Google Inc.v.Unwired Planet, LLC

Patent Trial and Appeal Board

Mar 30, 2015

09707079 (P.T.A.B. Mar. 30, 2015)

Trials@uspto.gov Paper 32
571.272.7822 Entered: March 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GOOGLE INC.,
Petitioner,

v.

UNWIRED PLANET, LLC,
Patent Owner.
_______________

Case CBM2014-00005
Patent 7,024,205 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. § 328(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
On October 8, 2013, Google Inc. (“Petitioner”) filed a Petition (Paper
1, “Pet.”), requesting a review of U.S. Patent No. 7,024,205 B1 (Ex. 1001,
“the ’205 patent”) under the transitional program for covered business
method patents. Petitioner challenged the patentability of claims 1–6 of the
’205 patent under 35 U.S.C. §§ 101, 103, and 112, first and second
CBM2014-00005
Patent 7,024,205 B1

2

paragraphs. Pet. 30–32. On April 8, 2014, we instituted trial for all
challenged claims, 1–6 of the ’205 patent, on the ground that the challenged
claims are unpatentable, under 35 U.S.C. § 112, first paragraph,
1
as lacking
written description support. Paper 10 (“Decision to Institute” or “Inst.
Dec.”).
After institution of trial, Patent Owner, Unwired Planet, LLC (“Patent
Owner”) filed a Patent Owner Response (“PO Resp.”). Paper 23. Petitioner
filed a Reply to the Patent Owner Response. Paper 25 (“Pet. Reply”).
A consolidated oral hearing for CBM2014-00004, CBM2014-00005,
CBM2014-00006, IPR2014-00027, IPR2014-00036, and IPR2014-00037,
each involving the same Petitioner and the same Patent Owner, was held on
January 13, 2015. The transcript of the consolidated hearing has been
entered into the record. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
Petitioner has shown by a preponderance of the evidence that claims
1–6 of the ’205 patent are unpatentable.
A. The ’205 Patent
The ’205 patent relates to subscriber delivered, location-based
services. Ex. 1001, 1:14. The ’205 patent states that location-based service
systems have been implemented or proposed for wireless networks. Id. at
1:28–30. According to the ’205 patent, these systems generally involve

1
Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, ¶ 1, as 35 U.S.C. § 112(a). Pub. L. No. 112-29,
125 Stat. 284, 296 (2011). Because the ’205 patent has a filing date before
September 16, 2012 (effective date of § 4(c)), we will refer to the pre-AIA
version of § 112.
CBM2014-00005
Patent 7,024,205 B1

3

determining location information for a wireless transceiver and processing
the location information to provide an output desired for a particular
application. Id. at 1:30–33. The ’205 patent indicates that location-based
services can be expanded by receiving a service request from subscriber
equipment and delivering to the subscriber equipment information based, at
least in part, on a location of the subscriber equipment. Id. at 1:59–67. The
’205 patent provides exemplary requests for services: *TRAFFIC,
*HOTEL, *TOW, *PIZZA, and *ATM. Id. at 2:32–35. The ’205 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 2:9–14. Subscriber information
may include account numbers, credit card numbers, other financial
information, lodging preferences, price limitations, and discount programs.
Id. at 2:14–19.
B. Related Matters
Petitioner states that the ’205 patent has been asserted against
Petitioner in a related district court proceeding in the District of Nevada.
Pet. 1, 19. Additionally, Petitioner filed the following inter partes review
before the Patent Trial and Appeal Board involving the ’205 patent:
IPR2014-00036. A Final Written Decision in IPR2014-00036 is entered
concurrently with this decision.
Furthermore, U.S. Patent No. 7,203,752 (“the ’752 patent”) and U.S.
Patent No. 7,463,151 (“the ’151 patent”) are involved in the same district
court proceeding identified above, and also concern location-based, mobile
service technology. The ’752 patent and the ’151 patent are not, however, in
the same patent family as the ’205 patent. Petitioner has requested Office
CBM2014-00005
Patent 7,024,205 B1

4

review of the ’752 patent (Case Nos. CBM2014-00006 and IPR2014-00037)
and the ’151 patent (Case Nos. CBM2014-00004 and IPR2014-00027).
C. Illustrative Claim
Of the challenged claims 1–6, only claim 1 is independent. Claims 2–
6 each depend directly from claim 1. Claim 1 is reproduced below:
1. A method for providing location based services in a
wireless network comprising the steps of:
receiving, on a network platform in communication with
a subscriber using a mobile unit via an air interface, a service
request requesting service provider information regarding said
location based services, said service request including service
type information identifying a type of service for which said
service provider information is requested;
obtaining, on said network platform, location information
regarding a location of said mobile unit determined using a
network assisted location finding technology, said technology
being operative to provide location information regarding said
mobile unit based at least in part on a position of the mobile
unit in relation to a known location of a stationary ground based
network structure;
identifying, on said network platform, first and second
service providers and associated first and second service
provider information based upon said service type information
and said determined location of said mobile unit wherein said
first service provider is farther from said mobile unit than said
second service provider;
accessing stored subscriber independent prioritization
information, separate from said service type information,
relating to a prioritization for presenting service provider
information to a subscriber, said stored prioritization
information establishing a basis independent of proximity and
independent of any subscriber preferences for prioritizing said
first and second service provider information;
based upon said stored prioritization information,
prioritizing said first and second service provider information,
wherein said first location information is assigned a higher
CBM2014-00005
Patent 7,024,205 B1

5

priority than said second location information; and
outputting both said first and second service information
on said mobile unit based upon said step of prioritizing.
D. The Pending Ground of Unpatentability
The pending ground of unpatentability is that claims 1–6 are
unpatentable, under 35 U.S.C. § 112, first paragraph, as lacking written
description support.
II. ANALYSIS
A. Claim Construction
In a covered business method patent 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.
In re Cuozzo Speed Techs., No. 2014-1301, 2015 WL 448667, at *6–*8
(Fed. Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest
reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation.”); 37 C.F.R. § 42.300(b). 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 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. Decision to Institute
In the Decision to Institute, we determined that “network platform”
CBM2014-00005
Patent 7,024,205 B1

6

means “a computer included on a network.” Inst. Dec. 8. Additionally, we
determined that no express construction of either “independent” or “network
administrator” was necessary at that point in the proceeding. Id.
We discern no reason, based on the complete record now before us, to
change our determinations thereof, except we determine the broadest
reasonable interpretation of “network administrator.”
2. The Parties’ Arguments
Patent Owner contends that the phrase “preferred service providers
defined by the network administrator” set forth at column 8 of the ’205
patent specification provides written description support for both claim
limitations challenged by Petitioner. See e.g., PO Resp. 9, 27–28 (emphasis
added). As further noted by Patent Owner (Prelim. Resp. 14), claim 4,
which depends from claim 1, recites “network administrator.” To evaluate
the parties’ dispute regarding whether the ’205 patent specification provides
adequate written description support for the challenged claims, we determine
the broadest reasonable interpretation of “network administrator.”
Patent Owner also contends that “wherein said first location
information is assigned a higher priority than said second location
information,” as recited in claim 1, means “wherein the information relating
to the first service provider is assigned a higher priority than the information
relating to the second service provider.” PO Resp. 7. We evaluate Patent
Owner’s contention below.
Furthermore, the parties dispute whether the ’205 patent specification
provides written description support for “prioritization information
establishing a basis independent of proximity and independent of any
subscriber preferences for prioritizing said first and second service provider
CBM2014-00005
Patent 7,024,205 B1

7

information” (emphases added), as recited in claim 1. Neither party
provides a construction for any portion of this limitation, except for the
contentions provided for the term “independent,” noted above. To evaluate
the parties’ contentions regarding the above-referenced phrase, we determine
the broadest reasonable interpretation of “prioritization” and “any subscriber
preferences.”
3. “network administrator”
Petitioner contends that “network administrator” is “a person or entity
that manages services provided by the network platform.” Pet. 27. Patent
Owner contends that Petitioner’s proposed construction is too narrow,
because “there is no management required by the claims or examples in the
specification.” Prelim. Resp. 14. Instead, Patent Owner proposes a slightly
modified version of Petitioner’s proposed construction that excludes the
word “manages” i.e., “an administrator, being a person or entity, for the
network platform.” In the Decision to Institute, we declined to adopt either
parties’ construction and determined no express construction was necessary
at that time. Inst. Dec. 8. To evaluate Patent Owner’s contention that ’205
patent specification’s phrase “preferred service providers defined by the
network administrator” provides written description support for both claim
limitations challenged by Petitioner (see e.g., PO Resp. 9, 27–28 (emphasis
added); see also Prelim. Resp. 14 (“[c]laim 4 simply refers to the source
establishing the information stated in [claim 1]” (citation omitted)), we
determine the broadest reasonable interpretation of “network administrator.”
The ’205 patent specification describes the activities performed by a
“network administrator” to be: “a network administrator may allow service
providers to register in a location-based service provider database” (Ex.
CBM2014-00005
Patent 7,024,205 B1

8

1001, 3:35–36); “a network administrator may generate revenues based on
fees charged to the service provider and/or subscriber in connection with
accessing the location-based services system” (id. at 3:50–53); “[t]he menu
may be ordered based on any of various criteria such as the preferences
expressed in the subscriber profile, nearest to farthest, preferred service
providers defined by the network administrator, etc.” (id. at 8:32–36); and “a
network administrator such as a wireless carrier may provide a registration
process for service providers” (id. at 9:23–26).
In the context of these activities, Petitioner’s construction is
reasonable, except that the “network administrator” may administer in
addition to manage services. Accordingly, we determine that construing
“network administrator” as “a person or entity that manages or administers
services provided by the network platform” is consistent with the ’205 patent
specification and adopt it as the broadest reasonable interpretation.
We, additionally, note that a portion of the ’205 patent specification
referring to a “location-based service administrator” states: “[s]uch profile
information may be entered by a “carrier or other location-based service
administrator.” Id. at 5:28–30 (emphasis added). Entering profile
information is an an example of administering services provided by the
network platform. Additionally, an exemplary network administrator is “a
wireless carrier.” Id. at 9:23–24. We, therefore, further determine that
“location-based service administrator” (see Ex. 1001, 5:29–30) is used
interchangeably with “network administrator” (see e.g., id. at 8:35–36) in the
’205 patent specification.
CBM2014-00005
Patent 7,024,205 B1

9

4. “wherein said first location information is assigned a higher priority
than said second location information”
Patent Owner contends that “wherein said first location information is
assigned a higher priority than said second location information,” as recited
in claim 1, means “wherein the information relating to the first service
provider is assigned a higher priority than the information relating to the
second service provider.” PO Resp. 7. Patent Owner’s contention is based
on the claim language, as recited in the context of claim 1. PO Resp. 6–7.
The relevant excerpt of claim 1 is: “prioritizing said first and second
service provider information, wherein said first location information is
assigned a higher priority than said second location information.” As Patent
Owner notes, in our Decision to Institute, we indicated that one of ordinary
skill would have understood that the first and second location information
refers to the first and second service provider information, respectively,
recited in the immediately preceding limitation. Inst. Dec. 18.
Patent Owner’s contention, however, improperly substitutes “relating”
for “associated.” In particular, we note that the claim first refers “first and
second service provider information” in an earlier limitation by stating:
“identifying, on said network platform, first and second service providers
and associated first and second service provider information” (emphasis
added).
We, therefore, determine that “wherein said first location information
is assigned a higher priority than said second location information” means
“wherein said first service provider information is assigned a higher priority
than said second service provider information.”
CBM2014-00005
Patent 7,024,205 B1

10

5. “prioritization”
The term “prioritization” is recited, for example, in claim 1: “a
prioritization for presenting service provider information to a subscriber”
and “prioritization information establishing a basis independent of proximity
and independent of any subscriber preferences for prioritizing.” Neither
party provides a proposed construction for the term “prioritization.” We,
however, construe this term as part of our evaluation of the parties’ dispute
as to whether the ’205 patent specification provides written description
support for the limitations challenged by Petitioner.
The specification does not provide a definition of “prioritization.”
The IEEE Dictionary sets forth a plain and ordinary meaning of “priority” as
follows: “A rank order of status, activities, or tasks.” Institute of Electrical
and Electronics Engineers, The Authoritative Dictionary of IEEE Standard
Terms 867 (7
th
Ed., IEEE Press 2000) (emphasis added) (Ex. 3001). This
definition is consistent with the specification, which provides an example of
“prioritization” as follows: “[t]he menu may be ordered based on any of
various criteria such as preferences expressed in the subscriber profile,
nearest to farthest, preferred service providers defined by the network
administrator, etc.” Ex. 1001, 8:32–36 (emphasis added).
Upon review, we determine that construing “prioritization” to have its
plain and ordinary meaning of “ordering” is reasonable and consistent with
the specification. Therefore, we adopt it as a broadest reasonable
construction.
6. “any subscriber preferences”
The phrase “any subscriber preferences” is recited, for example, in
claim 1: “prioritization information establishing a basis independent of
CBM2014-00005
Patent 7,024,205 B1

11

proximity and independent of any subscriber preferences for prioritizing.”
Neither party provides a proposed construction for the term “any subscriber
preferences.” We, however, construe this term as part of our evaluation of
the parties’ dispute as to whether the ’205 patent specification provides
written description support for the limitations challenged by Petitioner.
One exemplary use of the term “preferences” found in the ’205 patent
specification states that a menu may be ordered based on any of various
criteria, “such as preferences expressed in the subscriber profile.” Ex. 1001,
8:32–36. The ’205 patent specification also refers to a “smoking
preference” of an individual subscriber (id. at 2:16–17) and “service
preference information such as hotel room requirements” of an individual
subscriber (id. at 5:19–20). In other words, every usage of “subscriber
preferences” in the ’205 patent specification indicates that “subscriber
preferences” pertain to an individual subscriber.
Regarding the term “any” in the context of “subscriber preferences,”
the ’205 patent specification states, “[t]he profile information may include
any of various recorded personal data for the user.” Ex. 1001, 4:1–2. The
use of “may include” suggests that the profile information in some cases
includes some, but not all recorded personal data for the user.
The ’205 patent specification provides additional description of
information regarding individual subscribers as follows:
The subscriber profile information 114 includes information
regarding individual subscribers that is useful in personalizing
the location-based services and in processing individual service
requests. Some examples of such information include:
1) financial information for use in executing a location-based
service transaction such as credit card numbers and expiration
dates, bank account numbers, or corporate account information;
CBM2014-00005
Patent 7,024,205 B1

12

2) service preference information such as hotel room
requirements, information regarding discount programs or club
memberships, and preferred chains or other service providers;
3) information regarding the subscriber’s service usage profile
such as typical travel times and roads, types of services most
often requested by the subscriber and demographic information;
and 4) the subscriber’s willingness or desire to receive
complementary service information and advertisements. Such
profile information may be entered by a carrier or other
location-based service administrator upon signing up for the
service and may be periodically revised or automatically
revised based on adaptive logic.
Id. at 5:13–31.
In light of the ’205 patent specification, therefore, we determine that
“any subscriber preferences” (emphasis added) pertains to any of the
individual’s credit card numbers, bank account numbers, hotel room
requirements, club service memberships and other preferences of the
individual subscriber, noted above. Id. As described in the ’205 patent
specification, the preferences are “recorded personal data for the user.” Ex.
1001, 4:1–2. We determine additionally that these subscriber preferences
include, but are not limited to, preferences stored in the subscriber profile.
Id. (“The profile information may include any of various recorded personal
data” (emphasis added).)
For the reasons given, we determine, in light of the ’205 patent
specification, that the broadest reasonable interpretation of “any subscriber
preferences” is recorded preferences of the individual subscriber using the
mobile unit. The preferences of the individual subscriber include recorded
personal data such as the individual’s credit card numbers, bank account
numbers, hotel room requirements, and club service memberships.
CBM2014-00005
Patent 7,024,205 B1

13

B. Lack of Written Description Support
Petitioner asserts that claims 1–6 of the ’205 patent lack written
description support under 35 U.S.C. § 112, first paragraph. Pet. 40–46.
Specifically, Petitioner asserts that the specification, as originally filed, does
not describe the following limitations recited in independent claim 1:
(1) “said first location information is assigned a higher priority than said
second location information” (id. at 40–41); and (2) “prioritization
information establishing a basis independent of proximity and independent
of any subscriber preferences for prioritizing said first and second service
provider information” (id. at 42–46). Petitioner asserts that the limitations
were added during prosecution and were never described in the originally
filed application. Id. at 6–7, 40. As Petitioner correctly notes, during
prosecution new claim 76 was added, which included these limitations for
the first time and eventually became claim 1. Id. at 6–7 (citing Ex. 1003,
166–67).)
2
Patent Owner acknowledges that the second of the challenged
limitations of claim 1 was added by amendment (PO Resp. 16) and does not
dispute Petitioner’s contentions that the first challenged limitation was added
by amendment (id. at 26–28).
To satisfy the written description requirement, the focus is not just on
whether the claims are supported by the specification, but whether one of
ordinary skill in the art reasonably would conclude from the original
disclosure that the inventor had possession of the claimed invention. See,

2
Claim 4, which depends from claim 1, recites “wherein said step of
accessing comprises obtaining information established by a network
administrator regarding said prioritization for presenting said service
provider information to said subscriber.” Claim 4 was added as claim 79
during prosecution. Ex. 1003, 233.
CBM2014-00005
Patent 7,024,205 B1

14

e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). Additionally, where an explicit limitation is not present in
the written description, “it must be shown that a person of ordinary skill
would have understood, at the time the patent application was filed, that the
description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353
(Fed. Cir. 1998). Furthermore, “[n]egative limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F. 3d 1344, 1351 (Fed.
Cir. 2012).
We consider the challenged limitations in the context of claim 1. The
second of Petitioner’s written description assertions is recited first in claim
1. It is shown in the portion of claim 1 reproduced below:
accessing stored subscriber independent prioritization
information, separate from said service type information,
relating to a prioritization for presenting service provider
information to a subscriber, said stored prioritization
information establishing a basis independent of proximity and
independent of any subscriber preferences for prioritizing said
first and second service provider information
(emphasis added). As mentioned above in the discussion of claim
construction, the challenged limitation is referenced previously as
“subscriber independent prioritization information.” In addition to the
criteria recited in the challenged language, as evident from the cited portion
of claim 1 above, the subscriber independent prioritization information must
be “separate from said service type information.”
The first of Petitioner’s written description assertions is recited next in
claim 1. It is shown in a portion of claim 1 reproduced below:
identifying, on said network platform, first and second
CBM2014-00005
Patent 7,024,205 B1

15

service providers . . . wherein said first service provider is
farther from said mobile unit than said second service provider;
accessing stored subscriber independent prioritization
information . . .
based upon said stored prioritization information,
prioritizing said first and second service provider information,
wherein said first location information is assigned a higher
priority than said second location information
(emphasis added). As discussed above with respect to claim construction,
the broadest reasonable interpretation of the challenged limitation is
“wherein said first service provider information is assigned a higher priority
than said second service provider information.” In the portion of claim 1
reproduced above, the first service provider is farther from said mobile unit
than the second service provider. We, therefore, refer to the second disputed
claim recitation as “farther-over-nearer ordering.”
We evaluate the parties’ contentions regarding the written description
assertions identified by Petitioner in turn.
1. Subscriber Independent Prioritization Information
Petitioner contends that the ’205 patent specification “never describes
‘prioritization information establishing a basis independent of proximity and
independent of any subscriber preferences for prioritizing said first and
second service provider information’” (Pet. 42), referred to herein
interchangeably as “subscriber independent prioritization information.”
Patent Owner points to the following description in the ’205 patent
specification as support:
The menu may be ordered based on any of various criteria such
as [1] the preferences expressed in the subscriber profile, [2]
nearest to farthest, [3] preferred service providers defined by
the network administrator, etc.
CBM2014-00005
Patent 7,024,205 B1

16

PO Resp. 9 (citing Ex. 1001, 8:32–36.)
In particular, Patent Owner contends that the third criterion,
“preferred service providers defined by the network administrator, etc.” (Ex.
1001, 8:32–36) is not a basis of information established from proximity or
subscriber preferences. Id. at 9–10. Patent Owner also relies on the
Declaration of Dr. Christopher H. Kingdon, who contends “[t]his network
administrator preference information is, by its very nature, determined by
the network administrator—not by the subscriber, and not on the basis of
proximity determined from location equipment.” Id. at 10 (citing Ex.
2002 ¶¶ 26, 27).
In its Reply, Petitioner contends that “the ’205 patent never discloses
that the ‘administrator can enter information that is subscriber
independent.’” Pet. Reply 4. Petitioner also contends that Patent Owner
must show that the ’205 patent specification’s disclosure of “the preferred
service providers defined by the network administrator” (Ex. 1001, 8:32–36)
requires subscriber independence. Pet. Reply 4–5 (citing Hyatt, 146 F.3d at
1353). Additionally, Petitioner points to disclosure of an administrator
entering subscriber profile information—which is based on subscriber
preferences. Id. at 3–4 (citing Ex. 1001, 5:10–32.)
We agree with Petitioner (Pet. 42) that the ’205 patent specification
does not disclose expressly the “stored subscriber independent prioritization
information” limitation. We also agree with Petitioner (Pet. Reply 4) that
the ’205 patent specification does not disclose an administrator entering
information for prioritization that is subscriber independent.
The dispute between the parties primarily relates to whether the third
criterion set forth in the ’205 patent specification, “preferred service
CBM2014-00005
Patent 7,024,205 B1

17

providers defined by the network administrator, etc.” (Ex. 1001, 8:32–36) is
a basis for prioritizing that is established independent from subscriber
preferences. This is the only portion of the ’205 patent specification that
Patent Owner identifies for providing written description support. PO Resp.
9–26. We agree with Petitioner that the challenged limitation is not
explicitly present in the written description. Thus, to be properly supported,
a person of ordinary skill must have understood, at the time the patent
application was filed, that the phrase “preferred service providers defined by
the network administrator, etc.” (Ex. 1001, 8:32–36) requires “prioritization
information establishing a basis . . . independent of any subscriber
preferences,” as recited in claim 1. See Hyatt, 146 F.3d at 1353. We are not
persuaded that the ’205 patent specification describes a basis used by a
network administrator to define preferred service providers that is subscriber
independent.
Dr. Kingdon, who Patent Owner relies on for support, does not
provide sufficient rationale for his opinion to the contrary. Ex. 2002 ¶ 27.
In particular, Dr. Kingdon provides a conclusory statement, “[t]his
preference information is, by its very nature, determined by the network
administrator—not by the subscriber, and not on the basis of proximity
determined from location finding equipment.” Id. Dr. Kingdon does not
identify persuasive support in the ’205 patent specification or describe
persuasively other evidence that supports his conclusion. Id. ¶¶ 23–27; see
also id. ¶¶ 11–15 (describing a background of location based services
including a description of certain handsets, promotion of implementation of
location services worldwide by several companies, and an exemplary
commercial launch in Sweden of a mobile positioning service). Expert
CBM2014-00005
Patent 7,024,205 B1

18

testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a).
Furthermore, the ’205 patent specification provides an example of a
network administrator performing an activitiy in a manner that is dependent
on subscriber preferences. See Pet. Reply 4. In particular, the ’205 patent
specification describes the network administrator entering the subscriber
profile (Ex. 1001, 5:28–32), which is an example of the network
administrator managing or administering the services provided by the
network platform on the basis of subscriber preferences. In other words, the
’205 patent specification indicates that activities performed by the network
administrator are not by their “very nature” performed in a manner that is
independent of any subscriber preferences, contrary to Dr. Kingdon’s
assertion (Ex. 2007 ¶ 27).
The ’205 patent specification also describes the importance of
personalizing the presentation to the subscriber. For example, the ’205
patent specification states that “the functionality of location-based services
in wireless or other communication networks can be enhanced by
personalizing the services provided.” Ex. 1001, 2:9–12 (emphasis added).
The ’205 patent specification further states, “[t]he present invention is
directed to subscriber delivered or personalized location-based services for
communication networks.” Id. at 1:56–57 (emphasis added).
3
No alternate
example of prioritizing according to a subscriber-independent scheme, as
now described by Patent Owner, has been identified.

3
As another indication of the importance of subscriber preferences in the
’205 patent, the menu on which Patent Owner relies is created based on the
subscriber preferences. Ex. 1001, 8:19–28.
CBM2014-00005
Patent 7,024,205 B1

19

Patent Owner also contends that because “preferred service providers
defined by the network administrator” is a “third criterion,” it must be
independent of the first two criteria. PO Resp. 9 (citing Ex. 1001, 8:32–36);
see also Ex. 2002 ¶ 26 (“the third criterion, ‘preferred service providers
defined by the network administrator,’ provides written description support
for Phrase 1.”) The specification of the ’205 patent, however, simply states
“[t]he menu may be ordered based on any of various criteria.” Ex. 1001,
8:32–33. The ’205 patent specification, as originally filed, does not indicate
that one criterion is mutually exclusive of another criterion. The ’205 patent
specification does not use the term “independent” or otherwise indicate that
the network administrator defines preferred service providers on a basis that
is “independent of any subscriber preferrences,” as required in claim 1.
Patent Owner additionally contends that “an administrator can enter
information that is subscriber dependent AND that same administrator can
enter information that is subscriber independent,” so the above-referenced
example or ordering based on preferred service providers defined by the
network administrator is not negated by an alternate embodiment, if any.
PO Resp. 11. Patent Owner similarly contends that the ’205 patent
specification states that “location-based service information [optionally] can
[ ] be personalized based on the subscriber profile information.” Id. at 15
(citing Ex. 1001, 5:11–12, 6:16–18). According to Petitioner, Patent
Owner’s acknowledgment that an administrator can enter information that is
subscriber dependent shows that the ’205 patent specification’s disclosure is
deficient. Pet. Reply at 5.
We determine Patent Owner’s contention that “an administrator can
enter information that is subscriber dependent AND that same administrator
CBM2014-00005
Patent 7,024,205 B1

20

can enter information that is subscriber independent” (PO Resp. 11) is not
persuasive without an example or embodiment of subscriber independent
prioritization information in the ’205 patent specification. See Hyatt, 146
F.3d at 1353. We also determine that the option Patent Owner points to does
not remedy the deficiencies noted above. In particular, the option reflects
that the service is based on location, “in the case of providing local food
outlet, service station or hotel information, the location-based service
information can include not only information regarding service providers in
the vicinity of the subscriber, but can also identify local service providers or
services meeting criteria specified by the profile information 114.” Ex.
1001, 6:19–24 (emphasis added). Claim 1 recites: “prioritization
information establishing a basis independent of proximity and independent
of any subscriber preferences for prioritizing said first and second service
provider information” (emphasis added).
For similar reasons, Patent Owner’s analogy to Honeywell Int’l, Inc. v.
United States, 609 F.3d 1292 (Fed. Cir. 2010) (Prelim. Resp. 51; Tr. 18:13–
15 ) is misplaced. In Honeywell, although one embodiment did not provide
written description support, the patent provided an alternate embodiment
describing the limitation at issue. Id. at 1301 (“[i]n the case of the local
display 37 using separate cathode ray tubes 51–53 or other display
transducers, it is possible to more easily filter offending colors . . .”
(emphasis added). ) We are not persuaded that the ’205 patent specification
contains any such alternate embodiment. For this same reason, we need not
consider Patent Owner’s additional contentions that assume an example is
provided. PO Resp. 22–26.
Claim 1 recites: “prioritization information establishing a basis
CBM2014-00005
Patent 7,024,205 B1

21

independent of proximity and independent of any subscriber preferences for
prioritizing said first and second service provider information.” We
determine that one of ordinary skill in the art would not have concluded
from the original disclosure that the inventor had possession of this
limitation as of the filing date. Accordingly, we determine that the ’205
patent does not provide written description support for the above-referenced
limitation.
2. Farther-Over-Nearer Ordering
Petitioner asserts that the ’205 patent specification does not disclose
expressly “said first location information is assigned a higher priority than
said second location information,” referred to herein as “farther-over-nearer
ordering.” Pet. 40. Patent Owner points to the same portion of the ’205
patent specification for providing written description support of the farther-
over-nearer ordering limitation as it does for the prioritizing limitation
discussed above. In particular, Patent Owner contends “[o]ne of ordinary
skill in the art, upon reading and understanding the ’205 Patent would
understand that the various criteria for ordering provides support for a
farther-over-nearer ordering of service providers, because a network
administrator is disclosed to define preferred service providers in contrast to
the ‘nearest to farthest’ ordering criterion.” PO Resp. 27–28 (citing Ex.
1001, 8:33–36). Patent Owner also contends that “[t]he ‘preferred service
providers’ criterion allows a network administrator to prioritize two service
providers in a fashion that leads to a farther-over-nearer ordering.” PO
Resp. 28 (citing Ex. 2002 ¶ 32).
We agree with Petitioner (Pet. 40) that the ’205 patent specification
does not disclose expressly the farther-over-nearer ordering limitation.
CBM2014-00005
Patent 7,024,205 B1

22

Accordingly, we consider whether a person of ordinary skill would have
understood, at the time the patent application was filed, that “preferred
service providers defined by the network administrator, etc.” (Ex. 1001,
8:32–36) requires “said first location information is assigned a higher
priority than said second location information,” as recited in claim 1. See
Hyatt, 146 F.3d at 1353. We are not persuaded that a person of ordinary
skill would have understood farther-over nearer ordering was required by the
relied upon language.
For instance, we are not persuaded by Patent Owner’s contention that
the third criterion provides such support because it is “in contrast to the
‘nearest to farthest’ ordering criterion.” PO Resp. 27–28 (citing Ex. 1001,
8:33–36). Patent Owner relies on Dr. Kingdon’s statement (PO Resp. 28
(citing Ex. 2002 ¶ 32)) that “[o]ne of ordinary skill in the art, upon reading
and understanding the ’205 Patent, would understand that the various criteria
for ordering provides support for a farther-over-nearer ordering of service
providers, because a network administrator is disclosed to define preferred
service providers in contrast to the ‘nearest to farthest’ ordering criterion.”
Ex. 2002 ¶ 32. Dr. Kingdon does not provide persuasive evidence that the
’205 patent specification describes that the third criterion is “in contrast to”
(id.) the second criterion. The ’205 patent specification, as originally filed,
does not indicate that one criterion is mutually exclusive of or in contrast to
another criterion. As discussed above, the ’205 patent specification does not
otherwise indicate that the first (farther) service provider information is
assigned a higher priority than the second (nearer) service provider
information, as required in claim 1. Also, the ’205 patent expressly includes
“nearest to farthest” ordering, which suggests that the inventor would have
CBM2014-00005
Patent 7,024,205 B1

23

stated expressly farther-over-nearer ordering, if the inventor had possession
of that concept at the time the original application was filed.
Additionally, we are not persuaded by Patent Owner’s contention that
the third criterion “leads to” farther-over-nearer ordering. PO Resp. 28
(citing Ex. 2002 ¶ 32). Patent Owner’s reliance on Dr. Kingdon is
misplaced because his statement is conclusory and depends upon the wrong
legal standard. For example, Dr. Kingdon states his conclusion that “[t]he
preferred service providers criterion allows a network administrator to
prioritize two service providers in a fashion that leads to a farther-over-
nearer ordering.” Ex. 2002 ¶ 32. Dr. Kingdon does not state that farther-
over-nearer ordering is required as a result of ordering a menu in accordance
with preferred service providers defined by a network administrator. See
Hyatt, 146 F.3d at 1353. Neither Patent Owner nor Dr. Kingdon points to
additional evidence or provides additional explanation.
See 37 C.F.R. § 42.65(a).
Furthermore, farther-over-nearer ordering occurs by prioritizing the
first and second service provider information, based upon said stored
subscriber independent prioritization information, as recited in claim 1. For
the reasons given above, we determine that the ’205 patent specification
does not provide written description support for the stored subscriber
independent prioritization information limitation.
3. Conclusion
We determine that Petitioner has shown by a preponderance of the
evidence that claim 1 of the ’205 patent is unpatentable under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. Because claims 2–6 depend on independent claim
CBM2014-00005
Patent 7,024,205 B1

24

1, we also determine that Petitioner has shown by a preponderance of the
evidence that claims 2–6 of the ’205 patent are unpatentable under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
C. Eligibility for Covered Business Method Patent Review
Patent Owner contends that subsequent to our Decision to Institute,
the Board has held, in a non-precedential case, that claims which describe
software systems that have general utility, not specific to any application, are
not directed to a financial product or service. PO Resp. 29 (citing PNC Fin.
Servs. Grp., Inc. v. Intellectual Ventures I LLC, Case CBM2014-00032, slip
op. at 10 (PTAB ) (Paper 13)). Thus, according to Patent Owner, this patent
should never have been involved in a covered business method review.
Petitioner’s contentions and the challenged claims in this case differ
from the contentions presented and the claims challenged in PNC Financial.
In PNC Financial, the Board stated:
Thus, the mere assertion of a patent against a bank or
other financial institution is not sufficient by itself to transform
a patent claiming a generally applicable data processing
technique to a covered business method patent. Petitioners’
exclusive reliance on this factor, while failing to identify any
reference to financial products or services in the Specification
or claims, does not persuade us that any of the claims of the
’298 patent are directed to a method for performing operations
used in the practice, administration, or management of a
“financial product or service” within the meaning of the AIA
§ 18(d)(1) and the legislative history associated with the statute.
Id. at 14.
In contrast, in this case, Petitioner has met its burden. Claim 1 recites:
“receiving . . . a service request requesting service provider information” and
CBM2014-00005
Patent 7,024,205 B1

25

“identifying . . . first and second service providers.” As Petitioner correctly
notes (Pet. 11 (citing Ex. 1001, 2:32–37, 6:28–29, 9:52–53)), the ’205 patent
provides exemplary requests for services, which include an ATM. Ex. 1001,
2:32–35; see also id. at 7:16–19. An ATM allows clients of a financial
institution to perform financial transactions electronically, such as
withdrawing cash from a bank account. The ’205 patent indicates that the
financial institution may be willing to pay for this service: “revenues may
be generated from the subscriber and/or service providers based on the use
of the location-based services system.” Id. at 8:46–48.
We, therefore, are not persuaded that the analysis in PNC Financial,
as applied to these facts, would cause us to reach a different result in this
proceeding.
III. CONCLUSION
We conclude that Petitioner has shown by a preponderance of the
evidence that each of claims 1–6 of the ’205 patent are unpatentable under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. This is a Final Written Decision of the Board under
35 U.S.C. § 318(a).
IV. ORDER
For the foregoing reasons, it is
ORDERED that claims 1–6 of U.S. Patent No. 7,024,205 are
determined to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
CBM2014-00005
Patent 7,024,205 B1

26

FOR PETITIONER:
Michael V. Messinger
Joseph E. Mutschelknaus
STERNE, KESSLER, GOLDSTEIN, & FOX P.L.L.C.
mikem-PTAB@skgf.com
jmutsche-PTAB@skgf.com

FOR PATENT OWNER:
Timothy E. Bianchi
Thomas C. Reynolds
SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
tbianchi@slwip.com
treynolds@slwip.com
SLW-PTAB@slwip.com

Kevin Burgess
McKOOL SMITH PC
kburgess@mckoolsmith.com

Phillip Bennett
EIP US LLP
pbennett@eip.com