Apple Inc v. THL Holding Co LLC

1. Case Identification

• Case #: IPR2024-00400
• Patent #: 11,350,246
• Filed: January 19, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): THL Holding Company, LLC
• Challenged Claims: 20-27

2. Patent Overview

• Title: Location System
• Brief Description: The ’246 patent describes a location system where a primary mobile communication device (e.g., a smartphone) is used to locate a secondary, remote wireless device (e.g., a tag attached to keys). The system uses short-range wireless signals to determine the distance and/or direction to the remote device and display this information on the primary device's screen.

3. Grounds for Unpatentability

Ground 1: Claims 20 and 27 are obvious over Sweeney, Kalliola, Turunen, Mohammadian, Kalayjian, and Vauclair.

• Prior Art Relied Upon: Sweeney (Application # 2009/0058670), Kalliola (Application # 2008/0068265), Turunen (Patent 6,487,595), Mohammadian (Application # 2006/0114166), Kalayjian (Application # 2008/0125040), and Vauclair (Application # 2008/0320587).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination renders claim 20 obvious. Sweeney was asserted to teach the base system: a mobile communication device with a Bluetooth transceiver, processor, memory, and touchscreen GUI for locating a remote wireless accessory by determining distance based on signal strength. The remaining references were argued to supply features well-known in the art: Kalliola taught incorporating a long-range cellular transceiver for telephone calls; Turunen taught using the cellular transceiver for internet data; Mohammadian taught including an Ultra-Wideband (UWB) transceiver with multiple antennas; Kalayjian taught GUI features for selecting a named device from a list; and Vauclair taught the standard process of generating pairing signals to initiate a Bluetooth pairing sequence in response to user selection.
  • Motivation to Combine: Petitioner contended a POSITA would combine these references to create a more robust and feature-rich device. For example, a POSITA would equip Sweeney’s locator device with the long-range transceivers of Kalliola and Turunen because cellular and internet connectivity were standard features for mobile devices. Similarly, incorporating the UWB transceiver from Mohammadian was argued to be a predictable improvement for high-speed, low-power communication. Adding the user-friendly pairing process from Vauclair and the device selection GUI from Kalayjian were presented as straightforward design choices to improve usability, a common goal in product development.
  • Expectation of Success: Petitioner argued for a high expectation of success because the combination involved integrating well-understood, standardized technologies (e.g., Bluetooth, cellular networks, UWB) into a mobile device, a common practice at the time.

Ground 2: Claims 21-26 are obvious over Sweeney, Kalliola, Turunen, Mohammadian, Kalayjian, Vauclair, and Thorn.

• Prior Art Relied Upon: All references from Ground 1, plus Thorn (Application # 2009/0058651).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 by adding Thorn to address limitations in dependent claims 21-26, which relate to determining the remote device's position based on information received from a second mobile communication device over a wireless network. Petitioner asserted that Thorn taught a system where a "first terminal" (a second mobile device) that happens upon a lost object can transmit its location (e.g., via GPS) over a cellular network to the owner's "second terminal" (the primary mobile device). Thorn was also argued to teach scenarios where devices are "not associated" (i.e., not paired), addressing the key limitation of claim 26.
  • Motivation to Combine: A POSITA would be motivated to add Thorn's long-range location-finding capability to the Sweeney-based system to overcome its primary limitation: being restricted to the short range of Bluetooth. This modification would predictably improve the system's utility by enabling a user to locate an accessory left far away, thereby increasing the system's flexibility and robustness.
  • Expectation of Success: Petitioner asserted a reasonable expectation of success, as the required modifications would primarily be software-based and would not require hardware changes beyond the cellular transceiver already taught by Kalliola.

Ground 3: Claim 26 is obvious over Sweeney, Kalliola, Turunen, Mohammadian, Kalayjian, Vauclair, Thorn, and Lopatin.

• Prior Art Relied Upon: All references from Ground 2, plus Lopatin (Application # 2020/0107164).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative for invalidating claim 26, specifically targeting its "not paired" limitation, should the Board find claim 26 has a later effective filing date. Petitioner argued that Lopatin taught a secure, crowdsourced locator service for misplaced devices. In Lopatin's system, a lost accessory in "lost mode" cannot be paired with by other devices. A "finder device" (a second mobile device) that detects the lost accessory's beacon can report its location over a network to the owner, even though the finder device is explicitly not paired with the accessory.
  • Motivation to Combine: The motivation was the same as in Ground 2: to create a system for locating lost items beyond Bluetooth range. Lopatin provided a clear, explicit teaching of a system where an un-paired device facilitates the location of a lost item, which a POSITA would find desirable to implement for the same reasons of improving system utility.
  • Expectation of Success: The expectation of success was argued to be high, as Lopatin's teachings provided a clear blueprint for implementing the claimed functionality.

4. Key Claim Construction Positions

• Petitioner stated that for the purposes of the IPR proceeding, it applied the Patent Owner's constructions from parallel litigation for two key terms:
• Beacon: "Signal"
• Pairing signals: "Processor signals to initiate a Bluetooth pairing sequence"

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date of Claim 26: A central contention was that claim 26 is not entitled to the February 26, 2010 priority date of the ’246 patent. Petitioner argued the negative limitation "wherein the second mobile communication device is not paired with the selected remote device" was new matter first introduced on January 19, 2022. Petitioner asserted the original specification only described paired devices and provided no written description support for the exclusion of pairing, making the effective filing date for claim 26 much later and subjecting it to more recent prior art like Lopatin.

6. Arguments Regarding Discretionary Denial

• To preempt a discretionary denial under §314(a), Petitioner stipulated that if the IPR is instituted, it will not seek resolution in the parallel district court litigation of any invalidity ground that was raised or could have been reasonably raised in the petition. Petitioner cited Sotera Wireless v. Masimo to support that this stipulation mitigates concerns of duplicative efforts and conflicting decisions between the PTAB and the district court.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 20-27 of the ’246 patent as unpatentable.