Google LLC v. Mullen Industries LLC

1. Case Identification

• Case #: IPR2025-00021
• Patent #: 11,096,039
• Filed: October 8, 2024
• Petitioner(s): Google LLC, Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Mullen Industries LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Systems and Methods for Remotely Determining a Device's Location
• Brief Description: The ’039 patent relates to systems for remotely determining a wireless device's location. The system allows users to set access rights and configure location-based event notifications, such as receiving an alert when another user enters a specific geographic area or comes within a certain distance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sheha, Degnbol, and McNulty - Claims 1-6 and 13 are obvious over Sheha in view of Degnbol and McNulty.

• Prior Art Relied Upon: Sheha (Patent 7,333,820), Degnbol (WO 00/22860), and McNulty (Patent 7,146,407).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sheha, a system for providing real-time position information between telephone devices via a remote Online Database and Application Server (ODAS), teaches most limitations of claim 1. Sheha’s requirement for a username and password to access the ODAS was argued to meet the manual login limitation. Sheha’s disclosure of mobile devices sending updated position information to the ODAS was alleged to satisfy the recording of location on a remote system. To address the limitation of selecting from "at least three types of location-based events," Petitioner turned to Degnbol, which describes setting alerts based on multiple event types, including a user entering a pre-determined geographic area (region-based) and a user coming within a specified proximity (distance-based). McNulty was cited to teach conventional user interfaces for manually selecting from a list of options on a wireless device display.
  • Motivation to Combine: A POSITA would combine Sheha's location-sharing system with Degnbol's advanced alert triggers (e.g., region- and distance-based events) to provide users with more useful and specific notifications. Incorporating McNulty's user interface for selecting from a list was argued to be an obvious design choice to improve user experience and implement Degnbol's selectable alert options in a conventional manner.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Sheha already provided the core framework for location sharing and notifications. Integrating Degnbol’s well-understood alert triggers and McNulty’s standard user interface elements would involve only predictable software modifications.

Ground 2: Obviousness over Randall and De-Vries - Claims 1-8 and 10-19 are obvious over Randall in view of De-Vries.

• Prior Art Relied Upon: Randall (Application # 2004/0024846) and De-Vries (Patent 6,968,179).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Randall, which discloses a framework for wireless devices to access data services including location tracking, serves as the primary reference. Randall’s "i-server" was mapped to the "remote system," and its authentication process (using a PIN or password) was argued to teach the manual login limitation. Randall further taught that a user (Alice) grants access rights to another user (Bob) to see her GPS location, which is stored on the i-server. Randall’s "Old buddy finder" service, which alerts a user when a contact is within a defined proximity (e.g., the same city), was argued to teach a location-based event. De-Vries was introduced to supplement Randall by teaching at least three types of location-based events, including region-based ("same city/town/neighborhood"), distance-based (a specific geographic distance threshold), and context-based ("home or place of work"). De-Vries also disclosed a graphical user interface for manually pre-selecting these event types from a list.
  • Motivation to Combine: A POSITA would be motivated to modify Randall's "Old buddy finder" service with the more granular and user-configurable proximity rules taught by De-Vries. This combination would provide users with greater control over the alerts they receive, making Randall's location-tracking service more flexible and powerful, which was a known goal in the art.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these systems, as both relate to location-based notifications for mobile devices. Implementing De-Vries's specific rule-setting parameters into Randall's existing alert framework would be a straightforward integration of known software concepts.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including:
  • Claims 7-9 and 19 over the Sheha/Degnbol/McNulty combination in view of Tobin (Application # 2003/0074209) to add teachings on displaying maps and travel time.
  • Claims 10-12 over the Sheha/Degnbol/McNulty combination in view of McDonnell (Patent 6,813,499) to add teachings on filtering location data for privacy.
  • Claims 14-18 over the Sheha/Degnbol/McNulty/McDonnell combination in view of Obradovich (Patent 6,133,853) to add selectable security levels for location access.
  • Claim 9 over the Randall/De-Vries combination in view of Tobin to add estimated travel time.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is inappropriate. It asserted that the petition presents compelling evidence of unpatentability, litigation investment is minimal as the Markman hearing is months away, and there is limited issue overlap because the petition challenges all 19 claims while only six are asserted in the parallel district court litigation. Petitioner also argued that since it is not the same party as in a prior IPR (IPR2023-00096, filed by Apple and terminated post-institution), denial under General Plastic is not justified.
• Petitioner further argued that denial under §325(d) is unwarranted. The primary references and combinations in the petition were not of record during prosecution. Furthermore, the new grounds based on Randall were not part of the terminated Apple IPR and thus warrant institution independently.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-19 of the ’039 patent as unpatentable.