PTAB

IPR2020-00872

Google LLC v. AGIS Software Development LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Interactive Map Display on a Device for Communicating with Other Devices
  • Brief Description: The ’123 patent describes a system where wireless devices in an ad hoc network can exchange location information via a remote server. The system enables a device to display an interactive map showing the locations of other network participants as selectable symbols, allowing for communication with those participants.

3. Grounds for Unpatentability

Ground 1: Claims 1-48 are obvious over Haney, Fumarolo, and Choi.

  • Prior Art Relied Upon: Haney (Patent 7,353,034), Fumarolo (Patent 6,366,782), and Choi (WO 2004/099719).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these three references teaches every limitation of the challenged claims. Haney disclosed the foundational system: a network of GPS-enabled wireless devices that exchange location data through a "Buddy Watch server" and display "buddies" on a map display for group coordination. However, Petitioner contended Haney's user interface for communication was rudimentary. Fumarolo was introduced to remedy this deficiency, as it taught an improved system for emergency responders that displayed communication units as selectable icons on a map via a touchscreen interface. Selecting an icon in Fumarolo allowed a user to initiate voice or data communication, directly teaching the interactive and communication-initiation features claimed in the ’123 patent. While this combination established most elements, it did not explicitly teach searching a set of symbols to identify the one nearest to a selected coordinate. To address this, Petitioner introduced Choi, which disclosed a system for providing map information to mobile devices, including a database of points of interest (POIs) with associated coordinate data. Choi explicitly taught searching this database to find icons associated with specific coordinates, thereby providing the missing element of identifying a symbol nearest to a selected position.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSA) would combine Haney and Fumarolo to improve the user interface and functionality of Haney's basic location-sharing system. Fumarolo's map-based communication, using selectable symbols on a touchscreen, offered a known solution to improve the efficiency of initiating communication, a goal inherent in Haney’s system. A POSA would then be motivated to incorporate Choi’s teachings to add the well-known and desirable feature of proximity-based searching (i.e., finding the nearest user or point of interest) to the Haney/Fumarolo system. This was presented as applying a known technique (Choi's database searching) to a known system (Haney/Fumarolo's interactive map) to achieve a predictable and beneficial result.
    • Expectation of Success: Petitioner argued a POSA would have had a reasonable expectation of success in combining these references. The integration involved combining known software features and user interface designs (map displays, selectable icons, database searches) which were common in the field and would have yielded predictable results.

4. Key Claim Construction Positions

  • "georeferenced map data": Petitioner argued this term, recited in all four independent claims, should be construed as "data relating positions on a map to spatial coordinates." This construction was asserted to be critical because it clarifies that the map data itself contains the necessary information (like latitude and longitude) to position objects correctly, a feature Petitioner contended was disclosed in the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention of the petition was that the ’123 patent was not entitled to its claimed priority date of September 21, 2004. Petitioner argued the patent’s priority chain was broken because material related to "server" functionality, which is essential to the independent claims, was added for the first time in the application leading to the ’724 patent (filed April 17, 2006) and was absent from earlier applications in the chain. Therefore, Petitioner argued the effective priority date for the challenged claims is no earlier than April 17, 2006, which makes Haney, Fumarolo, and Choi available as prior art.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the NHK Spring/Fintiv factors would be inappropriate. The petition asserted that the parallel district court litigation was in its very early stages, with only initial discovery requests served and no substantive motions filed, depositions taken, or invalidity contentions served. Petitioner also noted that a stay of the district court case was likely if the IPR was instituted, and that the IPR would resolve the patentability of all 48 challenged claims, whereas the district court proceeding would be limited to a small subset. Finally, Petitioner argued the merits of the petition presented a strong showing of unpatentability, which should favor institution.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-48 of the ’123 patent as unpatentable under 35 U.S.C. §103.