Federal Circuit backs Google in Unwired Planet row
The US Court of Appeals for the Federal Circuit has backed Google in a patent row between the technology company and licensing platform Unwired Planet.
Yesterday, November 15, the court affirmed a decision from the Patent Trial and Appeal Board (PTAB) that the challenged claims of US patent number 7,024,205, owned by Unwired Planet, are invalid as obvious.
The patent, called “Subscriber delivered location-based services”, describes a system and method for providing wireless network subscribers with prioritised search results based on the location of their mobile device.
Back in October 2013, Google filed inter partes review (IPR) and covered business method (CBM) petitions, challenging claims 1–6 of the ‘205 patent. The board consolidated the proceedings before the same panel and, in April 2014, instituted both proceedings on all challenged claims.
In March the following year, the board issued final written decisions invalidating all of the challenged claims as obvious.
In the IPR decision, the board held that the challenged claims were obvious on three grounds relating to prior art.
Unwired then made three challenges to the board’s basis for the first ground of obviousness in the IPR, which had related to two prior art references, called Galitz and Brohoff.
Brohoff, the primary reference, was directed to US patent number 6,108,533, called “Geographical database for radio systems”.
Galitz relates to Wilbert O Galitz’s book “The Essential Guide to User Interface Design: An Introduction to GUI Design Principles and Techniques”, which discusses principles for interface design.
Unwired issued three arguments, including that Galitz is “not analogous prior art”.
But Circuit Judge Jimmie Reyna said: “We find substantial 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 C BM review,” added Reyna.
On the first argument raised by Unwired, the court explained that prior art is analogous and can be applied in an obviousness combination if it is either “from the same field of endeavour, regardless of the problem addressed”, or “is reasonably pertinent to the particular problem with which the inventor is involved”.
Reyna added that the field of endeavour of a patent isn’t limited to the “specific point of novelty”, the “narrowest possible conception of the field”, or the “particular focus within a given field”.
The Federal Circuit then held that both Galitz and the ‘205 patent are in the field of interface design, and that the board had correctly applied Galitz as analogous art.
The court dismissed the CBM appeal as moot.
