PTAB

CBM2014-00005

Google Inc v. Unwired Planet LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method for Providing Location Based Services
  • Brief Description: The ’205 patent discloses a method for providing location-based directory services to a mobile device. The system receives a service request from a user, obtains the device's location using network-assisted technology, identifies relevant service providers, and presents them in a prioritized list based on stored criteria allegedly independent of proximity or user preferences.

3. Grounds for Unpatentability

Ground 1: Obviousness over Remy and Hopkins - Claims 1-6 are obvious over Remy in view of Hopkins.

  • Prior Art Relied Upon: Remy (EP 0647076) and Hopkins (WO 97/22066).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art combination taught all limitations of the challenged claims. Remy disclosed the foundational system for a mobile location-based service, wherein a server (a "network platform") receives a service request from a mobile unit, uses the unit's geographical location (based on cell ID), and provides a personalized service in response (e.g., the address of the nearest hotel). Hopkins taught a detailed "online directory service," analogous to the Yellow Pages, where information is searchable by geographic area and business category. Crucially, Hopkins disclosed prioritizing service provider listings based on criteria independent of proximity, such as alphabetical ordering and a pay-for-placement scheme where advertisers could pay for preferred positioning.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Remy’s mobile location-based service with Hopkins’s well-known directory and advertising model. The motivation was primarily commercial: to provide valuable advertising information to mobile users and generate revenue, a common business objective. The combination represented a predictable application of a known business method (prioritized directory listings) to an emerging platform (mobile location services).
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved implementing known software techniques and business practices to yield the predictable result of a location-aware mobile directory.

Ground 2: Obviousness over Remy and Hopkins in further view of Silventoinen - Claims 1-6 are obvious over Remy in view of Hopkins in further view of Silventoinen.

  • Prior Art Relied Upon: Remy (EP 0647076), Hopkins (WO 97/22066), and Silventoinen (EP 0767594).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground incorporated the teachings of the Remy and Hopkins combination and added Silventoinen to address the "network assisted location finding technology" limitation with greater specificity. While Remy taught using basic cell ID for location, Silventoinen disclosed a more advanced and accurate method for locating a mobile station within a GSM network. Silventoinen's technique involved calculating the mobile unit's position based on time-difference measurements of signals received from at least two base stations, an improvement over simpler cell-based methods.
    • Motivation to Combine: Petitioner argued that a POSITA, seeking to improve the performance of the location-based directory service from the Remy/Hopkins combination, would have been motivated to replace Remy's less accurate location-finding technique with Silventoinen’s superior method. Silventoinen explicitly stated its purpose was to improve positioning accuracy, a recognized goal in the field. This modification constituted a simple substitution of one known element (a basic location technique) for an improved, known alternative to achieve a predictable enhancement in performance.
    • Expectation of Success: The substitution of one known location-finding module for another was a straightforward design choice that would predictably result in a more accurate and thus more useful directory service.

  • Additional Grounds: Petitioner asserted that claims 1-6 are unpatentable under 35 U.S.C. §101 for reciting the abstract idea of a location-based directory (a mobile "Yellow Pages"). Petitioner also raised multiple challenges under 35 U.S.C. §112, arguing the claims are indefinite due to a lack of antecedent basis for key terms and lack adequate written description for the claimed "prioritization" features, which are not described in the specification.

4. Key Claim Construction Positions

Petitioner argued for the construction of several key terms to clarify the scope of the claims, asserting that the specification provides limited guidance.

  • "Network platform": Petitioner proposed the construction "a computer included on a network." This was based on extrinsic evidence (a computer dictionary) and the Examiner's interpretation during prosecution (equating it to a "server"), as the specification only described the platform's function, not its structure.
  • "Independent": Petitioner argued for its plain and ordinary meaning of "not dependent." The term was added during prosecution without a special definition, and Petitioner asserted it holds no special meaning in the art.
  • "Network administrator": Petitioner proposed the construction "a person or entity that manages services provided by the network platform." This construction was argued to be broader than a dictionary definition but consistent with the specification's examples, which describe the administrator as an entity (e.g., a "wireless carrier") performing service-management tasks like registering providers and establishing preferred provider lists.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method Patent Review and cancellation of claims 1-6 of the ’205 patent as unpatentable.