Lyft Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2022-00514
• Patent #: 10,299,100
• Filed: January 28, 2022
• Petitioner(s): Lyft, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 24-31

2. Patent Overview

• Title: Ad Hoc Digital and Voice Network
• Brief Description: The ’100 patent describes an ad hoc communication network comprising multiple Internet Protocol (IP) capable PDA/GPS devices that connect with a remote server. The server stores user IP addresses and passes location and status information among network participants, who can view each other on a geographical map display.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 24-29 over Makoto, Konishi, Paul, and Hamynen

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Paul (Patent 6,356,838), and Hamynen (Application # 2005/0228860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught all limitations of independent claim 24. Makoto was asserted to disclose the base system: a mobile communication device with a CPU, GPS receiver, transmitter, and receiver, capable of joining a network via a server to share location information with other users. To meet the remaining limitations, Petitioner contended:
    • Hamynen taught using a touch screen display on a mobile terminal for user interaction, such as selecting a location on a map, which could be incorporated into Makoto’s display unit.
    • Konishi taught a system where a server provides map data to a mobile device, which would render it obvious to have Makoto’s "map information" include the map itself, downloaded from the server.
    • Paul taught a communication network for vehicles equipped with wireless devices, making it obvious that Makoto's mobile devices could be associated with vehicles and that locations could be displayed using vehicle-specific symbols.
    • Hamynen also disclosed displaying facility symbols (e.g., gas stations) on a map relative to a user's position, which Petitioner argued would make it obvious to add this functionality to Makoto's system.
  • Motivation to Combine: A POSITA would combine these references to create a more feature-rich and user-friendly location-based service. Combining Makoto with Hamynen would improve user input by adding a common touch screen interface. Incorporating Konishi's server-based map data would reduce the storage burden on mobile devices. Adding Paul's vehicle-tracking capabilities would enhance transportation-related applications, an area of common interest.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involved integrating well-known technologies (touch screens, server-based maps, vehicle tracking) for their conventional purposes into an existing location-sharing framework.

Ground 2: Obviousness of Claims 30-31 over Makoto, Konishi, Paul, Hamynen, and Agrawal

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Paul (Patent 6,356,838), Hamynen (Application # 2005/0228860), and Agrawal (Application # 2003/0142642).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to challenge claims 30 and 31, which added requirements related to using Internet Protocol (IP). Petitioner argued that while Makoto disclosed communication between mobile devices and a server, it did not specify the communication protocol. Agrawal was introduced because it explicitly disclosed wireless networks that "employ Internet Protocol to communicate information between the wireless IP network and mobile terminals." Petitioner argued Agrawal taught all the necessary elements for the IP-based communication recited in claims 30 and 31, including the use of source and destination IP addresses for data transmission.
  • Motivation to Combine: A POSITA implementing Makoto's communication network would have needed to select a communication protocol. Petitioner contended it would be obvious to choose Internet Protocol as taught by Agrawal, because IP was a well-known, widespread, and suitable standard for such wireless data networks, offering "tremendous convenience, power and flexibility."
  • Expectation of Success: The expectation of success was argued to be high because implementing IP was a standard and well-understood practice for wireless network communication at the time of the invention.

4. Arguments Regarding Discretionary Denial

• This petition was filed concurrently with a motion for joinder to an already-instituted IPR (IPR2021-01307) filed by Uber Technologies, Inc., which asserted the same grounds against the same claims.
• Petitioner argued that discretionary denial under §325(d) was inappropriate because the Board had already considered the prior art in the Uber IPR and found it was not substantially the same as art considered during original prosecution.
• Petitioner argued that denial under §314(a) based on General Plastic and Fintiv factors was unwarranted. Key arguments included:
  • The petition is substantively identical to the instituted Uber IPR, so it presents no new burden on the Patent Owner or the Board.
  • The parallel district court case against Lyft in the NDCA has a trial date more than a year away (October 2023), and Petitioner will stipulate to not pursue the same invalidity grounds in district court if the IPR is instituted.
  • Petitioner asserted it did not benefit from the Patent Owner's Preliminary Response in the Uber IPR, as this petition is a copy of the Uber petition.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 24-31 of the ’100 patent as unpatentable.