PTAB

IPR2021-01178

WhatsApp LLC v. AGIS Software Development LLC

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method of Providing a Cellular Phone/PDA Communication System
  • Brief Description: The ’724 patent describes a cellular phone communication network that allows users to view each other’s locations on a map, initiate a phone call by touching a user’s symbol on the display, and exchange IP addresses using SMS messages to establish communications.

3. Grounds for Unpatentability

Ground 1: Claims 9, 12, 13, and 15 are obvious over Fumarolo in view of Sheha and Lazaridis.

  • Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), and Lazaridis (Application # 2004/0157590).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fumarolo disclosed a communication system for first responders with a central, map-based terminal for tracking and communicating with wireless data terminals. However, Fumarolo did not explicitly identify these terminals as cellular phones or detail IP-based communication via SMS. Sheha allegedly cured this deficiency by teaching the use of cellular phones in similar mapping and location-sharing systems for safety dispatching. Lazaridis was asserted to supply the final key element by disclosing a method for mobile devices to exchange IP addresses using SMS messages to establish a more efficient, IP-based communication channel.
    • Motivation to Combine: A POSITA would combine Fumarolo and Sheha to improve Fumarolo’s dispatch system by substituting its generic wireless data terminals with the increasingly sophisticated and commercially available cellular phones taught by Sheha. This substitution would be a predictable use of known elements. A POSITA would further incorporate Lazaridis to improve the efficiency of Fumarolo’s data communication, particularly for emergency responders, by implementing the well-understood method of using SMS to exchange IP addresses for more robust data transfer.
    • Expectation of Success: Petitioner asserted a strong expectation of success, as the combination involved applying known technologies (cellular phones, SMS-based IP exchange) to a known system type (map-based dispatch) to achieve predictable results, such as improved mobility and communication efficiency.

Ground 2: Claim 10 is obvious over Fumarolo in view of Sheha, Lazaridis, and Van Bosch.

  • Prior Art Relied Upon: Fumarolo (Patent 6,366,782), Sheha (Application # 2004/0054428), Lazaridis (Application # 2004/0157590), and Van Bosch (Application # 2005/0221876).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitations of dependent claim 10, which requires "pushing photographs or video clips." The base combination of Fumarolo, Sheha, and Lazaridis established a system for data communication between cellular phones. Petitioner argued that Van Bosch explicitly taught a system for posting and receiving location-based messages that could be "textual, audio, video, or pictorial."
    • Motivation to Combine: A POSITA would be motivated to modify the data communication taught by the Fumarolo/Sheha/Lazaridis system to include the photo and video messaging disclosed by Van Bosch. This enhancement would be particularly valuable in the first-responder context of Fumarolo to allow users to share richer, location-relevant visual information during an emergency, which was a known benefit of multimedia messaging on cellular phones by 2004.
    • Expectation of Success: Success was expected because adding photo and video transmission was a routine extension of the data communication capabilities already present in cellular phones at the time. Van Bosch demonstrated the applicability of such messaging in a similar location-based context.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) that added Sheha ’155 (Patent 7,565,155) to the primary combinations. These grounds argued that Sheha ’155 further reinforced the teaching of storing map and user data within a database on the mobile device itself, which was presented as a known and obvious design choice to improve data retrieval speed.

4. Key Claim Construction Positions

  • “database”: Petitioner proposed that this term be construed according to its plain and ordinary meaning: “a persistent collection of data arranged for search and retrieval.” This construction was argued to be critical, as the prior art allegedly taught storing map data, user identifiers, and telephone numbers in memory structures that fit this definition, thereby satisfying limitations in claims 9[a] and 9[c].

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) was inappropriate because the prior art and arguments presented in the petition were materially different from those considered by the Examiner during prosecution. Specifically, the Examiner considered a different Fumarolo patent (’844) for a different claim limitation not challenged in the petition.
  • Regarding potential denial under §314(a) and the Fintiv factors, Petitioner contended that evaluation was premature due to a pending motion to dismiss for improper venue in a parallel district court case. Petitioner emphasized that the merits of the petition were exceptionally strong, as the Board had previously invalidated claims of a related patent (’055 patent) based on the same core prior art combination (Fumarolo, Sheha, and Lazaridis).

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 9, 10, 12, 13, and 15 of the ’724 patent as unpatentable.