Trials@uspto.gov
`571.272.7822
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`
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`Paper: 32
`Entered: March 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00036
`Patent 7,024,205 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
`
`On October 8, 2013, Google Inc. (“Petitioner”) filed a Petition (Paper
`
`1, “Pet.”) requesting an inter partes review of claims 1–6 (“the challenged
`
`claims”) of U.S. Patent No. 7,024,205 B1 (Ex. 1001, “the ’205 Patent”). On
`
`April 8, 2014, we instituted trial for all the challenged claims of the ’205
`
`
`
`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`Patent on certain of the grounds of unpatentability, under 35 U.S.C. § 103,
`
`that were alleged in the Petition. Paper 12 (“Decision to Institute” or “Inst.
`
`Dec.”).
`
`After institution of trial, Patent Owner, Unwired Planet, LLC (“Patent
`
`Owner”) filed a Patent Owner Response (Paper 23, “PO Resp.”). Petitioner
`
`filed a Reply to the Patent Owner Response (Paper 25, “Pet. Reply”).
`
`A consolidated oral hearing for CBM2014-00004, CBM2014-00005,
`
`CBM2014-00006, IPR2014-00027, IPR2014-00036, and IPR2014-00037,
`
`each involving the same Petitioner and the same Patent Owner, was held on
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`January 13, 2015. The transcript of the consolidated hearing has been
`
`entered into the record. Paper 31 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`Petitioner has shown by a preponderance of the evidence that claims
`
`1–6 of the ’205 Patent are unpatentable.
`
`A.
`
`The ’205 Patent
`
`The ’205 Patent relates to subscriber delivered, location-based
`
`services. Ex. 1001, 1:14. The ’205 Patent states that location-based service
`
`systems have been implemented or proposed for wireless networks. Id. at
`
`1:28–30. According to the ’205 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 1:30–33. The ’205 Patent indicates that location-based
`
`services can be expanded by receiving a service request from subscriber
`
`equipment and delivering to the subscriber equipment information based, at
`
`least in part, on a location of the subscriber equipment. Id. at 1:59–67. The
`
`
`
`2
`
`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`’205 Patent provides exemplary requests for services: *TRAFFIC,
`
`*HOTEL, *TOW, *PIZZA, and *ATM. Id. at 2:32–35. The ’205 Patent
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`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 2:9–14. Subscriber information
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`may include account numbers, credit card numbers, other financial
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`information, lodging preferences, price limitations, and discount programs.
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`Id. at 2:14–19.
`
`B.
`
`Related Matters
`
`Petitioner states that the ’205 Patent has been asserted against
`
`Petitioner in the following district court case: Unwired Planet, LLC v.
`
`Google, Inc., No. 3:12-cv-504 (D. Nev.). Pet. 1, 59. Additionally, Petitioner
`
`filed another petition in CBM2014-00005, which seeks covered business
`
`method patent review of the ’205 Patent. A Final Written Decision in
`
`CBM2014-00005 is entered concurrently with this decision.
`
`Furthermore, U.S. Patent No. 7,203,752 (“the ’752 patent”) and U.S.
`
`Patent No. 7,463,151 (“the ’151 patent”) are involved in the same district
`
`court proceeding identified above, and also concern location-based mobile
`
`service technology. The ’752 patent and the ’151 patent are not, however, in
`
`the same patent family as the ’205 Patent. Petitioner has requested Office
`
`review of the ’752 patent (Case Nos. CBM2014-00006 and IPR2014-00037)
`
`and the ’151 patent (Case Nos. CBM2014-00004 and IPR2014-00027).
`
`
`
`3
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`
`C.
`
`Illustrative Claim
`
`
`
`Of the challenged claims, only claim 1 is independent. Claims 2–6
`
`each depend directly from claim 1. Claim 1 is reproduced below:
`
`A method for providing location based services in a
`1.
`wireless network comprising the steps of:
`receiving, on a network platform in communication with
`a subscriber using a mobile unit via an air interface, a service
`request requesting service provider information regarding said
`location based services, said service request including service
`type information identifying a type of service for which said
`service provider information is requested;
`obtaining, on said network platform, location information
`regarding a location of said mobile unit determined using a
`network assisted location finding technology, said technology
`being operative to provide location information regarding said
`mobile unit based at least in part on a position of the mobile
`unit in relation to a known location of a stationary ground based
`network structure;
`identifying, on said network platform, first and second
`service providers and associated first and second service
`provider information based upon said service type information
`and said determined location of said mobile unit wherein said
`first service provider is farther from said mobile unit than said
`second service provider;
`accessing stored subscriber independent prioritization
`information, separate from said service type information,
`relating to a prioritization for presenting service provider
`information
`to a subscriber, said stored prioritization
`information establishing a basis independent of proximity and
`independent of any subscriber preferences for prioritizing said
`first and second service provider information;
`information,
`based upon said stored prioritization
`prioritizing said first and second service provider information,
`wherein said first location information is assigned a higher
`priority than said second location information; and
`outputting both said first and second service information
`on said mobile unit based upon said step of prioritizing.
`
`
`
`4
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`
`D.
`
` The Prior Art Relied Supporting Alleged Unpatentability
`
`Google relies on the following references:
`
`Reference Patent No.
`
`Remy
`
`EP 0647076
`
`Publication Date/
`Issued Date
`
`Publication Date:
`Apr. 5, 1995
`
`Exhibit No.
`
`Ex. 10051
`
`Hopkins WO 97/22066 Publication Date:
`June 19, 1997
`
`Ex. 1006
`
`Brohoff
`
`US 6,108,533
`
`Issued Date:
`Aug. 22, 2000
`
`Ex. 1013
`
`
`
`Wilbert O. Galitz, The Essential Guide to User Interface Design-An
`
`Introduction to GUI Design Principles and Techniques, 120–21, John Wiley
`
`& Sons, Inc. (1997) (“Galitz,” Ex. 1007).
`
`Laura Rich, IQ News: New Search Engine Allows Sites To Pay Their
`
`Way To Top, http://www.adweek.com (Feb. 23, 1998) (“Rich,” Ex. 1008).
`
`E.
`
`The Pending Grounds of Unpatentability
`
`The following chart summarizes Petitioner’s pending patentability
`
`challenges.
`
`Reference
`
`Basis
`
`Claims Challenged
`
`Brohoff and Galitz
`
`§ 103
`
`1–3, 5, and 6
`
`Brohoff, Galitz, and Rich
`
`§ 103
`
`Remy and Hopkins
`
`§ 103
`
`4
`
`1–6
`
`
`1 Remy is a French language publication. Petitioner submitted both the
`French language publication, as well as an English language translation of
`Remy, as a single exhibit, Exhibit 1005. All citations herein are to the
`English language translation.
`
`
`
`5
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
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`
`II.
`
`ANALYSIS
`
`A.
`
`Claim Construction
`
`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. In re Cuozzo Speed Techs.,
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`No. 2014-1301, 2015 WL 448667, at *6–*8 (Fed. Cir. Feb. 4, 2015)
`
`(“Congress implicitly adopted the broadest reasonable interpretation
`
`standard in enacting the AIA,” and “the standard was properly adopted by
`
`PTO regulation.”); 37 C.F.R. § 42.100(b). 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,
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`1257 (Fed. Cir. 2007). We must be careful not to read a particular
`
`embodiment appearing in the written description into the claim if the claim
`
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993). We construe the terms below in accordance with
`
`these principles.
`
`1.
`
`Decision to Institute
`
`In the Decision to Institute, we determined the broadest reasonable
`
`interpretation of “network platform” and “prioritization,” which are
`
`summarized below. Inst. Dec. 6–10.
`
`Claim Term
`“network platform”
`
`“prioritization”
`
`Construction
`“[A] computer included on a
`network.” Id. at 9.
`“[O]rdering.” Id. at 10.
`
`
`
`
`
`6
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`

`IPR2014-00036
`Patent 7,024,205 B1
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`
`Additionally, we determined that no express construction of either
`
`“independent” or “network administrator” was necessary at that point in the
`
`proceeding. Id. We discern no reason, based on the complete record now
`
`before us, to change our determinations thereof.
`
`2.
`
`The Parties’ Contentions
`
`Patent Owner also contends that “wherein said first location
`
`information is assigned a higher priority than said second location
`
`information,” as recited in claim 1, refers to location information associated
`
`with a service provider. PO Resp. 5. We evaluate Patent Owner’s
`
`contention below.
`
`Furthermore, Patent Owner contends that a teaching of frequency of
`
`use is not subscriber independent. PO Resp. 17. The contention pertains to
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`the following recitation in claim 1: “prioritization information establishing a
`
`basis independent of proximity and independent of any subscriber
`
`preferences for prioritizing said first and second service provider
`
`information” (emphases added). Neither party provides a construction for
`
`any portion of this limitation, except for the contentions provided for the
`
`term “independent,” noted above. Neither party disputed our determination
`
`regarding the broadest reasonable interpretation of “prioritization” (Inst.
`
`Dec. 10), mentioned above. To evaluate Patent Owner’s contention
`
`regarding frequency of use, we determine the broadest reasonable
`
`interpretation of “any subscriber preferences.”
`
`3.
`
`“wherein said first location information is assigned a higher priority
`than said second location information”
`
`The relevant excerpt of claim 1 is: “prioritizing said first and second
`
`service provider information, wherein said first location information is
`
`
`
`7
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`

`IPR2014-00036
`Patent 7,024,205 B1
`
`assigned a higher priority than said second location information.” We agree
`
`with Patent Owner (PO Resp. 5) that one of ordinary skill would understand
`
`that the first and second location information refers to the first and second
`
`service providers recited in the immediately preceding limitation.
`
`Accordingly, we determine that “wherein said first location
`
`information is assigned a higher priority than said second location
`
`information” means “wherein said first service provider information is
`
`assigned a higher priority than said second service provider information.”
`
`4.
`
`“any subscriber preferences”
`
`The phrase “any subscriber preferences” is recited, for example, in
`
`claim 1: “prioritization information establishing a basis independent of
`
`proximity and independent of any subscriber preferences for prioritizing.”
`
`Neither party provides a proposed construction for the term “any subscriber
`
`preferences.” We, however, construe this term to evaluate the parties’
`
`dispute as to whether Galitz’s teaching of frequency of use is independent of
`
`any subscriber preferences, as asserted by Patent Owner (PO Resp. 14–15).
`
`One exemplary use of the term “preferences” found in the ’205 Patent
`
`Specification states that a menu may be ordered based on any of various
`
`criteria, “such as preferences expressed in the subscriber profile.” Ex. 1001,
`
`8:32–36. The ’205 Patent Specification also refers to a “smoking
`
`preference” of an individual subscriber (id. at 2:16–17) and “service
`
`preference information such as hotel room requirements” of an individual
`
`subscriber (id. at 5:19–20). In other words, every usage of subscriber
`
`preferences in the ’205 Patent Specification indicates that “subscriber
`
`preferences” pertain to an individual subscriber.
`
`
`
`8
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`
`Regarding the term “any” in the context of “subscriber preferences,”
`
`the ’205 Patent Specification states, “[t]he profile information may include
`
`any of various recorded personal data for the user.” Ex. 1001, 4:1–2. The
`
`use of “may include” suggests that the profile information in certain cases
`
`includes some, but not all recorded personal data for the user. The ’205
`
`Patent Specification provides additional description of information regarding
`
`individual subscribers as follows:
`
`The subscriber profile information 114 includes information
`regarding individual subscribers that is useful in personalizing
`the location-based services and in processing individual service
`requests.
` Some examples of such information include:
`1) financial information for use in executing a location-based
`service transaction such as credit card numbers and expiration
`dates, bank account numbers, or corporate account information;
`2) service preference
`information such as hotel room
`requirements, information regarding discount programs or club
`memberships, and preferred chains or other service providers;
`3) information regarding the subscriber’s service usage profile
`such as typical travel times and roads, types of services most
`often requested by the subscriber and demographic information;
`and 4) the subscriber’s willingness or desire to receive
`complementary service information and advertisements. Such
`profile information may be entered by a carrier or other
`location-based service administrator upon signing up for the
`service and may be periodically revised or automatically
`revised based on adaptive logic.
`
`Id. at 5:13–32.
`
`In light of the ’205 Patent Specification, therefore, we determine that
`
`“any subscriber preferences” (emphasis added) pertains to any of the
`
`individual’s credit card numbers, bank account numbers, hotel room
`
`requirements, club service memberships and other preferences of the
`
`individual subscriber, noted above. Id. As described in the ’205 Patent
`
`
`
`9
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`

`IPR2014-00036
`Patent 7,024,205 B1
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`Specification, the preferences are “recorded personal data for the user.” Ex.
`
`1001, 4:1–2. We determine additionally that these subscriber preferences
`
`include, but are not limited to preferences stored in the subscriber profile.
`
`Id. (“The profile information may include any of various recorded personal
`
`data” (emphasis added).)
`
`For the reasons given, we determine, in light of the ’205 Patent
`
`Specification, that the broadest reasonable interpretation of “any subscriber
`
`preferences” is recorded preferences of the individual subscriber using the
`
`mobile unit. The preferences of the individual subscriber include recorded
`
`personal data such as the individual’s credit card numbers, bank account
`
`numbers, hotel room requirements, and club service memberships.
`
`B.
`
`Alleged Obviousness of Claims 1–3, 5, and 6 over Brohoff and Galitz
`
`For the reasons given below, after consideration of the Petition, the
`
`arguments in the Patent Owner Response, and the evidence cited therein, we
`
`conclude that Petitioner has shown, by a preponderance of the evidence, that
`
`each of claims 1–3, 5, and 6 would have been obvious over the combination
`
`of Brohoff and Galitz.
`
`1.
`
`Brohoff
`
`Brohoff describes a geographical database for providing information
`
`to subscribers of cellular radio systems. Ex. 1013, 1:8–10. In particular,
`
`Brohoff states that a mobile subscriber would be interested in obtaining
`
`information, such as a closest restaurant, coffee shop, or specialty store in
`
`their geographic area. Id. at 1:46–51. A user may enter a search word, such
`
`as “food” or “hamburgers.” Id. at 6:11–21. The search word may be sent
`
`from a mobile station requesting information to a geographic database. Id.
`
`at 4:39–41.
`
`
`
`10
`
`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`
`The request to the geographic database typically includes two
`
`components: (1) a geographic area from which the inquiry originates, i.e., a
`
`geographic location of a mobile station accessing the database; and (2) a
`
`possible search word that designates information a user of the mobile station
`
`desires. Ex. 1013, 4:12–17. Mobile station geographic information may be
`
`produced by a triangulation technique using three base stations from three
`
`different cell sites. Id. at 4:31–34.
`
`In one example, entry of the search word “food” provides four hits:
`
`“Burger Queen,” Pizza Castle,” Pizza House,” and “McDonalds.” Ex. 1013,
`
`6:11–14. Additionally, specific information may be provided, such as
`
`special offers currently being extended by each establishment identified by
`
`the database. Id. at 6:17–19.
`
`2.
`
`Galitz
`
`Galitz describes a computer reducing density in screen design. Ex.
`
`1007, 120. In particular, Galitz describes ordering of items, such as by
`
`sequence of use, frequency of use, function, importance, and general to
`
`specific. Id. at 120–21.
`
`3.
`
`Claim 1
`
`We have reviewed Petitioner’s obviousness contentions, supporting
`
`evidence, including the Declaration of Dr. Donald Cox (Ex. 1002 ¶¶ 41–43),
`
`and the detailed claim charts, which read all elements of claim 1 of the ’205
`
`Patent onto the combined teachings of Brohoff and Galitz. Pet. 37–43
`
`(citing Ex. 1013, 1:7–10, 1:46–58, 2:39–42, 4:12–17, 4:30–38, 4:45–49,
`
`6:11–27, 7:66–8:2, Figs. 1, 3, 5; Ex. 1007, 121). For instance, regarding the
`
`first three elements of claim 1, which require receiving a service request
`
`from the mobile unit, obtaining the mobile unit’s location, and identifying
`
`
`
`11
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`first and second service providers based upon the received information,
`
`Petitioner notes (id.) that Brohoff teaches using the geographic area (Ex.
`
`1013, 4:13–15, 4:30–38) and search key (id. at 4:15–17, 4:40–41) furnished
`
`by the wireless mobile (id. at 1:46, Fig. 1) to search a database of service of
`
`service providers (id. at 2:39–42, 4:12–17).
`
`Regarding the remaining requirements in claim 1 that result in
`
`outputting the first and second service locations on the mobile unit based on
`
`the step of prioritizing, Petitioner asserts that these requirements are taught
`
`by the combination of Brohoff and Galitz. For example, in the portions of
`
`Brohoff cited by Petitioner above, Brohoff teaches searching on the word
`
`“Food,” which results in identification of four eating establishments (Ex.
`
`1013, 6:11–27). Brohoff teaches further details regarding the output: “[t]he
`
`specific information provided by the geographic database may include
`
`geographic information on how to get to each of the locations [and] special
`
`offers currently being extended by each of the establishments.” Ex. 1013,
`
`6:14–19. Also, in the cited portions, Brohoff teaches that the identified
`
`service providers are grouped by their respective locations within a zone
`
`(Ex. 1013, 6:45–49, Fig. 5). Additionally, in the portions of Galitz cited by
`
`Petitioner, Galitz teaches prioritization of service providers on bases that are
`
`independent of proximity and independent of subscriber preferences (Ex.
`
`1007, 120, 121); see also Reply 9 (citing Ex. 1007, 256) (“Alphabetic
`
`ordering is also recommended for [large lists and] small lists where no
`
`frequency or sequence pattern is obvious.”)
`
`Furthermore, Petitioner has set forth a showing of articulated
`
`reasoning with rational underpinning to combine Brohoff and Galitz. See
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance,
`
`
`
`12
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`

`IPR2014-00036
`Patent 7,024,205 B1
`
`Petitioner, relying on Dr. Cox, states “[a] skilled artisan would be motivated
`
`to incorporate the prioritization information of Galitz into the geographic
`
`database of Brohoff.” Pet. 39 (citing Ex. 1002 ¶¶ 41–43). As explained
`
`above, Brohoff teaches an example of searching for the word “Food,” which
`
`results in identification of four eating establishments, as well as specific
`
`information about these establishments, such as geographic information on
`
`how to get to each of the locations and special offers currently being
`
`extended by each of the establishments. Ex. 1013, 6:11–27. Dr. Cox
`
`characterizes Galitz as “a treatise on user interface design,” which “describes
`
`numerous different types of prioritization information[, which are]
`
`independent of proximity and independent of any subscriber preferences.”
`
`Id. Dr. Cox states that “[a] skilled artisan would be motivated to incorporate
`
`the information of Galitz into the geographic database of Brohoff to ‘provide
`
`an ordering of elements that is logical and sequential.’” Id. ¶ 43 (Ex. 1007,
`
`120).
`
`Petitioner, in reliance on Dr. Cox, provides additional reasoning
`
`supporting its proposed combination: “Galitz suggests using its prioritization
`
`information in conjunction with, or instead of, the proximity organization in
`
`Brohoff.” Pet. 39; see also Ex. 1002 ¶ 42 (citing Ex. 1007, 121). Petitioner
`
`supports its contention with evidence. In particular, in the portions noted by
`
`Petitioner, Galitz states: “Screen layout normally reflects a combination of
`
`[different] techniques. Information may be organized functionally but,
`
`within each function, individual items may be arranged by sequence or
`
`importance.” Ex. 1007, 121. Petitioner also provides an illustrative
`
`explanation, “[f]or example, Galitz recognized that information may be
`
`ordered by category—such as Brohoff’s geographic zones—and, within each
`
`
`
`13
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`

`IPR2014-00036
`Patent 7,024,205 B1
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`category, information may be ordered by other prioritization information,
`
`such as Galitz’s sequence or importance information.” Pet. 39; see also
`
`Reply 9 (citing Ex. 1007, 256) (“Galitz provides a catch-all that further
`
`applies to its combination: ‘Alphabetic ordering is also recommended for
`
`[large lists and] small lists where no frequency or sequence pattern is
`
`obvious.’”)
`
`Patent Owner contends that: (1) the combination of Brohoff and
`
`Galitz fails to teach all the elements of claim 1 (PO Resp. 11–12, 15); and
`
`(2) Petitioner has not shown sufficiently that “one skilled in the art would []
`
`be motivated or able to combine Brohoff and Galitz to achieve the
`
`inventions recited in [claim 1]” (id.).
`
`a. Whether the Combination of Brohoff and Galitz
`Teaches Farther-Over-Nearer Ordering
`
`Patent Owner contends that the combination of Brohoff and Galitz
`
`fails to teach the portion of claim 1 reproduced below.
`
`identifying, on said network platform, first and second
`service providers . . . wherein said first service provider is
`farther from said mobile unit than said second service provider;
`accessing stored subscriber independent prioritization
`information . . .
`information,
`based upon said stored prioritization
`prioritizing said first and second service provider information,
`wherein said first location information is assigned a higher
`priority than said second location information
`
`(emphases added).
`
`Patent Owner characterizes this portion of the claim as requiring
`
`“farther-first ordering.” PO Resp. 8. Claim 1, however, recites
`
`“comprising,” which may result in the “first service provider information”
`
`not being the first information in a list displayed to a user. See Genentech,
`
`
`
`14
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`

`

`IPR2014-00036
`Patent 7,024,205 B1
`
`Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). We, therefore,
`
`refer to this portion of the claim as “farther-over-nearer ordering.”
`
`Turning to Patent Owner’s contentions regarding farther-over-nearer
`
`ordering, Patent Owner contends that Brohoff teaches nearer-first ordering
`
`of information. PO Resp. 8–10. Patent Owner also contends that Galitz
`
`relates to Graphical User Interface (GUI) designs and “does not disclose or
`
`suggest ordering results of a request for information on service providers in
`
`connection with any location based service.” PO Resp. 10.
`
`Patent Owner’s arguments are misplaced, as they are based on attacks
`
`on individual references, and one cannot show non-obviousness by attacking
`
`references individually where the rejections are based on a combination of
`
`references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
`
`1986) (“[T]he test is whether the references, taken as a whole, would have
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`suggested appellant’s invention to one of ordinary skill in the art.”); see also
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`In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
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`obviousness by attacking references individually where, as here, the
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`rejections are based on combinations of references.”)
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`Regarding Patent Owner’s contention that Galitz “does not disclose or
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`suggest ordering results of a request for information on service providers in
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`connection with any location based service” (PO Resp. 10), Petitioner
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`contends that Brohoff teaches location-based services such as searching a
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`database of service of service providers. See, e.g., Pet. 40–41 (citing Ex.
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`1013, 2:39–42, 4:12–17). As Petitioner correctly notes, Brohoff describes
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`an example of sending to a mobile station search results identifying four
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`eating establishments, as well as special offers being extended by each of
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`Patent 7,024,205 B1
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`these establishments. Pet. 41 (citing Ex. 1013, 6:11–27). Patent Owner does
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`not dispute these teachings persuasively.
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`Regarding Patent Owner’s contention that Brohoff teaches nearer-first
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`ordering of information (PO Resp. 8–10), Petitioner contends that Galitz is
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`“a treatise on user interface design” and provides “numerous types of
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`prioritization information.” See Pet. 42 (citing Ex. 1007, 120–21); see also
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`Reply 9 (citing Ex. 1007, 256). As Petitioner correctly notes (id.), Galitz
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`teaches: (1) “an ordering of elements that is logical and sequential” (Ex.
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`1007, 120), (2) “[c]ommon ordering schemes are . . . Sequence of Use[,] . . .
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`Frequency of Use[,] . . . Function[,] . . . Importance[,] . . . [and] General to
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`Specific” (id. at 120–121), and (3) “alphabetic ordering is desirable” for “a
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`large number of options” and “small lists” (id. at 256). As is evident from
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`the teaching in Galitz of prioritizing search results, such as those taught by
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`Brohoff, the combination of Brohoff and Galitz at least suggests farther-
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`over-nearer ordering of service provider information, as recited in claim 1.
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`Patent Owner further contends that Galitz’s teachings “make little
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`sense in the context of [location based service] technologies.” PO Resp. 12–
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`13. Patent Owner’s contention is based on a conclusory statement by its
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`expert, Dr. Christopher H. Kingdon, that Galitz’s teachings are not
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`applicable or customary for location-based services. PO Resp. 13–14 (citing
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`Ex. 2001 ¶ 35). Specifically, Dr. Kingdon states, “[c]onventional ordering
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`for [location based service] information, in 1998, would involve a nearer-
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`first ordering.” Ex. 2001 ¶ 35; see also id. ¶ 44 (“in order to be consistent
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`with the real world, a person of ordinary skill would intuitively order closer
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`objects over farther away objects.”) Dr. Kingdon’s testimony, however,
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`does not disclose the underlying facts or data on which his opinion is based.
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`Patent 7,024,205 B1
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`See 37 C.F.R. § 42.65(a). Additionally, Dr. Kingdon states what
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`conventional ordering “would involve” (Ex. 2001 ¶ 35), which is different
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`than stating what would have been excluded from conventional ordering
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`schemes for location based services.
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`Furthermore, Petitioner has submitted evidence that demonstrates the
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`applicability of Galitz’s teachings to location-based services. For example,
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`Galitz’s teaches prioritizing address information (Pet. 27 (citing Ex. 1007,
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`120)), which is the type of information that is displayed by location based
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`services. Also, in contrast to Dr. Kingdon’s testimony, Dr. Cox’s testifies as
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`to customary and conventional use of sequential or alphabetical ordering for
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`location-based services, for example, in the form of the “Yellow Pages.”
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`Pet. 2; see also Ex. 1002 ¶ 27 (“[A] particular Yellow Pages volume may
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`provide a listing of businesses in a specific geographic area (e.g.,
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`Alexandria, Virginia)[, ] and may segregate the businesses into similar types
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`(e.g., hotels or gas stations)[,]” and “then alphabetically within each
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`category.”)
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`b. Whether Frequency of Use is Subscriber Independent
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`Patent Owner also contends that one of Galitz’s prioritization
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`teachings, i.e., “Frequency of Use” (Ex. 1007, 120), is not subscriber
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`independent. PO Resp. 15. This limitation is shown in the portion of claim
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`1 reproduced below:
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`accessing stored subscriber independent prioritization
`information, separate from said service type information,
`relating to a prioritization for presenting service provider
`to a subscriber, said stored prioritization
`information
`information establishing a basis independent of proximity and
`independent of any subscriber preferences for prioritizing said
`first and second service provider information
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`Patent 7,024,205 B1
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`Ex. 1001, 10:43–50 (emphasis added).
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`In particular, Patent Owner contends that frequency of use
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`“presumably would depend on subscribers’ usage patterns.” PO Resp. 15
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`(emphasis added). For the reasons discussed above with respect to claim
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`construction, we determine that the broadest reasonable interpretation of
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`“any subscriber preferences” is recorded preferences of the individual
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`subscriber using the mobile unit. Patent Owner’s contention pertains to
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`general popularity or usage patterns of a majority of subscribers.
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`Accordingly, Patent Owner’s contention is not commensurate with the scope
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`of claim 1.
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`c. Whether Petitioner has set forth a Sufficient Showing of Articulated
`Reasoning with Rational Underpinning to Combine Brohoff and Galitz
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`Patent Owner contends that “Petitioner’s [a]sserted [m]otivation to
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`combine the references is deficient.” PO Resp. 19. In particular, Patent
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`Owner contends that “[a]s already taught by the text of Brohoff, Brohoff
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`orders its service provides ‘in a sequential and orderly fashion.’” PO
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`Resp. 20 (citing Ex. 1013, 5:34–43). Patent Owner continues, “[o]ne of
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`ordinary skill in the art would not look to modify Brohoff’s teachings of a
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`‘sequential and orderly fashion,’ to produce what Brohoff already teaches.”
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`PO Resp. 20.
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`Patent Owner’s contention is that Galitz does not teach anything not
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`in Brohoff. For the reasons discussed above with respect to farther-over-
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`nearer ordering, we are not persuaded.
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`Patent Owner additionally contends that “[o]ne of ordinary skill in the
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`art of Location-Based Services would not look to a reference discussing
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`Graphical User Interfaces.” PO Resp. 21. In particular, Patent Owner
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`contends “Galitz does not direct its solutions specifically towards the
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`organization of information for service providers in a [location-based
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`service] environment.” PO Resp. 22.
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`Regarding whether one of ordinary skill would have looked to Galitz,
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`we are persuaded that Petitioner has set forth a sufficient showing of
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`articulated reasoning with rational underpinning to combine Brohoff and
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`Galitz. Petitioner relies on Dr. Cox, who provides a well formulated
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`explanation, which we discussed in detail above. Pet. 39 (citing Ex.
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`1002 ¶¶ 41–43). It is within our discretion to assign the appropriate weight
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`to the expert testimony offered by the parties. See, e.g., Yorkey v. Diab, 601
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`F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discreti