Unwired Planet, LLC v. Google Inc.

• Decision Date: 15 November 2016
• Docket Number: 2015-1811,2015-1810
• Citation: 841 F.3d 995,120 U.S.P.Q.2d 1593
• Parties: Unwired Planet, LLC, Appellant v. Google Inc., Appellee
• Court: U.S. Court of Appeals — Federal Circuit

841 F.3d 995

120 U.S.P.Q.2d 1593

Unwired Planet, LLC, Appellant

v.Google Inc., Appellee

2015-1810

2015-1811

United States Court of Appeals, Federal Circuit.

Decided: November 15, 2016

William M. Jay , Goodwin Procter LLP, Washington, DC, argued for appellant. Also represented by Eleanor M. Yost ; Brett M. Schuman , David Zimmer , San Francisco, CA.

Jon Wright , Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellee. Also represented by Michael V. Messinger , Deirdre M. Wells , Joseph E. Mutschelknaus ; Peter Andrew Detre , Munger, Tolles & Olson, LLP, San Francisco, CA; Adam R. Lawton , Los Angeles, CA.

Before Reyna, Plager, and Hughes, Circuit Judges.

Reyna, Circuit Judge.

Unwired Planet, LLC (“Unwired”) appeals from the final written decisions of the Patent Trial and Appeal Board (“Board”) in Inter Partes Review (“IPR”) No. 2014–00036 and Covered Business Method (“CBM”) Patent Review No. 2014–00005. Google Inc. v. Unwired Planet, LLC , IPR2014–00036, 2015 WL 1478653 (P.T.A.B. Mar. 30, 2015) (“IPR Final Decision ”); Google Inc. v. Unwired Planet, LLC , CBM2014–00005, 2015 WL 1519056 (P.T.A.B. Mar. 30, 2015) (“CBM Final Decision ”). For the reasons stated below, we affirm the Board's decision that the challenged claims of U.S. Patent No. 7,024,205 (the “ '205 patent”) are invalid as obvious in the IPR appeal and dismiss the CBM appeal as moot.

BACKGROUND

U.S. Patent No. 7,024,205

The '205 patent is entitled “Subscriber Delivered Location-Based Services.” It describes a system and method for providing wireless network subscribers (e.g., cell phone users) with prioritized search results based on the location of their mobile device (e.g., the nearest gas station). The specification describes how search results can be personalized for subscribers by taking into account, for example, “favorite restaurants; automobile service plans; and/or a wide variety of other subscriber information.” '205 patent col. 2 ll. 18–19.

In contrast, the specification also describes how search results can be ordered to give priority to “preferred service providers defined by the network administrator.” Id . at col. 8 ll. 35–36. This allows the network to generate revenue by charging service providers to be put on the preferred-service-provider list. Id. at col. 8 ll. 46–52. Preferred-provider status, in turn, leads to preferred providers' listings being prioritized in search results provided to subscribers.

Prioritization based on subscriber information and preferred provider status is independent of a subscriber's location; hence, it can lead to service providers that are actually farther away from the subscriber being given priority over service providers that are nearer. As a consequence, the results returned to the subscriber can order preferred providers and other service providers that are farther away higher than nearer service providers. The parties and the Board refer to this result as “farther-over-nearer ordering,” although that term is not used in the patent.

The sole independent claim of the '205 patent, claim 1, claims farther-over-nearer ordering in the context of wireless location-based services through a series of method steps. We treat claim 1 of the '205 patent as representative and dispositive because the parties do not argue that any limitations of the dependent claims alter the obviousness analysis in the context of the asserted prior art. Relevant here, it claims:

identifying, on said network platform, first and second service providers and associated first and second service provider information[,] ... wherein said first service provider is farther from [a] mobile unit than said second service provider; [and]

* * *

based on said stored prioritization information, prioritizing said first and second service provider information, wherein said first [farther] location information is assigned a higher priority than said second [nearer] location information; and

outputting both said first and second service information on said mobile unit based upon said step of prioritizing.

'205 patent, cl. 1, col. 10 ll. 27–57.

Asserted Prior Art

Five asserted prior art references are relevant to the issues addressed below.

The primary reference, U.S. Patent No. 6,108,533 (“Brohoff”), is entitled “Geographical Database for Radio Systems.” It describes a system using a radio telecommunication network in combination with a database of consumer services. Brohoff col. 2 ll. 18–25. The system provides the information about nearby consumer services in response to search requests. To do so, the system determines the location of the mobile device sending the search request and provides information about nearby, relevant consumer services from its database. Id . at col. 2 ll. 33–42. Brohoff teaches using a database where the consumer services are grouped by geographic zones and returning location-based search results grouped by these geographic zones. Id . at col. 2 ll. 48–58, col. 3 ll. 13–19.

One secondary reference is Wilbert O. Galitz's book The Essential Guide to User Interface Design: An Introduction to GUI Design Principles and Techniques (John Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses principles for interface design, including discussing the advantages of various techniques for ordering text information and menus. Id. at 120–21, 255–56. It also discusses the benefits and applications of several ordering techniques, including alphabetic order. Id . at 256. Galitz further suggests how the design principles it discusses may be applied in designing interfaces for future, specialized devices. Id . at 32.

Another secondary reference is Laura Rich's article IQ News: New Search Engine Allows Sites To Pay Their Way To Top .¹ It describes a search engine that orders search results “according to who paid the most for that particular keyword” in a search. It also discusses ranking sites “according to user and editor input.”

A fourth reference is European Patent No. EP 0647076 (“Remy”), entitled, “Cellular radio communication system with access to location dependent service, location retrieving module and server module for personal, location dependent services.” It describes a cellular radio communication system within a network of geographical cells that responds to a location-based query with the nearest result.

Finally, International Patent No. WO 97/22066 (“Hopkins”) is entitled “Method for computer aided advertisement.” It describes a computer-implemented method for presenting vendor advertising information to a user. Hopkins discusses how users can search the information alphabetically, by name, by address, or by geographical area.

Procedural History

Google Inc. (“Google”) filed the IPR and CBM petitions on appeal on October 8, 2013. In both proceedings, Google challenged claims 1–6 of the '205 patent. The Board consolidated the proceedings before the same panel and, on April 8, 2014, instituted both proceedings on all challenged claims. IPR2014–00036, 2014 WL 1410358 ; CBM2014–00005, 2014 WL 1396977. On March 30, 2015, the Board issued final written decisions invalidating all of the challenged claims as obvious.

In the IPR final written decision, the Board held the challenged claims were obvious on three grounds. IPR Final Decision , 2015 WL 1478653, at *18. In the first ground, claims 1–3, 5, and 6 were held obvious over Brohoff in view of Galitz. In the second ground, claim 4 was held obvious in further view of Rich. In the third ground, claims 1–6 were also held obvious over Remy in view of Hopkins.

In the CBM final written decision, the Board held that claims 1–6 were invalid for lack of written description under 35 U.S.C. § 112 ¶ 1.² CBM Final Decision , 2015 WL 1519056, at *17. Specifically, the Board determined that the specification lacked written description support for the claim term “prioritization information establishing a basis independent of proximity and independent of any subscriber preferences for prioritizing said first and second service provider information” and for farther-over-nearer ordering. Id . at *14, *16.

Unwired appeals from both final written decisions. We consolidated the appeals for briefing and argument. Order Consolidating Appeals, No. 2015–1810, ECF No. 2 (Fed. Cir. July 15, 2015). We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 319, 329.

STANDARD OF REVIEW

We review the Board's factual determinations for substantial evidence and its legal conclusion of obviousness de novo. In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1280 (Fed. Cir. 2015), aff'd, Cuozzo Speed Techs., LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016) ; Inphi Corp. v. Netlist, Inc. , 805 F.3d 1350, 1354 (Fed. Cir. 2015). “Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Kennametal, Inc. v. Ingersoll Cutting Tool Co. , 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quotation marks omitted).

DISCUSSION

A claim would have been obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (2006). In order to determine if a claim would have been obvious, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.” KSR Int'l Co. v. Teleflex Inc. , 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (quoting Graham v. John Deere Co. , 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) ). Given the differences between the prior art and the claimed invention, the claimed combination would have been obvious only if there was an apparent reason for a skilled artisan “to combine the known elements in the fashion claimed by the patent at issue.” KSR , 550...