from the United States Patent and Trademark Office, Patent
Trial and Appeal Board, in Nos. IPR2014-00036, CBM2014-00005.
William M. Jay, Goodwin Procter LLP, Washington, DC, argued
for appellant. Also represented by Eleanor M. Yost; Brett M.
Schuman, David Zimmer, San Francisco, CA.
Wright, Sterne Kessler Goldstein & Fox, PLLC, Washington,
DC, argued for appellee. Also represented by Michael V.
Messinger, Deirdre M. Wells, Joseph E. Mutschelknaus; Peter
Andrew Detre, Munger, Tolles & Olson, LLP, San Francisco,
CA; Adam R. Lawton, Los Angeles, CA.
Reyna, Plager, and Hughes, Circuit Judges.
Planet, LLC ("Unwired") appeals from the final
written decisions of the Patent Trial and Appeal Board
("Board") in Inter Partes Review
("IPR") No. 2014-00036 and Covered Business Method
("CBM") Patent Review No. 2014-00005. Google
Inc. v. Unwired Planet, LLC, IPR2014-00036, 2015 WL
1478653 (P.T.A.B. Mar. 30, 2015) ("IPR Final
Decision"); Google Inc. v. Unwired Planet,
LLC, CBM2014-00005, 2015 WL 1519056 (P.T.A.B. Mar. 30,
2015) ("CBM Final Decision"). For the
reasons stated below, we affirm the Board's
decision that the challenged claims of U.S. Patent No. 7,
024, 205 (the "'205 patent") are invalid as
obvious in the IPR appeal and dismiss the CBM appeal as moot.
Patent No. 7, 024, 205
'205 patent is entitled "Subscriber Delivered
Location-Based Services." It describes a system and
method for providing wireless network subscribers (e.g., cell
phone users) with prioritized search results based on the
location of their mobile device (e.g., the nearest gas
station). The specification describes how search results can
be personalized for subscribers by taking into account, for
example, "favorite restaurants; automobile service
plans; and/or a wide variety of other subscriber
information." '205 patent col. 2 ll. 18-19.
contrast, the specification also describes how search results
can be ordered to give priority to "preferred service
providers defined by the network administrator."
Id. at col. 8 ll. 35-36. This allows the network to
generate revenue by charging service providers to be put on
the preferred-service-provider list. Id. at col. 8
ll. 46-52. Preferred-provider status, in turn, leads to
preferred providers' listings being prioritized in search
results provided to subscribers.
based on subscriber information and preferred provider status
is independent of a subscriber's location; hence, it can
lead to service providers that are actually farther away from
the subscriber being given priority over service providers
that are nearer. As a consequence, the results returned to
the subscriber can order preferred providers and other
service providers that are farther away higher than nearer
service providers. The parties and the Board refer to this
result as "farther-over-nearer ordering, " although
that term is not used in the patent.
sole independent claim of the '205 patent, claim 1,
claims farther-over-nearer ordering in the context of
wireless location-based services through a series of method
steps. We treat claim 1 of the '205 patent as
representative and dispositive because the parties do not
argue that any limitations of the dependent claims alter the
obviousness analysis in the context of the asserted prior
art. Relevant here, it claims:
identifying, on said network platform, first and second
service providers and associated first and second service
provider information[, ] . . . wherein said first service
provider is farther from [a] mobile unit than said second
service provider; [and]
based on said stored prioritization information, prioritizing
said first and second service provider information, wherein
said first [farther] location information is assigned a
higher priority than said second [nearer] location
information; and outputting both said first and second
service information on said mobile unit based upon said step
'205 patent, cl. 1, col. 10 ll. 27-57.
asserted prior art references are relevant to the ...