PTAB

IPR2018-01081

Google LLC v. AGIS Software Development LLC

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1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’251 patent discloses methods and systems for wireless devices to participate in a group, share location information, and communicate. The system displays the locations of group members as symbols on an interactive, georeferenced map and allows users to initiate communications by interacting with the map display.

3. Grounds for Unpatentability

Ground 1: 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 taught most elements of the challenged independent claims (1 and 24). Haney discloses a location-sharing system where wireless devices ("buddies") form groups, send their GPS data to a server, and receive map data showing the locations of other buddies. Haney also discloses requesting a different map from the server (e.g., a recentered or enlarged map), which Petitioner asserted meets the "second georeferenced map" limitation. However, Petitioner contended that Haney does not explicitly teach initiating communication by selecting user symbols directly on the map. Fumarolo allegedly cures this deficiency. Fumarolo, directed to a similar 911 dispatch system, explicitly teaches displaying communication units as selectable icons on a map and initiating voice or data communication by selecting those icons. Petitioner asserted that combining Fumarolo's interactive map interface with Haney's underlying group location-sharing system renders the independent claims obvious. The dependent claims were argued to add only conventional features (e.g., sending text messages, using satellite maps, VOIP communication) that were either disclosed in the references or would have been obvious design choices for a person of ordinary skill in the art (POSITA).
    • Motivation to Combine: A POSITA would combine Haney and Fumarolo because both references operate in the same field of map-based group communication and address the same problem of facilitating efficient interaction between distributed users. A POSITA would have recognized that integrating Fumarolo's streamlined, single-map communication interface into Haney's system would be a logical and predictable improvement, enhancing usability by allowing users to both view and communicate with group members from a single interface, rather than using separate lists or menus as suggested in Haney.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The integration would primarily involve known software and user interface design techniques to substitute Fumarolo's integrated mapping interface for Haney's. Haney provides the necessary network and server infrastructure, making the functional addition from Fumarolo a predictable implementation with a high likelihood of success.

4. Key Claim Construction Positions

  • "second georeferenced map": Petitioner argued that this term, which is not explicitly defined in the ’251 patent, should be construed based on prosecution history and extrinsic evidence from a related district court case. Petitioner asserted the term should be interpreted to include "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map." This construction was critical to Petitioner's argument that Haney’s disclosure of enlarging or recentering a map meets the limitation of requesting and receiving a "second georeferenced map."

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date of the ’251 Patent: A central contention of the petition was that the ’251 patent is not entitled to its earliest purported priority date of September 21, 2004. Petitioner argued that key claim limitations, particularly those relating to a "server" and the first device not having access to the IP addresses of other devices, were not supported by the original parent application (’728 patent). Instead, this subject matter was first introduced in a later continuation-in-part application (’724 patent), which has a filing date of April 17, 2006. Petitioner contended this later date is the correct effective priority date, which renders Haney (filed April 4, 2005) available 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. Although Fumarolo was cited during prosecution of the ’251 patent, it was never applied in a rejection by the Examiner. Crucially, the primary reference, Haney, was never cited or considered at all. Therefore, the specific combination of Haney and Fumarolo, and the associated arguments, were never before the U.S. Patent and Trademark Office.
  • Petitioner also argued this petition was not cumulative with other concurrently-filed petitions. This petition relies on Haney as intervening prior art, a distinct theory from another petition relying on Fumarolo as §102(b) art, and from a third petition arguing a broken priority chain makes the patent owner's own patent prior art.

7. Relief Requested

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