Facebook Inc v. Silver State Intellectual Technologies Inc

1. Case Identification

• Case #: IPR2018-00889
• Patent #: 7,343,165
• Filed: April 3, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Silver State Intellectual Technologies, Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: GPS Publication Application Server
• Brief Description: The ’165 patent discloses a system for sharing user information from mobile devices. The system involves a personal communication device with GPS capabilities that sends location and other user-provided data to a central server, which stores the data and provides it to authorized requesters.

3. Grounds for Unpatentability

Ground 1: Obviousness over Knowles, Narayanaswami, and Falkenhainer - Claim 1 is 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 argued that Knowles taught the foundational system of the claimed method. Knowles described a wireless device (e.g., a digital camera phone) that transmits digital photos, location coordinates, and other data to a server, where it is stored in a user-specific account accessible over a network. The server also receives and stores a user-created address book of potential recipients. To meet the limitation of “determining a geographic location of the user,” Petitioner asserted that Narayanaswami taught using a server to process received GPS coordinates to determine a meaningful location (e.g., "Yellowstone National Park") for purposes of indexing and searching images. To meet the limitations related to an “access list,” Petitioner asserted that Falkenhainer taught a robust, permission-based system for controlling access to files stored on a server, improving upon the simpler recipient list in Knowles. Falkenhainer explicitly described using an access list to check a requesting user’s permissions before providing a file.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to improve the Knowles system. A POSITA would have been motivated to incorporate Narayanaswami’s location-determination functionality to make the stored photo data in Knowles more useful and searchable by location, a recognized need in the art. Similarly, a POSITA would integrate Falkenhainer’s detailed access control methods to address Knowles’ acknowledged need for secure sharing, providing a more robust way to control access to messages shared via hyperlinks than Knowles described.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success, as the combination involved integrating known server-side software features for data processing and access control into an existing, analogous server-based system using conventional internet technologies.

Ground 2: Obviousness over Knowles, Narayanaswami, Falkenhainer, and Clapper - Claim 1 is obvious over the combination in Ground 1 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 relied on the same combination and mapping as Ground 1, with the addition of Clapper to further support the limitation of receiving and storing “additional data… being related to the geographic location of the user.” While Petitioner argued that Knowles itself taught this feature (e.g., an audio message recorded during a vacation trip), it introduced Clapper to confirm the common-sense notion. Clapper explicitly disclosed a tourist using a handheld device to capture a digital image of a landmark (the Washington Monument) and store it in association with an audio description of that landmark and its GPS coordinates.
  • Motivation to Combine: Petitioner argued that Clapper provided a clear, common-sense example of how the voice annotation feature already present in the Knowles device would be used. A POSITA implementing the Knowles system for vacationers would naturally and obviously use the microphone to record voice notes about the specific points of interest being photographed. Clapper and Knowles were analogous references disclosing similar systems for tourists, reinforcing the motivation to apply Clapper's specific teachings to Knowles.
  • Expectation of Success: Petitioner argued success was reasonably expected, as adding this functionality involved no technological hurdles. It represented a predictable use of existing features (microphone, GPS, storage) described in the primary reference.

4. Key Claim Construction Positions

• Petitioner contended that no terms in claim 1 required explicit construction and that the claim terms, though broad, were simple.
• For the term "an access list of possible requesters of the data and the additional data," Petitioner noted that in a prior IPR for the ’165 patent (IPR2014-00159), the Board construed the term as “a series of possible requesters who have the right to access, or make use of, the data and the additional data.” Petitioner argued that the cited prior art, particularly the combination with Falkenhainer, fully disclosed an "access list" under this construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that a new inter partes review (IPR) was warranted despite a Final Written Decision (FWD) in a previous IPR on the same patent (IPR2014-00159). Petitioner asserted that the prior art references and the motivations to combine them in the present petition were entirely different from those asserted in the earlier proceeding, thereby avoiding a discretionary denial under 35 U.S.C. §325(d).

6. Relief Requested

• Petitioner requested institution of an IPR for claim 1 of the ’165 patent and a final determination that the claim is unpatentable.