Unwired Planet, LLC v. Google Inc.
841 F.3d 995
| Fed. Cir. | 2016Background
- The ’205 patent claims a method for location-based mobile search results that can prioritize farther service providers over nearer ones based on stored "prioritization information" (i.e., "farther-over-nearer ordering").
- Brohoff (primary prior art) discloses a radio-networked geographic database returning nearby services grouped by geographic zones; it does not specify ordering within zones.
- Galitz is a GUI design treatise recommending ordering techniques (e.g., alphabetical ordering) and combining ordering methods for menus and lists.
- Additional cited prior art (Rich, Remy, Hopkins) describe paid ranking, nearest-result location services, and presenting vendor ads/ordering by various criteria.
- The PTAB found claims 1–6 of the ’205 patent obvious (IPR) over Brohoff combined with Galitz (and other combinations) and, in the CBM review, found lack of written description for certain claim terms; Unwired appealed both decisions.
- The Federal Circuit affirmed the IPR invalidity ruling (claims obvious) and dismissed the CBM appeal as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Galitz is analogous prior art | Galitz is unrelated (GUI manual), not in mobile/location field | Galitz concerns interface/menu ordering relevant to displaying location-based info | Galitz is analogous—both address interface design and ordering of displayed location/address info |
| Whether prior art teaches farther-over-nearer ordering | Prior art does not teach prioritization that produces farther-over-nearer ordering as claimed | Brohoff+Galitz (e.g., alphabetical ordering) would sometimes produce farther-over-nearer results, satisfying claim elements | Prior art combination need only sometimes produce the claimed ordering; teaches the claimed result |
| Whether a skilled artisan would be motivated to combine Brohoff and Galitz | No motivation to modify Brohoff or abandon nearer-first ordering | Galitz teaches combining ordering techniques to improve displays; a skilled artisan would apply those teachings to Brohoff | Motivation exists—KSR rationale and expert testimony support obviousness of the combination |
| Validity review in CBM for written description / appeal status | Unwired argued claims were supported in the spec | Board found lack of written description for "prioritization information independent of proximity" and farther-over-nearer; Unwired appealed | CBM appeal rendered moot by IPR decision; court dismissed CBM appeal as moot |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (recognizing broad rationales for combining prior art and rejecting rigid TSM requirement)
- Graham v. John Deere Co., 383 U.S. 1 (establishing Graham factors for obviousness analysis)
- In re Clay, 966 F.2d 656 (Fed. Cir.) (defining analogous-art tests)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir.) (standard of review for PTAB obviousness decisions)
- Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir.) (combination that sometimes meets claim elements can support obviousness)