Google LLC v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2020-00873
• Patent #: 9,820,123
• Filed: May 22, 2020
• Petitioner(s): Google LLC, Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): AGIS Software Development, LLC
• Challenged Claims: 1-48

2. Patent Overview

• Title: Interactive Map Display for Device Communication
• Brief Description: The ’123 patent discloses a system where wireless devices exchange location and status information through a server. The devices feature an interactive display that presents a georeferenced map with user-selectable symbols representing other network participants.

3. Grounds for Unpatentability

Ground 1: Obviousness over Beyer in view of Borghei - Claims 1-48 are obvious over Patent 7,630,724 in view of Application # 2012/0008526.

• Prior Art Relied Upon: Beyer (Patent 7,630,724) and Borghei (Application # 2012/0008526).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Beyer, an ancestor patent in the ’123 patent’s family, discloses all material limitations of the challenged claims. Beyer allegedly teaches a system with a first device that receives a "polling" message from a second device to join a communications group, sends its location information to a server, and receives location information of other group members from that server. Beyer further teaches requesting georeferenced map data from a remote server and presenting an interactive display with a georeferenced map and user-selectable symbols corresponding to other devices. Petitioner argued that while Beyer discloses inviting a device to a group, it does not explicitly detail the acceptance mechanism. Borghei remedies this by describing a conventional request, acceptance, and confirmation process for joining a location-sharing group, which was well-known at the time.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Borghei’s conventional invitation-acceptance process with Beyer’s system to improve user satisfaction and privacy. Adding an explicit consent mechanism, as taught by Borghei, to Beyer's "polling" feature would ensure users are fully informed and agree to share their location and allow remote control of their devices, which is a predictable and desirable modification.
  • Expectation of Success: A POSITA would have had a high expectation of success in implementing this combination. Integrating a well-understood, standard user consent workflow (from Borghei) into an existing location-sharing system (Beyer) would involve applying known techniques to achieve a predictable result without undue experimentation.

4. Key Claim Construction Positions

• "georeferenced map data": Petitioner proposed this term be construed as “data relating positions on a map to spatial coordinates,” such as latitude and longitude. This construction was central to Petitioner’s argument that a critical application in the patent's priority chain lacked written description support for this feature. The petition asserted that merely disclosing a generic "map" is insufficient to support this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Broken Priority Chain: The central technical-legal argument of the petition was that the ’123 patent is not entitled to the filing date of its earliest ancestors. Petitioner argued that the priority chain was broken at the ’410 application, the patent's great-grandparent. This application allegedly fails the written description requirement of 35 U.S.C. §112 because it does not disclose key claimed features, including a server-mediated, message-based process for joining a group and a mechanism for receiving "georeferenced map data" from a server. Furthermore, Petitioner argued the ’410 application’s incorporation-by-reference statement was ambiguous and failed to properly incorporate the disclosure of the Beyer (’724) patent. This broken chain resets the ’123 patent’s effective filing date to no earlier than October 31, 2014, making the Beyer patent, issued in 2009, qualifying prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was inappropriate. The petition asserted that the parallel district court litigation was in its earliest stages, with only initial discovery requests served and no invalidity contentions or substantive document productions exchanged. Petitioner contended that a stay of the litigation was likely if the inter partes review (IPR) was instituted, and that the scheduled trial date was highly uncertain due to pending motions to dismiss or transfer for improper venue. Finally, Petitioner noted that the IPR challenges all 48 claims of the patent, whereas the district court case would likely address only a narrowed subset, making the IPR a more efficient forum for resolving the patentability of all challenged claims.

7. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-48 of Patent 9,820,123 as unpatentable.