Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 1 of 9 PageID #: 20520
`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 1 of 9 PageID #: 20520
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`EXHIBIT 6
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`EXHIBIT 6
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`

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`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 2 of 9 PageID #: 20521
`Trials@uspto.gov
`Paper 9
`Tel: 571-272-7822
`Entered: October 3, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–00817
`Patent 9,445,251 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 3 of 9 PageID #: 20522
`IPR2018–00817
`Patent 9,445,251 B2
`
`Northrop Grumman Info. Tech., Inc. v. United States, 535 F.3d 1339, 1344
`(Fed. Cir. 2008).
`We are not persuaded by Patent Owner that the ’410 Application
`incorporates the ’724 patent by reference. We find Dr. Bederson’s
`testimony credible and agree with Petitioner that a person of ordinary skill in
`the art would have understood that the phrase, “which is hereby incorporated
`by reference,” refers only to the immediately preceding ’728 patent and does
`not include the ’724 patent following it. Patent Owner is responsible for the
`use of this particular phrasing, and Patent Owner was in the best position to
`clarify any possible ambiguity. Given the standard that the ’410 Application
`“must use language that is express and clear, so as to leave no ambiguity
`about the identity of the document being referenced, nor any reasonable
`doubt about the fact that the referenced document is being incorporated,” we
`are not persuaded that the ’410 Application incorporates the ’724 patent by
`reference. Northrop Grumman Info. Tech., Inc. at 1344 (emphasis altered).
`4. Written Description Requirement
`4. Written Description Requirement
`As noted above, “to gain the benefit of the filing date of an earlier
`As noted above, “to gain the benefit of the filing date of an earlier
`application under 35 U.S.C. § 120, each application in the chain leading
`application under 35 U.S.C. § 120, each application in the chain leading
`back to the earlier application must comply with the written description
`back to the earlier application must comply with the written description
`requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc., 506 F.3d at 1378
`requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc., 506 F.3d at 1378
`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
`1997)). In order to satisfy the written description requirement, “the
`1997)). In order to satisfy the written description requirement, “the
`description must ‘clearly allow persons of ordinary skill in the art to
`description must ‘clearly allow persons of ordinary skill in the art to
`recognize that [the inventor] invented what is claimed.’” Ariad Pharm.,
`recognize that [the inventor] invented what is claimed.’” Ariad Pharm.,
`Inc., 598 F.3d at 1351 (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555,
`Inc., 598 F.3d at 1351 (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555,
`1562–63 (Fed. Cir. 1991)). “In other words, the test for sufficiency is
`1562–63 (Fed. Cir. 1991)). “In other words, the test for sufficiency is
`
`20
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`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 4 of 9 PageID #: 20523
`IPR2018–00817
`Patent 9,445,251 B2
`
`whether the disclosure of the application relied upon reasonably conveys to
`whether the disclosure of the application relied upon reasonably conveys to
`those skilled in the art that the inventor had possession of the claimed
`those skilled in the art that the inventor had possession of the claimed
`subject matter as of the filing date.” Id. See also Ralston Purina Co. v.
`subject matter as of the filing date.” Id. See also Ralston Purina Co. v.
`Far–Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
`
`
`Far–rr Mar– –rr Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
`The test for sufficiency requires “an objective inquiry into the four
`The test for sufficiency requires “an objective inquiry into the four
`corners of the specification from the perspective of a person of ordinary skill
`corners of the specification from the perspective of a person of ordinary skill
`in the art. Based on that inquiry, the specification must describe an
`in the art. Based on that inquiry, the specification must describe an
`invention understandable to that skilled artisan and show that the inventor
`invention understandable to that skilled artisan and show that the inventor
`actually invented the invention claimed.” Ariad Pharm., Inc. at 1351. As
`actually invented the invention claimed.” Ariad Pharm., Inc. at 1351. As
`
`we discussed supra, u the burden to demonstrate that the ’410 Application
`
`A
`we discussed supra, the burden to demonstrate that the ’410 Application
`satisfies this test has shifted to Patent Owner.
`satisfies this test has shifted to Patent Owner.
`As noted above, Petitioner contends that the ’251 patent claims are not
`As noted above, Petitioner contends that the ’251 patent claims are not
`adequately described in the ’410 Application in four different ways. See Pet.
`
`adequately described in the ’410 Application A in four different ways. See Pet.
`
`23–46. These include 1) requesting, retrieving, and using a second
`23–46. These include 1) requesting, retrieving, and using a second
`georeferenced map and its georeferencing data; 2) the full scope of the
`georeferenced map and its georeferencing data; 2) the full scope of the
`claimed “group” feature; 3) participating in the group based on receiving a
`claimed “group” feature; 3) participating in the group based on receiving a
`message from a second device; and 4) anonymous communications. Id.
`message from a second device; and 4) anonymous communications. Id.
`Patent Owner disputes Petitioner’s contentions, and argues that “[t]he
`Patent Owner disputes Petitioner’s contentions, and argues that “[t]he
`disclosure of the ’410 Application reasonably conveys to one of skill in the
`disclosure of the ’410 Application reasonably conveys to one of skill in the
`art that the inventor was in possession of the Challenged Claims.” Prelim.
`art that the inventor was in possession of the Challenged Claims.” Prelim.
`Resp. 16.
`Resp. 16.
`
`a. Second Georeferenced Map
`a. Second Georeferenced Map
`Because the burden of production has shifted to Patent Owner to
`Because the burden of production has shifted to Patent Owner to
`demonstrate the ’410 Application satisfies the written description
`demonstrate the ’410 Application satisfies the written description
`requirement of 35 U.S.C. § 112, we start with Patent Owner’s position.
`requirement of 35 U.S.C. § 112, we start with Patent Owner’s position.
`Here, Patent Owner asserts that the terms “georeferenced map” and
`Here, Patent Owner asserts that the terms “georeferenced map” and
`
`21
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`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 5 of 9 PageID #: 20524
`IPR2018–00817
`Patent 9,445,251 B2
`
`“georeferenced map symbols” are recited in the ’410 Application. Prelim.
`“georeferenced map symbols” are recited in the ’410 Application. Prelim.
`Resp. 19. Patent Owner also asserts that the devices described in the ’410
`Resp. 19. Patent Owner also asserts that the devices described in the ’410
`Application include databases and software that store and load geographical
`Application include databases and software that store and load geographical
`maps and georeferenced entities. Id. at 20 (citing Ex. 1006 Figs. 1, 8).
`maps and georeferenced entities. Id. at 20 (citing Ex. 1006 Figs. 1, 8).
`Patent Owner asserts that “the ’410 Application describes embodiments in
`Patent Owner asserts that “the ’410 Application describes embodiments in
`which databases and software application programs provide for ‘a
`which databases and software application programs provide for ‘a
`geographical map and georeferenced entities that are shown as display
`geographical map and georeferenced entities that are shown as display
`portion 16b that includes as part of the display various areas of interest in the
`portion 16b that includes as part of the display various areas of interest in the
`particular local map section.’” Id. (citing Ex. 1006 ¶ 34). Patent Owner also
`particular local map section.’” Id. (citing Ex. 1006 ¶ 34). Patent Owner also
`asserts the map display includes symbol representations of entities, such as
`asserts the map display includes symbol representations of entities, such as
`network participants and fixed entities, and that an operator selects a
`network participants and fixed entities, and that an operator selects a
`network participant on the map in order to track another network participant.
`network participant on the map in order to track another network participant.
`Id. at 20–21 (citing Ex. 1006 ¶ 40).
`Id. at 20–21 (citing Ex. 1006 ¶ 40).
`The ’410 Application, Patent Owner asserts, explains that “through
`The ’410 Application, Patent Owner asserts, explains that “through
`use of the software switches, the operator can also manipulate the
`use of the software switches, the operator can also manipulate the
`geographical map 16b or chart display;” “the area actually displayed in the
`geographical map 16b or chart display;” “the area actually displayed in the
`main geographical screen 16b.” Id. 21 (citing Ex. 1006 ¶ 35). Patent Owner
`main geographical screen 16b.” Id. 21 (citing Ex. 1006 ¶ 35). Patent Owner
`also asserts the ’410 Application includes a “database from which data can
`also asserts the ’410 Application includes a “database from which data can
`be requested by network participants (i.e., maps, satellite images, and the
`be requested by network participants (i.e., maps, satellite images, and the
`like).” Id. (citing Ex. 1006 ¶ 13).
`like).” Id. (citing Ex. 1006 ¶ 13).
`Patent Owner then argues
`Patent Owner then argues
`
`because georeferenced maps are being stored by bbecause georeferenced maps are being stored by
`
`databases on the mobile devices, and because the databases on the mobile devices, and because the
`
`specification explicitly states that the server is specification explicitly states that the server is
`
`meant to fulfill the role of a database including the meant to fulfill the role of a database including the
`
`distribution of “maps, satellite, images, and the distribution of “maps, satellite, images, and the
`
`like”, one of skill in the art could reasonably like”, one of skill in the art could reasonably
`
`ascertain that the inventor was in possession of the ascertain that the inventor was in possession of the
`
`22
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`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 6 of 9 PageID #: 20525
`IPR2018–00817
`Patent 9,445,251 B2
`
`
`
`invention whereby the server provides maps, such invention whereby the server provides maps, such
`
`as the georeferenced maps explicitly contemplated as the georeferenced maps explicitly contemplated
`
`by Figure 1 and 16b. bby Figure 1 and 16b.
`Id. at 22. Patent Owner also argues, “Petitioner’s position, that ‘maps’ are
`Id. at 22. Patent Owner also argues, “Petitioner’s position, that ‘maps’ are
`not ‘georeferenced maps’ simply ignores the context of the specification and
`not ‘georeferenced maps’ simply ignores the context of the specification and
`the focus of the invention.” Id. Patent Owner further argues “[i]n the
`the focus of the invention.” Id. Patent Owner further argues “[i]n the
`context of the entire specification, a network participant’s request for data
`context of the entire specification, a network participant’s request for data
`includes a request for maps, which are widely described and depicted as
`includes a request for maps, which are widely described and depicted as
`being ‘georeferenced’ throughout the disclosure.” Id. at 23.
`being ‘georeferenced’ throughout the disclosure.” Id. at 23.
`Patent Owner goes on to assert that
`Patent Owner goes on to assert that
`
`the ’410 Application describes embodiments in the ’410 Application describes embodiments in
`
`which each user device “is identified on the map which each user device “is identified on the map
`
`display of the other network participant user’s display of the other network participant user’s
`
`phone devices by a display symbol that is generated pphone devices by a display symbol that is generated
`
`on each user phone display to indicate each user’s on each user phone display to indicate each user’s
`
`own location and identity” and that “each symbol is own location and identity” and that “each symbol is
`
`placed at the correct geographical location on the pplaced at the correct geographical location on the
`
`user display and is correlated with the map on the user display and is correlated with the map on the
`
`display and display and
`
`is is
`
`transmitted and automatically transmitted and automatically
`
`
`displayed on the other network participant’s PC and displayed on the other network participant’s PC and d
`
`
`PDA devices.” PDA devices.”
`
`Id. at 24 (quoting Ex. 1006 ¶ 39). Patent Owner also asserts IId. at 24 (quoting Ex. 1006 ¶ 39). Patent Owner also asserts
`
`[t]he ’410 Application describes embodiments in [t]he ’410 Application describes embodiments in
`
`which the “map, fixed entities, events and cellular which the “map, fixed entities, events and cellular
`
`phone/PDA/GPS device pphone/PDA/GPS device
`
`communication net communication net
`
`participants’ latitude and longitude information is pparticipants’ latitude and longitude information is
`
`related to the ‘x’ and ‘y’ location on the touch related to the ‘x’ and ‘y’ location on the touch
`
`screen display map by a mathematical correlation screen display map by a mathematical correlation
`
`algorithm.” algorithm.”
`
`
`
`Id. IId.
`
`Patent Owner concludes by arguing “[t]he Petition does not
`Patent Owner concludes by arguing “[t]he Petition does not
`adequately address or explain why the above-cited disclosures fail to show
`adequately address or explain why the above-cited disclosures fail to show
`the requisite possession of the claimed invention, sending and receiving a
`the requisite possession of the claimed invention, sending and receiving a
`
`23
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`

`

`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 7 of 9 PageID #: 20526
`IPR2018–00817
`Patent 9,445,251 B2
`
`first and second geo-referenced map from a server” and “Petitioner does not
`first and second geo-referenced map from a server” and “Petitioner does not
`consider the context of the ’410 Application as a whole, which demonstrates
`consider the context of the ’410 Application as a whole, which demonstrates
`to one of skill in the art that the inventor was in possession of the invention.
`to one of skill in the art that the inventor was in possession of the invention.
`Id. at 24–25.
`Id. at 24–25.
`Petitioner argues the ’410 Application does not describe requesting a
`Petitioner argues the ’410 Application does not describe requesting a
`particular map location and receiving a second georeferenced map and its
`particular map location and receiving a second georeferenced map and its
`georeferencing data for that location, much less also displaying a second
`georeferencing data for that location, much less also displaying a second
`georeferenced map with a second set of symbols and interacting with those
`georeferenced map with a second set of symbols and interacting with those
`symbols to send data. Pet. 26 (citing Ex. 1002 ¶¶ 82–104). Petitioner
`symbols to send data. Pet. 26 (citing Ex. 1002 ¶¶ 82–104). Petitioner
`asserts the term “geo-referenced map” appears only once in the ’410
`asserts the term “geo-referenced map” appears only once in the ’410
`Application. Id. (citing Ex. 1006 ¶ 40).
`Application. Id. (citing Ex. 1006 ¶ 40).
`Petitioner argues the ’410 Application’s disclosure that the broad
`Petitioner argues the ’410 Application’s disclosure that the broad
`category of “maps, satellite images, and the like” can be requested from a
`category of “maps, satellite images, and the like” can be requested from a
`server fails to describe a second georeferenced map. Id. at 31. Petitioner
`server fails to describe a second georeferenced map. Id. at 31. Petitioner
`argues Patent Owner distinguished such prior art during prosecution of the
`argues Patent Owner distinguished such prior art during prosecution of the
`’251 patent, arguing that such a disclosure “does not teach or suggest that
`’251 patent, arguing that such a disclosure “does not teach or suggest that
`the . . . map is a georeferenced map that includes data relating position on
`the . . . map is a georeferenced map that includes data relating position on
`the second georeferenced map to spatial coordinates.” Id. (citing Ex. 1005,
`the second georeferenced map to spatial coordinates.” Id. (citing Ex. 1005,
`174–75 (emphasis added).
`174–75 (emphasis added).
`We are not persuaded that the ’410 Application satisfies the written
`We are not persuaded that the ’410 Application satisfies the written
`description requirement of 35 U.S.C. §112. As we noted above, the burden
`description requirement of 35 U.S.C. §112. As we noted above, the burden
`is on Patent Owner, not Petitioner, to demonstrate that the ’410 Application
`is on Patent Owner, not Petitioner, to demonstrate that the ’410 Application
`satisfies this requirement. In re NTP, Inc., 654 F.3d at 1276.
`satisfies this requirement. In re NTP, Inc., 654 F.3d at 1276.
`The independent claims of the ’251 patent repeatedly recite a second
`The independent claims of the ’251 patent repeatedly recite a second
`georeferenced map, which is “different from the first georeferenced map.”
`georeferenced map, which is “different from the first georeferenced map.”
`Ex. 1001, 14:59–15:35, 17:59–18:41. For example, independent claim 1
`Ex. 1001, 14:59–15:35, 17:59–18:41. For example, independent claim 1
`
`24
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`

`

`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 8 of 9 PageID #: 20527
`IPR2018–00817
`Patent 9,445,251 B2
`
`recites in relevant part,
`recites in relevant part,
`
`sending, from the first device to the server, a request sending, from the first device to the server, a request
`
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`for a second georeferenced map different from for a second georeferenced map different from m
`
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`the first georeferenced map, wherein the request the first georeferenced map, wherein the request
`
`specifies a map location; specifies a map location;
`
`receiving, receiving,
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`from from
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`the the
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`server, server,
`
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`second dsecond
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`the the
`
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`georeferenced map, wherein ggeoreferenced e map, wherein
`
`
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`second dsecond
`
`the the
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`the requested the requested
`
`georeferenced map ggeoreferenced map includes includes
`
`
`location and data relating positions on the location and data relating positions on the
`
`georeferenced map georeferenced map
`
`to to
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`spatial spatial
`
`second ssecond
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`coordinates; coordinates;
`
`presenting, via the interactive display of the first ppresenting, via the interactive display of the first
`
`device, the second georeferenced map and the device, the second georeferenced map and the
`
`plurality pplurality
`
`
`of of
`user-selectable user-selectable
`
`symbols symbols
`
`corresponding to the plurality of second devices, corresponding to the plurality of second devices,
`
`wherein the symbols are positioned on the wherein the symbols are positioned on the
`
`
`
`second georeferenced map at ssecond georeferenced map at
`respective respective
`
`positions corresponding to the locations of the ppositions corresponding to the locations of the
`
`second devices; and second devices; and
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`identifying user interaction with the interactive identifying user interaction with the interactive
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`display selecting one or more of the user-display selecting one or more of the user-
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`selectable symbols corresponding to one or more selectable symbols corresponding to one or more
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`of the second devices and positioned on the of the second devices and positioned on the
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`second georeferenced map ssecond georeferenced map
`Ex. 1001, 15:12–30 (emphasis added).
`Ex. 1001, 15:12–30 (emphasis added).
`Patent Owner never identifies where in the ’410 Application a second
`Patent Owner never identifies where in the ’410 Application a second
`georeferenced map is discussed, much less described in sufficient detail such
`georeferenced map is discussed, much less described in sufficient detail such
`that a person of ordinary skill in the art would understand that the inventor
`that a person of ordinary skill in the art would understand that the inventor
`was in possession of the invention as claimed. Looking objectively into the
`was in possession of the invention as claimed. Looking objectively into the
`four corners of the ’410 Application from the perspective of a person of
`
`four corners of the ’410 Application from the perspective of a person of A
`ordinary skill in the art, we are unable to discern any substantive discussion
`ordinary skill in the art, we are unable to discern any substantive discussion
`or explanation as to what a second georeferenced map is, why a second
`or explanation as to what a second georeferenced map is, why a second
`georeferenced map is necessary, how a second georeferenced map is created,
`georeferenced map is necessary, how a second georeferenced map is created,
`or what a second georeferenced map would be used for. Without any such
`or what a second georeferenced map would be used for. Without any such
`
`25
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`Case 2:17-cv-00513-JRG Document 335-6 Filed 01/30/19 Page 9 of 9 PageID #: 20528
`IPR2018–00817
`Patent 9,445,251 B2
`
`discussion or explanation, a person of ordinary skill in the art would be left
`discussion or explanation, a person of ordinary skill in the art would be left
`to speculate unduly about the nature and contribution of a second
`to speculate unduly about the nature and contribution of a second
`georeferenced map to the claimed invention. In the absence of any
`georeferenced map to the claimed invention. In the absence of any
`substantive discussion or explanation about a second georeferenced map in
`substantive discussion or explanation about a second georeferenced map in
`the disclosure, a person of ordinary skill in the art would not appreciate, or
`the disclosure, a person of ordinary skill in the art would not appreciate, or
`understand, that the inventor was in possession of the claimed invention.
`understand, that the inventor was in possession of the claimed invention.
`Based on the record presently before us, we are not persuaded that the
`Based on the record presently before us, we are not persuaded that the
`’410 Application sufficiently describes or explains a “second georeferenced
`’410 Application sufficiently describes or explains a “second georeferenced
`map” such that a person of ordinary skill in the art would understand that the
`map” such that a person of ordinary skill in the art would understand that the
`inventor was in possession of the claimed invention. Accordingly, we are
`inventor was in possession of the claimed invention. Accordingly, we are
`not persuaded the ’410 Application satisfies the written description
`not persuaded the ’410 Application satisfies the written description
`requirement of 35 U.S.C. § 112 with respect to the claims of the ’251 patent.
`requirement of 35 U.S.C. § 112 with respect to the claims of the ’251 patent.
`We need not reach Petitioner’s other arguments in support of its contention
`We need not reach Petitioner’s other arguments in support of its contention
`that the ’410 Application fails to comply with 35 U.S.C. § 112.
`
`that the ’410 Application fails to comply with 35 U.S.C. §A
`112.
`5. Conclusion on Priority Date
`5. Conclusion on Priority Date
`Because we are not persuaded the ’410 Application satisfies the
`Because we are not persuaded the ’410 Application satisfies the
`written description requirement of 35 U.S.C. § 112 with respect to the claims
`written description requirement of 35 U.S.C. § 112 with respect to the claims
`of the ’251 patent, Patent Owner has not established the ’251 patent is
`of the ’251 patent, Patent Owner has not established the ’251 patent is
`entitled to rely on the filing date of the ’410 Application, September 16,
`entitled to rely on the filing date of the ’410 Application, September 16,
`2013. Accordingly, based on this record, the ’724 patent, which issued on
`2013. Accordingly, based on this record, the ’724 patent, which issued on
`December 8, 2009, qualifies as prior art to the ’251 patent under 35 U.S.C.
`December 8, 2009, qualifies as prior art to the ’251 patent under 35 U.S.C.
`102(a)(1).
`102(a)(1).
`
`E. The ’724 Patent (Ex. 1008)
`The ’724 patent discloses a cellular, PDA communication device and
`communication system for allowing a plurality of cellular phone users to
`monitor others’ locations and status, and to initiate cellular phone calls by
`
`26
`
`