Axon Enterprises Inc v. Airspace Systems Inc

1. Case Identification

• Case #: IPR2025-00530
• Patent #: 10,249,199
• Filed: February 10, 2025
• Petitioner(s): Axon Enterprise, Inc. and Dedrone Holdings, Inc.
• Patent Owner(s): Airspace Systems, Inc.
• Challenged Claims: 1-9

2. Patent Overview

• Title: System and Method for Aerial System Discrimination and Action
• Brief Description: The ’199 patent discloses an "aerial system discrimination system" designed to determine if an aerial system, such as an unmanned aerial vehicle (UAV), is authorized to be in a specific airspace. The system receives an identifier signal from the UAV, checks it against a permissions module, and can activate a disruption system to interdict unauthorized UAVs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Whitmarsh - Claims 1-3 and 5-9 are obvious over Whitmarsh.

• Prior Art Relied Upon: Whitmarsh (Application # 2019/0003807).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Whitmarsh, which describes a UAV defense system, discloses all limitations of claim 1. Whitmarsh's system receives unique identifiers (e.g., MAC addresses) from UAVs via an "identification receiver" to determine if they are "friendly" or "hostile" using a registry, which functions as the claimed "permission module." Whitmarsh further described a "countermeasures system" that is activated when an unauthorized drone is detected up to five miles away, which Petitioner contended is a "disruption system" that is "preemptively enabled" based on the received identifier signal, as required by the claim. Dependent claims were allegedly met by Whitmarsh's disclosure of using WiFi protocols (claim 2), deploying the system on mobile platforms like ships or aircraft (claim 3), and using interceptor drones with projectiles to "shoot down" unauthorized UAVs, thereby removing them from the airspace (claims 5-7).
  • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSITA) to implement Whitmarsh's conceptual disclosures using well-known components, such as processors for the permission module and launchers for the disruption system.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success because implementing the described functions involved routine engineering and known technologies.

Ground 2: Obviousness over Whitmarsh and Goodrich - Claims 1-3 and 5-9 are obvious over Whitmarsh in view of Goodrich.

• Prior Art Relied Upon: Whitmarsh (Application # 2019/0003807) and Goodrich (Application # 2016/0023760).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on Whitmarsh for the base system of identifying unauthorized UAVs, as in Ground 1. Goodrich was introduced to provide specific details for the "disruption system." Goodrich disclosed a counter-UAV system that deploys an "interceptor UAV" with a disabling system (e.g., a net gun) to physically tangle with and disable a target UAV. Petitioner argued that combining Goodrich's detailed interceptor and disabling mechanism with Whitmarsh's identification and authorization framework rendered the claims obvious.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA implementing Whitmarsh's system, which suggests an intercept countermeasure without providing extensive detail, would have been motivated to look to other sources like Goodrich for known, effective methods of implementing such an interceptor. Market forces would also drive the use of Goodrich's reusable net-based system over Whitmarsh's potentially destructive collision-based approach to reduce operational costs.
  • Expectation of Success (for §103 grounds): Success would be expected because the combination involved applying a known interceptor technology (Goodrich) to a known threat-identification system (Whitmarsh) to achieve the predictable result of disabling an unauthorized drone.

Ground 3: Obviousness over Viggiano and Goodrich - Claims 1, 3, and 5-9 are obvious over Viggiano in view of Goodrich.

• Prior Art Relied Upon: Viggiano (Application # 2007/0239986) and Goodrich (Application # 2016/0023760).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner offered this combination as an alternative to grounds based on Whitmarsh. Viggiano disclosed an authentication system for aircraft using ADS-B (Automatic Dependent Surveillance-Broadcast) signals. Viggiano's "Authenticator" received unique identifiers and used a challenge-response protocol to determine if an aircraft was authorized, thus teaching the identification receiver and permission module. Goodrich was again used to supply the claimed "disruption system."
  • Motivation to Combine (for §103 grounds): Petitioner argued that Viggiano's system was focused only on authenticating identity and lacked a mechanism for acting against unauthorized aircraft. A POSITA seeking to create a complete security solution for an airspace would be motivated to combine Viggiano's authentication method with a known countermeasure system, such as the interceptor UAV taught by Goodrich, to disable aircraft that fail authentication.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in integrating Goodrich's physical interdiction system with Viggiano's electronic authentication system, as it would predictably result in a system that first identifies and then neutralizes a threat.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Whitmarsh and Falk (for claim 4's reassignable identifier), Whitmarsh, Goodrich, and Falk (claim 4), and Viggiano, Goodrich, and Falk (claim 4), which relied on similar combination rationales and used Falk (Patent 9,805,238) to teach a removably attachable beacon as the identifier transmission system.

4. Key Claim Construction Positions

• Petitioner argued the term "permission module" should be construed under 35 U.S.C. §112(f) as a means-plus-function term.
  • Function: "determining that the aerial system associated with the aerial system identifier signal is not permitted to be in an airspace."
  • Structure: A special-purpose computer programmed to perform the algorithm of "comparing an aerial system parameter, such as an identifier, with the permissions for the airspace." This construction was argued to be critical for assessing whether the prior art discloses the claimed module.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the co-pending district court litigation was in its earliest stages, with no trial date set, no claim construction conducted, and minimal investment of resources by the court and parties. Petitioner noted its "diligent" filing of the IPR petition before receiving infringement contentions favored institution.
• §325(d): Petitioner contended that denial under §325(d) was improper because, although Viggiano was cited during prosecution of the ’199 patent, the Examiner never applied it in any rejection. Therefore, the Board would be considering the prior art combinations presented in the petition for the first time.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’199 patent as unpatentable.