PTAB

IPR2021-01327

WhatsApp LLC v. AGIS Software Development LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
  • Brief Description: The ’838 patent discloses a method for devices in an ad hoc network to join a group, exchange location information via a server, and display participant locations as symbols on a georeferenced map. The method includes requesting, receiving, and displaying a second, different georeferenced map from a second server, and then interacting with symbols on that second map.

3. Grounds for Unpatentability

Ground 1: Obviousness over AGIS ’724 - Claims 1-84 are obvious over Patent 7,630,724.

  • Prior Art Relied Upon: AGIS ’724 (Patent 7,630,724)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the AGIS ’724 patent, which is prior art due to a broken priority chain, discloses nearly every element of the challenged claims. AGIS ’724 taught a device providing a geophysical display using a pre-loaded georeferenced map with user symbols. It also explicitly taught requesting a second, different georeferenced map (e.g., a satellite image) from a remote image server and displaying it. Petitioner argued the only element not expressly taught was continuing to plot the user-selectable symbols on this second displayed map. Independent claims 55 and 84, which are server-side method and system claims, were argued to be obvious for the same reasons as device-side claims 1 and 54.
    • Motivation to Combine (for §103 grounds): The argument centered on a motivation to modify the AGIS ’724 system. Petitioner contended that a person of ordinary skill in the art (POSA) would have found it obvious to continue displaying user location symbols on the second georeferenced map after it was retrieved. A user requesting a new map to see a different area or a different map type (e.g., satellite view) would expect the system’s core functionality—displaying group members’ locations—to persist. A system that ceased displaying these symbols would frustrate user expectations and defeat the purpose of the application.
    • Expectation of Success: A POSA would have a high expectation of success in making this modification. The underlying functionality for plotting symbols on a georeferenced map was already taught by AGIS ’724 for the first map, making its application to the second map a predictable and straightforward implementation.

4. Key Claim Construction Positions

  • “georeferenced map data”: Petitioner proposed this term’s ordinary meaning is “data relating positions on a map to spatial coordinates,” such as longitude and latitude.
  • “georeferenced map”: Petitioner proposed this term’s ordinary meaning is “a map that includes georeferenced map data.” This construction was central to arguing that the parent application lacked support for the claimed invention.

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain Renders AGIS ’724 as Prior Art: The central technical and legal contention was that the ’838 patent is not entitled to the filing date of its ancestor, the AGIS ’724 patent, making AGIS ’724 prior art under 35 U.S.C. §102(a)(1).
    • The ’838 patent’s immediate parent, the ’410 application, failed to properly incorporate AGIS ’724 by reference, only incorporating an earlier patent in the chain.
    • The ’410 application itself lacked written description support for critical claim limitations, including:
      • Retrieving a second, different georeferenced map data from a server. The ’410 application only mentions maps generically and lacks the specific disclosure of requesting and displaying a second map that is present in AGIS ’724 and required by the claims.
      • The full scope of a “network corresponding to a group,” because the ’410 application only described open networks accessible to anyone with a password, not the closed or invitation-only groups disclosed in AGIS ’724.
      • Server-mediated remote control actions and anonymous communications between devices, features also covered by the claims but allegedly supported only by the AGIS ’724 disclosure.
    • Because of this break in the continuity of disclosure, Petitioner argued the ’838 patent’s effective filing date is its actual filing date of October 31, 2014, making the AGIS ’724 patent (issued in 2009) invalidating prior art.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. The petition asserted substantially similar arguments as a prior IPR filed by Apple (IPR2018-00819), which was instituted but later terminated upon settlement.
  • Advanced Bionics: Denial was argued to be unwarranted because an intervening ex parte reexamination involved material legal errors by the Examiner. Specifically, the Examiner improperly found written description support for the claims in the ’410 application by combining disparate embodiments and failed to properly analyze the entire priority chain.
  • General Plastic: Denial was argued to be unwarranted as there is no significant relationship between Petitioner (WhatsApp) and prior petitioners (Apple, Google).
  • Fintiv: Petitioner stated it was premature to fully evaluate the Fintiv factors because of a pending motion to dismiss the parallel district court litigation for improper venue, but argued the strong merits of the petition weigh against denial.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-84 of the ’838 patent as unpatentable.