Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01087
• Patent #: 9,467,838
• Filed: May 15, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 1, 4-7, 10-12, 14, 15, 17-20, and 54

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’838 patent describes a system and method for using a wireless device in conjunction with a remote server to establish a temporary ad hoc communication network. The network allows participants, such as emergency first responders, to view each other's locations on an interactive map and communicate.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 10, 12, 15, 17-20, and 54 are obvious over Fumarolo-782 in view of Fumarolo-844 and Muramatsu.

• Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), and Muramatsu (Application # 2002/0173906).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fumarolo-782 disclosed the core system of the independent claims: a display-based terminal for a first device that shows the locations of other communication units (second devices) on an interactive map and allows a user to initiate communication by selecting units from the map. However, Fumarolo-782 was silent on how communication "talkgroups" were formed and did not explicitly teach a server-based architecture for map data. Petitioner asserted that Fumarolo-844 supplied the missing teaching for dynamically creating these talkgroups from a map interface. To address the server limitation, Petitioner argued Muramatsu taught using a "navigation server" to which a wireless device transmits its location and from which it downloads map information, including updated or enlarged maps.
  • Motivation to Combine: A POSITA would combine Fumarolo-782 and Fumarolo-844 because they address the same problem, share inventors and an assignee, were filed the same day, and Fumarolo-844 provides a specific implementation for the talkgroups generally described in Fumarolo-782. A POSITA would have incorporated Muramatsu's server-based approach to improve the Fumarolo system by offloading map data storage from the memory-constrained wireless devices of the era, which was a known design trade-off to conserve device resources.
  • Expectation of Success: Petitioner contended there was a high expectation of success, as the combination involved applying a known server-based solution (Muramatsu) to a known map-based communication system (Fumarolo) to gain predictable benefits in memory management and system capability.

Ground 2: Claims 5-7, 11, and 14 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: This ground builds upon the combination in Ground 1 to address additional dependent claim limitations related to communication protocols and data types. Petitioner argued the base combination did not explicitly teach communicating without the initiating device having access to the recipient's Internet Protocol (IP) address (as required by claim 5). Liu was introduced to teach a method for anonymous communication where a first device sends a request to a server using a "reference code," and the server uses that code to look up the second device's IP address and establish communication, thereby obviating the need for the first device to know the address. Petitioner also asserted Liu disclosed the use of various communication data types, including text messages, video, and VoIP, mapping to claims 6, 7, and 11.
  • Motivation to Combine: A POSITA would combine Liu's teachings to improve the efficiency of the emergency response system of the primary combination. In such a system, responders from different agencies would not necessarily know each other’s IP addresses. Liu's anonymous communication functionality would provide a predictable solution to this problem, allowing users to communicate directly from the map interface without needing to separately look up and enter address information.
  • Expectation of Success: The integration of Liu's communication features was presented as a predictable application of known networking techniques to solve a known problem, yielding the expected result of more seamless communication between users in an ad hoc network.

4. Key Claim Construction Positions

• "second georeferenced map data": Petitioner proposed this term be construed as "data including at least one of an aerial photograph, a satellite image, or a moved map." This construction was argued to be supported by the patent owner’s statements during prosecution of a related patent and in district court infringement contentions, which were cited as extrinsic evidence of the term's broadest reasonable interpretation. This construction was central to arguing that downloading a "zoomed-out" map, as taught by Muramatsu, met the claim limitation for receiving different map data.
• "second server": Petitioner argued this term should be interpreted as "a server separate from a first server." This position was based on the doctrine of claim differentiation, as another dependent claim in the patent family specified that the first and second servers could be the same server.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the specific combinations of prior art asserted in the petition were never considered by the examiner during prosecution. While Fumarolo-782, Fumarolo-844, and Muramatsu were of record, the examiner never applied them in any rejection. Liu was never cited at all. The petition asserted that these new arguments and combinations warranted review. Petitioner also argued the petition was not cumulative with other concurrently filed petitions because they relied on different primary references and legal theories.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4-7, 10-12, 14, 15, 17-20, and 54 of the ’838 patent as unpatentable.