Google LLC v. Ikorongo Technology LLC

1. Case Identification

• Case #: IPR2021-00084
• Patent #: RE41,450
• Filed: October 23, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Ikorongo Texas LLC
• Challenged Claims: 33, 35, 38, 40-42, 49-50, 52, 54-55, 58-60, 62, 67, 69, 72, 74-76, 83-84, 86, 88-89, 92-94, and 96

2. Patent Overview

• Title: Methods and Devices for Passively Tracking and Selectively Sharing User Experiences
• Brief Description: The ’450 patent discloses methods and systems for a client device to automatically and passively track a user’s experiences—such as visiting a geographic location, browsing URLs, or purchasing items—and selectively share that information with other users based on predefined categories and permissions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Callegari - Claims 33, 38, 40-42, 49-50, 52, 54-55, 58-60, 62, 67, 72, 74-76, 83-84, 86, 88-89, 92-94, and 96 are obvious over Callegari.

• Prior Art Relied Upon: Callegari (Application # 2003/0055983).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Callegari, which was not considered during prosecution, renders all challenged claims obvious. Callegari disclosed a location-sharing system where a GPS-enabled mobile device automatically tracks a user's location and communicates with a "presence server." Petitioner contended that "visiting a geographic location" is a type of "computer usage experience" as recited in independent claims 33 and 67. Callegari’s system allowed a user to register with the presence server, which then automatically and passively collected location data for future sharing. This data could be shared with other users in designated "buddy lists" based on "individual personalized settings" and "Context criteria," which Petitioner mapped to the claims’ requirements for selecting users and defining sharing categories.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner asserted it would have been obvious for a person of ordinary skill in the art (POSA) to implement the claimed methods using Callegari's system, as Callegari taught all the core functionalities. For example, a POSA would have understood that Callegari’s disclosure of sharing content via email inherently taught the use of email contact lists, and its disclosure of "buddy lists" in an instant messaging context taught a messaging buddy list maintained by software.
  • Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success in applying Callegari’s teachings to arrive at the claimed invention, as it would involve implementing known functionalities within the framework disclosed by Callegari.

Ground 2: Obviousness over Callegari in view of Friedman - Claims 33, 35, 40-41, 67, 69, and 74-75 are obvious over Callegari in view of Friedman.

• Prior Art Relied Upon: Callegari (Application # 2003/0055983) and Friedman (Patent 6,714,791).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in the event the Board finds Callegari’s single "presence server" fails to teach both a "registration server" and a "tracking server" as distinct servers (a limitation of claims 35 and 69). Friedman disclosed a location-based messaging system with a "portal server" architecture that could be composed of numerous distinct servers divided by function, such as separate servers for registration and location tracking. Friedman also explicitly taught establishing an anonymous unique identifier (e.g., a key or serial number) to authenticate a user and device, which Petitioner argued could supplement Callegari’s disclosure to meet the limitations of claims 40, 41, 74, and 75.
  • Motivation to Combine (for §103 grounds): A POSA would combine Friedman’s distributed server architecture with Callegari's system to achieve the well-known benefits of distributed computing, including improved efficiency, scalability, and fault tolerance. Implementing Friedman’s anonymous unique identifier would improve security, privacy, and user management in Callegari’s system. Furthermore, a POSA would be motivated to incorporate Friedman's graphical user interface for displaying location data to enhance the usability of Callegari.
  • Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success because both references operated in the same technical field of location-based services for mobile devices. Friedman expressly taught that its processor and software combinations were commonly used in and compatible with the types of devices disclosed in Callegari (cell phones, PDAs).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) (based on Fintiv factors) and §325(d) would be improper.
• §314(a) (Fintiv): Petitioner asserted that because it (Google) is not a defendant in the parallel district court litigations against Samsung and LGE, and because factors such as the uncertain trial schedule, minimal investment in the court case, and a stipulation to prevent overlap weigh against denial, institution is appropriate.
• §325(d): Petitioner contended that denial would be improper because the primary prior art references, Callegari and Friedman, are materially different from the art considered during prosecution and were not before the Examiner. Petitioner argued these references teach the key limitations (e.g., "automatic and passive" tracking) that the Patent Owner previously relied upon to secure allowance of the claims.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 33, 35, 38, 40-42, 49-50, 52, 54-55, 58-60, 62, 67, 69, 72, 74-76, 83-84, 86, 88-89, 92-94, and 96 of the ’450 patent as unpatentable.