PTAB

IPR2018-01082

Google LLC v. AGIS Software Development LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’251 patent relates to a system and method for using a wireless device to display maps showing the locations of a group of other wireless devices. The technology allows a user to communicate with other devices by interacting with user-selectable symbols on a graphical map interface.

3. Grounds for Unpatentability

Ground 1: Obviousness of Underlying Independent Claim - Claim 1 is 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 asserted that Haney teaches a system for exchanging location data between wireless devices in an ad hoc network, including displaying device locations on a map provided by a server. However, Haney allegedly does not explicitly teach initiating communication by selecting symbols directly on the map. Fumarolo was argued to supply this missing element by disclosing a system where a user selects a communication unit’s icon on a map to initiate voice or data communication, thereby rendering the limitations of independent claim 1 obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Haney and Fumarolo to improve Haney's system. Integrating Fumarolo's more efficient single-map communication interface would be a logical step to enhance the user experience and functionality of Haney's location-tracking system, which otherwise required using separate lists or menus.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it would involve implementing known user interface design principles and predictable software modifications on the established infrastructure provided by Haney.

Ground 2: Challenged Dependent Claims - Claims 13-19 and 21 are obvious over Haney and Fumarolo in further view of Spaargaren.

  • Prior Art Relied Upon: Haney (Patent 7,353,034), Fumarolo (Patent 6,366,782), and Spaargaren (International Publication No. WO 02/17567).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that while the combination of Haney and Fumarolo teaches the core system of claim 1, the additional limitations of dependent claims 13-19 and 21 are taught by Spaargaren. Specifically, Spaargaren discloses key functionalities such as:
      • (Claim 13) Detecting a user's selection of a point on a map and determining the spatial coordinates of that point.
      • (Claim 14) Searching a database of entities to find the entity located nearest to the selected spatial coordinates. Spaargaren explicitly describes finding the "nearest taxicab" to a user.
      • (Claim 15) Receiving user input that specifies a location and a symbol for a second entity (e.g., a business or another device) and adding that symbol to the map.
      • (Claim 16) Transmitting the user-specified symbol and location information to other devices in the group for display on their respective maps.
    • Motivation to Combine: A POSITA, having combined Haney and Fumarolo, would be motivated to further improve the system's interactivity. Recognizing the benefit of enabling users to identify entities based on proximity to a selected map point, the POSITA would look to known solutions like those in Spaargaren. Combining Spaargaren’s proximity-based search and entity-placement features would be a natural and advantageous extension of the interactive map taught by the Haney/Fumarolo combination.
    • Expectation of Success: Incorporating Spaargaren's teachings would be a predictable integration of known location-based service features into an existing map-based communication platform, with a high expectation of success.

4. Key Claim Construction Positions

  • Petitioner argued for a construction of the term "second georeferenced map" to include "an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map." This construction, based on prosecution history and extrinsic evidence, is broad enough to encompass routine map manipulations. Its importance lies in allowing Petitioner to argue that Haney's disclosure of changing a "mapit screen radius" or recentering a map on a different user constitutes the claimed requesting and receiving of a "second georeferenced map."

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended that the '251 patent is not entitled to its claimed priority date of September 21, 2004. It was argued that key claim limitations, including the "server" and the first device not having access to the IP addresses of other devices, lack written description support in the original priority application (which led to the '728 patent). Instead, this subject matter was first disclosed in a later continuation-in-part application (which led to the '724 patent) filed on April 17, 2006. This contention is critical because it establishes an effective priority date that makes Haney (filed April 4, 2005) available as prior art.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). The primary reasons given were that the asserted prior art and arguments were not the same or substantially the same as those considered during prosecution. Specifically, the references Haney and Spaargaren were never cited or considered by the examiner. Further, Petitioner argued this petition was not cumulative with other concurrently-filed petitions because it relies on a different primary reference (Haney as intervening art) and a different legal theory than another petition that asserts invalidity based on a broken priority chain.

7. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 13-19 and 21 of Patent 9,445,251 as unpatentable.