Unwired Planet, LLC v. Google Inc.
841 F.3d 1376
| Fed. Cir. | 2016Background
- Unwired Planet’s ’752 patent claims a method/system to control access to wireless devices’ location data based on subscriber profiles and permission sets (spatial/temporal limits).
- Google petitioned for a Covered Business Method (CBM) review of claims 25–29 under the AIA; the Board instituted review after finding the patent a CBM patent.
- The Board’s CBM determination rested on specification language suggesting location data could be used to send targeted advertising to merchants (hotels, restaurants, stores), characterizing the claims as “incidental or complementary” to financial activity.
- The Board issued a final written decision invalidating the challenged claims under 35 U.S.C. § 101; Unwired Planet appealed, challenging the Board’s CBM classification.
- The Federal Circuit held the Board applied an incorrect, expanded test (relying on PTO policy language about activities "incidental to" or "complementary to" financial activity) instead of the statutory definition in AIA § 18(d)(1), vacated and remanded for reconsideration of CBM status.
Issues
| Issue | Unwired’s Argument | Google’s Argument | Held |
|---|---|---|---|
| Whether the ’752 patent is a CBM patent under AIA § 18(d)(1) | Board erred; claims do not themselves recite a financial product/service and the Board improperly relied on speculative specification monetization | PTO legislative-history and Board precedent permit a broad reading; specification shows use for targeted advertising (financial activity) | Board applied wrong legal standard (policy language) rather than statutory text; sua sponte vacated and remanded to determine CBM status under statute |
| Whether Board may rely on PTO’s nonrule policy statements (e.g., Schumer floor statement) to expand CBM scope | Such policy/legislative-history citations cannot override the statute; single legislator’s remark is not controlling | PTO policy and some Board precedent endorse broader scope | Policy statements are not legally binding; agency may not rely on them to expand authority beyond statute |
| Whether “incidental to” or “complementary to” standard is permissible | Such language is broader than AIA’s limits and renders statutory limits superfluous | That language reflects legislative intent and PTO guidance supporting broad interpretation | Court rejects reliance on “incidental/complementary” test — it is not in statute and cannot be used to enlarge CBM review authority |
| Whether court should decide §101 patentability after error in CBM determination | Unwired asks remand for proper CBM determination first | Google did not cross-appeal the CBM classification ruling | Court declines to reach §101; vacates Board’s decision and remands for initial CBM determination under correct statutory standard |
Key Cases Cited
- Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir.) (discussing PTO role in CBM implementation)
- Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307 (Fed. Cir.) (APA standard for Board review)
- Power Integrations, Inc. v. Lee, 797 F.3d 1318 (Fed. Cir.) (APA review of PTAB decisions)
- Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir.) (de novo review of statutory interpretation)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (CBM analysis consistent with statutory definition where claim was financially directed)
- Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546 (Sup. Ct.) (statutory text is authoritative for agency power)
- Office of Communication of United Church of Christ v. FCC, 707 F.2d 1413 (D.C. Cir.) (agencies cannot exceed statutory authority)
- Ratzlaf v. United States, 510 U.S. 135 (Sup. Ct.) (caution in resorting to legislative history over clear text)
- Mims v. Arrow Fin. Servs., LLC, 132 S. Ct. 740 (Sup. Ct.) (single legislator views not controlling)
- Pac. Gas & Elec. Co. v. Fed. Power Comm’n, 506 F.2d 33 (D.C. Cir.) (policy statements lack force of law)
- Chrysler Corp. v. Brown, 441 U.S. 281 (Sup. Ct.) (policy statements do not have the force and effect of law)
- Hamlet v. United States, 63 F.3d 1097 (Fed. Cir.) (distinguishing policy statements from substantive rules)
- Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir.) (issues not raised before the Board may be forfeited)
- C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340 (Fed. Cir.) (patent exclusionary right impacts marketplace)
- Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir.) (patent exclusion and market effect)