Square Inc v. Unwired Planet LLC

1. Case Identification

• Case #: IPR2014-01164
• Patent #: 7,376,433
• Filed: July 14, 2014
• Petitioner(s): Square, Inc.
• Patent Owner(s): Unwired Planet LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Personalized Location-Based Services
• Brief Description: The ’433 patent describes methods for providing personalized, location-based services to a mobile device user. The system uses a network platform to store subscriber profile information, determine the user's location, identify nearby candidate service providers, and then select a subset of those providers based on the user's profile to present to the user and facilitate a transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 11-17 are anticipated by Dennis under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Dennis (Patent 7,711,100).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dennis, which discloses a system for controlling financial transactions with a wireless device, teaches every limitation of the challenged claims. Dennis described using a device's location to identify nearby point-of-sale locations, presenting a menu of these locations, and allowing a user to select one to complete a transaction. Crucially, Dennis was asserted to disclose storing a "personal profile of information" with "predetermined preferences" (e.g., for specific chains of grocery stores or gas stations) and using this profile on the network to "select the potential point of sale locations based upon the customer's preferences," thereby teaching the claimed filtering of candidate providers based on subscriber profile information. Dennis was also alleged to teach the subsequent steps of initiating and confirming a transaction with the selected provider.

Ground 2: Claims 1-6 and 11-16 are obvious over Baker in view of Hall.

• Prior Art Relied Upon: Baker (Patent 6,505,046) and Hall (Patent 6,026,375).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Baker taught a system for providing location-based services by sending coupons or advertisements to a subscriber based on their location and a stored user profile that filters the content. This was argued to teach the core limitations of identifying nearby providers and selecting a subset based on a profile. However, Baker was primarily focused on advertising. Hall was introduced to supply the missing transaction-related elements, as it disclosed a system enabling a mobile user to place an order, have it prepared at a local facility based on their location, and pay for it via an "electronic transfer method."
  • Motivation to Combine: A POSITA would combine Baker and Hall because they are analogous arts addressing location-based services for mobile users. Petitioner argued Baker explicitly contemplated an interface to "transmit credit card numbers...to secure payment for services" but described the signaling as "well known in the art." A POSITA would have looked to a reference like Hall, which provided a known method for remote electronic payment, to implement this feature in Baker's system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references rely on the mobile device's location and the service provider's location to determine relevant providers, making their integration predictable and straightforward to achieve the claimed system.

Ground 3: Claims 1-7 and 12-17 are anticipated by DeLorme.

• Prior Art Relied Upon: DeLorme (Patent 5,948,040).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that DeLorme's Travel Reservation and Information Planning System ("TRIPS"), particularly its embodiment for mobile users, anticipated all challenged claims. DeLorme disclosed that mobile users could access the TRIPS system to get information on nearby services like restaurants and hotels. The system provided "personalized output tailored to the user's personal travel preferences" stored in a user profile, which allegedly taught the step of selecting a subset of candidate providers based on subscriber profile information. DeLorme also allegedly disclosed facilitating transactions by enabling a user to "make a specific reservation" with a provider and receive a "confirmation code" on their mobile device. DeLorme was also noted to explicitly mention "taxis" as a type of service provider, directly teaching limitations related to mobile service providers found in dependent claims.

• Additional Grounds: Petitioner asserted additional obviousness challenges, primarily by combining the primary references from the grounds above with Trask (Patent 5,945,919). The combinations of Dennis in view of Trask, Baker/Hall in view of Trask, and DeLorme in view of Trask were used to explicitly teach the limitations of claims 7-10, which require the candidate service providers to be "mobile service providers" (e.g., taxis). Trask disclosed a taxi dispatch system that determined taxi locations and status to match them with users, thereby providing the specific teachings for managing mobile merchants.

4. Key Claim Construction Positions

• "subscriber profile information" (Claims 1, 10, 15, 16): Petitioner noted that the Patent Owner's expert in the co-pending district court case construed this term to mean "information relating to a user." For the purposes of the inter partes review (IPR), Petitioner adopted this broad construction, arguing that even under this interpretation, the claims were unpatentable over the cited prior art.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-17 of the ’433 patent as unpatentable.