Google LLC v. Traxcell Technologies LLC

1. Case Identification

• Case #: IPR2021-01004
• Patent #: 9,918,196
• Filed: June 16, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Traxcell Technologies, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Navigation Assistance System
• Brief Description: The ’196 patent discloses systems and methods for providing navigation assistance to a user of a communications device. The system determines a user's location based on whether the query originates from a wireless or landline device and provides navigational directions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hancock/Karp - Claims 1, 4, 5, 7, 8, 10, 11, 15, 18-20, 22, 24, and 25 are obvious over Hancock in view of Karp.

• Prior Art Relied Upon: Hancock (Patent 6,202,023) and Karp (Patent 6,591,242).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hancock, an "Internet based automatic location system," taught the core elements of independent claims 1 and 15, including receiving an Internet query from a communications device to request navigational assistance. However, Petitioner asserted Hancock did not expressly disclose the threshold step of first determining whether the communications device is mobile or fixed before determining its location. This missing element, Petitioner contended, was explicitly taught by Karp, which discloses a system that first determines if a call is wireless or fixed to efficiently select the appropriate location-finding method. The combination, therefore, rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Karp’s threshold determination with Hancock’s navigation system to improve efficiency and reduce power consumption on the user's device. Karp taught that different, more efficient methods could be used to locate fixed devices (e.g., ANI lookup in a PSTN database) versus mobile devices (e.g., triangulation). Implementing this initial check, as taught by Karp, into Hancock's system represented a known engineering tradeoff to optimize performance, a predictable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved implementing a known technique (device-type determination) to improve a similar system using routine skill.

Ground 2: Obviousness over Hancock/Karp/Rayburn - Claims 2-3, 16-17, and 29-30 are obvious over Hancock in view of Karp and Rayburn.

• Prior Art Relied Upon: Hancock (Patent 6,202,023), Karp (Patent 6,591,242), and Rayburn (Patent 6,937,869).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Hancock/Karp combination to address dependent claims requiring location determination by "querying an external user location database" (claim 2) and "sending a query to a switch or base station controller" (claim 3). Petitioner argued that while Hancock located the device locally, Rayburn taught a route planning service that located a mobile device by querying external network components like a Mobile Positioning Center (MPC).
  • Motivation to Combine: A POSITA would incorporate Rayburn’s network-based location query to further Hancock’s goal of accessibility across a wide variety of devices, some of which might lack local positioning capabilities. Centralizing the location-finding function on the network, as taught by Rayburn, would reduce the storage and bandwidth requirements on the end-user device, aligning with the efficiency motivations for the primary Hancock/Karp combination.
  • Expectation of Success: The modification was argued to be predictable, as it amounted to changing the location of data storage and processing from the device to a server, a common design choice for reasons of cost, efficiency, and accessibility.

Ground 3: Obviousness over Behr/Karp - Claims 1, 4, 5, 7, 8, 10-12, 15, 18-20, 22, and 24-26 are obvious over Behr in view of Karp.

• Prior Art Relied Upon: Behr (Patent 6,107,944) and Karp (Patent 6,591,242).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Behr as an alternative primary reference to Hancock. Behr disclosed a navigation system where a remote unit (mobile or fixed) sends a route guidance query over the Internet to a base unit, which calculates and returns the route. Similar to Hancock, Behr taught a system that could handle both mobile and non-mobile devices but did not expressly disclose the preliminary step of determining the device type. Petitioner asserted that Karp supplied this missing element.
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA would have been motivated to improve Behr’s system by incorporating Karp’s efficient threshold determination of whether the remote unit was mobile or fixed. This would allow the base unit to use the most efficient location method, reducing processing power and improving overall system performance, which was consistent with Behr's stated goals of cost-effective and efficient data access.
  • Expectation of Success: A POSITA would have expected success in this combination, as it involved applying a known efficiency-improving technique to a system already designed to handle different device types, representing a fundamental and well-understood engineering tradeoff.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds combining Hancock/Karp with Takaki (for telephone-number-based destination lookup) and Enzmann (for tracking another user's device). Another primary ground combined Behr/Karp with Rayburn to address claims related to external database queries.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325, contending the asserted prior art combinations were materially different from the art considered during prosecution. Specifically, Petitioner asserted the new art taught the key limitation of "determining whether or not the communications device is a mobile wireless communications device," which was a basis for allowance.
• Petitioner also argued against discretionary denial under Fintiv, stating that the co-pending district court litigation was in its infancy. At the time of filing, no case schedule or trial date had been set, no claim construction had occurred, and discovery had not opened, meaning the IPR would resolve far in advance of the district court trial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’196 patent as unpatentable.