Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 31
`Entered: April 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET, LLC,
`Patent Owner.
`
`Case CBM2014-00006
`Patent 7,203,752 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`Tel: 571-272-7822
`
`Paper 31
`Entered: April 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET, LLC,
`Patent Owner.
`
`Case CBM2014-00006
`Patent 7,203,752 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Petitioner, Google Inc., filed a Petition pursuant to § 18 of the Leahy-
`
`Smith America Invents Act (“AIA”).1 Paper 1 (“Pet.”). The Petition
`
`challenged claims 25–29 (“the challenged claims”) of U.S. Patent No.
`
`7,203,752 B2 (“the ’752 patent”). On April 8, 2014, we instituted a
`
`transitional covered business method patent review (Paper 11, “Decision to
`
`Institute” or “Dec.”) based upon Petitioner’s assertion that the challenged
`
`claims are unpatentable based on the following grounds:
`
`Reference[s] 2
`
`Not Applicable
`
`Not Applicable
`
`Havinis ’931 and Leonhardt
`
`Landgren and Leonhardt
`
`Basis
`
`§ 101
`
`§ 112, ¶ 1
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`25–29
`
`26
`
`25
`
`25
`
`A consolidated hearing for CBM2014-00004, CBM2014-00005,
`
`CBM2014-000006, IPR2014-00027, IPR2014-00036, IPR2013-00037,
`
`involving the same parties, was held January 13, 2015. Paper 30 (hearing
`
`transcript).
`
`This is a Final Written Decision under 35 U.S.C. § 328(a). Based on
`
`the record presented, we are persuaded that Petitioner has shown by a
`
`preponderance of the evidence that the challenged claims are unpatentable.
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`2 U.S. Patent No. 6,104,931 (Ex. 1004) (“Havinis ’931”); U.S. Patent No.
`6,115,754 (Ex. 1005) (“Landgren”); Ulf Leonhardt & Jeff Magee, Towards
`a General Location Service for Mobile Environments, Proceedings of the
`Third Int’l Workshop on Servs. In Distributed & Networked Env’ts 43–50
`(1996) (Ex. 1008) (“Leonhardt”).
`
`2
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`B. The ’752 Patent
`
`The ’752 patent relates to using location-based services over mobile
`
`wireless networks. Ex. 1001, 1:14–19. According to the ’752 patent, at the
`
`time of the invention, services related to the provision of wireless
`
`communications, including those provided to mobile subscribers based on
`
`their geographic location, were common. Id. at 1:33–46. These so-called
`
`“location-based services” track the mobile subscriber as they move
`
`throughout the network so that the service may provide location-based
`
`information to either the subscriber (e.g., the closest gas station) or an entity
`
`monitoring the subscriber (e.g., an employer monitoring the location of its
`
`employees). Id. at 1:47–56.
`
`Of course, location tracking raises privacy concerns. Id. at 1:60–63.
`
`To protect his or her privacy, a mobile subscriber may wish to limit access to
`
`their location information based upon many factors, including: (1) the time
`
`of the request; (2) the mobile subscriber’s location at the time of the request;
`
`or (3) the party who is seeking the information. Id. at 1:63–2:1. The ’752
`
`patent addresses this need for controlled access to potentially sensitive
`
`location information by storing a “subscriber profile.” Id. at 2:8–14. A
`
`subscriber profile includes a description of the services (“client
`
`applications”) that may receive location information and the conditions
`
`under which that information may be provided to the services. Id. at 2:8–20.
`
`Figure 1 of the ’752 patent is reproduced below.
`
`3
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`CBM2014-00006
`Patent 7,203,752 B2
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`
`
`Figure 1 discloses the overall system architecture in which the
`
`invention described by the ’752 patent operates. Id. at 4:12–13. Wireless
`
`communications device 14 communicates via tower 12 over wireless
`
`network 10. Id. at 4:28–32. Location server 50 periodically collects
`
`location data for wireless communication device 14. Id. at 4:51–56. Client
`
`application 24 communicates with access manager 40 to request wireless
`
`communication device 14’s current location. Id. at 5:25–46. Access
`
`manager 40 determines if client application 24 is authorized to make the
`
`request under the current conditions by authenticating client application 24
`
`and inspecting the contents of wireless communication device 14’s
`
`subscriber profile. Id. at 5:38–46. Figure 3 of the ’752 patent is reproduced
`
`below.
`
`4
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`CBM2014-00006
`Patent 7,203,752 B2
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`
`
`Figure 3 discloses an example subscriber profile. Id. at 4:17–18. In
`
`this example, the subscriber profile includes permission set 324 for each
`
`client application 24 (each of Company A, B, and C) authorized to access
`
`this subscriber’s location information. Id. at 9:36–39. Each permission set
`
`324 “may include a temporal permission set which identifies the time of
`
`day/day of week a particular authorized client may access the location
`
`information” as well as a “spatial permission set [which] provides a listing
`
`of the enabled geographic areas (for example city/county/state), for
`
`providing the location information” to the requesting client application. Id.
`
`at 9:39–45.
`
`C. Related Matters
`
`Petitioner states that the ’752 patent has been asserted against
`
`Petitioner in a related district court proceeding in the District of Nevada.
`
`5
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`
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`CBM2014-00006
`Patent 7,203,752 B2
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`Pet. 79. Additionally, Petitioner filed a petition for an inter partes review in
`
`the following proceeding before the Board involving the ’752 patent:
`
`IPR2014-00037. A final written decision in IPR2014-00037 is entered
`
`concurrently with this decision.
`
`Furthermore, U.S. Patent No. 7,463,151 (“the ’151 patent”) and U.S.
`
`Patent No. 7,024,205 (“the ’205 patent”) are involved in the same district
`
`court proceeding identified above, and also concern location-based, mobile
`
`service technology. The ’151 patent and the ’205 patent are not, however, in
`
`the same patent family as the ’752 patent. Petitioner has requested Office
`
`review of the ’151 patent (Case Nos. CBM2014-00004 and IPR2014-00027)
`
`and the ’205 patent (Case Nos. CBM2014-00005 and IPR2014-00036).
`
`D. The Challenged Claims
`
`Petitioner challenges claims 25–29 of the ’752 patent. Of the
`
`challenged claims, only claim 25 is independent. Claim 26 depends from
`
`claim 25, claims 27 and 28 each depend from claim 26, and claim 29
`
`depends from claim 28. Claims 25 and 26 are reproduced here:
`
`25. A method of controlling access to location information
`for wireless communications devices operating in a wireless
`communications network, the method comprising:
`
`receiving a request from a client application for location
`information for a wireless device;
`
`retrieving a subscriber profile from a memory, the
`subscriber profile
`including a
`list of authorized client
`applications and a permission set for each of the authorized
`client applications, wherein the permission set includes at least
`one of a spatial limitation on access to the location information
`or a temporal limitation on access to the location information;
`
`querying the subscribe profile to determine whether the
`client application is an authorized client application;
`
`6
`
`
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`CBM2014-00006
`Patent 7,203,752 B2
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`querying the subscriber profile to determine whether the
`permission set for the client application authorizes the client
`application to receive the location information for the wireless
`device;
`
`determining that the client application is either not an
`authorized client application or not authorized to receive the
`location information; and
`
`denying the client application access to the location
`information.
`
`Ex. 1001, 16:18–40.
`
`26. The method of claim 25 further comprising:
`
`notifying the wireless device that the client application is
`not authorized to receive the location information; and
`
`updating the subscriber profile to authorize the client
`application
`to
`receive
`the
`location
`information during
`subsequent requests.
`
`Ex. 1001, 16:41–46.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We construe all terms, whether or not expressly discussed here, using
`
`the broadest reasonable construction in light of the ’742 patent specification.
`
`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667 at *7
`
`(Fed. Cir. Feb. 4, 2015) (“We conclude that Congress implicitly adopted the
`
`broadest reasonable interpretation standard in enacting the AIA.”); 37 C.F.R.
`
`§ 42.300(b). In the Decision to Institute, we expressly construed the
`
`following terms: (1) “spatial limitation on access to the location
`
`information” as “limitation on access to location information that depends
`
`on the mobile device’s location”; and (2) “subscriber profile” as “a set of
`
`limitations on the provision of location information corresponding to the
`
`wireless device, based upon the privacy preferences of the wireless device
`
`7
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`CBM2014-00006
`Patent 7,203,752 B2
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`user.” Dec. 7–9. Neither party has expressed disagreement with these
`
`constructions, and we see no reason to modify these constructions based on
`
`the evidence introduced during trial. For purposes of this Decision, we
`
`continue to apply these constructions for the same reasons as set forth in the
`
`Decision to Institute.
`
`B. Obviousness Grounds—Claim 25
`
`The Petition challenges the patentability of claims 25–29 of the ’752
`
`patent under 35 U.S.C. §§ 102 and 103. Pet. 46–79. After considering the
`
`arguments and evidence presented in the Petition and the Preliminary
`
`Response (Paper 8), we instituted trial with respect to claim 25, concluding
`
`that Petitioner was likely to prevail in showing unpatentability over
`
`combinations of (1) Havinis ’931 and Leonhardt, and (2) Landgren and
`
`Leonhardt. Dec. 34.
`
`1. Patent Owner’s Arguments
`
`Patent Owner was then afforded the opportunity to file a Patent
`
`Owner Response to address “any ground for unpatentability not already
`
`denied” by our Decision to Institute. 37 C.F.R. § 42.220. In its Patent
`
`Owner Response, Patent Owner does not address the grounds of
`
`unpatentability under § 103 for claim 25. Paper 22 (“PO Resp.”), 3 (“The
`
`present response does not address the alleged grounds of unpatentability
`
`under §§ 102 and 103 for independent claim 25.”). Thus, Patent Owner
`
`provides no substantive arguments beyond those previously asserted in its
`
`Preliminary Response (Paper 8). We previously considered those
`
`arguments, but did not find them persuasive. Dec. 17–29.
`
`Thus, for these grounds we are left to consider only the evidence of
`
`record as presented in the Petition. See Pet. 56–59, 69–70. After
`
`8
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`CBM2014-00006
`Patent 7,203,752 B2
`
`considering Petitioner’s evidence with respect to claim 25, as explained in
`
`more detail below, we determine that the preponderance weighs in favor of
`
`unpatentability.
`
`2. Overview of Havinis ’931
`
`Havinis ’931 discloses a method requesting location services within a
`
`mobile communications system. Ex. 1004, 1:8–14. Specifically, Havinis
`
`’931 describes a “Location Application (LA)” that may request the location
`
`of a mobile station after registering with at least one “Gateway Mobile
`
`Location Center (GMLC”). Id. at 2:24–35, 3:43–51. This information is
`
`stored in a database called the “Home Location Register (HLR)” along with
`
`subscriber information including privacy preferences. Id. at 1:55–2:9, 7:16–
`
`29. Upon a request from a particular LA, the GMLC verifies the
`
`authenticity of the LA. Id. at 4:66–5:4. Once the GMLC determines that the
`
`LA is legitimate, it requests the mobile station’s location from the HLR (id.
`
`at 7:16–45) and checks the privacy indications of the mobile station (id. at
`
`7:46–65). If the mobile station’s privacy settings allow location information
`
`to be sent to the LA under the current conditions, the information is
`
`forwarded. Id. at 8:1–9. Otherwise, a rejection message is sent. Id. at 7:66–
`
`8:1.
`
`3. Overview of Leonhardt
`
`Leonhardt describes “how to meet the need for location-dependent
`
`information by introducing a general-purpose location service for mobile
`
`environments” and “investigates mechanisms to exactly specify and
`
`supervise the level of access to location data that is wanted.” Ex. 1008, 43.
`
`The mechanism Leonhardt proposes is a “flexible yet powerful access
`
`control mechanism[ ]” using a hierarchical structure of location information.
`
`9
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`CBM2014-00006
`Patent 7,203,752 B2
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`Id. at 47. Specifically, Leonhardt’s mechanism includes a set of location
`
`access rules that define boundaries within which an object allows access to
`
`its location information. Id. These boundaries are defined using a “visible
`
`domain set[ ] (VDS).” Id. Only objects positioned in a location listed in the
`
`VDS of an access rule may be queried for their location. Id. To allow for
`
`personalized privacy preferences, “a user can specify his or her private
`
`location access authorisation policies in his or her personal user
`
`representation domain.” Id. Figure 3 of Leonhardt is reproduced below.
`
`
`
`Figure 3 of Leonhardt illustrates an example location access control
`
`rule “that specifies a policy which restricts the level of access for students to
`
`the location of members of staff.” Id. Specifically, the VDS of Figure 3
`
`includes, “Blackett Lab, Campus A, College, [and] CS Department.” Id. If
`
`a student queries the location of staff located anywhere other than those four
`
`listed locations, their query will be unsuccessful. Id.
`
`4. Overview of Landgren
`
`Landgren discloses appending location information of a mobile unit
`
`onto its communications. Ex. 1005, 1:9–15. Specifically, Landgren
`
`describes an entity called a “location appending unit,” which monitors
`
`communications passing between a gateway between a wireless network and
`
`10
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`CBM2014-00006
`Patent 7,203,752 B2
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`the Internet. Id. at 4:49–67, 5:28–41. When the location appending unit
`
`detects a requirement for location information on any communications, it
`
`determines the location of the mobile unit. Id. at 5:28–41. Part of this
`
`determination includes accessing a subscriber profile of the mobile unit. Id.
`
`at 8:56–59. The subscriber profile indicates whether the location appending
`
`unit is allowed to append its location information to a communication. Id. at
`
`8:59–65. If allowed, the location appending unit appends the mobile unit’s
`
`location information to the communication for delivery to the final
`
`destination. Id.
`
`5. Obviousness Over Havinis ’931 and Leonhardt
`
`Petitioner asserts that Havinis ’931 discloses all the features of claim
`
`25, but acknowledges that Leonhardt expressly teaches the limitation “the
`
`subscriber profile including . . . a permission set for each of the authorized
`
`client applications, wherein the permission set includes at least one of a
`
`spatial limitation on access to the location information or a temporal
`
`limitation on access to the location information” (“the permission set
`
`constraint limitation”). Pet. 56–57.
`
`We have reviewed Petitioner’s obviousness contentions and
`
`supporting evidence, including the Declaration of Dr. Donald Cox (Ex. 1002
`
`¶¶ 39–50, 68–70, 76), which read all elements of claim 25 of the ’752 Patent
`
`onto the combined teachings of Havinis ’931 and Leonhardt. Pet. 46–49,
`
`51–53, 56–59 (citing Ex. 1004, 2:10–14, 23–26, 3:33–40, 4:37–45, 5:5–36,
`
`7:47–66; Ex. 1008, Abs., 43, 47, Fig. 3). We are persuaded that Petitioner
`
`has shown claim 25 unpatentable over this combination. For instance, we
`
`are persuaded that Havinis ’931 discloses “[a] method of controlling access
`
`to location information for wireless communications devices operating in a
`
`11
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`CBM2014-00006
`Patent 7,203,752 B2
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`wireless communications network” as recited by claim 25. Specifically,
`
`Havinis ’931 discloses that the GMLC receives a positioning request for a
`
`mobile station from a location application and provides the requested
`
`information only if the location application is authorized and such access is
`
`permitted by the subscriber’s privacy indication.
`
`Moreover, we are persuaded that Havinis ’931 discloses the recited
`
`“subscriber profile including a list of authorized client applications and a
`
`permission set for each of the authorized client applications.” Specifically,
`
`we are persuaded that the location services profiles maintained by the
`
`GMLC database of Havinis ’931 constitute a subscriber profile. Ex. 1004,
`
`5:5–36; Ex. 1002 ¶¶ 41–44. As stated in our Decision to Institute, we are
`
`persuaded that these profiles “include limitations on the provision of
`
`location information corresponding to wireless devices, based on the privacy
`
`preferences of the wireless device user.” Dec. 22. Moreover, the GMLC
`
`maintains a list of location applications (in the form of Location Application
`
`Identifier Numbers) corresponding to the claimed authorized client
`
`applications and identifies a location services profile corresponding to the
`
`claimed permission set. See, e.g., Ex. 1004, 2:56–66.
`
`Finally, we are persuaded that the remaining limitations recited by
`
`claim 25 are disclosed by the combination of Havinis ’931 and Leonhardt.
`
`See Pet. 46–49, 51–53, 56–59; Dec. 21–25. For example, we are persuaded
`
`that Leonhardt discloses the “spatial limitation” component of the
`
`permission set constraint limitation. Leonhardt discloses requests for
`
`location information from querying objects may be constrained depending
`
`on the location of the target objects to be located. Ex. 1008, 47, Fig. 3; Ex.
`
`1002 ¶¶ 68–70; see Pet. 57–59.
`
`12
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`Patent 7,203,752 B2
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`Furthermore, Petitioner has set forth a showing of articulated
`
`reasoning with rational underpinning to combine Havinis ’931 and
`
`Leonhardt. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`For instance, Petitioner states:
`
`[a] person of ordinary skill would have found it obvious to
`modify the system of Havinis ’931 to include Leonhardt’s
`location access policies, in order to further Havinis ’931’s goals
`of managing positioning requests sent by Location Applications
`such that location services can be tailored individually to meet
`the needs of the mobile device user.
`
`Pet. 59 (citing Ex. 1004, 3:33–40). Relying on Dr. Cox, Petitioner adds that
`
`this modification “would have been nothing more than the application of a
`
`known method of privacy management to achieve a predictable result.” Ex.
`
`1002 ¶ 76. As explained in our Decision to Institute, we are persuaded the
`
`rationale set forth by Petitioner and Dr. Cox is reasonable. See Dec. 24–25.
`
`Subsequent to our preliminary finding, Patent Owner has provided no
`
`evidence or argument to the contrary. Thus, after once again evaluating
`
`Petitioner’s arguments and supporting evidence, we conclude that Petitioner
`
`has shown by a preponderance of the evidence that it would have been
`
`obvious to combine the relied upon teachings of Havinis ’931 and
`
`Leonhardt.
`
`We conclude that Petitioner has shown by a preponderance of the
`
`evidence that claim 25 of the ’752 Patent would have been obvious over
`
`Havinis ’931 and Leonhardt.
`
`6. Obviousness Over Landgren and Leonhardt
`
`Petitioner asserts that Landgren discloses all the features of claim 25,
`
`including a “subscriber profile,” except that the subscriber profile of
`
`Landgren does not include “a list of authorized client applications and a
`
`13
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`permission set for each of the authorized client applications, wherein the
`
`permission set includes at least one of a spatial limitation on access to the
`
`location information or a temporal limitation on access to the location
`
`information.” Pet. 61–66, 69–70. Petitioner relies on Leonhardt to make up
`
`this deficiency. Id. at 60–70.
`
`We have reviewed Petitioner’s obviousness contentions and
`
`supporting evidence, including the Declaration of Dr. Donald Cox (Ex. 1002
`
`¶¶ 52–55, 78), which read all elements of claim 25 of the ’752 Patent onto
`
`the combined teachings of Landgren and Leonhardt. Pet. 61–66, 69–70
`
`(citing Ex. 1005, Abs., 8:2126, 62–65; Ex. 1008, 43, 47). We are persuaded
`
`that Petitioner has shown claim 25 unpatentable over this combination. For
`
`instance, we are persuaded that Landgren discloses “receiving a request from
`
`a client application for location information for a wireless device” as recited
`
`by claim 25. Landgren discloses “an application operating on [a] web server
`
`. . . requesting the location appending unit . . . to intercept all
`
`communications.” Ex. 1001, 5:52–58; see id. 8:21–42.
`
`We are also persuaded that the remaining limitations recited by claim
`
`25 are disclosed by the combination of Landgren and Leonhardt. See Pet.
`
`61–66, 69–70; Dec. 27–29. For example, we are persuaded that the location
`
`access policies of Leonhardt constitute a subscriber profile, in that they
`
`identify subscribers or target objects (e.g., staff members) that may be
`
`located by querying objects (e.g., students). Ex. 1008, 47, Fig. 3; Ex. 1002
`
`¶¶ 68–70; see Pet. 61–66, 69–70. In addition, the querying objects
`
`(students) operate through applications to request location data. Id.
`
`Moreover, given that such location data may be provided, the applications
`
`used by the querying objects are authorized. Id. Finally, the reduction rules
`
`14
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`of Leonhardt correspond to the recited “permission set includ[ing] . . . spatial
`
`limitations on access to location information,” in that they constrain requests
`
`for location information from querying objects (students) depending on the
`
`location of the target objects (staff members) to be located. Id.
`
`Furthermore, Petitioner has set forth a showing of articulated
`
`reasoning with rational underpinning to combine Landgren and Leonhardt.
`
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance,
`
`Petitioner states:
`
`[a] person of ordinary skill would have found it obvious to
`modify the system of Landgren to include Leonhardt’s location
`access policies and reduction rules, in order to further
`Landgren’s goals of managing positioning requests sent by
`applications such
`that
`location services can be
`tailored
`individually to meet the needs of the mobile device user.
`
`Pet. 70. Relying on Dr. Cox, Petitioner adds that this modification “would
`
`have been nothing more than the application of a known method of privacy
`
`management to achieve a predictable result.” Ex. 1002 ¶ 78. As explained
`
`in our Decision to Institute, we are persuaded the rationale set forth by
`
`Petitioner and Dr. Cox is reasonable. See Dec. 29. Subsequent to our
`
`preliminary finding, Patent Owner has provided no evidence or argument to
`
`the contrary. Thus, after once again evaluating Petitioner’s arguments and
`
`supporting evidence, we conclude that Petitioner has shown by a
`
`preponderance of the evidence that it would have been obvious to combine
`
`the relied upon teachings of Landgren and Leonhardt.
`
`We conclude that Petitioner has shown by a preponderance of the
`
`evidence that claim 25 of the ’752 Patent would have been obvious over
`
`Landgren and Leonhardt.
`
`15
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`C. Written Description—Claim 26
`
`Petitioner contends that claim 26 lacks written description support
`
`under 35 U.S.C. § 112, ¶ 1.3 Pet. 43–46. Specifically, Petitioner asserts that
`
`the limitations “notifying the wireless device that the client application is not
`
`authorized to receive the location information” (“the notifying limitation”)
`
`and “updating the subscriber profile to authorize the client application to
`
`receive the location information during subsequent requests” (“the updating
`
`limitation”) were added during prosecution and are not supported by the
`
`language of the originally filed application. Id. at 43 (citing Ex. 1003, 43).
`
`In the Decision to Institute we instituted trial on this ground,
`
`concluding that Petitioner was likely to prevail in showing that the ’752
`
`patent fails to describe notifying the wireless device as required by the
`
`notifying limitation. Dec. 14–16. In addition, we concluded that Petitioner
`
`was likely to prevail in showing that the ’752 patent fails to describe the
`
`combination of the notifying limitation and the updating limitation. Id. at
`
`16–17.
`
`1. Order of the Steps
`
`As a preliminary matter, Patent Owner argues that the Decision to
`
`Institute erred in requiring a certain order to the steps of claim 26. PO Resp.
`
`6–13. This argument centers on four limitations of claim 26: “determining
`
`that the client application is either not an authorized client application or not
`
`authorized to receive the location information” (“the determining
`
`limitation”); (2) “denying the client application access to the location
`
`
`3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 1 as 35 U.S.C.
`§ 112(a). Because the ’752 patent has a filing date before September 16,
`2012 (effective date of § 4(c)), we will refer to the pre-AIA version of 35
`U.S.C. § 112.
`
`16
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`information” (“the denying limitation”); (3) the notifying limitation; and
`
`(4) the updating limitation. The determining and denying limitations are
`
`recited sequentially in claim 25 and the notifying and updating limitations
`
`are recited sequentially in claim 26. Id. We agree with Patent Owner that
`
`“unless the steps of a method actually recite an order, the steps are not
`
`ordinarily construed to require one.” Altiris, Inc. v. Synantec Corp., 318
`
`F.3d 1363, 1369 (Fed. Cir. 2003) (internal quotation marks omitted); PO
`
`Resp. 7.
`
`Patent Owner argues that between these four limitations, the only
`
`potential temporal requirement is that the determining limitation may be
`
`required to take place before the notifying limitation. PO Resp. 8–13. We
`
`agree that this particular temporal requirement is required by the claim
`
`language, because “notifying the wireless device that the client application is
`
`not authorized” requires there first to have been a “determin[ation] that the
`
`client application is . . . not authorized.”
`
`According to Patent Owner, however, the order of the denying and
`
`notifying limitations are not related, and thus do not indicate a particular
`
`temporal requirement. Id. at 8–10. In particular, Patent Owner asserts that
`
`although listed later in the claim than the denying limitation (because the
`
`notifying limitation is recited in claim 26 while the denying limitation is
`
`recited in claim 25), the notifying limitation is not tied to the result of the
`
`denying limitation. Id. In other words, Patent Owner asserts that nothing in
`
`the claim language or the specification restricts the wireless device from
`
`being notified that a client application is not authorized to receive the
`
`location information before the client application is denied access to the
`
`location information. Petitioner does not appear to disagree with this
`
`17
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`argument. See Paper 24 (“Reply”) 1–5. We agree with Patent Owner that
`
`the denying and notifying limitations do not have to occur in any particular
`
`order in relation to each other.
`
`Patent Owner also argues that nothing in the claim language or the
`
`specification requires a particular order of the notifying and updating
`
`limitations—“updating the subscriber profile to authorize the client
`
`application to receive the location information during subsequent requests.”
`
`PO Resp. 10–13. In the Decision to Institute, we stated that “because the
`
`‘updating’ step in claim 26 authorizes the client application to receive the
`
`location information ‘during subsequent requests’” the updating limitation
`
`must follow the notifying step in time. Dec. 17. Patent Owner objects to
`
`this logic because although “during subsequent requests” expresses a timing
`
`element, that element is not tied to anything in the notifying limitation. Id.
`
`Petitioner agrees with the Decision to Institute, arguing that the updating
`
`limitation has to occur after the notifying limitation. Reply 6–7 (citing Ex.
`
`2001 ¶¶ 20, 22 (Patent Owner’s declarant testimony)).
`
`We agree with Patent Owner that neither the claims nor the
`
`specification requires that the notifying limitation occur before the updating
`
`limitation. Instead, “during subsequent requests” logically refers to requests
`
`that occur after the subscriber profile has been updated. We agree that
`
`“subsequent” is not related to the immediately preceding claim limitation
`
`and we see no reason that a subscriber profile cannot be updated before the
`
`wireless device is notified that the client application is not authorized to
`
`receive the location information. Beginning with the claim language, “it
`
`neither grammatically nor logically indicates” that the notifying step must
`
`occur prior to the updating step. Altiris, 318 F.3d at 1370.
`
`18
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`Although it is true that being notified that a client application is not
`
`authorized may prompt a subscriber to update their profile, nothing in the
`
`claim ties the updating limitation to such a reaction. In fact, claim 26 does
`
`not specify who or what does the updating of the profile. See Ex. 1001,
`
`16:47–48 (claim 28 “[t]he method of claim 26 wherein the updating the
`
`subscriber profile is performed by the subscriber”). Thus, it is unclear why
`
`the updating limitation would be tied to the notification of the wireless
`
`device. Looking at the specification, we also see no requirement that the
`
`updating limitation occur after the notifying limitation and Petitioner does
`
`not point us to language supporting such a requirement. See Pet. 45–46;
`
`Reply 5–7. In fact, Petitioner acknowledges that the specification does not
`
`describe any embodiments in which the limitations occur in this order. Pet.
`
`45 (“[a]lthough the ’752 specification describes the subscriber profile can be
`
`modified . . . , it does not describe any embodiments in which the wireless
`
`device is notified that the client application is not authorized to receive the
`
`location information and the subscriber profile is then updated to authorize
`
`the client application in subsequent requests”) (citing Ex. 1001, 8:60–9:25,
`
`Figs. 5, 6A, 6B; Ex. 1002 ¶¶ 37–38).
`
`For these reasons, we conclude that, in claim 26, the denying and
`
`notifying limitations do not have to occur in any particular order in relation
`
`to each other.
`
`2. Written Description Support for the Notifying Limitation
`
`Petitioner contends that “the closest disclosure in the ’752
`
`specification” to the notifying limitation—“notifying the wireless device that
`
`the client application is not authorized to receive the location information”—
`
`is the following language: “If the information does not match, a ‘denied
`
`19
`
`
`
`CBM2014-00006
`Patent 7,203,752 B2
`
`access’ message will be presented to the requesting application.” Pet. 44
`
`(quoting Ex. 1001, 11:40–42). According to Petitioner, this language only
`
`describes notifying the client application of a denial of access and not
`
`notifying the wireless device as claimed and thus does not support the
`
`notifying limitation. Id. Petitioner points to other portions of the ’752
`
`patent that describe notifying the wireless device, but according to
`
`Petitioner, these sections only support notifications that occur after a client
`
`application has been cleared to receive location information, and therefore
`
`do not support notifying the wireless device of the correct information—in
`
`other words, Petitioner asserts that the notifying limitation requires
`
`notification that the client application is not authorized to receive the
`
`information. Id. at 44–45 (citing Ex. 1002 ¶¶ 34–36).
`
`We are not persuaded that Petitioner has shown by a preponderance of
`
`the evidence that the ’752 patent fails to provide sufficient written
`
`description support for the notifying limitation. Petitioner’s only evidence
`
`that the notifying limitation is not sufficiently supported is its argument that
`
`the ’752 patent fails to explicitly describe notifying the wireless device that
`
`access to the location information was denied. Pet. 44–45. Petitioner
`
`proffers testimony from Dr. Cox
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