`
`
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`IPR2018-00817
`U.S. Patent No. 9,445,251
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`
`Patent No. 9,445,251
`Issue Date: September 13, 2016
`Title: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED
`DIGITAL AND VOICE NETWORKS
`
`
`
`_________________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-00817
`_________________________________________________________________________
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`
`
`
`
`IPR2018-00817
`U.S. Patent No. 9,445,251
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED ................................................................................................. 4
`
`A.
`
`B.
`
`C.
`
`Petitioner’s proposed construction of the “device” terms
`conflict with positions it has taken in the District Court case
`and Petitioner has failed to meet its burden under 37 C.F.R.
`§ 42.104 ................................................................................................. 4
`
`Petitioner improperly submits a conflicting construction for
`the “georeferenced map” term of the Challenged Claims ...................10
`
`Petitioner’s conflicting positions violate 37 C.F.R. § 42.11,
`§ 11.18(b)(2) ........................................................................................11
`
`III.
`
`PETITIONER HAS NOT ESTABLISHED THAT THE ’724
`PATENT IS PRIOR ART ..............................................................................14
`
`A.
`
`Petitioner fails to show that the “second georeferenced map”
`limitations are not supported by the disclosure of the ’410
`Application ..........................................................................................17
`
`1.
`
`2.
`
`Petitioner proposes an incorrect construction for the
`term “georeferenced map” ........................................................17
`
`The ’410 Application contains sufficient support to
`show possession of the “second georeferenced map” ..............18
`
`The “group” limitations are adequately supported by the
`disclosure of the ’410 Application ......................................................25
`
`The “based on receiving the message from the second device,
`participating in the group” limitations are adequately
`supported by the disclosure of the ’410 Application ..........................31
`
`B.
`
`C.
`
`i
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`

`

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`
`D.
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`
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`The “wherein the first device does not have access to
`respective Internet Protocol addresses of the second devices”
`limitations are adequately supported by the disclosure of the
`’410 Application ..................................................................................36
`
`IV. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED .................................................................................39
`
`A.
`
`B.
`
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 ....................................................................................................39
`
`Petitioner has failed to demonstrate that the Challenged
`Claims are Obvious in view of the ’724 Patent...................................42
`
`V.
`
`CONCLUSION ..............................................................................................43
`
`
`
`ii
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`Cases
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`IPR2018-00817
`U.S. Patent No. 9,445,251
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (P.T.A.B. June 26, 2015) ......................................................... 40
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 41
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 14
`
`In re Edwards,
`568 F.2d 1349 (CCPA 1978) ........................................................................ 16, 18
`
`Fitbit, Inc. v. Bodymedia, Inc.,
`Case No. IPR2016-00707 (P.T.A.B. Sept. 8, 2016) ............................... 14, 16, 18
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) .......................................................................... 42
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 39
`
`ICU Medical, Inc. v. Alaris Medical Systems, Inc.,
`558 F.3d 1368 (Fed. Cir. 2009) .................................................................... 30, 31
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 41
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 40
`
`In re Johnson,
`558 F.2d 1008 (CCPA 1977) .............................................................................. 39
`
`Key Pharm. v. Hercon Labs. Corp.,
`161 F.3d 709 (Fed. Cir. 1998) ............................................................................ 12
`
`iii
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 39
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ............................................... 40
`
`N. Telecom Ltd. v. Samsung Elecs. Co.,
`215 F.3d 1281 (Fed. Cir. 2000) .......................................................................... 12
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 40
`
`Santarus, Inc. v. Par Pharm., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012) .......................................................................... 38
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 40
`
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`Case IPR2016-00422 (P.T.A.B. July 6, 2016) ..................................................... 9
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .................................................................... 41, 43
`
`Yniguez v. State of Ariz.,
`939 F.2d 727 (9th Cir. 1991) .............................................................................. 13
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 14
`
`35 U.S.C. § 103 ........................................................................................................ 39
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`35 U.S.C. § 316(e) ................................................................................................... 14
`
`Other Authorities
`
`37 C.F.R. § 11.18(b)(2) ............................................................................................ 11
`
`37 C.F.R. § 42.11 ..................................................................................................... 11
`
`iv
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`37 C.F.R. § 42.104 ............................................................................................passim
`
`MPEP § 2173.05(i) .................................................................................................. 38
`
`Trial Practice Guide, 77 Fed. Reg. at 48,764 .......................................................... 13
`
`
`
`v
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`LIST OF EXHIBITS
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`
`Exhibit No.
`
`Document
`
`Appendix 1 to P.R. 4-3 Joint Claim Construction and Pre-
`Hearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence, filed in AGIS Software
`Development LLC v. Huawei Device USA, Inc.
`P.R. 4-3 Joint Claim Construction and Pre-Hearing Statement,
`filed in AGIS Software Development LLC v. Huawei Device
`USA, Inc.
`
`2001
`
`2002
`
`
`
`vi
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`

`

`
`
`I.
`
`INTRODUCTION
`
`On March 22, 2018, Apple Inc. (“Apple” or “Petitioner”) submitted a
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`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
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`9,445,251 (Ex. 1001, “the ’251 Patent”), challenging claims 1–35 (the “Challenged
`
`Claims”).
`
`The Petition challenges all of the claims with only a single ground––that the
`
`claims are obvious over AGIS’s own patent, U.S. Patent No. 7,630,724 (“the ‘724
`
`Patent”) to which the ‘251 Patent claims priority. However, the Petition fails for at
`
`least three reasons: (1) the Petition fails to properly construe the claims; (2) the
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`Petition does not establish that the ‘724 Patent is prior art; and (3) the Petition does
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`not demonstrate that the Challenged Claims are obvious over the ’724 Patent.
`
`First, the Petition is deficient because Petitioner fails to meet its burden
`
`under 37 C.F.R. § 42.104(b)(3). Petitioner proffered conflicting claim
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`constructions in the co-pending District Court litigation including an identification
`
`of numerous claims that it believes are governed by 35 U.S.C. § 112(f). Ex. 2001
`
`at 38–55. However, in this Petition, Petitioner does not allege that any of the
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`Challenged Claims are governed by 35 U.S.C. § 112(f) and only seeks construction
`
`of a single term: “georeferenced.” Notably, Petitioner has conceded in the District
`
`Court Litigation that this term should be afforded its plain and ordinary meaning.
`
`Additionally, Petitioner’s substantive arguments are rife with narrow
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`1
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`interpretations of claim terms that depart from the ordinary meaning of those
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`terms; however, Petitioner does not address any of those terms in the context of
`
`claim construction. Accordingly, the Petition is deficient and should be denied in
`
`its entirety.
`
`Second, regarding the prior art status of the ’724 Patent, Petitioner contends
`
`incorrectly that the Challenged Claims are entitled to an effective filing date no
`
`earlier than October 31, 2014 because, Petitioner alleges, the Challenged Claims
`
`lack the requisite continuity of disclosure through the priority chain to the ’724
`
`Patent. Petitioner’s sole basis for this challenge is an attack on the disclosure of
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`the ’251 Patent’s grandparent in the priority chain, U.S. Patent App. No.
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`14/027,410 (“the ’410 Application”). Petitioner alleges that the ’410 Application
`
`fails to provide sufficient written description to support the Challenged Claims and
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`thus breaks the priority chain. In reaching this conclusion, Petitioner identifies
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`only four allegedly missing “limitations”: (1) “requesting, retrieving, and using the
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`second georeferenced map and its georeferencing data;” (2) “the full scope of the
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`‘group’ feature;” (3) “participating in the group ‘based on receiving the message
`
`from the second device’;” and (4) “anonymous communications.” Petitioner’s
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`arguments regarding these four allegedly missing limitations fail to address: (a) the
`
`proper scope of the limitations-at-issue and (b) the full disclosure of the ’410
`
`Application. More specifically, each of Petitioner’s arguments relies on numerous
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`2
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`

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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`overly-narrow, straw-man claim constructions that depart from the broadest
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`reasonable interpretation, even though Petitioner ignores these terms in its claim
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`construction discussion. For example, Petitioner argues that the ’410 Application
`
`does not disclose “anonymous communications,” even though the word
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`“anonymous” is absent from any of the Challenged Claims. As set forth in greater
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`detail below, each of these allegedly missing terms are disclosed in the
`
`specification of the ‘410 Application and Petitioner has failed to demonstrate that
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`the ’724 Patent is prior art.
`
`Third, the Petition fails to address how each element of each claim is found
`
`in the prior art. In comparing the ’724 Patent to the Challenged Claims, Petitioner
`
`admits that several limitations are not “expressly” taught by the ’724 Patent (or any
`
`other reference), instead resorting to a hindsight-based obviousness analysis. This
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`faulty analysis infects every claim and the Petition should be denied.
`
`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
`
`explicitly reserves the right to present additional arguments, the deficiencies of the
`
`Petition noted herein are sufficient for the Board to find that Petitioner has not met
`
`its burden to demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
`
`3
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`

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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`II. THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED
`
`A.
`
`Petitioner’s proposed construction of the “device” terms
`conflict with positions it has taken in the District Court case
`and Petitioner has failed to meet its burden under 37 C.F.R.
`§ 42.104
`
`Petitioner has failed to meet its burden under 37 C.F.R. § 42.104(b)(3) to
`
`identify for the Board how each claim term is to be construed. The regulations
`
`provide that a petition for inter partes review must identify:
`
`[h]ow the challenged claim is to be construed. Where the claim
`
`to be construed contains a means-plus-function or step-plus-
`
`function limitation as permitted under 35 U.S.C. 112(f), the
`
`construction of the claim must identify the specific portions of
`
`the specification that describe the structure, material, or acts
`
`corresponding to each claimed function;
`
`37 C.F.R. § 42.104(b)(3).
`
`Here, Petitioner contends that each term (except for the georeferenced map
`
`term) of apparatus claim 24 should be given its plain and ordinary meaning.
`
`Meanwhile, in the co-pending District Court proceeding, Petitioner has taken none
`
`of the same positions. See, AGIS Software Development, LLC v. Huawei Device
`
`USA, Inc., et al., Dkt. No. 149, Case No. 17-CV-00513-JRG (E.D. Tex., June 15,
`
`4
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`2018) (the “District Court Litigation”) (Ex. 2001). Petitioner contends in District
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`Court Litigation that numerous limitations of apparatus claims 24-35 are
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`(1) governed by 35 U.S.C. § 112(f) and (2) indefinite. For example, Petitioner
`
`contends that the “device” limitations must be governed by 35 U.S.C. § 112(f), and
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`that the alleged functions are indefinite under 112(b) for failure to disclose
`
`sufficient corresponding structure. Ex. 2001 at 38–55. The table below
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`summarizes Petitioner’s positions in the District Court case:
`
`Claim Term
` “a first device programmed to
`perform operations comprising:
`
`[a] receiving a message from a
`second device, wherein the
`message relates to joining a
`group;
`
`[b] based on receiving the
`message from the second device,
`participating in the group,
`wherein participating in the group
`includes sending first location
`information to a server and
`receiving second location
`information from the server, the
`first location information
`comprising a location of the first
`device, the second location
`information comprising a
`plurality of locations of a
`respective plurality of second
`devices included in the group;
`
`
`Apple’s Proposed Construction
`Governed by 35 U.S.C. § 112(f);
`functions underlined in claim language
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`
`
`
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`
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`5
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`Claim Term
`[c] presenting, via an interactive
`display of the first device, a first
`interactive, georeferenced map
`and a plurality of user-selectable
`symbols corresponding to the
`plurality of second devices,
`wherein the symbols are
`positioned on the first
`georeferenced map at respective
`positions corresponding to the
`locations of the second devices,
`and wherein the first
`georeferenced map includes data
`relating positions on the first
`georeferenced map to spatial
`coordinates;
`
`[d] sending, from the first device
`to the server, a request for a
`second georeferenced map
`different from the first
`georeferenced map, wherein the
`request specifies a map location;
`
`[e] receiving, from the server, the
`second georeferenced map,
`wherein the second georeferenced
`map includes the requested
`location and data relating
`positions on the second
`georeferenced map to spatial
`coordinates;
`
`[f] presenting, via the interactive
`display of the first device, the
`second georeferenced map and
`the plurality of user-selectable
`symbols corresponding to the
`
`Apple’s Proposed Construction
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`
`
`
`
`
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`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
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`
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`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
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`6
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`Claim Term
`plurality of second devices,
`wherein the symbols are
`positioned on the second
`georeferenced map at respective
`positions corresponding to the
`locations of the second devices;
`and
`
`[g] identifying user interaction
`with the interactive display
`selecting one or more of the user-
`selectable symbols corresponding
`to one or more of the second
`devices and positioned on the
`second georeferenced map and
`user interaction with the display
`specifying an action and, based
`thereon, using an Internet
`Protocol to send data to the one
`or more second devices via the
`server.”
`
`(’251 Claim 24)
`
`
`Apple’s Proposed Construction
`
`
`
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm
`to perform the functionality described
`at 8:64-9:26
`
`
`
`
`
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`Intrinsic Support
`
`See, e.g., ’251 Patent at 1:37-46, 2:52-
`56, 5:7-12, 5:39-41, 5:48-55, 5:58-64,
`6:14-15, 7:2-8, 7:52-58;
`
`’728 Patent at 8:45–50, 7:31–37,
`10:40–46, claims 3, 10;
`
`’681 Patent at 4:63–64, 6:24–31, 7:14–
`19, claims 5, 9.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain
`
`7
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`Claim Term
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`Apple’s Proposed Construction
`the technology, state of the art at the
`time of the invention, the level of
`ordinary skill in the relevant art, and
`the meaning of this claim element to a
`person of ordinary skill in the art at the
`time of the alleged invention, including
`(1) whether a person of ordinary skill
`in the art would understand the claim
`term to have a sufficiently definite
`meaning as the name for structure and
`(2) whether a person of ordinary skill
`in the art would understand the
`specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on
`Dr. Bartone to respond to Plaintiff’s
`claim construction positions and any
`testimony of Plaintiff’s expert and
`witnesses.
`
`Defendants also reserve the right to
`rely on positions and evidence relied
`upon by Plaintiff and its experts in the
`related IPR proceedings.
`
`
`Petitioner’s inconsistent positions are particularly egregious given the
`
`specific means-plus-function identifications required by 37 C.F.R. § 42.104(b)(3).
`
`This rule requires Petitioner to identify corresponding structure for each term that
`
`it contends should be governed by 35 U.S.C. 112(f). Moreover, Petitioner has
`
`provided corresponding structure to the District Court, albeit, in the alternative:
`
`8
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`“Intrinsic Support See, e.g., ’251 Patent at 1:37-46, 2:52-56, 5:7-12, 5:39-41,
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`5:48-55, 5:58-64, 6:14-15, 7:2-8, 7:52-58”. Ex. 2001 at 54. However, Petitioner
`
`did not provide such an identification in this proceeding and Petitioner does not
`
`map any corresponding structure to the prior art. The Petition should be denied.
`
`
`
`Moreover, Petitioner has failed to meet its burden under 37 C.F.R.
`
`§ 42.104(b)(3) because Petitioner failed to disclose the claim constructions that
`
`Petitioner believes are correct under applicable law and should therefore be applied
`
`by the Board. The Board has said that “[t]he ‘construction’ referred to by 37
`
`C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that
`
`Petitioner believes is the correct construction under applicable law and should
`
`apply in the involved proceeding.” Toyota Motor Corp. v. Blitzsafe Texas, LLC,
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`Case IPR2016-00422 (P.T.A.B. July 6, 2016), Paper 12 at 26-27 (emphasis added)
`
`(noting that the Petitioner provided the claim constructions of the district court, but
`
`did not “take ownership” of the constructions and, in two instances, asserted that
`
`the constructions were incorrect).
`
`Accordingly, the Petition is deficient with respect to Challenged Claims 24-
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`35 for failure to disclose how the claims should be construed, for failure to identify
`
`the specific portions of the specification that describe the structure, material, or
`
`acts corresponding to each claimed function, and for failure to take ownership of
`
`its constructions in the District Court. Due to at least these deficiencies, the
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`9
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`Petition should be denied in its entirety in order to preserve the valuable resources
`
`of the Board.
`
`B.
`
`Petitioner improperly submits a conflicting construction for
`the “georeferenced map,” “group,” and “receiving a
`message from a second device” terms of the Challenged
`Claims
`
`For similar reasons, Petitioner has failed to meet its burden under 37 C.F.R.
`
`§ 42.104(b)(3) to identify for the Board how the terms “georeferenced map,”
`
`“group,” and “receiving a message from a second device” are to be construed in
`
`this proceeding. These terms appear in every Challenged Claim. The Petition
`
`advances a different construction for “georeferenced map,” as compared to
`
`Petitioner’s position in the District Court proceeding. Here, Petitioner submits that
`
`“georeferenced map” should be construed to mean “a map that includes data
`
`relating positions on the map (e.g., x/y coordinates) to spatial coordinates (e.g.,
`
`latitude and longitude).” Meanwhile, Petitioner has failed to proffer a proposed
`
`construction for this term to the District Court and that term will receive its plain
`
`and ordinary meaning during the Markman process. Petitioner also proposes that
`
`the District Court construe the term “group” to mean “more than two participants
`
`associated together without having to pre-enter data into a web or identify other
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`users by name, E-mail addresses or phone numbers” and the phrase “receiving a
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`message from a second device” to mean “receiving a message directly from second
`
`10
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`IPR2018-00817
`U.S. Patent No. 9,445,251
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`device without the use of a server” (Ex. 2001 at 120-122), while failing to assert an
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`express construction for these terms in this proceeding. Petitioner provides no
`
`reason why the Board should permit Petitioner to sidestep the requirements of 37
`
`C.F.R. § 42.104(b)(3) as they relate to the terms “georeferenced map,” “group,”
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`and “receiving a message from a second device”––each of which is implicated in
`
`the written description analysis. Accordingly, the Petition is deficient with respect
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`to the Challenged Claims for failure to disclose how the claims should be
`
`construed, and the Petition should be denied in its entirety.
`
`C.
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`Petitioner’s conflicting positions violate 37 C.F.R. § 42.11,
`§ 11.18(b)(2)
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`In filing its Petition, Petitioner certified that the Petition’s “legal contentions
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`[in the Petition] are warranted by existing law” and that its “factual contentions
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`have evidentiary support.” See, 37 C.F.R. § 42.11, § 11.18(b)(2). However,
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`Petitioner has knowingly advanced conflicting positions before the District Court
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`and in this proceeding. Petitioner provides the following footnote where it
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`acknowledges that it intends to apply conflicting positions:
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`Apple reserves the right to argue alternative and narrower definitions
`before a district court. This includes arguing that certain terms not
`construed in this petition should be construed in the district court, as
`well as arguing that certain terms are governed by § 112(f) and/or are
`indefinite.
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`Pet. at 12. More specifically, as explained above, Petitioner submits that
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`“georeferenced map” should be construed to mean “a map that includes data
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`U.S. Patent No. 9,445,251
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`relating positions on the map (e.g., x/y coordinates) to spatial coordinates (e.g.,
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`latitude and longitude).” Aside from this term, Petitioner submits that each and
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`every remaining term should be accorded its broadest reasonable interpretation.
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`Meanwhile, in the District Court Litigation, Petitioner has taken the conflicting
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`positions that: (a) the term “georeferenced map” does not need to be construed and
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`thus will be construed according to its plain and ordinary meaning; (b) the “first
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`device” limitation of claim 24 (and claims 25–35 by dependency) must be
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`governed by 35 U.S.C. § 112(f); and the alleged functions of “receiving a
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`message. . .,” “participating in the group. . .,” “presenting . . .a first interactive,
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`georeferenced map . . .,” “sending . . .a request for a second georeferenced
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`map . . .,” “receiving . . .the second georeferenced map . . .,” “presenting . . .the
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`second georeferenced map . . .,” and “identifying user interaction . . .” are
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`indefinite under 112(b) for failure to disclose sufficient corresponding structure.
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`Ex. 2001 at 38–55.
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`The Federal Circuit has expressed the view that contradictory constructions
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`from the same party, as advanced here, are “highly questionable” and viewed
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`“with extreme disfavor.” See, e.g., Key Pharm. v. Hercon Labs. Corp., 161 F.3d
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`709, 714 (Fed. Cir. 1998); see also N. Telecom Ltd. v. Samsung Elecs. Co., 215
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`F.3d 1281, 1290 (Fed. Cir. 2000). The Board should bar petitioners from taking
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`inconsistent positions on the very patent claims it advocates are indefinite in
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`district court so as to preserve the integrity of the Office and its valuable resources.
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`See, e.g., Yniguez v. State of Ariz., 939 F.2d 727, 738-39 (9th Cir. 1991) (applying
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`the doctrine of judicial estoppel to prevent a party from changing its position over
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`the course of judicial proceedings) (citations omitted).
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`It is Petitioner’s burden to propose claim constructions that it believes are
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`correct under applicable law as required by the Board in its interpretation of 37
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`C.F.R. § 42.104(b)(3). See Trial Practice Guide, 77 Fed. Reg. at 48,764 (“where a
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`party believes that a specific term has meaning other than its plain meaning, the
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`party should provide a statement identifying a proposed construction of the
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`particular term and where the disclosure supports that meaning.”).
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`Moreover, if Petitioner believes that the claims should be governed by
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`112(f) in the District Court, it cannot believe that existing law warrants that these
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`claims should not be governed by 112(f) in this proceeding, nor could it believe
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`that such a contention has evidentiary support. If Petitioner believes that the
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`claims are governed by 112(f) and indefinite according to existing law (which it
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`must in order to advance those positions in District Court), it should not have
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`pursued inter partes review because the Board cannot find a reasonable likelihood
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`of success where claims are indefinite. Petitioner’s submission of conflicting
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`positions in contravention of the rules necessitates a denial of the Petition in its
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`entirety.
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`III. PETITIONER HAS NOT ESTABLISHED THAT THE ’724
`PATENT IS PRIOR ART
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`The Petitioner bears the burden of proof when attacking a priority claim of a
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`challenged patent in an inter partes review. 35 U.S.C. § 316(e); Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see
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`also Fitbit, Inc. v. Bodymedia, Inc., Case No. IPR2016-00707 (P.T.A.B. Sept. 8,
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`2016), Paper 9 at 11. A petition must identify the patents or printed publications
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`relied upon for each ground; how the challenged claim is to be construed; and how
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`the construed claim is unpatentable under 35 U.S.C. 102 or 103. 37 C.F.R.
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`§ 42.104(b)(2)(4). Petitioner must identify “the relevance of the evidence to the
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`challenge raised, including identifying specific portions of the evidence that
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`support the challenge.” 37 C.F.R. § 42.104(b)(5). In other words, it is the
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`Petitioner’s burden to show that the claims are not entitled to the earlier priority
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`date.
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`Petitioner incorrectly states that “AGIS did not incorporate the preceding
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`applications in the chain until the immediate parent of the ’251 Patent,” thus
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`shifting the burden from Petitioner to Patent Owner. Pet. at 15. However, this
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`statement is incorrect because the Challenged Claims are entitled to the benefit of
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`the earliest effective filing date in their priority chain, as identified on the face of
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`the ’251 Patent:
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`This application is a continuation of U.S. patent application Ser. No.
`14/529,978 filed on Oct. 31, 2014, which is a continuation-in-part of
`U.S. patent application Ser. No. 14/027,410 filed on Sep. 16, 2013,
`now U.S. Pat. No. 8,880,042, issued Nov. 4, 2014, which is a
`continuation of U.S. patent application Ser. No. 13/751,453 filed Jan.
`28, 2013, now U.S. Pat. No. 8,538,393, issued Sep. 17, 2013, which is
`a continuation-in-part of U.S. patent application Ser. No. 12/761,533
`filed on Apr. 16, 2010, now U.S. Pat. No. 8,364,129, issued Jan. 29,
`2013, which is a continuation-in-part of U.S. patent application Ser.
`No. 11/615,472 filed on Dec. 22, 2006, now U.S. Pat. No. 8,126,441,
`issued on Feb. 28, 2012, which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006, now U.S. Pat.
`No. 7,630,724, issued on Dec. 8, 2009, which is a continuation-in-part
`of U.S. patent application Ser. No. 10/711,490, filed on Sep. 21, 2004,
`now U.S. Pat. No. 7,031,728, issued on Apr. 18, 2006. All of the
`preceding applications are incorporated herein by reference in their
`entirety.
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`Ex. 1001 at 11. The’410 Application similarly states that it is “a continuation-in-
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`part of U.S. patent application Ser. No. 11/308,648 filed Apr. 17, 2006, now U.S.
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`Pat. No. 7,630,724, issued on Dec. 8, 2009.” Ex. 1006, ¶ 1. Thus, Petitioner has
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`raised no legitimate challenge regarding whether the ’724 Patent was “incorporated
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`in the chain.” Even if Petitioner’s statement was intended to mean that it disputes
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`whether the ’724 Patent Application was incorporated by reference into the ’410
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`Application, this would still not shift the burdens to Patent Owner as it remains
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`Petitioner’s burden to show that there is no continuity of disclosure for the
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`Challenged Claims in the ’410 Application. Identity of disclosure or “equivalent”
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`description are not required; Petitioner must demonstrate that the disclosure fails to
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`reasonably convey to those skilled in the art that the inventor was in possession of
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