PTAB

IPR2018-00888

Facebook Inc v. Silver State Intellectual Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: GPS PUBLICATION APPLICATION SERVER
  • Brief Description: The ’117 patent describes a system for location-aware mobile communications. The system involves a personal communication device with GPS and wireless capabilities that connects to a server, which stores and manages personalized user data, including points of interest and location information, for access by the user and other individuals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Knowles, Narayanaswami, and Falkenhainer - Claims 1-9, 11-13, and 15-22 are obvious over Knowles in view of Narayanaswami and Falkenhainer.

  • Prior Art Relied Upon: Knowles (Patent 7,173,651), Narayanaswami (Patent 6,504,571), and Falkenhainer (Patent 5,930,801).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of these references teaches every limitation of the challenged claims. Knowles was argued to disclose the base system: a server receiving and storing messages (including images and location data) from a wireless device (e.g., a camera phone) for sharing with specified recipients via a network. Petitioner contended that Narayanaswami supplements this by teaching the recording of additional image parameters, such as "autofocus distance," which constitutes "data related to a proximity of the location" of the device. Falkenhainer was introduced to teach a server program that controls access to stored information. Specifically, Falkenhainer disclosed a server executing a program (e.g., a CGI script) to manage access to files based on user-defined permissions, thus providing the claimed functionality of allowing different people different access based on user identity.
    • Motivation to Combine: A POSITA would combine Knowles with Narayanaswami to enhance the Knowles system. Knowles identified a need for categorizing and sorting images, and Narayanaswami’s teaching of recording additional parameters like autofocus distance directly addresses this need, providing more context for each image. A POSITA would combine this system with Falkenhainer to solve a problem implicitly raised by Knowles. Knowles taught sharing information via hyperlinks but did not detail the access control mechanism. Falkenhainer provided a known, secure, and reliable method for managing access via hyperlinks using a server-side program, which would prevent stale links and provide granular, file-by-file security—a clear benefit for the Knowles system.
    • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success. The combination involved integrating conventional technologies, such as web servers, GPS-enabled devices, and CGI scripts, which were all well-understood and commonly used at the time. The integration was presented as a predictable application of known solutions to known problems.

Ground 2: Obviousness over Knowles, Narayanaswami, Falkenhainer, and Clapper - Claims 1-9, 11-13, and 15-22 are obvious over the combination of Knowles, Narayanaswami, and Falkenhainer in further view of Clapper.

  • Prior Art Relied Upon: Knowles (Patent 7,173,651), Narayanaswami (Patent 6,504,571), Falkenhainer (Patent 5,930,801), and Clapper (Patent 6,023,241).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Clapper to explicitly teach the claim element of storing "personalized data regarding points of interest." While Petitioner argued that using the voice annotation feature in Knowles for this purpose was already obvious, Clapper was cited to confirm this common-sense application. Clapper explicitly disclosed a tourist using a handheld device to take a photo of a landmark (the Washington Monument) and record a corresponding voice annotation describing that specific point of interest. This teaching directly mapped to the disputed claim limitation.
    • Motivation to Combine: Petitioner contended that a POSITA would be motivated to incorporate Clapper's teaching into the Knowles system for clear reasons. Both Knowles and Clapper described systems for use during vacationing or sightseeing. Since Knowles already disclosed a device with a microphone for voice annotations, a POSITA would have found it a simple and logical step to apply this feature to record descriptions of points of interest, as explicitly shown by Clapper. This would be a minor and natural modification to enhance the user experience for the intended vacationing use case.
    • Expectation of Success: The expectation of success was argued to be high, as this combination merely involved using an existing feature (voice recording) in the Knowles device for a common-sense purpose (annotating a photo) that was explicitly illustrated in an analogous system by Clapper. No technological obstacles would have been perceived.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 11-13, and 15-22 of Patent 8,892,117 as unpatentable under §103.