Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 32
`
`
` Entered: October 30, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`UNWIRED PLANET LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01165
`Patent 8,275,359 B2
`____________
`
`Before MICHAEL W. KIM, JUSTIN T. ARBES, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`
`
`
`
`Square, Inc., (“Petitioner”) filed a Petition (“Pet.”) requesting inter partes
`
`review of claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 of U.S. Patent No.
`
`8,275,359 B2 (“the ’359 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319.
`
`Paper 1. Unwired Planet LLC (“Patent Owner”) filed a Preliminary Response
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`(“Prelim. Resp.”). Paper 6. On January 14, 2015, we instituted an inter partes
`
`review of claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 on certain grounds of
`
`unpatentability alleged in the Petition. Paper 7 (“Dec.”). After institution of trial,
`
`Patent Owner filed a Patent Owner Response (Paper 19; “PO Resp.”) and
`
`Petitioner filed a Reply (Paper 21; “Reply”). An oral hearing was held on
`
`September 14, 2015. Paper 31 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
`
`determine that Petitioner has shown by a preponderance of the evidence that all
`
`claims for which trial is instituted, claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and
`
`35, are unpatentable.
`
`B.
`
`The ’359 Patent
`
`The ’359 patent relates generally to notification systems for use in a wireless
`
`network that use network resources and infrastructure to provide location specific
`
`notifications. Ex. 1001, 1:19–21. According to the ’359 patent, an exemplary
`
`wireless user notification system includes notifying entity 100, notification server
`
`110, and mobile device 170. Ex. 1001, 4:28–33. Mobile device 170 initiates a
`
`location fix (i.e., determination of its geographic position) using a pre-programmed
`
`algorithm. Ex. 1001, 5:3–4. Mobile device 170 periodically performs a location
`
`fix such that notification server 110 maintains current information about an
`
`approximate location of mobile device 170. Ex. 1001, 5:4–7.
`
`At some point in time, notifying entity 100 may send a notification request
`
`to notification server 110, for example, in response to an occurrence of an event of
`
`which users are to be notified, such as a fire, a chemical spill, or a hostage
`
`situation. Ex. 1001, 5:44–48. Notifying entity 100 also identifies an area in which
`
`users are to be notified. Ex. 1001, 5:48–50. The notification request also may
`
`
`
`2
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`include a content of the notification and an urgency level. Ex. 1001, 5:55–57.
`
`Notification server 110 then identifies which mobile devices 170 are registered in
`
`the notification area. Ex. 1001, 5:66–6:1. Notification server 110 receives a list of
`
`mobile devices 170 that are currently registered in regions that overlap the
`
`notification area. Ex. 1001, 6:32–35. Notification server 110 then sends
`
`notification messages to mobile devices 170 in the notification area. Ex. 1001,
`
`6:46–50.
`
`C.
`
`Related Matters
`
`Petitioner identifies the following related district court proceeding between
`
`Petitioner and Patent Owner that involves the ’359 patent: Unwired Planet LLC v.
`
`Square, Inc., Case No. 13-CV-00579 (D. Nev.). Pet. 2.
`
`D.
`
`Illustrative Claim
`
`Independent claim 8 is reproduced below:
`
`receiving a
`for
`A computer-implemented method
`8.
`notification message of an event, the method comprising:
`at a wireless device having one or more processors and
`memory:
`using an application on the wireless device to determine its
`current location data and reporting the current location
`data of the wireless device to a notification server via a
`wireless communication network in accordance with a set
`of location update instructions provided by a remote
`server;
`receiving a notification message from the notification server via
`the wireless communication network, the notification
`message including a piece of content associated with the
`event; and
`displaying the piece of content associated with the event to a
`user of the wireless device.
`
`
`
`3
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`
`E.
`
`Prior Art References Applied by Petitioner and Instituted
`Grounds of Unpatentability
`
`The Board instituted a trial concerning the patentability of claims 8–12, 14,
`
`15, 17, 25–29, 31, 32, 34, and 35 on the basis of the following items of prior art:
`
`(“Goldberg”) US 5,742,509
`
`
`
`Apr. 21, 1998
`
`
`
`(“Manz”)
`
` US 7,764,185 B1
`
`July 27, 2010
`
`(“Othmer”) US 2010/0269059
`
`Oct. 21, 2010
`
`
`
`
`
`
`
`Ex. 1006
`
`Ex. 10081
`
`Ex. 1005
`
`
`
`
`
`(continuation of application 10/916,960 filed Aug. 11, 2004)
`
`Specifically, the Board instituted a trial on claims 8–12, 14, 15, 17, 25–29,
`
`31, 32, 34, and 35 of the ’359 patent based on the following specific grounds of
`
`unpatentability (Dec. 23):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Othmer and Goldberg
`
`§ 103(a)
`
`8–12, 14, 15, 17, 25–29, 31,
`
`32, 34, and 35
`
`Manz
`
`§ 102(e)
`
`8–12, 25–29, and 35
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, a claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
`
`
`1 Manz was filed on July 19, 2006, and issued on July 27, 2010. Manz claims
`priority to Provisional App. No. 60/764,384, which was filed on January 26, 2006
`(Ex. 1009; “Manz Provisional”). The ’359 patent was filed on June 15, 2007, and
`claims priority to Provisional App. No. 60/814,254 (“the ’254 application”), which
`was filed on June 16, 2006. In its Patent Owner Response, Patent Owner does not
`challenge that Manz is prior art to the ’359 patent.
`
`
`
`4
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`F.3d 1268, 1278–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`
`approved the broadest reasonable interpretation standard in enacting the AIA.”).
`
`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). Any special definition for a claim term must be
`
`set forth in the specification with reasonable clarity, deliberateness, and precision.
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). 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.
`
`“set of location update instructions”
`
`Each of independent claims 8, 25, and 35 recite using “an application on the
`
`wireless device to determine its current location data and reporting the current
`
`location data of the wireless device . . . in accordance with a set of location update
`
`instructions.” Petitioner proposes a claim construction for “location update
`
`instructions” as “instructions on the wireless device that control a location updating
`
`process.” Pet. 9–10 (citing Ex. 1001, 3:26–29). In the Preliminary Response,
`
`Patent Owner countered that Petitioner’s proposed construction is too narrow and
`
`uninformative, and that a proper construction of “set of location update
`
`instructions” is “multiple executable commands for updating a location.” Prelim.
`
`Resp. 14–21 (citing Ex. 1001, 3:16–19, 3:26–29, 9:3–6; Ex. 2001, 988, 1752;
`
`Ex. 2002, 627, 1077; Ex. 2003, 276; Ex. 2004, 245; Ex. 2005, 346). In the
`
`Decision on Institution, we adopted neither proposed interpretation, and instead
`
`preliminarily construed “set of location update instructions” as “multiple
`
`
`
`5
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`instructions for updating a location of a wireless device.” In the Patent Owner
`
`Response, Patent Owner asserts the following in a footnote:
`
`the broadest
`that
`its position
`While Patent Owner maintains
`reasonable construction of “set of location instructions” in light of the
`specification is “multiple executable commands for updating a
`location” for the reasons set forth in its Preliminary Response (Paper
`No. 6), for purposes of this proceeding, Patent Owner applies the
`Board’s construction.
`
`PO Resp. 12 n.2. In other words, Patent Owner does not set forth further assertions
`
`for us to consider as to how the term should be interpreted. Petitioner also does not
`
`challenge the aforementioned preliminary construction. Accordingly, in the
`
`absence of such assertions, and after reconsidering anew the basis for our
`
`preliminary construction, we determine that construing “set of location update
`
`instructions” as “multiple instructions for updating a location of a wireless device,”
`
`is correct for the reasons set forth in the Decision on Institution (Dec. 5–10), and
`
`thus adopt it for the purposes of this proceeding.2
`
`whether the recited “set of location update
`2.
`instructions” must influence the recited “determine”
`operation
`
`In their assertions concerning claim construction, as well as application of
`
`the prior art, Patent Owner asserts that the recited “set of location update
`
`instructions” must influence the recited “determine” operation. PO Resp. 12, 38–
`
`40, 49–54 (citing Dec. 7). Petitioner disagrees, asserting that under a broadest
`
`reasonable construction, the recited “set of location update instructions” is only
`
`
`2 In a related district court proceeding, the district court construed “location update
`instructions.” Ex. 2007, 14–16. We have considered this construction in rendering
`our construction. Insofar as they may differ, we note respectfully that the parties
`have advanced different assertions in the two proceedings, as the claim
`construction standard applied by the district court differs from that applied by the
`Board.
`
`
`
`6
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`required to influence the recited “reporting” operation, and not the recited
`
`“determine” operation. Reply 1–3. We agree with Patent Owner.
`
`Beginning our analysis with the claim limitation of “using an application on
`
`the wireless device to determine its current location data and reporting the current
`
`location data of the wireless device . . . in accordance with a set of location update
`
`instructions,” the express language does not assist us definitively in deciding
`
`whether “set of location update instructions” must influence the recited
`
`“determine.” Although under a most natural reading, it appears that “set of
`
`location update instructions” is applicable to the entire claim limitation, which
`
`would include the “determine” operation, it is plausible that under a broadest
`
`reasonable construction, the recited “set of location update instructions” is only
`
`required to influence the immediately adjacent “reporting” operation.
`
`When we consult the Specification, however, we conclude that the broadest
`
`reasonable construction, in view of the Specification, is that “set of location update
`
`instructions” must influence the recited “determine” operation. For example, the
`
`Specification in the “Brief Summary of the Invention” section discloses that
`
`“[l]ocation data for the wireless device is obtained in accordance with the set of
`
`instructions. The location data is provided to a notification server.” Ex. 1001,
`
`3:28–30. As the second sentence corresponds to the recited “reporting” operation,
`
`the set of instructions in the first sentence would only apply to what would
`
`correspond to the recited “determining” operation. In another example, the
`
`Specification discloses that “[a]t step 320, the mobile device executes the
`
`algorithm to determine its location by a location determination method indicated in
`
`the algorithm and provides the corresponding location data to the notification
`
`server.” Ex. 1001, 9:3–6. In the Decision on Institution, we preliminarily
`
`determined that “set of location update instructions” is broader than, and thus
`
`
`
`7
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`encompasses, algorithms, and after reconsidering anew the basis for our
`
`preliminary construction, we determine that our previous determination was
`
`correct. Dec. 7–9. Here, the exemplary algorithm clearly applies to the location
`
`determination method, with the “reporting” operation only performed
`
`subsequently. See Ex. 1001, 3:16–20; 5:1–10. Indeed, we are unable to identify
`
`any portion of the Specification where any set of instructions or algorithm is shown
`
`definitively as not influencing the “determine” operation. Accordingly, we
`
`interpret the claims to require that the “set of location update instructions” must
`
`influence the recited “determine” operation.
`
`whether setting a frequency at which a location is
`3.
`determined satisfies the limitation that the recited “set of
`location update instructions” influence the recited
`“determine” operation
`
`In their assertions concerning application of the prior art, Patent Owner
`
`asserts that setting a frequency at which a location is determined does not satisfy
`
`the recited “set of location update instructions” influencing the recited “determine”
`
`operation. PO Resp. 38–40, 49–54. Specifically, Patent Owner asserts that with
`
`respect to the prior art, the location is determined by off-the-shelf, self-contained
`
`devices with their own programming that are unaffected by what is asserted to
`
`correspond in those references to the recited “set of location update instructions,”
`
`and that updating sending times and frequencies alone is insufficient to be
`
`considered influencing those devices. Id. Petitioner disagrees. Reply 3–4, 8–12.
`
`We agree with Petitioner.
`
`As an initial matter, we note that the claim limitation at issue does not
`
`specify the manner or degree in which the “set of location update instructions”
`
`needs to influence the “determine its current location data” limitation. The claims
`
`only require determining current location data “in accordance with” the set of
`
`
`
`8
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`location update instructions. Accordingly, under a broadest reasonable
`
`construction, any influence on the “determine” operation would appear to suffice,
`
`including frequency. The Specification supports our conclusion. For example, the
`
`“Brief Summary of the Invention” section of the Specification discloses that “[a]
`
`location data determination algorithm is provided to a wireless device, where the
`
`algorithm determines a frequency at which the device interacts with network
`
`elements to determine its location.” Ex. 1001, 3:16–20. As set forth above in Parts
`
`II.A.2 and II.A.3, we determine that “set of location update instructions” is broader
`
`than, and thus encompasses, algorithms. Here, there is a clear and overt
`
`connection between “algorithm,” “frequency,” and “determine.” In another
`
`example, the Specification discloses that “[u]pon registration, the mobile device
`
`170 performs a location fix and provides its location information to the notification
`
`server. The notification server 110 downloads an algorithm to the mobile device
`
`170 to indicate how often the mobile device 170 is to perform subsequent location
`
`fixes.” Ex. 1001, 4:63–67. Again, while the words differ slightly, it is clear that
`
`the algorithm sets the frequency of location determination operations on the mobile
`
`device itself, in a manner separate from the reporting operations set forth in other
`
`parts of the same paragraph. To be sure, the Specification also discloses additional
`
`ways in which the “set of location update instructions” influences the “determine”
`
`operation, for example, “determining [the] method to execute in order to obtain or
`
`trigger the location fix.” Ex. 1001, 5:1–3; see also Ex. 1001, 9:3–6. Those
`
`embodiments, however, are exemplary, not recited in the claim, and thus do not
`
`preclude frequency from also corresponding to the “set of location update
`
`instructions.” In re Van Geuns, 988 F.2d at 1184.
`
`
`
`9
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`
`4.
`
`“displaying the piece of content associated with
`the event to a user of the wireless device”
`
`In their assertions concerning application of the prior art, Patent Owner
`
`asserts that “displaying the piece of content associated with the event to a user of
`
`the wireless device,” as recited in each of independent claims 8, 25, and 35,
`
`requires more than just anything that could be considered information. PO Resp.
`
`41–49. Petitioner disagrees that the claims should be construed so narrowly.
`
`Reply 19–21. We agree with Patent Owner. The claims recite “displaying the
`
`piece of content.” The Specification discloses delivering content in the form of
`
`messages to be read or viewed, such as Short Messaging Service (“SMS”)
`
`messages, Amber Alerts, and Multimedia Message Services (“MMS”) messages.
`
`Ex. 1001, 1:44–48, 2:2–4, 2:10–13, 2:28–29, 3:41–43, 3:54–56, 4:30, 4:40–48,
`
`6:53, 7:36–39, 8:25–36, 10:54–56, 12:16–22. Applying the broadest reasonable
`
`interpretation in light of the Specification, we construe “displaying the piece of
`
`content” as “displaying text or multimedia to be read or viewed.” At oral
`
`argument, Patent Owner agreed with this construction. Tr. 63:10–15.
`
`Furthermore, independent claims 8, 25, and 35 each recite “receiving a
`
`notification message . . . including a piece of content associated with the event.”
`
`Thus, the content received by the user device is what must be displayed.
`
`Accordingly, we construe “displaying the piece of content associated with the
`
`event to a user of the wireless device,” in the context of the surrounding claim
`
`limitations, as “displaying text or multimedia to be read or viewed that is
`
`associated with the event received by a user of the wireless device.”
`
`B.
`
`Claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 as Obvious
`over Othmer and Goldberg
`
`Petitioner asserts that claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35
`
`would have been obvious over Othmer and Goldberg. In support of its assertion,
`
`
`
`10
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`Petitioner presents analyses of Othmer and Goldberg, as well as a Declaration of
`
`James A. Proctor, Jr. Pet. 10–27 (citing Exs. 1005, 1006, 1011). Patent Owner
`
`disagrees with Petitioner’s assertions, and cites primarily a Declaration of Dr.
`
`Sandeep Chatterjee. PO Resp. 17–40 (citing Exs. 1006, 1011, 2013)3.
`
`1.
`
`Othmer (Ex. 1005) and Goldberg (Ex. 1006)
`
`Othmer relates to providing location-based, context-aware content and
`
`displaying such content, from location-based ticker server 300, within a ticker on a
`
`user device. Ex. 1005 ¶¶ 5, 52.
`
`Goldberg relates to a base station including base station software (“BSS”)
`
`that can configure and control an “intelligent position locating and communicating
`
`device” called a “watson device” installed on a mobile unit. Ex. 1006, 3:19–24,
`
`3:38–40. Goldberg discloses a BSS is able to communicate with the watson
`
`device, and as a result of the communication, is able to receive location data from
`
`the watson device. Ex. 1006, 12:60–64. The initial sending time and frequency of
`
`transmission can also be programmed externally by base station 28. Ex. 1006,
`
`12:19–21. Alternatively, sending time may include transmitting position data
`
`when the mobile unit reaches a certain geographical boundary. Ex. 1006, 12:21–
`
`26. A BSS also has a capability to change a configuration of a controller inside the
`
`watson device, such as sending times and frequency of data transmission by the
`
`watson device. Ex. 1006, 13:2–8.
`
`
`3 We note that Dr. Chatterjee’s testimony in support of Patent Owner’s assertions
`on this ground of unpatentability largely tracks the language of the Patent Owner
`Response. Ex. 2013 ¶¶ 63–89. Accordingly, our analysis below addresses together
`the assertions made in the Patent Owner Response and the corresponding portion
`of Dr. Chatterjee’s Declaration.
`
`
`
`11
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`
`2.
`
`Level of Ordinary Skill in the Art
`
`“Section 103(a) forbids issuance of a patent when ‘the differences between
`
`the subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.’” KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). The parties agree that a person
`
`of ordinary skill in the art would have had “a Bachelor of Science degree in
`
`Electrical/Computer Engineering or Computer Science (or related subjects) plus
`
`relevant academic or professional experience.” See PO Resp. 11 (citing Ex. 2013
`
`¶ 22; Ex. 2011, 24:17–25:15). Based on the record presented, including our review
`
`of the ’359 patent and the types of problems and solutions described in the
`
`’359 patent and cited prior art, we concur with the parties’ assessment of the level
`
`of ordinary skill in the art and apply it for purposes of this Decision.
`
`3.
`
`Analysis
`
`After considering the Petition, Patent Owner Response, Reply, and all
`
`supporting evidence, we are persuaded that Petitioner has shown, by a
`
`preponderance of the evidence, that claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and
`
`35 are unpatentable as obvious over a combination of Othmer and Goldberg.
`
`Petitioner sets forth how each and every claim limitation is disclosed or suggested
`
`by a combination of Othmer and Goldberg, in essence, combining location-based
`
`ticker server 300 of Othmer and base station 28 of Goldberg into a single system,
`
`such that base station 28 of Goldberg can change a configuration of the user device
`
`of Othmer. Pet. 10–27. Additionally, Petitioner provides the following rationale
`
`for combining Othmer and Goldberg.
`
`A person of ordinary skill in the art would have been motivated to
`combine Othmer with Goldberg to result in an improved mobile
`communications device
`that reports
`its
`location according
`to
`
`
`
`12
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`
`configuration provided by a remote server. (Ex. 1011, ¶ 156–157,
`158–159). Each reference is directed to a system for determining,
`communicating, and storing the locations of mobile communications
`devices in a network of devices, so the references are in the same field
`of endeavor and the problems encountered by designers of such
`devices would overlap. (Ex. 1011, ¶ 160). Goldberg discusses a
`device and protocol for communicating the information necessary to
`track mobile devices in the network, while Othmer focuses on an
`application that is achievable with such a configuration (displaying
`location-based content in a “ticker” on the mobile device). (Ex. 1011,
`¶ 161–164). Both disclosures teach tracking the location of mobile
`devices, so the incorporation of Goldberg’s infrastructure techniques
`(including its discussion of altering the reporting frequency of the
`mobile devices) into Othmer’s practical application (mobile location-
`aware tickers) would predictably result in an improved wireless
`device, with each reference contributing its known properties and
`advantages. (Ex. 1011, ¶ 165). Othmer contains an express teaching
`that “positioning techniques known in the art,” including the
`techniques described in Goldberg, can be used in its system. (Ex.
`1005, ¶ 51, Ex. 1011, ¶ 166). Moreover, Goldberg expressly discloses
`that its “watson” device can use a location determination in the form
`of GPS system and a communication means in the form of a cellular
`telephone (Ex. 1006, 3:53-56, 4:8-11), which are precisely the
`examples given in Othmer as the hardware to implement its ticker
`system. (Ex. 1005, ¶ 33, 30, Ex. 1011, ¶ 167). Accordingly, the
`hardware building blocks of the two systems are the same, further
`evidencing that Othmer’s system could be readily be adapted to
`incorporate Goldberg’s hardware considerations without substantial
`modification. (Ex. 1011, ¶ 168, 170). A person of ordinary skill
`could have used Goldberg’s location transmission techniques in
`Othmer’s ticker system to provide an enhanced alert distribution
`system, with an expectation of success. (Ex. 1011, ¶ 169, 171).
`Accordingly, the combination of Othmer and Goldberg is proper.
`
`Pet. 13–14.
`
`Patent Owner asserts the following: “[d]espite his conclusion (which is
`
`incorrect), Mr. Proctor articulates no credible motivation why one of ordinary skill
`
`would combine Othmer with Goldberg. In fact, the word ‘motivation’ appears
`
`
`
`13
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`nowhere within his declaration.” PO Resp. 25. To the extent Patent Owner is
`
`looking for the explicit word “motivation,” application of any such rigid, formulaic
`
`test for obviousness was foreclosed by the Supreme Court’s decision in KSR, 550
`
`U.S. 398. To that end, the aforementioned portion of the Petition cites to several
`
`paragraphs of Mr. Proctor’s Declaration, the content of which readily can be
`
`characterized as providing a “motivation to combine.”
`
`Patent Owner asserts further that Petitioner’s proffered combination is
`
`improper because Goldberg is non-analogous art to the ’359 patent. Specifically,
`
`Patent Owner asserts that the claimed invention is directed to providing
`
`notifications to a wireless device, while Goldberg is a communication link that
`
`merely transmits location data. We disagree with Patent Owner. A reference is
`
`analogous art to the claimed invention if: (1) the reference is from the same field
`
`of endeavor as the claimed invention (even if it addresses a different problem); or
`
`(2) the reference is reasonably pertinent to the problem faced by the inventor (even
`
`if it is not in the same field of endeavor as the claimed invention). See In re Bigio,
`
`381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, the preambles of independent
`
`claims 1 and 8 recite that they are directed to notifying wireless devices of an
`
`event. Furthermore, contrary to Patent Owner’s assertion that Goldberg is a
`
`communication link that merely transmits location data, Goldberg expressly
`
`discloses transmitting commands from a base station to a watson device. Ex. 1006,
`
`4:34–40, 13:26–35. We are persuaded that Goldberg is analogous art to the
`
`claimed invention under either prong. Moreover, as discussed at oral hearing,
`
`location determination is unquestionably a major part of the claimed invention, for
`
`example, by express recitations in the independent claims of “current location
`
`data” and “location update instructions.” Patent Owner agrees that Goldberg is
`
`directed to location determination. See Tr. 50:11–52:14. At a minimum, we
`
`
`
`14
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`determine that this satisfies the second prong of the analogous arts analysis,
`
`namely, that both the claimed invention and Goldberg are directed to problems
`
`associated with location determination.
`
`Patent Owner asserts additionally that one of ordinary skill would not have
`
`modified Othmer to include the location-reporting infrastructure of Goldberg,
`
`because Othmer already has location-reporting capability, and so such a
`
`modification would be redundant. PO Resp. 30–32. Patent Owner’s assertions are
`
`misplaced, for we do not understand Petitioner as advocating a wholesale
`
`replacement or duplication of the location-reporting infrastructure of Othmer, but
`
`only that the location-reporting infrastructure of Othmer could have been updated,
`
`because Goldberg discloses that updating location-reporting infrastructure was
`
`known generally. See, e.g., Ex. 1011 ¶ 170 (“Using Goldberg’s teachings
`
`regarding configuring and altering reporting frequency for location reporting
`
`would primarily affect the frequency with which the mobile communication device
`
`101 of Othmer reports its location to the location tracker 312. . . . The remainder of
`
`Othmer’s system would remain largely (if not entirely) unchanged. Specifically,
`
`the determination of which mobile communication devices 101 are in an
`
`appropriate location for receipt of ticker content would not change even if the
`
`mobile communication devices 101 report their locations at different (or even
`
`changing) frequencies”) (emphasis added).
`
`Furthermore, we are unpersuaded that a wholesale replacement or
`
`duplication of the location-reporting infrastructure of Othmer with that of
`
`Goldberg would have been required in order to realize that updating capability, as
`
`the software for the location-reporting infrastructure of Othmer was uploaded into
`
`the system originally in some manner, and we are unpersuaded that such a manner
`
`could not also have been used for updates. See, e.g., Ex. 1005 ¶ 10 (“[w]hile the
`
`
`
`15
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`invention is applicable to immobile or ‘wired’ communication devices including
`
`computer systems, landline telephones, televisions, and set top boxes, its
`
`application is particularly well-suited to mobile wireless communication devices
`
`(referred to hereinafter as ‘mobile communication device(s)’ or ‘mobile device(s)’)
`
`such as laptop and notebook computers, cellular telephones, PDAs, and any other
`
`mobile communication device having a display device and enabled to wirelessly
`
`receive data”).
`
`Patent Owner asserts also that Mr. Proctor’s proffered rationale for
`
`modification of “conserving network resources” is inadequate, because modifying
`
`Othmer to include the location-reporting infrastructure of Goldberg would involve
`
`many technical challenges, the result of which would be anything but “conserving
`
`network resources.” PO Resp. 27–31. Patent Owner’s assertions are misplaced for
`
`the same reasons as set forth in our previous paragraphs.
`
`Patent Owner asserts generally that there would have been many technical
`
`challenges to implementing the proffered combination of Othmer and Goldberg,
`
`and that those technical challenges would have weighed heavily against making
`
`Petitioner’s proffered modifications. Id. at 32–34. Patent Owner’s assertions are
`
`unpersuasive. “A person of ordinary skill is also a person of ordinary creativity,
`
`not an automaton.” KSR, 550 U.S. at 421 (2007). Accordingly, the fact that there
`
`may be technical challenges to implementing a proffered combination of two
`
`references is unavailing if the technical challenges would have been able to have
`
`been solved by one of ordinary skill. To that end, we are persuaded that one of
`
`ordinary skill, as defined above, would have been able to overcome those technical
`
`challenges, for the same reasons as set forth in our analysis of
`
`replacement/duplication. See Ex. 1011 ¶¶ 5, 156–71.
`
`
`
`16
`
`

`

`IPR2014-01165
`Patent 8,275,359
`
`
`Insofar as Patent Owner may be arguing as to any technical challenges
`
`associated specifically with modifying Othmer in view of Goldberg, we note that
`
`the obviousness inquiry does not ask “whether the references could be physically
`
`combined but whether the claimed inventions are rendered obvious by the
`
`teachings of the prior art as a whole.” In re Etter, 756 F.2d 852 (Fed. Cir. 1985)
`
`(en banc); see also In re Keller, 642 F.2d 413 (CCPA 1981) (stating “[t]he test for
`
`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference”). To that end, our
`
`determination is the same as that set forth above. Indeed, we note that at a high
`
`level, Petitioner asserts, with support from Mr. Proctor’s Declaration, that Othmer
`
`and Goldberg each disclose roughly analogous hardware for sending information
`
`wirelessly based on location, i.e., a sending structure that transmits information
`
`wirelessly to a receiving structure based on the receiving structure’s location. Pet.
`
`13–14 (citing Ex. 1011 ¶¶ 156–71). Given this baseline, we are unper