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: Communication System for Forced Message Alerts
• Brief Description: The ’970 patent describes a system and method for sending "forced message alerts" to personal digital assistants (PDAs) or cell phones. The system requires recipients to respond to these alerts from a provided list and enables the sending device to track acknowledgements and responses.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Kubala (Application # 2006/0218232) and Hammond (Patent 6,854,007). This ground relies on the ’970 patent’s actual filing date, arguing it is not entitled to an earlier priority date.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kubala taught the core elements of the challenged claims, including a communication system with PDAs that sends mandatory-response email messages. Critically, Kubala disclosed alerting a recipient and providing a menu of possible responses (e.g., "Too Busy Right Now," "Looks Okay") to satisfy the mandatory response requirement. Hammond was argued to supply the claimed tracking and management features. Hammond disclosed a "Message Review Server" and "Message Tracking Table" to ensure messages are delivered and reviewed, track acknowledgements, and resend messages if delivery or review is not confirmed. The combination of Kubala's mandatory-response interface with Hammond's backend tracking system allegedly rendered the claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Kubala and Hammond because they addressed the same problem: ensuring reliable and timely responses to important electronic messages. A POSITA would have found it an obvious design choice to implement Hammond’s detailed tracking and resending features into Kubala's system, which already contemplated collecting information about recipient responses, to improve its functionality.
  • Expectation of Success: The combination would have been a predictable integration of known elements, as Hammond merely provided a more robust and detailed implementation of tracking features already suggested by Kubala.

Ground 2: Claims 1 and 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). This ground is asserted against the ’970 patent's earliest effective filing date.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued this combination taught all limitations of the challenged claims. Hammond disclosed the system for tracking message delivery and responses. Johnson taught a key functional aspect: a mandatory-response system where an attribute can be set so a message "cannot be exited out of until the appropriate reply has been made." However, neither Hammond nor Johnson explicitly disclosed implementing this on a PDA with a list of possible responses. Pepe was argued to supply this missing element, as it disclosed "application software residing in the PDA" that presented on-screen menus with lists of possible pre-set responses to incoming messages.
  • Motivation to Combine: A POSITA would combine these references to improve mandatory messaging systems. It would have been obvious to implement the forced-response and tracking systems of Johnson and Hammond on the PDA platform disclosed by Pepe to create a more effective mobile communication tool. Because all three references were directed to solving problems in electronic messaging, a POSITA would have been motivated to combine their respective features.
  • Expectation of Success: Combining the system-level tracking of Hammond and the forced-response logic of Johnson with the PDA-based user interface of Pepe was a predictable "obvious matter of design choice" with a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) against claims 1 and 3-9 over the combination of Hammond, Johnson, and Pepe, further in view of Banerjee (Application # 2003/0128195). This ground relied on Banerjee primarily to provide more explicit detail for a PDA with a touchscreen display, supplementing the disclosure of Pepe.

4. Key Claim Construction Positions

• The petition proposed constructions for several means-plus-function terms, which are central to its invalidity arguments. The core of these proposals was to identify the corresponding structure in the ’970 patent's specification as the "forced-message alert software-application program" and its associated algorithms.
• "means for attaching..." (claim 1): Petitioner proposed the function is to create a forced-message alert for transmission, and the corresponding structure is the software program that allows a user to create a message, select recipients, and select a response list.
• "means for requiring..." (claim 1): Petitioner proposed the function is to require a manual response to clear the response list from the recipient's display. The corresponding structure is the software program on the recipient device that displays the message/list and clears it only after a response is selected.
• "means for receiving and displaying a listing..." (claim 1): Petitioner proposed the function is to monitor and display the acknowledgement and response status of recipients. The corresponding structure is the software program on the sender device that monitors for and displays these statuses.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition, foundational to Ground 1, was that the ’970 patent was not entitled to the priority date of its parent applications (’490, ’648, and ’830 applications).
• Petitioner argued that the key limitation, a "forced message alert software application program" that requires a manual response from a list to clear the alert, was new matter added to the application that became the ’970 patent.
• It was asserted that the parent applications disclosed systems for remotely controlling a recipient's phone without manual action from the recipient, which is contrary to the claims. Therefore, the parent applications allegedly lacked written description support, making the ’970 patent's effective filing date its actual filing date of November 26, 2008, and rendering Kubala and Hammond valid prior art under 35 U.S.C. §102(b).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate.
• The petition asserted that it presented new arguments and prior art, as none of the relied-upon references (Kubala, Hammond, Johnson, Pepe, Banerjee) were cited or considered by the Examiner during the original prosecution of the ’970 patent.
• Further, it was argued that the petition was not redundant to a parallel IPR filed by Apple Inc. (IPR2018-00821) because Google's petition relied on an entirely different set of prior art references and combinations.

7. Relief Requested

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