in view of Fumarolo-844, Muramatsu, and Liu.

  • Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), and Liu (Application # 2002/0027901).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the combination of the four references teaches every limitation of the challenged claims. Fumarolo-782 was argued to disclose the base system for emergency responders, featuring a terminal that displays other units on an interactive map and allows communication. To supply the claimed method for creating communication groups ("talkgroups"), which Fumarolo-782 mentions but does not detail, Petitioner pointed to Fumarolo-844. This reference allegedly teaches the dynamic formation of such groups based on user selections on the map.

    To meet the claim limitations requiring a "server," Petitioner argued that Muramatsu teaches a portable navigation system that uses a central "navigation server" to store map data and manage location information. This server architecture would allegedly fulfill the role of the claimed server for exchanging location and status data. Finally, to meet the limitation that the first device "does not have access to respective Internet Protocol addresses of the second devices," Petitioner relied on Liu. Liu was asserted to disclose a method for anonymous communication where a server facilitates connections between devices using a "references code" so that the initiating device does not know the recipient's IP address.

    • Motivation to Combine: Petitioner asserted several motivations for the combination. A person of ordinary skill in the art (POSA) would combine Fumarolo-782 and Fumarolo-844 because they are related applications from the same inventors and assignee that solve complementary aspects of the same problem; Fumarolo-844 provides the logical "how" for a feature mentioned in Fumarolo-782. A POSA would incorporate Muramatsu's server-based architecture into the Fumarolo system to address the well-known early-2000s design challenge of limited memory on mobile devices by offloading map data storage and centralizing communication. Lastly, a POSA would integrate Liu's anonymous communication to enhance an emergency response system, enabling different responder groups (e.g., police and fire) to communicate efficiently in dynamic situations without pre-sharing network addresses.

    • Expectation of Success: Petitioner argued a POSA would have had a reasonable expectation of success in creating the combined system. The integration was presented as the application of known technologies (server architecture, talkgroup formation, anonymous routing) to an existing system (Fumarolo's map-based communication platform) to achieve the predictable benefits of improved efficiency, scalability, and interoperability.

4. Key Claim Construction Positions

  • The petition advanced a specific construction for the term "second georeferenced map", which was added during prosecution to overcome prior art. Petitioner argued that under the broadest reasonable interpretation, the term includes "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map."
  • This construction was asserted to be supported by the prosecution history and extrinsic evidence from the Patent Owner's infringement contentions in parallel district court litigation. The proposed construction is critical to the invalidity argument, as it allows prior art that teaches switching map views (e.g., to a satellite image) or panning/zooming to a new map area to satisfy this key limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial of institution under 35 U.S.C. §325(d) would be inappropriate. The core reason provided was that the specific four-reference combination asserted in the petition was never applied by the Examiner during the original prosecution of the ’251 patent. While Fumarolo-782, Fumarolo-844, and the application leading to Muramatsu were cited by the Patent Owner, they were never used in a rejection, and Liu was never cited at all.
  • The petition also contended that it was not cumulative of other IPRs filed against the same patent because it relies on different primary references and distinct legal theories. Furthermore, the petition was filed with a concurrent motion to join an identical petition (IPR2018-01083), a procedure Petitioner argued mitigates concerns of serial or harassing challenges.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 1-2, 4-6, 8, 10, 12, 22-24, 27, 29, 31-32, and 35 of Patent 9,445,251 as unpatentable.