Takeaway: A showing of inherency has a high bar. 

In its Final Written Decision, the Board determined that all challenged claims (8-12, 14, 15, 17, 25-29, 31, 32, 34, and 35) of the ’359 Patent are unpatentable.  The ’359 Patent relates to notification systems for use in a wireless network that use network resources and infrastructure to provide location specific notifications.

The Board began with claim construction, stating that the terms will be given their broadest reasonable interpretation in light of the specification.  The Board first reviewed the term “set of location update instructions,” which is present in independent claims 8, 25, and 35.  The Board adopted its construction of this term from the Decision on Institution.  Next, the Board reviewed whether the recited “set of location update instructions” must influence the recited “determine” operation.  The Board agreed with Patent Owner that the broadest reasonable interpretation requires that the recited “set of location update instructions” influence the recited “reporting” operation, not the recited “determine” operation.  The Board then discussed whether setting a frequency at which a location is determined satisfies the limitation that the recited “set of location update instructions” influence the recited “determine” operation.  The Board agreed with Petitioner that any influence on the “determine” operation appears to suffice, including frequency.  Finally, the Board reviewed the construction for “displaying the piece of content associated with the event to a user of the wireless device,” and agreed with Patent Owner that this requires more than just anything that could be considered information and must be displaying text or multimedia to be read or viewed.

The Board then turned to the grounds of unpatentability, addressing first whether the asserted claims are obvious over Othmer and Goldberg.  Patent Owner first stated that Petitioner’s expert did not articulate any credible motivation for why one of ordinary skill would combine Othmer with Goldberg, stating that the declaration does not include the word “motivation.”  The Board found that while the declaration does not use the word, there are several paragraphs of the declaration that can be characterized as providing a “motivation to combine.”

Patent Owner also argued that Goldberg is non-analogous art to the ’359 Patent because the claimed invention is directed to providing notifications to a wireless device and Goldberg is a communication link that merely transmits data.  The Board disagreed with Patent Owner finding that Goldberg expressly discloses transmitting commands from a base station to a device.

Patent Owner further argued that one of ordinary skill would not have modified Othmer to include the location-reporting infrastruction of Goldberg because Othmer already has location-reporting capability.  The Board found these assertions misplaced, stating that Petitioner is not advocating for a wholesale replacement of the location-reporting infrastructure of Othmer, but an update of the location-reporting infrastructure of Othmer.  The Board was also unpersuaded that a wholesale replacement of the location-reporting infrastructure of Othmer would be necessary in order to realize the updating capability.

Patent Owner also argued that there would have been many technical challenges to implementing the proffered combination of Othmer and Goldberg, but the Board found this unavailing because one of ordinary skill would have been able to overcome those technical challenges.

The Board was equally unpersuaded by Patent Owner’s additional arguments – that Petitioner’s expert’s testimony concerning modification is not credible because it is based on improper hindsight, that the long time period between the public availability date of Goldberg and Othmer indicates that the proffered combination is improper hindsight, and that the prior art does not disclose all of the limitations.

The Board then reviewed the second ground of unpatentability –  whether claims 8-12, 25-29, and 35 are anticipated by Manz.  The Board agreed with Patent Owner that Manz does not disclose “displaying the piece of content associated with the event to a user of a wireless device,” therefore, the Board was not persuaded that claims 8-12, 25-29, and 35 are anticipated by Manz.  Specifically, the Board found that the content received by Manz is data used by the device to trigger a flashing light, which is not itself displayed.  At oral hearing, Petitioner attempted many inherency arguments, but the Board found that Petitioner had not met the high bar on inherency.

Finally, the Board addressed Patent Owner’s assertion that the inter partes review is unconstitutional because it violates the Separation of Powers principles and the Seventh Amendment.  The Board relied on Federal Circuit precedent regarding the constitutionality of ex parte reexamination.  Further, it declined to consider the constitutional challenge because administrative agencies do not have jurisdiction to do such.

Square, Inc. v. Unwired Planet LLC, IPR2014-01165 

Paper 32: Final Written Decision 

Dated: October 30, 2015 

Patent 8,275,359 B2

Before: Michael W. Kim, Justin T. Arbes, and Jason J. Chung 

Written by: Kim

Related Proceeding: Unwired Planet LLC v. Square, Inc., No. 13-cv-00579 (D. Nev.)