Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2018-01088
• Patent #: 9,467,838
• Filed: May 15, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 22-27, 34, 37-40, and 44-47

2. Patent Overview

• Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
• Brief Description: The ’838 patent discloses a method for a wireless device, in conjunction with a remote server, to establish a temporary ad hoc communication network. This network allows a group of participants, such as first responders, to share location and status information on an interactive map display.

3. Grounds for Unpatentability

Ground 1: Claims 22-27 and 34 are obvious over Fumarolo-782, Fumarolo-844, Muramatsu, and Spaargaren.

• Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), and Spaargaren (WO 02/17567).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the combination of Fumarolo-782, Fumarolo-844, and Muramatsu taught the core functionality of the system on which the challenged claims depend. Fumarolo-782 disclosed a map-based system for displaying and communicating with mobile units. Fumarolo-844, a related patent, provided specific details for dynamically forming the communication "talkgroups" mentioned in Fumarolo-782. Muramatsu was added to this combination to introduce a "navigation server" for managing map data and communications, a known solution to the limited memory of wireless devices at the time. To address limitations in claims 22-24 related to identifying entities based on proximity to a selected point on a map, Petitioner relied on Spaargaren. Spaargaren allegedly taught identifying user-selectable symbols based on the spatial coordinates of a selected position and searching a database to find the nearest entity (e.g., a taxicab) to that position.
  • Motivation to Combine: A POSITA would combine Fumarolo-782 and Fumarolo-844 because they address the same problem, share inventors, and are explicitly related. A POSITA would incorporate Muramatsu's server-based approach to solve the well-known problem of limited device memory and to offload processing. Finally, a POSITA would incorporate Spaargaren’s proximity-based selection feature to improve the user interface of the Fumarolo system, providing an intuitive way to identify and interact with nearby units, a logical enhancement for coordinating emergency responders.
  • Expectation of Success: Petitioner argued success would be predictable, as the combination involved integrating known features from the same technical field to achieve their expected functions.

Ground 2: Claims 37-40 and 44-47 are obvious over Fumarolo-782, Fumarolo-844, Muramatsu, and Sheha.

• Prior Art Relied Upon: Fumarolo-782 (Patent 6,366,782), Fumarolo-844 (Patent 6,204,844), Muramatsu (Application # 2002/0173906), and Sheha (Application # 2004/0054428).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the same base combination of Fumarolo-782, Fumarolo-844, and Muramatsu to establish a server-based ad hoc network with map displays. To meet the limitations of claims 37-40 and 44-47, which relate to sharing user-specified points-of-interest (POIs) and remotely controlling devices, Petitioner added Sheha. Sheha allegedly disclosed a system for users to select POIs on a map and transmit them to other users. Sheha further taught that receiving a POI could trigger an action on the receiving device, such as displaying an information window, which Petitioner mapped to the claim limitation of sending a message to remotely control a device to perform an action.
  • Motivation to Combine: A POSITA would be motivated to add Sheha’s POI-sharing functionality to the base Fumarolo/Muramatsu system to improve its utility, particularly in the emergency response context. The ability for a dispatcher to designate a specific incident location or rendezvous point on a map and share it with other units was described as a clear and valuable improvement. Sheha explicitly mentioned its applicability to safety dispatching for police, fire, and rescue organizations.
  • Expectation of Success: Petitioner contended that combining Sheha’s software-based POI features with the Fumarolo/Muramatsu system would be a routine integration of known software functions into a known network architecture, with predictable results.

4. Key Claim Construction Positions

• "second georeferenced map data": Petitioner proposed this term means "data including at least one of an aerial photograph, a satellite image, or a moved map." This construction was based on the Patent Owner's positions in the patent’s prosecution history and related district court litigation, arguing that it represented the broadest reasonable interpretation.
• "second server": Petitioner proposed this term be interpreted as "a server separate from a first server." This argument was based on the doctrine of claim differentiation, noting that a dependent claim (claim 51) explicitly recites an embodiment where "the first server is the second server," implying the independent claim must be broad enough to cover a scenario where they are different.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. It was asserted that the specific prior art combinations presented in the petition were never considered during the patent’s examination. While Fumarolo-782, Fumarolo-844, and Muramatsu were of record, they were never applied by the examiner in a rejection. Spaargaren was never cited, and Sheha was only applied for a narrow and different purpose than argued in the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 22-27, 34, 37-40, and 44-47 of the ’838 patent as unpatentable.