In Unwired Planet, LLC v. Google Inc., the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot.
Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the ’205 patent”) owned by Unwired Planet, LLC. The ’205 patent describes a system and method for providing wireless network subscribers with prioritized search results based on the location of the mobile device. Claim 1 is the sole independent claim of the ’205 patent and recites “farther-over-nearer ordering” in the context of wireless location-based services. We previously discussed a related CBM review between the same parties.
The PTAB consolidated the proceedings before the same panel and issued a CBM final written decision holding that the challenged claims were invalid for lack of written description, and an IPR final written decision holding that the same challenged claims were invalid for obviousness. Notably, the PTAB held claims 1-3, 5, and 6 as obvious over prior art references Brohoff and Galitz. On appeal of the IPR, Unwired argued that (1) Galitz is not analogous prior art, (2) the prior art does not teach farther-over-nearer ordering, and (3) a person of skill in the art would not have been motivated to combine Brohoff with Galitz.
As we discussed in a previous post, the success of a non-analogous art challenge turns on the framing of the fields of endeavor of the prior art reference and the patented invention. Here, the court additionally noted that prior art is analogous if it is “reasonably pertinent to the particular problem with which the inventor is involved” (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).
The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.
To determine whether Galitz is analogous prior art, the court evaluated similarities between the ’205 patent and Galitz, specifically that the ’205 patent addresses a problem of how to display and order information on a mobile device, and Galitz relates generally to graphical user interface design. The court reasoned that because these two areas of focus overlap within the broader field of interface design and Galitz is reasonably pertinent to the problem of displaying address information, the PTAB correctly applied Galitz as analogous prior art, while noting that the “field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”
Additionally, the court agreed with the PTAB that the prior art teaches farther-over-nearer ordering, reasoning that even though the prior art teaches prioritization schemes that sometimes return a farther result with farther-over-nearer ordering, combinations of prior art that sometimes perform all the method steps are sufficient to show obviousness.
Moreover, the court determined that the PTAB’s determination that a skilled artisan would be motivated to combine Brohoff with Galitz was supported by substantial evidence, agreeing that Google need not show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination. The court noted that Galitz’s teaching of the advantages of combining ordering techniques shows “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The court concluded that the challenged claims were obvious and therefore dismissed as moot the CBM appeal, which addressed the same claims. The court’s decision provides helpful guidance for parties disputing whether asserted prior art is analogous to the challenged claims.