PTAB

IPR2014-00036

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 relates to methods for providing location-based directory services to a mobile device. The system receives a service request, obtains the mobile device's location using network-assisted technology, identifies relevant service providers, and outputs a menu of those providers prioritized based on stored information that is independent of proximity or subscriber preferences.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bhatia and Galitz - Claims 1-3, 5, and 6 are obvious over Bhatia in view of Galitz.

  • Prior Art Relied Upon: Bhatia (Patent 5,930,699) and Galitz (a 1996 user interface design guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bhatia disclosed the core elements of claim 1: a system for retrieving local address information for a mobile device. This included receiving a service request with a service type, obtaining the device’s location based on its relation to a cell tower (a stationary network structure), and identifying service providers based on the request and location. Petitioner contended that Bhatia, however, did not explicitly describe how the resulting list of providers was ordered for presentation. Galitz, a treatise on user interface design, was asserted to supply this missing element by teaching various well-known methods for prioritizing information to appear "logical and sensible for the user," such as ordering by convention (e.g., alphabetically), importance, or function. These methods were described as inherently independent of proximity and subscriber preferences.
    • Motivation to Combine: A POSITA would combine Galitz's standard user interface principles with Bhatia's location-based service to improve usability. The motivation was to provide the retrieved service provider information in a logical and sequential order, which was a routine design choice for any system presenting lists of information to a user.
    • Expectation of Success: A POSITA would have a high expectation of success in applying conventional ordering techniques to a list of data, as it was a simple and predictable implementation.

Ground 2: Obviousness over Bhatia and Rich - Claims 1-5 are obvious over Bhatia in view of Rich.

  • Prior Art Relied Upon: Bhatia (Patent 5,930,699) and Rich (a 1999 article describing the GoTo.com search engine).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground again relied on Bhatia for the foundational location-based service system. Petitioner argued that Rich taught the specific prioritization method recited in the claims, particularly the limitation that prioritization is established by a "network administrator" (claim 4). Rich described the GoTo.com search engine, which ranked results based on a pay-for-placement auction where websites bid for keywords. Petitioner asserted this system constituted stored prioritization information (the bid amounts) that was independent of proximity and subscriber preferences. The entity running the auction and setting the rules was argued to be the claimed "network administrator."
    • Motivation to Combine: A POSITA would be motivated to incorporate the pay-for-placement model from Rich into Bhatia’s system for commercial reasons. This combination would generate revenue and, as Rich suggested, provide more "relevant" results to the user under the theory that advertisers willing to pay more are more relevant to a consumer's query.
    • Expectation of Success: Combining a known business model (pay-for-placement) with a known technical system (location-based services) was presented as a straightforward application of known principles with a predictable outcome.

Ground 3: 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 Remy disclosed a mobile location-based service for providing personalized information, such as the address of the nearest hotel, by using the mobile device's cell location. This taught the basic steps of receiving a request, obtaining location, and identifying a provider. Hopkins was asserted to disclose a detailed "online directory service" that was searchable by geography and category and included advanced prioritization schemes. Specifically, Hopkins taught prioritizing results using both a pay-for-placement scheme (with preferred and standard placements) and alphabetical indexing, both of which are independent of proximity and subscriber preference.
    • Motivation to Combine: A POSITA would combine Remy's mobile service framework with Hopkins's more sophisticated directory and prioritization features to create a richer, more commercially viable service. The motivation stemmed from the desire to provide advertising information for multiple vendors and to capitalize on the revenue potential of advertising, a well-known business practice.
  • Additional Grounds: Petitioner asserted several additional obviousness challenges, including combinations of Bhatia/Rich/InfoWorld, Bhatia/InfoWorld, Brohoff/Galitz, Brohoff/Rich, Brohoff/InfoWorld, and Remy/Hopkins/Silventoinen, all relying on similar theories of combining a basic location-based service with known methods for ordering or monetizing search results.

4. Key Claim Construction Positions

  • "Network platform": Petitioner proposed this term be construed as "a computer included on a network." The argument was based on the specification describing only the functions of the platform, not its structure. Extrinsic evidence from a computer dictionary was used to argue that in this context, "platform" refers to a computer.
  • "Independent": Petitioner proposed this term be construed by its plain and ordinary meaning as "not dependent." The term was added during prosecution without a special definition, and Petitioner argued it has no special meaning in the art.
  • "Network administrator": Petitioner proposed this term be construed as "a person or entity that manages services provided by the network platform." This construction was argued to be broader than a standard dictionary definition because the specification gives examples where the administrator is an entity (e.g., a "wireless carrier") and its duties relate to managing services (e.g., setting up preferred providers), not just the physical network hardware.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of all challenged claims 1-6 of the ’205 patent as unpatentable.