PTAB

IPR2021-01177

WhatsApp LLC v. AGIS Software Development LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Cellular Phone/PDA Communication System
  • Brief Description: The ’728 patent relates to a communication system that allows users of cellular phones or PDAs to monitor each other's geographical locations on a map display. The system is designed to initiate voice calls by touching a symbol representing another user directly on the map, streamlining the communication process.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fumarolo, Sheha, and Van Bosch - Claim 7 is obvious over Fumarolo in view of Sheha and Van Bosch.

  • Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), and Van Bosch (Application # 2005/0221876).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the three references taught every limitation of independent claim 7. Fumarolo was asserted to disclose a base communication system for a dispatch terminal that displays graphical symbols for mobile units on a map and allows a user to initiate voice communication by selecting a symbol on a touchscreen. Sheha allegedly supplied the teaching of implementing such a system on modern cellular phones equipped with CPUs, GPS, and touchscreens, where each user is identified by a unique identifier like a telephone number. Finally, Van Bosch was argued to add the claimed capability of sending and receiving photographs and video, disclosing a system for posting and receiving location-based messages (including video or pictorial messages) on cellular devices. Together, Petitioner contended the references taught a method of establishing a cellular network where users are represented by symbols on a map, phone numbers are stored for each user, calls are initiated by touching a symbol, and the map shows each participant's location.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Fumarolo and Sheha to upgrade Fumarolo’s older dispatch system with the capabilities of modern, commercially available cellular phones, which Sheha taught were well-suited for such location-tracking applications. This combination was presented as a simple substitution of a known element (Sheha's cellular phone) for another (Fumarolo's generic wireless data terminal). The further combination with Van Bosch was argued to be a predictable improvement, as Van Bosch addressed the same problem of location-based messaging and taught using photos and videos, which would be a known and obvious benefit for Fumarolo's stated emergency response context.
    • Expectation of Success: Petitioner argued a POSITA would have had a strong expectation of success in combining the references, as they involved the application of conventional cellular phone technology to a known type of dispatch and communication system.
    • Key Aspects: A central component of Petitioner's argument was reliance on collateral estoppel. Petitioner asserted that the Patent Owner was precluded from re-litigating the patentability of these issues because the Board had previously invalidated materially similar claims of a related patent (the ’055 patent) in a Final Written Decision (FWD) for IPR2018-01080, based on the same combination of Fumarolo, Sheha, and Van Bosch.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the asserted prior art combination of Fumarolo, Sheha, and Van Bosch was never considered by the examiner during the original prosecution of the ’728 patent. It was noted that while a different patent by the Fumarolo inventors was considered, it was from an unrelated patent family and applied to different claim limitations not challenged in this petition.
  • Petitioner also contended that discretionary denial under Fintiv was inappropriate. The argument was made that a full Fintiv analysis was premature because a motion to dismiss for improper venue was pending in the parallel district court litigation. Furthermore, Petitioner asserted that the merits of the petition were exceptionally strong (Fintiv factor 6), citing the Board's prior FWD invalidating similar claims on the same prior art, a decision that was summarily affirmed on appeal.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claim 7 of the ’728 patent as unpatentable under 35 U.S.C. §103.