PTAB

CBM2014-00004

Google Inc v. Unwired Planet LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Providing Promotional Mobile Services Using Short-Range Communication
  • Brief Description: The ’151 patent relates to methods for providing promotional mobile services using short-range communication (SRC) technologies like RFID, Bluetooth, or Wi-Fi. The system involves an SRC-enabled mobile terminal acquiring information from a nearby SRC device, transmitting that information over a mobile network to a service provider for authentication, and then receiving a promotional service on a time-limited basis.

3. Grounds for Unpatentability

Ground 1: Claims 21 and 22 are Unpatentable Under §101 and §112

  • Core Argument for this Ground:
    • Abstract Idea (§101): Petitioner argued that the claims are directed to the abstract idea of providing information to receive a targeted advertisement. This fundamental business practice, long performed by advertisers, is not transformed into a patent-eligible invention merely by limiting its use to a mobile technological environment. The petition asserted that elements like "mobile network" and "SRC device" are merely conventional, data-gathering steps and field-of-use limitations that do not add an inventive concept.
    • Indefiniteness (§112): Petitioner contended that the term "short-range," which is central to both challenged claims, is a term of degree used without an objective standard in the specification. The patent provides examples of SRC technologies (Bluetooth, RFID, Wi-Fi) that have widely varying operational ranges, but it fails to define an upper bound or provide guidance for how a person of ordinary skill in the art (POSITA) would determine what is "short enough." This ambiguity was argued to render the claims indefinite.

Ground 2: Claims 21 and 22 are Anticipated by Fries under §102

  • Prior Art Relied Upon: Fries (International Publication No. WO 02/078381).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fries discloses every limitation of claims 21 and 22. Fries describes a system for delivering location-based information, including advertising, to mobile devices. In Fries, beacons (SRC devices using Bluetooth) transmit a unique ID (SRC device information) to a mobile terminal. The terminal then sends this ID over a cellular network to an information server (mobile service provider). The server authenticates the request by matching the beacon ID against a database and, in response, sends back promotional information on a time-limited basis. This maps directly to the claimed steps of acquiring, providing, authenticating, and receiving a time-limited promotional service.
    • Key Aspects: The argument relies on the proposed construction of "authenticating" as including the database matching disclosed in Fries and "on a time-limited basis" as including providing service only while a user is in range of a beacon.

Ground 3: Claims 21 and 22 are Obvious over Takaragi in view of Giaglis under §103

  • Prior Art Relied Upon: Takaragi (Patent 6,592,032) and Giaglis ("Towards a Classification Framework for Mobile Location Services," 2003).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Takaragi discloses a system nearly identical to that claimed, but for non-promotional services. Takaragi teaches a portable apparatus (SRC-enabled mobile terminal) that reads an ID from an IC card (SRC device) via RFID, transmits this information over a mobile network to a control apparatus, which authenticates the information using cryptographic methods, and returns cataloged information on a time-limited basis. Takaragi discloses all elements of the claims except for the explicit use of the system for advertising. Giaglis remedies this deficiency by teaching that mobile advertising was a primary and promising application for location-based services using short-range technologies like RFID.
    • Motivation to Combine: A POSITA would be motivated to apply the advertising methods taught by Giaglis to the secure, location-aware system of Takaragi. Giaglis explicitly highlights the "promising revenue potential" of mobile advertising, which would have provided a strong incentive to substitute Takaragi's generic cataloged data with Giaglis's promotional content to create a commercially valuable service.
    • Expectation of Success: The combination would involve applying a known commercial practice (advertising) to a known technical system, yielding the predictable result of a location-based mobile advertising platform.

  • Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges against claims 21 and 22 based on references including Rautila, Waris, Sakata, and Varshney II, which were argued to disclose similar systems for location-based services and advertising.

4. Key Claim Construction Positions

  • "authenticating": Petitioner argued for the construction "evaluating authenticity or matching the SRC device information with information stored in an SRC device information database." This construction is broader than cryptographic verification and was asserted to be supported by the specification's disclosure and the Patent Owner's infringement contentions. It is critical for the anticipation arguments, as references like Fries disclose database matching but not necessarily cryptographic authentication.
  • "on a time-limited basis": Petitioner proposed the construction "temporarily such as when the mobile terminal is in range." This interpretation was based on examples in the specification and arguments made during prosecution to overcome prior art. This construction allows prior art that provides services based on proximity (a temporary condition) to meet the claim limitation, even without an explicit timer.

5. Relief Requested

  • Petitioner requests institution of Covered Business Method (CBM) patent review and cancellation of claims 21 and 22 of the ’151 patent as unpatentable.