Takeaway: The Board has discretion to determine the weight it gives each piece of evidence, including expert testimony.

In its Final Written Decision, the Board found that all challenged claims, claims 1-6, of the ’205 Patent are unpatentable. The ’205 Patent relates to subscriber delivered, location-based service systems that have been implemented or proposed for wireless networks.  The Board began by claim construction, noting that the claims are interpreted according to their broadest reasonable construction in light of the specification of the patent. The Board adopted its constructions from the Decision to Institute. Further, the Board adopted Patent Owner’s construction of “wherein said first location information is assigned a higher priority than said second information.” The Board also found that “any subscriber preferences” is the recorded preferences of the individual subscriber using the mobile unit.

The Board then turned to the first ground of unpatentability – that claims 1-3, 5, and 6 are obvious over Brohoff and Galitz. The Board found that Petitioner had shown that each element of claim 1 is disclosed in Brohoff in combination with Galitz, and that there was a motivation to combine the references. The Board did not agree with Patent Owner that the combination failed to teach farther-over-nearer ordering, stating that Patent Owner attacked the individual references even though the rejection was based on the combination of references. The Board also was not persuaded by Patent Owner’s argument that Galitz’s frequency of use is not subscriber independent. Regarding motivation to combine, the Board gave Petitioner’s expert substantial weight because it was consistent with the teachings of Brohoff and Galitz. The Board next considered Patent Owner’s secondary considerations argument that the farther-first ordering would have been unconventional and unexpected to one skilled in the art, but found that Patent Owner had not provided persuasive evidence of unexpected results. The Board then found that Patent Owner did not provide any new arguments regarding obviousness of claims 2-3, 5, and 6.

Next, the Board discussed whether claim 4 is obvious over Brohoff, Galitz, and Rich. The Board found Petitioner’s assertions persuasive regarding how the elements of claim 4 are taught in Brohoff, Galitz, and Rich, taken together. The Board again gave substantial weight to Petitioner’s expert’s testimony.

Then, the Board reviewed the next ground of unpatentability – that claims 1-6 are obvious in view of Remy and Hopkins. Remy is a French language publication, and both parties submitted translations. The Board determined that the portions of Patent Owner’s translations that correspond to the portions of Remy that were cited by Petitioner did not differ substantively from the corresponding portions of Petitioner’s translation. The Board found that Petitioner had shown that Remy and Hopkins together disclosed the elements of the challenged claims. The Board was not persuaded by Patent Owner’s arguments that the combination of Remy and Hopkins does not disclose a service that includes service type information or that Remy and Hopkins fail to teach or suggest the claimed farther-first prioritization of service providers. The Board also did not agree with Patent Owner that the proposed combination would not yield predictable results.

Google Inc. v. Unwired Planet, LLC, IPR2014-00036

Paper 32: Final Written Decision

Dated: March 30, 2015

Patent 7,024,205 B1

Before: Michael W. Kim, Jennifer S. Bisk, and Barbara A. Parvis

Written by: Parvis Related

Proceedings: Unwired Planet, LLC v. Google, Inc., No. 3:12-cv-504 (D. Nev.); CBM2014-00005