Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 1 of 9 PageID #: 20529
`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 1 of 9 PageID #: 20529
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`EXHIBIT 7
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`EXHIBIT 7
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 2 of 9 PageID #: 20530
`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 IPR2018–00818
`Patent 9,408,055 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 335-7 Filed 01/30/19 Page 3 of 9 PageID #: 20531
`IPR2018–00818
`Patent 9,408,055 B2
`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 in language. 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., 535 F.3d
`at 1344 (emphasis altered).
`4. Written DescriptionRequirement
`4. Written DescriptionRequirement
`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.kk
`, 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
`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
`
`17
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 4 of 9 PageID #: 20532
`IPR2018–00818
`Patent 9,408,055 B2
`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. 598 F.2d at
`actually invented the invention claimed.” Ariad Pharm., Inc. 598 F.2d at
`1351. As we discussed supra, the burden to demonstrate that the ’410
`1351. As we discussed supra, the burden to demonstrate that the ’410
`Application satisfies this test has shifted to Patent Owner, and therefore is
`Application satisfies this test has shifted to Patent Owner, and therefore is
`not on Petitioner.
`not on Petitioner.
`Petitioner contends the ’055 patent’s claims are not adequately
`Petitioner contends the ’055 patent’s claims are not adequately
`described and lack written description support in the ’410 Application in two
`described and lack written description support in the ’410 Application in two
`ways: 1) the ’410 Application does not describe the specific steps for
`ways: 1) the ’410 Application does not describe the specific steps for
`initiating IP-based location sharing as recited in the independent claims; and
`initiating IP-based location sharing as recited in the independent claims; and
`2) the ’410 Application does not describe user input specifying a particular
`2) the ’410 Application does not describe user input specifying a particular
`symbol when adding a new entity to the display as recited in the independent
`symbol when adding a new entity to the display as recited in the independent
`claims. See Pet. 8–9, 18–27.
`claims. See Pet. 8–9, 18–27.
`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. 17.
`Resp. 17.
`
`a. Initiating IP Based Communication
`
`a. Initiating IP Based CommunicationCC
`Independent claim 1 of the ’055 patent is a method claim performed
`Independent claim 1 of the ’055 patent is a method claim performed
`by a first device that obtains the telephone number contact information of a
`by a first device that obtains the telephone number contact information of a
`plurality of second devices, where the first device, in part,
`plurality of second devices, where the first device, in part,
`
`
`
`facilitate[es] initiation of Internet Protocol (IP) facilitate[es] initiation of Internet Protocol (IP)[ ] ( )
`
`
`
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`based communication between the first device and bbased communication between the first device and d
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`
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`the respective second devices by using [the] the respective second devices by using [the]p y g [ ]
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`respective telephone numbers to send, from the first respective telephone numbers to send, from the first p p ,
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`device to the second devices, respective Short device to the second devices, respective Short , p
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`
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`Message Service (SMS) messages including a Message Service (SMS) messages including ag ( ) g g
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`telephone number of telephone number of p
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`the first device and the first device and
`
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`information usable b[y] the respective second information usable b[y] the respective second d
`
`
`18
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 5 of 9 PageID #: 20533
`IPR2018–00818
`Patent 9,408,055 B2
`
`device to send IP-based communication to the first device to send IP-based communication to the first
`
`device;device;
`
`Ex. 1001, 14:44–52. Ex. 1001, 14:44–52.
`As noted above, the burden of production is on Patent Owner to show
`As noted above, the burden of production is on Patent Owner to show
`that the ’410 Application provides adequate written description support for
`that the ’410 Application provides adequate written description support for
`this limitation in order to be entitled to rely on the ’410 Applications earlier
`this limitation in order to be entitled to rely on the ’410 Applications earlier
`filing date. In re NTP, Inc., 654 F.3d at 1276.
`filing date. In re NTP, Inc., 654 F.3d at 1276.
`Patent Owner states, “[t]he ’410 Application describes that ‘[t]he
`Patent Owner states, “[t]he ’410 Application describes that ‘[t]he
`method and system include the ability of a specific user to provide polling in
`method and system include the ability of a specific user to provide polling in
`which other cellular phones, using SMS, internet or WiFi, report
`which other cellular phones, using SMS, internet or WiFi, report
`periodically,’ and that ‘[a] user can manually poll any or all other cell phone
`periodically,’ and that ‘[a] user can manually poll any or all other cell phone
`devices that are used by all of the participants in the communication
`devices that are used by all of the participants in the communication
`network.’” Prelim. Resp. 19–20 (citing Ex. 1006 ¶ 47). Patent Owner also
`network.’” Prelim. Resp. 19–20 (citing Ex. 1006 ¶ 47). Patent Owner also
`states, “[t]he ’410 Application describes the polling as a ‘polling command’
`states, “[t]he ’410 Application describes the polling as a ‘polling command’
`and further explains that ‘[t]he receiving cellular phone application code
`and further explains that ‘[t]he receiving cellular phone application code
`responds to the polling command with the receiving cellular phone’s
`
`responds to the polling command with the receiving cellular phone’sr
`location and status which could include battery level, GPS status, signal
`location and status which could include battery level, GPS status, signal
`strength and entered track data.’” Id. at 20 (citing Ex. 1006 ¶ 47). Patent
`strength and entered track data.’” Id. at 20 (citing Ex. 1006 ¶ 47). Patent
`Owner then argues, “[t]his description clearly indicates that applicant
`Owner then argues, “[t]his description clearly indicates that applicant
`possessed the feature of sending SMS polling command message from a first
`possessed the feature of sending SMS polling command message from a first
`device to a second device.” Id.
`device to a second device.” Id.
`Patent Owner also argues “[t]he ’410 Application further
`Patent Owner also argues “[t]he ’410 Application further
`demonstrates possession of a polling command that includes a ‘telephone
`demonstrates possession of a polling command that includes a ‘telephone
`number of the first device and information usable b[y] the respective second
`number of the first device and information usable b[y] the respective second
`device to send IP-based communication to the first device.’” Id. The ’410
`device to send IP-based communication to the first device.’” Id. The ’410
`Application, Patent Owner argues, “describes ‘a polling mode in each cell
`Application, Patent Owner argues, “describes ‘a polling mode in each cell
`phone that permits a user to contact other cell phone users that have a
`phone that permits a user to contact other cell phone users that have a
`
`19
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 6 of 9 PageID #: 20534
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`Patent 9,408,055 B2
`common interest or relationship with a password and identifier for
`common interest or relationship with a password and identifier for
`communication and to quickly establish a temporary ad hoc network.’” Id.
`communication and to quickly establish a temporary ad hoc network.’” Id.
`at 20–21 (citing Ex. 1006 ¶ 9). Patent owner further argues “[t]he ’410
`at 20–21 (citing Ex. 1006 ¶ 9). Patent owner further argues “[t]he ’410
`Application repeatedly describes device phone numbers as identifying data
`Application repeatedly describes device phone numbers as identifying data
`and passwords as additional information which enables users to
`and passwords as additional information which enables users to
`communicate and exchange information across the network.” Id. at 21
`communicate and exchange information across the network.” Id. at 21
`(citing Ex. 1006 ¶¶ 14, 36, 38, 41, 43, 44, 56).
`(citing Ex. 1006 ¶¶ 14, 36, 38, 41, 43, 44, 56).
`Petitioner argues “the ’410 Application describes only one way to
`Petitioner argues “the ’410 Application describes only one way to
`initiate IP communications: logging into the ad hoc network by manually
`initiate IP communications: logging into the ad hoc network by manually
`entering the server’s IP address and network name.” Pet. 18 (citing Ex.
`entering the server’s IP address and network name.” Pet. 18 (citing Ex.
`1002 ¶¶ 52–55). Petitioner argues these steps are mandatory, pointing to the
`1002 ¶¶ 52–55). Petitioner argues these steps are mandatory, pointing to the
`’410 Application’s statement that “[e]ssentially the users that establish the
`’410 Application’s statement that “[e]ssentially the users that establish the
`ad hoc and password protected digital and voice networks are required to
`ad hoc and password protected digital and voice networks are required to
`enter the Server’s IP address and an ad hoc event name and a password,” as
`enter the Server’s IP address and an ad hoc event name and a password,” as
`well as other related passages from the ’410 Application. Id. at 19 (citing
`well as other related passages from the ’410 Application. Id. at 19 (citing
`Ex. 1006, Abstract, ¶ 52; Ex. 1002 ¶ 53).
`Ex. 1006, Abstract, ¶ 52; Ex. 1002 ¶ 53).
`Petitioner argues that in the ’410 Application, “the first device does
`Petitioner argues that in the ’410 Application, “the first device does
`not send an SMS message to each participant device to initiate IP
`not send an SMS message to each participant device to initiate IP
`communications. Id. at 21. Instead, once each user logs in, the server
`communications. Id. at 21. Instead, once each user logs in, the server
`forwards the user’s identifying information to all of the other participants so
`forwards the user’s identifying information to all of the other participants so
`that “all network participants know the identity, location, and status of all
`that “all network participants know the identity, location, and status of all
`other participants” and any user may send data “to a specific IP address” of
`other participants” and any user may send data “to a specific IP address” of
`another participant. Id. (citing Ex. 1006 ¶¶ 10, 30, 71). Petitioner argues
`another participant. Id. (citing Ex. 1006 ¶¶ 10, 30, 71). Petitioner argues
`“[t]he ’410 Application never describes sending a phone number and IP
`“[t]he ’410 Application never describes sending a phone number and IP
`address in an SMS message to initiate IP-based location sharing as recited in
`address in an SMS message to initiate IP-based location sharing as recited in
`the ’055 patent’s claims.” Id. at 22 (citing Ex. 1002 ¶¶ 57–59).
`the ’055 patent’s claims.” Id. at 22 (citing Ex. 1002 ¶¶ 57–59).
`Petitioner argues that the “polling” described in the ’410 Application
`Petitioner argues that the “polling” described in the ’410 Application
`
`20
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`

`

`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 7 of 9 PageID #: 20535
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`Patent 9,408,055 B2
`involves “existing participants in the network using an undisclosed protocol
`involves “existing participants in the network using an undisclosed protocol
`to report their locations ‘using SMS, internet or WiFi.’” Id. (citing Ex. 1006
`to report their locations ‘using SMS, internet or WiFi.’” Id. (citing Ex. 1006
`¶ 47). At best, Petitioner argues, “this is sharing location information via
`¶ 47). At best, Petitioner argues, “this is sharing location information via
`SMS, internet or WiFi. It is not sending an SMS message to ‘facilitate[e]
`SMS, internet or WiFi. It is not sending an SMS message to ‘facilitate[e]
`initiation’ of IP-based communications as recited by the claims, much less
`initiation’ of IP-based communications as recited by the claims, much less
`doing so by the particular claimed combination: sending an SMS message
`
`doing so by the particular claimed combination: sending an SMS messageii
`containing the sender’s phone number and IP address and receiving an IP-
`containing the sender’s phone number and IP address and receiving an IP-
`based response.” Id. at 22–23.
`based response.” Id. at 22–23.
`We are not persuaded the ’410 Application sufficiently describes or
`We are not persuaded the ’410 Application sufficiently describes or
`explains facilitating initiation of IP based communications as recited in
`explains facilitating initiation of IP based communications as recited in
`claim 1 and the other independent claims of the ’055 patent. Here, Patent
`claim 1 and the other independent claims of the ’055 patent. Here, Patent
`Owner never identifies with any particularity where the ’410 Application
`Owner never identifies with any particularity where the ’410 Application
`describes a first device, using the phone numbers of a plurality of second
`describes a first device, using the phone numbers of a plurality of second
`devices it obtained, sends an SMS message to the second devices, where the
`devices it obtained, sends an SMS message to the second devices, where the
`SMS message includes the phone number of the first device as well as
`SMS message includes the phone number of the first device as well as
`information the second devices can use to send IP based communications
`information the second devices can use to send IP based communications
`back to the first device.
`back to the first device.
`Patent Owner points to the description of the “polling” operation in
`Patent Owner points to the description of the “polling” operation in
`the ’410 Application as support for the written description requirement. See
`the ’410 Application as support for the written description requirement. See
`Prelim. Resp. 19–20. The ’410 Application describes “polling” as “the
`Prelim. Resp. 19–20. The ’410 Application describes “polling”g as “the
`ability of a specific user to provide polling in which other cellular phones,
`ability of a specific user to provide polling in which other cellular phones,
`using SMS, internet or WiFi, report periodically based on criteria such as
`using SMS, internet or WiFi, report periodically based on criteria such as
`time, speed, distance traveled, or a combination of time, speed and distance
`time, speed, distance traveled, or a combination of time, speed and distance
`traveled. A user can manually poll any or all other cell phone devices that
`traveled. A user can manually poll any or all other cell phone devices that
`are used by all of the participants in the communication network having the
`are used by all of the participants in the communication network having the
`same devices. The receiving cellular phone application code responds to the
`same devices. The receiving cellular phone application code responds to the
`polling command with the receiving cellular phone's location and status
`polling command with the receiving cellular phone's location and status
`
`21
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 8 of 9 PageID #: 20536
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`Patent 9,408,055 B2
`which could include battery level, GPS status, signal strength and entered
`which could include battery level, GPS status, signal strength and entered
`track data.” Ex. 1006 ¶ 47.
`track data.” Ex. 1006 ¶ 47.
`Stated differently, “polling,” as described by the ’410 Application,
`Stated differently, “polling,” as described by the ’410 Application,
`allows a specific user (a “first device”) to poll other cellular phones in the
`allows a specific user (a “first device”) to poll other cellular phones in the
`network (a “plurality of second devices”), where the receiving cellular phone
`network (a “plurality of second devices”), where the receiving cellular phone
`(one of the “plurality of second devices”) responds to the polling command
`(one of the “plurality of second devices”) responds to the polling command
`with its location and status using SMS, internet, or WiFi. This, however,
`with its location and status using SMS, internet, or WiFi. This, however,
`does not describe a first device, using the telephone numbers of a plurality of
`does not describe a first device, using the telephone numbers of a plurality of
`second devices it obtained, sending an SMS message to the second devices,
`second devices it obtained, sending an SMS message to the second devices,
`where that message includes the telephone number of the first device and
`where that message includes the telephone number of the first device and
`information usable by the second device(s), so that the second device(s) can
`information usable by the second device(s), so that the second device(s) can
`send an IP-based communication back to the first device.
`send an IP-based communication back to the first device.
`Patent Owners reliance on the ’410 Application’s description of “a
`Patent Owners reliance on the ’410 Application’s description of “a
`polling mode in each cell phone that permits a user to contact other cell
`polling mode in each cell phone that permits a user to contact other cell
`phone users that have a common interest or relationship with a password and
`phone users that have a common interest or relationship with a password and
`identifier for communication and to establish quickly a temporary ad hoc
`identifier for communication and to establish quickly a temporary ad hoc
`network,” fails to solve the written description problem, because this
`network,” fails to solve the written description problem, because this
`passage, at best, merely identifies a polling mode that permits a user to
`passage, at best, merely identifies a polling mode that permits a user to
`contact other cell phone users with a password and identifier for
`contact other cell phone users with a password and identifier for
`communication to establish an ad hoc network. See Ex. 1006 ¶ 9.
`communication to establish an ad hoc network. See Ex. 1006 ¶ 9.
`Looking objectively into the four corners of the ’410 Application from
`Looking objectively into the four corners of the ’410 Application from
`the perspective of a person of ordinary skill in the art, we are unable to find a
`the perspective of a person of ordinary skill in the art, we are unable to find a
`sufficient description or explanation of a first device, using the telephone
`sufficient description or explanation of a first device, using the telephone
`numbers of a plurality of second devices it obtained, sending an SMS
`numbers of a plurality of second devices it obtained, sending an SMS
`message to the second devices, where that message includes the telephone
`message to the second devices, where that message includes the telephone
`number of the first device and information usable by the second device(s), so
`number of the first device and information usable by the second device(s), so
`that the second device(s) can send an IP-based communication back to the
`that the second device(s) can send an IP-based communication back to the
`
`22
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`Case 2:17-cv-00513-JRG Document 335-7 Filed 01/30/19 Page 9 of 9 PageID #: 20537
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`Patent 9,408,055 B2
`first device. Without any such discussion or explanation, a person of
`first device. Without any such discussion or explanation, a person of
`ordinary skill in the art would not appreciate, or understand, that the inventor
`ordinary skill in the art would not appreciate, or understand, that the inventor
`was in possession of the claimed invention.
`was in possession of the claimed invention.
`Accordingly, we are not persuaded the ’410 Application satisfies the
`Accordingly, 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 ’055 patent. We need not reach Petitioner’s other argument in support
`of the ’055 patent. We need not reach Petitioner’s other argument in support
`of its contention that the ’410 Application fails to comply with 35 U.S.C.
`of its contention that the ’410 Application fails to comply with 35 U.S.C.
`§ 112.
`§ 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 ’055 patent, Patent Owner has not established the ’055 patent is
`of the ’055 patent, Patent Owner has not established the ’055 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 ’055 patent under 35 U.S.C.
`December 8, 2009, qualifies as prior art to the ’055 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
`touching a symbol on a touch screen display with a stylus, which can also
`include point to call conference calling. Ex. 1008, Abstract. Each
`participant’s cellular phone PDA device includes a GPS navigation receiver
`with application software for point to call cellular phone initiation to
`participants and geographical entities including vehicles, persons or events,
`conference calls and video transfers. Id.
`“The heart of the invention lies in the AGIS software applications
`
`23
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`