Google, HTC, ZTE, Huawei gang up on small navigation software developer with IPR filing

By Steve Brachmann
February 19, 2017

"Navigation Car Drive Road" by DariuszSankowski. Public domain.

“Navigation Car Drive Road” by DariuszSankowski. Public domain.

On Friday, February 10th, a slew of tech giants filed an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) to challenge the validity of a U.S. patent covering a navigation system for mobile devices. While it remains to be seen whether or not PTAB will decide to institute the IPR, it seems that patent system savvy corporations are ganging up on a smaller developer within the nascent automotive software industry who had the temerity to assert a patent covering a navigation software technology it developed in-house.

IPR2017-00819, accessible for viewing through the online PTAB End to End (E2E) database system, lists Alphabet Inc. (NASDAQ:GOOGL) subsidiary Google as the main petitioner. Other real parties-in-interest include Taiwanese consumer electronics firm HTC Corp. (TPE:2498) and two Chinese telecom firms: ZTE Corporation (SHE:000063) and Huawei Technologies, Co. The IPR challenges the validity of a patent owned by InfoGation Corporation, Inc., of San Diego, CA, a designer and developer of navigation software for the automotive industry, which was founded in 1996.

Google and the other parties-in-interest are looking to challenge U.S. Patent No. 6292743, titled Mobile Navigation System. It claims a method for providing an optimal route using real-time information for a navigation system comprising a client and a server, the method involving transmitting start and end route designations between the client and the server, calculating the optimal route by the server using real-time information, formatting the optimal route into a non-proprietary natural language description which is downloaded to the client and then displaying the optimal route on the client device once that route has been reconstructed by the client device using a local mapping database. The patent, issued in September 2001, notes the problems of conventional systems which are solved by the invention, such as the need to lower bandwidth used by navigation systems and the use of non-proprietary servers which are more compatible with a wider variety of navigation systems and mapping databases.

The filing of the Google IPR is a direct consequence of Infogation filing suit against HTC, ZTE and Huawei last July, each of which alleged infringement of the ‘743 patent. All three suits were filed in the U.S. District Court for the Southern District of California (S.D. Cal.) and each target multiple products marketed by those tech firms which use a navigation computer and a wireless transceiver to connect to a navigation server. “Specifically, each of the accused products is a smartphone running the Android operating system and can connect to a Google Maps navigation server through a wireless carrier’s data network,” the suits state. Google’s involvement with the case starts last October, when it filed a complaint for declaratory judgment of non-infringement of the ‘743 patent in the U.S. District Court for the Northern District of California (N.D. Cal.) which sought to resolve the “justiciable controversy between Google and InfoGation” created by InfoGation’s filing of patent infringement suits against Google’s partners.

Google’s IPR seeks the invalidation of claim 15 of the ‘743 patent as obvious under 35 U.S.C. Section 103 based on two patents filed earlier than the patent application for the ‘743 patent. Those patents are U.S. Patent No. 6680694, entitled Vehicle Information System, and U.S. Patent No. 6334089, titled Vehicle Routing and Guidance System.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 22 Comments comments. Join the discussion.

  1. Inventor Woes February 19, 2017 12:13 pm

    What a joke. The patent was from 1999 (!), yet I don’t see that company suing the likes of Tom Tom or other GPS devices that came out years ago. They wait until the patent is just about to expire in a few years and then file suit because they can’t innovate. This is why the AIA had IPR provisions, because of this chicanery.

  2. Gene Quinn February 19, 2017 12:49 pm

    Inventor Woes-

    You are the joke. Obviously, you are pretty ignorant when it comes to patent law. So let me enlighten you. A patent is a property right that grants to the owner the right to exclude others during the term of exclusivity. A patent owner actually has the right to bring a lawsuit to seek redress for infringement that occurs during the term of exclusivity. It is a pretty simply concept that applies in all areas of the law.

    Obviously, you know the law and you are just a shill for infringers who is invading for the purpose of interfering with meaningful dialogue. This is your last warning. Your continued asinine comments won’t be tolerated.

    -Gene

  3. Inventor Woes February 19, 2017 1:19 pm

    Wait, I’m “pretty ignorant when it comes to patent law,” but “Obviously…know the law”? Not sure what you’re trying to get at?

  4. Anon February 19, 2017 1:44 pm

    IW,

    What he is getting at is that your posts are propaganda.

    You evidently know of the law enough to make some comments, but your tone, message and use of the law in those comments twist what is actually the law into something that is not the law.

    You are playing a semantics game – but you are playing with those that recognize your game. There are those like I that try to inform you to change politely (to which you respond with passive/aggressive namecalling like “anal” – and then there is the moderator who more forcefully tells you: cut out the CRP.

    The choice is – and remains yours (at least one more time): post responsibly, or go elsewhere.

    Gene, my curiosity is piqued: has IW been using a legitimate email address?

  5. Inventor Woes February 19, 2017 2:52 pm

    It’s not propaganda if there’s evidence supporting it. In that case it’s a fact.

    https://research.stlouisfed.org/wp/2012/2012-035.pdf

  6. Anon February 19, 2017 3:14 pm

    Your understanding of what is and what is not propaganda is suspect.

    The best propaganda always has some kernel of fact – that does not stop it from being propaganda.

    Here – I have provided the parts of your statements that are not fact, and the parts that are fact.

    Boldrin and Levine…?

    From the title page of that article: The views expressed are those of the individual authors and do not necessarily reflect official positions of
    the Federal Reserve Bank of St. Louis, the Federal Reserve System, or the Board of Governors.

    And for good reason: Boldrin and Levine’s paper is propaganda – and has been debunked.

    The use of NPR as an example against patents is again telling:
    NPR is propaganda.

    Sorry IW, but you have glommed onto those things that you find appealing and have built your castle on the shifting sands of anti-patent rhetoric and propaganda.

  7. Anon February 19, 2017 3:15 pm

    Your choice of “parody” reveals more about you than you realized.

    As does your “sources.”

  8. Gene Quinn February 19, 2017 3:34 pm

    Everyone-

    I’ve grown tired of the antics of Inventor Woes. He is obviously a shill who is only attempting to get in the way of thoughtful discussion. He has been banned.

    -Gene

  9. Benny February 20, 2017 5:42 am

    Am I missing something? The patent will expire before the IPR is over, and since the technology seems familiar, don’t the petitioners have laches defense if it has just come up in litigation ? There is probably more here than meets the eye, perhaps some confidential licensing deal.

  10. Eric Berend February 20, 2017 7:05 am

    Thank you very much, Gene. Obviously, I had no use for that commentator and had no patience for any of his cr*p. I don’t expect anyone else to necessarily agree with my particular viewpoint there; however, I could not find one comment from this person here, that actually contributed anything worthwhile to the discussion.

    I can respectfully disagree with cynics. Gadfly provocateurs skating the edge of illegitimacy; ceaselessly presenting snide, derogatory implications amounting to nothing more than propaganda? I cannot bear such fools gladly.

  11. Benny February 20, 2017 8:21 am

    Looks like the technology goes back to 1990 – see US5177685, which includes most of the elements of US6292743 (it uses verbal instructions rather than a local map display, but otherwise is the same technology)

  12. Night Writer February 20, 2017 9:42 am

    @8 Gene: There are many paid bloggers and many anti-patent paid bloggers. There was an advertisement on patentlyo a few years back to run a group of anti-patent paid bloggers.

  13. Gene Quinn February 20, 2017 10:35 am

    @12 Night Writer-

    Yes, the anti-patent PR machine is strong.

    @10 Eric-

    I’m happy to engage cynics also. What pushed this across the finish line was Inventor Woes essentially claiming a patent owner is troll when they have the audacity to sue during the later stages of the term of the patent. Obviously, an exclusive right granted for a set term is for a set term. There are plenty of places where that level of ignorance is celebrated. Not here though.

    Cheers.

    -Gene

  14. Paul F. Morgan February 20, 2017 11:22 am

    For a more educational discussion:
    Even after a patent has fully expired, it can still be used to sue for up to six years of prior infringements that had occurred before the patent expired [if there was no patent marking statute violation]. Which is why reexaminations and IPRs apply for the potential damages recovery period of the patent, even if it expires.
    As for patent suit laches, that issue is at the Sup. Ct., TBD. It is rarely successful to preclude past damage recoveries even under current case law unless the patent owner know of the infringement for more than six years and by its conduct or lack of it led the defendant to think it was able to continue selling its products without being sued. It does not preclude post-suit infringements or injunctions.

  15. Benny February 20, 2017 11:33 am

    Paul,
    If the suit refers to the implementation of Google Maps, those 6 years are up. Hardly likely anyone missed it.

  16. Valuationguy February 20, 2017 12:07 pm

    Benny,

    In addition ot Paul F. Morgan’s reply, I would state that there can be major strategic reasons for waiting to press forward with the patent only late in its life. As you might be aware…the rules on claims construction change materially (given how the PTAB wrongly applies them) once the patent actually expires. No longer can the PTAB hide behind the (misapplied) BRI standard for claim construction if the patent IS or is EXPECTED to expire prior to fully adjudicating the case.

    The PTAB as a venue is attractive over district court for infringers (in part) because of the lower claim construction standard applied in claim construction versus the District court. In such a case as described above…the PTAB is REQUIRED to apply the SAME burden of proof as the District Court…providing a much less adversely tilted playing field for the patent owner once the inevitable IPR request is filed.

    While damages can only look back 6 years…the much higher chance of getting something (via the plain and ordinary reading of the claims versus the broadest reasonable intepretation) is worth the lost ‘potential damages’ due to delaying suing on the patent.

    And in relation to your last post….the infringing product ISN’T Google Maps…in fact, Google isn’t even a party to the original District Court case. The plantiff is suing the manufacturers of the DEVICES which enable its patent to be infringed…and the profits on those devices from incorporating the NAVIGATING features is fair game…even if it ultimately affects Google Maps usage.

  17. Paul F. Morgan February 20, 2017 12:26 pm

    Thanks “Valuationguy.” Yes, if the patent in reexamination or IPR expires, since it can no longer be amended, normal D.C. In re Philips claim interpretation applies rather than BRI. However, I have to note that, contrary to a lot of hyperarguments, actual IPR decisions in which that alone would clearly make a difference in the final outcome are nearly as scarce as hen’s teeth.

  18. Anon February 20, 2017 1:30 pm

    Mr. Morgan,

    The counter point to your point of “hen’s teeth,” is if in fact such is that rare, why not just use the normal D.C Philips claim construction protocols and eliminate the consternation and even the remote possibility of difficulties?

    I have yet to see one ardent supporter of “BRI” explain why that is not an easy “let” to make.

    All of sudden, when that proposition is put on the table, then the difference all of a sudden becomes paramount.

  19. Paul F. Morgan February 20, 2017 2:40 pm

    Anon, that is all quite irrelevant, since the Sup. Ct. has refused to overrule the longstanding PTO use of BRI, and no comment-provider on this blog has the slightest influence in getting Congress to change it, whether or not that would be a good idea. Especially not without being able to show why would make a big difference. It is not valid to read In re Philips en banc as allowing a big increase in narrowing limitations to be read into claims to avoid cited prior art without having those limitations in the claims themselves or required by the specification. Note the actual claim scope decision in In re Philips. We are talking here about IPR APJ decisions after both parties have argued their claim interpretations, not about some unreasonable ex parte application examiners positions.

  20. Anon February 20, 2017 5:09 pm

    Mr.Morgan,

    I find your outright dismissal inappropriate for a blog discussing the ramifications of law and legal changes.

    It matters not your excuses for such a dismissal. If you simply do not want to discuss the point, please be more direct (and honest) and just say so.

    It is beyond presumptuous to declare that Congress will never take up any idea just because they have not done so yet – which is really all that you can truthfully say about the counter point presented.

  21. Gene Quinn February 20, 2017 5:20 pm

    Paul Morgan-

    You say: “no comment-provider on this blog has the slightest influence in getting Congress to change it…”

    The House has already passed the Regulatory Accountability Act of 2017, which would remove Chevron deference. It is expected to pass the Senate and President Trump will sign it. The importance of this is that all agency decisions will be open for fresh de novo review. Two judges on the Federal Circuit already believe Cuozzo invites the Court to reconsider en banc whether institution decisions remain unreviewable. And let’s not forget that the Supreme Court cited Chevron in Cuozzo re: BRI. So once the Regulatory Accountability Act of 2017 is signed into law there will be a push to get the courts to reconsider de novo without any regard to USPTO interpretations a great many things, including BRI. So BRI is almost certainly not nearly as settled as you might think. See:

    http://www.ipwatchdog.com/2017/02/12/patent-reform-2017/id=78189/

    http://www.ipwatchdog.com/2017/01/30/conservative-ideology-rebuild-patent-system/id=77717/

    -Gene

  22. Charles Barton February 21, 2017 1:31 pm

    Benny@11 February 20, 2017 8:21 am

    If we look in analogous art, the US Navy seems to have had a much more sophisticated mobile navigation system of the same sort back in the middle 80s.

    It is possible that all the claims of Pu `743 should never have been allowed on ex parte 102 (g) grounds. I would have to do more research. I worked on the Navy system back in the 80s. The Pu `743 claims are generic and seem to encompass the US Naval logistics system of the 1980s as a species.

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