Apple Inc v. Traxcell Technologies LLC

1. Case Identification

• Case #: IPR2022-00073
• Patent #: 10,820,147
• Filed: October 22, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Traxcell Technologies LLC
• Challenged Claims: 1-9, 11-20, and 22-24

2. Patent Overview

• Title: Navigation Using a Mobile Device
• Brief Description: The ’147 patent relates to systems and methods for providing navigation using mobile wireless devices. The technology involves a directional assistance network (DAN) that receives a starting location (the device's current location) and a destination, calculates a route, and sends it to the mobile device, while also managing user privacy through preference flags.

3. Grounds for Unpatentability

Ground 1: Obviousness over Moles, Sakarya, and Khavakh

• Claims Challenged: 1-3, 5-7, 11-14, and 16-18 are obvious over Moles, Sakarya, and Khavakh.
• Prior Art Relied Upon: Moles (Patent 6,505,048), Sakarya (WO 2001/28270), and Khavakh (Patent 6,192,314).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Moles disclosed the foundational wireless communication system, including a mobile device with a processor and transceiver capable of receiving its location from the network. Sakarya taught enhancing such a system by generating and displaying the mobile device's location on a map with geographic features (streets, buildings) and providing directional information. Khavakh further supplied the missing details for a sophisticated, network-based navigation system, teaching a "route calculation tool" that uses "road segment data records" to determine routes between specified locations and update them based on traffic. Petitioner asserted that the combination of these references taught all limitations of the challenged claims, including updating navigation information from a processor outside the wireless network.
  • Motivation to Combine: A POSITA would combine Moles with Sakarya to provide a more useful and intuitive display of a mobile device's location on a map, which was a known method for improving location-based services. A POSITA would then incorporate Khavakh’s detailed route calculation engine into the Moles/Sakarya system to provide efficient and accurate turn-by-turn directions, a predictable improvement. The combination represented assembling prior art elements for their established purposes.
  • Expectation of Success: Success was expected because location, mapping, and route calculation technologies for mobile devices were well-known, and the references operated in the same technical field. Integrating these known features would have been a straightforward application of existing technologies.

Ground 2: Obviousness over Moles, Sakarya, Khavakh, and Zellner

• Claims Challenged: 8-9, 19-20, and 22-24 are obvious over Moles, Sakarya, Khavakh, and Zellner.
• Prior Art Relied Upon: Moles, Sakarya, Khavakh, and Zellner (Patent 6,738,808).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base combination from Ground 1 and added Zellner to address claims reciting multiple-state preference flags for managing user privacy. While Moles taught basic privacy flags (e.g., permit/prohibit location tracking), Zellner disclosed a more flexible, network-side system for controlling the distribution of user and device information. Zellner specifically taught using flags to determine whether user identity (e.g., Mobile Identification Number) is shared, not shared, or replaced with a "dummy identification" for anonymous tracking. This combination allegedly taught the claimed three-state privacy flag system.
  • Motivation to Combine: A POSITA would add Zellner's teachings to the base navigation system to provide more granular and efficient privacy controls. Implementing these controls on the network side, as taught by Zellner, would conserve mobile device battery and processing power. Furthermore, it would provide a flexible way to comply with FCC mandates (e.g., always providing location for 911 calls) while allowing users to remain anonymous for third-party commercial services.
  • Expectation of Success: Success was expected because using preference flags to manage data sharing was a well-known technique. Implementing Zellner’s flexible, network-based flag processing into the established navigation system of the primary combination was a simple substitution of one known privacy control method for another, more advanced one.

Ground 3: Obviousness over Moles, Sakarya, Khavakh, and Tanibayashi

• Claims Challenged: 4 and 15 are obvious over Moles, Sakarya, Khavakh, and Tanibayashi.
• Prior Art Relied Upon: Moles, Sakarya, Khavakh, and Tanibayashi (Patent 7,010,306).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the base combination from Ground 1, adding Tanibayashi to address claims reciting the display of a notice when mapping information could not be found. The primary combination taught a system for requesting and receiving map and navigation data. Tanibayashi specifically taught a location-information system where, if the requested information "cannot be provided," an "error notification is made" and displayed on the mobile device.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Tanibayashi's error-notification feature into the base navigation system to improve the user experience. Providing feedback to the user when expected data is unavailable (e.g., due to a network failure or missing map data) was a common and logical design choice to make the system more robust and user-friendly.
  • Expectation of Success: There was a high expectation of success, as displaying error messages is a fundamental concept in software design. Adding a notification step for a failed data request was a predictable and straightforward modification.

4. Key Claim Construction Positions

• "navigation information": Petitioner asserted this term, which was not explicitly defined in the ’147 patent, should be construed as "one or more of a route, travel direction, speed, and mobile location." This construction was argued to be consistent with the specification's description of the inputs used to calculate a route and was critical to mapping prior art disclosures of location and speed data to this claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the core prior art combination (Moles/Sakarya/Khavakh) was not previously presented to or considered by the Examiner during prosecution.
• Petitioner also argued that discretionary denial under Fintiv was inappropriate because the parallel district court litigation was in its earliest stages, with no scheduling order, no claim construction, and minimal investment by the parties or the court. Petitioner further stipulated that it would not pursue the same invalidity grounds in district court if the IPR was instituted, thereby eliminating any significant overlap.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 11-20, and 22-24 of the ’147 patent as unpatentable under 35 U.S.C. §103.