Square, Inc.v.Unwired Planet LLC

Patent Trial and Appeal Board

Nov 19, 2015

11016533 (P.T.A.B. Nov. 19, 2015)

Trials@uspto.gov Paper 28
571.272.7822 Entered: November 19, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SQUARE, INC.,
Petitioner,
v.
UNWIRED PLANET LLC,
Patent Owner.

Case IPR2014-01164
U.S. Patent No. 7,376,433 B1

Before MICHAEL W. KIM, JENNIFER S. BISK, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, 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 (Paper 1, “Pet.”) requesting
an inter partes review of claims 1–17 (“the challenged claims”) of U.S.
Patent No. 7,376,433 B1 (Exhibit 1001, “the ’433 Patent”). We instituted
trial for all the challenged claims on the grounds of unpatentability below.
Paper 7 (“Decision to Institute” or “Inst. Dec.”).
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Claims Basis Asserted Prior Art
Claims 1–7 and 11–17 §102(e) DeLorme1
Claims 7–10 §103(a) DeLorme and Trask2
Claims 1–6 and 11–16 §103(a) Baker3 and Hall4
Claims 7–10 §103(a) Baker, Hall, and Trask
After institution of trial, Unwired Planet LLC (“Patent Owner”) filed
a Patent Owner Response (Paper 11, “PO Resp.”). Petitioner filed a Reply
to the Patent Owner Response (Paper 17, “Pet. Reply”).
A hearing was held on September 16, 2015. The transcript has been
entered into the record. Paper 27 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons given herein, Petitioner has shown by a preponderance of the
evidence that the challenged claims are unpatentable.
B. Related Proceedings
Petitioner and Patent Owner state that the ’433 Patent has been
asserted against Petitioner in the following district court case: Unwired
Planet LLC v. Square, Inc., No. 3:13-cv-00579 (D. Nev.). Pet. 2; See
Mandatory Notice of Patent Owner Under 37 C.F.R. § 42.8(a)(2) (“Patent
Owner Notice,” Paper 4).

1 U.S. Patent No. 5,948,040 (“DeLorme”) (Ex. 1008).
2 U.S. Patent No. 5,945,919 (“Trask”) (Ex. 1007).
3 U.S. Patent No. 6,505,046 B1 (“Baker”) (Ex. 1009). Petitioner
additionally relies on U.S. Patent Appl. No. 60/066,653 (“Baker
Provisional”) (Ex. 1010).
4 U.S. Patent No. 6,026,375 (“Hall”) (Ex. 1011).
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Patent Owner asserted a related patent, U.S. Patent No. 7,024,205
(“the ’205 patent”), in Unwired Planet, LLC v. Google, Inc., No. 3:12-cv-
00504 (D. Nev.). See Patent Owner Notice. The ’205 patent issued from the
parent of the application that issued as the ’433 Patent. The ’205 patent is
the subject of a covered business method patent review, CBM2014-00005,
and an inter partes review, IPR2014-00036, both of which involve a
different petitioner than the instant proceeding. Id.
Furthermore, U.S. Patent No. 7,711,100 (“the ’100 patent”) and U.S.
Patent No. 8,275,359 (“the ’359 patent”) are involved in the same district
court proceeding involving Petitioner identified above, and also concern
location-based mobile service technology. The ’100 patent and the ’359
patent are not, however, in the same patent family as the ’433 Patent.
Petitioner has requested Office review of the ’100 patent (Case CBM2014-
00156) and the ’359 patent (Case IPR2014-01165).
C. The ’433 Patent
The ’433 Patent relates to subscriber delivered, location-based
services. Ex. 1001, 1:18–24. The ’433 Patent states that location-based
service systems have been implemented or proposed for wireless networks.
Id. at 1:32–34. According to the ’433 Patent, these systems generally
involve determining location information for a wireless transceiver and
processing the location information to provide an output desired for a
particular application. Id. at 1:34–37. The ’433 Patent also states that
location-based services can be enhanced by personalizing the services
provided by processing a request based, at least in part, on stored
information regarding a subscriber. Id. at 2:13–18. Subscriber information
may include account numbers, credit card numbers, other financial
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information, lodging preferences, price limitations, and discount programs.
Id. at 2:18–23.
D. Illustrative Claim
Claims 1 and 15 are the independent claims challenged by Petitioner.
Each of claims 2–14 depends, directly or indirectly, from claim 1, and each
of claims 16 and 17 depends, directly or indirectly, from claim 15. Claim 1
is illustrative and is reproduced below:
1. A method of providing location-based services to a
subscriber of a wireless network, the method comprising:
storing, on the network platform, subscriber profile
information regarding the subscriber, the subscriber using a
mobile unit;
thereafter receiving, on a network platform in
communication with the subscriber, a service request from the
mobile unit requesting information regarding the location-based
services;
obtaining, on the network platform, location information
regarding a location of the mobile unit;
identifying, on the network platform, a plurality of
candidate service providers from a database of service
providers, based upon the location of the mobile unit;
identifying, on the network platform, service provider
information associated with the plurality of candidate service
providers;
selecting, on the network platform, a subset of the
plurality of candidate service providers based on the subscriber
profile information, wherein selecting a subset comprises not
selecting at least one of the plurality of candidate service
providers;
outputting information regarding the subset of the
plurality of candidate service providers to the mobile unit;
receiving an input from the mobile unit, wherein the
input comprises a selection of a preferred service provider;
transmitting information regarding the subscriber to the
preferred service provider;
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initiating a transaction between the subscriber and the
preferred service provider based on the information regarding
the subscriber; and
receiving a transaction confirmation from the preferred
service provider.
II. ANALYSIS
A. Claim Construction
As a step in our analysis in the Decision to Institute, we determined
the meaning of the claims. The constructions are summarized in the table
below.
Claim Term Construction
“subscriber profile information” “[I]nformation relating to a user.”
Inst. Dec. 7.
“network platform” “[C]omputer included on a network.”
Id. at 8.
“mobile service provider” “[S]ervice provider that changes its
location.” Id. at 8. We determine
that “mobile service provider”
encompasses the examples provided
in the ’433 Patent specification
including taxi, courier, and police
unit. Id. at 9.

Neither Petitioner nor Patent Owner disputes our constructions. Pet.
Reply 2–3; PO Resp. 3–9; Tr. 8, 27. We discern no reason, based on the
complete record now before us, to change our determinations thereof.
Patent Owner provides constructions for three additional terms. We
evaluate two of these constructions below, but need not address the other. In
particular, we need not evaluate Patent Owner’s contentions regarding
whether “at least one of” modifies both the credit card number and the
expiration date as recited in claim 12’s limitation “wherein the financial
information comprises at least one of a credit card number and an expiration
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date, a bank account number, or corporate account information,” because we
determine that DeLorme discloses “corporate account information,” as
discussed further below.
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
In re Cuozzo Speed Techs., LLC., 793 F.3d 1268, 1277–1279 (Fed. Cir.
2015) (“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the [America Invents Act (Pub. L. No. 11229, 125
Stat. 284 (2011)) (‘AIA’)],” and “the standard was properly adopted by
[United States Patent and Trademark Office (‘USPTO’)] regulation.”).
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). We construe
the terms below in accordance with these principles.
1. “receiving a transaction confirmation from the preferred
service provider”
The term “receiving a transaction confirmation from the preferred
service provider” is recited, for example, in independent claims 1 and 15.
According to Patent Owner “receiving a transaction confirmation from the
preferred service provider” means “receiving a transaction confirmation
either directly from or indirectly from the preferred service provider.” PO
Resp. 3. Patent Owner provides further clarification regarding its
construction citing to Petitioner’s declarant, “Mr. Proctor[ ] testified during
his deposition that ‘[i]t could be sent from a service provider via a central
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service, or it can be sent directly, under the broadest reasonable meaning.’”
Id. at 4 (citing Ex. 2003 at 140:4–9).
Petitioner contends that the term “indirectly” does not appear in the
patent specification and would itself require further construction. Pet. Reply
3. Petitioner’s contention is not persuasive because the ’433 Patent
Specification describes how a transaction confirmation is sent. In particular,
the ’433 Patent Specification states that a transaction confirmation “is
received (324) by the system and, in turn, transmitted (326) to the subscriber
to complete the process,” which we discern as being “indirect,” as the
“system” is not a part of the preferred service provider. Ex. 1001, 8:50–53.
In light of Patent Owner’s contentions that an order is not a
transaction (PO Resp. 49), we construe “transaction.” The ’433 Patent
Specification does not define “transaction.” A dictionary sets forth a plain
and ordinary meaning of “transaction” as follows: “something, such as a
business deal, that is settled or is in the process of being settled.”
CHAMBERS 21ST CENTURY DICTIONARY (Mari Robinson & George Davidson
eds., 2001), available at
http://search.credoreference.com/content/entry/chambdict/transaction/0 (Ex.
3001).
The dictionary definition is consistent with the ’433 Patent
Specification. For example, the ’433 Patent Specification describes that
“[t]he subscriber may direct the location-based service application running
on the platform to transmit credit card or other subscriber information to a
selected hotel or other service provider in order to consummate a
transaction.” Ex. 1001, 7:53–57.
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Upon review, we determine that “receiving a transaction confirmation
from the preferred service provider” means “receiving a confirmation of
something, such as a business deal, that is settled or is in the process of
being settled either directly from or indirectly from the preferred service
provider.”
2. “network-assisted location finding technology”
The term “network-assisted location finding technology” is recited in
claim 2. Patent Owner contends that “network-assisted location finding
technology” means “a location finding technology that analyzes signals
communicated between network equipment and the mobile device to
calculate a location of the mobile device which operates in conjunction with
external systems that calculate mobile device location based on signals from
external sources.” PO Resp. 7. Patent Owner further contends that
“‘network assisted location finding technology’ is not standalone GPS
[Global Positioning System] technology.” Id. at 7. Petitioner contends that
“GPS is a location finding technology,” but does not otherwise provide its
own construction. Pet. Reply 3.
The ’433 Patent Specification does not define “network-assisted.” A
dictionary sets forth a plain and ordinary meaning of “assist” as follows: “to
help.” CHAMBERS 21ST CENTURY DICTIONARY (Mari Robinson & George
Davidson eds., 2001), available at
http://search.credoreference.com/content/entry/chambdict/assist/0 (Ex.
3002). The dictionary definition of “assist” is useful in ascertaining the way
in which one of ordinary skill in the art would use the claim term. Starhome
GmbH v. AT&T Mobility LLC, 743 F.3d 849, 856–57 (Fed. Cir. 2014). This
definition is consistent with the ’433 Patent Specification. Neither party has
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pointed to portions of the ’433 Patent Specification that use the term “assist”
or “assisted” with respect to location finding technology. The ’433 Patent
Specification uses the term “assist” as an action performed by an emergency
dispatcher when responding to a call (Ex. 1001, 1:42–44), and as an outcome
of sending the location of a car phone in a stolen car to authorities (id. at
1:50–53). The ’433 Patent Specification indicates that “location information
may be based on an output from any suitable location finding equipment
(LFE) or a combination thereof.” Ex. 1001, 2:50–52. The ’433 Patent
Specification provides examples of LFEs including “network based
systems” and “external systems that determine location based on signals
from external sources, e.g., Global Positioning System (GPS) signals.” Id. at
2:52–59. Additionally, according to the ’433 Patent Specification “[s]uch
LFE inputs may be used in raw form or, more preferably, may be processed
in conjunction with other LFE inputs, mapping information or the like to
provide enhanced location information.” Id. at 2:59–63.
Patent Owner contends that “the ’433[ P]atent [ ] broadly
differentiates between ‘network based systems’ and ‘external systems.’” PO
Resp. 7 (citing Ex. 1001, 2:50–59). In reliance on the testimony of Dr.
Sandeep Chatterjee, Patent Owner concludes “[t]hus, the ’433 [P]atent
specification makes clear that ‘network assisted location finding technology’
does not encompass unassisted GPS.” Id. at 7–8 (citing Ex. 2002 ¶¶ 73–75).
Dr. Chatterjee relies on the portion of the specification noted above for his
view. Ex. 2002 ¶¶ 73, 75. For example, Dr. Chatterjee testifies, “the
patentee would not have called out this distinction if he had intended for
‘network assisted location finding technology’ to include unassisted GPS
signals.” Id. ¶ 75.
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Patent Owner’s contentions and Dr. Chatterjee’s testimony, however,
are not consistent with the ’433 Patent Specification and the claims with
respect to the aforementioned claim limitation of “network-assisted location
finding technology.” In particular, the ’433 Patent Specification describes
“network based systems” and “external systems.” Ex. 1001, 2:52–57
(emphasis added). To the extent that the ’433 Patent Specification
distinguishes network based systems from external systems, we are
unpersuaded that it is relevant to a construction of “network-assisted
location finding technology,” and in any case, the claims do not recite this
distinction.
Upon review, we determine that “network-assisted” means “helped by
the network.” We determine that “location finding technology” needs no
express construction, except that we note that it encompasses the examples
of location finding equipment set forth in the specification including cell,
microcell, angle of arrival, time of arrival, time delay of arrival, and GPS.
Id. at 2:52–59.
B. Anticipation by DeLorme
Petitioner contends that claims 1–7 and 12–17 of the ’433 Patent are
unpatentable as anticipated by DeLorme. Pet. 47–56. In support of this
ground, Petitioner presents a Declaration by Mr. James A. Proctor, Jr. (Ex.
1012).
In the Decision to Institute, we determined that Petitioner had shown a
reasonable likelihood of prevailing on this proposed ground of
unpatentability. Inst. Dec. 15. Additionally, we determined that Petitioner
had shown a reasonable likelihood in prevailing on a ground that claim 11 of
the ’433 Patent is unpatentable as anticipated by DeLorme. Id. at 14.
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Petitioner requested review of claim 11 based on other grounds. See, e.g.,
Pet. 23, 42–43. As set forth in our Decision to Institute, we determined that
Petitioner had a reasonable likelihood of prevailing on its assertions that
DeLorme discloses every limitation claims 1–7 and 11–17 of the ’433
Patent. Inst. Dec. 9–15.
To establish anticipation, each and every element in a claim, arranged
as is recited in the claim, must be found in a single prior art reference.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). We evaluate the parties’ contentions below.
1. DeLorme
DeLorme relates to systems that permit individuals to make travel
arrangements via a computer network. Ex. 1008, 1:29–32. In particular,
DeLorme describes the Travel Reservation and Information Planning
System (“TRIPS”), which is a completely integrated system that enables an
individual to locate, select, and schedule travel, so as to execute customized
or personalized travel arrangements in association with map displays or
other output of travel routes. Id. at 1:32–46. Figure 3 is reproduced below.

Figure 3 illustrates a representation of the TRIPS data structure.
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The simplified standard TRIPS data structure illustrated in Figure 3 is
used to build TRIPS databases and TRIPS data objects. Id. at 32:1–3.
Electronic communications among TRIPS devices are performed by
constructing data packets conforming to the standard illustrated in Figure 3.
Id. at 32:3–7. The TRIPS data structure includes a unique random object
identifier, topical data such as activities, things-to-do, organizations,
products, goods, services, and other content related to travel, geographic
data, temporal data such as dates and times, and accounting data, such as
user identity and membership information. Id. at 32:31–40, 34:26–30,
Fig. 3. Enrolled or registered TRIPS users input individual profiles, which
include preferences or personal travel planning operational parameters that
are global settings for individual travel planning sessions. Id. at 61:10–16.
For example, TRIPS users select one or more participating providers within
an Accounting Subsystem table, such as a favorite airline or chain of hotels.
Id. at 71:39–50.
According to one embodiment of TRIPS, mobile users at remote
locations may access TRIPS using a wireless communication unit (“WCU”),
which is typically a handheld device or is mounted or used in a vehicle. Id.
at 71:61–72:2. The portable mobile device or WCU preferably includes a
position sensor unit, such as a Global Positioning System (GPS) sensor and
transmitter (id. at 2:8–11) and user input and output capability (id. at 72:2–
15). Exemplary WCUs include notebooks, laptop personal computers,
personal digital assistants, and smart cellular phones. Id. at 75:33–45.
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Figure 9B is reproduced below.

Figure 9 illustrates automated travel information processing of
inquiries from users equipped with wireless communication
units and GPS.
Figure 9 illustrates two-way wireless communications between WCU
907 and TRIPS database 904. Id. at 73:50–52. Two-way wireless
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communications involves TRIPS data packets formatted in accordance with
the standard discussed above with respect to Figure 3. Id. at 73:20–22.
TRIPS users can use portable TRIPS in conjunction with TRIPS travel plans
prepared in advance of travel. Id. at 72:23–26. Alternatively, TRIPS users
can call to obtain assistance en route, which does not require a previously
arranged travel plan. Id. at 72:63–67.
2. Independent Claim 1
We have reviewed Petitioner’s contentions and supporting evidence,
including the Declaration of Mr. Proctor (Ex. 1012 ¶¶ 104–29), which read
all elements of claim 1 of the ’433 Patent onto the disclosure of DeLorme.
Pet. 47–56. For instance, regarding the first element of claim 1, which
requires storing subscriber profile information, Petitioner points to (Pet. 49)
the following description: “[e]nrolled or registered TRIPS retail consumers
can input individual profiles, preferences or personal travel planning
operational parameters.” Ex. 1008, 61:10–16. As Petitioner notes (Pet. 50),
in reliance on the testimony of Mr. Proctor (Ex. 1012 ¶ 110), these profiles
include global settings that avoid repetitive entry of routine information
including preferences such as nonsmoking, preferred transportation modes
or accommodation providers, and topical interests such as favorite foods.
Ex. 1008, 61:10–26.
Regarding the next three elements of claim 1, which require receiving
a service request from the mobile unit, obtaining the mobile unit’s location,
and identifying candidate service providers and associated service provider
information, Petitioner relies on DeLorme’s description of processing TRIPS
service requests received from a wireless communication unit. See Pet. 49–
50. For instance, in accordance with the portable embodiment of TRIPS
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cited by Petitioner (Pet. 49–50), DeLorme discloses a mobile sending a
“specific request” to TRIPS “in conjunction with GPS 908 data on the
current location” of the mobile (Ex. 1008, 77:36–38). The request and GPS
data are used to “search[ ] the TRIPS database for restaurants located in the
vicinity of . . . the remote TRIPS user.” Id. at 77:40–42.
Patent Owner does not dispute Petitioner’s contentions regarding the
first four elements of claim 1, except that Patent Owner contends the
subscriber profile is not used to narrow search results. Patent Owner’s
contention in that regard relates more to a subsequent limitation that is
discussed below.
Regarding the next two elements of claim 1, which require selecting,
on the network platform, a subset of the candidate service providers based
on the subscriber profile and outputting the subset to the mobile, Petitioner
relies on the overall TRIPS system, including the TRIPS database and data
structure, as well as the mobile embodiments described with respect to
Figures 9A and 9B. Pet. 47, 48, 50 (citing Ex. 1008, Abstract, 7:66–8:9, 8:5,
8:23–30, 17:41–43, 32:1–7, 61:10–26, 71:1–78:21, Figs. 3, 9A, 9B).
Petitioner also relies on the testimony of Mr. Proctor. Pet. 47, 48, 50 (citing
Ex. 1012 ¶¶ 111–123, 126–129). Mr. Proctor testifies “[w]hen a user,
including a mobile user, searches for nearby services, DeLorme teaches
using that user’s preferences to send search results.” Ex. 1012 ¶ 126 (citing
Ex. 1008, 61:10–26, 17:41–42, 71:41–44, 71:46–50, 26:24–28, 77:48–50).
One of Petitioner’s contentions is that DeLorme describes “a subset of
the plurality of candidate service providers,” as recited in claim 1, as
follows: “DeLorme’s mobile embodiment discloses that ‘[i]nformation on
two or more restaurants can be presented to . . . the TRIPS user.’” Pet. 50
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(citing Ex. 1008, 77:48–50). Patent Owner refers to text omitted by
Petitioner, i.e., that the information can be “presented to and/or selected by”
the user. PO Resp. 14 (citing Ex. 1008, 77:48–49 (emphasis added)). Patent
Owner contends that this selection is made entirely on the mobile unit, and
not on the network platform, as required by the claim. Id. at 15. Contrary to
Patent Owner’s contention, Petitioner does not rely on “selected by” in the
above-referenced disclosure for the recited “selecting, on the network
platform, a subset of the plurality of candidate service providers,” as
indicated by the omission of “selected by” from Petitioner’s contention.
Indeed, we find that the “selected by” in the portion of DeLorme noted
above occurs after the subset is formed.
Regarding “selecting, on the network platform, a subset of the
plurality of candidate service providers,” as recited in claim 1, as Petitioner
notes (Pet. 47), DeLorme describes that the TRIPS system includes a
database (Ex. 1001, 8:23–30), i.e., a network platform. As Petitioner further
notes (Pet. 47–48), the database employs a standard TRIPS data structure
(id. at 32:1–7), which is searched by a primary key or other criteria (id. at
71:33–34). More particularly, as Mr. Proctor testifies (Ex. 1012 ¶ 126),
DeLorme describes that “TRIPS users can arrange ‘filters’ or sorting
operations that limit subsequent map tickets or presentations of TRIPS
offerings” and “setting up filters . . . will concentrate her selection . . . on
specified providers such as her favorite airline or chain of hotels.” Ex. 1008,
71:41–50. As Petitioner further notes in its Reply (Pet. Reply 11–12), the
TRIPS database performs “state-of-the-art text searches and associations” or
uses other “data matching technologies.” Ex. 1008, 56:36–42; see also id. at
67:6–11 (“matching reservations, tickets, and other special offers found in
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the GOODS/SERVICES & PROVIDERS LIST 809 in FIG. 8A with topical,
temporal, geographic and transactional ‘filters’ or relational database criteria
as imposed over the course of the sequential component operations”).
Accordingly, we determine that Petitioner has made a sufficient showing
that selecting is done on the network platform.
Patent Owner, additionally, contends that DeLorme’s mobile
embodiments make no reference to using “subscriber profile information,”
and that Petitioner’s reference to desktop embodiments in that regard is of
no help, because Petitioner does not connect adequately the desktop
embodiments to the mobile embodiments. PO Resp. 15. We disagree.
Petitioner relies on the testimony of Mr. Proctor, who testifies that
subscriber profile information is used by mobile embodiments. Pet. 47, 48,
50 (citing Ex. 1012 ¶¶ 111–123, 126–129). Mr. Proctor testifies that
DeLorme describes a “coordinated mobile embodiment,” which allows
mobile users to pick up a session started on a desktop and an “on-the-go
mobile embodiment,” which allows a mobile user to start and complete a
travel session on the mobile device. Ex. 1012 ¶¶ 113, 114. Mr. Proctor’s
testimony is consistent with the disclosure of DeLorme, which explains,
“Fig. 9 illustrates portable TRIPS embodiments, which can function either
with or without [r]elation to desktop TRIPS user setups as described
heretofore with reference to FIG. 1A.” Ex. 1008, 72:20–23. Mr. Proctor
also testifies “[i]n my opinion, a person of ordinary skill in the art would
have understood that all the TRIPS functionality and options discussed
before Fig. 9 would have still been available to the mobile users described in
connection with Fig. 9.” Ex. 1012 ¶ 116. We again credit the testimony of
Mr. Proctor as being consistent with the disclosure of DeLorme. DeLorme
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further specifies that “FIG. 9 [portable] TRIPS embodiments also enable
responsive previews or presentations . . . the capabilities for such previews
or presentations are further detailed heretofore, particularly with reference to
FIGS. 5, 6, 7, and 8 [illustrating filtering to concentrate a selection on a
favorite airline or chain of hotels].” Ex. 1008, 77:1–14. As Petitioner
further notes (Pet. Reply 10), DeLorme discloses by “identifying the
individual remote user whose WCU 907 is sending a given transmission, the
TRIPS service provider 904 can access the individual user account, user
profile and ‘pre-filed’ travel plan output (if any).” Ex. 1008, 74:45–56
(emphasis added).
In reliance on the testimony of Dr. Chatterjee, Patent Owner contends
that many functions described in connection with desktop embodiments
were not possible to implement with DeLorme’s mobile embodiments. PO
Resp. 12 (citing Ex. 2002 ¶¶ 40–42, 46–58). Patent Owner identifies one
example mentioned in DeLorme, i.e., that DeLorme states that the mobile
embodiment includes simplified input queries. Id. at 13. DeLorme
describes that a mobile user can provide input with a “push-button” or
indicating “yes” or “no” with voice recognition software. Ex. 1008, 77:53–
55. Patent Owner, however, does not explain persuasively how this relates
to selecting, on the network platform, a subset of the candidate service
providers based on the subscriber profile, as recited in claim 1.
Regarding Dr. Chatterjee’s testimony, Dr. Chatterjee acknowledges
that some amount of TRIPS functionality would be available via mobile
devices. Ex. 2002 ¶ 48. Dr. Chatterjee, however, is vague with respect to
his opinion of which functionalities would be too difficult to implement. See
e.g., id. ¶¶ 48, 52, 53, 58. Dr. Chatterjee testifies regarding significant
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challenges, but does not tie these challenges persuasively to his opinion that
DeLorme’s disclosure is inadequate. For example, Dr. Chatterjee testifies
that “although distributed computing was known at the relevant time,
distributed computing technologies at that time, e.g., the Common Object
Request Broker Architecture (CORBA) and Microsoft’s Distributed
Component Object Model (DCOM), were difficult to deploy.” Id. ¶¶ 50, 51
(citing Ex. 2014, 14; Ex. 2016, 10). Dr. Chatterjee, however, does not
testify persuasively regarding (1) how CORBA and DCOM relate to the
elements recited in claim 1 of the ’433 Patent, or (2) how the challenges with
implementing CORBA and DCOM undermine the explicit disclosure in
DeLorme of TRIPS using stored preferences to narrow search results.
Patent Owner’s contentions regarding “outputting information
regarding the subset of candidate service providers to the mobile unit” (PO
Resp. 19–25) are similar to those discussed above. Patent Owner’s
contentions again are based on excerpts of DeLorme discussed individually,
without regard to other disclosures in DeLorme. Patent Owner does not take
into account sufficiently the testimony of Mr. Proctor (Ex. 1012 ¶¶ 111–123,
126–129) regarding the disclosure in DeLorme that connects embodiments
of the TRIPS system, including using a profile or an individual’s preferences
with mobile embodiments. For the reasons discussed above, we are
persuaded that DeLorme discloses “outputting information regarding the
subset of the plurality of candidate service providers to the mobile unit.”
Regarding the remaining elements of claim 1, which require receiving
a selection of a preferred service provider from the mobile, initiating a
transaction between the subscriber and the preferred service provider, and
receiving a transaction confirmation from the preferred service provider,
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Petitioner relies on DeLorme’s disclosure of a mobile user making a
reservation, as well as other portions of DeLorme describing selecting a
provider and making a reservation. Pet. 51–53 (citing Ex. 1008, 50:27–39,
50:42–53, 77:48–78:1, 78:17–21, Fig. 5; Ex. 1012 ¶ 129). Patent Owner
does not provide contentions regarding these elements.
For the reasons given, we are persuaded that Petitioner has established
by a preponderance of the evidence that independent claim 1 is unpatentable
as anticipated by DeLorme.
3. Independent Claim 15
Independent claim 15 is similar to independent claim 1, except claim
15 recites, “selecting, on the network platform, one or more of the plurality
of candidate service providers based on a comparison between the service
provider information and the subscriber profile information.” Petitioner
cites to DeLorme’s reference to “database operations” as disclosing this
claim limitation. Pet. 51 (citing Ex. 1008, 53:38–44); see also Pet. Reply
11–12 (citing Ex. 1008, 30:1–11, 44:32–38, 53:38–44, 56:36–49, Fig. 7,
59:4–10, 67:6–11, 68:63–69:3; Ex. 1012 ¶¶ 128, 129). The database
operations include searching, ranking, filtering, sorting, and/or user selection
as sequentially arranged by the user. Ex. 1008, 53:38–44. DeLorme further
specifies the TRIPS database performs these operations by “matching”
provider information with filters or relational database criteria. Id. at 67:6–
11; see also id. at 56:36–49 (describing “state-of-the-art text searches and
associations and other ‘fuzzy’ database search or data matching
technologies”).
Patent Owner contends that DeLorme does not disclose comparing the
user’s preferences to the providers in the TRIPS database. PO Resp. 18.
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Upon review of Petitioner’s contentions and evidence, including disclosure
of matching technologies discussed above, we are persuaded that DeLorme
describes comparing user preferences with service provider information in
the TRIPS database. Accordingly, we are persuaded that Petitioner has
established by a preponderance of the evidence that independent claim 15 is
unpatentable as anticipated by DeLorme.
4. Dependent Claims 2–7, 11–14, 16, and 17
We have reviewed the evidence and arguments submitted by
Petitioner in its Petition, as well as the contentions and evidence set forth by
Patent Owner in its Patent Owner Response. Pet. 53–56; PO Resp. 25–31.
The evidence includes element-by-element analysis on pages 53–56 of the
Petition and the Declaration by Mr. Proctor (Ex. 1012). We are persuaded
that Petitioner has established by a preponderance of the evidence that each
of claims 2–7, 11–14, 16, and 17 is unpatentable as anticipated by DeLorme.
For instance, Petitioner has shown sufficiently that DeLorme discloses
“wherein the location information is determined using a network-assisted
location finding technology,” as recited in claim 2. As discussed above, we
determine that “network-assisted” means “helped by the network.” We also
determine that “location finding technology” needs no express construction
except that we note that it encompasses the examples of location finding
equipment set forth in the specification including cell, microcell, angle of
arrival, time of arrival, time delay of arrival, and GPS. Id. at 2:52–59. As
Petitioner notes (Pet. 53–54), DeLorme discloses a WCU that includes “an
attached or built-in global positioning satellite position sensor, or equivalent
user location means.” Ex. 1008, 75:46–48; see also Pet. 48 (citing Ex. 1008,
71:1–78:21, Fig. 9).
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Patent Owner contends that DeLorme fails to anticipate claim 2
because DeLorme discloses only one type of location finding technology—
GPS. PO Resp. 25. Patent Owner’s contentions (id. at 25–26) are based on
Patent Owner’s construction, which we did not adopt for the reasons
discussed above. As noted with respect to claim construction, GPS is one of
the examples of location finding equipment set forth in the ’433 Patent
Specification. Ex. 1001, 2:52–59. Additionally, Petitioner has shown
sufficiently that DeLorme discloses that the GPS sensor is not a stand-alone
part, but is part of and assisted by the WCU (Ex. 1008, 75:46–48) and also is
assisted or helped by the overall TRIPS system (id. at Figs. 9A, 9B).5
As an additional example, Petitioner has shown sufficiently that
DeLorme discloses “wherein the plurality of candidate service providers are
mobile service providers,” as further recited in claim 7. As discussed above,
we construe “mobile service providers” as encompassing taxis. DeLorme
describes candidate service providers that are mobile, including taxis.
Ex. 1008, 21:40–47.
As a further example, Petitioner has shown sufficiently that DeLorme
discloses “wherein the information regarding the subscriber comprises
financial information” and “wherein the financial information comprises at
least one of a credit card number and an expiration date, a bank account
number, or corporate account information,” as recited in claims 11 and 12,
respectively. Petitioner points to DeLorme’s disclosure of TRIPS storing a

5 Petitioner further notes (Pet. Reply 13) that DeLorme discloses hybrid
location systems. Ex. 1008, 10:34–39.
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user’s credit card number in their account. Pet. 55 (citing Ex. 1008, 37:10–
14).
As noted in our Decision to Institute, we instituted review on claim 11
on the ground that it is anticipated by DeLorme, because we determined that
Petitioner had shown sufficiently that DeLorme discloses credit card
information, which is a more specific form of “financial information” recited
in claim 11. Inst. Dec. 14. Patent Owner contends that institution of inter
partes review of claim 11 was improper because Petitioner does not request
review of claim 11 in connection with DeLorme. PO Resp. 26. Petitioner,
however, requested review of claim 11 based on other grounds. See, e.g.,
Pet. 23, 42–43. Petitioner also requested review of claim 12, which depends
from claim 11, on the ground that claim 12 is anticipated by DeLorme. By
virtue of its dependency on claim 11, claim 12 requires the further limitation
recited in claim 11. As noted in our Decision to Institute (Inst. Dec. 14),
Petitioner showed, in the Petition, a reasonable likelihood that DeLorme
discloses the limitations of both claims 11 and 12. Pet. 55 (citing Ex. 1008,
37:10–14).
Patent Owner had the opportunity to respond to Petitioner’s
contentions regarding claim 12 in the Petition and had notice that inter
partes review was instituted with respect to both claims 11 and 12 on the
ground that they are anticipated by DeLorme (Inst. Dec. 24). The Board’s
authority at the final decision stage is not limited to the grounds alleged in
the Petition. Cuozzo, 793 F.3d at 1273. The Board is authorized to issue “a
final written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section 316(d).”
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35 U.S.C. § 318(a). In this case, we determine that to hold to the contrary
would exalt form over substance at the expense of common sense.
Patent Owner also contends that institution was improper because
DeLorme does not disclose that the stored credit card number is transmitted
to a preferred service provider. PO Resp. 27. Mr. Proctor, however, testifies
that the TRIPS software has a transaction subsystem that lets users buy
tickets and services using their credit cards or financial data. Ex. 1012 ¶ 109
(citing Ex. 1008, 8:49–54). We credit his testimony as consistent with the
disclosure of DeLorme. Petitioner points to additional disclosure in
DeLorme of sending credit or payments arrangements to preferred service
providers. Pet. Reply 15 (citing Ex. 1008, 12:6–10). Upon review of
Petitioner’s contentions and evidence, we determine that DeLorme discloses
“wherein the information regarding the subscriber comprises financial
information,” as recited in claim 11.
Patent Owner also contends that DeLorme does not disclose the
further recitation of claim 12, which requires that the financial information
include both a credit card number and an expiration date. PO Resp. 29–30.
Claim 12, however, recites “at least one of a credit card number and an
expiration date, a bank account number, or corporate account information”
(emphasis added). As Petitioner notes (Pet. 50), DeLorme discloses that a
corporate client engaging a TRIPS online site to plan and arrange its
employees’ business trips can implement corporate policies and information
in TRIPS. Ex. 1008, 61:16–21. DeLorme describes that the information
input into the user profile, such as the credit card number, is personal or
business data. Id. at 37:10–14. We, therefore, determine that Petitioner has
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shown sufficiently that DeLorme discloses as least “corporate account
information,” as recited in claim 12.
Patent Owner does not provide contentions specific to claims 3–7, 13,
14, 16, or 17 and, instead, relies on its contentions provided for the
independent claims. PO Resp. 32. In light of the arguments and evidence
submitted, Petitioner has established by a preponderance of the evidence that
each of claims 2–7, 11–14, 16, and 17 is unpatentable as anticipated by
DeLorme.
C. Legal Standard of Obviousness
A patent claim is unpatentable if the differences between the claimed
subject matter 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). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; 6 and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). In an obviousness analysis, inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).

6 Petitioner’s declarant proposes a definition for a person of ordinary skill in
the art. Ex. 1012, 55:14–56:3. Patent Owner does not dispute Petitioner’s
declarant’s proposed definition. Ex. 2002 ¶¶ 21–23. To the extent
necessary, we adopt Petitioner’s definition.
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D. Asserted Obviousness over DeLorme and Trask
Petitioner contends that claims 7–10 are unpatentable as obvious over
the combination of DeLorme and Trask. Pet. 25–31. In the Decision to
Institute, we determined that Petitioner had shown a reasonable likelihood of
prevailing on this proposed ground of unpatentability. Inst. Dec. 15. In
particular, we determined that Petitioner had a reasonable likelihood of
prevailing on its assertions that the combined teachings of DeLorme and
Trask teach every limitation of claims 7–10 of the ’433 Patent. Id. at 15–17.
We also found reasonable Petitioner’s asserted rationale that a person of
ordinary skill in the art would have combined the teachings of DeLorme and
Trask to maximize available taxis and minimize delays by accounting for the
location of the taxi. Id. at 16 (citing Pet. 56–57; Ex. 1012 ¶¶ 181–185).
1. Trask
Trask teaches a dispatcher free vehicle allocation (“DFVA”) system,
which automatically recommends which of a plurality of vehicles can
respond most quickly to an event. Ex. 1007, 2:21–25.
2. Dependent Claims 7–10
Patent Owner contends that Petitioner provides no valid reason to
combine DeLorme and Trask. PO Resp. 51. Petitioner, in reliance on the
testimony of Mr. Proctor, asserts that a person of ordinary skill would have
found it obvious to combine DeLorme’s system of taxi service providers and
Trask, because Trask enhances DeLorme’s system to maximize available
taxis and minimize delays by accounting for the location of the taxi. Pet.
56–57 (citing Ex. 1012 ¶¶ 181–184). In the Decision to Institute, we
credited Mr. Proctor’s statements, as they are consistent with the teachings
of DeLorme and Trask. Inst. Dec. 21. For example, Trask teaches tracking
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the present position of taxis (Ex. 1007, 2:25–30) and comparing the
locations of vehicles with customer requests to determine the most
appropriate vehicle to dispatch (id. at 2:31–42).
Patent Owner, in reliance on the testimony of Dr. Chatterjee, contends
that we should not have credited Mr. Proctor’s testimony, because he
testifies that DeLorme teaches a taxi service, which is incorrect and is not
supported by the teachings of DeLorme. PO Resp. 52 (citing Ex.
2002 ¶¶ 76–84). Patent Owner further contends “[w]ith no dispatched taxis
in DeLorme, there would be no reason to incorporate Trask’s alleged
benefits into DeLorme’s reservation system.” Id. at 53 (citing Ex.
2002 ¶¶ 85–87). Dr. Chatterjee acknowledges that DeLorme refers to taxis,
but testifies that “[t]he fact that taxi coupons are made available in
DeLorme’s system would not provide a person of ordinary skill in the art a
reason to drastically modify DeLorme by incorporating an entirely new taxi
dispatch system into TRIPS.” Ex. 2002 ¶ 87.
We credit the testimony of Mr. Proctor as being consistent with the
teachings of DeLorme and Trask. For example, DeLorme lists exemplary
providers of goods and services that can participate in TRIPS including
“hotels, banks, campgrounds, retail stores, hairdressers, gas stations,
restaurants, taxis . . . among many others.” Ex. 1008, 21:44–48 (emphasis
added). Dr. Chatterjee’s testimony is conclusory and does not disclose facts
or data supporting that modification of DeLorme would be “drastic”
(Ex. 2002 ¶ 87). See 37 C.F.R. § 42.65(a).
Patent Owner, in reliance on the testimony of Dr. Chatterjee, also
contends that one of ordinary skill in the art would have lacked the technical
skills to combine DeLorme and Trask. PO Resp. 54 (citing Ex. 2002 ¶¶88–
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99). Dr. Chatterjee testifies that a person of ordinary skill in the art had
narrowly-focused experiences and would have needed to take instruction
regarding the creative piece. Ex. 2002 ¶ 90. Dr. Chatterjee also testifies that
it would have been a significant challenge for a person of ordinary skill in
the art to extend DeLorme’s environment into the Trask environment. Id.
Petitioner, in reliance on the testimony of Mr. Proctor, asserts that one
of ordinary skill would have a reasonable expectation of success in
incorporating Trask’s teachings of mobile service providers equipped with
GPS technology into DeLorme’s mobile TRIPS system. Pet. 57 (citing Ex.
1012 ¶¶ 181–185). Additionally, Mr. Proctor testifies that DeLorme already
uses the location of service providers to provide a list of results to the user,
and also recognizes that in the case of taxis, the service provider itself may
be mobile, so a person of ordinary skill in the art would have had a high
expectation of success in adding Trask’s taxi allocation system to
DeLorme’s TRIPS system. Ex. 1012 ¶¶ 182, 183.
Trask further supports Mr. Proctor’s testimony. For example, Trask
teaches obtaining mobile service provider location information using the
same technology as described for use by mobile devices in DeLorme.
Compare Ex. 1007, 5:55–65 (“Each of the plurality of taxis [] is equipped
with a position determining system . . . [such as] a GPS based system
(Global Positioning Satellite).”), with Ex. 1008, 2:9–11 (“[R]emote devices
may include Global Positioning System (GPS) sensors and/or
transmitters.”).
Dr. Chatterjee’s testimony regarding the narrowly-focused
experiences of a person of ordinary skill in the art is based on a
mischaracterization of Mr. Proctor’s deposition testimony (Ex. 2002 ¶ 90
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(citing Ex. 2003, 26:23–30:5)). Mr. Proctor testifies regarding his job duties
at Harris Corporation (id. at 26:23–28:19) and he responds to a question
suggesting that the type of work he did wasn’t common for recent graduates
employed by Harris Corporation (id. at 28:20–22). Contrary to Dr.
Chatterjee’s characterization, Mr. Proctor’s cited testimony is not responsive
to questions regarding the level of skill in the art, but instead his own
personal experiences. Additionally, he testifies that as a new graduate, he
“had a great experience” (Ex. 2003, 26:25) in part because he was given a
“research job” (id. at 29:7). We are not persuaded that Mr. Proctor’s
testimony supports that one of ordinary skill in the art, having a Bachelor of
Science Degree in Electrical/Computer Engineering or Computer Science
plus relevant academic or professional experience, would have been able to
only follow instructions, as Dr. Chatterjee testifies (Ex. 2002 ¶¶ 21, 90). A
person of ordinary skill is a person of ordinary creativity, not an automaton.
KSR Int’l Co., 550 U.S. at 421.
Additionally, Dr. Chatterjee’s testimony that it would have been a
significant challenge for a person of ordinary skill in the art to extend
DeLorme’s environment into the Trask environment (Ex. 2002 ¶ 90) is
unpersuasive, because it is based in part on his conclusory statement that the
person of ordinary skill in the art would have needed experience in three
“disparate areas of technology” (id.). Also, similar to his testimony
regarding anticipation, Dr. Chatterjee relies for this conclusion on the same
documents describing CORBA and DCOM, without relating them
persuasively to the asserted prior art or claims (id. at 98).
We further note Patent Owner’s more general contentions that
Petitioner fails to establish the level of ordinary skill in the art in support of
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its combinations of teachings of the applied references. See, e.g., PO Resp.
34–39. As the Federal Circuit has explained,
While it is always preferable for the factfinder below to specify
the level of skill it has found to apply to the invention at issue,
the absence of specific findings on the level of skill in the art
does not give rise to reversible error “where the prior art itself
reflects an appropriate level and a need for testimony is not
shown.”
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the
Board was not required to set forth express findings as to level of skill in art
and quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163–64 (Fed. Circ. 1985)). Here, we are persuaded that the prior art
adequately reflects an appropriate level of skill. Additionally, Mr. Proctor
proposes a definition for a person of ordinary skill in the art—a person with
an engineering degree, either computer science or electrical engineering, and
around two years of experience working in the wireless communications
industry. Ex. 2003, 55:14–56:3. Patent Owner does not dispute Mr.
Proctor’s proposed definition. Ex. 2002 ¶¶ 21–23. We agree that this
definition is reasonable.
Patent Owner does not provide contentions specific to the further
limitations recited in claims 8–10. PO Resp. 50–55. We also have reviewed
the evidence and arguments submitted by Petitioner regarding claims 8–10
in its Petition, including the element-by-element claim analysis on pages 58
through 60 of the Petition. Each of claims 8–10 depends directly from claim
7. As discussed above, Petitioner has established by a preponderance of the
evidence that claim 7 is anticipated by DeLorme. Petitioner also has shown
sufficiently that Trask teaches the further limitations of claims 8 through 10.
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Pet. 58–60 (citing Ex. 1007, 2:24–30, 4:28–30, 5:10–16, 5:39–65, 7:52–67,
8:1–4, 8:25–29, 8:49–61, Fig. 1).
In light of the arguments and evidence submitted, we are persuaded
that Petitioner has established by a preponderance of the evidence that
claims 7–10 are unpatentable as obvious over the combination of DeLorme
and Trask.
E. Asserted Obviousness of Claims 1–6 and 11–16 Over Baker
and Hall and Asserted Obviousness of Claims 7–10 Over
Baker, Hall, and Trask
Petitioner contends that claims 1–6 and 11–16 of the ’433 Patent are
unpatentable as obvious over the combination of Baker and Hall, and that
dependent claims 7–10 are unpatentable as obvious over the combination of
Baker, Hall, and Trask. Pet. 31–47. In the Decision to Institute, we
determined that Petitioner had shown a reasonable likelihood of prevailing
on both of these proposed grounds of unpatentability. Inst. Dec. 17, 23. In
particular, we determined that Petitioner had a reasonable likelihood of
prevailing on its assertions that the combined teachings of Baker and Hall
teach every limitation of claims 1–6 and 11–16 of the ’433 Patent. Id. at 17–
22. We also determined that Petitioner had a reasonable likelihood of
prevailing on its assertions that the combined teachings of Baker, Hall, and
Trask teach every limitation of claims 7–10 of the ’433 Patent. Id. at 22–23.
Additionally, we found reasonable Petitioner’s asserted rationale that
a person of ordinary skill in the art would have combined the teachings of
Baker and Hall to incorporate Hall’s method for securing credit card
payment into Baker’s teaching of an interface to transmit credit card
numbers to secure payment. Id. at 21 (citing Pet. 34; Ex. 1012 ¶¶ 159, 162).
Furthermore, we found reasonable Petitioner’s asserted rationale that a
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person of ordinary skill in the art would have combined the teachings of
Baker and Hall with Trask to maximize available taxis and minimize delays
by accounting for the location of the taxi. Id. at 23 (citing Pet. 44; Ex.
1012 ¶¶ 168–175).
1. Baker7
Baker teaches deriving a subscriber’s location and constructing a set
of coupons or advertisements based on that location, for that subscriber.
Ex. 1009, Abstract. The subscriber’s location is compared to retailer records
stored in a retailer database. Id. at 2:22–24. The process then sends
messages with coupons or advertisements to the subscriber for each retailer
or advertiser listed for that particular location. Id. at 2:25–27. The database
additionally contains subscriber profiles that further filter the types of
coupons or advertisements generated. Id. at 7:62–8:3.
2. Hall
Hall teaches enabling service providers to receive an order from a
mobile customer, receive customer location information, and schedule the
completion of the customer’s order to coincide with the customer’s arrival at
a local facility. Ex. 1011, Abstract. Hall also teaches a financial agent that
performs financial transactions on behalf of a customer by communicating
with financial institutions in which customers have accounts and instructing
the institution to transfer payment. Id. at 7:30–35.

7 For ease of reference in our analysis, we cite to Baker, but omit parallel
citations to the Baker Provisional. Regarding Petitioner’s contentions,
however, we have reviewed Petitioner’s citations to Baker and confirmed
that the evidence that we rely on also is found in the Baker Provisional for
all of the claims challenged on the grounds of obviousness involving Baker.
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3. Independent Claims 1 and 15
In its responsive brief, Patent Owner contends that the combination of
Baker and Hall fails to teach “receiving a transaction confirmation from the
preferred service provider,” as recited in each of claims 1 and 15. PO Resp.
48. Patent Owner does not address any other limitations of claims 1 and 15.
Patent Owner, however, also contends that Baker and Hall are not properly
combinable. PO Resp. 40.
We turn to Patent Owner’s contentions relating to receiving a
transaction confirmation from the preferred service provider, as recited in
claim 1. As noted by Petitioner (Pet. 40–41), Hall teaches receiving an order
from a mobile customer (Ex. 1011, Abstract), contacting the local facility
selected, instructing it to prepare the order (id. at 9:57–9:60), and confirming
the transaction via financial agent software that communicates, on behalf of
the customer, with financial institutions and service provider agent software
(id. at 7:29–38). Furthermore, Hall teaches “receiv[ing] order confirmation
information from the service provider” (id. at 15:2–5).
Patent Owner contends that Hall’s teaching “receiv[ing] order
confirmation information from the service provider” (id. at 15:2–5) is
deficient because Hall does not reference a transaction. PO Resp. 49–50.
For the reasons discussed above with respect to claim construction, we
determine that “receiving a transaction confirmation from the preferred
service provider” means “receiving a confirmation of something, such as a
business deal, that is settled or is in the process of being settled either
directly from or indirectly from the preferred service provider.” We
determine that an “order” is an example of a something, such as a business
deal, that is settled or is in the process of being settled. Furthermore, we
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determine that Hall’s teachings regarding financial agent software
corresponds properly to “receiving a transaction confirmation from the
preferred service provider,” as recited in claims 1 and 15.
We also have reviewed the evidence and arguments submitted by
Petitioner in its Petition, including the element-by-element analysis on pages
35–44 of the Petition and the Declaration by Mr. Proctor (Ex. 1012),
regarding other limitations recited in claims 1 and 15. We are persuaded
that Petitioner has shown sufficiently that each of the other limitations of
independent claims 1 and 15 is taught by the combination of Baker and Hall.
Patent Owner also contends that Baker and Hall are not properly
combinable based on Dr. Chatterjee’s testimony that a person of ordinary
skill in the art would have been narrowly-focused. PO Resp. 40 (citing Ex.
2002 ¶¶ 63–66, 67–69, 108–116). Our analysis above relating to Dr.
Chatterjee’s similar testimony regarding DeLorme and Trask applies to this
ground as well.
Patent Owner additionally asserts that Baker and Hall are directed to
very different problems. PO Resp. 41 (citing Ex. 2002 ¶¶ 63–69, 100–107).
Patent Owner relies on the testimony of Dr. Chatterjee, who testifies that
“Baker relates to a system designed to deliver advertising to mobile devices
using SMS messages,” whereas “Hall does not use text messages and it does
not relate to advertising in any way.” Ex. 2002 ¶¶ 100, 101. Both Baker and
Hall teach transmitting information to a customer wirelessly. See Ex. 1009,
2:8–10 (“The subscribers can be radiotelephone users, pager users, two-way
radio users, or users of other forms of wireless communication.”); see also
Ex. 1011, 5:49–57, Fig. 1 (“MCPE [mobile customer premises equipment]
105 may be implemented, using a variety of devices such as cellular phone, .
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. . . a personal digital assistant (“PDA”), . . . an ordinary cellular telephone
and a home or laptop personal computer.”) Additionally, contrary to Dr.
Chatterjee’s testimony, Hall teaches using information stored in its customer
database to market products or services to a customer that are similar to
those previously ordered. Ex. 1011, 9:13–18. Dr. Chatterjee’s testimony is
not credible because it is not supported sufficiently by objective evidence.
Patent Owner further asserts that Mr. Proctor’s deposition testimony
establishes that he improperly relied on hindsight bias and his declaration is
not sufficient to establish obviousness. PO Resp. 41–47. Mr. Proctor
testified that a person of ordinary skill in the art would have combined Baker
and Hall in various ways depending on their objectives. Ex. 2003, 161:10–
162:13. Patent Owner points to a question posed by its counsel asking
“[a]nd this example that you just gave me—is how you would combine
their teachings if your objective were to create something like the ’433
patent; is that right?” PO Resp. 43–44 (citing Ex. 164:4–12). We disagree
that Mr. Proctor’s testimony in the affirmative to this question is an
admission that he used hindsight bias, because Patent Owner’s contentions
rely on incorrect characterizations of Mr. Proctor’s testimony. Patent Owner
additionally alleges that Mr. Proctor belatedly identified the level of skill in
the art (PO Resp. 47), which is not persuasive for the same reasons discussed
with respect to DeLorme and Trask. We credit the testimony of Mr. Proctor
regarding the combination of Baker and Hall as consistent with the teachings
of these references.
In light of the arguments and evidence submitted, Petitioner has
established by a preponderance of the evidence that each of claims 1 and 15
is unpatentable as obvious over the combination of Baker and Hall.
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4. Dependent Claims 2–6, 11–14, and 16
Patent Owner does not argue separately the limitations added by these
claims. We have reviewed the evidence and arguments submitted by
Petitioner in its Petition including the element-by-element analysis on pages
41–43 of the Petition and the Declaration by Mr. Proctor (Ex. 1012).
Petitioner has shown sufficiently that the combination of Baker and Hall
teaches each of the limitations of claims 2–6, 11–14, and 16. Accordingly,
we are persuaded that Petitioner has established by a preponderance of the
evidence that each of claims 2–6, 11–14, and 16 is unpatentable as obvious
over Baker and Hall.
5. Dependent Claims 7–10
Patent Owner does not argue separately these grounds, except to argue
that Trask is not properly combinable with the combination of Baker and
Hall. PO Resp. 55–60. Patent Owner’s arguments are similar to those
discussed above with respect to the combination of DeLorme and Trask as
well as the combination of Baker and Hall. Our analysis above pertains to
Patent Owner’s contentions regarding Baker, Hall, and Trask. Additionally,
again, we credit Mr. Proctor’s testimony as consistent with the asserted prior
art.
We also have reviewed the evidence and arguments submitted by
Petitioner in its Petition including the element-by-element analysis on pages
44–47 of the Petition and the Declaration by Mr. Proctor (Ex. 1012)
regarding the limitations recited in claims 7–10. We are persuaded that
Petitioner has shown sufficiently that each of the limitations of claims 7–10
is taught by the combination of Baker, Hall, and Trask.
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In light of the arguments and evidence submitted, we are persuaded
that Petitioner has established by a preponderance of the evidence that
claims 7–10 are unpatentable as obvious over the combination of Baker,
Hall, and Trask.
F. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude Petitioner’s Exhibits 1022 and 1024.
Paper 24, 2. Exhibit 1022 is the Declaration of Dr. Sandeep Chatterjee in
support of covered business method review in SecureBuy, LLC v. Cardinal
Commerce Corp., Case No. CBM2014-00035 (“CBM Declaration”).
Exhibit 1024 is a copy of Unwired Planet’s infringement claim chart from a
district court lawsuit involving Petitioner and Patent Owner, Case No. NVD-
3-13-cv-00579 (“infringement chart”).
Petitioner has not explained persuasively how Exhibit 1022 relates to
the issues in this inter partes review proceeding. Petitioner asserts that Dr.
Chatterjee’s prior testimony supports Petitioner’s reasons to combine Baker
and Hall. Pet. Reply 19. Petitioner, however, has not shown sufficiently
how Dr. Chatterjee’s testimony relates to the Baker and Hall references
asserted in this case. We, therefore, do not rely on Exhibit 1022 in this
Decision and Patent Owner’s request is granted.
Regarding Exhibit 1024, i.e., the infringement chart, we are persuaded
by Petitioner that Exhibit 1024 is offered not for the truth of the matter
asserted (i.e., the content of the ’433 patent), but as evidence of how the
Patent Owner has characterized the ’433 Patent and, in particular, the
“transaction confirmation” limitation (Paper 26, 5–6). Patent Owner has not
persuaded us that Exhibit 1024 is irrelevant, at least because its
characterization of the ’433 Patent in the district court proceedings is
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relevant to the credibility of its characterization of the ’433 Patent in this
proceeding. Accordingly, we decline to exclude Exhibit 1024.
For the foregoing reasons, Patent Owner’s Motion to Exclude is
granted-in-part and denied in-part.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition establishes by a preponderance of the evidence the
unpatentability of each of claims 1–17 of the ’433 Patent. In particular, we
determine that Petitioner has established by a preponderance of the evidence
the unpatentability of (1) claims 1–7 and 11–17, under 35 U.S.C. § 102(e),
as anticipated by DeLorme; (2) claims 7–10, under 35 U.S.C. § 103(a), over
DeLorme and Trask; (3) claims 1–6 and 11–16, under 35 U.S.C. § 103(a),
over Baker and Hall; and (4) claims 7–10, under 35 U.S.C. § 103(a), over
Baker, Hall, and Trask. This is a Final Written Decision of the Board under
35 U.S.C. § 318(a).
IV. ORDER
For the reasons given, it is
ORDERED that, pursuant to 35 U.S.C. § 318, claims 1–17 of U.S.
Patent No. 7,376,433 are determined to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted-in-part and denied-in-part;
FURTHER ORDERED that Exhibit 1022 shall be expunged; 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
jason.engel.PTAB@klgates.com

Benjamin E. Weed
benjamin.weed.PTAB@klgates.com

Viren S. Soni
viren.soni.PTAB@klgates.com

For PATENT OWNER:

Jennifer A. Albert
jalbert@goodwinprocter.com

Eleanor M. Yost
eyost@goodwinprocter.com

Brett M. Schuman
bschuman@goodwinprocter.com