PTAB

IPR2015-01738

Google Inc v. Silver State Intellectual Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Navigation System Utilizing User Profiles
  • Brief Description: The ’234 patent describes a navigation device and method that uses stored data to provide route guidance. The system determines if its locally stored map data (the "navigation coverage") is sufficient and fresh; if not, it connects to a remote server to download updated map and traffic information before calculating an optimal route.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-7, 9-15, 17-21, 23-28, and 30 under §102 by Xu

  • Prior Art Relied Upon: Xu (Patent 6,401,027).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Xu, which discloses a "traffic data remote collection and intelligent vehicle highway system," teaches every limitation of the challenged claims. Xu’s system includes an in-vehicle device with a GPS receiver (a location-sensing element) that receives traffic forecast data from an external traffic service center (a database). Petitioner contended that Xu’s in-vehicle device performs client-side "searching" by flagging geographical blocks relevant to the vehicle's current location to filter the broadcasted traffic data. This flagged area, centered on the vehicle, constitutes the claimed "coverage area." When a destination is entered, Xu flags a new set of blocks along the route and plans a path using the filtered, real-time traffic data, thereby meeting the limitations of independent claims 1, 9, 17, and 24.
    • Key Aspects: This ground relies on construing the claimed "searching the database" limitation as an operation that can be performed on the client-side device by filtering data received from the database, as Petitioner argued Xu’s in-vehicle device does.

Ground 2: Obviousness of Claims 8, 16, 22, and 29 over Xu in view of Trovato

  • Prior Art Relied Upon: Xu (Patent 6,401,027) and Trovato (Patent 5,835,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Xu teaches all limitations of the base claims (1, 9, 17, 24) except for the communication of turn-by-turn audio instructions recited in the challenged dependent claims. Trovato, a "travel direction speaking system," was cited to remedy this deficiency. Trovato explicitly discloses a system that prepares driving instructions and uses a text-to-voice unit to convert them into a voice signal, which is outputted to the driver at the appropriate time before a turn.
    • Motivation to Combine: A POSITA would combine Xu with Trovato to improve the safety and usability of Xu’s navigation system. Providing audio instructions, as taught by Trovato, was a well-known method to allow drivers to receive route guidance without diverting their eyes from the road. Petitioner argued this was a predictable solution to a known problem, especially since Xu’s disclosed driver interface already included a loud-speaker, making it ready for such an improvement.
    • Expectation of Success: Combining a known audio guidance feature with a visual navigation system would have been a straightforward and predictable modification with a high expectation of success.

Ground 3: Obviousness of Claims 1-7, 9-15, 17-21, 23-28, and 30 over Xu in view of Golding

  • Prior Art Relied Upon: Xu (Patent 6,401,027) and Golding (Patent 5,933,100).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative to Ground 1, addressing a potential claim construction dispute. If "searching the database" is interpreted to require a server-side operation (rather than the client-side filtering in Xu), Petitioner argued this feature would have been obvious in view of Golding. Golding discloses a system where an in-vehicle device contacts a central database to obtain traffic information. Specifically, if the vehicle’s local map data is insufficient for a planned route, the device requests additional information from the central database, which performs a search and transmits the relevant data back to the vehicle.
    • Motivation to Combine: A POSITA would combine Golding’s server-side search with Xu’s system to achieve known benefits, such as reducing the memory and processing requirements of the in-vehicle device. By offloading the search for additional traffic data to a remote server, as taught by Golding, the client device could be made simpler and more efficient. This addressed the common design trade-off between local processing power and reliance on a central server.
    • Expectation of Success: Implementing a server-side search to supplement a client-side navigation device was a known technique in the art, and a POSITA would have reasonably expected success in modifying Xu’s system in this manner.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 8, 16, 22, and 29 based on the combination of Xu, Golding, and Trovato, incorporating the teachings of all three references.

4. Key Claim Construction Positions

  • "searching the database": Petitioner proposed this term be construed as "analyzing data from the database." This construction is broad enough to encompass both client-side analysis of received data (as argued for Xu in Ground 1) and analysis performed remotely at the database server (as argued for the Golding combination in Ground 3). The ambiguity of where the "searching" occurs was a central point of Petitioner's alternative invalidity arguments.
  • "processing unit for searching the database...": Petitioner argued that this term, recited in claims 17 and 24, is a means-plus-function limitation under §112, para. 6. Petitioner contended that the term "processing unit" is a generic placeholder that fails to recite a sufficiently definite structure and that the ’234 patent fails to disclose the specific algorithm required to perform the claimed function, rendering the claims indefinite.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’234 patent as unpatentable.