Unwired Planet, LLC v. Google Inc. , 841 F.3d 995 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
UNWIRED PLANET, LLC,
Appellant
v.
GOOGLE INC.,
Appellee
______________________
2015-1810, 2015-1811
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board, in Nos.
IPR2014-00036, CBM2014-00005.
______________________
Decided: November 15, 2016
______________________
WILLIAM M. JAY, Goodwin Procter LLP, Washington,
DC, argued for appellant. Also represented by ELEANOR
M. YOST; BRETT M. SCHUMAN, DAVID ZIMMER, San Fran-
cisco, CA.
JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for appellee. Also represented by
MICHAEL V. MESSINGER, DEIRDRE M. WELLS, JOSEPH E.
MUTSCHELKNAUS; PETER ANDREW DETRE, Munger, Tolles
& Olson, LLP, San Francisco, CA; ADAM R. LAWTON, Los
Angeles, CA.
______________________
2 UNWIRED PLANET, LLC v. GOOGLE INC.
Before REYNA, PLAGER, and HUGHES, Circuit Judges.
REYNA, Circuit Judge.
Unwired Planet, LLC (“Unwired”) appeals from the
final written decisions of the Patent Trial and Appeal
Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-
00036 and Covered Business Method (“CBM”) Patent
Review No. 2014-00005. Google Inc. v. Unwired Planet,
LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.
30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired
Planet, LLC, CBM2014-00005, 2015 WL 1519056(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the
reasons stated below, we affirm the Board’s decision that
the challenged claims of U.S. Patent No. 7,024,205 (the
“’205 patent”) are invalid as obvious in the IPR appeal
and dismiss the CBM appeal as moot.
BACKGROUND
U.S. Patent No. 7,024,205The ’205 patent is entitled “Subscriber Delivered Lo-
cation-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 sta-
tion). The specification describes how search results can
be personalized for subscribers by taking into account, for
example, “favorite restaurants; automobile service plans;
and/or a wide variety of other subscriber information.”
’205 patent col. 2 ll. 18–19.
In contrast, the specification also describes how
search results can be ordered to give priority to “preferred
service providers defined by the network administrator.”
Id. at col. 8 ll. 35–36. This allows the network to generate
revenue by charging service providers to be put on the
preferred-service-provider list. Id. at col. 8 ll. 46–52.
Preferred-provider status, in turn, leads to preferred
UNWIRED PLANET, LLC v. GOOGLE INC. 3
providers’ listings being prioritized in search results
provided to subscribers.
Prioritization based on subscriber information and
preferred provider status is independent of a subscriber’s
location; hence, it can lead to service providers that are
actually farther away from the subscriber being given
priority over service providers that are nearer. As a
consequence, the results returned to the subscriber can
order preferred providers and other service providers that
are farther away higher than nearer service providers.
The parties and the Board refer to this result as “farther-
over-nearer ordering,” although that term is not used in
the patent.
The sole independent claim of the ’205 patent, claim 1,
claims farther-over-nearer ordering in the context of
wireless location-based services through a series of meth-
od steps. We treat claim 1 of the ’205 patent as repre-
sentative 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] mo-
bile 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
4 UNWIRED PLANET, LLC v. GOOGLE INC.
outputting both said first and second service in-
formation on said mobile unit based upon said
step of prioritizing.
’205 patent, cl. 1, col. 10 ll. 27–57.
Asserted Prior Art
Five asserted prior art references are relevant to the
issues addressed below.
The primary reference, U.S. Patent No. 6,108,533(“Brohoff”), is entitled “Geographical Database for Radio
Systems.” It describes a system using a radio telecom-
munication network in combination with a database of
consumer services. Brohoff col. 2 ll. 18–25. The system
provides the information about nearby consumer services
in response to search requests. To do so, the system
determines the location of the mobile device sending the
search request and provides information about nearby,
relevant consumer services from its database. Id. at col. 2
ll. 33–42. Brohoff teaches using a database where the
consumer services are grouped by geographic zones and
returning location-based search results grouped by these
geographic zones. Id. at col. 2 ll. 48–58, col. 3 ll. 13–19.
One secondary reference is Wilbert O. Galitz’s book
The Essential Guide to User Interface Design: An Intro-
duction to GUI Design Principles and Techniques (John
Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses princi-
ples for interface design, including discussing the ad-
vantages of various techniques for ordering text
information and menus. Id. at 120–21, 255–56. It also
discusses the benefits and applications of several ordering
techniques, including alphabetic order. Id. at 256. Galitz
further suggests how the design principles it discusses
may be applied in designing interfaces for future, special-
ized devices. Id. at 32.
Another secondary reference is Laura Rich’s article IQ
News: New Search Engine Allows Sites To Pay Their Way
UNWIRED PLANET, LLC v. GOOGLE INC. 5
To Top. 1 It describes a search engine that orders search
results “according to who paid the most for that particular
keyword” in a search. It also discusses ranking sites
“according to user and editor input.”
A fourth reference is European Patent No. EP
0647076 (“Remy”), entitled, “Cellular radio communica-
tion system with access to location dependent service,
location retrieving module and server module for person-
al, location dependent services.” It describes a cellular
radio communication system within a network of geo-
graphical cells that responds to a location-based query
with the nearest result.
Finally, International Patent No. WO 97/22066
(“Hopkins”) is entitled “Method for computer aided adver-
tisement.” It describes a computer-implemented method
for presenting vendor advertising information to a user.
Hopkins discusses how users can search the information
alphabetically, by name, by address, or by geographical
area.
Procedural History
Google Inc. (“Google”) filed the IPR and CBM petitions
on appeal on October 8, 2013. In both proceedings, Google
challenged claims 1–6 of the ’205 patent. The Board
consolidated the proceedings before the same panel and,
on April 8, 2014, instituted both proceedings on all chal-
lenged claims. IPR2014-00036, 2014 WL 1410358;
CBM2014-00005, 2014 WL 1396977. On March 30, 2015,
the Board issued final written decisions invalidating all of
the challenged claims as obvious.
1 Laura Rich, IQ News: New Search Engine Allows
Sites To Pay Their Way To Top, http://www.adweek.com/
news/advertising/iq-news-new-search-engine-allows-sites-
pay-their-way-top-24893 (Feb. 23, 1998).
6 UNWIRED PLANET, LLC v. GOOGLE INC.
In the IPR final written decision, the Board held the
challenged claims were obvious on three grounds. IPR
Final Decision, 2015 WL 1478653, at *18. In the first
ground, claims 1–3, 5, and 6 were held obvious over
Brohoff in view of Galitz. In the second ground, claim 4
was held obvious in further view of Rich. In the third
ground, claims 1–6 were also held obvious over Remy in
view of Hopkins.
In the CBM final written decision, the Board held
that claims 1–6 were invalid for lack of written descrip-
tion under 35 U.S.C. § 112 ¶ 1. 2 CBM Final Decision,
2015 WL 1519056, at *17. Specifically, the Board deter-
mined that the specification lacked written description
support for the claim term “prioritization information
establishing a basis independent of proximity and inde-
pendent of any subscriber preferences for prioritizing said
first and second service provider information” and for
farther-over-nearer ordering. Id. at *14, *16.
Unwired appeals from both final written decisions.
We consolidated the appeals for briefing and argument.
Order Consolidating Appeals, No. 2015-1810, ECF No. 2
(Fed. Cir. July 15, 2015). We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 319, 329.
2 35 U.S.C. §§ 103 and 112 were replaced with new
versions in the America Invents Act (“AIA”). See Leahy
Smith America Invents Act, Pub. L. No. 112-29, §§ 3(c),
4(c), 125 Stat. 284, 287, 296 (2011) (“AIA”). However, the
AIA versions of §§ 103 and 112 do not apply to the pa-
tents-in-suit in view of the AIA’s effective date provi-
sions. See AIA, §§ 3(n)(1), 4(e), 125 Stat. 293, 297. Thus,
we refer to the pre-AIA version of Title 35.
UNWIRED PLANET, LLC v. GOOGLE INC. 7
STANDARD OF REVIEW
We review the Board’s factual determinations for sub-
stantial evidence and its legal conclusion of obviousness
de novo. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
1280 (Fed. Cir. 2015), aff’d, Cuozzo Speed Techs., LLC
v. Lee, 136 S. Ct. 2131 (2016); Inphi Corp. v. Netlist, Inc.,
805 F.3d 1350, 1354 (Fed. Cir. 2015). “Substantial evi-
dence is such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Ken-
nametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015) (quotation marks omitted).
DISCUSSION
A claim would have been obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
In order to determine if a claim would have been obvious,
“the scope and content of the prior art are to be deter-
mined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
Deere Co., 383 U.S. 1, 17 (1966)). Given the differences
between the prior art and the claimed invention, the
claimed combination would have been obvious only if
there was an apparent reason for a skilled artisan “to
combine the known elements in the fashion claimed by
the patent at issue.” KSR, 550 U.S. at 418.
Unwired makes three challenges to the Board’s basis
for the first ground of obviousness in the IPR. Unwired
argues (1) that Galitz is not analogous prior art, (2) that
the prior art does not teach farther-over-nearer ordering,
and (3) that a person of skill in the art would not have
been motivated to combine Brohoff with Galitz. Unwired
8 UNWIRED PLANET, LLC v. GOOGLE INC.
does not separately dispute the further combination with
Rich in the second ground of obviousness. We find sub-
stantial evidence supports the Board’s factual findings
with respect to the first two grounds of the IPR, and these
facts lead to the conclusion that claims 1–6 of the ’205
patent were obvious. This resolves the patentability of all
challenged claims, so we do not reach the third ground in
the IPR or the issues presented in the CBM review.
1. The relevant prior art includes Galitz.
Unwired challenges the Board’s factfinding with re-
spect to the scope of the prior art. Unwired argues that
Galitz “has nothing to do with mobile telephony or loca-
tion-based services, but instead is a manual for designers
of graphic user interfaces—a thoroughly different con-
cept.” Unwired Br. 16. We disagree.
Prior art is analogous and can be applied in an obvi-
ousness combination if it either (1) “is from the same field
of endeavor, regardless of the problem addressed” or
(2) “is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992). To determine if art is analogous,
we look to “the purposes of both the invention and the
prior art.” Id. at 659. If a reference disclosure and the
claimed invention have a same purpose, the reference
relates to the same problem, which supports an obvious-
ness rejection. Id.The field of endeavor of the ’205 patent is not limited
to technical issues related to the wireless network system;
it also teaches methods for ordering and displaying infor-
mation from the network on users’ mobile devices. The
’205 patent discusses various ways that “the service
information can be provided to the user,” including “on a
visual display of the [mobile device], as an audible, rec-
orded message, or through any other appropriate means.”
’205 patent col. 3 ll. 15–18. “In cases where the service
information is provided as a menu of selections, the
UNWIRED PLANET, LLC v. GOOGLE INC. 9
method may further involve receiving a menu selection
entered by the user and outputting further service infor-
mation in response to the menu selection. Id. at col. 3 ll.
18–22. One particular problem the ’205 patent addresses
is how to display and order information on a mobile
device. When a menu is displayed on a mobile device, it
“may be ordered based on any of various criteria such as
the preferences expressed in the subscriber profile, near-
est to farthest, preferred service providers defined by the
network administrator, etc.” Id. at col. 8 ll. 32–36.
The Galitz reference deals generally with graphical
user interface design and includes a chapter devoted to
menu design with specific suggestions for how to order
menu items. J.A. 1182–94. This discussion substantially
focuses on displaying and ordering text in lists and men-
us. One example that Galitz uses is address text, which it
urges should be ordered “in the customary way” and
sequenced to accord with user expectations, i.e., “street,
city, state, and zip code.” J.A. 1053. Additionally, Galitz
discusses future operating systems for internet-connected
devices that “will aim at niches,” including “the purse or
wallet.” J.A. 966. It suggests that the “narrower focus”
on such devices “will result in much less complexity.” Id.The Board also relied on the testimony of Dr. Donald
Cox. IPR Final Decision, 2015 WL 1478653, at *10. He
discussed the Yellow Pages as a “customary and conven-
tional use of sequential or alphabetical ordering for loca-
tion-based services.” Id. The Yellow Pages list businesses
in a “specific geographic area,” sort “the businesses into
similar types,” and then alphabetically order the listings
in each category. Id. (quoting Decl. of Dr. Donald Cox,
¶ 27, J.A. 494).
Taken together, this evidence establishes that Galitz
is analogous prior art to the ’205 patent. The field of
endeavor of a patent is not limited to the specific point of
novelty, the narrowest possible conception of the field, or
10 UNWIRED PLANET, LLC v. GOOGLE INC.
the particular focus within a given field. Here, both
Galitz and the ’205 patent are in the field of interface
design, with Galitz focusing on graphical user interfaces
and the ’205 patent focusing on interfaces for location-
based services. These two areas of focus overlap within
the broader field of interface design because the teachings
in graphical user interface design, including design prin-
ciples for displaying text and ordering menus, have rele-
vance in interfaces for location-based applications.
Likewise, a skilled artisan seeking to apply interface
design principles to display addresses—one of the particu-
lar problems dealt with by the inventor of the ’205 pa-
tent—would reasonably look to Galitz, which teaches
solutions to this same problem. As the Board found, Dr.
Cox’s testimony shows a skilled artisan would have
understood the applicability of Galitz’s teachings to this
problem by providing an example of conventional address
text and ordering in the location-based context. The
Board correctly applied Galitz as analogous art based on
substantial evidence that Galitz is both from the same
field of endeavor as the ’205 patent and is reasonably
pertinent to the problem of displaying address infor-
mation.
2. The prior art teaches prioritization that results in
farther-over-nearer ordering.
Unwired argues that none of the prior art references
cited teach farther-over-nearer ordering as claimed. It
faults the Board for equating prioritization schemes that
“sometimes return a farther result” with “farther-over-
nearer ordering.” Unwired Br. 18–19 (emphasis in origi-
nal). We reject this argument because combinations of
prior art that sometimes meet the claim elements are
sufficient to show obviousness. See Hewlett-Packard Co.
v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003).
Unwired acknowledges that the claims do not require
prioritizing locations that are farther away because they
UNWIRED PLANET, LLC v. GOOGLE INC. 11
are farther away. The claims only require using prioriti-
zation information that results in a farther-over-nearer
order. ’205 patent, cl. 1, col. 10 ll. 53–55 (“wherein said
first location information is assigned a higher priority
than said second location information”). The claimed
result, where a farther first location is given priority over
a nearer second location, could result from many prioriti-
zation schemes that do not depend on location.
The prioritization information used in the proposed
combination of the prior art is alphabetical ordering.
Galitz recommends “alphabetical ordering” for lists with
“a large number of options” and “small lists where no
frequency or sequence pattern is obvious.” J.A. 1189.
Alphabetical prioritization will often result in locations
that are farther away being given a higher priority than
locations that are nearer. For example, prioritizing a list
of countries in English by alphabetical order will place
Afghanistan before Niger, even when the prioritization is
done in nearby Nigeria. Alphabetical order, thus, will
result in instances of farther-over-nearer ordering.
It does not matter that the use of alphabetical order
for locations would not always result in farther-over-
nearer ordering. It is enough that the combination would
sometimes perform all the method steps, including far-
ther-over-nearer ordering. See Hewlett-Packard, 340 F.3d
at 1326. Because the use of alphabetical order as prioriti-
zation information would sometimes meet the farther-
over-nearer claims elements, the Board was correct to
conclude that the proposed combination taught all of the
elements of claim 1.
3. A skilled artisan would be motivated to combine.
Unwired argues that in the context of location-based
services, a skilled artisan would have no motivation to
combine the prior art references to achieve farther-over-
nearer ordering. Unwired argues that “Google has never
shown a motivation to modify Brohoff, because Google has
12 UNWIRED PLANET, LLC v. GOOGLE INC.
never shown that those working in the art perceived a
problem with nearer-first ordering.” Unwired Br. 30.
Google argues that the proposed combination does not
require abandoning nearer-first ordering. It notes that
Galitz teaches the advantages of using ordering tech-
niques in combination. Google characterizes the proposed
combination as using the ordering techniques of Galitz in
combination with Brohoff’s disclosure of grouping search
results based on proximity zones. Google also argues that
it does not need to show that there was a known problem
with the prior art system in order to articulate the re-
quired rational underpinning for the proposed combina-
tion. We agree.
The Court in KSR described many potential ration-
ales that could make a modification or combination of
prior art references obvious to a skilled artisan. 550 U.S.
at 417–22; see also MPEP § 2143. KSR overturned the
approach previously used by this court requiring that
some teaching, suggestion, or motivation be found in the
prior art. 550 U.S. at 415. Instead, the Court explained
that a rationale to combine could arise from “interrelated
teachings of multiple patents; the effects of demands
known to the design community or present in the market-
place; and the background knowledge possessed by a
person having ordinary skill in the art.” Id. at 418. For
example, the Court stated that “if a technique has been
used to improve one device, and a person of ordinary skill
in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”
Id. at 417. For the technique’s use to be obvious, the
skilled artisan need only be able to recognize, based on
her background knowledge, its potential to improve the
device and be able to apply the technique.
The device to be improved is Brohoff. The Board ex-
plained that Brohoff teaches a system that allows users to
UNWIRED PLANET, LLC v. GOOGLE INC. 13
search for information and be provided results based on
their location. In the provided search results, “the identi-
fied service providers are grouped by their respective
locations within a zone.” IPR Final Decision, 2015 WL
1478653, at *8 (citing Brohoff, col. 6 ll. 45–49). While the
zones in Brohoff are ordered nearer-first, Brohoff does not
explain how the service providers are prioritized within
their zone groups. See Brohoff, col. 8 ll. 47–55.
The improvement is provided by using the technique
of combining ordering methods found in Galitz. As the
Board recognized, Galitz teaches benefits of various
ordering techniques and suggests using them in combina-
tion. IPR Final Decision, 2015 WL 1478653, at *8. To
take advantage of the benefits of multiple techniques,
“[s]creen layout normally reflects a combination of [differ-
ent] techniques.” Id. (quoting Galitz at 121, J.A. 1054)
(second modification in original). Using ordering tech-
niques in combination is, thus, a technique that a person
of ordinary skill in the art would recognize could be used
to improve information display.
The Board’s determination that a person of skill in the
art would have been motivated to apply the techniques of
Galitz to Brohoff is supported by substantial evidence.
The Board found that testimony of Dr. Cox was entitled to
“substantial weight because [it] is consistent with the
teachings of Brohoff and Galitz.” Id. at *11. He explained
that “Galitz recognized that information may be ordered
by category—such as Brohoff’s geographic zones—and,
within each category, information may be ordered by
other prioritization information.” Id. at *8 (quoting Decl.
of Dr. Donald Cox, ¶ 42, J.A. 502).
Unwired does not dispute that a person of ordinary
skill in the art would have been able to apply the teach-
ings of Galitz to make the improvement it suggests.
Unwired claims that the specific problem of farther-over-
nearer ordering itself is not discussed in the combined
14 UNWIRED PLANET, LLC v. GOOGLE INC.
references. Galitz’s teaching of the advantages of combin-
ing ordering techniques shows “there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418.
Irrespective of whether a person of skill in the art would
have recognized specific use of Brohoff, substantial evi-
dence exists if she could have seen the advantages of
applying the teachings of Galitz to improve Brohoff. This
is sufficient to render the combination obvious. Id. at 417.
CONCLUSION
We affirm the Board’s determination that claims 1–6
of the ’205 patent were obvious in No. 2015–1810. We
dismiss as moot the appeal in No. 2015–1811.
AFFIRMED-IN-PART AND DISMISSED-IN-PART
COSTS
No costs.