Square Inc v. Unwired Planet LLC

1. Case Identification

• Case #: CBM2015-00148
• Patent #: 7,711,100
• Filed: June 12, 2015
• 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 discloses a method for controlling financial transactions using a wireless device. The system allows a user to select a point-of-sale location from a menu on their device, which then communicates with a financial system to correlate the user with a transaction amount and charge a pre-selected source of funds.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Ruppert in view of Orlen

• Prior Art Relied Upon: Ruppert (Patent 5,640,002) and Orlen (Patent 5,579,535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ruppert disclosed a method for controlling transactions using a portable wireless device (a "Personal Scanner") within a single retail store. Ruppert taught most elements of the challenged claims, including obtaining a transaction amount, correlating it with a user, transmitting it for display, and charging a source of funds (e.g., a credit card) stored in a user profile. However, Ruppert’s primary embodiment focused on a single point-of-sale location (the store the user is in). Petitioner contended that Orlen supplied the missing element by teaching a wireless communication system that displays a menu of multiple nearby point-of-sale locations (e.g., gas stations, shopping malls) to a user based on the device's current location.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Ruppert and Orlen as they are in the same field of providing information to handheld wireless devices in a shopping context. Ruppert itself identified the inconvenience of comparison shopping across multiple stores. A POSITA would have been motivated to integrate Orlen's location-based display of multiple merchants with Ruppert's transaction system to create an improved device that allows for comparison shopping and transactions with various nearby retailers, not just one.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved applying Orlen's known user interface for displaying location-based merchant information to Ruppert's established wireless transaction framework. The result would be a predictable improvement in functionality.

Ground 2: Claims 1-4 are obvious over Hannula in view of Orlen

• Prior Art Relied Upon: Hannula (WO 97/17678) and Orlen (Patent 5,579,535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hannula disclosed an electronic payment system for transactions over a mobile network using a special payment service gateway. Hannula taught a user selecting one of several available shops (point-of-sale locations) to make a purchase, with the system handling transaction approval and charging a source of funds stored in an "electronic purse" (a user profile). Like Ruppert, Hannula did not explicitly teach displaying a menu of these multiple shops based on the user's current location. Petitioner again relied on Orlen to teach this location-based display of multiple nearby merchants.
  • Motivation to Combine: A POSITA reading Hannula, which already contemplated a user choosing from among multiple shops connected to a network, would be motivated to look to a reference like Orlen to improve the user interface. Combining Orlen's method for displaying nearby merchants would make it easier for a user of the Hannula system to identify and select a desired point of sale, a logical and common-sense improvement.
  • Expectation of Success: The integration was argued to be straightforward, as it involved combining a known display technique (Orlen) with a known payment backend (Hannula), leading to the predictable result of a more user-friendly mobile payment system.

Ground 3: Claims 1-4 are obvious over Vazvan in view of Orlen

• Prior Art Relied Upon: Vazvan (a 1996 publication) and Orlen (Patent 5,579,535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Vazvan disclosed a "Mobile Wallet-Phone" for a "Real Time Mobile Payment System" that allowed a user to make cashless payments. Vazvan taught that merchants could broadcast their identity and transaction information to a user's device when in proximity. The user could then select the merchant, approve the transaction, and have funds transferred from their account. Petitioner argued Vazvan disclosed all claim elements but, like the other primary references, could be enhanced by Orlen's explicit teaching of displaying multiple, location-aware merchant options in a menu format.
  • Motivation to Combine: A POSITA would be motivated to combine Vazvan's "broadcast" method of identifying a single nearby merchant with Orlen's more structured menu-based display of multiple merchants. This would provide the user with more choice and a better overview of available payment options in their vicinity, directly improving the utility of Vazvan's mobile wallet concept.
  • Expectation of Success: A POSITA would expect success in combining these teachings, as displaying a list of available network services (which, in Vazvan, correspond to merchants) on a mobile device was a well-understood concept.

4. Key Claim Construction Positions

• "current location": Petitioner argued that under the broadest reasonable interpretation, this term meant the physical location of the wireless device at the time of the display step and did not, as Patent Owner had previously asserted, necessarily require the use of "location determination technology" like GPS. The specification supported manual user input of location.
• "correlating": Petitioner proposed that this term meant "matching" or bringing into a mutual relation. Petitioner asserted that in the context of the ’100 patent, this is an act that occurs at a central system (like a financial gateway) and involves selecting one transaction amount from among potentially many to match with a specific user's transaction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not deny the petition under 35 U.S.C. §325(d), which allows denial if the same or substantially the same prior art or arguments were previously presented.
• Petitioner contended that the obviousness grounds raised in this petition were new and different from those in a prior CBM petition (CBM2014-00156), which was instituted only on §101 grounds.
• The prior art combination reference, Orlen, was new and Petitioner argued it could not have been reasonably discovered during the prior petition despite diligent searches.
• Furthermore, Petitioner argued that because the Board in the prior proceeding declined to consider the merits of prior art arguments (due to a finding that the primary reference was not publicly accessible), those arguments were never truly "presented" or "raised" in a manner that would trigger estoppel under §325(d).

6. Relief Requested

• Petitioner requested institution of a Covered Business Method (CBM) review and cancellation of claims 1-4 of the ’100 patent as unpatentable under 35 U.S.C. §103.