Takeaway:  The Board’s authority in its final written decision is not limited to only those grounds alleged in the petition, but is rather broad enough to encompass patentability of any patent claim challenged by the petitioner and any new claim added.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable.  The ’433 patent relates to “subscriber delivered, location-based services.”

The Board first addressed claim construction under the broadest reasonable interpretation standard.  The parties did not dispute the constructions for three terms set forth in the Institution Decision, and the Board therefore adopted its previous determinations.  Patent Owner argued three additional terms, two of which the Board evaluated in its Final Written Decision.

First, the Board construed the term “receiving a transaction confirmation from the preferred service provider.”  Patent Owner relied upon the deposition testimony of Petitioner’s expert in support of its argument that the transaction confirmation can be received “either directly from or indirectly from the preferred service provider.”  Petitioner disagreed, arguing that the specification provides no support for the term “indirectly.”  The Board agreed with Patent Owner’s position and additionally relied upon a dictionary definition for the word “transaction” in construing the term to mean “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.”

Second, the Board construed the term “network-assisted location finding technology.”  A principal disagreement between the parties was whether GPS technology qualifies as “network-assisted location finding technology,” with Patent Owner providing a proposed construction for the term and arguing that standalone GPS does not qualify, and Petitioner arguing that GPS is a location finding technology.  The Board relied upon a dictionary definition of the word “assist” as well as the specification of the ’433 patent in finding Patent Owner’s proposal to be inconsistent with the claim language and the specification.  Without providing an explicit construction, the Board held that the term “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.”

Turning to the prior art, the Board first addressed alleged anticipation of claims 1-7 and 11-17 by DeLorme.  The Board was persuaded by Petitioner’s arguments and expert testimony that DeLorme teaches all the limitations of the challenged claims.  The Board was also not persuaded by Patent Owner’s arguments regarding difficulty implementing DeLorme’s mobile embodiments, finding that the arguments and examples were not persuasively tied to the claim language and did not undermine the remaining disclosure of DeLorme.

With respect to claim 11, Petitioner had not requested review of the claim based solely on DeLorme, but instead requested review on another ground.  Therefore, Patent Owner argued that institution of review of claim 11 based on anticipation by DeLorme was improper.  The Board noted that its “authority at the final decision stage is not limited to the grounds alleged in the Petition” and that it is “authorized to issue ‘a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).’”  In this case, Petitioner had challenged claim 12, which depends from claim 11, based on DeLorme.  Thus, claim 12 requires the limitations of claim 11, and because Petitioner had shown that DeLorme discloses the limitations of claim 12, the Board found that claim 11 is also unpatentable.

With respect to alleged obviousness of claims 7-10 over the combination of DeLorme and Trask, Patent Owner argued that the Petition provided no valid reason to combine the references.  The Board was persuaded by Petitioner’s arguments and expert testimony that “Trask enhances DeLorme’s system to maximize available taxis and minimize delays by accounting for the location of the taxi.”  Moreover, the Board was persuaded that a person of ordinary skill in the art, who is “a person of ordinary creativity, not an automaton,” would have a reasonable expectation of success in combining the teachings of the references.

With respect to the final ground of the alleged obviousness of claims 1-6 and 11-16 over Baker and Hall and claims 7-10 over Baker, Hall, and Trask, the Board found that Petitioner had established unpatentability by a preponderance of the evidence.  In particular, the Board found that Patent Owner’s arguments were unpersuasive because they relied upon a claim construction that was not adopted and were given less weight as compared to Petitioner’s expert testimony.

Finally, the Board granted in part Patent Owner’s Motion to Exclude two of Petitioner’s exhibits – a declaration filed in a related CBM and a copy of Patent Owner’s infringement claim chart from a related district court litigation.  The Board granted the motion as to the CBM declaration because the Board found that Petitioner had not shown how the declaration “relates to the issues in this inter partes review proceeding.”  As to the infringement chart, the Board was persuaded that the exhibit “is offered not for the truth of the matter asserted (i.e., the content of the ’433 patent), but as evidence of how the Patent Owner has characterized the ’433 Patent and, in particular, the ‘transaction confirmation’ limitation.”  Thus, the Board found the exhibit “relevant to the credibility of [Patent Owner’s] characterization of the ’433 Patent in this proceeding,” and denied the Motion to Exclude the claim chart.

Square, Inc. v. Unwired Planet LLC, IPR2014-01164
Paper 28: Final Written Decision
Dated: November 19, 2015
Patent: 7,376,433 B1
Before: Michael W. Kim, Jennifer S. Bisk, and Barbara A. Parvis
Written by: Parvis
Related Proceedings: Unwired Planet LLC v. Square, Inc., No. 3:13-cv-00579 (D. Nev.); Unwired Planet, LLC v. Google, Inc., No. 3:12-cv-00504 (D. Nev.); CBM2014-00005; IPR2014-00036; CBM2014-00156; IPR2014-01165