Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01079
• Patent #: 8,213,970
• Filed: May 15, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 1, 3-9

2. Patent Overview

• Title: Forced Message Alert System
• Brief Description: The ’970 patent discloses a communication system for sending "forced message alerts" to personal digital assistants (PDAs) or cell phones. The system relies on a "forced message alert software application program" that requires a recipient to select a manual response from a provided list to clear the alert, while also enabling the sender to track message acknowledgements and responses.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kubala and Hammond - Claims 1, 3-9 are obvious over Kubala in view of Hammond.

• Prior Art Relied Upon: Kubala (Application # 2006/0218232) and Hammond (Patent 6,854,007).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner’s argument for this ground was predicated on its contention that the ’970 patent is not entitled to its claimed priority date, making its effective filing date November 26, 2008, and thus rendering Kubala and Hammond prior art. Petitioner asserted that Kubala taught a mandatory-response messaging system on a PDA that included an "enhanced email application" with a "mandatory-response functional unit." This system could display a menu of possible responses and prevent a user from closing a message until a response was sent. Hammond was argued to disclose a server-based system that tracked the delivery, acknowledgement, and review status of messages using a "Message Tracking Table" and could automatically resend messages that were not confirmed. Petitioner argued that the combination of Kubala’s user-facing mandatory response features with Hammond’s back-end tracking and reliability functions disclosed all limitations of the challenged claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references because they both address the same technical problem: ensuring that important electronic messages receive timely and confirmed responses. Petitioner argued it was an obvious design choice to integrate Hammond’s robust tracking and resending capabilities into Kubala’s PDA-based messaging system to improve its overall reliability and functionality.
  • Expectation of Success: The combination involved implementing known software features for tracking and mandatory messaging on a common platform, which would have resulted in a predictable and functional system.

Ground 2: Obviousness over Hammond, Johnson, and Pepe - Claims 1, 3-9 are obvious over Hammond in view of Johnson and Pepe.

• Prior Art Relied Upon: Hammond (Patent 6,854,007), Johnson (Patent 5,325,310), and Pepe (Patent 5,742,905).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground proceeded on the assumption that the ’970 patent was entitled to its earliest priority date of September 21, 2004. Petitioner argued that Hammond taught the system for tracking message acknowledgements, responses, and delivery status. Johnson was asserted to teach the core concept of a mandatory-response message that "cannot be exited" until a user provides a reply, thereby forcing a response. Petitioner contended that Pepe supplied the remaining elements by disclosing application software residing on a PDA that could provide an on-screen menu of pre-defined responses for a user to select, thus providing a concrete implementation on a mobile device.
  • Motivation to Combine: A POSA would combine these references to create an improved mandatory messaging system for mobile devices. Petitioner argued that it would have been obvious to implement the server-side tracking and confirmation system of Hammond and the forced-response logic of Johnson on the PDA platform disclosed by Pepe. Using Pepe’s on-screen menu of responses was a known and logical way to facilitate user interaction for such a system.
  • Expectation of Success: The combination involved applying established messaging concepts (tracking, mandatory replies) to a known hardware platform (a PDA with a graphical user interface), which would have yielded predictable results without undue experimentation.

• Additional Grounds: Petitioner asserted an additional obviousness challenge based on the combination of Hammond, Johnson, Pepe, and Banerjee. This ground was substantively similar to Ground 2 but added Banerjee to more explicitly teach a PDA that includes a touchscreen display, thereby reinforcing the argument that all claimed hardware features were well-known in the art.

4. Key Claim Construction Positions

• The petition asserted that several limitations in the challenged claims were means-plus-function limitations under 35 U.S.C. § 112, para. 6.
• Petitioner proposed constructions for key terms including "means for attaching," "means for requiring," and "means for receiving and displaying a listing." For each term, Petitioner identified the claimed function (e.g., attaching a software packet, requiring a manual response) and argued that the corresponding structure disclosed in the '970's patent specification was the "forced-message alert software-application program" configured to perform specific algorithmic steps. These constructions were central to Petitioner's mapping of the prior art teachings onto the claim limitations.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention underpinning Ground 1 was that the ’970 patent was not entitled to the benefit of the filing date of its parent applications.
• Petitioner argued that the earlier applications ('490 application, '648 application, and '830 application) failed to provide adequate written description support for the key claim limitation of a "forced message alert software application program." This technical-legal argument, if accepted, would establish an effective filing date of November 26, 2008, for the ’970 patent, thereby making the Kubala and Hammond references available as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. It contended that the petition presented new arguments and prior art—specifically the combinations including Kubala, Hammond, Johnson, Pepe, and Banerjee—that were neither cited nor considered by the Examiner during the original prosecution of the ’970 patent. Petitioner also noted that the art relied upon was different from that in a separate IPR petition filed by Apple Inc., making the instant petition non-redundant.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 3-9 of Patent 8,213,970 as unpatentable.