PTAB

IPR2020-00871

Google LLC v. AGIS Software Development LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ad Hoc Network for Location Sharing and Remote Control
  • Brief Description: The ’829 patent describes establishing an ad hoc network where users’ devices exchange location information via a remote server. Each user's location is displayed as a selectable symbol on a georeferenced map, allowing users to communicate with or remotely control other devices in the network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ancestor Patent and Conventional Techniques - Claims 1-68 are obvious over the ’724 patent alone or in combination with Borghei.

  • Prior Art Relied Upon: Patent 7,630,724 (the ’724 patent) and Borghei (Application # 2012/0008526).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner’s primary argument was that the ’829 patent is not entitled to its claimed priority date due to a broken priority chain. Specifically, the grandparent application (the ’410 application) failed to properly incorporate by reference the disclosure of its own parent, the ’724 patent. This failure, Petitioner argued, means the ’410 application lacks written description support for key limitations of the ’829 patent claims, including server-mediated group joining, server-based remote control operations, and obtaining georeferenced map data from a server. Consequently, the ’829 patent’s effective filing date is no earlier than October 31, 2014, which renders the ’724 patent—an ancestor patent in the same family—as prior art under 35 U.S.C. §102(a)(1).

    • Petitioner asserted that the ’724 patent, now considered prior art, teaches nearly every element of the challenged claims. This includes a server-based system where a user can invite other devices to a communications network (“polling”), share location information on a map, and issue remote commands. The only element Petitioner argued the ’724 patent does not explicitly disclose is a device sending an express acceptance of an invitation to join the group. Borghei was introduced to supply this missing element, as it describes a conventional request-acceptance-confirmation process for joining location-sharing groups facilitated by a central server. Borghei taught that a user responds to a location-sharing request to indicate consent before tracking begins.

    • Motivation to Combine (for §103 grounds): A POSITA would combine Borghei’s conventional acceptance step with the system of the ’724 patent to improve user satisfaction and privacy. Requiring express consent before a device is tracked and made subject to remote control was a well-known and logical feature to prevent users from being unexpectedly monitored.

    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in implementing Borghei’s standard acceptance process into the ’724 patent’s location-sharing framework, as it was a known technique for managing user consent in analogous applications.

    • Key Aspects: The central pillar of this ground is the legal and technical argument that a broken priority chain rendered an ancestor patent available as prior art against its own descendant.

4. Key Claim Construction Positions

  • "georeferenced map data": Petitioner proposed this term, recited in all four independent claims, should be construed as “data relating positions on a map to spatial coordinates.” This construction was critical to Petitioner's argument that the grandparent ’410 application lacked written description for this feature because the term does not appear in that application, and its general disclosure of "maps" was insufficient.

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain: The petition’s dispositive technical contention was that the ’829 patent’s claims lacked written description support in the grandparent ’410 application. Petitioner argued that the ’410 application's single, ambiguous incorporation-by-reference statement only incorporated the ’728 patent, not the ’724 patent. Because Patent Owner relied on the ’724 patent’s disclosure during prosecution to support the challenged claims, the failure to carry that disclosure through the priority chain was fatal to the earlier effective filing date. This contention underpinned the entire invalidity case by making the ’724 patent available as prior art.

6. Arguments Regarding Discretionary Denial

  • General Plastic Factors: Petitioner argued that discretionary denial under the General Plastic factors was inappropriate. A previous IPR against the ’829 patent, filed by Apple Inc. (IPR2018-01471), was instituted but terminated due to settlement before a Final Written Decision. Petitioner contended that because the prior petition was not denied on the merits, the General Plastic factors, which are aimed at follow-on petitions after a denial, should not apply. In the alternative, Petitioner argued the factors weighed in favor of institution because the current Petitioners were not party to the Apple litigation and filed this petition promptly after being sued by the Patent Owner.
  • Fintiv Factors: Petitioner argued against denial under Fintiv, asserting that the parallel district court litigation was in its early stages with no significant investment by the court or parties. Petitioner noted that a stay of the district case was likely if the IPR was instituted and that the IPR would resolve the validity of all challenged claims, providing a more efficient resolution than the district court, which might only address a subset of claims.

7. Relief Requested

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