PTAB

IPR2018-01082

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 the other devices by interacting with a graphical user interface on the map.

3. Grounds for Unpatentability

Ground 1: Claims 13-19 and 21 are obvious over Haney, Fumarolo, and Spaargaren.

  • Prior Art Relied Upon: Haney (Patent 7,353,034), Fumarolo (Patent 6,366,782), and Spaargaren (WO 02/17567).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the three references taught every limitation of the challenged claims. Haney disclosed the foundational system for location sharing and tracking using mobile devices in a group, including a server ("Buddy Watch server") that provides maps on request and displays the location of "buddies." However, Haney did not explicitly teach communicating with other devices by selecting their symbols directly on the map interface. Fumarolo, which addresses map-based communication systems for emergency dispatch, supplied this missing element by teaching a system where a user can select user-selectable symbols on a map (e.g., via touchscreen) to initiate communication with the corresponding units. Finally, for limitations in dependent claims, Spaargaren disclosed proximity-based features, such as selecting a position on a map to find the nearest entity (e.g., a taxicab), searching a database of entities by location, and transmitting a user-specified symbol and location to other devices.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to achieve predictable improvements. A POSITA starting with Haney's location-tracking system would be motivated to improve its communication capabilities by incorporating Fumarolo’s more efficient single-map interface for both viewing and initiating contact, as both references address the same problem in the same technical field. Similarly, to further enhance the combined Haney/Fumarolo system, a POSITA would look to art like Spaargaren to add desirable and well-known features like proximity searching and the ability to identify the nearest group member by simply selecting a point on the map, rather than having to select a pre-existing icon.
    • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success in combining the references. The integration would primarily involve known software design techniques to implement Fumarolo's interactive symbols and Spaargaren's proximity logic into the server-client architecture already established by Haney.

4. Key Claim Construction Positions

  • "second georeferenced map": Petitioner argued this term should be construed to include "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map." This construction was based on the patent's prosecution history and the Patent Owner's infringement contentions in district court. The construction was important because it supported the argument that Haney's disclosure of changing the map size or re-centering the map on a different user constituted a request for a "second georeferenced map," thereby satisfying a key claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that the ’251 patent was not entitled to its earliest claimed priority date of September 21, 2004. Petitioner argued that critical limitations, particularly those related to a "server," were not disclosed in the original parent application (which became the ’728 patent) but were first introduced in a later continuation-in-part application filed on April 17, 2006 (which became the ’724 patent). Therefore, Petitioner asserted the correct priority date for the challenged claims is no earlier than April 17, 2006. This argument was critical for establishing Haney, which was filed on April 4, 2005, as valid prior art under 35 U.S.C. §102(e).

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the specific grounds and prior art combination were never considered during prosecution. Specifically, Haney and Spaargaren were never cited by the Examiner. While Fumarolo was cited, it was never substantively applied in a rejection. Petitioner also contended that the petition was not cumulative with other concurrently-filed petitions because those petitions relied on different primary references and distinct legal theories regarding the priority date and applicable prior art.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 13-19 and 21 of the ’251 patent as unpatentable.