Square, Inc.v.Unwired Planet LLC

Patent Trial and Appeal Board

Oct 30, 2015

13153204 (P.T.A.B. Oct. 30, 2015)

Trials@uspto.gov Paper No. 32
571-272-7822 Entered: October 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SQUARE, INC.,
Petitioner,

v.

UNWIRED PLANET LLC,
Patent Owner.
____________

Case IPR2014-01165
Patent 8,275,359 B2
____________

Before MICHAEL W. KIM, JUSTIN T. ARBES, and JASON J. CHUNG,
Administrative Patent Judges.

KIM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
A. Background
Square, Inc., (“Petitioner”) filed a Petition (“Pet.”) requesting inter partes
review of claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 of U.S. Patent No.
8,275,359 B2 (“the ’359 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319.
Paper 1. Unwired Planet LLC (“Patent Owner”) filed a Preliminary Response
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(“Prelim. Resp.”). Paper 6. On January 14, 2015, we instituted an inter partes
review of claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 on certain grounds of
unpatentability alleged in the Petition. Paper 7 (“Dec.”). After institution of trial,
Patent Owner filed a Patent Owner Response (Paper 19; “PO Resp.”) and
Petitioner filed a Reply (Paper 21; “Reply”). An oral hearing was held on
September 14, 2015. Paper 31 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
determine that Petitioner has shown by a preponderance of the evidence that all
claims for which trial is instituted, claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and
35, are unpatentable.
B. The ’359 Patent
The ’359 patent relates generally to notification systems for use in a wireless
network that use network resources and infrastructure to provide location specific
notifications. Ex. 1001, 1:19–21. According to the ’359 patent, an exemplary
wireless user notification system includes notifying entity 100, notification server
110, and mobile device 170. Ex. 1001, 4:28–33. Mobile device 170 initiates a
location fix (i.e., determination of its geographic position) using a pre-programmed
algorithm. Ex. 1001, 5:3–4. Mobile device 170 periodically performs a location
fix such that notification server 110 maintains current information about an
approximate location of mobile device 170. Ex. 1001, 5:4–7.
At some point in time, notifying entity 100 may send a notification request
to notification server 110, for example, in response to an occurrence of an event of
which users are to be notified, such as a fire, a chemical spill, or a hostage
situation. Ex. 1001, 5:44–48. Notifying entity 100 also identifies an area in which
users are to be notified. Ex. 1001, 5:48–50. The notification request also may
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include a content of the notification and an urgency level. Ex. 1001, 5:55–57.
Notification server 110 then identifies which mobile devices 170 are registered in
the notification area. Ex. 1001, 5:66–6:1. Notification server 110 receives a list of
mobile devices 170 that are currently registered in regions that overlap the
notification area. Ex. 1001, 6:32–35. Notification server 110 then sends
notification messages to mobile devices 170 in the notification area. Ex. 1001,
6:46–50.
C. Related Matters
Petitioner identifies the following related district court proceeding between
Petitioner and Patent Owner that involves the ’359 patent: Unwired Planet LLC v.
Square, Inc., Case No. 13-CV-00579 (D. Nev.). Pet. 2.
D. Illustrative Claim
Independent claim 8 is reproduced below:
8. A computer-implemented method for receiving a
notification message of an event, the method comprising:
at a wireless device having one or more processors and
memory:
using an application on the wireless device to determine its
current location data and reporting the current location
data of the wireless device to a notification server via a
wireless communication network in accordance with a set
of location update instructions provided by a remote
server;
receiving a notification message from the notification server via
the wireless communication network, the notification
message including a piece of content associated with the
event; and
displaying the piece of content associated with the event to a
user of the wireless device.
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E. Prior Art References Applied by Petitioner and Instituted
Grounds of Unpatentability
The Board instituted a trial concerning the patentability of claims 8–12, 14,
15, 17, 25–29, 31, 32, 34, and 35 on the basis of the following items of prior art:
(“Goldberg”) US 5,742,509 Apr. 21, 1998 Ex. 1006
(“Manz”) US 7,764,185 B1 July 27, 2010 Ex. 1008
1

(“Othmer”) US 2010/0269059 Oct. 21, 2010 Ex. 1005
(continuation of application 10/916,960 filed Aug. 11, 2004)
Specifically, the Board instituted a trial on claims 8–12, 14, 15, 17, 25–29,
31, 32, 34, and 35 of the ’359 patent based on the following specific grounds of
unpatentability (Dec. 23):
Reference(s) Basis Challenged Claims
Othmer and Goldberg § 103(a)
8–12, 14, 15, 17, 25–29, 31,
32, 34, and 35
Manz § 102(e) 8–12, 25–29, and 35
II. ANALYSIS
A. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given its
broadest reasonable construction in light of the specification of the patent in which
it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793

1
Manz was filed on July 19, 2006, and issued on July 27, 2010. Manz claims
priority to Provisional App. No. 60/764,384, which was filed on January 26, 2006
(Ex. 1009; “Manz Provisional”). The ’359 patent was filed on June 15, 2007, and
claims priority to Provisional App. No. 60/814,254 (“the ’254 application”), which
was filed on June 16, 2006. In its Patent Owner Response, Patent Owner does not
challenge that Manz is prior art to the ’359 patent.
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F.3d 1268, 1278–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly
approved the broadest reasonable interpretation standard in enacting the AIA.”).
Under the broadest reasonable construction standard, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary skill
in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be
set forth in the specification with reasonable clarity, deliberateness, and precision.
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to
read a particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with
these principles.
1. “set of location update instructions”
Each of independent claims 8, 25, and 35 recite using “an application on the
wireless device to determine its current location data and reporting the current
location data of the wireless device . . . in accordance with a set of location update
instructions.” Petitioner proposes a claim construction for “location update
instructions” as “instructions on the wireless device that control a location updating
process.” Pet. 9–10 (citing Ex. 1001, 3:26–29). In the Preliminary Response,
Patent Owner countered that Petitioner’s proposed construction is too narrow and
uninformative, and that a proper construction of “set of location update
instructions” is “multiple executable commands for updating a location.” Prelim.
Resp. 14–21 (citing Ex. 1001, 3:16–19, 3:26–29, 9:3–6; Ex. 2001, 988, 1752;
Ex. 2002, 627, 1077; Ex. 2003, 276; Ex. 2004, 245; Ex. 2005, 346). In the
Decision on Institution, we adopted neither proposed interpretation, and instead
preliminarily construed “set of location update instructions” as “multiple
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instructions for updating a location of a wireless device.” In the Patent Owner
Response, Patent Owner asserts the following in a footnote:
While Patent Owner maintains its position that the broadest
reasonable construction of “set of location instructions” in light of the
specification is “multiple executable commands for updating a
location” for the reasons set forth in its Preliminary Response (Paper
No. 6), for purposes of this proceeding, Patent Owner applies the
Board’s construction.
PO Resp. 12 n.2. In other words, Patent Owner does not set forth further assertions
for us to consider as to how the term should be interpreted. Petitioner also does not
challenge the aforementioned preliminary construction. Accordingly, in the
absence of such assertions, and after reconsidering anew the basis for our
preliminary construction, we determine that construing “set of location update
instructions” as “multiple instructions for updating a location of a wireless device,”
is correct for the reasons set forth in the Decision on Institution (Dec. 5–10), and
thus adopt it for the purposes of this proceeding.
2

2. whether the recited “set of location update
instructions” must influence the recited “determine”
operation
In their assertions concerning claim construction, as well as application of
the prior art, Patent Owner asserts that the recited “set of location update
instructions” must influence the recited “determine” operation. PO Resp. 12, 38–
40, 49–54 (citing Dec. 7). Petitioner disagrees, asserting that under a broadest
reasonable construction, the recited “set of location update instructions” is only

2
In a related district court proceeding, the district court construed “location update
instructions.” Ex. 2007, 14–16. We have considered this construction in rendering
our construction. Insofar as they may differ, we note respectfully that the parties
have advanced different assertions in the two proceedings, as the claim
construction standard applied by the district court differs from that applied by the
Board.
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required to influence the recited “reporting” operation, and not the recited
“determine” operation. Reply 1–3. We agree with Patent Owner.
Beginning our analysis with the claim limitation of “using an application on
the wireless device to determine its current location data and reporting the current
location data of the wireless device . . . in accordance with a set of location update
instructions,” the express language does not assist us definitively in deciding
whether “set of location update instructions” must influence the recited
“determine.” Although under a most natural reading, it appears that “set of
location update instructions” is applicable to the entire claim limitation, which
would include the “determine” operation, it is plausible that under a broadest
reasonable construction, the recited “set of location update instructions” is only
required to influence the immediately adjacent “reporting” operation.
When we consult the Specification, however, we conclude that the broadest
reasonable construction, in view of the Specification, is that “set of location update
instructions” must influence the recited “determine” operation. For example, the
Specification in the “Brief Summary of the Invention” section discloses that
“[l]ocation data for the wireless device is obtained in accordance with the set of
instructions. The location data is provided to a notification server.” Ex. 1001,
3:28–30. As the second sentence corresponds to the recited “reporting” operation,
the set of instructions in the first sentence would only apply to what would
correspond to the recited “determining” operation. In another example, the
Specification discloses that “[a]t step 320, the mobile device executes the
algorithm to determine its location by a location determination method indicated in
the algorithm and provides the corresponding location data to the notification
server.” Ex. 1001, 9:3–6. In the Decision on Institution, we preliminarily
determined that “set of location update instructions” is broader than, and thus
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encompasses, algorithms, and after reconsidering anew the basis for our
preliminary construction, we determine that our previous determination was
correct. Dec. 7–9. Here, the exemplary algorithm clearly applies to the location
determination method, with the “reporting” operation only performed
subsequently. See Ex. 1001, 3:16–20; 5:1–10. Indeed, we are unable to identify
any portion of the Specification where any set of instructions or algorithm is shown
definitively as not influencing the “determine” operation. Accordingly, we
interpret the claims to require that the “set of location update instructions” must
influence the recited “determine” operation.
3. whether setting a frequency at which a location is
determined satisfies the limitation that the recited “set of
location update instructions” influence the recited
“determine” operation
In their assertions concerning application of the prior art, Patent Owner
asserts that setting a frequency at which a location is determined does not satisfy
the recited “set of location update instructions” influencing the recited “determine”
operation. PO Resp. 38–40, 49–54. Specifically, Patent Owner asserts that with
respect to the prior art, the location is determined by off-the-shelf, self-contained
devices with their own programming that are unaffected by what is asserted to
correspond in those references to the recited “set of location update instructions,”
and that updating sending times and frequencies alone is insufficient to be
considered influencing those devices. Id. Petitioner disagrees. Reply 3–4, 8–12.
We agree with Petitioner.
As an initial matter, we note that the claim limitation at issue does not
specify the manner or degree in which the “set of location update instructions”
needs to influence the “determine its current location data” limitation. The claims
only require determining current location data “in accordance with” the set of
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location update instructions. Accordingly, under a broadest reasonable
construction, any influence on the “determine” operation would appear to suffice,
including frequency. The Specification supports our conclusion. For example, the
“Brief Summary of the Invention” section of the Specification discloses that “[a]
location data determination algorithm is provided to a wireless device, where the
algorithm determines a frequency at which the device interacts with network
elements to determine its location.” Ex. 1001, 3:16–20. As set forth above in Parts
II.A.2 and II.A.3, we determine that “set of location update instructions” is broader
than, and thus encompasses, algorithms. Here, there is a clear and overt
connection between “algorithm,” “frequency,” and “determine.” In another
example, the Specification discloses that “[u]pon registration, the mobile device
170 performs a location fix and provides its location information to the notification
server. The notification server 110 downloads an algorithm to the mobile device
170 to indicate how often the mobile device 170 is to perform subsequent location
fixes.” Ex. 1001, 4:63–67. Again, while the words differ slightly, it is clear that
the algorithm sets the frequency of location determination operations on the mobile
device itself, in a manner separate from the reporting operations set forth in other
parts of the same paragraph. To be sure, the Specification also discloses additional
ways in which the “set of location update instructions” influences the “determine”
operation, for example, “determining [the] method to execute in order to obtain or
trigger the location fix.” Ex. 1001, 5:1–3; see also Ex. 1001, 9:3–6. Those
embodiments, however, are exemplary, not recited in the claim, and thus do not
preclude frequency from also corresponding to the “set of location update
instructions.” In re Van Geuns, 988 F.2d at 1184.
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4. “displaying the piece of content associated with
the event to a user of the wireless device”
In their assertions concerning application of the prior art, Patent Owner
asserts that “displaying the piece of content associated with the event to a user of
the wireless device,” as recited in each of independent claims 8, 25, and 35,
requires more than just anything that could be considered information. PO Resp.
41–49. Petitioner disagrees that the claims should be construed so narrowly.
Reply 19–21. We agree with Patent Owner. The claims recite “displaying the
piece of content.” The Specification discloses delivering content in the form of
messages to be read or viewed, such as Short Messaging Service (“SMS”)
messages, Amber Alerts, and Multimedia Message Services (“MMS”) messages.
Ex. 1001, 1:44–48, 2:2–4, 2:10–13, 2:28–29, 3:41–43, 3:54–56, 4:30, 4:40–48,
6:53, 7:36–39, 8:25–36, 10:54–56, 12:16–22. Applying the broadest reasonable
interpretation in light of the Specification, we construe “displaying the piece of
content” as “displaying text or multimedia to be read or viewed.” At oral
argument, Patent Owner agreed with this construction. Tr. 63:10–15.
Furthermore, independent claims 8, 25, and 35 each recite “receiving a
notification message . . . including a piece of content associated with the event.”
Thus, the content received by the user device is what must be displayed.
Accordingly, we construe “displaying the piece of content associated with the
event to a user of the wireless device,” in the context of the surrounding claim
limitations, as “displaying text or multimedia to be read or viewed that is
associated with the event received by a user of the wireless device.”
B. Claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 as Obvious
over Othmer and Goldberg
Petitioner asserts that claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35
would have been obvious over Othmer and Goldberg. In support of its assertion,
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Petitioner presents analyses of Othmer and Goldberg, as well as a Declaration of
James A. Proctor, Jr. Pet. 10–27 (citing Exs. 1005, 1006, 1011). Patent Owner
disagrees with Petitioner’s assertions, and cites primarily a Declaration of Dr.
Sandeep Chatterjee. PO Resp. 17–40 (citing Exs. 1006, 1011, 2013)
3
.
1. Othmer (Ex. 1005) and Goldberg (Ex. 1006)
Othmer relates to providing location-based, context-aware content and
displaying such content, from location-based ticker server 300, within a ticker on a
user device. Ex. 1005 ¶¶ 5, 52.
Goldberg relates to a base station including base station software (“BSS”)
that can configure and control an “intelligent position locating and communicating
device” called a “watson device” installed on a mobile unit. Ex. 1006, 3:19–24,
3:38–40. Goldberg discloses a BSS is able to communicate with the watson
device, and as a result of the communication, is able to receive location data from
the watson device. Ex. 1006, 12:60–64. The initial sending time and frequency of
transmission can also be programmed externally by base station 28. Ex. 1006,
12:19–21. Alternatively, sending time may include transmitting position data
when the mobile unit reaches a certain geographical boundary. Ex. 1006, 12:21–
26. A BSS also has a capability to change a configuration of a controller inside the
watson device, such as sending times and frequency of data transmission by the
watson device. Ex. 1006, 13:2–8.

3
We note that Dr. Chatterjee’s testimony in support of Patent Owner’s assertions
on this ground of unpatentability largely tracks the language of the Patent Owner
Response. Ex. 2013 ¶¶ 63–89. Accordingly, our analysis below addresses together
the assertions made in the Patent Owner Response and the corresponding portion
of Dr. Chatterjee’s Declaration.
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2. Level of Ordinary Skill in the Art
“Section 103(a) forbids issuance of a patent when ‘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.’” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). The parties agree that a person
of ordinary skill in the art would have had “a Bachelor of Science degree in
Electrical/Computer Engineering or Computer Science (or related subjects) plus
relevant academic or professional experience.” See PO Resp. 11 (citing Ex. 2013
¶ 22; Ex. 2011, 24:17–25:15). Based on the record presented, including our review
of the ’359 patent and the types of problems and solutions described in the
’359 patent and cited prior art, we concur with the parties’ assessment of the level
of ordinary skill in the art and apply it for purposes of this Decision.
3. Analysis
After considering the Petition, Patent Owner Response, Reply, and all
supporting evidence, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and
35 are unpatentable as obvious over a combination of Othmer and Goldberg.
Petitioner sets forth how each and every claim limitation is disclosed or suggested
by a combination of Othmer and Goldberg, in essence, combining location-based
ticker server 300 of Othmer and base station 28 of Goldberg into a single system,
such that base station 28 of Goldberg can change a configuration of the user device
of Othmer. Pet. 10–27. Additionally, Petitioner provides the following rationale
for combining Othmer and Goldberg.
A person of ordinary skill in the art would have been motivated to
combine Othmer with Goldberg to result in an improved mobile
communications device that reports its location according to
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configuration provided by a remote server. (Ex. 1011, ¶ 156–157,
158–159). Each reference is directed to a system for determining,
communicating, and storing the locations of mobile communications
devices in a network of devices, so the references are in the same field
of endeavor and the problems encountered by designers of such
devices would overlap. (Ex. 1011, ¶ 160). Goldberg discusses a
device and protocol for communicating the information necessary to
track mobile devices in the network, while Othmer focuses on an
application that is achievable with such a configuration (displaying
location-based content in a “ticker” on the mobile device). (Ex. 1011,
¶ 161–164). Both disclosures teach tracking the location of mobile
devices, so the incorporation of Goldberg’s infrastructure techniques
(including its discussion of altering the reporting frequency of the
mobile devices) into Othmer’s practical application (mobile location-
aware tickers) would predictably result in an improved wireless
device, with each reference contributing its known properties and
advantages. (Ex. 1011, ¶ 165). Othmer contains an express teaching
that “positioning techniques known in the art,” including the
techniques described in Goldberg, can be used in its system. (Ex.
1005, ¶ 51, Ex. 1011, ¶ 166). Moreover, Goldberg expressly discloses
that its “watson” device can use a location determination in the form
of GPS system and a communication means in the form of a cellular
telephone (Ex. 1006, 3:53-56, 4:8-11), which are precisely the
examples given in Othmer as the hardware to implement its ticker
system. (Ex. 1005, ¶ 33, 30, Ex. 1011, ¶ 167). Accordingly, the
hardware building blocks of the two systems are the same, further
evidencing that Othmer’s system could be readily be adapted to
incorporate Goldberg’s hardware considerations without substantial
modification. (Ex. 1011, ¶ 168, 170). A person of ordinary skill
could have used Goldberg’s location transmission techniques in
Othmer’s ticker system to provide an enhanced alert distribution
system, with an expectation of success. (Ex. 1011, ¶ 169, 171).
Accordingly, the combination of Othmer and Goldberg is proper.
Pet. 13–14.
Patent Owner asserts the following: “[d]espite his conclusion (which is
incorrect), Mr. Proctor articulates no credible motivation why one of ordinary skill
would combine Othmer with Goldberg. In fact, the word ‘motivation’ appears
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nowhere within his declaration.” PO Resp. 25. To the extent Patent Owner is
looking for the explicit word “motivation,” application of any such rigid, formulaic
test for obviousness was foreclosed by the Supreme Court’s decision in KSR, 550
U.S. 398. To that end, the aforementioned portion of the Petition cites to several
paragraphs of Mr. Proctor’s Declaration, the content of which readily can be
characterized as providing a “motivation to combine.”
Patent Owner asserts further that Petitioner’s proffered combination is
improper because Goldberg is non-analogous art to the ’359 patent. Specifically,
Patent Owner asserts that the claimed invention is directed to providing
notifications to a wireless device, while Goldberg is a communication link that
merely transmits location data. We disagree with Patent Owner. A reference is
analogous art to the claimed invention if: (1) the reference is from the same field
of endeavor as the claimed invention (even if it addresses a different problem); or
(2) the reference is reasonably pertinent to the problem faced by the inventor (even
if it is not in the same field of endeavor as the claimed invention). See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, the preambles of independent
claims 1 and 8 recite that they are directed to notifying wireless devices of an
event. Furthermore, contrary to Patent Owner’s assertion that Goldberg is a
communication link that merely transmits location data, Goldberg expressly
discloses transmitting commands from a base station to a watson device. Ex. 1006,
4:34–40, 13:26–35. We are persuaded that Goldberg is analogous art to the
claimed invention under either prong. Moreover, as discussed at oral hearing,
location determination is unquestionably a major part of the claimed invention, for
example, by express recitations in the independent claims of “current location
data” and “location update instructions.” Patent Owner agrees that Goldberg is
directed to location determination. See Tr. 50:11–52:14. At a minimum, we
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determine that this satisfies the second prong of the analogous arts analysis,
namely, that both the claimed invention and Goldberg are directed to problems
associated with location determination.
Patent Owner asserts additionally that one of ordinary skill would not have
modified Othmer to include the location-reporting infrastructure of Goldberg,
because Othmer already has location-reporting capability, and so such a
modification would be redundant. PO Resp. 30–32. Patent Owner’s assertions are
misplaced, for we do not understand Petitioner as advocating a wholesale
replacement or duplication of the location-reporting infrastructure of Othmer, but
only that the location-reporting infrastructure of Othmer could have been updated,
because Goldberg discloses that updating location-reporting infrastructure was
known generally. See, e.g., Ex. 1011 ¶ 170 (“Using Goldberg’s teachings
regarding configuring and altering reporting frequency for location reporting
would primarily affect the frequency with which the mobile communication device
101 of Othmer reports its location to the location tracker 312. . . . The remainder of
Othmer’s system would remain largely (if not entirely) unchanged. Specifically,
the determination of which mobile communication devices 101 are in an
appropriate location for receipt of ticker content would not change even if the
mobile communication devices 101 report their locations at different (or even
changing) frequencies”) (emphasis added).
Furthermore, we are unpersuaded that a wholesale replacement or
duplication of the location-reporting infrastructure of Othmer with that of
Goldberg would have been required in order to realize that updating capability, as
the software for the location-reporting infrastructure of Othmer was uploaded into
the system originally in some manner, and we are unpersuaded that such a manner
could not also have been used for updates. See, e.g., Ex. 1005 ¶ 10 (“[w]hile the
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invention is applicable to immobile or ‘wired’ communication devices including
computer systems, landline telephones, televisions, and set top boxes, its
application is particularly well-suited to mobile wireless communication devices
(referred to hereinafter as ‘mobile communication device(s)’ or ‘mobile device(s)’)
such as laptop and notebook computers, cellular telephones, PDAs, and any other
mobile communication device having a display device and enabled to wirelessly
receive data”).
Patent Owner asserts also that Mr. Proctor’s proffered rationale for
modification of “conserving network resources” is inadequate, because modifying
Othmer to include the location-reporting infrastructure of Goldberg would involve
many technical challenges, the result of which would be anything but “conserving
network resources.” PO Resp. 27–31. Patent Owner’s assertions are misplaced for
the same reasons as set forth in our previous paragraphs.
Patent Owner asserts generally that there would have been many technical
challenges to implementing the proffered combination of Othmer and Goldberg,
and that those technical challenges would have weighed heavily against making
Petitioner’s proffered modifications. Id. at 32–34. Patent Owner’s assertions are
unpersuasive. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421 (2007). Accordingly, the fact that there
may be technical challenges to implementing a proffered combination of two
references is unavailing if the technical challenges would have been able to have
been solved by one of ordinary skill. To that end, we are persuaded that one of
ordinary skill, as defined above, would have been able to overcome those technical
challenges, for the same reasons as set forth in our analysis of
replacement/duplication. See Ex. 1011 ¶¶ 5, 156–71.
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Insofar as Patent Owner may be arguing as to any technical challenges
associated specifically with modifying Othmer in view of Goldberg, we note that
the obviousness inquiry does not ask “whether the references could be physically
combined but whether the claimed inventions are rendered obvious by the
teachings of the prior art as a whole.” In re Etter, 756 F.2d 852 (Fed. Cir. 1985)
(en banc); see also In re Keller, 642 F.2d 413 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference”). To that end, our
determination is the same as that set forth above. Indeed, we note that at a high
level, Petitioner asserts, with support from Mr. Proctor’s Declaration, that Othmer
and Goldberg each disclose roughly analogous hardware for sending information
wirelessly based on location, i.e., a sending structure that transmits information
wirelessly to a receiving structure based on the receiving structure’s location. Pet.
13–14 (citing Ex. 1011 ¶¶ 156–71). Given this baseline, we are unpersuaded that
the references create so many technical challenges, that making the proffered
modifications would have been beyond the abilities of one of ordinary skill.
Patent Owner asserts further that Mr. Proctor’s testimony concerning
modifying Othmer in view of Goldberg is not credible, because it is based on
improper hindsight. PO Resp. 34–37. We disagree. Mr. Proctor’s testimony
concerning the proposed modification is at paragraphs 158 to 171 of his
Declaration, and Mr. Proctor’s testimony has factual underpinnings in Othmer and
Goldberg themselves, as indicated by the numerous citations to those references.
Patent Owner points us to testimony from Mr. Proctor’s deposition that allegedly
shows his admission of using improper hindsight reasoning. Id. at 34–35 (citing
Ex. 2011, 132:14–133:11). We agree with Petitioner that the cited testimony is
taken out of context and, in any case, is vastly outweighed by Mr. Proctor’s other
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testimony concerning the proposed modification of Othmer in view of Goldberg,
which is adequately supported by the references, and we determine is credible and
persuasive. See Reply 18–19.
Patent Owner asserts further that the long time period between the public
availability date of Goldberg and Othmer, and subsequently the long time period
between the public availability date of both references and claimed invention,
indicates that the proffered combination is improper hindsight, and thus that the
claimed invention is non-obvious. PO Resp. 36–37. We are unpersuaded. Patent
Owner cites to W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.
Cir. 1983) in support of their position, however, that case can be distinguished
because there, “no prior art reference or references of record convey[ed] or
suggest[ed] that knowledge” (emphasis added). By contrast, we determine that
Petitioner’s proffered modification has an adequate basis in each of Goldberg and
Othmer. Patent Owner does not cite, and we are unaware of, any authority that
indicates that the time periods between public availability dates of references and
the claimed invention are factors to be weighed in an obviousness analysis.
Moreover, even if it were a factor, we determine that it would be entitled to little
weight because determinations of obviousness are exercises in knowledge, and we
are unpersuaded that time diminishes knowledge. See Custom Accessories, Inc. v.
Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of
ordinary skill is a hypothetical person who is presumed to be aware of all the
pertinent prior art”). Furthermore, in the instant proceeding, we determine that any
such time factors are outweighed substantially by Mr. Proctor’s Declaration,
factual underpinnings for which are supported adequately by explicit citations to
Othmer and Goldberg.
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Patent Owner asserts additionally that Goldberg does not disclose or suggest
“using an application on the wireless device to determine its current location and
reporting the current location data . . . in accordance with a set of location update
instructions,” as recited independent claim 8, because Goldberg discloses using
devices that are unaffected by what is asserted to correspond in Goldberg to the
recited “set of location update instructions,” and that updating sending times and
frequencies alone are insufficient. PO Resp. 38–40. Independent claims 25 and 35
recite similar claim limitations. As set forth above in our claim construction
analysis discussed supra in Part II.A, we are unpersuaded that updating sending
times and frequency of operations cannot correspond properly to the
aforementioned claim limitation.
Patent Owner asserts also that even if we disagree with Patent Owner’s
claim construction, that dependent claims 11 and 28 are still not obvious, because
they recite “wherein the set of location update instructions identifies a location
determination method for the wireless device to determine its current location
data,” and sending times and frequencies is only one method. PO Resp. 22.
Although we agree with Patent Owner that sending times and frequencies is only
one method, we disagree that the proffered combination of Othmer and Goldberg
does not account for the aforementioned claim limitation. Specifically, a portion
of Figure 5C of Goldberg is shown below:

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The corresponding text portion of Goldberg discloses the following concerning the
above illustrated portion of Figure 5C: “[t]he watson controller can also determine
the sending times (step 194), the sending frequencies (step 196), and the
boundaries of the alarm zone (step 198).” Ex. 1006, 14:35–37. Earlier in column
14, Goldberg discloses the following:
The user commands and data may include the commands for the
particular mobile unit to send its telephone number, or to send its
vehicle ID number, or to start sending its position data at certain
sending times and at certain sending frequencies, or to send the
position data at certain times when the particular watson device
reaches the boundaries of a certain geographical area.
Ex. 1006, 14:2–8 (emphasis added); see also id. at 13:30–33 (command
transmitted to the Watson device can be “a command to set certain frequency of
transmission of the position data” or “a command to set a sending time when the
mobile unit reaches a certain position or a boundary of a certain area (alarm
zone)”). Petitioner relies on the aforementioned portions of Goldberg for the
following concerning dependent claims 11 and 28: “in addition to allowing for the
provision of location update instructions to change the frequency with which
location data is reported, Goldberg discloses that the location update instructions
can change the method (e.g., between periodic sending and sending based on a
device’s geographic position).” Pet. 24–25 (citing Exs. 1006, 12:11–31, 14:2–8;
1011 ¶¶ 106–107). We agree with Petitioner that the branching of the flow chart in
Figure 5C, and the use of the word “or” with respect to user commands in column
14, would have indicated to one of ordinary skill that the location update
commands of Goldberg could have been changed from periodic sending to sending
based on a device’s geographic position, and vice versa.
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3. Conclusion
For the foregoing reasons, after considering the Petition, Patent Owner
Response, Reply, and all supporting evidence, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that claims 8–12, 14, 15, 17, 25–29,
31, 32, 34, and 35 are unpatentable as obvious over a combination of Othmer and
Goldberg.
C. Claims 8–12, 25–29, and 35 as Anticipated by Manz
Petitioner asserts that claims 8–12, 25–29, and 35 are anticipated by Manz.
In support of its assertion, Petitioner presents analysis of Manz, as well as the
Declaration of Mr. Proctor. Pet. 40–48 (citing Exs. 1008, 1009, 1011). Patent
Owner disagrees with Petitioner’s assertions. PO Resp. 40–54.
1. Manz (Ex. 1008) and Manz Provisional (Ex. 1009)
4
Manz relates to a distributed system for real-time event warning and
notification to numerous individual entities across dispersed locations. Ex. 1008,
1:26–34; Ex. 1009 ¶ 9. Manz discloses a pager-like device that uses a local geo-
location capability via GPS to determine its position relative to the event location,
and transmits this position information, together with its own unique identifier, to
other devices on a network. Ex. 1008, 14:1–14; Ex. 1009 ¶ 30. This is performed
based on a defined update interval and/or defined distance change from its last
reported location. Ex. 1008, 15:26–29, 43–53; Ex. 1009 ¶ 30. The frequency of
this transmission is indicated in a configuration file. Ex. 1008, 15:47–48; Ex. 1009
¶ 48. The configuration file may also permit retransmission in appropriate
circumstances. Ex. 1008, 21:57–61; Ex. 1009 ¶ 58. The configuration file is

4
Procedurally, Manz is the reference relied upon for anticipation. As the Manz
provisional provides the underlying basis as to why Petitioner asserts Manz to be
prior art to the claimed invention, however, we provide citations to both references.
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updated using a physical or secure wireless connection from a trusted source.
Ex. 1008, 17:21–24; Ex. 1009 ¶ 34.
2. Analysis
After considering the Petition, Patent Owner Response, Reply, and all
supporting evidence, we are unpersuaded that Petitioner has shown, by a
preponderance of the evidence, that claims 8–12, 25–29, and 35 are anticipated by
Manz. Patent Owner asserts that Manz does not disclose “displaying the piece of
content associated with the event to a user of the wireless device,” as recited in
each of independent claims 8, 25, and 35, because Manz does not disclose any
structure for displaying content. PO Resp. 41–49. We agree. As set forth above
in Part II.A.4, we construed “displaying the piece of content associated with the
event to a user of the wireless device” as “displaying text or multimedia to be read
or viewed that is associated with the event received by a user of the wireless
device.”
Petitioner cites to several portions of Manz as corresponding to the
aforementioned claim limitation. Pet. 41, 45–46 (citing Exs. 1008, 1009, 1011);
Reply 19–21 (citing Exs. 1001, 1008, 1009). Petitioner cites a “pager-like device”
in Manz that includes visual stimulation. Manz, however, only discloses that “the
user is warned/notified via sensory mean(s),” and the “sensory indicia can include
auditory, visual, and/or physical stimulation of an individual’s bodily senses.”
Ex. 1008, 19:29–34. Manz then provides an example where the device “vibrates
and sounds an audible alarm notifying the affected soldier to change his protective
posture prior to impact of the enemy artillery round.” Id. at 19:34–38, Fig. 2
(depicting only a “Vibrator” and “Beeper”). Vibration and audible alarms are not
content that can be displayed. To the extent Petitioner relies on Manz’s isolated
mention of “visual . . . stimulation,” Manz does not elaborate on what that visual
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stimulation is or how it works. Further, Petitioner has not shown that Manz
discloses that what is received by the device is the same as what is displayed.
Claim 1, for example, recites “receiving a notification message . . . including a
piece of content,” and “displaying the piece of content.”
Petitioner also relies on the Manz provisional application, which discloses a
flashing light. Ex. 1008, 8:20–22. Even assuming (without deciding) that it is
proper to do so, we are unpersuaded that the actual content received by the user
device is a flashing light. Instead, the content received by the device in Manz is
simply data used by the device to trigger the flashing light. See Tr. 29:14–30:12.
As the aforementioned construction of “content,” however, requires that the
received content itself must be displayed, this disclosure of the Manz provisional
application also is insufficient to meet the aforementioned claim limitation. The
disclosed device does not receive flashing lights.
Petitioner counters that the light in Manz does not just flash, however, but
instead also increases in intensity (Ex. 1009, 8:22–25), conveying information
beyond just the flashing itself, and that information could correspond properly to
“content.” Reply 21–22. While we agree with Petitioner that such intensity is
more informative than just the flashing light itself, it is not “text or multimedia to
be read or viewed that is associated with the event received by a user of the
wireless device.”
Alternatively, Petitioner asserted at the oral hearing that various disclosures
of Manz, when considered collectively, show that Manz inherently discloses the
aforementioned claim limitation. Tr. 81:13–82:9. Even considering Petitioner’s
argument, not raised in its papers, we are not persuaded. We note that a showing
of inherency has a high bar. The cited disclosures include (1) “the present
invention is a discrete (similar in size and function to a pager) or integrated
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(embedded within a system/platform) device that is carried by individual entities,
such as dismounted soldiers, or on vehicles” (Ex. 1009, 8:6–8), (2) that Manz
discloses non-major components, such as circuit boards and displays (Ex. 1009,
Fig. 2, 6:9–10, 12:1–2, 13:1–2), and (3) that Manz discloses conveying information
that “range from day-to-day events, such as a street-side performance at a large
amusement park, imminent collapse of a building within a disaster area, etc.”
(Ex. 1009, 16:29–31), and that such information could not be conveyed without
displays more advanced than flashing lights. We disagree with Petitioner’s
assertion of inherency. For (1) and (3), Petitioner has not set forth sufficient
information to show persuasively that pagers and vehicle mounted systems must
necessarily include displays more advanced than flashing lights in order to convey
the aforementioned information, and that such displays must necessarily be the
same as what the device receives. Specifically, we are unclear as to why, as
asserted by Patent Owner, the Manz system cannot convey the aforementioned
information using merely the auditory, visual, and/or physical stimulation
disclosed expressly in the Manz provisional application, such as synthetic voice
messages, sounds, vibrations, and/or flashing lights. Petitioner asserts, and we
acknowledge, that the disclosure in the ’359 patent concerning displays is similarly
sparse, but determine that the screen of cell phones 205, 210, 215 illustrated in
Figure 2 provide more evidence of a display capable of showing text or multimedia
than the cited disclosures of Manz. For (2), Petitioner’s position is undercut
because Manz expressly discloses circuit boards, but not displays.
3. Conclusion
For the foregoing reasons, after considering the Petition, Patent Owner
Response, Reply, and all supporting evidence, we are unpersuaded that Petitioner
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has shown, by a preponderance of the evidence, that claims 8–12, 25–29, and 35
are anticipated by Manz.
D. Constitutionality of Inter Partes Review Proceedings
Patent Owner asserts this inter partes review is unconstitutional, because it
violates “Separation of Powers principles and patentees’ Seventh Amendment
rights,” and thus that this proceeding should be dismissed. PO Resp. 54–57. In
essence, while Patent Owner acknowledges that the Federal Circuit, in Patlex
Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985), upheld the Commissioner’s
statutory power to administratively revoke or cancel a patent in an ex parte
reexamination, Patent Owner asserts that this decision is incorrect in view of
McCormick Harvesting Mach. Co. v. C. Aultman Co., 169 U.S. 606, 608–09
(1898). The Federal Circuit expressly considered McCormick in rendering its
decision in Patlex. We are in no position to reconsider it. See 28 U.S.C.
§ 1295(a)(4)(A); 35 U.S.C. § 319.
Patent Owner asserts further that inter partes reviews are adjudicatory trials
of private rights that are adversarial in nature and constitute litigation, and violate
patentees’ Seventh Amendment right to a trial by a jury on the issue of validity.
We decline to consider Petitioner’s constitutional challenge as, generally,
“administrative agencies do not have jurisdiction to decide the constitutionality of
congressional enactments.” See Riggin v. Office of Senate Fair Employment
Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football,
Inc., 50 U.S.P.Q.2d 1705, 1999 WL 375907, at *4 (TTAB Apr. 2, 1999) (“[T]he
Board has no authority . . . to declare provisions of the Trademark Act
unconstitutional.”); Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080, 2014
WL 2757516, at *1 n.1 (TTAB June 18, 2014). But see American Express Co. v.
Lunenfeld, Case CBM2014-00050, slip. op. at 9–10 (PTAB May 22, 2015) (Paper
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51) (“for the reasons articulated in Patlex, we conclude that covered business
method patent reviews, like reexamination proceedings, comply with the Seventh
Amendment”) .
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 of the
’359 patent are held unpatentable; and
FURTHER ORDERED that because this is a final written decision, parties
to the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Jason A. Engel
Benjamin E. Weed
Viren S. Soni
K&L Gates LLP
jason.engel.ptab@klgates.com
benjamin.weed.ptab@klgates.com
viren.soni.ptab@klgates.com

For PATENT OWNER:

Jennifer A. Albert
Eleanor M. Yost
Brett M. Schuman
Goodwin Procter LLP
jalbert@goodwinprocter.com
eyost@goodwonprocter.com
bschuman@goodwinprocter.com