PTAB

IPR2021-01357

WhatsApp LLC v. AGIS Software Development LLC

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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 ’829 patent discloses methods and systems for establishing ad hoc networks of devices. The system facilitates server-mediated location sharing, displays device locations on a georeferenced map, and allows for remote control operations between devices in the network.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 7-13, 15-16, 30-32, and 34 are obvious over Patent 7,630,724 alone or in combination with Borghei.

  • Prior Art Relied Upon: ’724 patent (Patent 7,630,724) and Borghei (Application # 2012/0008526).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner’s primary contention was that the ’829 patent is not entitled to its claimed priority date due to a broken priority chain. Specifically, Petitioner argued that the grandparent application (the ’410 application) failed to provide written description support for key limitations recited in the challenged claims, including server-mediated group invitations, server-mediated remote control operations, obtaining georeferenced map data from a server, and anonymous communications. This alleged break in priority rendered the ’724 patent—an ancestor in the same patent family—statutory prior art under 35 U.S.C. §102.
    • Petitioner argued that the ’724 patent, by the Patent Owner’s own admissions during prosecution, teaches nearly every element of the challenged claims. The ’724 patent allegedly discloses a server-centric system where devices can be invited (“polled”) to join a group, share location data, receive map data from a remote server, display locations on a map, and remotely control other devices. For any claim elements not explicitly taught, such as an express acceptance message from an invited device, Petitioner asserted these were disclosed by Borghei.
    • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine the teachings of the ’724 patent with Borghei to improve the system’s functionality and user experience. Borghei explicitly described a conventional request-acceptance-confirmation process for joining location-sharing groups, facilitated by a central server. A POSITA would integrate this well-known process into the ’724 patent’s system to enhance user privacy and satisfaction by requiring express user consent before tracking a device’s location or enabling remote control operations.
    • Expectation of Success (for §103 grounds): Because Borghei described the invitation and acceptance process as a conventional and well-known technique for location-sharing applications, a POSITA would have had a high expectation of success in implementing it within the server-based framework of the ’724 patent.
    • Key Aspects: The central thrust of the petition was the argument that a broken priority chain makes the ancestor ’724 patent available as invalidating prior art.

4. Key Claim Construction Positions

  • "georeferenced map data": Petitioner proposed this term be given its ordinary meaning, specifically "data relating positions on a map to spatial coordinates," such as longitude and latitude. This construction was central to arguing that the grandparent ’410 application lacked support for this limitation.
  • "georeferenced map": Petitioner proposed this term be construed as "a map that includes georeferenced map data." This construction supported the argument that the ’410 application’s general disclosure of "maps" was insufficient to support the claimed invention.

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain / Lack of Written Description: Petitioner’s entire invalidity case hinged on the technical and legal argument that the ’829 patent’s claims were not entitled to an earlier priority date. Petitioner contended that the grandparent ’410 application failed to provide written description support for at least four distinct features required by the claims:
      1. A server-mediated, message-based process for joining a group, arguing the ’410 application only disclosed manual entry of an IP address and password.
      1. Server-mediated remote control operations, arguing the ’410 application only described displaying or announcing messages, not the full scope of remote control actions claimed.
      1. Obtaining georeferenced map data from a server, arguing the ’410 application’s disclosure of a server providing "maps" was too generic and did not specify georeferenced data.
      1. Anonymous communications, arguing the ’410 application taught the opposite by sharing participant identities, whereas the claims (supported only by the ’724 patent) cover anonymous interactions.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d) and the Advanced Bionics factors, asserting that a prior ex parte reexamination of the ’829 patent involved material legal errors. Specifically, Petitioner claimed the Examiner failed to properly apply binding precedent on written description requirements regarding the full scope of claims, analyzing claims as an integrated whole, and continuity of disclosure across a priority chain.
  • Petitioner also argued against denial under the General Plastic factors, stating it has no significant relationship with prior petitioners (Apple, Google). Petitioner contended that the multiple petitions were a direct result of the Patent Owner’s own strategy of staggered litigation and should not prejudice Petitioner’s right to challenge the patent.
  • Finally, Petitioner argued that discretionary denial under Fintiv was unwarranted, as it was premature to evaluate the factors because a motion to dismiss for improper venue was pending in the parallel district court litigation.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 4, 7-13, 15-16, 30-32, and 34 of the ’829 patent as unpatentable.