Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01086
• Patent #: 9,467,838
• Filed: May 15, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 7, 22-27, 34, and 44-47

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’838 patent describes a method for a wireless device to establish and participate in a temporary, ad hoc communication network with other devices. The system displays the locations of group members on an interactive map and allows a user to request and display multiple different georeferenced maps from a server to facilitate communication and coordination, particularly in emergency response scenarios.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haney and Fumarolo - Limitations of Independent Claim 1

• 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 features of the claimed method, including a map-based system for wireless devices to form groups and share GPS location data via a server (the "Buddy Watch" system). Haney disclosed displaying device locations on a map requested from a map server (e.g., MapQuest). However, Haney allegedly did not explicitly teach initiating communication by selecting user symbols directly on the map interface. Petitioner asserted that Fumarolo supplied this missing element, as it described a system for emergency responders where communication units were displayed as selectable icons on a map, and a user could select an icon to initiate voice or data communication with that unit.
  • Motivation to Combine: A POSITA would combine Haney and Fumarolo because both references were in the same field (map-based communication for emergency responders) and addressed the same problem of facilitating efficient communication among group members. Integrating Fumarolo’s intuitive, single-map interface for both viewing and communicating into Haney’s existing group location-sharing system was argued to be a predictable improvement to enhance usability and efficiency.
  • Expectation of Success: Petitioner contended that combining Fumarolo’s known graphical user interface technique (selectable icons on a map) with Haney’s map-based communication system would have been a routine integration with a high expectation of success.

Ground 2: Obviousness over Haney, Fumarolo, and Spaargaren - Claims 7, 22-27, 34, and 44-47

• 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: This ground built upon the Haney/Fumarolo combination to address limitations in the challenged dependent claims. Petitioner argued Spaargaren taught the additional features. For claim 22, which required identifying a user symbol based on the spatial coordinates of a user’s selection on the map, Spaargaren taught a system where a user could point to a location on a map to define it. For claim 23, which added searching a database for the entity located nearest to the selected coordinates, Spaargaren explicitly disclosed querying a database to find the “nearest taxicab” to a user. For claims related to adding a user-specified symbol for a second entity to the map (claim 24), Spaargaren taught allowing a user to select a location and associate it with an entity type (e.g., a business), which is then displayed on the map.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Spaargaren’s features into the Haney/Fumarolo system to improve its functionality. Recognizing the benefit of identifying entities based on proximity to a user-selected point on a map, a POSITA would have looked to prior art like Spaargaren for a known technique to implement this feature, thereby making the combined system more useful for locating resources or personnel.
  • Expectation of Success: Petitioner asserted that incorporating Spaargaren’s well-understood, proximity-based search and display functions into the map interface of the Haney/Fumarolo system would have been straightforward for a POSITA.

4. Key Claim Construction Positions

• "second georeferenced map data": Petitioner argued that because this term did not appear in the patent’s specification, its scope should be determined from the prosecution history and extrinsic evidence. Based on the patent owner's representations during prosecution and in district court litigation, Petitioner proposed a construction of "data including at least one of an aerial photograph, a satellite image, or a moved map relative to a first georeferenced map."
• "second server": Relying on the doctrine of claim differentiation, Petitioner argued this term should be interpreted as "a server that is either the same as, or separate from, the first server." This construction was based on dependent claim 51, which explicitly recited the first server being the second server, implying the independent claim must be broad enough to cover both possibilities.

5. Key Technical Contentions (Beyond Claim Construction)

• Disputed Priority Date: A central contention was that the ’838 patent was not entitled to its earliest claimed priority date of September 21, 2004. Petitioner argued that the key claim limitations—specifically those requiring a client-server architecture for downloading multiple maps—were not supported by the 2004 application, which allegedly disclosed a peer-to-peer system. Petitioner asserted that this new matter was first introduced in a continuation-in-part application filed on April 17, 2006. This argument was critical to establishing Haney (filed in 2005) as valid prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper because the primary prior art references, Haney and Spaargaren, were never cited or considered during the original examination of the ’838 patent. While Fumarolo was cited by the patent owner, it was never applied in a rejection by the Examiner. Petitioner also contended that the petition was not cumulative with other concurrently-filed petitions because they relied on distinct primary references that qualified as prior art under different statutory sections and legal theories (e.g., third-party art versus a broken priority chain making the patent owner's own patent prior art).

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 7, 22-27, 34, and 44-47 of the ’838 patent as unpatentable.