PTAB

IPR2019-01080

TripAdvisor LLC v. Mimzi LLC

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1. Case Identification

2. Patent Overview

  • Title: Phone Assisted Photographic Memory
  • Brief Description: The ’981 patent is directed to systems and methods for using verbal input on a mobile device, combined with the device’s location metadata, to search a social network database for information. The system then ranks the search results based on factors like user ratings and displays them to the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Roth in view of Fortescue - Claims 1-4 and 7-18 are obvious over Roth in view of Fortescue.

  • Prior Art Relied Upon: Roth (Application # 2007/0099636) and Fortescue (Application # 2008/0102856).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Roth disclosed the foundational system of the challenged claims: a mobile device that accepts a verbal query, converts it to text, combines it with the user’s location, and sends it to a search engine to retrieve and display results for nearby points of interest (e.g., restaurants), ordered by distance. However, Petitioner contended Roth did not explicitly teach ranking results using social network factors beyond distance. Fortescue was argued to supply these missing elements by teaching a system that searches databases using location and query data and specifically ranks the results using "social network information" and "relevancy information," including user ratings and reviews.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Roth and Fortescue to improve the user experience. A POSITA would have recognized the benefit of enhancing Roth’s basic location-based search with Fortescue’s more sophisticated ranking criteria (e.g., user ratings). This would allow users to find not just the nearest business, but the best-rated nearby business, a logical and predictable improvement.
    • Expectation of Success: Petitioner argued that incorporating Fortescue’s ranking methods into Roth’s system would be a simple matter for a POSITA, requiring no significant technical changes and falling well within the ordinary skill in the art.

Ground 2: Obviousness over Roth in view of Ng - Claims 1-4 and 7-18 are obvious over Roth in view of Ng.

  • Prior Art Relied Upon: Roth (Application # 2007/0099636) and Ng (Application # 2006/0123014).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented a similar argument to Ground 1, with Ng serving as the secondary reference. Petitioner again relied on Roth to teach the core voice-activated, location-based search system. Ng was asserted to disclose the claimed social network ranking functionalities. Specifically, Ng taught a mobile search system that ranks results based on multiple factors, including distance from the user, popularity (determined by mobile visits and traffic counts), and user ratings. Ng also explicitly disclosed that users could re-sort results based on these different criteria.
    • Motivation to Combine: Petitioner contended a POSITA would have been motivated to add Ng’s advanced, multi-factor ranking features to Roth’s system. As Ng explained, ranking based on distance alone was already known, and its teachings were directed at improving upon this by incorporating factors like popularity and reviews. A POSITA would see the clear benefit of this combination to provide more relevant and useful search results to the user.
    • Expectation of Success: The modification was presented as a predictable combination of known elements from the same field to achieve a more robust search tool, which a POSITA would have been capable of implementing with a reasonable expectation of success.

Ground 3: Obviousness over Roth Alone - Claims 1, 10, and 16 are obvious over Roth.

  • Prior Art Relied Upon: Roth (Application # 2007/0099636).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Roth alone rendered the independent claims obvious. Roth taught a system that receives a verbal query, uses location data, queries a database, and returns results ranked by physical distance. Petitioner pointed out that the ’981 patent itself, in claim 16, defines a "social network ranking factor" as comprising "at least a physical distance from the location." Therefore, Roth’s disclosure of ranking by distance met this key limitation. For other social factors like user ratings, Petitioner argued it would have been obvious from common sense for a POSITA to include them, as users searching for restaurants inherently desire to know which ones are well-regarded.
    • Motivation to Combine (with Common Sense): The motivation was based on common sense and the nature of the problem being solved. A POSITA implementing Roth’s system for restaurant searches would have immediately recognized that users want to know not only where restaurants are, but which ones are good. Adding the ability to sort or rank by user ratings was therefore an obvious and common-sense improvement.

4. Key Claim Construction Positions

  • Petitioner argued that no formal claim construction was necessary for the term "social network."
  • The petition asserted that the scope of "social network" features (e.g., database, records, ranking factor) was defined by the patent’s own dependent claims, which explicitly identified "user reviews," "user ratings," and "popularity" as examples.
  • Because the asserted prior art (especially Fortescue and Ng) disclosed ranking search results based on these very factors, Petitioner contended the references met the "social network" limitations without needing a formal construction of the term.
  • Petitioner further argued that under the printed matter doctrine, the "social network" descriptor merely described the informational content of the data and added no patentable functional or structural weight to the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 7-18 of the ’981 patent as unpatentable under 35 U.S.C. §103.