Apple, Inc. v. X One, Inc., Patent Interference 106

• Decision Date: 04 September 2015
• Docket Number: 000 (HHB),Patent Interference 106
• Parties: Apple, Inc. v. X One, Inc. Senior Party Junior Party (US 8, 284, 748 B2) (Inventor: Hooman Borghei) (Application No. 13/754, 093) (Inventor: Richard D. Haney) Technology Center 2600
• Court: Patent Trial and Appeal Board

Apple, Inc. Junior Party (US 8, 284, 748 B2) (Inventor: Hooman Borghei) v. X One, Inc. Senior Party

(Application No. 13/754, 093) (Inventor: Richard D. Haney) Technology Center 2600

Patent Interference No. 106, 000 (HHB)

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 4, 2015

Attorney for Junior Party - Apple, Inc.: Mathew I. Kreeger Esq. Mehran Arjomand, Esq. Morrison & Foerster LLP

Attorney for Senior Party - X One Inc.: Robert M. Schulman Esq. Michael A. O'Shea, Esq. Leonard C. Suchyta, Esq. Yisun Song, Esq. Hunton & Williams LLP

Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI Administrative Patent Judges.

JUDGMENT - 37 C.F.R. §41.127(A)

In view of the Decision on Motions (Paper__), it is:

ORDERED that judgment on priority as to the Count be entered against Senior Party X One, inventor Richard D. Haney and the real party in interest, X One, Inc;

FURTHER ORDERED that with respect to Interference 106, 000 (HHB), Claims 3-6, 8-10, 12, 13, 18-21, 23-25, 27, and 28 (corresponding to Count 1) of X One's involved application, U.S. Patent Application No. 13/754, 093, are FINALLY REFUSED, 35 U.S.C. 135(a);

FURTHER ORDERED that a copy of this Judgment be entered in the files of (1) Apple's involved patent, U.S. Patent No. 8, 284, 748 and (2) X One's involved application, U.S. Patent Application No. 13/754, 093;

FURTHER ORDERED that if there is any settlement agreement or related documents which have not been filed, attention is directed to 35 U.S.C. §135(c) and 37 C.F.R. §41.205;

FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office (37 C.F.R. §§ 90.1 and 104.2); and

FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654-57 (Fed. Cir. 2015).

DECISION ON MOTIONS - 37 CFR §41.125(A)

BUI, Administrative Patent Judge.

I. INTRODUCTION

Pending before us are the following substantive motions:

(1)X One Substantive Motion 1 (Paper 26) and supporting evidence (Exhibits 1001-1013 & Appendices 3-5^[1]) filed on July 11, 2014 for judgment that Apple's claims are unpatentable over prior art. X One resubmitted Motion 1 (Paper 48) filed on July 18, 2014.

 Apple Opposition 1 (Paper 59) and supporting evidence (Exhibits 1001-1004, 1007, 1013, 2008-2013, and 2016) filed on September 26, 2014; and

 X One Reply 1 (Paper No. 69) and supporting evidence (Exhibits 1001-1031) filed on November 14, 2014.

(2)Apple Substantive Motion 1 (Paper 45) and supporting evidence (Exhibits 2001-2012) filed on July 11, 2014 under 37 C.F.R. §41.121(A)(1)(iii) for judgment of unpatentability based on lack of written description support.

 X One Opposition 1 (Paper 56) filed on September 26, 2014; X One corrected Opposition 1 (Paper 63) and supporting evidence (Exhibits 1001-1017) filed on September 26, 2014; and

 Apple Reply 1 (Paper 71) and supporting evidence (Exhibits 1013, 1018, 2001, 2002, 2007, 2012, and 2017) filed November 14, 2014.

(3)X One Responsive Motion 2 (Paper 51) and supporting evidence (Exhibits 1015-1031) filed on August 8, 2014 to add two (2) new claims to Count 1.

 Apple Opposition 2 (Paper 60) and supporting evidence (Exhibits 1001, 1013-1019, 1022, 1024, 1030, 1031, 2012, and 2017-2022) filed September 26, 2014; and

 X-One Reply 2 (Paper 70) and supporting evidence (Exhibits 1001-1031) filed November 14, 2014.

(4)X One Miscellaneous Motion (Paper 67) and supporting evidence (Exhibits 1019-1031) filed October 20, 2014 to Exclude Evidence.

 Apple Opposition (Paper 73) and supporting evidence (Exhibits 1001, 1013-1019, 1022, 1024, 1030, 1031, 2012, and 20172012) filed on December 5, 2014; and

 X One Reply (Paper 96) and supporting evidence (Exhibits 1001, 1018, 1032, 2012, 2019, and 2020) filed on December 19, 2014.

Separately, we note that Senior Party X-One has filed its Priority Statement (Paper 25) on July 11, 2014 but no such statement was filed by Junior Party Apple. Apple does not allege a date of invention prior to the earliest date accorded to X-One (April 4, 2014 - Paper 1). Rather, Apple in effect challenges X One's standing to prosecute this interference. 37 C.F.R. § 41.201 (indicating that unpatentability of copied claims for lack of written description may deprive the opponent of standing).

After a review of all motions, oppositions and replies, we enter decisions on the following: (1) X One Miscellaneous Motion (Paper 67) to disqualify Apple's expert, Dr. Scott R. Klemmer; (2) Apple Substantive Motion 1 (Paper 45) for judgment that X One's involved claims lack adequate written description under 35 U.S.C. § 112, first paragraph; and (3) X One Responsive Motion 2 (Paper 51) to add two new claims to Count 1. 37 C.F.R. § 41.125(a). For the reasons discussed below, (1) X One Miscellaneous Motion (Paper 67) to disqualify Dr. Klemmer as Apple's expert, and (2) X One Responsive Motion 2 (Paper 51) to add two new claims to Count 1 are denied. However, Apple Substantive Motion 1 (Paper 45) is granted. Because Apple Substantive Motion 1 (Paper 45) is granted, and X One Responsive Motion 2 (Paper 51) is denied in favor of Apple, the interference is terminated. Consequently, we need not reach X One Substantive Motion 1 (Paper 26) for judgment that Apple's claims are unpatentable over prior art. Therefore, X One Substantive Motion 1 (Paper 26) is dismissed as moot.

II. BACKGROUND

Senior Party X One requested an interference between: (1) Claims 3-6, 810, 12, 13, 18-21, 23-25, 27, and 28 of X One Application No. 13/754, 093 (the '093 application), and (2) Claims 1-22 of Apple U.S. 8, 284, 748 B2 (the '748 patent). Interference Request (Ex. 2006, pp. 2-6). 37 C.F.R. § 41.202(a).

The parties' subject matter is directed to methods and systems for forming and tracking a location-sharing group in which mobile devices can share and mutually track each other's locations in the location-sharing group. Ex. 1001, Ex. 2001 at Abstract; Ex. 1016, Ex. 2002 ¶ 10.

The parties' subject matter is represented by a single Count 1, which is Apple Claim 6 of the '748 patent or X One Claim 3 of the '093 application.

Claim 6 of the '748 patent (Junior Party Apple) is reproduced below:

6. A computer-implemented method performed by one or more data processing apparatus, the method comprising: detecting formation of a location-sharing group between two or more mobile devices;

defining a geofence around the location-sharing group, the geofence encloses respective current geographic locations of the two or more mobile devices;

tracking a geographic location of the location-sharing group and a geographic coverage of the geofence around the location-sharing group; and

providing the geographic location of the location-sharing group to at least one of the two or more mobile devices in the location-sharing group,

wherein defining a geofence around the location-sharing group further comprises:

determining the respective current geographic locations of the two or more mobile devices; determining a respective coverage radius for each of the two or more mobile devices;

determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device; and

using the boundary of the combined coverage area as the geofence around the location-sharing group.

Paper 6, p. 2, 3 (emphasis added).

Claim 3 of the '093 application (Senior Party X One) is copied verbatim from Claim 6 of the '748 patent (Junior Party Apple). Similarly, the remaining X One's claims are copied from Apple '748 patent, either verbatim, or with the substitution of "geographical area" for "geofence." Ex. 2012 ¶¶ 11-13; compare Ex. 2002, claims 1-30, with Ex. 2001, claims 1, 3, 6-11, 13-17, and 20-22.

All Apple Claims 1-22 (Paper 7; Ex. 1001) and X One Claims 3-6, 8-10, 12, 13, 18-21, 23-25, 27, and 28 (Paper 8; Ex. 2002) have been designated as corresponding to Count 1. Paper 1, pp. 4-5.

A. Witnesses

Junior Party Apple relies on the testimony of Dr. Scott R. Klemmer:

(1)First Declaration of Scott R. Klemmer, Ph.D., in support of Apple Substantive Motion 1 (Paper 45), Ex. 2012;

(2)Second Declaration of Scott R. Klemmer, Ph.D., in support of Apple Opposition 1 to X One Substantive Motion 1 (Paper 59), Ex. 2013; and

(3)Third Declaration of Scott R. Klemmer, Ph.D., in support of Apple Reply 1 (Paper 71), Ex. 2017.

X One relies on the testimony of Dr. Michael F. Goodchild:

(1)First Declaration of Michael F. Goodchild, Ph.D., in support of X One Substantive Motion 1 (Paper 48), Ex. 1013;

(2)Second Declaration of Michael F. Goodchild, Ph.D., in support of X One Responsive Motion 2 (Paper 51), Ex. 1015;

(3)Third Declaration of Michael F. Goodchild, Ph.D., in support of X One corrected Opposition 1 (Paper 63), Ex. 1017; and

(4)Fourth Declaration of Michael F. Goodchild, Ph.D., in support of X One Miscellaneous Motion to Exclude Evidence (Paper 67), Ex. 1019.

1.Dr. Klemmer

Dr. Klemmer testifies that he is an Associate Professor of Cognitive Science and Computer Science & Engineering at the University of California, San Diego, and a Visiting Associate Professor of Computer Science at Stanford University since 2013. Dr. Klemmer testifies that he has (1) a Ph.D. degree in Computer Science, (2) a Master of Science in Computer Science from University of California at Berkeley, and (3) a Bachelor of Arts in Computer Science and Art-Semiotics from Brown University. Ex. ¶¶ 2012 1-2 & Ex. A.

Dr Klemmer testifies that has over 15 years of extensive experience in human-computer interaction and mobile interaction design, including the use of location-based information. For...