PTAB

IPR2018-01085

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 ’838 patent describes a system for establishing a temporary, ad hoc communication network among wireless devices, primarily for use by first responders. The system uses a remote server to manage communications and display the real-time locations of participants as selectable symbols on an interactive map.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6, 10-12, 14, 15, 17-20, 37-40, and 54 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 the core framework of the claimed invention, including a map-based system for location sharing among wireless devices in a group via a central server (the "Buddy Watch" system). Haney disclosed establishing a group, sending and receiving location data, and displaying device locations on a map retrieved from a server. However, Haney did not explicitly disclose initiating communication by selecting user-selectable symbols on the map itself. Petitioner asserted that Fumarolo supplied this missing element. Fumarolo, also directed to emergency response systems, taught displaying communication units as icons on a map and allowing a user to select those icons (e.g., via touchscreen) to initiate voice or data communication. The combination of Haney’s location-sharing network with Fumarolo’s interactive map interface allegedly rendered the independent claims (1 and 54) obvious. Petitioner further mapped elements of the combination to each of the challenged dependent claims, arguing they recited known functionalities like using GPS, Internet Protocols, touchscreens, or transmitting specific data types (e.g., text messages, photos), all of which were disclosed or suggested by the references or were obvious design choices.
    • Motivation to Combine: A POSITA would combine Haney and Fumarolo because both references operated in the same technical field (emergency response communication systems) and aimed to solve the same problem of facilitating efficient communication among mobile units. A POSITA would look to Fumarolo to improve Haney’s user interface, as Fumarolo’s method of initiating communication directly from an integrated map display was a known and more efficient alternative to Haney's method, which involved separate buddy lists and menus. Implementing Fumarolo's user-selectable symbols into Haney’s system would be a predictable integration to improve usability.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The integration involved applying a known user interface technique (Fumarolo’s selectable map icons) to a known type of system (Haney’s location-sharing network). This combination would have been a predictable application of conventional mobile application and interactive display design principles, resulting in the claimed system.

4. Key Claim Construction Positions

  • "second georeferenced map data": Petitioner proposed this term should be interpreted to include “data including at least one of an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map.” This construction was based on the prosecution history of a related patent and the Patent Owner’s infringement contentions. This interpretation was critical for arguing that Haney’s features for changing a map’s size or recentering it on a different user met this claim limitation, as such actions would necessarily display a map different from the first.
  • "second server": Petitioner argued this term should be interpreted as a “server that is either the same as, or separate from, the first server.” This construction relied on the doctrine of claim differentiation, as a dependent claim specified that the first and second server could be the same. This interpretation allowed Haney’s disclosure of a “Buddy Watch server” that pulls maps from a “MapQuest server” to satisfy the claims’ requirements for both a first and second server.

5. Key Technical Contentions (Beyond Claim Construction)

  • Disputed Priority Date: A central argument of the petition was that the ’838 patent was not entitled to its claimed 2004 priority date. Petitioner contended that the allowed claims were added late in prosecution and relied on subject matter that was first introduced in an intermediate application in the priority chain (the ’724 patent, filed April 17, 2006). Because the original 2004 application allegedly lacked written description support for key limitations (e.g., the use of "a server" for downloading maps), the effective priority date could be no earlier than 2006. This argument was crucial for establishing that Haney, filed on April 4, 2005, qualified as prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper because the asserted prior art and arguments were not previously considered by the USPTO. Specifically, Haney was never cited during the original prosecution of the ’838 patent. While Fumarolo was cited by the Patent Owner, it was never applied in a rejection by the examiner. Therefore, the specific combination of Haney and Fumarolo was never before the Office. Petitioner also argued this IPR was not cumulative with concurrently-filed petitions because it was based on different prior art (intervening art under §102(e)) compared to other petitions based on pre-2004 art or the patent owner's own earlier-filed patents.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4-6, 10-12, 14, 15, 17-20, 37-40, and 54 of the ’838 patent as unpatentable.