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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
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`v.
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`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
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`Case IPR2020-00871
`Patent 9,749,829
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`PETITIONERS’ NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,749,829
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`I.
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`Introduction
`Petitioners are simultaneously filing two petitions (IPR2020-00870 and
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`IPR2020-00871) challenging the patentability of claims 1-68 in U.S. Patent No.
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`9,749,829. Under the Board’s July 2019 update to the Trial Practice Guide,
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`Petitioners submit this paper with each petition to “identify: (1) a ranking of the
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`petitions in the order in which it wishes the Board to consider the merits . . . and
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`(2) a succinct explanation of the differences between the petitions, why the issues
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`addressed by the differences are material, and why the Board should exercise its
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`discretion to institute additional petitions . . . .”
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`II. Ranking of the Petitions
`The Board should consider the merits of the petitions in the following order:
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`1. IPR2020-00871 (“the ’724 Patent-Borghei Petition”); and
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`2. IPR2020-00870 (“the Haney-Fumarolo Petition”).
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`III. Succinct Explanation of Differences between the Petitions
`Petitioners challenge each claim of the ’829 patent only once in the ’724
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`Patent-Borghei Petition and only once in the Haney-Fumarolo Petition. The
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`petitions have two grounds in total:
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`IPR2020-00871
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`Ground Basis References
`§103 The ’724 Patent1 and Borghei2
`1
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`1 U.S. Patent No. 7,630,724 to Beyer, Jr. et al.
`2 U.S. Patent Publication No. 2012/0008526 to Borghei
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`Claims
`1-68
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`- 1 -
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`IPR2020-00870
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`Ground Basis References
`§103 Haney3 and Fumarolo4
`1
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`The main difference between the two petitions is the prior-art dates of the
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`Claims
`1-68
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`asserted references. The asserted references in IPR2020-00871 predate October 31,
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`2014. The references in IPR2020-00870 predate April 17, 2006.
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`The ’724 Patent
`Borghei
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`Haney
`Fumarolo
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`IPR2020-00871
`Issued December 8, 2009
`Published January 12, 2012
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`IPR2020-00870
`Filed April 4, 2005
`Issued April 2, 2002
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`The obviousness grounds also contain material differences. First, the
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`petitions rely on completely different references. Although each set of references
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`discloses every claim element, they do not use identical language or the same level
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`of detail. For example, in the ’724 Patent-Borghei Petition, the ’724 patent
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`discloses almost all (if not all) of the claim elements. Borghei merely explains how
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`an invited device would accept an invitation. In the Haney-Fumarolo Petition,
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`Petitioners rely on Haney’s interactive map and Fumarolo’s ability to select
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`meeting places on a map.
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`3 U.S. Patent No. 7,353,034 B2 to Haney
`4 U.S. Patent No. 6,366,782 B1 to Fumarolo et al.
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`- 2 -
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`Not only do the petitions provide different starting points (the ’724 patent vs.
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`Haney), the petitions have different motivations to combine. As the petitions
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`explain, the ’724 patent discloses sending an invitation to a group of devices but
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`arguably does not explain how the devices would accept the invitation. To ensure
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`users are fully informed and consent to sharing their locations, a POSA would have
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`been motivated to use Borghei’s well-known invitation and acceptance procedures.
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`In contrast, the combination in the Haney-Fumarolo Petition improves Haney’s
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`communication capabilities by allowing users to search for, select, and
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`communicate with other devices shown on a device’s map interface. Accordingly,
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`the petitions have different starting points and different motivations to combine.
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`IV. The Board should exercise its discretion to institute both petitions.
`The Board’s July 2019 update to the Trial Practice Guide gives two reasons
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`why multiple petitions may be necessary: (1) “when the patent owner has asserted
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`a large number of claims in litigation” or (2) “when there is a dispute about priority
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`date.” TPG (July 2019), 26. Here, both reasons apply.
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`The ’829 patent includes sixty-eight claims, which exceed 3,700 words—
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`over a quarter of the word limit of a single petition. Despite the number of claims,
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`and the length of the claims, AGIS refused to limit the asserted claims. When
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`asked to reduce the asserted claims, AGIS responded: “AGIS intends to serve
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`charts on all of the asserted claims.” EX1030 (emphasis added); EX1031. Then,
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`- 3 -
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`during a court-ordered preliminary election of asserted claims, AGIS still asserted
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`over twenty different claims (some depending on other un-asserted claims). See
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`EX1032; EX1033; EX1034. These asserted claims still exceed 2,100 words. Two
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`petitions, each with a single ground, are warranted for this reason alone.
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`Two petitions are also warranted because the parties dispute the ’829
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`patent’s priority date. During prosecution, AGIS adopted a strategy of filing
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`wholesale rewrites as CIPs, adding and deleting disclosures, and failing to
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`incorporate deleted material by reference. Consequently, references in the priority
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`chain do not fully support the claims of the ’829 patent. A summary of the changes
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`to the various applications in the ’829 patent’s priority chain is shown below.
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`- 4 -
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`Despite substantial changes to many of the applications in the priority chain,
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`AGIS alleges that the ’829 patent is entitled to an early priority date. The ’829
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`patent’s priority date has not been decided, so Petitioners’ two petitions provide
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`invalidating art based on different possible priority dates. The ’724 Patent-Borghei
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`Petition is based on a priority date no earlier than October 31, 2014—the filing
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`date of the ’829 patent’s parent. The Haney-Fumarolo Petition is based on a
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`priority date no earlier than April 17, 2006—the filing date of an early ancestor of
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`the ’829 patent. No tribunal has decided the priority date of the ’829 patent, so both
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`petitions are necessary to address the possible outcomes.
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`V. Conclusion
`This case satisfies both of the Board’s justifications for filing two petitions.
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`First, the ’829 patent has lengthy claims, which makes fully addressing both
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`grounds in a single petition untenable. And second, the petitions depend on the
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`Board’s ultimate finding on the priority date of the ’829 patent. Even with the two
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`petitions, Petitioners have raised only two grounds of unpatentability. These two
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`grounds will not unduly burden the Board or the parties. The Board should institute
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`trial for both IPR2020-00870 and IPR2020-00871.
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`- 5 -
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jonathan Tuminaro/
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`Jonathan Tuminaro (Reg. No. 61,327)
`Robert E. Sokohl (Reg. No. 36,013)
`Steven M. Pappas (Reg. No. 73,904)
`Attorneys for Petitioner Google LLC
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`BAKER BOTTS L.L.P.
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`/Neil P. Sirota/
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`Neil P. Sirota (Reg. No. 38, 306)
`Margaret M. Welsh (Reg. No. 70,745)
`Attorneys for Petitioners Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
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`Date: May 22, 2020
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`- 6 -
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`Case IPR2020-00871
`U.S. Patent No. 9,749,829
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that a true and correct copy of the above-
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`captioned PETITIONERS’ NOTICE RANKING PETITIONS FOR INTER
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`PARTES REVIEW OF U.S. PATENT NO. 9,749,829 was served in its entirety
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`on May 22, 2020, upon the following parties via FedEx® Express:
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`Mark Abate
`GOODWIN PROCTER LLP
`PATENT ADMINISTRATOR
`100 Northern Avenue
`BOSTON MA 02210
`Patent Owner’s correspondence
`address of record for
`U.S. Patent No. 9,749,829
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`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubio, III
`Alessandra C. Messing
`Enrique W. Ituralde
`Brown Rudnick, LLP - New York
`7 Times Square, 47th Floor
`New York, NY 10036
`Additional address known to
`Petitioner as likely to effect service
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jonathan Tuminaro/
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`Jonathan Tuminaro (Reg. No. 61,327)
`Robert E. Sokohl (Reg. No. 36,013)
`Steven M. Pappas (Reg. No. 73,904)
`Attorneys for Petitioner Google LLC
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`BAKER BOTTS L.L.P.
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`/Neil P. Sirota/
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`Neil P. Sirota (Reg. No. 38, 306)
`Margaret M. Welsh (Reg. No. 70,745)
`Attorneys for Petitioners Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
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`Date: May 22, 2020
`15019101.4
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