Filed on behalf of Google LLC
`By:
`Robert E. Sokohl, Reg. No. 36,013
`
`Ryan C. Richardson, Reg. No. 67,254
`
`Dohm Chankong, Reg. No. 70,524
`
`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
`
`
`Washington, D.C. 20005
`
`
`Tel: (202) 371-2600
`
`Fax: (202) 371-2540
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`
`
`
`
`
`
`
`
`Case IPR2018-01082
`Patent 9,445,251
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,445,251
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`TABLE OF CONTENTS
`
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ............................................ 2
`I.
`Grounds for Standing (37 C.F.R. § 42.104(a)) ........................................ 5
`II.
`Identification of Challenge (37 C.F.R. § 42.104(b)) ................................ 5
`III.
`Statutory Ground for the Challenge ............................................................. 5
`A.
`Citation of Prior Art ..................................................................................... 5
`B.
`The ’251 Patent .......................................................................................... 6
`IV.
`Background of the ’251 Patent .................................................................... 6
`A.
`The Priority Date of the ’251 Patent Cannot Be Earlier Than April 17,
`B.
`2006 9
`C.
`Level of Ordinary Skill in the Art .............................................................11
`D.
`Claim Construction ....................................................................................12
`1. “second georeferenced map” ......................................................................12
`Ground of Rejection ................................................................................ 14
`V.
`Claim 1 is Obvious Over Haney in View of Fumarolo. ............................14
`A.
`1. Overview ....................................................................................................14
`2. The combination of Haney and Fumarolo renders independent claim 1
`obvious. ......................................................................................................20
`Ground 1: Claims 13-19 and 21 are Obvious Over Haney and Fumarolo in
`B.
`Further View of Spaargaren. ................................................................................38
`1. Overview ....................................................................................................38
`2. The combination of Haney, Fumarolo, and Spaargaren renders claim 13
`obvious. ......................................................................................................41
`3. The combination of Haney, Fumarolo, and Spaargaren renders claim 14
`obvious. ......................................................................................................46
`4. The combination of Haney, Fumarolo, and Spaargaren renders claim 15
`obvious. ......................................................................................................51
`5. The combination of Haney, Fumarolo, and Spaargaren renders claim 16
`obvious. ......................................................................................................54
`6. The combination of Haney, Fumarolo, and Spaargaren renders claim 17
`obvious. ......................................................................................................56
`
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`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`7. The combination of Haney, Fumarolo, and Spaargaren renders claim 18
`obvious. ......................................................................................................56
`8. The combination of Haney, Fumarolo, and Spaargaren renders claim 19
`obvious. ......................................................................................................57
`9. The combination of Haney, Fumarolo, and Spaargaren renders claim 21
`obvious. ......................................................................................................58
`Dependent Claims 13-19 and 21 Recite Nothing More Than Obvious
`C.
`Design Choices. ....................................................................................................59
`VI.
`The Instant Petition Should be Instituted Under § 325(d) .................. 61
`A.
`The References in the Instant Petition Were Either Not Cited And/Or Not
`Considered by the Office During Examination of the ’251 Patent. .....................61
`B.
`The Instant Petition is Not Cumulative with the Concurrently-Filed
`Petition Based on Fumarolo and Both Petitions Should be Instituted .................61
`C.
`The Instant Petition is Not Cumulative with the Petition filed in IPR2018-
`00817 and Both Petitions Should be Instituted ....................................................63
`VII.
`Conclusion ................................................................................................ 64
`
`
`
`
`
`
`- ii -
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`EXHIBIT LIST
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`U.S. Patent No. 9,445,251 to Beyer, Jr. et al. (“the ’251 patent”)
`
`File History of U.S. Patent No. 9,445,251 (“’251 patent File Histo-
`ry”)
`
`Declaration of David Williams
`
`Curriculum Vitae of David Williams
`
`U.S. Patent No. 7,353,034 to Haney et al. (“Haney”)
`
`U.S. Patent No. 6,366,782 to Fumarolo et al. (“Fumarolo”)
`
`Intentionally Left Blank
`
`Complaint for Patent Infringement, AGIS Software Development
`LLC v. Huawei Device USA Inc., et al., Civ. No. 2:17-cv-00513
`(E.D. Tex.), filed June 21, 2017 (“Infringement Complaint”)
`
`Microsoft Word document compare of specifications between U.S.
`Patent No. 7,630,724 to Beyer, Jr. et al. and 7,031,728 to Beyer, Jr.
`et al.
`
`1010-1011
`
`Intentionally Left Blank
`
`1012
`
`1013
`
`1014
`
`911 and E911 Services, Federal Communications Commission,
`www.fcc.gov/e911 (last visited May 7, 2018)
`
`Fact Sheet, FCC Wireless 911 Requirements (January 2001),
`available at https://transition.fcc.gov/pshs/services/911-
`services/enhanced911/archives/factsheet_requirements_012001.pdf
`
`Jock Christie, et al., Development and Deployment of GPS Wire-
`less Devices for E911 and Location Based Services (Position, Lo-
`cation, and Navigation Symposium, 2002) (“Christie”)
`
`- iii -
`
`

`

`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025-1027
`
`1028
`
`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`Dale N. Hatfield, A Report on Technical and Operational Issues
`Impacting The Provision of Wireless Enhanced 911 Services, Fed-
`eral Communications Commission (2002) (“Hatfield”)
`
`Charles E. Perkins, “Ad Hoc Networking.” Nokia Research Center
`(November 28, 2000) (“Perkins”)
`
`Duncan Scott Sharp, Adapting Ad Hoc Network Concepts to Land
`Mobile Radio Systems (1972 Ph.D. dissertation, University of Al-
`berta) (on file with Simon Fraser University, December 2002)
`(“Duncan”)
`
`Madhavi W. Subbarao, Mobile Ad Hoc Data Networks for Emer-
`gency Preparedness Telecommunications - Dynamic Power-
`Conscious Routing Concepts (Submitted as an interim project for
`Contract Number DNCR086200 to the National Communications
`Systems, February 1, 2000) (“Subbarao”)
`
`McKinsey & Company, The McKinsey Report : FDNY 9/11 Re-
`sponse (2002) (“The McKinsey Report”)
`
`U.S. Patent Application Publication No. 2003/0100326 A1 to
`Grube et al. (“Grube”)
`
`International Publication No. WO 02/17567 A2 to Spaargaren
`(“Spaargaren”)
`
`U.S. Patent No. 6,182,114 to Yap et al. (“Yap”)
`
`U.S. Patent No. 6,700,589 to Canelones et al. (“Canelones”)
`
`U.S. Patent No. 6,654,683 to Jin et al. (“Jin”)
`
`Intentionally Left Blank
`
`William K. Rashbaum, Report on 9/11 Finds Flaws In Response of
`Police Dept., N.Y. Times (July 27, 2002), available at
`http://www.nytimes.com/2002/07/27/nyregion/report-on-9-11-
`finds-flaws-in-response-of-police-dept.html?mcubz=0 (“Rash-
`baum”)
`
`- iv -
`
`

`

`1029
`
`1030-1031
`
`1032
`
`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`Fred Durso, Jr., A Decade of Difference, NFPA Journal (Sept. 1,
`2011), available at http://www.nfpa.org/news-and-
`research/publications/nfpa-journal/2011/september-october-
`2011/features/a-decade-of-difference (“Durso”)
`
`Intentionally Left Blank
`
`Rick Rotondo, Locate-Track-Extract; Wireless Mesh Networking
`Allows Commanders to Keep Track of Firefighters at an Incident
`Scene, Mission Critical Communications Magazine, March 2004
`(“Rotondo”)
`
`- v -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Google LLC petitions for inter partes review of claims 13-19 and 21 of
`
`United States Patent No. 9,445,251 to Beyer et al., titled “Method to Provide Ad
`
`Hoc and Password Protected Digital and Voice Networks” (hereinafter “the ʼ251
`
`patent”).1 The ’251 patent is provided as Google 1001.
`
`A reasonable likelihood exists that claims 13-19 and 21 of the ’251 patent
`
`are unpatentable. The claimed system and method for using a wireless device to
`
`display maps showing the locations of a group of wireless devices, and
`
`communicating with one or more of those devices by interacting with a map
`
`interface were well-known before September 21, 2004, the earliest possible
`
`priority date of the ’251 patent.2 In fact, the independent claims of the ’251 patent,
`
`at their core, are directed to nothing more than a generic process for establishing an
`
`ad hoc network, and subsequently interacting with network participants using
`
`standard graphical user interface (“GUI”) functionality via a map. Likewise, the
`
`
`
`1 Although independent claim 1 is not challenged herein, claims 13-19 and
`
`21 depend from independent claim 1. Thus, independent claim 1 is also addressed
`
`herein. Independent claim 1 is specifically challenged in concurrently-filed
`
`IPR2018-01081.
`
`2 As discussed in Section IV B., the claims of the ’251 patent are not entitled
`
`to the September 21, 2004 priority date.
`
`- 1 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`remaining claims of the ’251 patent are merely directed to ancillary wireless
`
`communication techniques and/or techniques for interacting with a GUI that
`
`amount to nothing more than obvious design choices.
`
`Moreover, Google’s expert, David Williams, who has over 30 years of
`
`experience working in the wireless/mobile location industry—specifically working
`
`with GPS systems, network-based location determination systems, and wireless
`
`911 (E911) systems—explains that the purported novelty of the ’251 patent,
`
`downloading (from a server) and displaying multiple interactive maps showing the
`
`locations of other network devices was standard practice in the industry years
`
`before the earliest possible priority date of the ’251 patent.
`
`Thus, Google respectfully requests that the Board institute trial on the
`
`ground set forth below.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`REAL PARTIES IN INTEREST: The real parties in interest are Google LLC,
`
`Huawei Device USA Inc., Huawei Device Co., Ltd., Huawei Device (Dongguan)
`
`Co., Ltd., Huawei Technologies USA Inc., Huawei Technologies Co., Ltd., and LG
`
`Electronics, Inc.
`
`RELATED MATTERS:
`
`Google is concurrently filing the following additional inter partes review
`
`petitions:
`
`- 2 -
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`Patent No. Filed
`9,408,055 May 15, 2018
`
`9,445,251 May 15, 2018
`
`PTAB Proceeding
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01080
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01081
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01083
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01084
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01085
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01086
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01087
`Google LLC v. AGIS Software Development, LLC,
`Case No. IPR2018-01088
`
`The ’838, ’251, and ’055 patents are also concurrently being challenged in
`
`9,445,251 May 15, 2018
`
`9,445,251 May 15, 2018
`
`9,467,838 May 15, 2018
`
`9,467,838 May 15, 2018
`
`9,467,838 May 15, 2018
`
`9,467,838 May 15, 2018
`
`the following additional inter partes review petitions:
`
`• IPR2018-00817 challenging claims 1-35 of the ’251 patent;
`
`• IPR2018-00818 challenging claims 1-54 of the ’055 patent; and
`
`• IPR2018-00819 challenging claims 1-84 of the ’838 patent.
`
`Additionally, U.S. Patent No. 9,820,123, issued November 14, 2017, claims
`
`the benefit of the ’251 Patent. The ’251 patent claims the benefit of U.S. Patent
`
`Nos. 9,467,838, 8,880,042, 8,538,393, 8,364,129, 8,126,441, 7,630,724, and
`
`7,031,728.
`
`The ’251 patent has also been asserted in the following five district court
`
`cases currently pending in the Eastern District of Texas:
`
`- 3 -
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`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`• AGIS Software Development LLC v. Huawei Device USA Inc., TXED-2-
`
`17-cv-00513, filed June 21, 2017;
`
`• AGIS Software Development LLC v. HTC Corporation, TXED-2-17-cv-
`
`00514, filed June 21, 2017;
`
`• AGIS Software Development LLC v. LG Electronics, Inc., TXED-2-17-
`
`cv-00515, filed June 21, 2017;
`
`• AGIS Software Development LLC v. Apple Inc., TXED-2-17-cv-00516,
`
`filed June 21, 2017; and
`
`• AGIS Software Development LLC v. ZTE Corporation, TXED-2-17-cv-
`
`00517, filed June 21, 2017.
`
`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and 42.10(a),
`
`Petitioner appoints Robert E. Sokohl (Reg. No. 36,013) as its lead counsel, and
`
`Ryan C. Richardson (Reg. No. 67,254) and Dohm Chankong (Reg. No. 70,524)
`
`as its back-up counsel, all at the address: STERNE, KESSLER, GOLDSTEIN & FOX,
`
`P.L.L.C., 1100 New York Avenue, N.W., Washington, D.C., 20005, phone (202)
`
`371-2600 and facsimile (202) 371-2540.
`
`SERVICE INFORMATION: Petitioner consents to electronic service by email at
`
`the email addresses: rsokohl-PTAB@sternekessler.com, rrichardson-
`
`PTAB@sternekessler.com, dchankong-PTAB@sternekessler.com, and
`
`PTAB@sternekessler.com.
`
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`The undersigned and Petitioner certify that the ʼ251 patent is available for
`
`inter partes review. Petitioner certifies that it is not barred or estopped from
`
`requesting this inter partes review on the ground identified herein.
`
`III.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B))
`Statutory Ground for the Challenge
`A.
`Google requests inter partes review of claims 13-19 and 21 of the ’251
`
`patent on the following ground:
`
`Ground
`
`Claims
`
`Basis
`
`1
`
`13-19 and 21
`
`§103: Haney, Fumarolo, and Spaargaren
`
`B. Citation of Prior Art
`In support of the ground of unpatentability cited above, Google cites the
`
`following prior art references:
`
`U.S. Patent No. 7,353,034 to Haney, titled “Location Sharing and Tracking
`
`Using Mobile Phones or Other Wireless Devices” (“Haney”). As discussed in
`
`Section IV.B below, the ’251 patent is not entitled to a priority date earlier than
`
`April 17, 2006, and thus Haney is prior art under at least §102(e) as it was filed on
`
`April 4, 2005. Haney is provided as Google 1005.
`
`U.S. Patent No. 6,366,782 to Fumarolo et al., titled “Method and Apparatus
`
`for Allowing a User of a Display-Based Terminal to Communicate with
`
`- 5 -
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Communication Units in a Communication System” (“Fumarolo”), is prior art
`
`under at least §102(b) because it was published on April 2, 2002, which is more
`
`than a year prior to both the ’251 patent’s correct priority date (which cannot be
`
`earlier than April 17, 2006), and the ’251 patent’s earliest possible priority date of
`
`September 21, 2004. Fumarolo is provided as Google 1006.
`
`WO Publication No.
`
`02/17567
`
`to Spaargaren,
`
`titled
`
`“Data
`
`Communications” (“Spaargaren”), is prior art under at least § 102(b) because it
`
`was published on February 28, 2002, which is more than a year prior to the ’251
`
`patent’s earliest possible priority date. Spaargaren is provided as Google 1021.
`
`IV. THE ’251 PATENT
`A. Background of the ’251 Patent
`The application that matured into the ’251 patent was filed on February 27,
`
`2015. The ’251 patent follows a series of largely continuations-in-part that stretch
`
`back to a first application filed on September 21, 2004 that resulted in U.S. Patent
`
`No. 7,031,728 as illustrated in Figure A (below):
`
`
`
`- 6 -
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`
`
`FIG. A
`
`During the prosecution of the ’251 patent, through two preliminary
`
`amendments and several rounds of wholesale edits and rewrites, the Examiner
`
`- 7 -
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`rejected all pending claims as anticipated multiple times. (Google 1002, ’251
`
`Patent File History, at pp. 386-395, pp. 447-463, at pp. 521-533).) Ultimately, in
`
`order to overcome the rejections, Patent Owner added claim language directed to
`
`downloading and displaying an additional “second” geographical map from a
`
`server. (’251 Patent File History, p. 542 (amending the independent claims claim 1
`
`to recite “ … sending, from the first device to the server, a request for a second
`
`georeferenced map different from the first georeferenced map … receiving, from
`
`the server, the second georeferenced map … [and] presenting, via the interactive
`
`display of the first device, the second georeferenced map and the plurality of user-
`
`selectable symbols corresponding to the plurality of second devices …”).) For
`
`support for this amendment, Patent Owner pointed to the disclosure in the ’724
`
`patent, rather than the earlier ’728 patent. (’251 Patent File History, p. 551
`
`(Applicant’s Remarks)).In order to obtain allowance, Patent Owner’s remarks
`
`asserted that the applied references failed to disclose the newly-added downloading
`
`and displaying a second geographical map functionality. (’251 File History, pp.
`
`557.) The prosecution history thus makes it clear that Patent Owner believed this
`
`newly-added functionality to be the novel limitation of the claims. But as explained
`
`in the ground below, the concept of downloading (from a server) and displaying
`
`multiple geographical maps showing the locations of other network device existed
`
`well before the earliest possible priority date of the ’251 patent.
`
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`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`The Priority Date of the ’251 Patent Cannot Be Earlier Than
`April 17, 2006
`The ’251 patent purports to claim priority back to the September 21, 2004
`
`B.
`
`filing date of the ’728 patent. But a patent’s claims “are not entitled to an earlier
`
`priority date merely because the patentee claims priority.” In re NTP, 645 F.3d
`
`1268, 1276 (Fed. Cir. 2018). Instead, “[f]or a claim in a later-filed application to be
`
`entitled to the filing date of an earlier application under 35 U.S.C. § 120 (1994),
`
`the earlier application must comply with the written description requirement of 35
`
`U.S.C. § 112, ¶ 1 (1994). Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir.
`
`1998). “To meet this requirement, the disclosure of the earlier application, the
`
`parent, must reasonably convey to one of skill in the art that the inventor possessed
`
`the later-claimed subject matter at the time the parent application was filed.” Id.
`
`Here, the ’251 patent is not entitled to the ’728 patent’s September 21, 2004
`
`priority date and should not be afforded a priority date earlier than April 17, 2006,
`
`which is the filing date of the application that led to the ’724 patent.
`
`As shown in the chart above , the ’251 patent’s priority chain is rife with
`
`continuations-in-part, which both added and deleted material to what ultimately
`
`became the ’251 patent. As also discussed above, Patent Owner revised its claims
`
`multiple times during prosecution in order to overcome rejections from the
`
`Examiner. However, Patent Owner specifically pointed to passages from the later
`
`’724 patent as support for its added claim elements. And, the passages on which it
`
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`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`relied in the ’724 patent were not in the earlier ’728 patent specification. (See
`
`Google 1009 (Comparison between ’724 and ’728 patents showing that ’724
`
`patent, col. 5, lines 51-67, col. 7, line 48-col. 8, line 48, co. 9, lines 41-45, col. 10,
`
`lines 23-56, and col. 18, line 57 to col. 19, line 7 are absent from the ’728 patent).)
`
`For example, in its response to the August 13, 2015 Office Action, Patent
`
`Owner amended the independent claims to include several limitations relating to “a
`
`server.” (’251 patent File History, pp. 430-436) Similarly, in its response to the
`
`December 10, 2015 Office Action, Patent Owner amended the independent claims
`
`to include the limitation “wherein the first device does not have access to
`
`respective Internet Protocol addresses of the second devices.” (Id., pp. 493-495) In
`
`its remarks corresponding to each of these amendments, Patent Owner was only
`
`able to point to various portions of the ’724 patent (and not the ’728 patent) as
`
`allegedly providing support for these amendments. (Id., pp. 437, 503)
`
`Further, a review of the ’724 patent shows that every portion of that patent
`
`that could potentially provide support for the above claim amendments—including
`
`those portions referenced by Patent Owner during the prosecution history of the
`
`’251 patent—were added by way of a CIP, and where thus not included in the ’728
`
`patent. (’724 patent, 10:57-11:15, 12:20-28, 12:50-62, 15:50-16:2, 16:45-54, and
`
`18:63-19:7.) In fact, the term “server” does not appear even once in the ’728
`
`patent. This is not surprising given the fact that the ’728 patent is directed towards
`
`- 10 -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`
`peer-to-peer (P2P) communications, rather than communications that are carried
`
`out via a “server.” (Google 1003, Williams, ¶18.) Additionally, all of the claimed
`
`functionality that is attributed to the “server” is found for the first time in the ’724
`
`patent.
`
`As confirmed in the Williams declaration, a POSA would not have
`
`understood the ’728 patent to have disclosed the challenged claims of the ’251
`
`patent. For this reason, the earliest possible priority date for the challenged ’251
`
`patent claims is April 17, 2006.
`
`C. Level of Ordinary Skill in the Art
`Based on the disclosure of the ’251 patent, one of ordinary skill in the art
`
`would have had either: (1) a Bachelor of Science degree in Electrical Engineering
`
`or an equivalent field, with three to five years of academic or industry experience
`
`in the wireless/mobile location industry or comparable industry experience; or (2) a
`
`Master of Science degree in Electrical Engineering or an equivalent field, with two
`
`to four years of academic or industry experience in the same field. Additionally,
`
`experience could take the place of some formal training, as relevant knowledge and
`
`skills could be learned on the job. This description is approximate, and a higher
`
`level of education or skill might make up for less experience, and vice-versa.
`
`(Williams, ¶28.)
`
`- 11 -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`D. Claim Construction
`Because the ’251 patent has not expired, the terms of the ’251 patent are to
`
`be given their plain and ordinary meaning under the broadest reasonable
`
`interpretation, as understood by a person having ordinary skill in the art (“POSA”)
`
`and consistent with the disclosure. Cuozzo Speed Technologies, LLC v. Lee, 136 S.
`
`Ct. 2131, 2142 (2016).3
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`“second georeferenced map”
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` 1.
`Under the broadest reasonable interpretation, “second georeferenced map”
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`includes “an aerial photograph, a satellite image, or a moved map relative to a first
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`georeferenced map.” (Williams, ¶¶17-18.)
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`The specification of the ’251 patent does not use the terms “second georef-
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`erenced map.” Therefore, to determine the proper scope for this term, a POSA
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`should look to other intrinsic evidence as well as extrinsic evidence. See Phillips v.
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`AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“In addition to consulting the
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`specification, we have held that a court ‘should also consider the patent's prosecu-
`
`
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`3 Although this petition offers a construction for one particular term, Google
`does not concede that a construction is necessary under the district court’s claim
`construction standard or that the specification of the ’251 patent discloses adequate
`structure for any term that may be interpreted as a means-plus-function term to sat-
`isfy the indefiniteness standard that applies in the district court. Instead, Google
`merely asserts that the prior art teaches or suggests at least as much structure for
`any such means-plus-function term as disclosed in the specification of the ’251 pa-
`tent. The prior art, therefore, renders the challenged claims of the ’251 patent obvi-
`ous, as explained herein.
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`Inter Partes Review of U.S. Patent No. 9,445,251
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`tion history, if it is in evidence … Although we have emphasized the importance of
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`intrinsic evidence in claim construction, we have also authorized district courts to
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`rely on extrinsic evidence, which ‘consists of all evidence external to the patent
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`and prosecution history …’”).
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`Looking first to the prosecution history, in response to a Final Office Action,
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`Patent Owner pointed to a single sentence from the related ’724 patent as allegedly
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`supporting the claimed “second georeferenced map” limitation: “[t]he cell phone
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`device application software, however, can also provide the user the ability to
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`request a specific geo-referenced map or chart, aerial photograph or satellite image
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`from a remote image server by pointing at the specific location desired for the
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`map.” (’251 Patent File History, p. 551)
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`Looking next to extrinsic evidence, in a district court case currently pending
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`in the Eastern District of Texas, Patent Owner again provided a single sentence to
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`explain why the accused products allegedly operate by “sending … a request for a
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`second georeferenced map”: “[t]he exemplary Accused Devices are further
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`programmed to permit users to request and display additional maps by, for
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`example, moving the map screen and/or by selecting satellite image maps.”
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`(Google 1008, Infringement Complaint, p. 18.)
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`The manner in which Patent Owner is attempting to apply this claim element
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`in the district court proceeding is evidence of the broadest reasonable interpretation
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`Inter Partes Review of U.S. Patent No. 9,445,251
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`of the claimed “sending … a request for second georeferenced map data.” The
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`Federal Circuit has even stated that such extrinsic evidence should be considered
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`when determining the proper scope of a particular claim limitation. See, e.g.,
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`Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 955 (Fed. Cir.
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`Jul. 10, 2017) (nonprecedential) (stating that the Board must provide a rationale for
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`its findings when Patent Owner provides arguments in its infringement contentions
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`that were “opposite of what [was] argue[d] on appeal”.)
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`While this evidence is insufficient to determine the exact scope of the
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`claimed “second georeferenced map,” it does provide some guidance. For
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`example, a POSA would understand from this intrinsic and extrinsic evidence that
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`the claimed “second georeferenced map” includes an aerial photograph, a satellite
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`image, and a moved map relative to the “first georeferenced map” (e.g., a map
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`showing a geographical area that was not included in the “first georeferenced
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`map”). (Williams, ¶17.)
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`V. Ground of Rejection
`Claims 13-19 and 21 are unpatentable for at least the reasons set forth
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`below. (Williams, ¶¶64-168.)
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`A. Claim 1 is Obvious Over Haney in View of Fumarolo.
`Overview
` 1.
`Haney, like the ’251 patent, is directed to network-based location
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`determination systems. Haney generally discloses establishing an ad hoc network
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`Inter Partes Review of U.S. Patent No. 9,445,251
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`that allows for “exchanging GPS or other position data between wireless devices
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`for purposes of group activities, … work group coordination, dispatching of
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`employees etc.” (Haney, Abstract.) Haney also discloses that its system can be
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`adapted for “police departments or fire departments or any other emergency
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`response type organizations,” and is “useful when it is necessary to know the
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`whereabouts of persons to assist in an emergency situation or other situation.” (Id.,
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`21:44-22:6.)
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`Haney explains that its system includes “[c]ell phones and other wireless
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`devices with GPS receivers” that have “loaded therein a Buddy Watch application
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`and a TalkControl application.” (Id., Abstract.) “The Buddy Watch application
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`communicates with the GPS receiver and other wireless devices operated by
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`buddies registered in the users phone as part of buddy groups or individually.” (Id.)
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`Haney explains that “GPS position data and historical GPS position data can be
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`exchanged between cell phones of buddies … via a buddy watch server.” (Id.)
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`Moreover, the wireless devices include “a map display” and are “enabled [] to plot
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`the locations on the map of persons in a group who have their location sharing
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`capability turned on.” (Id., 2:1-5.) Haney also discloses that the buddy watch
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`server stores a variety of maps, and delivers specific maps to the wireless devices
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`upon request. (Id., 6:7-16, 12:28-33, and 25:35-65.) Further, Haney’s Buddy
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`Watch application allows the user of a cell phone to “send short text messages,
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`Inter Partes Review of U.S. Patent No. 9,445,251
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`record and send voice messages, photos, Instant Messenger links, target positions,
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`etc.” to selected buddies. (Id., 5:1-5.)
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`Haney, however, does not explicitly disclose communicating with other
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`network devices directly through a map interface using “user-selectable symbols
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`corresponding to the plurality of second devices.”4 But, Fumarolo discloses this
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`limitation.
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`Fumarolo, like Haney also describes establishing an ad hoc network that
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`allows wireless devices to share location information and “display[] a map to [a
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`wireless device] user indicating locations of communication units in at least a
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`portion of the communication system.” (Fumarolo, 3:24-26.) Fumarolo similarly
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`explains that its system can be used in a “911 system” to “communicat[e] unit
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`location, communicat[e] unit status, and incident location on the map.” (Id., 1:36-
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`45.) An emergency dispatcher “can quickly determine which communication unit
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`users (e.g., policemen, firemen, paramedics, and so forth) would be in the best
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`situation to respond to the incident.” (Id.)
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`
`
` 4
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` For ease of reference, Google will identify claim language from the ’251 patent
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`using italics, and will identify language quoted from other exhibits using
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`nonitalicized font.
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`Inter Partes Review of U.S. Patent No. 9,445,251
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`Fumarolo discloses that a first wireless device “receives location coordinates
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`of the communication units 105-113 on a periodic basis.” (Id., 8:35-48.) The
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`wireless device then “display[s] the locations of the communication units 105-113
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`on the map 300 together with buttons 302-305, 401-404, 406, an icon, or a pull-
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`down menu identifying the types of communications and/or the modes of
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`transmission supported by the system 100.” (Id.) The wireless device then
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`“receives a selection from the map … of at least one communication unit and an
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`indication of the user’s desire to communicate with the selected communication
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`unit or units.” (Id., 3:26-31.) Based on the selection, the wireless device then
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`communicates with other communication units via “a voice communication”
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`and/or “a data communication.” (Id., 5:53-60.)
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`A POSA would have been motivated to combine Haney and Fumarolo for at
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`least the following reasons:
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`• Same field and addressing the same problem. Both are in the same
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`field
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`(map-based
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`systems
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`for
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`providing
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`location
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`and/or
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`communication information between devices) and address the same
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`problem—establishing an ad ho