`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
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Inter Partes Review of:
`)
`U.S. Patent No. 9,445,251
`)
`Issued: September 13, 2016
`)
`Application No.: 14/633,804
`)
`For: Method to Provide Ad Hoc and Password Protected Digital and Voice
`Networks
`FILED VIA E2E
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`GOOGLE LLC
`Petitioner
`v.
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`Case IPR2018-01084
`Patent 9,445,251
`PETITION FOR INTER PARTES REVIEW
`
`Apple Inc. Exhibit 1029
`U.S. Patent No. 9,445, 251
`
`
`
`Inter Partes Review of U.S. Patent No. 9,445,251
`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
`
`ii
`
`
`
`Inter Partes Review of U.S. Patent No. 9,445,251
`TABLE OF CONTENTS
`EXHIBIT LIST
`3
`I.
`Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`2
`Grounds for Standing (37 C.F.R. § 42.104(a))
`II.
`56
`Identification of Challenge (37 C.F.R. § 42.104(b))
`57
`III.
`Statutory Ground for the Challenge
`A.
`57
`Citation of Prior Art
`B.
`57
`IV.
`The ’251 Patent
`78
`Background of the ’251 Patent
`78
`A.
`B.
`Level of Ordinary Skill in the Art
`1011
`C.
`Claim Construction
`1011
`1.
`“second georeferenced map”
`1112
`V.
`Ground of Rejection
`1314
`A.
`Claim 1 is Obvious Over Fumarolo-782 in View of Fumarolo-844,
`Muramatsu, and Liu.
`1314
`1. Overview
`1314
`2. The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`renders independent claim 1 obvious.
`2324
`B.
`Ground 1: Claims 13-19 and 21 are Obvious Over Fumarolo-782 in View
`of Fumarolo-844, Muramatsu, Liu, and Spaargaren
`4950
`1. Overview
`4950
`2. Claim 13 is obvious.
`5253
`3. Claim 14 is obvious.
`5758
`4. Claim 15 is obvious.
`6263
`5. Claim 16 is obvious.
`6566
`6. Claim 17 is obvious.
`6768
`7. Claim 18 obvious.
`6768
`8. Claim 19 is obvious.
`6869
`9. Claim 21 is obvious.
`6970
`C.
`The Dependent Claims Merely Recite Obvious Design Choices.
`7071
`-i -
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`
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`Inter Partes Review of U.S. Patent No. 9,445,251
`VI.
`The Instant Petition Should be Instituted Under § 325(d)
`7172
`A.
`The References in the Instant Petition Were Either Not Cited And/Or Not
`7172
`Considered by the Office During Examination of the ’251 Patent.
`The Instant Petition is Not Cumulative with the Concurrently-Filed
`B.
`Petitions Based on Fumarolo and Haney and Each Petition Should be Instituted.
`7273C.
`The Instant Petition is Not Cumulative with the Petition filed in IPR2018-
`00817 and Both Petitions Should be Instituted.
`7475
`D.
`The Circumstances of This Joinder Petition Do Not Justify Denial
`Under 314(a) or 325(d)
`76
`VII.
`Conclusion
`7577
`
`- ii -
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`
`Inter Partes Review of U.S. Patent No. 9,445,251
`EXHIBIT LIST
`Exhibit No. Description
`U.S. Patent No. 9,445,251 B2 to Beyer, Jr. et al. (“’251 patent”)
`1001
`Prosecution History of U.S. Patent No. 9,445,251 B2 (Application
`1002
`No. 14/633,804)
`Declaration of David Hilliard Williams (“Williams Dec.”)
`1003
`Curriculum Vitae of David Hilliard Williams
`1004
`U.S. Patent No. 6,366,782 B1 to Fumarolo et al. (“Fumarolo-782”)
`1005
`U.S. Patent No. 6,204,844 B1 to Fumarolo et al. (“Fumarolo-844”)
`1006
`U.S. Publication No. 2002/0173906 A1 to Muramatsu
`1007
`(“Muramatsu”)
`U.S. Publication No. 2002/0027901 to Liu et al. (“Liu”)
`1008
`Intl. Publication No. WO 02/17567 A2 to Spaargaren
`1009
`(“Spaargaren”)
`Plaintiff’s Original Complaint for Patent Infringement, AGIS
`1010
`Software Development LLC v. Huawei Device USA Inc., et al.,
`Case No. 2:17-cv-00513 (TXED), filed June 21, 2017.
`(“Infringement Complaint”)
`U.S. Patent No. 7,031,728 to Beyer, Jr., issued April 18, 2006
`1011
`(“’728 Patent”)
`U.S. Patent No. 7,630,724 to Beyer, Jr. , et al., issued December 8,
`1012
`2009 (“’724 Patent”)
`911 and E911 Services, Federal Communications Commission,
`1013
`www.fcc.gov/e911 (last visited May 7, 2018)
`Fact Sheet, FCC Wireless 911 Requirements (January 2001),
`1014
`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 Wireless
`1015
`Devices for E911 and Location Based Services (Position, Location,
`- iii -
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`
`Inter Partes Review of U.S. Patent No. 9,445,251
`Exhibit No. Description
`and Navigation Symposium, 2002) (“Christie”)
`Dale N. Hatfield, A Report on Technical and Operational Issues
`1016
`Impacting The Provision of Wireless Enhanced 911 Services,
`Federal Communications Commission (2002) (“Hatfield”)
`Charles E. Perkins, “Ad Hoc Networking.” Nokia Research Center
`1017
`(November 28, 2000) (“Perkins”)
`Duncan Scott Sharp, Adapting Ad Hoc Network Concepts to Land
`1018
`Mobile Radio Systems (1972 Ph.D. dissertation, University of
`Alberta) (on file with Simon Fraser University, December 2002)
`(“Duncan”)
`Madhavi W. Subbarao, Mobile Ad Hoc Data Networks for
`1019
`Emergency 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”)
`Intentionally Left Blank
`1020
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`1021
`Response (2002) (“The McKinsey Report”)
`William K. Rashbaum, Report on 9/11 Finds Flaws In Response of
`1022
`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
`Fred Durso, Jr., A Decade of Difference, NFPA Journal (Sept. 1,
`1023
`2011), available at http://www.nfpa.org/news-and-
`research/publications/nfpa-journal/2011/september-october-
`2011/features/a-decade-of-difference
`Rick Rotondo, “Locate-Track-Extract; Wireless Mesh Networking
`1024
`Allows Commanders to Keep Track of Firefighters at an Incident
`Scene,” Mission Critical Communications, March 2004
`U.S. Patent Publication No. 2003/0100326 to Grube et al.,
`1025
`published May 29, 2003 (“Grube”)
`U.S. Patent No. 6,654,683 to Jin et al., issued November 25, 2003
`1026
`(“Jin”)
`U.S. Patent No. 6,119,017 to Cassidy et al., issued September 12,
`1027
`2000 (“Cassidy”)
`- iv -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`Exhibit No. Description
`Intentionally Left Blank
`1028
`Computer-generated redline comparison between petition in
`1029
`IPR2018-01084 and instant Petition
`Computer-generated redline comparison between Williams
`1030
`Declaration (Google 1003) of IPR2018-01084 and Williams
`Declaration (Exhibit 1003) attached hereto
`
`- v -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`Google LLCApple Inc. (“Apple”) petitions1 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”
`(“the ʼ251 patent”).12 The ’251 patent is provided as GoogleExhibit 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.23 In fact, the independent claims of the ’251 patent,
`1 Apple is concurrently filing a motion for joinder of this petition to IPR2018-
`01084. The evidence and grounds herein are identical to those in the -01084
`IPR. See Motion for Joinder.
`12 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 the concurrently-filed
`IPR2018-01083petition.
`23 While GoogleApple asserts that the claims of the ’251 patent are not entitled to
`the September 21, 2004 priority date, out of an abundance of caution, each of the
`references relied on herein are dated prior to September 21, 2004.
`-1 -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`at their core, are directed to nothing more than a generic process for establishing a
`network, and subsequently interacting with network participants using standard
`graphical user interface (“GUI”) functionality via a map. Likewise, the 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.
`Google’sApple’s expert, David Williams 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. Mr. Williams explains that the purported novelty of the ’251 patent,
`downloading and displaying multiple interactive maps showing the locations of
`other network device was standard practice in the industry years before the earliest
`possible priority date of the ’251 patent.
`Thus, GoogleApple 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.is Apple Inc. No other parties exercised or
`-2 -
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`Inter Partes Review of U.S. Patent No. 9,445,251
`could have exercised control over this petition, or funded or directed this
`petition.RELATED MATTERS:
`The ’251 patent has been asserted in the following five district court
`cases currently pending in the Eastern District of Texas:
` 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.
`Google is concurrently filingThe ’251 patent is also the subject of the
`following additional inter partes review petitionsreviews:
`PTAB Proceeding
`Patent No. Filed
`Google LLC v. AGIS Software Development,
`8,213,970 May 15, 2018
`LLC, Case No. IPR2018-01079
`Google LLC v. AGIS Software Development,
`9,408,055 May 15, 2018
`LLC, Case No. IPR2018-01080
`Google LLC v. AGIS Software Development,
`9,445,251 May 15, 2018
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`Inter Partes Review of U.S. Patent No. 9,445,251
`LLC, Case No. IPR2018-01081
`Google LLC v. AGIS Software Development,
`9,445,251 May 15, 2018
`LLC, Case No. IPR2018-01082
`Google LLC v. AGIS Software Development,
`9,445,251 May 15, 2018
`LLC, Case No. IPR2018-01083
`Google LLC v. AGIS Software Development,
`9,467,838 May 15, 2018
`LLC, Case No. IPR2018-01085
`Google LLC v. AGIS Software Development,
`9,467,838 May 15, 2018
`LLC, Case No. IPR2018-01086
`Google LLC v. AGIS Software Development,
`9,467,838 May 15, 2018
`LLC, Case No. IPR2018-01087
`Google LLC v. AGIS Software Development,
`9,467,838 May 15, 2018
`LLC, Case No. IPR2018-01088
` Apple Inc. v. AGIS Software Development LLC, IPR2018-00817, filed
`March 22, 2018 (institution denied October 3, 2018).
` Google LLC v. AGIS Software Development LLC, IPR2018-01081,
`filed May 15, 2018 (institution denied November 20, 2018).
` Google LLC v. AGIS Software Development LLC, IPR2018-01082,
`filed May 15, 2018 (institution denied November 20, 2018).
`The ’838, ’251, and ’055 patents are also concurrently being challenged
`in the following additional inter partes review petitions:
`IPR2018-00819 challenging claims 1-84 of the ’838 patent;
`IPR2018-00817 challenging claims 1-35 of the ’251 patent; and
` Google LLC v. AGIS Software Development LLC, IPR2018-00818
`challenging claims 1-54 of the ’055 patent01083, filed May 15, 2018.
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`Inter Partes Review of U.S. Patent No. 9,445,251
`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:
` Google LLC v. AGIS Software Development LLC, IPR2018-01084,
`filed May 15, 2018.
`U.S. Patent Nos. 8,213,970, 9,408,055, 9,467,838, and 9,749,829 have also
`been asserted in the above district court litigations. These patents are the
`subject of the following inter partes reviews:
` Apple Inc. v. AGIS Software Development LLC, IPR2018-00818, filed
`March 22, 2018 (institution denied October 3, 2018).
` Apple Inc. v. AGIS Software Development LLC, IPR2018-00819, filed
`March 22, 2018 (instituted November 7, 2018).
` Apple Inc. v. AGIS Software Development LLC, IPR2018-00821, filed
`March 22, 2018 (institution denied October 23, 2018).
` Apple Inc. v. AGIS Software Development LLC, IPR2018-01471, filed
`July 31, 2018.
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`Inter Partes Review of U.S. Patent No. 9,445,251
` Apple Inc. v. AGIS Software Development LLC, IPR2019-00411, filed
`December 7, 2018. (joinder motion to -01079 pending)
` Apple Inc. v. AGIS Software Development LLC, IPR2019-00432, filed
`December 13, 2018. (joinder motion to -01080 pending)
` Google LLC v. AGIS Software Development LLC, IPR2018-01079,
`filed May 15, 2018 (instituted November 20, 2018).
` Google LLC v. AGIS Software Development LLC, IPR2018-01080,
`filed May 15, 2018 (instituted December 4, 2018).
` Google LLC v. AGIS Software Development LLC, IPR2018-01085,
`filed May 15, 2018 (institution denied November 19, 2018).
` Google LLC v. AGIS Software Development LLC v. Huawei Device USA
`Inc., TXED-2-17-cv-00513, filed June 21, 2017;, IPR2018-01086, filed
`May 15, 2018 (institution denied December 4, 2018).
` Google LLC v. AGIS Software Development LLC v. HTC Corporation,
`TXED-2-17-cv-00514, filed June 21, 2017;, IPR2018-01087, filed May
`15, 2018.
` Google LLC v. AGIS Software Development LLC v. LG Electronics,
`Inc., TXED-2-17-cv-00515, filed June 21, 2017;, IPR2018-01088, filed
`May 15, 2018.
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`Inter Partes Review of U.S. Patent No. 9,445,251
`AGIS Software Development LLC v. Apple Inc., TXED-2-17-cv-00516,
`filed June 21, 2017; and
` ZTE (USA), Inc., et al. v. AGIS Software Development LLC, IPR2019-
`00389, filed December 7, 2018. (joinder motion to -00819 pending)
` Google LLC v. AGIS Software Development LLC v. ZTE Corporation,
`TXED-2-17-cv-00517, filed June 21, 2017., IPR2019-00403, filed
`December 7, 2018. (joinder motion to -00819 pending)
`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. §§ 42.8(b)(3),
`42.8(b)(4), 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.Apple designates the following lead counsel:
` Matthew J. Moore (Reg. No. 42,012), matthew.moore@lw.com,
`Latham & Watkins LLP; 555 Eleventh Street, NW, Ste. 1000;
`Washington, DC 20004-1304; 202.637.2278
`Apple also designates the following backup counsel:
` Jonathan M. Strang (Reg. No. 61,724), jonathan.strang@lw.com,
`Latham & Watkins LLP; 555 Eleventh Street, NW, Ste. 1000;
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`Inter Partes Review of U.S. Patent No. 9,445,251
`Washington, DC 20004-1304; 202.637.2362.
` Lisa K. Nguyen (Reg. No. 58,018) lisa.nguyen@lw.com, Latham &
`Watkins LLP; 140 Scott Drive; Menlo Park, CA 94025;
`650.470.4848.
` Robert Steinberg (Reg. No. 33,144), bob.steinberg@lw.com,
`Latham & Watkins LLP; 555 Eleventh Street, NW, Ste. 1000;
`Washington, DC 20004-1304; 202.637.2301.
`SERVICE INFORMATION: PetitionerPursuant to 37 C.F.R. § 42.10(b), a Power of
`Attorney from Apple is attached. Apple 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..
`FEE FOR INTER PARTES REVIEW:
`The Director is authorized to charge the fee specified by 37 C.F.R. §
`42.15(a) to Deposit Account No. 506269.
`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 because a
`motion for joinder was filed concurrently with this petition.
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`Inter Partes Review of U.S. Patent No. 9,445,251
`III.
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B))
`Statutory Ground for the Challenge
`A.
`GoogleApple requests inter partes review of claims 13-19 and 21 of the
`’251 patent on the following ground:
`Ground
`Claims
`Basis
`13-19 and 21
`§103: Fumarolo-782, Fumarolo-844, Muramatsu,
`1
`Liu, and Spaargaren
`B.
`Citation of Prior Art
`In support of the ground of unpatentability cited above, GoogleApple cites
`the following prior art references:
`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
`Communication Units in a Communication System” (“Fumarolo-782”), 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 earliest possible priority date of
`September 21, 2004. Fumarolo-782 is provided as GoogleExhibit 1005.
`U.S. Patent No. 6,204,844 to Fumarolo et al., titled “Method and Apparatus
`for Dynamically Grouping Communication Units in a Communication System”
`(“Fumarolo-844”), is prior art under at least §102(b) because it was published on
`March 20, 2001, which is more than a year prior to the ’251 patent’s earliest
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`Inter Partes Review of U.S. Patent No. 9,445,251
`possible priority date. Fumarolo-844 is provided as GoogleExhibit 1006.
`U.S. Patent Application Publication No. 2002/0173906 to Muramatsu,
`titled “Portable Navigation Device and System, and Online Navigation Service in
`Wireless Communication Network” (“Muramatsu”), is prior art under at least
`§102(b) because it was published on November 21, 2002, which is more than a
`year prior to the ’251 patent’s earliest possible priority date. Muramatsu is
`provided as GoogleExhibit 1007.
`U.S. Patent Application Publication No. 2002/0027901 to Liu et al., titled
`“Apparatus, Methods and Systems for Anonymous Communication” (“Liu”), is
`prior art under at least §102(b) because it was published on March 7, 2002, which
`is more than a year prior to the ’251 patent’s earliest possible priority date. Liu is
`provided as GoogleExhibit 1008.
`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 GoogleExhibit
`1009.
`IV. THE ’251 PATENT
`A.
`Background of the ’251 Patent
`The application that matured into the ’251 patent was filed on February 27,
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`Inter Partes Review of U.S. Patent No. 9,445,251
`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 Patent No.
`7,031,728 as illustrated in Figure A (below):
`
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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
`rejected all pending claims as anticipated multiple times. (GoogleExhibit 1002,
`’251 Patent File History, pp. 386-394 (Aug. 13, 2015 Office Action), pp. 447-463
`(Dec. 10, 2015 Office Action), pp. 521-533 (Feb. 19, 2016 Office Action).)
`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. (Id., 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 …”).)
`Moreover, Patent Owner only alleged that the applied references failed to
`disclose the newly-added downloading and displaying a second geographical map
`functionality. Thus, the prosecution history makes it clear that Patent Owner
`believed this newly-added functionality to be the novel limitations of the claims.
`But as explained in the ground below, the concept of downloading and displaying
`multiple geographical maps showing the locations of other network device existed
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`Inter Partes Review of U.S. Patent No. 9,445,251
`well before the earliest possible priority date of the ’251 patent.
`Level of Ordinary Skill in the Art
`B.
`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,
`Computer Science, 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,
`Computer Science, 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. (GoogleExhibit 1003, Williams,
`¶29.)C.
`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).34
`34 Although this petition offers a construction for one particular term,
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`Inter Partes Review of U.S. Patent No. 9,445,251
`1.
`“second georeferenced map”
`Under the broadest reasonable interpretation, “second georeferenced map”
`includes “an aerial photograph, a satellite image, or a moved map relative to a first
`georeferenced map.” (Williams, ¶¶17-19.)
`The specification of the ’251 patent does not use the terms “second
`georeferenced map.” Therefore, to determine the proper scope for this term, a
`POSA should look to other intrinsic evidence as well as extrinsic evidence. See
`Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“In addition to
`consulting the specification, we have held that a court ‘should also consider the
`patent's prosecution history, if it is in evidence.… Although we have emphasized
`the importance of intrinsic evidence in claim construction, we have also authorized
`GoogleApple 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 satisfy the indefiniteness standard that applies in the district court.
`Instead, GoogleApple merely asserts that the prior art teaches or suggests at least
`as much structure for any such term as disclosed in the specification of the ’251
`patent. The prior art, therefore, renders the challenged claims of the ’251 patent
`obvious, as explained herein.
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`district courts to rely on extrinsic evidence, which ‘consists of all evidence external
`to the patent and prosecution history ….’”).
`Looking first to the prosecution history, in response to a Final Office Action,
`Patent Owner pointed to a single sentence from a related application as allegedly
`supporting the claimed “second georeferenced map”: “[t]he cell phone device
`application software, however, can also provide the user the ability to request a
`specific geo-referenced map or chart, aerial photograph or satellite image from a
`remote image server by pointing at the specific location desired for the map.” (’251
`patent File History, pp. 504-505 (citing the ’724 patent, 18:57-19:7.)
`Looking next to extrinsic evidence, in a district court case currently pending
`in the Eastern District of Texas, Patent Owner again provided a single sentence to
`explain why the accused products allegedly operate by “sending … a request for a
`second georeferenced map”: “[t]he exemplary Accused Devices are further
`programmed to permit users to request and display additional maps by, for
`example, moving the map screen and/or by selecting satellite image maps.”
`(GoogleExhibit 1010, Infringement Complaint, p. 18, ¶49.)
`The manner in which Patent Owner is attempting to apply this claim element
`in the district court proceeding is evidence of the broadest reasonable interpretation
`of the claimed “sending … a request for second georeferenced map data.” The
`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.,
`Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 955 (Fed. Cir.
`Jul. 10, 2017) (nonprecedential) (stating that the Board must provide a rationale for
`its findings when Patent Owner provides arguments in its infringement contentions
`that were “opposite of what [was] argue[d] on appeal”.)
`While this evidence is insufficient to determine the exact scope of the
`claimed “second georeferenced map,” it does provide some guidance. For
`example, a POSA would understand from this intrinsic and extrinsic evidence that
`the claimed “second georeferenced map” includes an aerial photograph, a satellite
`image, and a moved map relative to the “first georeferenced map” (e.g., a map
`showing a geographical area that was not included in the “first georeferenced
`map”). (Williams, ¶17.)
`V.
`GROUND OF REJECTION
`Claims 13-19 and 21 are unpatentable for at least the reasons set forth
`below. (Williams, ¶¶65-197.)
`A.
`Claim 1 is Obvious Over Fumarolo-782 in View of Fumarolo-844,
`Muramatsu, and Liu.
`1.
`Overview
`a)
`Fumarolo-782 in view of Fumarolo-844
`Fumarolo-782, like the ’251 patent, is directed to establishing a network that
`allows for groups of wireless devices to share location information and “display[] a
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`map to [a wireless device] user indicating locations of communication units in at
`least a portion of the communication system.” (GoogleExhibit 1005, Fumarolo-
`782, 3:24-26.) Fumarolo-782 explains that its system can be used in a “911
`system” to “communicat[e] unit location, communicat[e] unit status, and incident
`location on the map.” (Id., 1:36-45.) As such, an emergency dispatcher “can
`quickly determine which communication unit users (e.g., policemen, firemen,
`paramedics, and so forth) would be in the best situation to respond to the incident.”
`(Id.) Fumarolo-782 specifically discloses that, during operation, a first wireless
`device “receives location coordinates of the communication units 105-113 on a
`periodic basis.” (Id., 8:35-48.) The wireless device then “display[s] the locations of
`the communication units 105-113 on the map 300 together with buttons 302-305,
`401-404, 406, an icon, or a pull-down menu identifying the types of
`communications and/or the modes of transmission supported by the system 100.”
`(Id.) Subsequently, the wireless device “receives a selection from the map … of at
`least one communication unit and an indication of the user’s desire to
`communicate with the selected communication unit or units.” (Id., 3:26-31.) Based
`on the selection, the wireless device then communicates with other communication
`units via “a voice communication” and/or “a data communication.” (Id., 5:53-60.)
`Fumarolo-782 explains that the selection of one or more other wireless devices, as
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`well as the communication with the selected devices can take place all from within
`a single map interface. (Id., 3:26-31 and 5:53-60.)
`Moreover, Fumarolo-782 discloses a system for communicating among
`wireless devices belonging to different groups, such as a “fire department
`talkgroup” and a “police department talkgroup.” (Id., 6:28-39.) While Fumarolo-
`782 is silent regarding how these talkgroups are formed, Fumarolo-844 specifically
`describes the formation of talkgroups.
`Fumarolo-844, like Fumarolo-782, describes “a method and apparatus for
`dynamically grouping communication units
`(105-113) operating
`in a
`communication system (100).” (GoogleExhibit 1006, Fumarolo-844, Abstract.)
`Fumarolo-844 explains that a first wireless device “receives the user’s selection of
`communication units from [a] map and an identification of at least one talkgroup
`with which the selected units are to become members. The communication units
`may be selected individually, as a group …, or both.” (Id.) Subsequently, the first
`wireless device “automatically groups the selected units into the indicated
`talkgroup.” (Id.) A POSA would have been motivated to combine Fumarolo-782
`and Fumarolo-844 for several reasons including:
` Same field of invention and address similar problems. Both are in
`the same field (map-based systems for providing location and
`communication information of communication units for emergency
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`responders) and address the same problem—setting up a network to
`facilitate quick and efficient communication among wireless devices
`using an interactive map interface. (Williams, ¶76.) In addition,
`Fumarolo-782 discloses that wireless devices can be organized into
`different talkgroups, but is silent as to the formation of those
`talkgroups. (Id., ¶77.) Therefore, a POSA wanting to implement
`Fumarolo-782’s system would have looked to Fumarolo-844 for
`techniques for forming Fumarolo-782’s talkgroups. (Id., ¶78.) For
`this additional reason, a POSA would have been motivated to
`combine Fumarolo-782 with Fumarolo-844.
` Related Applications. A POSA would have also recognized that
`Fumarolo-844’s grouping functionality could have been combined
`with Fumarolo-782’s system with a reasonable expectation of success
`at least because both references: (i) share the same inventors; (ii)
`share the same assignee; (iii) were filed on the same day; (iv) have
`overlapping specifications and figures; and (v) describe substantially
`similar systems. (Id., ¶79.) Moreover, a POSA would have understood
`that Fumarolo-844’s grouping functionality is merely an extension of
`the disclosure provided
`in Fumarolo-782, and as such,
`the
`incorporation of Fumarolo-844’s functionality into Fumarolo-782’s
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`system would not have required significant modification to Fumarolo-
`782’s system. (Id., ¶80.)
`Fumarolo-782 and Fumarolo-844 in view of Muramatsu
`b)
`To the extent the combination of Fumarolo-782 and Fumarolo-844 is
`determined not to explicitly disclose sending/receiving location information
`to/from “a server,” Muramatsu discloses this limitation.
`Muramatsu, like Fumarolo-782 and Fumarolo-844, also describes sharing
`location information among multiple wireless devices, where each device
`“comprises a GPS module for receiving signals from GPS satellites to determine
`the present position, … a display for displaying various data on the screen, and a
`wireless communicator.” (GoogleExhibit 1007, Muramatsu, ¶0012.) Muramatsu
`explains that a first wireless device is configured to transmit its location
`information to a “navigation server,” and “receive[] and download[] from the
`navigation server the map information including the destination and present
`position, based on which icon symbols representing the destination and present
`position are respectively indicated in the map displayed on the screen.” (Id.)
`A POSA would have been motivated to incorporate