Google LLC v. IPA Technologies Inc

1. Case Identification

• Patent #: 7,036,128
• Filed: February 26, 2019
• Petitioner(s): Google LLC
• Patent Owner(s): IPA Technologies Inc.
• Challenged Claims: 22, 41-42, 44, and 45

2. Patent Overview

• Title: Mobile, Ambient Computing Environment
• Brief Description: The ’128 patent relates to a mobile, ambient computing environment that utilizes an "Open Agent Architecture" (OAA). The system employs one or more "facilitator" agents to broker communications and coordinate tasks among a community of distributed, service-providing electronic agents (e.g., GPS agents, speech recognition) to serve a knowledge worker operating away from a traditional desk.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 45 over Martin

• Prior Art Relied Upon: Martin (an article titled "Building Distribute Software Systems with the Open Agent Architecture," published in the Proceedings of the Third International Conference on the Practical Application of Intelligent Agents and Multi-Agent Technology (1998)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Martin teaches a computer-implemented, mobile, ambient computing environment that is virtually identical to the one claimed. Martin’s disclosed OAA involves a community of distributed electronic agents whose cooperation is brokered by a facilitator, matching the preamble of claim 45. Petitioner asserted that Martin discloses a plurality of autonomous, service-providing agents that register their capabilities with the facilitator using an Interagent Communication Language (ICL). This ICL, as described in Martin, includes a layer of conversational protocol defined by event types and parameter lists that refine the events, meeting key limitations of the claim. Furthermore, Martin’s disclosure of using the OAA for mobile interfaces like a PDA with a telephone, responsive to multiple user input types (e.g., speech, pen, gesture), was mapped to the claimed mobile computer interface that forwards user requests to the facilitator.
  • Key Aspects: Petitioner contended that to the extent any minor ambiguity exists, such as how parameter lists explicitly refine events, it would have been obvious to a POSITA to implement this feature using known programming techniques, as it represents a fundamental concept in software development.

Ground 2: Obviousness of Claims 22, 41-42, and 44 over Martin and Steiner

• Prior Art Relied Upon: Martin (as described in Ground 1) and Steiner (Patent 5,528,248).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the combination of Martin and Steiner renders claims 22, 41-42, and 44 obvious under 35 U.S.C. §103. Petitioner argued Martin taught nearly all limitations of the independent claims, including the mobile computing environment, the community of agents, user interface agents, and the facilitator-based architecture for processing goals. The combination introduced Steiner to supply the claimed "location agent providing information as to a current physical location of a user." Steiner disclosed a "Personal Digital Location Apparatus" that uses a GPS Smart Antenna connected to a PDA to determine and display a user's geographical location on a map, thereby teaching the missing element.
  • Motivation to Combine: A POSITA would combine Martin and Steiner because Martin explicitly discloses using its OAA for a "Multimodal Map" application. It would have been a natural and predictable design choice to enhance Martin's map application with the known GPS location-tracking technology taught by Steiner. This combination would allow the system to provide location-sensitive information, a clear benefit for a mobile mapping application.
  • Expectation of Success: Petitioner argued that incorporating a known location-determination component (from Steiner) into an existing agent-based software architecture (from Martin) was a straightforward integration of known technologies to achieve a predictable improvement in functionality.
  • Key Aspects: For dependent claim 42, Petitioner argued that Steiner’s disclosure of displaying a map with an icon representing the user's location satisfies the requirement for a "visual display of a map." For dependent claim 44, Petitioner argued that Martin’s disclosure of "Time triggers" and an application with an electronic calendar would have made it obvious to condition a software trigger on the contents of that electronic calendar.

4. Key Technical Contentions (Beyond Claim Construction)

• Prior Art Status of Martin: A central contention of the petition was establishing Martin as valid prior art under pre-AIA §102(a). During prosecution of a related application, the patent owner had disqualified Martin by submitting inventor declarations from the ’128 patent’s co-inventor (A. Cheyer) and another individual (D. Martin). Petitioner argued these declarations were insufficient to disqualify Martin as a reference against the ’128 patent for several reasons:
  • The inventive entity of the ’128 patent (Julia and Cheyer) is different from the inventive entity of the patent under which the declarations were originally filed.
  • The declarations were merely conclusory and lacked the corroborating evidence required to overcome a reference, as established in EmeraChem Holdings, LLC v. Volkswagen Group of Am., Inc.
  • Critically, Petitioner submitted a new declaration from Dr. Douglas Moran, a co-author of the Martin paper who is not a named inventor on the ’128 patent. Dr. Moran’s declaration provided detailed, factual testimony regarding his own inventive contributions to the subject matter disclosed in Martin, directly contradicting the earlier declarations. Petitioner argued this new evidence definitively establishes that Martin describes the work of "another" inventive entity and thus qualifies as prior art.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 22, 41-42, 44, and 45 of Patent 7,036,128 as unpatentable.