Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01084
• Patent #: 9,445,251
• Filed: May 15, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 13-19 and 21

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’251 patent discloses a system for using a wireless device to display maps showing the locations of other wireless devices in a group and enabling communication with those devices by interacting directly with the map interface. The purported novelty involves downloading and displaying a second, different georeferenced map from a server.

3. Grounds for Unpatentability

Ground 1: Claims 13-19 and 21 are obvious over Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and Spaargaren.

• Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), Liu (Application # 2002/0027901), and Spaargaren (WO 02/17567).
• Core Argument for this Ground: Petitioner asserted that the challenged claims are obvious over a progressive combination of prior art references, where each subsequent reference was alleged to supply a specific feature to a base system, motivated by predictable improvements and known design choices.
  • Prior Art Mapping:
    • The combination of Fumarolo-782 and Fumarolo-844 was argued to establish the base system. Fumarolo-782 taught a map-based system for displaying and communicating with wireless units (e.g., for emergency responders), while Fumarolo-844, a related patent, supplied the specific method for dynamically forming the communication "talkgroups" that Fumarolo-782 mentioned but did not detail.
    • Muramatsu was added to this base system to explicitly teach the use of a "navigation server" for sending and receiving location information and downloading map data. This addressed the ’251 patent’s limitations requiring server-based communication and the downloading of a second map, such as an updated or zoomed-out map.
    • Liu was combined to teach anonymous communication, wherein a server facilitates communication between devices without the initiating device having access to the recipient's Internet Protocol (IP) address. This was mapped to the claim limitation requiring communication where the first device "does not have access to respective Internet Protocol addresses of the second devices."
    • Spaargaren was added to address limitations in the dependent claims. It taught identifying user-selectable symbols based on proximity to a user-selected point on a map and searching a database for the entity nearest to the selected coordinates (e.g., finding the nearest taxicab).
  • Motivation to Combine:
    • A POSITA would combine Fumarolo-782 and Fumarolo-844 because they are from the same inventors and assignee, address the same technical problem, and Fumarolo-844 provides a specific solution for forming the talkgroups used in Fumarolo-782's system.
    • A POSITA would incorporate Muramatsu’s server-based architecture into the Fumarolo system to overcome the well-known memory and processing limitations of early 2000s mobile devices by off-loading map storage. This was presented as a predictable design choice.
    • A POSITA would add Liu’s anonymous communication to improve the efficiency of an emergency response system, as responders could communicate through the map interface without needing to first know or enter the specific IP addresses of other units.
    • A POSITA would integrate Spaargaren's proximity-based selection to enhance the map interface's functionality, allowing a user to simply select a location on the map (e.g., an incident site) to quickly identify and communicate with the nearest available units.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in combining these elements, as it involved integrating known functionalities (server-based map data, anonymous communication, proximity searching) into a conventional map-based communication system using standard techniques.

4. Key Claim Construction Positions

• "second georeferenced map": Petitioner argued that under the broadest reasonable interpretation, 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 asserted to be critical to the obviousness argument, as it allowed the teachings of Muramatsu—which discloses a device requesting and receiving an "updated" or "enlarged map" from a navigation server—to be mapped directly onto the claim limitations requiring the downloading of a "second georeferenced map." Petitioner contended this construction was supported by the ’251 patent's prosecution history and the Patent Owner's infringement contentions in parallel district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the prior art and arguments presented in the petition were not substantively considered during the original examination of the ’251 patent.
• While Fumarolo-782, Fumarolo-844, and Muramatsu were cited during prosecution, the Petitioner asserted they were never applied by the Examiner in a rejection. Liu and Spaargaren were never cited at all. Consequently, the specific five-reference combination and the associated obviousness rationale were never before the Patent Office.
• The petition also argued it was not cumulative with concurrently filed petitions that relied on different primary art (Haney) or different legal theories (a broken priority chain in IPR2018-00817).

6. Relief Requested

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