Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: April 8, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`UNWIRED PLANET, LLC
`Patent Owner
`_______________
`
`Case CBM2014-00006
`Patent 7,203,752
`_______________
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Ocean Tomo Ex. 1019-001
`
`

`
`Case CBM2014-00006
`Patent 7,203,752
`
`
`I.
`
`INTRODUCTION
`
`Google Inc. (―Petitioner‖) filed a petition (Paper 1, ―Pet.‖) on October 9,
`
`2013, requesting review of U.S. Patent No. 7,203,752 (Ex. 1001, ―the ‘752 patent‖)
`
`under the transitional program for covered business method patents. Unwired
`
`Planet, LLC (―Patent Owner‖) filed a preliminary response (Paper 8, ―Prelim.
`
`Resp.‖) on January 15, 2014. We have jurisdiction under AIA § 18(a)1 and 37
`
`C.F.R. § 42.300(a) (2013).
`
`The standard for instituting a covered business method patent review is set
`
`forth in 35 U.S.C. § 324(a), which provides:
`
`THRESHOLD.—The Director may not authorize a post-grant review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such information is
`not rebutted, would demonstrate that it is more likely than not that at
`least 1 of the claims challenged in the petition is unpatentable.
`
`See AIA § 18(a)(1). Petitioner contends claims 25–29 of the ‘752 patent are
`
`unpatentable under 35 U.S.C. §§ 101, 103, and 112, first paragraph. See Pet. 25–
`
`27. For the following reasons, and taking into account Patent Owner‘s preliminary
`
`response, we determine the information presented in the petition demonstrates it is
`
`more likely than not that claims 25–29 of the ‘752 patent are unpatentable.
`
`Therefore, pursuant to 35 U.S.C. § 324, we authorize a covered business method
`
`patent review to be instituted as to claims 25–29 of the ‘752 patent.
`
`A.
`
`The ’752 Patent
`
`The ‘752 patent discloses a method and system for managing wireless
`
`communications device location information. See Ex. 1001, title. Figure 1 of the
`
`‘752 patent is reproduced below:
`
`
`1 See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329–31 (2011) (―AIA‖).
`
`
`
`2
`
`Ocean Tomo Ex. 1019-002
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`Case CBM2014-00006
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`Figure 1 discloses a communications architecture
`within which an access system operates.
`
`
`
`As shown in Figure 1, wireless device 14 communicates over wireless network 10
`
`to access Internet 20. See id. at 4:28–50. Location server 50 also is connected to
`
`wireless network 10 and Internet 20. See id. at 4:51–52. Location server 50
`
`collects and records data reflecting a location of wireless device 14. See id. at
`
`4:52–5:4. Client application 24 communicates with access manager 40 to request
`
`location information relating to wireless device 14. See id. at 5:25–46. Access
`
`manager 40 then performs a test to determine if client application 24 is authorized
`
`to make the request. See id. at 7:31–34; 11:21–26. The test may include accessing
`
`a subscriber profile stored in a memory of access manager 40 to analyze whether
`
`and to what degree criteria specified in the subscriber profile are met by the request
`
`for location information. See id. at 7:40–45.
`
`
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`3
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`Ocean Tomo Ex. 1019-003
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`A subscriber profile is illustrated in Figure 3 of the ‘752 patent. See id. at
`
`8:60–66. Figure 3 is reproduced below:
`
`Figure 3 discloses an example profile for a subscriber.
`
`
`
`As illustrated in Figure 3, the subscriber profile may include a permission set 324
`
`for each client application 24 authorized to access location information for wireless
`
`device 14. See id. at 9:36–39. Each permission set 324 ―may include a temporal
`
`permission set which identifies the time of day / day of week a particular
`
`authorized client [24] may access the location information‖ as well as a ―spatial
`
`permission set [which] provides a listing of the enabled geographic areas (for
`
`example city / county / state), for providing the location information‖ to client
`
`application 24. Id. at 9:39–45.
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner have identified one related district court
`
`proceeding involving the ‘752 patent: Unwired Planet LLC v. Google Inc.,
`
`
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`4
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`Ocean Tomo Ex. 1019-004
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`Case CBM2014-00006
`Patent 7,203,752
`
`
`No. 3:12-cv-00504 (D. Nev.). See Pet. 79; Paper 7, at 2. Petitioner also has
`
`requested inter partes review of the ‘752 patent (IPR2014-00037).
`
`Moreover, U.S. Patent No. 7,024,205 (―the ‘205 patent‖) and U.S. Patent
`
`No. 7,463,151 (―the ‘151 patent‖) are owned by Patent Owner, are involved in the
`
`same district court proceeding, and also concern location-based mobile service
`
`technology. The ‘205 patent and the ‘151 patent are not, however, in the same
`
`patent family as the ‘752 patent. Petitioner has requested Office review of the ‘205
`
`patent (CBM2014-00005 and IPR2014-00036) and the ‘151 patent (CBM2014-
`
`00004 and IPR2014-00027).
`
`C.
`
`Illustrative Claims
`
`Of the challenged claims 25–29, only claim 25 is an independent claim.
`
`Claim 26 depends from claim 25, claims 27 and 28 each depend from claim 26,
`
`and claim 29 depends from claim 28. Claims 25 and 26 are reproduced here:
`
`25. A method of controlling access to location information for
`wireless
`communications devices operating
`in
`a wireless
`communications network, the method comprising:
`receiving a request from a client application for location
`information for a wireless device;
`retrieving a subscriber profile from a memory, the subscriber
`profile including a list of authorized client applications and a
`permission set for each of the authorized client applications, wherein
`the permission set includes at least one of a spatial limitation on
`access to the location information or a temporal limitation on access
`to the location information;
`querying the subscribe profile to determine whether the client
`application is an authorized client application;
`querying the subscriber profile to determine whether the
`permission set for the client application authorizes the client
`application to receive the location information for the wireless device;
`determining that the client application is either not an
`authorized client application or not authorized to receive the location
`information; and
`
`
`
`5
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`Ocean Tomo Ex. 1019-005
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`Case CBM2014-00006
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`
`denying
`information.
`
`the client application access
`
`to
`
`the
`
`location
`
`26. The method of claim 25 further comprising:
`notifying the wireless device that the client application is not
`authorized to receive the location information; and
`the client
`updating
`the subscriber profile
`to authorize
`application to receive the location information during subsequent
`requests.
`
`D.
`
`Prior Art Relied Upon
`
`Havinis ‘931 U.S. Patent No. 6,104,931 Aug. 15, 2000 Ex. 1004
`
`Landgren
`
`U.S. Patent No. 6,115,754 Sep. 5, 2000
`
`Ex. 1005
`
`Kingdon
`
`U.S. Patent No. 6,138,003 Oct. 24, 2000 Ex. 1006
`
`Piccionelli
`
`U.S. Patent No. 6,154,172 Nov. 28, 2000 Ex. 1007
`
`Leonhardt2
`
`
`
`1996
`
`Ex. 1008
`
`E.
`
`Alleged Grounds of Unpatentability
`
`Petitioner contends claims 25–29 of the ‘752 patent are unpatentable based
`
`on the following grounds. See Pet. 25–27.
`
`Basis
`
`§ 101
`
`§ 112, first
`paragraph
`
`§ 103
`
`§ 103
`
`§ 103
`
`Reference(s)
`
`Claim(s) Challenged
`
`None
`
`None
`
`25–29
`
`26
`
`Havinis ‘931 and Piccionelli
`
`25–29
`
`Havinis ‘931 and Leonhardt
`
`25–29
`
`Landgren and Piccionelli
`
`25–29
`
`
`2 Ulf Leonhardt & Jeff Magee, Towards a General Location Service for Mobile
`Environments, Proceedings of the Third Int‘l Workshop on Servs. in Distributed &
`Networked Env‘ts 43–50 (1996).
`
`
`
`6
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`Ocean Tomo Ex. 1019-006
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`Case CBM2014-00006
`Patent 7,203,752
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`Basis
`
`§ 103
`
`§ 103
`
`
`
`Reference(s)
`
`Claim(s) Challenged
`
`Landgren and Leonhardt
`
`25–29
`
`Kingdon and Piccionelli
`
`25–29
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`As a step in our analysis, we determine the meaning of the claims for
`
`purposes of this decision. In a covered business method patent review, a claim in
`
`an unexpired patent shall be given its broadest reasonable construction in light of
`
`the specification of the patent in which it appears. See 37 C.F.R. § 42.300(b)
`
`(2013). 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.
`
`“Spatial Limitation on Access to the Location Information”
`
`Petitioner contends we should construe ―spatial limitation on access to the
`
`location information‖ in claim 25 to mean ―limitation on access to location
`
`information that depends on the mobile device‘s current location at the time the
`
`request for location information is made.‖ Pet. 22–23. Upon our review of the
`
`‘752 patent specification, however, we conclude the meaning of ―spatial
`
`limitation‖ is not so limited. In particular, in addition to the mobile device‘s
`
`
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`Ocean Tomo Ex. 1019-007
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`location at the time the request is made, the specification indicates location
`
`information may be stored with corresponding time information, and then retrieved
`
`from memory at the time of the request. See Ex. 1001, 4:56–5:16. We find Patent
`
`Owner‘s proposed construction, ―a limitation on access to location information that
`
`is spatial in nature‖ (Prelim. Resp. 18–19), to be unhelpful. We therefore construe
`
`―spatial limitation on access to the location information‖ in claim 25 to mean
`
`―limitation on access to location information that depends on the mobile device‘s
`
`location.‖
`
`2.
`
`“Temporal Limitation on Access to the Location Information”
`
`Petitioner and Patent Owner disagree concerning the meaning of ―temporal
`
`limitation on access to the location information‖ in claim 25. See Pet. 23; Prelim.
`
`Resp. 19–20. However, we need not construe this limitation because it does not
`
`affect our analysis in this case.
`
`3.
`
`“At Least One of”
`
`Petitioner contends we should construe ―at least one of‖ in claim 25 to mean
`
`―one or more.‖ Pet. 23–24. Patent Owner does not comment on the meaning of
`
`this claim limitation. We decline to adopt Petitioner‘s proposal, because the
`
`meaning of ―at least one of‖ is sufficiently plain without further construction.
`
`4.
`
`“Subscriber Profile”
`
`We additionally find it necessary to construe ―subscriber profile‖ in claim 25
`
`because this claim term plays a large role in Patent Owner‘s preliminary response.
`
`The ‘752 patent specification indicates a ―subscriber‖ is an operator or user of the
`
`wireless device identified in claim 25. See Ex. 1001, abs.; 1:41–46; 1:63–2:7.
`
`Also, the ‘752 patent specification indicates a ―profile‖ is a set of limitations on the
`
`provision of location information corresponding to the wireless device, based upon
`
`
`
`8
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`Ocean Tomo Ex. 1019-008
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`Case CBM2014-00006
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`subscriber privacy preferences. See id. at abs.; 1:14–20; 2:12–20; 6:20–28; 8:60–
`
`66. Thus, we construe ―subscriber profile‖ as a set of limitations on the provision
`
`of location information corresponding to the wireless device, based upon the
`
`privacy preferences of the wireless device user.
`
`B.
`
`Covered Business Method Patent Review
`
`AIA § 18(a) provides for post-grant review of covered business method
`
`patents. A ―covered business method patent‖ is one that ―claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration, or management of a financial product or service,
`
`except that the term does not include patents for technological inventions.‖ AIA
`
`§ 18(d); see also 37 C.F.R. § 42.301 (2013). For the following reasons, we
`
`conclude the ‘752 patent is eligible for covered business method patent review.
`
`1.
`
`Financial Product or Service
`
`The parties disagree regarding whether the ‘752 patent meets the financial
`
`product or service requirement. For purposes of determining whether a patent is
`
`eligible for covered business method patent review, we focus on the claims. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`
`48,734, 48,736 (Aug. 14, 2012) (responses to comments 4 and 8). A patent need
`
`have only one claim directed to a covered business method to be eligible for
`
`covered business method patent review. See id. In this case, the parties focus their
`
`arguments on claim 25 of the ‘752 patent.
`
`In promulgating rules for covered business method reviews, the Office
`
`considered the legislative intent and history behind the AIA‘s definition of a
`
`covered business method patent. See id. at 48,735–36 (responses to comments 1–
`
`
`
`9
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`7). The ―legislative history explains that the definition of covered business method
`
`patent was drafted to encompass patents ‗claiming activities that are financial in
`
`nature, incidental to a financial activity or complementary to a financial activity.‘‖
`
`Id. at 48,735 (response to comment 1, citing 157 CONG. REC. S5432 (daily ed.
`
`Sept. 8, 2011) (statement of Sen. Schumer)). The legislative history also indicates
`
`―financial product or service‖ should be interpreted broadly. Id. Thus, the term is
`
`not limited to products or services of the financial services industry. See 77 Fed.
`
`Reg. 48,734, 48,735–36 (responses to comments 2–3); see also LinkedIn Corp. v.
`
`AvMarkets Inc., CBM2013-00025, Paper 13 (Institution of CBM Patent Review)
`
`9–10 (PTAB Nov. 12, 2013).
`
`Claim 25 of the ‘752 patent recites a method of controlling access to location
`
`information for wireless communications devices, wherein a ―client application‖
`
`requests such location information. Ex. 1001, 16:18–22. Petitioner, relying on the
`
`‘752 patent disclosure at column 11, lines 12–13, contends the ‘752 patent
`
`specification discloses such client applications may be ―used in business
`
`applications incidental or complimentary to financial products or services.‖ Pet. 8.
`
`The cited disclosure provides:
`
`Other client applications may be service or goods providers
`whose business is geographically oriented. For example, if a wireless
`communications device is in the area of a particular hotel, restaurant,
`and/or store, the business may want to know that, so relevant
`advertising may be transmitted to the wireless communications
`device.
`
`Ex. 1001, 11:12–17 (emphases added). Petitioner points to the first sentence of
`
`this disclosure, and contends the ‘752 patent is a covered business method patent
`
`because ―banks and other financial service companies‖ are ―geographically
`
`oriented‖ businesses. Pet. 8. Patent Owner responds that if we were to accept
`
`
`
`10
`
`Ocean Tomo Ex. 1019-010
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`Case CBM2014-00006
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`Petitioner‘s contention in this regard, then ―any patent even remotely related to an
`
`application that might be utilized in a financial nature would be eligible for CBM
`
`review.‖ Prelim. Resp. 13–14. We conclude neither party has presented a relevant
`
`analysis because, as we indicated above, the ―financial product or service‖
`
`requirement for covered business method patent review is not limited to products
`
`or services of the financial services industry. See 77 Fed. Reg. 48,734, 48,735–36
`
`(responses to comments 2–3).
`
`The proper inquiry, instead, is whether the patent claims activities that are
`
`financial in nature, incidental to a financial activity, or complementary to a
`
`financial activity.3 We, therefore, consider Petitioner‘s citations to the ‘752
`
`patent‘s disclosure relating to the ―client application‖ of claim 25 in light of this
`
`standard. The ‘752 patent disclosure indicates the ―client application‖ may be
`
`associated with a service provider or a goods provider, such as a hotel, restaurant,
`
`or store, that wants to know a wireless device is in its area so relevant advertising
`
`may be transmitted to the wireless device. See Ex. 1001, 11:12–17. Thus, the
`
`subject matter recited in claim 25 of the ‘752 patent is incidental or complementary
`
`to the financial activity of service or product sales. Therefore, claim 25 is directed
`
`to a method for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.
`
`2.
`
`Exclusion for Technological Inventions
`
`The definition of ―covered business method patent‖ expressly excludes
`
`―patents for technological inventions.‖ AIA § 18(d)(1); see also 37 C.F.R.
`
`
`3 See, e.g., Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024, Paper 16
`(Institution of CBM Patent Review) 10–11 (PTAB Nov. 19, 2013); LinkedIn Corp.
`v. AvMarkets Inc., CBM2013-00025, Paper 13 (Institution of CBM Patent Review)
`9–10 (PTAB Nov. 12, 2013); Apple Inc. v. Sightsound Techs., LLC, CBM2013-
`00023, Paper 12 (Institution of CBM Patent Review) 12–13 (PTAB Oct. 8, 2013).
`
`
`
`11
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`Case CBM2014-00006
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`§ 42.301(a) (2013). To determine whether a patent is for a technological
`
`invention, we consider on a case-by-case basis ―whether the claimed subject matter
`
`as a whole recites a technological feature that is novel and unobvious over the prior
`
`art; and solves a technical problem using a technical solution.‖ 37 C.F.R.
`
`§ 42.301(b) (2013). The parties disagree regarding whether claim 25 meets the
`
`technological invention exclusion.
`
`We are persuaded by Petitioner‘s argument that claim 25 is not a
`
`―technological invention‖ excluded from covered business method patent review.
`
`In particular, the Office has indicated the following claim drafting techniques
`
`―would not typically render a patent a technological invention‖:
`
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software, memory,
`computer-readable storage medium, scanners, display devices or
`databases, or specialized machines, such as an ATM or point of sale
`device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method is
`novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug. 14,
`
`2012). On the record presently before us, we determine the hardware components
`
`of claim 25 (i.e., wireless communication devices, a wireless communication
`
`network, a client application, and a memory) were known prior art technologies
`
`before the filing of the ‘752 patent in 2001. See, e.g., Ex. 1004; Ex. 1005;
`
`Ex. 1006. The data manipulations recited in claim 25 are, thus, a process or
`
`method that is not ―typically‖ a technological invention, even if the process or
`
`method is novel and non-obvious, under example (b) of the Office Patent Trial
`
`
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`12
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`Practice Guide. Patent Owner‘s arguments do not persuade us that the present case
`
`is an atypical case in this regard.
`
`In conclusion, based on the present record, claim 25 of the ‘752 patent does
`
`not recite a ―technological invention‖ excluded from covered business method
`
`patent review.
`
`C.
`
`Non-Statutory Subject Matter
`
`Petitioner contends claims 25–29 of the ‘752 patent fail to recite patentable
`
`subject matter under 35 U.S.C. § 101, because they fall under the judicially created
`
`exception encompassing ―abstract ideas.‖ See Pet. 27–43. Specifically, Petitioner
`
`contends a person could perform every step of claim 25 without using a computer,
`
`by using a pen and paper or even the person‘s own mind, which impermissibly
`
`enters the realm of unpatentable abstract ideas and mental processes. See Pet. 30–
`
`34. On this record, we agree.
`
`Patent Owner contends that recitations directed to a wireless device, a client
`
`application, a memory, and a wireless communication network, in claims 25–29,
`
`are adequate references to ―material objects‖ to render claims 25–29 sufficiently
`
`―concrete,‖ as opposed to ―abstract,‖ under the rubric set forth in Ultramercial v.
`
`Hulu, 722 F.3d 1335, 1343 (Fed. Cir. 2013). See Prelim. Resp. 20–28. For
`
`purposes of this decision, we disagree. As an example, while independent claim
`
`25 does recite ―receiving a request from a client application for location
`
`information for a wireless device‖ (emphases added), the ―receiving‖ step is
`
`written such that the receipt of the request from the client application does not
`
`exclude receiving the request in the mind of a user. Such breadth in claim wording
`
`to encompass mental processes indicates that the recitation of ―wireless device‖
`
`and ―client application‖ are ancillary to the abstract idea set forth in the ―receiving‖
`
`step, and thus insufficient to confer subject matter eligibility. The same analysis is
`
`
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`applicable to the other steps of independent claim 25. For similar reasons, the
`
`recitation of ―wireless communications‖ in the preamble is not determinative.
`
`Accordingly, due to the breadth of the claim language, claims 25–29 cover mental
`
`processes, and contrary to Patent Owner‘s assertions, we are hard pressed to
`
`envision a scenario where covering mental processes is not effectively a
`
`preemption of all practical applications and implementations of an abstract idea.
`
`Therefore, we conclude Petitioner has demonstrated it is more likely than
`
`not that claims 25–29 of the ‘752 patent are unpatentable under § 101.
`
`D.
`
`Lack of Written Description Support for Claim 26
`
`Petitioner contends claim 26 of the ‘752 patent is unpatentable under 35
`
`U.S.C. § 112, first paragraph, because the specification does not contain a written
`
`description of the subject matter recited in that claim. See Pet. 43–46. On the
`
`record before us, we are persuaded by this contention.
`
`1.
`
`Notifying Wireless Device of Lack of Authorization
`
`Petitioner first contends the ‘752 patent specification fails to describe
`
`―notifying the wireless device that the client application is not authorized to
`
`receive the location information‖ (―the ‗notifying‘ step‖), as recited in claim 26.
`
`See Pet. 43–45. Petitioner acknowledges the ‘752 patent describes notifying the
`
`client application when a request for location information is denied, but contends
`
`there is no description of notifying the wireless device. See id.
`
`Patent Owner contends, and we agree, that the ‘752 patent specification
`
`repeatedly discloses notifying the wireless device. See Prelim. Resp. 29–30 (citing
`
`Ex. 1001, 2:64–65; 9:26–35; 9:49–51; 10:31–45; 12:44–45; 13:7–13). Each of
`
`those references, however, discloses notifying the wireless device when a request
`
`for location information is made, and not when it is denied, as recited in claim 26.
`
`
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`14
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`Patent Owner nonetheless contends: ―It naturally follows, that these notifications
`
`would include information regarding whether the request was authorized or denied
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`authorization.‖ Id. at 30. That contention, however, does not address the standard
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`for compliance with the written description requirement of 35 U.S.C. § 112, first
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`paragraph. That standard is whether the patent specification reasonably conveys to
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`those skilled in the art that the inventor(s) had possession of the claimed subject
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`matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
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`1336, 1351 (Fed. Cir. 2010) (en banc). The disclosure in the ‘752 patent
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`specification of notifying a wireless device when a request for location information
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`is made does not necessarily convey that the inventors of the ‘752 patent had
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`possession of notifying the wireless device that a client application is not
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`authorized to receive the location information.
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`Patent Owner also contends the ‘752 patent specification discloses a logging
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`function whereby denying a client application authorization is recorded in memory,
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`and further discloses that such logs may be provided to the wireless device. See
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`Prelim. Resp. 30–31 (citing Ex. 1001, figs. 5, 6A, 6B; 11:53–55; 13:13–16). We
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`agree with Patent Owner that the cited portions of the ‘752 patent specification
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`disclose logging at least some instances when a request for location information is
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`denied. See Ex. 1001, 11:53–55. However, we do not agree that the cited portions
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`of the ‘752 patent specification disclose such logs may be provided to the wireless
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`device. In particular, while the final step of Figure 6B indicates a log is sent ―to all
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`parties who wish to receive‖ the log, that step is executed only after location
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`information is transmitted to the client application. See Ex. 1001, fig. 6B; 13:13–
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`17. In that situation, access to location information was granted, not denied, so the
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`log would not reflect a lack of authorization, as required by claim 26. We are not
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`persuaded that one of ordinary skill in the art would understand that the sending of
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`a log as disclosed in Figure 6B would include the denial information disclosed at
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`column 11, lines 53–55.
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`Patent Owner finally relies on the disclosure of U.S. Provisional Patent
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`Application 60/269,506, which the ‘752 patent incorporates by reference. See
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`Prelim. Resp. 31 (citing Ex. 1020, at 22; 42). The cited portions of the provisional
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`application pertinently indicate only that a location gateway may initiate a dialogue
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`with the subscriber ―regarding permission for a location request‖ (Ex. 1020, at 22),
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`and SMS messaging may be used for ―notification of request for permissions‖ and
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`―notification of event/trigger (e.g. proximity or calendar event)‖ (Ex. 1020, at 42).
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`Patent Owner‘s reliance is inapposite, however, as none of these cited portions
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`disclose a denial of authorization as recited in claim 26.
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`For all the foregoing reasons, we conclude it is more likely than not that
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`notification of the wireless device as recited in claim 26 of the ‘752 patent is not
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`described in the ‘752 patent specification as required by 35 U.S.C. § 112, first
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`paragraph.
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`2.
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`Combination of Steps
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`Petitioner also contends the ‘752 patent specification fails to describe the
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`two steps of claim 26 in combination. See Pet. 45. As just discussed above,
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`Petitioner has presented information that demonstrates it is more likely than not
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`that the ―notifying‖ step of claim 26 is not described in the ‘752 patent
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`specification. It necessarily follows that it is more likely than not that the ‘752
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`patent specification fails to describe the two steps of claim 26, the ―notifying‖ step
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`and the ―updating‖ step, in combination.
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`Nonetheless, we further address Patent Owner‘s contention that claim 26
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`does not require the ―notifying‖ step to be performed prior to the ―updating‖ step.
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`See Prelim. Resp. 28–29; 32–33. According to Patent Owner, the ‘752 patent
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`specification need only describe the two steps of claim 26 in isolation from each
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`other to satisfy 35 U.S.C. § 112, first paragraph. See id.
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`We disagree with Patent Owner‘s construction of claim 26, because the
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`―updating‖ step in claim 26 authorizes the client application to receive the location
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`information ―during subsequent requests.‖ See Ex. 1001, 16:41–46. The term
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`―subsequent‖ indicates the ―updating‖ step follows the ―notifying‖ step in time.
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`That is, the ―updating‖ step authorizes the client application to receive location
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`information ―subsequent‖ to the notification recited in the ―notifying‖ step of claim
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`26. Patent Owner‘s citations to the ‘752 patent‘s disclosure relating to the
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`―updating‖ step do not disclose such a temporal requirement relative to the
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`―notifying‖ step, as required by claim 26. See Prelim. Resp. 32–33 (citing
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`Ex. 1001, 2:42–45; 6:20–32).
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`For all the foregoing reasons, we determine it is more likely than not that the
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`‘752 patent specification does not describe the two-step combination recited in
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`claim 26 as required by 35 U.S.C. § 112, first paragraph.
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`E. Obviousness Over Havinis ’931 and Leonhardt
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`Petitioner contends claims 25–29 of the ‘752 patent are unpatentable under
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`35 U.S.C. § 103 as obvious over Havinis ‘931 and Leonhardt. See Pet. 56–61. On
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`the record before us, we are persuaded by this contention as to claim 25, but not
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`claims 26–29.
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`1.
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`Havinis ’931
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`Havinis ‘931 discloses a system and method for defining location services.
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`See Ex. 1004, title; abs. Figure 3 of Havinis ‘931 is reproduced here:
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`Figure 3 discloses positioning of mobile terminal 300 by location application 380.
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`As illustrated in Figure 3, location application 380 may be permitted to determine a
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`location of mobile terminal 300 operating in Public Land Mobile Network
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`(―PLMN‖) 305. See id. at 4:35–55; 1:34–35.
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`Location application 380 must register first with Gateway Mobile Location
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`Center (―GMLC‖) 390 to define ―its location services profile‖ 398, which is stored
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`within a database of GMLC 390. Id. at 4:35–41. Location services profile 398
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`specifies ―all of the relevant service parameters specific to‖ location application
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`380. Id. at 4:41–43. Profile 398 defines groups of mobile terminal subscribers
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`which that location application 380 may locate by the Mobile Station International
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`Subscriber Directory Number (―MSISDN‖) of each mobile terminal in the group.
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`See id. at 4:50–55. GMLC 390 assigns a Location Application Identifier Number
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`(―LAIN‖) 386 identifying location application 380 and its location services profile
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`398. See id. at 4:56–60.
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`When location application 380 sends interactive positioning request 382 to
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`GMLC 390, request 382 includes LAIN 386 and identifies mobile terminal(s) to be
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`positioned by MSISDN(s) or by group ID. See id. at 4:60–66; 5:5–15. GMLC 390
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`then cross-references the MSISDN(s) or group ID with LAIN 386 to verify
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`location application 380 has the authority to position the mobile terminal(s)
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`identified in request 382. See id. at 5:5–15. If no authority is found, GMLC 390
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`rejects request 382 and sends a rejection message to location application 380. See
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`id. at fig. 5; 7:28–33.
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`GMLC 390 also verifies the mobile terminal(s) to be positioned allow
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`positioning to be performed. See id. at 7:46–53. That is, GMLC 390 checks the
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`―positioning subscription information, e.g., privacy indication‖ of each mobile
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`terminal, as maintained by components of PLMN 305. See id. If a mobile
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`terminal does not allow positioning, request 382 is rejected and a rejection message
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`is sent to location application 380. See id. at 7:66–8:2.
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`2.
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`Leonhardt
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`Leonhardt describes ―how to meet the need for location-dependent
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`information by introducing a general-purpose location service for mobile
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`environments.‖ Ex. 1008, at 43, col. 1. Leonhardt discloses ―location domains as
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`a powerful framework for presenting and protecting location information,‖ and
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`―investigates mechanisms to exactly specify and supervise the level of access to
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`location data that is wanted.‖ Id. at 43, abs.; 43, col. 2. Such sec