Unwired Planet, LLC v. Google Inc.

United States Court of Appeals

for the Federal Circuit

______________________

UNWIRED PLANET, LLC,

Appellant

v.

GOOGLE INC.,

Appellee

______________________

2015-1810, 2015-1811

______________________

Appeals from the United States Patent and Trade-

mark Office, Patent Trial and Appeal Board, in Nos.

IPR2014-00036, CBM2014-00005.

______________________

Decided: November 15, 2016

______________________

WILLIAM M. JAY, Goodwin Procter LLP, Washington,

DC, argued for appellant. Also represented by ELEANOR

M. YOST; BRETT M. SCHUMAN, DAVID ZIMMER, San Fran-

cisco, CA.

JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,

Washington, DC, argued for appellee. Also represented by

MICHAEL V. MESSINGER, DEIRDRE M. WELLS, JOSEPH E.

MUTSCHELKNAUS; PETER ANDREW DETRE, Munger, Tolles

& Olson, LLP, San Francisco, CA; ADAM R. LAWTON, Los

Angeles, CA.

______________________

2 UNWIRED PLANET, LLC v. GOOGLE INC.

Before REYNA, PLAGER, and HUGHES, Circuit Judges.

REYNA, Circuit Judge.

Unwired Planet, LLC (“Unwired”) appeals from the

final written decisions of the Patent Trial and Appeal

Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-

00036 and Covered Business Method (“CBM”) Patent

Review No. 2014-00005. Google Inc. v. Unwired Planet,

LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.

30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired

Planet, LLC, CBM2014-00005, 2015 WL 1519056

(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the

reasons stated below, we affirm the Board’s decision that

the challenged claims of U.S. Patent No. 7,024,205 (the

“’205 patent”) are invalid as obvious in the IPR appeal

and dismiss the CBM appeal as moot.

BACKGROUND

U.S. Patent No. 7,024,205

The ’205 patent is entitled “Subscriber Delivered Lo-

cation-Based Services.” It describes a system and method

for providing wireless network subscribers (e.g., cell

phone users) with prioritized search results based on the

location of their mobile device (e.g., the nearest gas sta-

tion). The specification describes how search results can

be personalized for subscribers by taking into account, for

example, “favorite restaurants; automobile service plans;

and/or a wide variety of other subscriber information.”

’205 patent col. 2 ll. 18–19.

In contrast, the specification also describes how

search results can be ordered to give priority to “preferred

service providers defined by the network administrator.”

Id. at col. 8 ll. 35–36. This allows the network to generate

revenue by charging service providers to be put on the

preferred-service-provider list. Id. at col. 8 ll. 46–52.

Preferred-provider status, in turn, leads to preferred

UNWIRED PLANET, LLC v. GOOGLE INC. 3

providers’ listings being prioritized in search results

provided to subscribers.

Prioritization based on subscriber information and

preferred provider status is independent of a subscriber’s

location; hence, it can lead to service providers that are

actually farther away from the subscriber being given

priority over service providers that are nearer. As a

consequence, the results returned to the subscriber can

order preferred providers and other service providers that

are farther away higher than nearer service providers.

The parties and the Board refer to this result as “farther-

over-nearer ordering,” although that term is not used in

the patent.

The sole independent claim of the ’205 patent, claim 1,

claims farther-over-nearer ordering in the context of

wireless location-based services through a series of meth-

od steps. We treat claim 1 of the ’205 patent as repre-

sentative and dispositive because the parties do not argue

that any limitations of the dependent claims alter the

obviousness analysis in the context of the asserted prior

art. Relevant here, it claims:

identifying, on said network platform, first and

second service providers and associated first and

second service provider information[,] . . . wherein

said first service provider is farther from [a] mo-

bile unit than said second service provider; [and]

***

based on said stored prioritization information,

prioritizing said first and second service provider

information, wherein said first [farther] location

information is assigned a higher priority than said

second [nearer] location information; and

4 UNWIRED PLANET, LLC v. GOOGLE INC.

outputting both said first and second service in-

formation on said mobile unit based upon said

step of prioritizing.

’205 patent, cl. 1, col. 10 ll. 27–57.

Asserted Prior Art

Five asserted prior art references are relevant to the

issues addressed below.

The primary reference, U.S. Patent No. 6,108,533

(“Brohoff”), is entitled “Geographical Database for Radio

Systems.” It describes a system using a radio telecom-

munication network in combination with a database of

consumer services. Brohoff col. 2 ll. 18–25. The system

provides the information about nearby consumer services

in response to search requests. To do so, the system

determines the location of the mobile device sending the

search request and provides information about nearby,

relevant consumer services from its database. Id. at col. 2

ll. 33–42. Brohoff teaches using a database where the

consumer services are grouped by geographic zones and

returning location-based search results grouped by these

geographic zones. Id. at col. 2 ll. 48–58, col. 3 ll. 13–19.

One secondary reference is Wilbert O. Galitz’s book

The Essential Guide to User Interface Design: An Intro-

duction to GUI Design Principles and Techniques (John

Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses princi-

ples for interface design, including discussing the ad-

vantages of various techniques for ordering text

information and menus. Id. at 120–21, 255–56. It also

discusses the benefits and applications of several ordering

techniques, including alphabetic order. Id. at 256. Galitz

further suggests how the design principles it discusses

may be applied in designing interfaces for future, special-

ized devices. Id. at 32.

Another secondary reference is Laura Rich’s article IQ

News: New Search Engine Allows Sites To Pay Their Way

UNWIRED PLANET, LLC v. GOOGLE INC. 5

To Top. 1 It describes a search engine that orders search

results “according to who paid the most for that particular

keyword” in a search. It also discusses ranking sites

“according to user and editor input.”

A fourth reference is European Patent No. EP

0647076 (“Remy”), entitled, “Cellular radio communica-

tion system with access to location dependent service,

location retrieving module and server module for person-

al, location dependent services.” It describes a cellular

radio communication system within a network of geo-

graphical cells that responds to a location-based query

with the nearest result.

Finally, International Patent No. WO 97/22066

(“Hopkins”) is entitled “Method for computer aided adver-

tisement.” It describes a computer-implemented method

for presenting vendor advertising information to a user.

Hopkins discusses how users can search the information

alphabetically, by name, by address, or by geographical

area.

Procedural History

Google Inc. (“Google”) filed the IPR and CBM petitions

on appeal on October 8, 2013. In both proceedings, Google

challenged claims 1–6 of the ’205 patent. The Board

consolidated the proceedings before the same panel and,

on April 8, 2014, instituted both proceedings on all chal-

lenged claims. IPR2014-00036, 2014 WL 1410358;

CBM2014-00005, 2014 WL 1396977. On March 30, 2015,

the Board issued final written decisions invalidating all of

the challenged claims as obvious.

1 Laura Rich, IQ News: New Search Engine Allows

Sites To Pay Their Way To Top, http://www.adweek.com/

news/advertising/iq-news-new-search-engine-allows-sites-

pay-their-way-top-24893 (Feb. 23, 1998).

6 UNWIRED PLANET, LLC v. GOOGLE INC.

In the IPR final written decision, the Board held the

challenged claims were obvious on three grounds. IPR

Final Decision, 2015 WL 1478653, at *18. In the first

ground, claims 1–3, 5, and 6 were held obvious over

Brohoff in view of Galitz. In the second ground, claim 4

was held obvious in further view of Rich. In the third

ground, claims 1–6 were also held obvious over Remy in

view of Hopkins.

In the CBM final written decision, the Board held

that claims 1–6 were invalid for lack of written descrip-

tion under 35 U.S.C. § 112 ¶ 1. 2 CBM Final Decision,

2015 WL 1519056, at *17. Specifically, the Board deter-

mined that the specification lacked written description

support for the claim term “prioritization information

establishing a basis independent of proximity and inde-

pendent of any subscriber preferences for prioritizing said

first and second service provider information” and for

farther-over-nearer ordering. Id. at *14, *16.

Unwired appeals from both final written decisions.

We consolidated the appeals for briefing and argument.

Order Consolidating Appeals, No. 2015-1810, ECF No. 2

(Fed. Cir. July 15, 2015). We have jurisdiction under 28

U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 319, 329.

2 35 U.S.C. §§ 103 and 112 were replaced with new

versions in the America Invents Act (“AIA”). See Leahy

Smith America Invents Act, Pub. L. No. 112-29, §§ 3(c),

4(c), 125 Stat. 284, 287, 296 (2011) (“AIA”). However, the

AIA versions of §§ 103 and 112 do not apply to the pa-

tents-in-suit in view of the AIA’s effective date provi-

sions. See AIA, §§ 3(n)(1), 4(e), 125 Stat. 293, 297. Thus,

we refer to the pre-AIA version of Title 35.

UNWIRED PLANET, LLC v. GOOGLE INC. 7

STANDARD OF REVIEW

We review the Board’s factual determinations for sub-

stantial evidence and its legal conclusion of obviousness

de novo. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,

1280 (Fed. Cir. 2015), aff’d, Cuozzo Speed Techs., LLC

v. Lee, 136 S. Ct. 2131 (2016); Inphi Corp. v. Netlist, Inc.,

805 F.3d 1350, 1354 (Fed. Cir. 2015). “Substantial evi-

dence is such relevant evidence as a reasonable mind

might accept as adequate to support a conclusion.” Ken-

nametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,

1381 (Fed. Cir. 2015) (quotation marks omitted).

DISCUSSION

A claim would have been obvious “if 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.” 35 U.S.C. § 103(a) (2006).

In order to determine if a claim would have been obvious,

“the scope and content of the prior art are to be deter-

mined; differences between the prior art and the claims at

issue are to be ascertained; and the level of ordinary skill

in the pertinent art resolved.” KSR Int’l Co. v. Teleflex

Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John

Deere Co., 383 U.S. 1, 17 (1966)). Given the differences

between the prior art and the claimed invention, the

claimed combination would have been obvious only if

there was an apparent reason for a skilled artisan “to

combine the known elements in the fashion claimed by

the patent at issue.” KSR, 550 U.S. at 418.

Unwired makes three challenges to the Board’s basis

for the first ground of obviousness in the IPR. Unwired

argues (1) that Galitz is not analogous prior art, (2) that

the prior art does not teach farther-over-nearer ordering,

and (3) that a person of skill in the art would not have

been motivated to combine Brohoff with Galitz. Unwired

8 UNWIRED PLANET, LLC v. GOOGLE INC.

does not separately dispute the further combination with

Rich in the second ground of obviousness. We find sub-

stantial evidence supports the Board’s factual findings

with respect to the first two grounds of the IPR, and these

facts lead to the conclusion that claims 1–6 of the ’205

patent were obvious. This resolves the patentability of all

challenged claims, so we do not reach the third ground in

the IPR or the issues presented in the CBM review.

1. The relevant prior art includes Galitz.

Unwired challenges the Board’s factfinding with re-

spect to the scope of the prior art. Unwired argues that

Galitz “has nothing to do with mobile telephony or loca-

tion-based services, but instead is a manual for designers

of graphic user interfaces—a thoroughly different con-

cept.” Unwired Br. 16. We disagree.

Prior art is analogous and can be applied in an obvi-

ousness combination if it either (1) “is from the same field

of endeavor, regardless of the problem addressed” or

(2) “is reasonably pertinent to the particular problem with

which the inventor is involved.” In re Clay, 966 F.2d 656,

658–59 (Fed. Cir. 1992). To determine if art is analogous,

we look to “the purposes of both the invention and the

prior art.” Id. at 659. If a reference disclosure and the

claimed invention have a same purpose, the reference

relates to the same problem, which supports an obvious-

ness rejection. Id.

The field of endeavor of the ’205 patent is not limited

to technical issues related to the wireless network system;

it also teaches methods for ordering and displaying infor-

mation from the network on users’ mobile devices. The

’205 patent discusses various ways that “the service

information can be provided to the user,” including “on a

visual display of the [mobile device], as an audible, rec-

orded message, or through any other appropriate means.”

’205 patent col. 3 ll. 15–18. “In cases where the service

information is provided as a menu of selections, the

UNWIRED PLANET, LLC v. GOOGLE INC. 9

method may further involve receiving a menu selection

entered by the user and outputting further service infor-

mation in response to the menu selection. Id. at col. 3 ll.

18–22. One particular problem the ’205 patent addresses

is how to display and order information on a mobile

device. When a menu is displayed on a mobile device, it

“may be ordered based on any of various criteria such as

the preferences expressed in the subscriber profile, near-

est to farthest, preferred service providers defined by the

network administrator, etc.” Id. at col. 8 ll. 32–36.

The Galitz reference deals generally with graphical

user interface design and includes a chapter devoted to

menu design with specific suggestions for how to order

menu items. J.A. 1182–94. This discussion substantially

focuses on displaying and ordering text in lists and men-

us. One example that Galitz uses is address text, which it

urges should be ordered “in the customary way” and

sequenced to accord with user expectations, i.e., “street,

city, state, and zip code.” J.A. 1053. Additionally, Galitz

discusses future operating systems for internet-connected

devices that “will aim at niches,” including “the purse or

wallet.” J.A. 966. It suggests that the “narrower focus”

on such devices “will result in much less complexity.” Id.

The Board also relied on the testimony of Dr. Donald

Cox. IPR Final Decision, 2015 WL 1478653, at *10. He

discussed the Yellow Pages as a “customary and conven-

tional use of sequential or alphabetical ordering for loca-

tion-based services.” Id. The Yellow Pages list businesses

in a “specific geographic area,” sort “the businesses into

similar types,” and then alphabetically order the listings

in each category. Id. (quoting Decl. of Dr. Donald Cox,

¶ 27, J.A. 494).

Taken together, this evidence establishes that Galitz

is analogous prior art to the ’205 patent. The field of

endeavor of a patent is not limited to the specific point of

novelty, the narrowest possible conception of the field, or

10 UNWIRED PLANET, LLC v. GOOGLE INC.

the particular focus within a given field. Here, both

Galitz and the ’205 patent are in the field of interface

design, with Galitz focusing on graphical user interfaces

and the ’205 patent focusing on interfaces for location-

based services. These two areas of focus overlap within

the broader field of interface design because the teachings

in graphical user interface design, including design prin-

ciples for displaying text and ordering menus, have rele-

vance in interfaces for location-based applications.

Likewise, a skilled artisan seeking to apply interface

design principles to display addresses—one of the particu-

lar problems dealt with by the inventor of the ’205 pa-

tent—would reasonably look to Galitz, which teaches

solutions to this same problem. As the Board found, Dr.

Cox’s testimony shows a skilled artisan would have

understood the applicability of Galitz’s teachings to this

problem by providing an example of conventional address

text and ordering in the location-based context. The

Board correctly applied Galitz as analogous art based on

substantial evidence that Galitz is both from the same

field of endeavor as the ’205 patent and is reasonably

pertinent to the problem of displaying address infor-

mation.

2. The prior art teaches prioritization that results in

farther-over-nearer ordering.

Unwired argues that none of the prior art references

cited teach farther-over-nearer ordering as claimed. It

faults the Board for equating prioritization schemes that

“sometimes return a farther result” with “farther-over-

nearer ordering.” Unwired Br. 18–19 (emphasis in origi-

nal). We reject this argument because combinations of

prior art that sometimes meet the claim elements are

sufficient to show obviousness. See Hewlett-Packard Co.

v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003).

Unwired acknowledges that the claims do not require

prioritizing locations that are farther away because they

UNWIRED PLANET, LLC v. GOOGLE INC. 11

are farther away. The claims only require using prioriti-

zation information that results in a farther-over-nearer

order. ’205 patent, cl. 1, col. 10 ll. 53–55 (“wherein said

first location information is assigned a higher priority

than said second location information”). The claimed

result, where a farther first location is given priority over

a nearer second location, could result from many prioriti-

zation schemes that do not depend on location.

The prioritization information used in the proposed

combination of the prior art is alphabetical ordering.

Galitz recommends “alphabetical ordering” for lists with

“a large number of options” and “small lists where no

frequency or sequence pattern is obvious.” J.A. 1189.

Alphabetical prioritization will often result in locations

that are farther away being given a higher priority than

locations that are nearer. For example, prioritizing a list

of countries in English by alphabetical order will place

Afghanistan before Niger, even when the prioritization is

done in nearby Nigeria. Alphabetical order, thus, will

result in instances of farther-over-nearer ordering.

It does not matter that the use of alphabetical order

for locations would not always result in farther-over-

nearer ordering. It is enough that the combination would

sometimes perform all the method steps, including far-

ther-over-nearer ordering. See Hewlett-Packard, 340 F.3d

at 1326. Because the use of alphabetical order as prioriti-

zation information would sometimes meet the farther-

over-nearer claims elements, the Board was correct to

conclude that the proposed combination taught all of the

elements of claim 1.

3. A skilled artisan would be motivated to combine.

Unwired argues that in the context of location-based

services, a skilled artisan would have no motivation to

combine the prior art references to achieve farther-over-

nearer ordering. Unwired argues that “Google has never

shown a motivation to modify Brohoff, because Google has

12 UNWIRED PLANET, LLC v. GOOGLE INC.

never shown that those working in the art perceived a

problem with nearer-first ordering.” Unwired Br. 30.

Google argues that the proposed combination does not

require abandoning nearer-first ordering. It notes that

Galitz teaches the advantages of using ordering tech-

niques in combination. Google characterizes the proposed

combination as using the ordering techniques of Galitz in

combination with Brohoff’s disclosure of grouping search

results based on proximity zones. Google also argues that

it does not need to show that there was a known problem

with the prior art system in order to articulate the re-

quired rational underpinning for the proposed combina-

tion. We agree.

The Court in KSR described many potential ration-

ales that could make a modification or combination of

prior art references obvious to a skilled artisan. 550 U.S.

at 417–22; see also MPEP § 2143. KSR overturned the

approach previously used by this court requiring that

some teaching, suggestion, or motivation be found in the

prior art. 550 U.S. at 415. Instead, the Court explained

that a rationale to combine could arise from “interrelated

teachings of multiple patents; the effects of demands

known to the design community or present in the market-

place; and the background knowledge possessed by a

person having ordinary skill in the art.” Id. at 418. For

example, the Court stated that “if a technique has been

used to improve one device, and a person of ordinary skill

in the art would recognize that it would improve similar

devices in the same way, using the technique is obvious

unless its actual application is beyond his or her skill.”

Id. at 417. For the technique’s use to be obvious, the

skilled artisan need only be able to recognize, based on

her background knowledge, its potential to improve the

device and be able to apply the technique.

The device to be improved is Brohoff. The Board ex-

plained that Brohoff teaches a system that allows users to

UNWIRED PLANET, LLC v. GOOGLE INC. 13

search for information and be provided results based on

their location. In the provided search results, “the identi-

fied service providers are grouped by their respective

locations within a zone.” IPR Final Decision, 2015 WL

1478653, at *8 (citing Brohoff, col. 6 ll. 45–49). While the

zones in Brohoff are ordered nearer-first, Brohoff does not

explain how the service providers are prioritized within

their zone groups. See Brohoff, col. 8 ll. 47–55.

The improvement is provided by using the technique

of combining ordering methods found in Galitz. As the

Board recognized, Galitz teaches benefits of various

ordering techniques and suggests using them in combina-

tion. IPR Final Decision, 2015 WL 1478653, at *8. To

take advantage of the benefits of multiple techniques,

“[s]creen layout normally reflects a combination of [differ-

ent] techniques.” Id. (quoting Galitz at 121, J.A. 1054)

(second modification in original). Using ordering tech-

niques in combination is, thus, a technique that a person

of ordinary skill in the art would recognize could be used

to improve information display.

The Board’s determination that a person of skill in the

art would have been motivated to apply the techniques of

Galitz to Brohoff is supported by substantial evidence.

The Board found that testimony of Dr. Cox was entitled to

“substantial weight because [it] is consistent with the

teachings of Brohoff and Galitz.” Id. at *11. He explained

that “Galitz recognized that information may be ordered

by category—such as Brohoff’s geographic zones—and,

within each category, information may be ordered by

other prioritization information.” Id. at *8 (quoting Decl.

of Dr. Donald Cox, ¶ 42, J.A. 502).

Unwired does not dispute that a person of ordinary

skill in the art would have been able to apply the teach-

ings of Galitz to make the improvement it suggests.

Unwired claims that the specific problem of farther-over-

nearer ordering itself is not discussed in the combined

14 UNWIRED PLANET, LLC v. GOOGLE INC.

references. Galitz’s teaching of the advantages of combin-

ing ordering techniques shows “there was an apparent

reason to combine the known elements in the fashion

claimed by the patent at issue.” KSR, 550 U.S. at 418.

Irrespective of whether a person of skill in the art would

have recognized specific use of Brohoff, substantial evi-

dence exists if she could have seen the advantages of

applying the teachings of Galitz to improve Brohoff. This

is sufficient to render the combination obvious. Id. at 417.

CONCLUSION

We affirm the Board’s determination that claims 1–6

of the ’205 patent were obvious in No. 2015–1810. We

dismiss as moot the appeal in No. 2015–1811.

AFFIRMED-IN-PART AND DISMISSED-IN-PART

COSTS

No costs.