Foursquare Labs Inc v. Silver State Intellectual Technologies Inc

1. Case Identification

• Case #: IPR2014-00159
• Patent #: 7,343,165
• Filed: November 18, 2013
• Petitioner(s): Foursquare Labs, Inc.
• Patent Owner(s): Silver State Intellectual Technologies, Inc.
• Challenged Claims: 1-5 and 7-9

2. Patent Overview

• Title: GPS Publication Application Server
• Brief Description: The ’165 patent describes a system and method for tracking the location of a mobile device and providing location-relevant information to authorized requesters. The system uses a server to allocate user-specific memory space where location data and user-provided information are stored, with access controlled by a user-defined access list.

3. Grounds for Unpatentability

Ground 1: Anticipation by Granstam - Claims 1-5 and 7-9 are anticipated by Granstam under 35 U.S.C. §102.

• Prior Art Relied Upon: Granstam (Patent 6,587,691).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Granstam discloses every element of the challenged claims. Granstam’s “Information Database” (IDB), which stores subscriber information including location, status, and personal data, corresponds to the claimed “user-specific space in memory.” This IDB is accessible over a network. Granstam’s “Buddy-list” feature, which allows a user to define which other users can view their location and status information, was asserted to be the claimed “access list received from the user.” The system determines a mobile station’s location using GPS, stores this position data in the IDB, and provides it to users on the buddy list, thus anticipating the limitations of independent claims 1 (method) and 2 (system) as well as the dependent claims.

Ground 2: Obviousness over Newman in view of Granstam - Claim 1 is obvious over Newman in view of Granstam under 35 U.S.C. §103.

• Prior Art Relied Upon: Newman (Patent 5,835,907) and Granstam (Patent 6,587,691).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Newman discloses an emergency PCS system that meets most limitations of claim 1. Newman teaches a GPS-enabled device that transmits its location to a user-specific database, which can be accessed by pre-designated emergency contacts. However, Petitioner contended that Newman does not explicitly disclose a user-configurable access list stored in the database. Granstam was argued to supply this missing element with its well-defined “Buddy-list” functionality, which allows users to dynamically manage access permissions.
  • Motivation to Combine: A POSITA would combine Newman’s emergency location system with Granstam’s buddy list feature to improve Newman’s system. Incorporating a flexible, user-managed access list like Granstam’s would be a predictable solution to enhance the functionality of Newman's more rigid, pre-selected emergency contact system, allowing users greater control over who can see their location data.
  • Expectation of Success: Combining a known user-permission feature (a buddy list) with a location-tracking database was a simple and predictable integration of known technologies, presenting no technical hurdles and thus providing a high expectation of success.

Ground 3: Obviousness over Kenichi in view of Makoto - Claims 2-5 and 7-9 are obvious over Kenichi in view of Makoto under §103.

• Prior Art Relied Upon: Kenichi (Japanese Patent Pub. No. 2000-322446) and Makoto (Japanese Patent Pub. No. 2000-275319).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Kenichi, describing the user-facing features of the Seiko "Locatio" product, discloses most elements of the challenged claims. Kenichi’s system allows users to upload GPS location data and other content (photos, comments) to a personal, server-based “My Map,” which functions as the claimed "user specific data space." Access to this map is controlled via a “Friends Map” function, which is the claimed user-defined “access list.” Petitioner argued that while Kenichi discloses the system’s functionality, Makoto, which describes the back-end server architecture for the same "Locatio" product, explicitly discloses the missing details of the claimed “GPS server” that receives, corrects, and forwards location data to the application server.
  • Motivation to Combine: A POSITA would have been strongly motivated to combine Kenichi and Makoto because both references describe different aspects of the same commercial product (Seiko Locatio). To gain a complete understanding of the system, a POSITA would naturally look to both Kenichi for its user-level functionality and Makoto for its underlying server architecture and implementation details.
  • Expectation of Success: Integrating the server architecture from Makoto with the system features of Kenichi would be a straightforward task with a high expectation of success, as they were designed to work together in a single commercial system.

• Additional Grounds: Petitioner asserted additional anticipation challenges against claim 1 based on Fraccaroli (Patent 6,549,768) and Kenichi alone.

4. Key Claim Construction Positions

• "User-Specific Space in Memory" / "User Specific Data Space": Petitioner proposed the construction "a space in computer memory that contains information regarding a particular user." This broad construction was supported by the specification’s description of the space as a user home page or database and was argued to encompass the "Information Database" of Granstam and the user profiles of other references.
• "Access List": Petitioner proposed that this term means "information provided by the user defining varying levels of access to data in the user-specific space, to both persons known and unknown to the user." This construction was argued to be broad enough to cover features like Granstam’s "Buddy-list" and Kenichi's "Friends Map," which serve the same function of controlling access to user data.
• "GPS Server": Petitioner proposed the construction "a computer that is configured to receive and/or provide location information." This functional definition was asserted to align with the specification and encompass the server architectures described in the prior art, particularly the server in Makoto that corrects and forwards GPS data.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that the ’165 patent is not entitled to the priority date of its provisional application. The contention was that the provisional application lacks adequate written description support under 35 U.S.C. §112 for the claimed limitation of "associating a mobile communications device with the user." As a result, Petitioner argued the patent’s effective priority date is its non-provisional filing date of April 11, 2001, which qualifies the Kenichi and Makoto publications as prior art under §102(a).

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 and 7-9 of the ’165 patent as unpatentable.