PTAB

IPR2018-01086

Google LLC v. AGIS Software Development LLC

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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 method for a first wireless device to join a communication network and interact with other devices in a group. The system involves displaying the locations of group members on an interactive, georeferenced map and enabling communication by selecting user symbols on the map. A key aspect, added during prosecution to overcome rejections, is the ability to request and receive a second, different georeferenced map from a server.

3. Grounds for Unpatentability

Foundational Analysis: Obviousness of Independent Claim 1 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:
    • Note: Although independent claim 1 is not challenged in this petition, its invalidity is asserted as the foundation for challenging the dependent claims.
    • Prior Art Mapping: Petitioner argued that Haney taught a map-based location tracking and communication system for groups (e.g., first responders) using a central server (the "Buddy Watch server") to exchange GPS data and display member locations on a map. However, Haney did not explicitly teach initiating communication by selecting user symbols directly on the map. Fumarolo, which addresses similar emergency response scenarios, was argued to supply this missing element. Fumarolo explicitly disclosed displaying selectable icons for communication units on a map and allowing a user to initiate voice or data communication by selecting an icon.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references because they are in the same field and address the same problem. A POSA would have been motivated to integrate Fumarolo’s more efficient, single-interface communication method (clicking a map symbol to communicate) into Haney’s system to improve its usability and consolidate functions, a benefit explicitly described by Fumarolo.
    • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the references, as it involved substituting one known user interface element with another to achieve a predictable improvement in functionality.

Ground 1: Claims 7, 22-27, 34, and 44-47 are obvious over Haney in view of Fumarolo and 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: This ground builds on the combination of Haney and Fumarolo by adding Spaargaren to teach the specific features of the challenged dependent claims. Spaargaren disclosed a system for disseminating location-based data, including displaying points of interest on a map. Petitioner argued Spaargaren taught the additional limitations, such as:
      • Proximity-based searching (Claims 22, 23): Spaargaren taught searching a database for the entity (e.g., a taxicab) nearest to a user's location or a selected point on a map.
      • Transmitting additional data types (Claim 7): Spaargaren taught associating a "video file" with location data and transmitting it, making it obvious to add video capability to the messages in Haney.
      • Adding user-specified symbols (Claim 24, 25): Spaargaren taught allowing a user to specify a location on a map and transmit that location with an associated symbol (e.g., a "house" icon) to other users for display on their maps.
      • Displaying fixed facilities and initiating calls (Claims 44-47): Spaargaren taught displaying fixed locations like businesses ("suppliers") on a map with associated information (e.g., telephone numbers) and a URL. Combining this with Fumarolo's "point and click" communication feature would make it obvious to click on a facility's symbol to initiate a telephone call.
    • Motivation to Combine: A POSA would combine Spaargaren with the Haney/Fumarolo system to add well-known and desirable location-based service features. Improving the base system with proximity searching, richer data types, and user-customizable map symbols would have been a recognized benefit and a predictable design path.
    • Expectation of Success: Integrating Spaargaren’s conventional location-based features into the combined Haney/Fumarolo system would have been a routine modification with a high probability of success.

4. Key Claim Construction Positions

  • "second georeferenced map data": Petitioner proposed this term should be construed as "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 patent owner's statements during prosecution of a related patent and in district court litigation. This broader interpretation allows prior art that teaches requesting different map views (e.g., zoomed, panned) to satisfy the claim limitation.
  • "second server": Petitioner asserted this term should be interpreted as "a server that is either the same as, or separate from, the first server." This argument relied on the doctrine of claim differentiation, as a dependent claim explicitly recites that the first server is the second server, implying the independent claim must be broader. This construction allows Haney's architecture, which uses both an internal server and an external "MapQuest server," to map onto the claims.

5. Key Technical Contentions (Beyond Claim Construction)

  • Disputed Priority Date: A central argument was that the ’838 patent was not entitled to its claimed 2004 priority date. Petitioner contended that the core "server-based" limitations of the challenged claims were not disclosed in the original parent application (the ’728 patent), which described a peer-to-peer system. Instead, this subject matter was first introduced in a 2006 continuation-in-part application (the ’724 patent). Therefore, Petitioner argued the correct priority date is no earlier than April 17, 2006, which renders Haney (filed in 2005) valid prior art.

6. Arguments Regarding Discretionary Denial

  • Arguments against §325(d) Denial: Petitioner argued that discretionary denial would be inappropriate because the primary references and arguments were not previously considered by the USPTO. Specifically, Haney and Spaargaren were never cited during prosecution. While Fumarolo was cited by the applicant, it was never substantively analyzed or applied in a rejection by the Examiner.
  • Arguments against Cumulativeness: Petitioner argued this petition was not cumulative with other concurrently-filed petitions. It asserted that different petitions relied on different primary art (e.g., Haney vs. Fumarolo) that qualified as art under different statutory sections (§102(e) vs. §102(b)) and taught different claim elements, making the arguments distinct.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 7, 22-27, 34, and 44-47 of the ’838 patent as unpatentable under 35 U.S.C. §103.