PTAB

IPR2018-01083

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 discloses systems and methods for using a wireless device to display maps showing the locations of other wireless devices in a group. The system allows a user to communicate with other devices by interacting with symbols on the map interface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fumarolo-782, Fumarolo-844, Muramatsu, and Liu - Claims 1, 2, 4-6, 8, 10, 12, 22-24, 27, 29, 31, 32, and 35 are obvious over Fumarolo-782 in view of Fumarolo-844, Muramatsu, and Liu.

  • Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), and Liu (Application # 2002/0027901).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Fumarolo-782, teaches the core system of the independent claims: a display-based terminal for a communication system (e.g., for 911 emergency responders) that presents an interactive, georeferenced map with symbols showing the locations of other communication units. Users can select these symbols to initiate communications.
      • Fumarolo-844 was asserted to supply the missing limitation of dynamically forming talkgroups. It teaches receiving a user’s selection of units from a map and automatically grouping them into a talkgroup, which Petitioner argued corresponds to the claimed "receiving a message...relates to joining a group."
      • Muramatsu was introduced to teach the client-server architecture and the use of multiple maps. Petitioner argued Muramatsu discloses a navigation server that stores map data and communicates with wireless devices, fulfilling the claimed "sending...location information to a server and receiving...location information from the server." Muramatsu also discloses retrieving an "updated map" (e.g., at a different magnification), which Petitioner contended teaches the claimed "request for a second georeferenced map."
      • Liu was added to teach anonymous communication. Petitioner argued that to the extent the primary combination does not teach that the first device "does not have access to respective Internet Protocol addresses of the second devices," Liu explicitly discloses a method for anonymous voice communication over a network where a server facilitates the connection without revealing the destination IP address to the originating device.
    • Motivation to Combine:
      • A POSITA would combine Fumarolo-782 with Fumarolo-844 because they address the same problem, share inventors and assignees, and Fumarolo-844 provides an explicit method for forming the talkgroups mentioned but not detailed in Fumarolo-782.
      • A POSITA would incorporate Muramatsu's server-based architecture to solve the well-known problem of limited memory on early-2000s wireless devices by off-loading map data storage to a remote server, which was a common design trade-off.
      • A POSITA would add Liu’s anonymous communication functionality to improve the emergency response system by allowing different first responder groups (e.g., police and fire departments) to communicate efficiently through the map interface without needing to know or manually enter each other's IP addresses.
    • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because combining these elements involved applying known techniques in their respective fields to achieve predictable results. The combination integrated a known server (Muramatsu) into a known network system (Fumarolo-782) to improve its functionality.

4. Key Claim Construction Positions

  • "second georeferenced map": Petitioner argued this term, which is not defined in the specification, 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 statements the Patent Owner made during prosecution and in related district court litigation. Petitioner contended this construction was critical because it brought Muramatsu’s disclosure of retrieving an "updated" map (e.g., zoomed-out or satellite view) within the scope of the claim language, thereby rendering the limitation obvious.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. § 325(d), stating that the specific combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu was never considered during the prosecution of the ’251 patent. While Fumarolo-782 and Fumarolo-844 were cited by the Patent Owner, Petitioner asserted they were never applied by the Examiner in an Office Action. Liu was not cited or considered at all. Therefore, the core arguments and prior art combination presented in the petition were new and had not been substantively evaluated by the USPTO. Petitioner also argued this petition was not cumulative with other concurrently-filed petitions because they relied on different primary references and legal theories (e.g., intervening art under §102(e) vs. prior art under §102(b)).

6. 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.