PTAB

IPR2014-00027

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 a method for providing promotional mobile services using short-range communication (SRC) technology like RFID, Bluetooth, or WiFi. An SRC-enabled mobile terminal acquires information from a nearby SRC device, transmits it over a mobile network to a server which authenticates the information, and in response, receives a promotional mobile service on a time-limited basis.

3. Grounds for Unpatentability

Ground 1: Anticipation by Fries - Claims 21 and 22 are anticipated by Fries under 35 U.S.C. §102.

  • Prior Art Relied Upon: Fries (WO 02/078381).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fries discloses every element of claims 21 and 22. Fries describes a system for delivering location-related information, including advertising, to mobile devices. In Fries, beacons (SRC devices) using Bluetooth transmit a unique ID to a mobile terminal. The terminal sends this SRC device information over a mobile network to a server. The server is programmed to "match" the incoming beacon ID with data stored in a database; Petitioner asserted this matching meets the proposed construction of "authenticating." In response to the match, the server sends advertising information to the terminal, which can be time-limited (e.g., based on the time of the request or the mobile terminal's presence in a specific location).

Ground 2: Obviousness over Takaragi in view of Giaglis - Claims 21 and 22 are obvious over Takaragi in view of Giaglis under 35 U.S.C. §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 contended that Takaragi discloses a system similar to the ’151 patent but for uses other than advertising. Takaragi teaches a portable apparatus (mobile terminal) reading information from an IC card (SRC device) via RFID. The information is sent over a mobile network to a control apparatus that authenticates it using a keyed MAC to ensure data integrity. In response to successful authentication, the control apparatus sends back cataloged information. Takaragi discloses that this information can be for gift vouchers or personal ID cards, and that it can be provided on a time-limited basis.
    • Motivation to Combine: While Takaragi teaches the core system, it does not explicitly disclose providing advertising. Petitioner argued Giaglis provides the motivation to apply Takaragi's system to advertising. Giaglis extolls mobile advertising as a promising application for location-based services, highlighting its "promising revenue potential" and effectiveness. A POSITA would be motivated to use Takaragi's secure, authenticated information retrieval framework to deliver the mobile advertising taught by Giaglis to yield predictable results.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references would merely be a simple substitution of one known type of content (Takaragi's cataloged information) for another (Giaglis's advertising) within an existing system.

Ground 3: Anticipation by Rautila - Claims 21 and 22 are anticipated by Rautila under 35 U.S.C. §102.

  • Prior Art Relied Upon: Rautila (Patent 6,549,625).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Rautila discloses a communications system that anticipates the challenged claims. Rautila describes a short-range position transceiver (SRC device), such as a Bluetooth broadcaster, that provides identification information to a mobile terminal. The mobile terminal transmits this information over a network to a server. The server authenticates the information by checking a digital signature and matching the information to a database. In response, the server fetches and transmits corresponding advertising information (e.g., a webpage) to the mobile terminal. Petitioner asserted that since the short-range broadcast is only received when the terminal is in range, the service is inherently provided on a time-limited basis as construed by Petitioner.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on combinations involving Waris (Application # 2004/0268132), Sakata (European Patent Publication No. EP 1191448 A1), Varshney II ("Location Management for Mobile Commerce Applications in Wireless Internet Environment," 2003), Rankin (Application # 2003/0100315), and Sadeh ("M-Commerce: Technologies, Services, and Business Models," 2002).

4. Key Claim Construction Positions

  • "SRC": Petitioner proposed this term be construed as "short-range radio communications technology including RFID, Bluetooth, and WiFi." This construction is based on explicit definitions in the ’151 patent specification.
  • "providing a promotional mobile service": Petitioner proposed construing this term to mean "providing a mobile service at a promotional rate or providing promotional material, such as advertising, to a mobile device." This broad construction was argued to be supported by the specification and the Patent Owner's own infringement contentions in concurrent litigation.
  • "authenticating": Petitioner proposed a construction of "evaluating authenticity or matching the SRC device information with information stored in an SRC device information database." This construction was central to the anticipation arguments, as it allows a simple database lookup or matching operation, as disclosed in references like Fries, to satisfy the claim limitation.
  • "on a time-limited basis": Petitioner proposed this term means "temporarily such as when the mobile terminal is in range." This construction was based on examples in the specification and arguments made during the patent's prosecution history where "temporarily" was treated as equivalent to "on a time-limited basis."

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 21 and 22 of the ’151 patent as unpatentable.