PTAB

IPR2019-00403

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 is directed to methods and systems for establishing an ad hoc network of devices, such as smartphones. Users join a network using a common password, exchange location information via a server, and view other participants as selectable symbols on an interactive, georeferenced map.

3. Grounds for Unpatentability

Ground 1: Claims 1-84 are obvious over the ’724 patent.

  • Prior Art Relied Upon: Patent 7,630,724 (’724 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’724 patent is valid prior art because the ’838 patent has a broken priority chain, a contention detailed in a separate section of the petition. Petitioner asserted that the ’724 patent, which belongs to the same patent family, discloses nearly every limitation of the challenged claims. Specifically, the ’724 patent taught displaying a first georeferenced map with user symbols and the capability to request, receive, and display a second, different georeferenced map from a remote server. The petition contended that the only element not expressly taught was displaying a second set of user symbols on the second georeferenced map. For many limitations, Petitioner relied on the Patent Owner’s own admissions during prosecution where it argued that the ’724 patent provided written description support for the claims.
    • Motivation to Combine: This ground was presented as an obvious modification of the system disclosed in the ’724 patent. Petitioner argued a person of ordinary skill in the art (POSITA) would modify the ’724 patent’s system to continue displaying user symbols on the second georeferenced map just as it did on the first. The motivation was driven by user expectations; a user requesting a new map (e.g., to see a different area or a satellite view) would expect to continue seeing the locations of group members. A system that ceased plotting user locations would frustrate the user and defeat the purpose of the group communication system.
    • Expectation of Success: A POSITA would have a high expectation of success in making this modification. The underlying technique of plotting location-based symbols on a georeferenced map was already taught by the ’724 patent for the first map, making its application to the second map a predictable and straightforward implementation.

4. Key Claim Construction Positions

  • "georeferenced map data": Petitioner proposed this term be construed as “data relating positions on a map to spatial coordinates,” such as longitude and latitude. This construction was central because the Patent Owner had distinguished its invention over other prior art during prosecution by arguing those references disclosed simple maps, not maps with this specific coordinate-linking data.
  • "georeferenced map": Following from the above, this term was proposed to mean “a map that includes georeferenced map data.” This distinguished it from a simple map image and was consistent with the Patent Owner's own prosecution history arguments.

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain: Petitioner’s primary technical contention was that the ’838 patent was not entitled to the benefit of the filing date of its ancestor patents, including the ’724 patent. The argument asserted that the ’838 patent’s immediate parent, the ’410 application, lacked written description support for key claim limitations, specifically the requesting and receiving of a second georeferenced map from a server.
  • Improper Incorporation by Reference: Petitioner further contended that the priority chain was broken because the ’410 application failed to properly incorporate the disclosure of the ’724 patent by reference. The petition argued the incorporation statement in the ’410 application was ambiguous and legally insufficient to incorporate the ’724 patent’s teachings, meaning the necessary disclosure was absent from the ’838 patent’s immediate parent. Consequently, the ’838 patent’s effective filing date was its actual filing date of October 31, 2014, making the earlier-issued ’724 patent available as prior art.

6. Arguments Regarding Discretionary Denial

  • The petition noted the existence of a concurrent IPR proceeding challenging the same patent (IPR2018-00819) for which a trial had already been instituted. Petitioner stated it was concurrently filing a motion to join that proceeding. This posture implicitly argued against discretionary denial by seeking to consolidate its challenge within an existing, ongoing trial rather than creating a duplicative proceeding.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-84 of the ’838 patent as unpatentable.