PTAB

IPR2020-00870

Google LLC v. AGIS Software Development LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Ad Hoc Network of Devices
  • Brief Description: The ’829 patent is directed to methods and systems for establishing an ad hoc network of devices, such as smartphones or PDAs. The system facilitates exchanging location information between devices through a server, with each participant's location displayed as a selectable symbol on an interactive, georeferenced map.

3. Grounds for Unpatentability

Ground 1: Claims 1-68 are obvious over Haney in view of Fumarolo

  • Prior Art Relied Upon: Haney (Patent 7,353,034) and Fumarolo (Patent 6,366,782).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haney disclosed the core framework of the challenged claims, including a client-server architecture ("Buddy Watch" server) for managing groups of wireless devices. Haney taught creating groups by sending and accepting requests, sharing GPS location data among group members, requesting location updates, and displaying device locations on a map. However, to the extent Haney's disclosure of displaying symbols on a map was considered insufficient, Petitioner asserted that Fumarolo taught displaying user-selectable symbols (icons) on a map to represent communication units. Fumarolo also explicitly disclosed using a touchscreen interface for user interaction. The combination, Petitioner contended, met all limitations of the independent claims (1, 34, 35, and 68), which cover the process from both the server's and the device's perspective. For instance, Haney's "meeting place" function, which allows a user to designate a target on a map and send it to other group members, was mapped to the claimed "remote control" operations. Fumarolo supplemented this by teaching the selection of device icons on a map to initiate communications.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSA) would combine Haney and Fumarolo for several reasons. First, incorporating Fumarolo’s user-selectable symbols and map-based communication methods would improve the efficiency and functionality of Haney's system. Second, adding Fumarolo's touchscreen interface to Haney's devices was an obvious modification to enhance user experience. Finally, both references were in the same field of map-based communication systems for coordinating groups (such as emergency responders) and addressed the same problem of facilitating efficient communication among wireless devices using an interactive map.
    • Expectation of Success (for §103 grounds): Petitioner argued that a POSA would have had a reasonable expectation of success in combining the references, as it involved applying a known technique (Fumarolo's user-selectable icons on a map) to a known system (Haney's georeferenced map) to achieve predictable results.

4. Key Claim Construction Positions

  • "georeferenced map data": Petitioner proposed that this term, recited in all four independent claims, should be construed as "data relating positions on a map to spatial coordinates," such as latitude and longitude. Petitioner argued this construction was necessary for a device to properly position an object on a displayed map by relating map positions to real-world spatial coordinates.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: A central contention was that the ’829 patent was not entitled to its claimed priority date of September 21, 2004. Petitioner argued that claim limitations requiring a server were first introduced in a 2006 continuation-in-part application (which issued as the ’724 patent). Because this was new matter not supported by the original 2004 application, Petitioner contended the earliest possible effective filing date for the challenged claims was April 17, 2006. This later date was critical because it rendered Haney, filed on April 4, 2005, valid prior art under 35 U.S.C. §102(e).

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) (based on Fintiv factors, referred to as NHK Spring in the petition) would be inappropriate. The core arguments were that the parallel district court litigation was in its very early stages, with no significant investment beyond initial discovery requests. Petitioner asserted that a stay of the court case was likely if the IPR was instituted, and the district court trial date was uncertain due to pending motions to transfer venue. Furthermore, the petition challenged all 68 claims, whereas the district court case would likely resolve the patentability of only a small subset, making the IPR a more efficient vehicle for resolving the dispute.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-68 of the ’829 patent as unpatentable.