Apple Inc v. Traxcell Technologies LLC

1. Case Identification

• Case #: IPR2021-01553
• Patent #: 9,549,388
• Filed: September 22, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Traxcell Technologies LLC
• Challenged Claims: 1-25, 27-28, and 30

2. Patent Overview

• Title: Navigation Using Mobile Wireless Devices
• Brief Description: The ’388 patent relates to systems and methods for providing navigation using mobile wireless devices. The technology involves a directional assistance network that receives starting and destination locations to calculate and send a route to a mobile device, and also utilizes preference flags to control third-party access to user location and information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Moles, Sakarya, and Meadows - Claims 1-4, 6-7, 9-14, 16-17, and 19-20 are obvious over Moles in view of Sakarya and Meadows.

• Prior Art Relied Upon: Moles (Patent 6,505,048), Sakarya (WO 2001/28270), and Meadows (Patent 6,716,101).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Moles, discloses a wireless communication system where a mobile device's location is determined and can be displayed. Moles also teaches preference flags (e.g., a "location privacy flag") to control the transmission of location information. Sakarya was argued to supply the teaching of displaying the device's location on a map with geographic features (e.g., streets, buildings) and providing directional information to a user-specified destination. To address the ’388 patent’s network-side "second processor" for determining location, Petitioner asserted that Meadows explicitly teaches a "location processor" within the wireless network that calculates the geographical location of mobile devices.
  • Motivation to Combine: A POSITA would combine Moles and Sakarya to enhance the utility of Moles’ location-finding system by displaying the location on a map and adding navigation, which were well-known applications for such technology. A POSITA would further incorporate Meadows' network-side location processor into the Moles/Sakarya system as a known and predictable method for determining a mobile device's location, improving the system by offloading processing to the network.
  • Expectation of Success: Petitioner contended that success was expected because the combination involved applying known technologies (mapping, navigation, network-based location processing) to an existing wireless location system to achieve predictable results.

Ground 2: Obviousness over Moles, Sakarya, Meadows, and Zellner - Claims 24-25, 27-28, and 30 are obvious over the combination of Moles, Sakarya, and Meadows in view of Zellner.

• Prior Art Relied Upon: Moles (Patent 6,505,048), Sakarya (WO 2001/28270), Meadows (Patent 6,716,101), and Zellner (Patent 6,738,808).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the core combination from Ground 1 and adds Zellner to address limitations in claims related to multi-state preference flags. Petitioner argued Zellner teaches a flexible, network-side system for controlling the distribution of user and location information using a "location preference parameter." Zellner allegedly discloses multiple flag states, including a state prohibiting tracking, a state permitting open access to both location and user identity, and a third state providing access to location with a generic "dummy identification" to maintain user anonymity.
  • Motivation to Combine: A POSITA would combine Zellner's teachings with the primary combination to provide more granular privacy controls, an established design goal in location-based services. Implementing these controls on the network side, as taught by Zellner, was an efficient and known technique for saving battery power on the mobile device. This combination was also motivated by the need to comply with FCC rules for 911 services while allowing user control over information shared with other third parties.

Ground 3: Obviousness over Moles, Sakarya, Meadows, and Khavakh - Claims 8 and 18 are obvious over the combination of Moles, Sakarya, and Meadows in view of Khavakh.

• Prior Art Relied Upon: Moles (Patent 6,505,048), Sakarya (WO 2001/28270), Meadows (Patent 6,716,101), and Khavakh (Patent 6,192,314).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Khavakh to the core combination to provide specific details for route calculation required by claims 8 and 18. Petitioner asserted that while the primary combination teaches a navigation system, Khavakh provides a detailed implementation of how a route calculation algorithm functions. Khavakh describes a route as being comprised of a list of "road segment data records," where the system computes a numerical value for each segment corresponding to the expected travel time.
  • Motivation to Combine: A POSITA developing the navigation system of Moles/Sakarya would naturally look to references like Khavakh for a known and detailed method of implementing the route calculation. Khavakh provided an obvious and predictable way to compute and update routes based on segments and travel times, which was a common technique in navigation software.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 5 and 15 over Moles, Sakarya, Meadows, and Tanibayashi (for error notifications); claim 21 over Moles and Sakarya; and claims 22-23 over Moles, Sakarya, and Khavakh.

4. Key Claim Construction Positions

• Petitioner argued that the term "navigation information," which is not explicitly defined in the ’388 patent, should be construed to mean "one or more of a route, travel direction, speed, and mobile location." This construction was based on the specification's description of these elements being used to calculate a route.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the prior art references and combinations presented in the petition were not cited or considered by the examiner during the prosecution of the ’388 patent.
• Petitioner further argued that discretionary denial under Fintiv was inappropriate. It contended that the parallel district court litigation was in its very early stages, with minimal investment from the parties and the court. The proposed trial date was well after the statutory deadline for a Final Written Decision. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted, eliminating any overlap of issues.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-25, 27-28, and 30 of the ’388 patent as unpatentable.