PTAB

IPR2021-01482

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 ’251 patent describes a method for mobile devices to join a group network based on a received message, share location information via a server for display on a georeferenced map, and then request and receive a second, different georeferenced map from the server. The method also includes communicating with other devices in the group via the server without having access to their respective IP addresses.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-7, 9, 12, 22-26, 28-30, 32, and 35 are obvious over Borghei in view of Weber and Liu.

  • Prior Art Relied Upon: Borghei (Application # 2012/0008526), Weber (Patent 7,450,003), and Liu (Application # 2002/0027901).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references taught all limitations of the challenged claims. Borghei was asserted to teach the core system of forming a location-sharing group by sending an invitation message (claim 1[a]), participating by exchanging location information via a server (claim 1[b]), and presenting member locations as symbols on a georeferenced map (claim 1[c]). Weber was asserted to supply the limitations of requesting and receiving a second, different georeferenced map from a server, such as a user-defined private map for indoor locations where GPS is unavailable (claims 1[d]-[f]). Finally, Liu was asserted to teach anonymous communication by shielding IP addresses, rendering obvious the limitation that the first device does not have access to other devices' IP addresses (claim 1[h]).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Borghei and Weber to improve Borghei’s location-sharing system. Weber’s disclosure of using server-retrieved private maps would solve the known problem of tracking locations in areas with poor GPS reception (e.g., indoors), a goal consistent with Borghei’s aim to improve precision. A POSA would subsequently incorporate Liu’s teachings on anonymous communication to protect user privacy, which aligns with Borghei's stated objective of protecting user information when not authorized. Shielding IP addresses was presented as a known design choice for achieving such privacy.
    • Expectation of Success: Petitioner contended that a POSA would have a high expectation of success. The combination involved applying known technologies (private maps, anonymous communication) to solve predictable problems (indoor navigation, user privacy) in a known system (location-sharing mobile applications). The teachings of the references were complementary and addressed common objectives in the field.

4. Key Claim Construction Positions

  • "georeferenced map": Petitioner proposed that this term be given its plain and ordinary meaning, which is "a map that includes georeferenced map data." This construction clarifies that the map must contain data relating its own positions (e.g., x/y coordinates) to real-world spatial coordinates (e.g., latitude and longitude). This definition was central to the Patent Owner’s arguments during prosecution to distinguish prior art that disclosed generic "maps" and is critical to Petitioner’s obviousness arguments.

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Priority Chain: A central contention of the petition is that the ’251 patent is not entitled to its claimed priority date and instead has an effective filing date no earlier than October 31, 2014.
    • Petitioner argued that the ’251 patent’s grandparent, the ’410 application, lacks adequate written description support for several key limitations added during prosecution, including: (1) requesting a second, different georeferenced map from a server, and (2) anonymous communication where devices lack access to each other's IP addresses.
    • During prosecution, the Patent Owner relied on disclosures from a distant ancestor, the ’724 patent, to support these limitations. However, Petitioner asserted that the ’410 application failed to properly incorporate the ’724 patent by reference. This alleged failure in the incorporation statement broke the continuity of disclosure required under 35 U.S.C. §112 and §120, thus invalidating the priority claim and making the asserted prior art available.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be unwarranted under both the Advanced Bionics and Fintiv frameworks.
    • Regarding serial petition concerns (Advanced Bionics), Petitioner contended that although the priority date issue was raised in a prior ex parte reexamination, the Office committed material legal errors in its analysis. Specifically, the Examiner allegedly failed to properly consider the continuity of disclosure across the entire priority chain and misapplied written description standards. Therefore, Petitioner argued the Board has not yet substantively considered these critical invalidity arguments.
    • Regarding parallel litigation (Fintiv), Petitioner asserted that an evaluation of the Fintiv factors was premature because it had filed a motion to dismiss the district court case for improper venue. The uncertainty of the co-pending litigation, combined with the strong merits of the petition, was argued to weigh heavily against discretionary denial.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-7, 9, 12, 22-26, 28-30, 32, and 35 of the ’251 patent as unpatentable.