Lyft Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2022-00513
• Patent #: 10,341,838
• Filed: January 28, 2022
• Petitioner(s): Lyft, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-26

2. Patent Overview

• Title: Communication Method and System
• Brief Description: The ’838 patent discloses a communication system where multiple cellular phones with GPS receivers report their position and status to a remote server. The server then routes this data to all participants in the network, enabling them to exchange and display location, status, and other information on a map.

3. Grounds for Unpatentability

Ground 1: Obviousness over Makoto, Konishi, Hamynen, and Scaer - Claims 1-12 and 14-25 are obvious over Makoto in view of Konishi, Hamynen, and Scaer.

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Hamynen (Application # 2005/0228860), and Scaer (Application # 2004/0243299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches all limitations of the challenged claims.
    • Makoto was asserted to disclose the foundational system: a server-based method for a group of mobile devices to register with a server, obtain a group ID, and share GPS location data amongst themselves for display on a map. This meets the core claim limitations of obtaining data from mobile devices, permitting them to join a network, and sharing location information.
    • Konishi was added to teach the limitation of a mobile device "corresponding to a vehicle." While Makoto describes mobile users, Konishi explicitly discloses a communication network for sharing location data between wireless devices mounted in vehicles, such as a "vehicle information terminal."
    • Hamynen was introduced to meet limitations related to user input via a display. Makoto’s devices use an operating unit, but Hamynen explicitly teaches using a touch screen display on a mobile terminal to interact with a map, such as selecting a location to initiate a search. This addresses the claimed "participant selection data corresponding to user input provided via a display."
    • Scaer was asserted to teach the limitations regarding receiving and displaying an "entity-of-interest." Scaer describes a system where users can input data for entities like traffic accidents or road construction, including their geographic coordinates ("Lat/Lon"), and display them as symbols on a map for other users.
  • Motivation to Combine: A POSITA would combine these references to improve upon the base system in predictable ways. A POSITA would combine Konishi with Makoto to apply Makoto’s group location-sharing system to the common and commercially significant context of vehicles. A POSITA would incorporate Hamynen’s touch screen interface to provide a more modern, intuitive, and flexible user experience than Makoto's operating unit. Finally, a POSITA would integrate Scaer’s functionality to allow users to share not just their own locations but also other relevant points of interest, enhancing the system’s overall utility for coordination and information sharing.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as each modification involved implementing known technologies for their recognized purposes. Combining location sharing with vehicles, using touch screens for map input, and adding points of interest to a map were all straightforward extensions of existing capabilities.

Ground 2: Obviousness over Makoto, Konishi, Hamynen, Scaer, and Van Bosch - Claims 13 and 26 are obvious over the combination of Ground 1 in view of Van Bosch.

• Prior Art Relied Upon: Makoto, Konishi, Hamynen, Scaer, and Van Bosch (Application # 2005/0221876).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targets claims 13 and 26, which require a transmitted "message" to comprise a text message, photograph, or video. The primary combination in Ground 1 discloses sending location data, but not necessarily these specific media types. Van Bosch was asserted to remedy this deficiency by disclosing a system for posting and receiving location-based messages that can be "textual, audio, video, or pictorial" and associated with a specific location on a map.
  • Motivation to Combine: A POSITA would combine Van Bosch with the system of Ground 1 to enhance the shared "entity-of-interest" data. By adding multimedia messages, users could provide richer context to a shared location, such as a photo of a road closure or a text description of a meeting point. This would be a beneficial and predictable improvement to the system's communication capabilities.
  • Expectation of Success: The expectation of success would be high because transmitting text, photo, and video messages between mobile devices was a well-known and common function at the time of the invention. Integrating this standard capability into the location-sharing framework of the other combined references would involve routine programming.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial is not appropriate for several reasons. First, under §325(d), the Board had already instituted a nearly identical petition (IPR2021-01306, filed by Uber) on the same grounds, indicating the art is not the same as that considered during prosecution. Second, Petitioner was concurrently filing a motion to join the instituted Uber IPR, making denial under the General Plastic factors for follow-on petitions inappropriate. Third, the Fintiv factors for co-pending district court litigation favored institution. The trial date in the parallel case was over a year away (October 2023), and Petitioner stipulated that it would not pursue the IPR grounds in district court if trial is instituted, eliminating concerns of overlap and inefficiency.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-26 of the ’838 patent as unpatentable.