Lyft Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2022-00515
• Patent #: 10,299,100
• Filed: January 28, 2022
• Petitioner(s): Lyft, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-23

2. Patent Overview

• Title: Ad Hoc Digital and Voice Network
• Brief Description: The ’100 patent relates to an ad hoc communication network comprising multiple Internet Protocol (IP) capable mobile devices and a remote server. The system allows the server to pass location and status information among network participants, who can be displayed as georeferenced entities on a geographical map on their devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Makoto, Konishi, Paul, and Hamynen - Claims 1-12, 16-19, and 23 are obvious over Makoto in view of 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 Makoto taught the foundational system: a network of mobile devices that determine their own locations via GPS and share this information through a central server to be displayed. However, Makoto did not explicitly teach downloading map data from the server. Konishi was introduced to supply this missing element, as it disclosed a location-based service where a server provides map data to mobile devices. To meet limitations related to vehicles, Paul was introduced, which taught a communication network for tracking and displaying the locations of vehicles equipped with wireless devices. Finally, to address limitations regarding facility symbols and user interaction with the map, Hamynen was introduced. Hamynen taught displaying symbols for facilities (e.g., gas stations) on a map and allowing a user to initiate a search for the nearest facility by selecting a position on the map display.
  • Motivation to Combine: A POSITA would combine Makoto and Konishi to offload the storage of large map files from resource-constrained mobile devices to a more powerful server, a common design choice. A POSITA would combine this system with Paul’s teachings to apply the known benefits of location tracking to the commercially significant field of vehicle logistics and transportation services. Finally, a POSITA would incorporate Hamynen’s features to improve the system’s usability and commercial value by allowing users to easily find and navigate to nearby points of interest.
  • Expectation of Success: Petitioner asserted success was expected because the combination only involved applying conventional techniques (server-based maps, vehicle GPS tracking, point-of-interest searches) to improve the known system of Makoto, using predictable and well-established programming principles.

Ground 2: Obviousness over Makoto, Konishi, Paul, Hamynen, and Agrawal - Claims 13-15 are obvious over the combination of Ground 1 in view of Agrawal.

• Prior Art Relied Upon: Makoto, Konishi, Paul, Hamynen, and Agrawal (Application # 2003/0142642).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of references in Ground 1. Petitioner argued that the primary combination did not explicitly disclose using the Internet Protocol (IP) for communications, a specific requirement of claims 13-15. Agrawal was added to teach using wireless IP networks to communicate between a network and mobile terminals, including the assignment of unique IP addresses to devices and specifying destination IP addresses for data transmission. This supplied the missing IP-based communication limitations, including the server's IP address being accessible to the mobile device.
  • Motivation to Combine: A POSITA, seeking to implement the communication network described in the primary references, would have been motivated to use a well-known, standardized, and widely adopted protocol. Petitioner argued that the Internet Protocol, as taught by Agrawal, was a natural and obvious choice to ensure interoperability, convenience, and flexibility for the system.
  • Expectation of Success: Success would have been reasonably expected, as implementing IP for wireless communication was a widespread and routine practice at the time of the invention.

Ground 3: Obviousness over Makoto, Konishi, Paul, Hamynen, and Scaer - Claims 20-22 are obvious over the combination of Ground 1 in view of Scaer.

• Prior Art Relied Upon: Makoto, Konishi, Paul, Hamynen, and Scaer (Application # 2004/0243299).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the combination in Ground 1, adding Scaer to address limitations in claims 20-22 related to a user specifying the position of an "event symbol" on a map and transmitting that event's location to another device. Scaer disclosed a mapping system where users could input incidents like traffic accidents or road closures, which could be stored in a central database and displayed as symbols on a map. This taught the claimed functionality of receiving user input to place a custom event on the shared map.
  • Motivation to Combine: A POSITA would combine Scaer’s teachings with the base system to enhance its utility. Allowing users to share not only their own dynamic locations but also the locations of static or temporary events (e.g., accidents, meeting points) would provide significant benefits for group coordination and logistics, which was the overall goal of the Makoto system.
  • Expectation of Success: Petitioner contended that success was expected because programming a system to accept user input to place an icon on a map and share its coordinates was a straightforward extension of the base system’s existing capability to share and display device locations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §325(d) and §314(a) (Fintiv).
• §325(d) / Advanced Bionics: The Board had already instituted a trial on the same grounds and evidence in a parallel proceeding (IPR2021-01308), demonstrating the petition presents meritorious challenges not previously considered during prosecution.
• §314(a) / Fintiv: Petitioner asserted the Fintiv factors weighed in favor of institution. The parallel district court case was not advanced, and Petitioner intended to stipulate that it would not pursue the same invalidity grounds in court if the IPR is instituted, eliminating concerns of overlap and inefficiency. Furthermore, Petitioner filed the IPR concurrently with a motion to join the already-instituted IPR, which favors institution.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-23 of the ’100 patent as unpatentable.