PTAB

IPR2015-01747

Google Inc v. Silver State Intellectual Technologies Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Communicating Information with Automobiles
  • Brief Description: The ’498 patent discloses an in-vehicle information and control system that communicates with remote servers. The system features a display interface that allows users to view information about nearby product or service providers (e.g., restaurants) and interact with that information.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 7-16, and 19-24 are obvious over Maekawa in view of Dickson.

  • Prior Art Relied Upon: Maekawa (Patent 6,040,824) and Dickson (Patent 6,574,603).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maekawa discloses the core features of a vehicular navigation system as recited in independent claims 1 and 13, including sensing a vehicle’s location and displaying indicators for nearby service providers (e.g., restaurants, convenience stores) on a map. However, Maekawa only discloses displaying basic information like business hours or a telephone number upon selection of an indicator. Petitioner asserted that Dickson, which relates to an in-vehicle interface for ordering items from a restaurant, remedies this deficiency. Dickson was cited for its teaching of displaying a menu on an in-vehicle interface, allowing occupants to select items, and transmitting the order to the restaurant via a communications network. The combination of Maekawa’s navigation and location-based provider display with Dickson’s in-vehicle menu and ordering functionality allegedly renders the claims obvious.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Maekawa and Dickson to enhance the functionality of an in-vehicle navigation system. The primary motivations cited were to provide a more convenient user experience and to reduce congestion and wait times at restaurants by allowing customers to place orders before arrival. Petitioner argued that both references are in the analogous art of in-vehicle information systems, making the combination a common-sense implementation to provide additional, valuable services to consumers.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success. The proposed modification—adding menu information to the data associated with a landmark in Maekawa’s system—was presented as a straightforward extension of Maekawa’s existing data storage and retrieval architecture. Combining these known techniques to improve a similar product would have been a simple and predictable change.

Ground 2: Claims 5, 6, 17, and 18 are obvious over Maekawa, Dickson, and Spiegel.

  • Prior Art Relied Upon: Maekawa (Patent 6,040,824), Dickson (Patent 6,574,603), and Spiegel (Patent 6,629,079).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the Maekawa and Dickson combination from Ground 1 and adds Spiegel to teach the specific limitations in claims 5, 6, 17, and 18. Claims 5 and 17 require indicating previously ordered products in a "selected status," while claims 6 and 18 require the inclusion of "promotional information." Petitioner argued that Spiegel, which discloses a system for conducting electronic commerce, explicitly teaches these features. Spiegel describes displaying "past order" information in a "past orders box," directly mapping to the "selected status" limitation. Furthermore, Spiegel teaches customizing recommendations and advertising for users based on their purchasing history, which Petitioner equated with the claimed "promotional information."
    • Motivation to Combine: Petitioner argued that a POSITA, seeking to further improve the combined Maekawa/Dickson system, would have been motivated to incorporate the features from Spiegel. Adding a "past orders" feature would increase user convenience by allowing for quick re-ordering, saving time. Integrating promotional information, such as targeted recommendations, would allow service providers to conduct focused marketing, a clear commercial benefit. Petitioner asserted that adding these known e-commerce features to the in-vehicle ordering system would be a predictable use of prior art elements according to their established functions.
    • Expectation of Success: The petition contended that this combination would have been a predictable integration of known elements into a single device. Adding a past-order history and promotional recommendations would not fundamentally change the operation of the underlying navigation and ordering system but would simply add valuable, known features.

4. Key Claim Construction Positions

  • "selected status" (claims 5, 17): Petitioner proposed that this term be construed as "a representation reflecting a previous order of a product or service." This construction was based on the specification's disclosure of highlighting previously ordered menu items in a distinguishable color to help the user remember and re-select them. This construction is central to Ground 2, where Spiegel's "past orders box" is mapped to this limitation.
  • Means-Plus-Function Terms (claim 13): Petitioner argued that the terms "a device for sensing a location for the vehicle" and "a processor configured to provide for display..." should be interpreted as means-plus-function terms under §112, para. 6. Petitioner contended that terms like "device" and "processor" are generic structural terms that do not connote sufficiently definite structure for performing the claimed functions. For the purposes of the petition, Petitioner assumed the corresponding structure for the "device" is a GPS receiver.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’498 patent as unpatentable.