PTAB

IPR2015-01748

Google Inc v. Silver State Intellectual Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Communicating Data Including Global-Positioning-Encoded Information
  • Brief Description: The ’312 patent describes a portable, personal communication device (PCD) that integrates a GPS receiver, transceiver, display, and projection system into a single housing. The device is designed to request, receive, and display maps and other location-tagged data for a user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kleinschmidt and Dussell - Claims 1-7 and 10-15 are obvious over Kleinschmidt in view of Dussell.

  • Prior Art Relied Upon: Kleinschmidt (International Publication No. WO 96/35288) and Dussell (Patent 5,938,721).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kleinschmidt disclosed a personal communication device (a mobile phone) containing nearly all elements of independent claim 1, including a processor, display, transceiver, and a projection system integrated into a housing. However, Kleinschmidt did not explicitly disclose a GPS receiver. Dussell was cited to supply this missing element, as it taught a mobile personal digital assistant (PDA) that included a GPS receiver coupled to a microprocessor for location determination. The combination of these references was alleged to teach all elements of claim 1.
    • Motivation to Combine: A POSITA would combine Dussell's GPS capability with Kleinschmidt’s mobile device to provide valuable and well-known location-based services, such as navigation or location-based reminders. Petitioner asserted this was a logical integration, as both references related to portable, handheld electronic devices (a mobile phone and a PDA) and the combination would enhance the functionality of the primary device in a predictable way.
    • Expectation of Success: Petitioner contended that incorporating a GPS receiver into a mobile device was a predictable use of prior art elements according to their established functions and would have been a straightforward implementation for a POSITA.

Ground 2: Obviousness over Butnaru - Claims 1-7, 11-13, and 15 are obvious over Butnaru.

  • Prior Art Relied Upon: Butnaru (Patent 5,966,680).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Butnaru, as a single reference, rendered the challenged claims obvious. Butnaru disclosed a wearable communication device (e.g., glasses) that allegedly taught every element of claim 1. This included a microprocessor, a display, a GPS receiver, a radio data receiver functioning as a transceiver (described as a "cellular phone with modem"), and a projection system for projecting an image "out into space." All components were disclosed as being mounted on a common frame, satisfying the "housing" limitation. Butnaru also taught projecting map information and receiving third-party data like news and weather updates.
    • Motivation to Combine: As a single-reference ground, motivation to combine is not applicable. Petitioner argued Butnaru’s various disclosed embodiments, when read together, taught the claimed invention. For instance, Petitioner argued a POSITA would have understood that embodiments describing projection features would naturally be combined with embodiments describing GPS and communication features in an "enhanced version" of the device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Combining Kleinschmidt and Dussell with Phelan (International Publication No. WO 97/07467) to teach requesting and receiving information from a network of third-party servers (for claims 6-9).
    • Combining Kleinschmidt and Dussell with Allard (Patent 5,815,142) to teach a touch screen display (for claim 16).
    • Combining Butnaru with Phelan to strengthen the teachings of third-party network communication (for claims 6-9).
    • Combining Butnaru with Beller (Patent 6,046,712) to explicitly teach projecting video onto an external surface (for claim 10).

4. Key Claim Construction Positions

  • "map information": Petitioner argued this term was central to several dependent claims. Petitioner noted that a district court in related litigation construed the term narrowly to mean "data from which a map is constructed... but which does not include information such as restaurant listings, hours of operation, traffic reports, weather reports, or yellow page entries." Petitioner contended that the asserted prior art disclosed "map information" under both this narrower construction and its broader plain and ordinary meaning.

5. Key Technical Contentions (Beyond Claim Construction)

  • Printed Matter Doctrine: A recurring argument for dependent claims 3-7 and 10 was that the specific type of information being projected (e.g., "map information," "information related to a location," "information received by the transceiver," "video") should be given no patentable weight under the printed matter doctrine. Petitioner argued this information content was not functionally related to the underlying projection system, as the system could project any type of information. Therefore, Petitioner asserted that once the prior art established a projection system, the specific content projected could not serve as a patentable distinction.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-16 of the ’312 patent as unpatentable.