Square Inc v. Unwired Planet LLC

1. Case Identification

• Case #: CBM2014-00156
• Patent #: 7,711,100
• Filed: July 11, 2014
• Petitioner(s): Square, Inc.
• Patent Owner(s): Unwired Planet LLC
• Challenged Claims: 1-4

2. Patent Overview

• Title: System and Method for Controlling Financial Transactions Over a Wireless Network
• Brief Description: The ’100 patent describes a method for conducting financial transactions using a wireless device. The method involves displaying point-of-sale locations to a user based on their current location, allowing the user to select a location, and completing a transaction by charging a user-identified source of funds.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility Under 35 U.S.C. §101 - Claims 1-4 are directed to an abstract idea.

• Prior Art Relied Upon: None. This ground relied on an analysis of the claims under the abstract idea exception to patentable subject matter.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claims 1-4 are directed to the fundamental and long-standing abstract idea of a commercial transaction between a customer and a merchant. The steps recited in independent claim 1—displaying nearby points-of-sale, selecting one, obtaining transaction amounts, correlating the amount with the transaction, and charging a source of funds—were asserted to be steps that can be performed entirely in the human mind or with a pen and paper.
  • Key Aspects: The petition contended that adding conventional and generic technological elements, such as a "wireless device" and "wireless network," does not provide the requisite "inventive concept" to transform the abstract idea into a patent-eligible application. Petitioner argued these elements are merely used for their conventional functions without any improvement to the technology itself. Dependent claims 2-4 were argued to add only other routine and conventional aspects of a purchase, such as receiving user approval or using a pre-configured profile, which do not confer patent eligibility.

Ground 2: Anticipation by Vazvan - Claims 1-4 are unpatentable under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Vazvan (a 1996 publication titled "High Value Added Solutions for Creating New Markets for Mobile Communication Systems and Harmonizing their Mobility Aspects").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Vazvan's disclosure of a "Real Time Mobile Payment System" (RTMPS) and a "Mobile Wallet-Phone" (MWP) anticipates every element of claims 1-4. Vazvan described a system where a user's MWP, when in proximity to a merchant, receives broadcasted information including the merchant's identity and transaction amount, which is then displayed to the user. This allegedly taught the limitations of displaying a point-of-sale location based on proximity.
  • Key Aspects: In Vazvan's system, the user accepts the transaction and activates the payment by pressing a button, which Petitioner mapped to the claim limitations of "determining a particular point-of-sale location" and "receiving approval." The system then facilitates the transfer of funds from the user's account to the merchant's account, allegedly meeting the "correlating" and "charging" limitations. Vazvan's disclosure of user accounts and the ability to select between them using different P-PINs was argued to anticipate the user profile features of dependent claims 3 and 4.

Ground 3: Obviousness over Vazvan and Bouve - Claims 1-4 are unpatentable under 35 U.S.C. §103.

• Prior Art Relied Upon: Vazvan in view of Bouve (Patent 5,682,525).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in the event the claims were construed to require the explicit display of multiple point-of-sale locations from which a user can select. Vazvan taught the core mobile payment transaction, while Bouve taught a system for displaying multiple points of interest (e.g., stores, restaurants) on a mobile device's map display, relative to the user's current, GPS-determined location.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bouve's location-based merchant discovery functionality with Vazvan's mobile payment system to create an enhanced, commercially valuable application. The combination was presented as a predictable integration of complementary technologies that aligned with the known trend of adding location-aware commercial features to mobile devices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Both systems operated on mobile devices over wireless networks. Integrating Bouve’s front-end for selecting a merchant with Vazvan’s back-end for executing the payment was a straightforward combination of known elements to achieve a predictable result.

4. Key Claim Construction Positions

Petitioner argued for the broadest reasonable interpretation of key claim terms, including:

• "menu" (Claim 1): Proposed as "representation of at least one point-of-sale location." This broad construction was asserted to cover systems like Vazvan's that may display information for only a single nearby merchant at a time.
• "transaction amounts" (Claim 1): Proposed as "one or more amounts associated with one or more transactions." This construction ensures that a single transaction with one corresponding amount satisfies the claim language.
• "correlating" (Claim 1): Proposed as "to place or bring into mutual or reciprocal relation." Petitioner argued this broad dictionary definition is satisfied when a system links the user's identity with the specific transaction details for payment processing, as disclosed in Vazvan.

5. Relief Requested

• Petitioner requests institution of a Covered Business Method Review and cancellation of claims 1-4 of the ’100 patent as unpatentable under 35 U.S.C. §§ 101, 102, and 103.