Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2019-00524
• Patent #: 9,445,251
• Filed: January 3, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 13-19 and 21

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’251 patent describes a system and method for wireless devices to establish ad hoc networks. The system allows a first device to display an interactive, georeferenced map showing the locations of other devices in a group, and to initiate communications by selecting user-selectable symbols on the map.

3. Grounds for Unpatentability

Ground 1: Claims 13-19 and 21 are obvious over Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and Spaargaren.

• Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), Liu (Application # 2002/0027901), and Spaargaren (WO 02/17567).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught every limitation of the challenged claims, which depend from independent claim 1.
    • Fumarolo-782 was asserted to teach the core system: a display-based terminal for emergency response that shows the locations of other communication units on an interactive map and allows a user to select units on the map to initiate communication.
    • Fumarolo-844 was added to teach the method for dynamically forming the "talkgroups" that Fumarolo-782 mentions but does not detail. It allegedly disclosed receiving a message from a second device relating to joining a group.
    • Muramatsu was introduced to supply the client-server architecture missing from the Fumarolo references. It taught using a central "navigation server" to which devices transmit their location and from which they download map data. This addressed the claim limitations requiring sending location information to a server and receiving map data from the server, including a "second georeferenced map" (e.g., a zoomed-out or updated map).
    • Liu was added to teach the limitation that the first device "does not have access to respective Internet Protocol addresses of the second devices." Liu described a system for anonymous communication where a server facilitates connection between two stations without revealing their respective IP addresses to each other.
    • Spaargaren was used primarily for dependent claims 13-15, teaching proximity-based searching on a map. It disclosed identifying a user-selectable symbol based on the spatial coordinates of a selected position, searching a database for the nearest entity (e.g., a taxicab), and displaying a corresponding symbol.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references to achieve a predictable and improved system. All references operate in the same field of map-based communication and location sharing. A POSITA would have looked to Fumarolo-844 to implement the talkgroup functionality mentioned in Fumarolo-782. Incorporating Muramatsu's server-based architecture was presented as a known solution to manage map data and overcome memory limitations of early mobile devices. Liu’s anonymous communication would be a logical improvement for emergency systems where responders may not know each other's direct contact information, enhancing the "single map environment" goal of Fumarolo-782. Finally, adding Spaargaren's proximity search capability was argued to be a common-sense feature to improve the usability of a map-based emergency response tool.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. The Fumarolo references share inventors and describe similar systems, suggesting their teachings are compatible. The integration of a known client-server architecture (Muramatsu) and routing techniques (Liu, Spaargaren) into the Fumarolo system involved applying known principles to achieve a predictable result without requiring undue experimentation.

4. Key Claim Construction Positions

• "second georeferenced map": Petitioner argued this term, added during prosecution to overcome rejections, should be construed broadly under the broadest reasonable interpretation standard. Based on the patent owner's statements in the prosecution history and related litigation, Petitioner contended the term includes "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map." This broad construction was central to Petitioner's argument that Muramatsu's disclosure of downloading an "updated" or "enlarged" map met this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the core prior art references and the specific combination asserted in the petition were never considered by the USPTO during prosecution. While Fumarolo-782, Fumarolo-844, and the patent underlying the Muramatsu application were cited in an Information Disclosure Statement, they were never applied by the Examiner in any rejection. Liu and Spaargaren were never cited at all. Therefore, Petitioner claimed the Examiner did not have the benefit of the primary arguments and art presented in the petition. The petition also argued it was not cumulative with other IPRs and that its concurrent motion for joinder to an identical petition (IPR2018-01084) in an understudy role would neutralize any concerns regarding serial petitions under the General Plastic factors.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 13-19 and 21 of the ’251 patent as unpatentable under 35 U.S.C. §103.