`571.272.7822
`
`Paper 28
`Entered: November 19, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET LLC,
`Patent Owner.
`
`Case IPR2014-01164
`U.S. Patent No. 7,376,433 B1
`
`
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`
`I.
`Background
`A.
`Square, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–17 (“the challenged claims”) of U.S.
`Patent No. 7,376,433 B1 (Exhibit 1001, “the ’433 Patent”). We instituted
`trial for all the challenged claims on the grounds of unpatentability below.
`Paper 7 (“Decision to Institute” or “Inst. Dec.”).
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`Asserted Prior Art
`Basis
`Claims
`DeLorme1
`§102(e)
`Claims 1–7 and 11–17
`DeLorme and Trask2
`§103(a)
`Claims 7–10
`Baker3 and Hall4
`§103(a)
`Claims 1–6 and 11–16
`Baker, Hall, and Trask
`§103(a)
`Claims 7–10
`After institution of trial, Unwired Planet LLC (“Patent Owner”) filed
`a Patent Owner Response (Paper 11, “PO Resp.”). Petitioner filed a Reply
`to the Patent Owner Response (Paper 17, “Pet. Reply”).
`A hearing was held on September 16, 2015. The transcript has been
`entered into the record. Paper 27 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons given herein, Petitioner has shown by a preponderance of the
`evidence that the challenged claims are unpatentable.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner state that the ’433 Patent has been
`asserted against Petitioner in the following district court case: Unwired
`Planet LLC v. Square, Inc., No. 3:13-cv-00579 (D. Nev.). Pet. 2; See
`Mandatory Notice of Patent Owner Under 37 C.F.R. § 42.8(a)(2) (“Patent
`Owner Notice,” Paper 4).
`
`
`1 U.S. Patent No. 5,948,040 (“DeLorme”) (Ex. 1008).
`2 U.S. Patent No. 5,945,919 (“Trask”) (Ex. 1007).
`3 U.S. Patent No. 6,505,046 B1 (“Baker”) (Ex. 1009). Petitioner
`additionally relies on U.S. Patent Appl. No. 60/066,653 (“Baker
`Provisional”) (Ex. 1010).
`4 U.S. Patent No. 6,026,375 (“Hall”) (Ex. 1011).
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`Patent Owner asserted a related patent, U.S. Patent No. 7,024,205
`(“the ’205 patent”), in Unwired Planet, LLC v. Google, Inc., No. 3:12-cv-
`00504 (D. Nev.). See Patent Owner Notice. The ’205 patent issued from the
`parent of the application that issued as the ’433 Patent. The ’205 patent is
`the subject of a covered business method patent review, CBM2014-00005,
`and an inter partes review, IPR2014-00036, both of which involve a
`different petitioner than the instant proceeding. Id.
`Furthermore, U.S. Patent No. 7,711,100 (“the ’100 patent”) and U.S.
`Patent No. 8,275,359 (“the ’359 patent”) are involved in the same district
`court proceeding involving Petitioner identified above, and also concern
`location-based mobile service technology. The ’100 patent and the ’359
`patent are not, however, in the same patent family as the ’433 Patent.
`Petitioner has requested Office review of the ’100 patent (Case CBM2014-
`00156) and the ’359 patent (Case IPR2014-01165).
`
`The ’433 Patent
`C.
`The ’433 Patent relates to subscriber delivered, location-based
`services. Ex. 1001, 1:18–24. The ’433 Patent states that location-based
`service systems have been implemented or proposed for wireless networks.
`Id. at 1:32–34. According to the ’433 Patent, these systems generally
`involve determining location information for a wireless transceiver and
`processing the location information to provide an output desired for a
`particular application. Id. at 1:34–37. The ’433 Patent also states that
`location-based services can be enhanced by personalizing the services
`provided by processing a request based, at least in part, on stored
`information regarding a subscriber. Id. at 2:13–18. Subscriber information
`may include account numbers, credit card numbers, other financial
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`information, lodging preferences, price limitations, and discount programs.
`Id. at 2:18–23.
`
`Illustrative Claim
`D.
`Claims 1 and 15 are the independent claims challenged by Petitioner.
`Each of claims 2–14 depends, directly or indirectly, from claim 1, and each
`of claims 16 and 17 depends, directly or indirectly, from claim 15. Claim 1
`is illustrative and is reproduced below:
`
`1. A method of providing location-based services to a
`subscriber of a wireless network, the method comprising:
`storing, on the network platform, subscriber profile
`information regarding the subscriber, the subscriber using a
`mobile unit;
`in
`receiving, on a network platform
`thereafter
`communication with the subscriber, a service request from the
`mobile unit requesting information regarding the location-based
`services;
`obtaining, on the network platform, location information
`regarding a location of the mobile unit;
`identifying, on the network platform, a plurality of
`candidate service providers from a database of service
`providers, based upon the location of the mobile unit;
`identifying, on the network platform, service provider
`information associated with the plurality of candidate service
`providers;
`selecting, on the network platform, a subset of the
`plurality of candidate service providers based on the subscriber
`profile information, wherein selecting a subset comprises not
`selecting at least one of the plurality of candidate service
`providers;
`outputting information regarding the subset of the
`plurality of candidate service providers to the mobile unit;
`receiving an input from the mobile unit, wherein the
`input comprises a selection of a preferred service provider;
`transmitting information regarding the subscriber to the
`preferred service provider;
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`initiating a transaction between the subscriber and the
`preferred service provider based on the information regarding
`the subscriber; and
`receiving a transaction confirmation from the preferred
`service provider.
`
`II. ANALYSIS
`Claim Construction
`A.
`As a step in our analysis in the Decision to Institute, we determined
`the meaning of the claims. The constructions are summarized in the table
`below.
`
`Claim Term
`“subscriber profile information”
`
`“network platform”
`
`“mobile service provider”
`
`
`
`Construction
`“[I]nformation relating to a user.”
`Inst. Dec. 7.
`“[C]omputer included on a network.”
`Id. at 8.
`“[S]ervice provider that changes its
`location.” Id. at 8. We determine
`that “mobile service provider”
`encompasses the examples provided
`in the ’433 Patent specification
`including taxi, courier, and police
`unit. Id. at 9.
`
`Neither Petitioner nor Patent Owner disputes our constructions. Pet.
`Reply 2–3; PO Resp. 3–9; Tr. 8, 27. We discern no reason, based on the
`complete record now before us, to change our determinations thereof.
`Patent Owner provides constructions for three additional terms. We
`evaluate two of these constructions below, but need not address the other. In
`particular, we need not evaluate Patent Owner’s contentions regarding
`whether “at least one of” modifies both the credit card number and the
`expiration date as recited in claim 12’s limitation “wherein the financial
`information comprises at least one of a credit card number and an expiration
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`date, a bank account number, or corporate account information,” because we
`determine that DeLorme discloses “corporate account information,” as
`discussed further below.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Techs., LLC., 793 F.3d 1268, 1277–1279 (Fed. Cir.
`2015) (“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the [America Invents Act (Pub. L. No. 11229, 125
`Stat. 284 (2011)) (‘AIA’)],” and “the standard was properly adopted by
`[United States Patent and Trademark Office (‘USPTO’)] regulation.”).
`Under the broadest reasonable construction standard, claim terms are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe
`the terms below in accordance with these principles.
`
`“receiving a transaction confirmation from the preferred
`1.
`service provider”
`The term “receiving a transaction confirmation from the preferred
`service provider” is recited, for example, in independent claims 1 and 15.
`According to Patent Owner “receiving a transaction confirmation from the
`preferred service provider” means “receiving a transaction confirmation
`either directly from or indirectly from the preferred service provider.” PO
`Resp. 3. Patent Owner provides further clarification regarding its
`construction citing to Petitioner’s declarant, “Mr. Proctor[ ] testified during
`his deposition that ‘[i]t could be sent from a service provider via a central
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`service, or it can be sent directly, under the broadest reasonable meaning.’”
`Id. at 4 (citing Ex. 2003 at 140:4–9).
`Petitioner contends that the term “indirectly” does not appear in the
`patent specification and would itself require further construction. Pet. Reply
`3. Petitioner’s contention is not persuasive because the ’433 Patent
`Specification describes how a transaction confirmation is sent. In particular,
`the ’433 Patent Specification states that a transaction confirmation “is
`received (324) by the system and, in turn, transmitted (326) to the subscriber
`to complete the process,” which we discern as being “indirect,” as the
`“system” is not a part of the preferred service provider. Ex. 1001, 8:50–53.
`In light of Patent Owner’s contentions that an order is not a
`transaction (PO Resp. 49), we construe “transaction.” The ’433 Patent
`Specification does not define “transaction.” A dictionary sets forth a plain
`and ordinary meaning of “transaction” as follows: “something, such as a
`business deal, that is settled or is in the process of being settled.”
`CHAMBERS 21ST CENTURY DICTIONARY (Mari Robinson & George Davidson
`eds., 2001), available at
`http://search.credoreference.com/content/entry/chambdict/transaction/0 (Ex.
`3001).
`The dictionary definition is consistent with the ’433 Patent
`Specification. For example, the ’433 Patent Specification describes that
`“[t]he subscriber may direct the location-based service application running
`on the platform to transmit credit card or other subscriber information to a
`selected hotel or other service provider in order to consummate a
`transaction.” Ex. 1001, 7:53–57.
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`Upon review, we determine that “receiving a transaction confirmation
`from the preferred service provider” means “receiving a confirmation of
`something, such as a business deal, that is settled or is in the process of
`being settled either directly from or indirectly from the preferred service
`provider.”
`
`“network-assisted location finding technology”
`2.
`The term “network-assisted location finding technology” is recited in
`claim 2. Patent Owner contends that “network-assisted location finding
`technology” means “a location finding technology that analyzes signals
`communicated between network equipment and the mobile device to
`calculate a location of the mobile device which operates in conjunction with
`external systems that calculate mobile device location based on signals from
`external sources.” PO Resp. 7. Patent Owner further contends that
`“‘network assisted location finding technology’ is not standalone GPS
`[Global Positioning System] technology.” Id. at 7. Petitioner contends that
`“GPS is a location finding technology,” but does not otherwise provide its
`own construction. Pet. Reply 3.
`The ’433 Patent Specification does not define “network-assisted.” A
`dictionary sets forth a plain and ordinary meaning of “assist” as follows: “to
`help.” CHAMBERS 21ST CENTURY DICTIONARY (Mari Robinson & George
`Davidson eds., 2001), available at
`http://search.credoreference.com/content/entry/chambdict/assist/0 (Ex.
`3002). The dictionary definition of “assist” is useful in ascertaining the way
`in which one of ordinary skill in the art would use the claim term. Starhome
`GmbH v. AT&T Mobility LLC, 743 F.3d 849, 856–57 (Fed. Cir. 2014). This
`definition is consistent with the ’433 Patent Specification. Neither party has
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`pointed to portions of the ’433 Patent Specification that use the term “assist”
`or “assisted” with respect to location finding technology. The ’433 Patent
`Specification uses the term “assist” as an action performed by an emergency
`dispatcher when responding to a call (Ex. 1001, 1:42–44), and as an outcome
`of sending the location of a car phone in a stolen car to authorities (id. at
`1:50–53). The ’433 Patent Specification indicates that “location information
`may be based on an output from any suitable location finding equipment
`(LFE) or a combination thereof.” Ex. 1001, 2:50–52. The ’433 Patent
`Specification provides examples of LFEs including “network based
`systems” and “external systems that determine location based on signals
`from external sources, e.g., Global Positioning System (GPS) signals.” Id. at
`2:52–59. Additionally, according to the ’433 Patent Specification “[s]uch
`LFE inputs may be used in raw form or, more preferably, may be processed
`in conjunction with other LFE inputs, mapping information or the like to
`provide enhanced location information.” Id. at 2:59–63.
`Patent Owner contends that “the ’433[ P]atent [ ] broadly
`differentiates between ‘network based systems’ and ‘external systems.’” PO
`Resp. 7 (citing Ex. 1001, 2:50–59). In reliance on the testimony of Dr.
`Sandeep Chatterjee, Patent Owner concludes “[t]hus, the ’433 [P]atent
`specification makes clear that ‘network assisted location finding technology’
`does not encompass unassisted GPS.” Id. at 7–8 (citing Ex. 2002 ¶¶ 73–75).
`Dr. Chatterjee relies on the portion of the specification noted above for his
`view. Ex. 2002 ¶¶ 73, 75. For example, Dr. Chatterjee testifies, “the
`patentee would not have called out this distinction if he had intended for
`‘network assisted location finding technology’ to include unassisted GPS
`signals.” Id. ¶ 75.
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`Patent Owner’s contentions and Dr. Chatterjee’s testimony, however,
`are not consistent with the ’433 Patent Specification and the claims with
`respect to the aforementioned claim limitation of “network-assisted location
`finding technology.” In particular, the ’433 Patent Specification describes
`“network based systems” and “external systems.” Ex. 1001, 2:52–57
`(emphasis added). To the extent that the ’433 Patent Specification
`distinguishes network based systems from external systems, we are
`unpersuaded that it is relevant to a construction of “network-assisted
`location finding technology,” and in any case, the claims do not recite this
`distinction.
`Upon review, we determine that “network-assisted” means “helped by
`the network.” We determine that “location finding technology” needs no
`express construction, except that we note that it encompasses the examples
`of location finding equipment set forth in the specification including cell,
`microcell, angle of arrival, time of arrival, time delay of arrival, and GPS.
`Id. at 2:52–59.
`
`Anticipation by DeLorme
`B.
`Petitioner contends that claims 1–7 and 12–17 of the ’433 Patent are
`unpatentable as anticipated by DeLorme. Pet. 47–56. In support of this
`ground, Petitioner presents a Declaration by Mr. James A. Proctor, Jr. (Ex.
`1012).
`In the Decision to Institute, we determined that Petitioner had shown a
`reasonable likelihood of prevailing on this proposed ground of
`unpatentability. Inst. Dec. 15. Additionally, we determined that Petitioner
`had shown a reasonable likelihood in prevailing on a ground that claim 11 of
`the ’433 Patent is unpatentable as anticipated by DeLorme. Id. at 14.
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`Petitioner requested review of claim 11 based on other grounds. See, e.g.,
`Pet. 23, 42–43. As set forth in our Decision to Institute, we determined that
`Petitioner had a reasonable likelihood of prevailing on its assertions that
`DeLorme discloses every limitation claims 1–7 and 11–17 of the ’433
`Patent. Inst. Dec. 9–15.
`To establish anticipation, each and every element in a claim, arranged
`as is recited in the claim, must be found in a single prior art reference.
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). We evaluate the parties’ contentions below.
`
`DeLorme
`1.
`DeLorme relates to systems that permit individuals to make travel
`arrangements via a computer network. Ex. 1008, 1:29–32. In particular,
`DeLorme describes the Travel Reservation and Information Planning
`System (“TRIPS”), which is a completely integrated system that enables an
`individual to locate, select, and schedule travel, so as to execute customized
`or personalized travel arrangements in association with map displays or
`other output of travel routes. Id. at 1:32–46. Figure 3 is reproduced below.
`
`
`Figure 3 illustrates a representation of the TRIPS data structure.
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`The simplified standard TRIPS data structure illustrated in Figure 3 is
`used to build TRIPS databases and TRIPS data objects. Id. at 32:1–3.
`Electronic communications among TRIPS devices are performed by
`constructing data packets conforming to the standard illustrated in Figure 3.
`Id. at 32:3–7. The TRIPS data structure includes a unique random object
`identifier, topical data such as activities, things-to-do, organizations,
`products, goods, services, and other content related to travel, geographic
`data, temporal data such as dates and times, and accounting data, such as
`user identity and membership information. Id. at 32:31–40, 34:26–30,
`Fig. 3. Enrolled or registered TRIPS users input individual profiles, which
`include preferences or personal travel planning operational parameters that
`are global settings for individual travel planning sessions. Id. at 61:10–16.
`For example, TRIPS users select one or more participating providers within
`an Accounting Subsystem table, such as a favorite airline or chain of hotels.
`Id. at 71:39–50.
`According to one embodiment of TRIPS, mobile users at remote
`locations may access TRIPS using a wireless communication unit (“WCU”),
`which is typically a handheld device or is mounted or used in a vehicle. Id.
`at 71:61–72:2. The portable mobile device or WCU preferably includes a
`position sensor unit, such as a Global Positioning System (GPS) sensor and
`transmitter (id. at 2:8–11) and user input and output capability (id. at 72:2–
`15). Exemplary WCUs include notebooks, laptop personal computers,
`personal digital assistants, and smart cellular phones. Id. at 75:33–45.
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`Figure 9B is reproduced below.
`
`
`Figure 9 illustrates automated travel information processing of
`inquiries from users equipped with wireless communication
`units and GPS.
`Figure 9 illustrates two-way wireless communications between WCU
`907 and TRIPS database 904. Id. at 73:50–52. Two-way wireless
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`communications involves TRIPS data packets formatted in accordance with
`the standard discussed above with respect to Figure 3. Id. at 73:20–22.
`TRIPS users can use portable TRIPS in conjunction with TRIPS travel plans
`prepared in advance of travel. Id. at 72:23–26. Alternatively, TRIPS users
`can call to obtain assistance en route, which does not require a previously
`arranged travel plan. Id. at 72:63–67.
`
`Independent Claim 1
`2.
`We have reviewed Petitioner’s contentions and supporting evidence,
`including the Declaration of Mr. Proctor (Ex. 1012 ¶¶ 104–29), which read
`all elements of claim 1 of the ’433 Patent onto the disclosure of DeLorme.
`Pet. 47–56. For instance, regarding the first element of claim 1, which
`requires storing subscriber profile information, Petitioner points to (Pet. 49)
`the following description: “[e]nrolled or registered TRIPS retail consumers
`can input individual profiles, preferences or personal travel planning
`operational parameters.” Ex. 1008, 61:10–16. As Petitioner notes (Pet. 50),
`in reliance on the testimony of Mr. Proctor (Ex. 1012 ¶ 110), these profiles
`include global settings that avoid repetitive entry of routine information
`including preferences such as nonsmoking, preferred transportation modes
`or accommodation providers, and topical interests such as favorite foods.
`Ex. 1008, 61:10–26.
`Regarding the next three elements of claim 1, which require receiving
`a service request from the mobile unit, obtaining the mobile unit’s location,
`and identifying candidate service providers and associated service provider
`information, Petitioner relies on DeLorme’s description of processing TRIPS
`service requests received from a wireless communication unit. See Pet. 49–
`50. For instance, in accordance with the portable embodiment of TRIPS
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`cited by Petitioner (Pet. 49–50), DeLorme discloses a mobile sending a
`“specific request” to TRIPS “in conjunction with GPS 908 data on the
`current location” of the mobile (Ex. 1008, 77:36–38). The request and GPS
`data are used to “search[ ] the TRIPS database for restaurants located in the
`vicinity of . . . the remote TRIPS user.” Id. at 77:40–42.
`Patent Owner does not dispute Petitioner’s contentions regarding the
`first four elements of claim 1, except that Patent Owner contends the
`subscriber profile is not used to narrow search results. Patent Owner’s
`contention in that regard relates more to a subsequent limitation that is
`discussed below.
`Regarding the next two elements of claim 1, which require selecting,
`on the network platform, a subset of the candidate service providers based
`on the subscriber profile and outputting the subset to the mobile, Petitioner
`relies on the overall TRIPS system, including the TRIPS database and data
`structure, as well as the mobile embodiments described with respect to
`Figures 9A and 9B. Pet. 47, 48, 50 (citing Ex. 1008, Abstract, 7:66–8:9, 8:5,
`8:23–30, 17:41–43, 32:1–7, 61:10–26, 71:1–78:21, Figs. 3, 9A, 9B).
`Petitioner also relies on the testimony of Mr. Proctor. Pet. 47, 48, 50 (citing
`Ex. 1012 ¶¶ 111–123, 126–129). Mr. Proctor testifies “[w]hen a user,
`including a mobile user, searches for nearby services, DeLorme teaches
`using that user’s preferences to send search results.” Ex. 1012 ¶ 126 (citing
`Ex. 1008, 61:10–26, 17:41–42, 71:41–44, 71:46–50, 26:24–28, 77:48–50).
`One of Petitioner’s contentions is that DeLorme describes “a subset of
`the plurality of candidate service providers,” as recited in claim 1, as
`follows: “DeLorme’s mobile embodiment discloses that ‘[i]nformation on
`two or more restaurants can be presented to . . . the TRIPS user.’” Pet. 50
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`(citing Ex. 1008, 77:48–50). Patent Owner refers to text omitted by
`Petitioner, i.e., that the information can be “presented to and/or selected by”
`the user. PO Resp. 14 (citing Ex. 1008, 77:48–49 (emphasis added)). Patent
`Owner contends that this selection is made entirely on the mobile unit, and
`not on the network platform, as required by the claim. Id. at 15. Contrary to
`Patent Owner’s contention, Petitioner does not rely on “selected by” in the
`above-referenced disclosure for the recited “selecting, on the network
`platform, a subset of the plurality of candidate service providers,” as
`indicated by the omission of “selected by” from Petitioner’s contention.
`Indeed, we find that the “selected by” in the portion of DeLorme noted
`above occurs after the subset is formed.
`Regarding “selecting, on the network platform, a subset of the
`plurality of candidate service providers,” as recited in claim 1, as Petitioner
`notes (Pet. 47), DeLorme describes that the TRIPS system includes a
`database (Ex. 1001, 8:23–30), i.e., a network platform. As Petitioner further
`notes (Pet. 47–48), the database employs a standard TRIPS data structure
`(id. at 32:1–7), which is searched by a primary key or other criteria (id. at
`71:33–34). More particularly, as Mr. Proctor testifies (Ex. 1012 ¶ 126),
`DeLorme describes that “TRIPS users can arrange ‘filters’ or sorting
`operations that limit subsequent map tickets or presentations of TRIPS
`offerings” and “setting up filters . . . will concentrate her selection . . . on
`specified providers such as her favorite airline or chain of hotels.” Ex. 1008,
`71:41–50. As Petitioner further notes in its Reply (Pet. Reply 11–12), the
`TRIPS database performs “state-of-the-art text searches and associations” or
`uses other “data matching technologies.” Ex. 1008, 56:36–42; see also id. at
`67:6–11 (“matching reservations, tickets, and other special offers found in
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`the GOODS/SERVICES & PROVIDERS LIST 809 in FIG. 8A with topical,
`temporal, geographic and transactional ‘filters’ or relational database criteria
`as imposed over the course of the sequential component operations”).
`Accordingly, we determine that Petitioner has made a sufficient showing
`that selecting is done on the network platform.
`Patent Owner, additionally, contends that DeLorme’s mobile
`embodiments make no reference to using “subscriber profile information,”
`and that Petitioner’s reference to desktop embodiments in that regard is of
`no help, because Petitioner does not connect adequately the desktop
`embodiments to the mobile embodiments. PO Resp. 15. We disagree.
`Petitioner relies on the testimony of Mr. Proctor, who testifies that
`subscriber profile information is used by mobile embodiments. Pet. 47, 48,
`50 (citing Ex. 1012 ¶¶ 111–123, 126–129). Mr. Proctor testifies that
`DeLorme describes a “coordinated mobile embodiment,” which allows
`mobile users to pick up a session started on a desktop and an “on-the-go
`mobile embodiment,” which allows a mobile user to start and complete a
`travel session on the mobile device. Ex. 1012 ¶¶ 113, 114. Mr. Proctor’s
`testimony is consistent with the disclosure of DeLorme, which explains,
`“Fig. 9 illustrates portable TRIPS embodiments, which can function either
`with or without [r]elation to desktop TRIPS user setups as described
`heretofore with reference to FIG. 1A.” Ex. 1008, 72:20–23. Mr. Proctor
`also testifies “[i]n my opinion, a person of ordinary skill in the art would
`have understood that all the TRIPS functionality and options discussed
`before Fig. 9 would have still been available to the mobile users described in
`connection with Fig. 9.” Ex. 1012 ¶ 116. We again credit the testimony of
`Mr. Proctor as being consistent with the disclosure of DeLorme. DeLorme
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`further specifies that “FIG. 9 [portable] TRIPS embodiments also enable
`responsive previews or presentations . . . the capabilities for such previews
`or presentations are further detailed heretofore, particularly with reference to
`FIGS. 5, 6, 7, and 8 [illustrating filtering to concentrate a selection on a
`favorite airline or chain of hotels].” Ex. 1008, 77:1–14. As Petitioner
`further notes (Pet. Reply 10), DeLorme discloses by “identifying the
`individual remote user whose WCU 907 is sending a given transmission, the
`TRIPS service provider 904 can access the individual user account, user
`profile and ‘pre-filed’ travel plan output (if any).” Ex. 1008, 74:45–56
`(emphasis added).
`In reliance on the testimony of Dr. Chatterjee, Patent Owner contends
`that many functions described in connection with desktop embodiments
`were not possible to implement with DeLorme’s mobile embodiments. PO
`Resp. 12 (citing Ex. 2002 ¶¶ 40–42, 46–58). Patent Owner identifies one
`example mentioned in DeLorme, i.e., that DeLorme states that the mobile
`embodiment includes simplified input queries. Id. at 13. DeLorme
`describes that a mobile user can provide input with a “push-button” or
`indicating “yes” or “no” with voice recognition software. Ex. 1008, 77:53–
`55. Patent Owner, however, does not explain persuasively how this relates
`to selecting, on the network platform, a subset of the candidate service
`providers based on the subscriber profile, as recited in claim 1.
`Regarding Dr. Chatterjee’s testimony, Dr. Chatterjee acknowledges
`that some amount of TRIPS functionality would be available via mobile
`devices. Ex. 2002 ¶ 48. Dr. Chatterjee, however, is vague with respect to
`his opinion of which functionalities would be too difficult to implement. See
`e.g., id. ¶¶ 48, 52, 53, 58. Dr. Chatterjee testifies regarding significant
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`challenges, but does not tie these challenges persuasively to his opinion that
`DeLorme’s disclosure is inadequate. For example, Dr. Chatterjee testifies
`that “although distributed computing was known at the relevant time,
`distributed computing technologies at that time, e.g., the Common Object
`Request Broker Architecture (CORBA) and Microsoft’s Distributed
`Component Object Model (DCOM), were difficult to deploy.” Id. ¶¶ 50, 51
`(citing Ex. 2014, 14; Ex. 2016, 10). Dr. Chatterjee, however, does not
`testify persuasively regarding (1) how CORBA and DCOM relate to the
`elements recited in claim 1 of the ’433 Patent, or (2) how the challenges with
`implementing CORBA and DCOM undermine the explicit disclosure in
`DeLorme of TRIPS using stored preferences to narrow search results.
`Patent Owner’s contentions regarding “outputting information
`regarding the subset of candidate service providers to the mobile unit” (PO
`Resp. 19–25) are similar to those discussed above. Patent Owner’s
`contentions again are based on excerpts of DeLorme discussed individually,
`without regard to other disclosures in DeLorme. Patent Owner does not take
`into account sufficiently the testimony of Mr. Proctor (Ex. 1012 ¶¶ 111–123,
`126–129) regarding the disclosure in DeLorme that connects embodiments
`of the TRIPS system, including using a profile or an individual’s preferences
`with mobile embodiments. For the reasons discussed above, we are
`persuaded that DeLorme discloses “outputting information regarding the
`subset of the plurality of candidate service providers to the mobile unit.”
`Regarding the remaining elements of claim 1, which require receiving
`a selection of a preferred service provider from the mobile, initiating a
`transaction between the subscriber and the preferred service provider, and
`receiving a transaction confirmation from the preferred service provider,
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`Petitioner relies on DeLorme’s disclosure of a mobile user making a
`reservation, as well as other portions of DeLorme describing selecting a
`provider and making a reservation. Pet. 51–53 (citing Ex. 1008, 50:27–39,
`50:42–53, 77:48–78:1, 78:17–21, Fig. 5; Ex. 1012 ¶ 129). Patent Owner
`does not provide contentions regarding these elements.
`For the reasons given, we are persuaded that Petitioner has established
`by a preponderance of the evidence that independent claim 1 is unpatentable
`as anticipated by DeLorme.
`
`Independent Claim 15
`3.
`Independent claim 15 is similar to independent claim 1, except claim
`15 recites, “selecting, on the network platform, one or more of the plurality
`of candidate service providers based on a comparison between the service
`provider information and the subscriber profile information.” Petitioner
`cites to DeLorme’s reference to “database operations” as disclosing this
`claim limitation. Pet. 51 (citing Ex. 1008, 53:38–44); see also Pet. Reply
`11–12 (citing Ex. 1008, 30:1–11, 44:32–38, 53:38–44, 56:36–49, Fig. 7,
`59:4–10, 67:6–11, 68:63–69:3; Ex. 1012 ¶¶ 128, 129). The database