Google LLC v. IPA Technologies Inc

1. Case Identification

• Case #: IPR2019-00733
• Patent #: 7,036,128
• Filed: February 26, 2019
• Petitioner(s): Google LLC
• Patent Owner(s): IPA Technologies Inc.
• Challenged Claims: 1-12, 20-21

2. Patent Overview

• Title: Mobile, Ambient Computing Environment
• Brief Description: The ’128 patent describes a system for providing a mobile computing environment using a community of distributed software agents. The architecture uses one or more "facilitator agents" to broker communication and coordinate tasks among various service-providing agents based on their registered capabilities.

3. Grounds for Unpatentability

Ground 1: Obviousness over Martin and Steiner - Claims 1, 2, 5, 20, and 21 are obvious over Martin in view of Steiner.

• Prior Art Relied Upon: Martin (a 1998 conference paper titled “Building Distribute Software Systems with the Open Agent Architecture”) and Steiner (Patent 5,528,248).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Martin, which discloses the same Open Agent Architecture (OAA) as the ’128 patent, taught the core limitations of independent claim 1. This included a computer-implemented community of distributed electronic agents, a facilitator agent, and an Interagent Communication Language (ICL). Martin was alleged to disclose an agent registry where agents register their capabilities, and a layered conversational protocol defined by event types and parameter lists that refine the events. For limitations related to location, Petitioner asserted that Martin disclosed a map application for a mobile PDA but did not explicitly teach a location-aware agent. Steiner was introduced to supply this element, as it taught a "Personal Digital Location Apparatus" using GPS to determine a user's location and display it as an icon on a map.
  • Motivation to Combine: A POSITA would combine Steiner's location-determination technology with Martin's agent-based map application. Because Martin's system was already designed for a mobile environment (e.g., a PDA), adding location awareness as taught by Steiner was argued to be a predictable and common-sense improvement to enhance the application's usability for tasks like travel planning.
  • Expectation of Success: The combination of known GPS location technology with a software-based map application would have yielded predictable results.

Ground 2: Obviousness over Martin, Steiner, and Tamai - Claim 3 is obvious over Martin in view of Steiner and Tamai.

• Prior Art Relied Upon: Martin, Steiner, and Tamai (Patent 5,608,635).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Martin and Steiner combination to address claim 3, which required the map information to include geographic location information based on "site type" (e.g., nearest restaurant or gas station). While Martin/Steiner provided a location-aware map, Petitioner asserted they did not explicitly teach this categorical search feature. Tamai was introduced as it disclosed a vehicle navigation system that could guide a user to a destination specified in categorical terms, such as the "nearest gas station" or "closest hardware store."
  • Motivation to Combine: A POSITA implementing the location-aware map of Martin and Steiner would be motivated to incorporate Tamai's categorical search functionality. This feature was a well-known method for enhancing the user-friendliness of navigation applications, making it a logical addition to Martin's system.

Ground 3: Obviousness over Martin, Steiner, and Obradovich - Claims 7-11 are obvious over Martin in view of Steiner and Obradovich.

• Prior Art Relied Upon: Martin, Steiner, and Obradovich (Patent 6,009,355).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 7-11, which recited that the mobile computer interface agents comprise an electronic control panel for automotive devices (e.g., sound system, cruise control, lights). Petitioner argued that while Martin's agent architecture was general-purpose and could be used for control applications (like controlling robots), it did not specify automotive controls. Obradovich was introduced because it explicitly taught a user interface for an automobile that enables a user to control vehicle functions like the radio/CD player, cruise control, and lights via an electronic panel.
  • Motivation to Combine: A POSITA seeking to apply Martin's general control architecture to an automotive context would have naturally looked to prior art like Obradovich, which taught specific user interface implementations for that exact environment. Combining Obradovich's specific automotive control panel with the broader Martin/Steiner agent framework was presented as a predictable application of known principles.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Martin, Steiner, and Trovato for spoken directions (Claim 4); adding Anagnostopoulos and Tamai for location-based proactive interaction (Claim 6); and adding Hurst for a voicemail interface with decision branching (Claim 12).

4. Key Technical Contentions (Beyond Claim Construction)

• Prior Art Status of Martin: A central contention of the petition was that the primary reference, Martin, qualified as prior art under pre-AIA 35 U.S.C. §102(a). The Petitioner argued that during the prosecution of a related application, the Examiner had improperly withdrawn a rejection based on Martin after the patent applicants submitted inventor declarations. Petitioner contended this was an error for multiple reasons.
  • First, the inventive entity of the ’128 patent (Julia and Cheyer) is different from the co-authors of Martin (Martin, Cheyer, and Moran), meaning the reference describes the work "of another."
  • Second, Petitioner submitted a new declaration from Dr. Douglas Moran, a co-author of Martin, providing factual details of his own inventive contributions to the OAA project described in the paper. This declaration was intended to directly counter the earlier, uncorroborated declarations and establish that Martin was not solely the work of the ’128 patent's inventors.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 and 20-21 of the ’128 patent as unpatentable.