PTAB

IPR2018-01081

Google LLC v. AGIS Software Development LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’251 patent describes a system and method for using a wireless device to display maps showing the locations of a group of other wireless devices. The system allows a user to communicate with one or more of those devices by interacting with a map interface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haney and Fumarolo - Claims 1, 2, 4-6, 8, 10, 12, 22-24, 27, 29, 31, 32, and 35 are obvious over Haney in view of Fumarolo.

  • Prior Art Relied Upon: Haney (Patent 7,353,034) and Fumarolo (Patent 6,366,782).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haney discloses the core functionalities of the challenged claims, including a map-based system for exchanging GPS position data between wireless devices in an ad hoc network. Haney’s system involves a "Buddy Watch server" that provides maps and routes location data between users, who are displayed on a map. However, Haney did not explicitly teach initiating communication by selecting a user's symbol directly on the map. Petitioner asserted that Fumarolo supplies this missing element. Fumarolo describes a system for emergency dispatchers that displays communication units on a map and expressly teaches receiving "a selection from the map" (e.g., via touchscreen) to initiate communication with the selected unit. The combination of Haney's group location tracking system with Fumarolo's interactive map-based communication interface allegedly renders the independent claims (1 and 24) obvious. Petitioner further mapped how the combination teaches the limitations of the various dependent claims, such as sending specific data types (claim 2), initiating phone calls (claims 6 and 29), and using GPS receivers (claims 12 and 35).
    • Motivation to Combine: A POSITA would combine Haney and Fumarolo because both references operate in the same field of map-based location and communication systems and address the same problem of facilitating efficient communication among a group of users. A POSITA would look to Fumarolo's more advanced user interface to improve the communication capabilities of Haney’s system. Integrating Fumarolo's functionality—initiating communication directly from the map—into Haney’s system would be a logical step to create a more convenient and integrated user experience, which Fumarolo itself identifies as a benefit.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Both systems are software-based and involve displaying icons on a map and user interaction. Integrating Fumarolo's method for selecting map icons to initiate communication into Haney's existing map display application would involve predictable software modifications, as Haney already provided the necessary infrastructure for map-based communications.

4. Key Claim Construction Positions

  • "second georeferenced map": Petitioner argued that this term, which is not defined in the ’251 patent’s specification, should be construed based on the prosecution history and the Patent Owner's infringement contentions. Based on this evidence, Petitioner proposed that the term includes "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map." This construction was critical because Haney discloses features like changing the "mapit screen radius" or recentering the map on different users, which would result in a "moved map" and thus meet this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that the ’251 patent is not entitled to its claimed priority date of September 21, 2004. Petitioner argued that key limitations in the challenged claims, particularly those related to a "server," were not supported by the original application but were instead introduced in a later continuation-in-part application (which led to the ’724 patent) filed on April 17, 2006. Petitioner contended the correct priority date is no earlier than April 17, 2006. This argument was crucial for establishing Haney, which was filed on April 4, 2005, as prior art under 35 U.S.C. §102(e).

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was asserted that the primary reference, Haney, was never cited or considered during the prosecution of the ’251 patent. While Fumarolo was cited, it was never applied by the examiner, and the specific combination of Haney and Fumarolo was never before the Office. Petitioner also argued this IPR was not cumulative with other concurrently-filed petitions because those petitions relied on different primary references and different statutory qualifications for prior art, making each petition necessary to fully examine patentability regardless of the priority date ultimately afforded to the ’251 patent.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4-6, 8, 10, 12, 22-24, 27, 29, 31, 32, and 35 of the ’251 patent as unpatentable.