PTAB

IPR2014-01165

Square Inc v. Unwired Planet LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Notifying a Group of Wireless Device Users
  • Brief Description: The ’359 patent discloses a system for sending event notifications to wireless devices in a specific geographic area. The system features a notification server that provides an application and "location update instructions" to a mobile device, which control how the device determines and reports its location back to the server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Othmer and Goldberg - Claims 8-12, 14-15, 17, 25-29, 31-32, and 34-35 are obvious over Othmer in view of Goldberg.

  • Prior Art Relied Upon: Othmer (Application # 2010/0269059) and Goldberg (Patent 5,742,509).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Othmer taught a location-based notification system where "tickers" on mobile devices display content based on the device's location. Othmer's "ticker client software" determined and reported the device's location to a server, which then pushed relevant content (the notification). Petitioner asserted that the one element missing from Othmer—having the location reporting controlled by instructions from a remote server—was supplied by Goldberg. Goldberg disclosed a tracking system where a base station could remotely program and change the frequency and timing of position data transmissions from a mobile "watson" device.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Goldberg's configurable location reporting with Othmer's location-aware ticker application to create a more efficient and flexible system. Both references addressed the same field of tracking and communicating mobile device locations. Othmer itself suggested using known "positioning techniques," which would have led a POSITA to solutions like Goldberg's.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying Goldberg's known infrastructure for controlling location reporting to Othmer's known application for displaying location-based content, resulting in a predictable improvement.

Ground 2: Anticipation by Munson - Claims 8-9, 12, 25-26, 29, and 35 are anticipated by Munson.

  • Prior Art Relied Upon: Munson ("Location-Based Notification as a General-Purpose Service," a 2002 publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted Munson disclosed every element of the challenged claims. Munson described a general-purpose, location-based notification system where the network infrastructure initiates location requests and sends messages to subscribers in a specific area. Petitioner argued that the network's instructions to a handset to provide location measurements (using handset-assisted technologies like A-GPS) constituted the claimed "set of location update instructions provided by a remote server." The system’s Notification Processor acted as the notification server, composing and delivering messages with event-related content (e.g., a notice of a water supply shutoff or a retail sale ending) to devices determined to be in the relevant area.

Ground 3: Anticipation by Manz - Claims 8-12, 25-29, and 35 are anticipated by Manz.

  • Prior Art Relied Upon: Manz (Patent 7,764,185).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Manz, which was not considered during prosecution, disclosed a system for warning users of threats that anticipated the claims. Manz taught pager-like devices that used software to determine their location (e.g., via GPS) and transmit it to a server at a defined interval. This interval was specified in a "configuration file" on the device. Petitioner contended that Manz's disclosure that this configuration file could be updated by a remote, trusted source met the limitation of "location update instructions provided by a remote server." When a threat was identified, the system sent a notification to devices within a "danger radius," and the device would alert the user via auditory or visual means.

  • Additional Grounds: Petitioner asserted additional challenges including an obviousness ground for claims 14-15, 17, and 31-34 over Munson in view of Othmer, arguing Othmer supplied the user-interactive features for Munson's notification system. Petitioner also asserted an anticipation ground against all challenged claims based on Altman (Application # 2007/0281689), which disclosed a location-based social network with messaging and alert functions.

4. Key Claim Construction Positions

  • Petitioner argued that the term "location update instructions" should be construed as "instructions on the wireless device that control a location updating process." This construction was proposed to be broad enough to encompass parameters or configuration information that control a pre-existing location process. Petitioner explicitly argued against the Patent Owner's narrower construction from district court litigation, which required instructions that are "executable" to "determine the location of the wireless device." Petitioner contended its broader construction was necessary to reflect the patent's disclosure and claim language, which described the instructions as controlling the process rather than being the executable process itself.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 8-12, 14-15, 17, 25-29, 31-32, and 34-35 of the ’359 patent as unpatentable.