Google LLC v. Conversant Wireless Licensing

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC, LG ELECTRONICS, INC.,

Appellants

v.

CONVERSANT WIRELESS LICENSING S.A.R.L.,

Appellee

______________________

2017-2456

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2015-

01715.

______________________

Decided: November 20, 2018

______________________

NAVEEN MODI, Paul Hastings LLP, Washington, DC,

argued for appellants. Also represented by STEPHEN

BLAKE KINNAIRD, JOSEPH PALYS, DANIEL ZEILBERGER.

TAREK N. FAHMI, Ascenda Law Group, PC, San Jose,

CA, argued for appellee. Also represented by HOLLY J.

ATKINSON.

______________________

Before O’MALLEY, CHEN, and STOLL, Circuit Judges.

2 GOOGLE LLC v. CONVERSANT WIRELESS LICENSING

CHEN, Circuit Judge.

Google LLC and LG Electronics, Inc. (Petitioners) ap-

peal from the final written decision of the U.S. Patent and

Trademark Office, Patent Trial and Appeal Board (Board)

in an inter partes review (IPR) proceeding finding that

Appellants did not show claims 1–15 of U.S. Patent No.

7,072,667 (the ’667 patent), assigned to Conversant Wire-

less Licensing S.A.R.L. (Patent Owner), to be unpatenta-

ble as anticipated or obvious.

Because the Board’s final written decision failed to

consider Petitioners’ primary argument, we vacate and

remand.

BACKGROUND

The ’667 patent, entitled “Location Information Ser-

vice for a Cellular Telecommunications Network,” was

filed on December 31, 2001. According to the ’667 patent,

prior art mobile devices used commercial location finding

services, such as Finder™. J.A. 28 at 1:31–34. A user

could find the location of other members of a group of

subscribers by defining a list of friends that they wanted

to be able to locate. Id. at 1:34–37. This system involved

pre-registration with the vendor of the Finder™ service.

Id. at 1:37–39. When a user wanted to know the location

of a friend, the user initiated a request and selected the

name of the friend. Id. at 1:39–42. The Finder™ service

then located both the user and the friend and calculated

the distance and direction between them, which was

communicated back to the user. Id. at 1:42–45.

The ’667 patent states that a disadvantage of the pri-

or art system is that the user needed to pre-register with

the system. Id. at 1:46–48. The ’667 patent describes the

invention as providing location service information “inde-

pendently of aforesaid vendor.” Id. at 1:52–54. The

patent claims capture this feature by reciting that the

GOOGLE LLC v. CONVERSANT WIRELESS LICENSING 3

method is performed without pre-registering the mobile

station for the location finding service. Claim 1 recites:

1. A method of providing a location finding ser-

vice to mobile stations in a cellular telecommuni-

cations network, comprising:

sending a request for location finding information

from a mobile station as a message through the

network to a location message server;

retrieving data from a data store corresponding to

the location finding information based on the cell

occupied by at least one mobile station; and

sending the data through the network from the lo-

cation message server as a message to the mobile

station that requested the location finding infor-

mation; and wherein

the method is performed without pre-registering

the mobile station for the location finding service.

J.A. 30 (emphasis added).

In their IPR petition, Petitioners argued that PCT

Publication No. WO 00/36430 (Staack) discloses every

limitation of claim 1. As to the claim limitation “without

pre-registering the mobile station for the location finding

service,” Petitioners contended it was a negative limita-

tion that Staack satisfies because “Staack nowhere dis-

closes that pre-registration is required to access the

location-based services.” J.A. 61. Petitioners cited two

PTAB decisions as supporting this conclusion. See CLIO

USA, Inc. v. The Procter and Gamble Company, IPR2013-

00448, Paper No. 15 at 3 (Feb. 4, 2014) (stating that

“[n]egative limitations may be satisfied by silence in the

prior art”); Palo Alto Networks, Inc. v. Juniper Networks,

Inc., IPR2013-00466, Paper No. 17 at 18 (Jan. 28, 2014)

(stating that, “[a]lthough a negative limitation is permis-

sible, it merely recites what a claim lacks and, therefore,

4 GOOGLE LLC v. CONVERSANT WIRELESS LICENSING

is likely to be broad by its very nature. Consequently, a

negative limitation requiring the absence of an element

may be adequately described by a cited prior art reference

if that reference does not otherwise require the presence

of the element recited in the negative limitation.”); see

also J.A. 61. Petitioners also cited a declaration by their

expert to support their argument. J.A.61; see also J.A.

723–24.

To further support its position that Staack meets the

“without pre-registering” limitation, the petition next

went on to explain, preemptively, why a particular pas-

sage in Staack does not teach a pre-registering require-

ment: “to the extent Patent Owner proposes that

maintaining and using a list of entities that are permitted

to receive location finding information is considered

registering, Staack makes clear that such features are

optional.” J.A. 62 (emphasis in original). Staack discloses

that, for confidentiality reasons, the second (target user)

mobile station may store a list of entities, which may

include the first (requesting user) mobile station, that are

allowed to view the second mobile station’s location. See

J.A. 533. Staack describes this list as “preferred.” Ac-

cordingly, Petitioners argued, Staack discloses that the

list is optional, and under the case law explaining that a

prior art reference that discloses “optional inclusion” of a

feature encompasses a disclosure of embodiments that

“both do and do not contain” the feature, Staack discloses

a method “without pre-registering.” J.A. 62 (citing

Upshur-Smith Labs., Inc. v. Pamlab, 412 F.3d 1319, 1322

(Fed. Cir. 2005)).

The Patent Owner’s preliminary response argued that

Staack does explicitly disclose pre-registration through

the use of a “mobile subscriber’s home location data from

a billing center or subscriber database.” J.A. 129. The

Board found this argument unpersuasive, noting in its

institution decision that registration of mobile users,

including identifying users’ phone numbers or subscrip-

GOOGLE LLC v. CONVERSANT WIRELESS LICENSING 5

tion information, “is not commensurate with registration

for a location finding service, as recited in claim 1.” J.A.

156 (emphasis in original). The Patent Owner also ar-

gued that Staack’s second mobile station list—the list

Petitioners referred to in their preemptive argument—is

“not germane” to pre-registration because “[t]hese consid-

erations of confidentiality exist whether or not the MS1

user is pre-registered for the mobile location service or

not.” J.A. 132.

In its institution decision, the Board clearly under-

stood that Petitioners raised two arguments in their

petition (the second one being conditional): (1) that

Staack’s silence as to pre-registration constitutes disclo-

sure of the negative limitation (the “negative-limitation

argument”); and (2) if the Patent Owner argues that the

second mobile station’s list constitutes pre-registration,

then the pre-registration is optional and therefore Staack

still meets the “without pre-registering” limitation under

Upshur-Smith (the “optional-feature” argument). J.A.

154–58. The Board used the language “argue” to describe

Petitioners’ first argument and “further argue” to describe

Petitioner’s second argument. J.A. 154. The Board

concluded that it was persuaded based on the record

before it that Staack does satisfy the “without pre-

registering” limitation. J.A. 155–56. The Board stated

that (1) it was not persuaded by Patent Owner that

Staack explicitly discloses pre-registering; (2) it was

persuaded that Staack’s methods are performed without

pre-registration; and (3) “without pre-registering” is a

negative limitation. J.A. 156–57. The Board finally noted

that the Petitioners’ second, conditional argument was of

no moment because Staack’s discussion of the second

mobile station list does not constitute pre-registration of

the first mobile station, as recited in the claims. J.A. 158.

The Board instituted the proceeding, finding that Peti-

tioners showed a reasonable likelihood that they would

prevail in establishing that Staack anticipates claims 1–3

6 GOOGLE LLC v. CONVERSANT WIRELESS LICENSING

and 8–14 based on, among other things, Petitioners’

argument as to the negative limitation, and renders

claims 4–7 and 15 obvious in view of Staack combined

with additional references. See J.A. 158, 160, 163.

In its response, the Patent Owner repeated many of

the same arguments it raised in its preliminary response,

and it noted an additional passage in Staack that it

believed discloses pre-registration: Staack’s citation to

GSM 03.71. J.A. 219. The Patent Owner cited its expert’s

declaration to conclude that a person of ordinary skill in

the art reading Staack would understand the citation to

GSM 03.71, which provides mechanisms to support mo-

bile location services of operators, to mean that mobile

users must be pre-registered with location finding ser-

vices. J.A. 219–21 (citing J.A. 1190–93). In their reply,

Petitioners disagreed, focusing in part on Staack’s state-

ment that an embodiment “could be in accordance with

GSM 03.71.” J.A. 265 (emphasis in original). Because the

word “could” is optional in nature, Petitioners argued,

Staack still discloses a method being performed without

pre-registration. Id.

Without explanation, the Board’s final written deci-

sion diverged from its institution decision and conflated

its analysis for Petitioners’ negative-limitation argument

into its analysis for the non-instituted optional-feature

argument. J.A. 8–11. The Board repeated its concerns

about the optional-feature argument it identified in its

institution decision, that Staack’s second mobile station

list does not constitute pre-registration of the first mobile

station. J.A. 10–11. The logical result of this finding was

that this feature in Staack could not defeat Petitioners’

claim that Staack satisfies the “without pre-registering”

limitation. Without addressing the negative-limitation

argument or making a finding that Staack does disclose

pre-registration, the Board concluded that the Petitioners

did not meet their burden of proving that Staack discloses

the “without pre-registering” element. Id. The Board did

GOOGLE LLC v. CONVERSANT WIRELESS LICENSING 7

not explain why it reached the opposite conclusion that it

reached in its institution decision with respect to the

negative-limitation argument. See id.

Petitioners appeal. We have jurisdiction under 28

U.S.C. § 1295(a)(4)(A).

STANDARD OF REVIEW

“We review the Board’s IPR decisions [under the APA]

to ensure that they are not arbitrary, capricious, an abuse

of discretion, . . . otherwise not in accordance with law . . .

[or] unsupported by substantial evidence.” Personal Web

Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.

2017). “We review the PTAB’s factual findings for sub-

stantial evidence and its legal conclusions de novo.”

Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d

435, 449 (Fed. Cir. 2015).

DISCUSSION

A. Standing

Although the Patent Owner did not argue that Peti-

tioners lack standing in its original briefing, we asked for

supplemental briefing from both parties to determine

whether Google and LGE have standing to bring this

appeal. “Standing requires an appellant to have ‘(1)

suffered an injury in fact, (2) that is fairly traceable to the

challenged conduct of the defendant, and (3) that is likely

to be redressed by a favorable judicial decision.’” E.I.

DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996,

1004 (Fed. Cir. 2018). “As the party seeking judicial

review, the appellant bears the burden of proving that it

has standing.” Id. One typical way for a petitioner-

appellant to prove standing is by establishing “that its

product creates a concrete and substantial risk of in-

fringement or will likely lead to claims of infringement.”

JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1221

(Fed. Cir. 2018).

8 GOOGLE LLC v. CONVERSANT WIRELESS LICENSING

In DuPont, we agreed that DuPont had standing be-

cause it operated a plant that was capable of infringing

the patent at issue, and thus there was a substantial risk

of future infringement. DuPont, 904 F.3d at 1005.

DuPont had never been sued on the patent at issue, but it

was a competitor of the patent owner, who alleged before

the Board that DuPont’s processes were “embraced by the

claims in the ’921 patent.” Id. at 1003–04. The patent

owner also denied DuPont’s request for a covenant not to

sue, which we found further confirmed that DuPont’s risk

of injury was not “conjectural” or “hypothetical.” Id.

The record on appeal presents an even stronger basis

for standing here than that in DuPont. In 2014, LGE was

sued for infringement of the ’667 patent. The Patent

Owner’s infringement contentions implicated both LGE

and Google: “LG Maps-Enabled Devices . . . and the

Google Maps application (typically pre-installed) perform

the claimed method.” Petitioners’ Oct. 16, 2018 Ltr. at

Ex. C, p. 1. Although the infringement contentions de-

picted only claims 12–15 (which have been since canceled

in a separate inter partes review proceeding), the Patent

Owner “expressly reserve[d] the right to supplement or

modify” them, and the complaint was not limited to any

particular claims. See id. The Patent Owner similarly

reserved the right to substitute “appropriate claims in the

remaining patents” for claims 12 and 13 of the ’667 patent

in its Election of Asserted Claims. Id. at Ex. D, p. 2.

Ultimately, the Patent Owner withdrew the ’667 patent

“without losing rights,” and the district court dismissed

the ’667 patent without prejudice. The Patent Owner

refused to grant a covenant not to sue to LGE or Google.

We find LGE’s and Google’s risk of infringement to be

concrete and substantial. LGE was previously accused of

infringing the ’667 patent, and, throughout litigation, the

Patent Owner continually reserved its right to assert the

claims that are at issue in this appeal. The Google Maps

application was directly implicated in the Patent Owner’s

GOOGLE LLC v. CONVERSANT WIRELESS LICENSING 9

infringement contentions. As in DuPont, the Patent

Owner here refused to grant a covenant not to sue. And,

unlike in JTEKT where there was no product yet final-

ized, LGE and Google both currently market and sell the

accused products. See JTEKT, 898 F.3d at 1220–21.

Moreover, if LGE or Google were to be sued on the

’667 patent in the future, LGE may be prohibited from

filing an IPR under 35 U.S.C. § 315(b). And both LGE

and Google would potentially be collaterally estopped

under 35 U.S.C. § 315(e) from making certain anticipation

and obviousness arguments. See, e.g., Deposit Guar. Nat.

Bank, Jackson, Miss. v. Roper, 445 U.S. 326, 337 (1980);

Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817

F.3d 1293, 1300 (Fed. Cir. 2016). We therefore conclude

that Google and LGE have Article III standing to bring

this appeal.

B. Sufficiency of the Board’s Decision

In its institution decision, the Board clearly and cor-

rectly understood that Petitioners made two distinct

arguments in their petition: (1) the “negative-limitation”

argument and (2) the contingent “optional-feature” argu-

ment. J.A. 154–58. The Board instituted IPR proceed-

ings because it found that the negative-limitation

argument was likely to prevail and stated that it need not

consider the contingent optional-feature argument be-

cause that feature in Staack did not disclose pre-

registration as that term was used in the ’667 patent.

J.A.158. Yet, in its final written decision, the Board

concluded that Petitioners’ arguments failed without even

discussing Petitioners’ negative-limitation argument. See

J.A. 8–11. Instead, the Board simply reiterated that the

“optional” feature that Petitioners said the Patent Owner

may argue (and that the Patent Owner ultimately did not

argue) constitutes pre-registration does not in fact consti-

tute pre-registration. See J.A. 8–11.

10 GOOGLE LLC v. CONVERSANT WIRELESS LICENSING

We have previously found that the appropriate course

of action when the Board’s analysis is incomplete and fails

to address key arguments and issues properly before it is

to vacate and remand the findings for further considera-

tion. See, e.g., Vicor Corp. v. SynQor, Inc., 869 F.3d 1309,

1321 (Fed. Cir. 2017). Accordingly, we vacate and remand

the Board’s decision for the Board to consider Petitioners’

negative-limitation argument consistent with this opinion

and the Board’s institution decision. On remand, the

Board should also consider all arguments and evidence

raised in the Patent Owner’s response and the Petitioners’

reply as to whether Staack satisfies the “without pre-

registering” limitation.

VACATED AND REMANDED