Unified Patents Inc. v. Silver State Intellectual Technologies, IPR2017-01198, (PTAB Sept. 28, 2017)

Trials@uspto.
gov Paper 6
571-272-7822 Entered: September 28, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________
UNIFIED PATENTS INC.,

Petitioner,
v.
SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,

Patent Owner.
____________
Case IPR2017-01198
Patent 8,538,498 B2
____________
Before JOHN F. HORVATH, JOHN A. HUDALLA, and

KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108
IPR2017-01198
Patent 8,538,498 B2
I. INTRODUCTION
Petitioner Unified Patents Inc. requested an inter partes review of
claims 124 (the Challenged Claims) of U.S. Patent No. 8,538,498 B2
(the 498 patent). Paper 1 (Petition or Pet.). Patent Owner Silver
State Intellectual Technologies, Inc. filed a Preliminary Response. Paper 5
(Prelim. Resp.).
Under 35 U.S.C. 314(a), an inter partes review may not be instituted
unless it is determined that there is a reasonable likelihood that Petitioner
will prevail with respect to at least one of the Challenged Claims. Based on
the information presented in the Petition and Preliminary Response, we are
persuaded that there is a reasonable likelihood Petitioner would prevail with
respect to the Challenged Claims. Accordingly, we institute an inter partes
review of the Challenged Claims on the grounds specified below.
II. BACKGROUND
A. The 498 patent (Ex. 1001)
The 498 patent relates to communicating information, including
advertising information, with automobiles. Ex. 1001, 1:2325. The
498 patent discloses an information and control system for use in a vehicle
and capable of communicating with remote servers through a
communications network. Id. at 3:5762. The system includes a user
interface having a display that presents several options on a main directory
page. Figure 6 of the 498 patent is reproduced below.
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Figure 6 depicts the main directory screen displayed to a user,

including an option to view product or service providers (e.g., restaurants,
gas stations, department stores) within a selected distance of the vehicles
current location. Id. at 10:5660, 13:3147. When the user selects an option
from the main directory, icons representing locations of providers around the
vehicles current location are displayed. Id. at 13:4814:5. This is shown in
Figure 7 of the 498 patent, which is reproduced below.
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Figure 7 depicts icons representing the locations of restaurants around

a vehicles current location when a user selects, for example, restaurants
from the main directory. Id. at 13:4814:5. Further information about a
particular restaurant is displayed when the user selects a corresponding icon.
Id. at 15:1114, 15:4852. This is shown in Figure 9 of the 498 patent,
which is reproduced below.
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Figure 9 depicts the further information displayed when a user selects

the icon corresponding to the McDonalds restaurant depicted in Figure 7.
Id. at 15:4855. For example, the restaurants business hours and phone
number are displayed along with options for obtaining directions to the
restaurant (i.e., navigate) and the restaurant menu. Id. at 16:36, 1517,
3035. When the restaurant menu is selected, the user is presented with the
restaurants menu and an option to order items from the menu as shown in
Figure 10 of the 498 patent, which is reproduced below.
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Figure 10 depicts the restaurant menu page that enumerates types of

food and beverage served in the restaurant. Each food and beverage entry
may be highlighted by selecting same. Id. at 16:3336. The user may
select items from the restaurant menu and place a corresponding order by
selecting the order key. Id. at 16:2841.
B. Challenged Claims
Claims 1 and 13 are independent and are reproduced below with
bracketed material added.1
1. A method for use in a system in a vehicle, the
vehicle including a display element, the method
comprising:
[1a.] sensing a location of the vehicle;
[1b.] showing, on the display element, at least one
indicator indicating a location of at least one product or
service provider in relation to the sensed location of the
vehicle;
1
Petitioner identifies the limitations of claim 1 using different bracketing
notations than the notations set forth here. See Pet. 1327.
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[1c.] showing, on the display element, information

concerning a plurality of specific products or services
which may be purchased from the provider indicated by
the displayed indicator, in response to a user selection of
the indicator; and
[1d.] showing, on the display element along with the
information, an indication of a selectable option to order,
through a communications network, one or more of the
plurality of specific products or services.
13. A system for use in a vehicle, comprising:

[13a.] a device for sensing a location for the vehicle;
[13b.] a display element configured to show at least one
indicator indicating a location of at least one product or
service provider in relation to the sensed location of the
vehicle, to show information regarding a plurality of
products or services offered by the provider, and to show
an indication of a selectable option to order one or more of
the plurality of products or services;
[13c.] an interface configured to receive a user request to
obtain information concerning a plurality of products or
services offered by the provider indicated by the indicator
and to receive a user request to order one or more of the
plurality of products or services; and
[13d.] a processor configured to provide for display on the
display element of the indication of the selectable option
to order, through a communications network, one or more
of the plurality of products or services based on the
information.
C. Evidence Relied Upon

Petitioner relies on the following references:
1. Maekawa et al., U.S. Patent No. 6,040,824 (Maekawa)
(Ex. 1004);
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2. Dickson et al., U.S. Patent No. 6,574,603 (Dickson) (Ex. 1005);

and
3. Spiegel et al., U.S. Patent No. 6,629,079 (Spiegel) (Ex. 1006).
Petitioner further relies on two declarations of William R. Michalson,
Ph.D. (Ex. 1007) (Michalson First Declaration) and (Ex. 1012)
(Michalson Second Declaration).
D. Proposed Grounds of Unpatentability

Petitioner advances the following grounds of unpatentability under
35 U.S.C. 103(a) (Pet. 4):
1. Claims 14, 716, and 1924 over Maekawa and Dickson; and
2. Claims 5, 6, 17, and 18 over Maekawa, Dickson, and Spiegel.
E. Related Proceedings
The 498 patent was the subject of a petition for inter partes review
filed by Google Inc. on August 17, 2015. Google Inc. v. Silver State
Intellectual Technologies, Inc., IPR201501747, Paper 1. Further, Petitioner
states the 498 patent was the subject of Silver State Intellectual
Technologies, Inc. v. Google Inc. et al., Case No.: 2:14-cv-00662 (D. Nev.)
(filed Apr. 30, 2014), which was terminated on October 2, 2015. Pet. 2.
III. ANALYSIS
A. Overview of Cited References
1. Maekawa
Maekawa relates to a vehicle touch screen navigation system.
Ex. 1004, 1:78, 3:4849. Figure 5A of Maekawa is reproduced below.
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Figure 5A of Maekawa depicts a road map displayed on a touch

screen navigation system indicating the present position of a vehicle
equipped with the navigation system. Id. at 4:4553, 6:6367. The display
includes a peripheral search touch switch for initiating a search for the
facilities around the present position. Id. at 7:13. The result of selecting
the peripheral search switch is shown in Figure 5C of Maekawa, which is
reproduced below.
Figure 5C of Maekawa depicts facility selecting switches such as

switches for selecting a convenience store, a parking lot or garage, a gas
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station, a family restaurant, a bank and so on. Id. at 7:913. The facility
selecting switches of Figure 5C are displayed in response to a user selecting
the peripheral search switch of Figure 5A. Id. When a user selects a facility
selecting switch, facilities of the selected type are displayed on a map as
shown in Figure 6A of Maekawa, which is reproduced below.
Figure 6A of Maekawa depicts landmarks of a facility type around the

present location of the vehicle. Id. at 7:1316. Touching a particular facility
selecting switch shown in Figure 5C causes the system to display the
landmarks of that facility type, as shown in Figure 6A. Id. For example if
the switch convenience store is selected by touching as shown in FIG. 3D,
the screen of FIG. 6A is displayed to show landmarks of convenience stores
at their locations surrounding the present position. Id. In one embodiment,
the system may display detailed information of a selected landmark, such as
business hours, content, and telephone number. Id. at 7:4345. This is
shown in Figure 13B of Maekawa, which is reproduced below.
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Figure 13B depicts display of the selected landmark at the center of

the screen with detailed information of the selected landmark. Id. at 9:50
52.
2. Dickson
Dickson describes an in-vehicle controller (also called an intelligent
vehicle controller) (IVC) that allows vehicle occupants to place orders from
within the vehicle for items provided by a quick-serve restaurant. Ex. 1005,
2:15, 9:3135. Figure 4A of Dickson is reproduced below.
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The IVC 1100 displays a menu from which occupants may select any
number of desired items to form an occupant order. Id. at 2:510. The
primary purpose of the IVC is to: (i) display menu information, (ii) receive
advertising, merchandising and menu indicia, and (iii) order and provide
payment for selected items from within the vehicle. Id. at 9:3744.
3. Spiegel
Spiegel discloses selecting items to order using a shopping cart
model. Ex. 1006, 1:59. Figure 2 of Spiegel is reproduced below.
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Figure 2 depicts display of shopping cart information, including a

current order and past orders. Id. at 6:1719. The current order contains the
items listed in the shopping cart. Id. at 6:2022. Orders that have been
checked out are listed in the past order box 202, which includes status
information for the past orders. Id. at 6:2628.
B. Claim Construction
We interpret the claims of an unexpired patent that will not expire
before issuance of a final written decision using the broadest reasonable
interpretation in light of the specification. See 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016). Under
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the broadest reasonable construction standard, claim terms generally 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. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims,
however, should always be read in light of the specification and teachings
in the underlying patent, and [e]ven under the broadest reasonable
interpretation, the Boards construction cannot be divorced from the
specification and the record evidence. Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted). Further, any
special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
are not to be read from the specification into the claims. In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993).
1. Selected Status
Each of claims 5 and 17 recites that the descriptions of the products
or services previously ordered are indicated in a selected status. Ex. 1001,
19:444, 20:3436. Petitioner asserts the term selected status should be
construed as a representation reflecting a previous order of a product or
service. Pet. 8. Patent Owner does not address construction of this term.
See generally Prelim. Resp.
In support of its construction, Petitioner cites the plain language of
claims 5 and 17. Pet. 89. To analyze Petitioners construction, we must
consider the language of certain other claims, because claim 5 depends from
claim 1 via claim 3, and because claim 17 depends from claim 13 via
claim 15. Claim 1 recites, in relevant part, information concerning a
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plurality of specific products or services which may be purchased. Claim 3

limits this information to descriptions of the plurality of specific products or
services which may be purchased. When read in the context of claims 1 and
3, claim 5 further recites the descriptions of the plurality of specific products
or services, which may be purchased, are indicated in a selected status
when the described products or services have been previously ordered.
Claims 13, 15, and 17 have similar recitations. In light of the claim
dependencies, we find the claim language accords with Petitioners proposed
construction of selected status as a representation reflecting a previous
order of a product or service.
Petitioner further directs our attention to the Specification in support
of its proposed construction. Pet. 9 (citing Ex. 1001, 16:4246, 16:6317:4).
In particular, Petitioner cites a passage in which previously ordered food and
beverages are highlighted in a distinguishable color on the restaurant
menu of Figure 10 when a user decides to revisit a restaurant. Id. at
16:5817:1. This highlighting indicates selected items. Id. at 17:14.
The Specification thus describes highlighting in a distinguishable color as
one way of indicating prior selection or selected status. We agree with
Petitioner that this description is consistent with Petitioners proposed
construction of selected status, which we understand as encompassing, but
not limited to, a representation of a previous order such as highlighting the
previous order in a distinguishable color.
For purposes of this Decision, we adopt Petitioners proposed
construction of selected status as a representation reflecting a previous
order of a product or service in light of the foregoing evidence. Pet. 8.
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2. Means Plus Function Limitations

Even when a claim term does not explicitly recite the word means,
the claim term may nevertheless invoke 35 U.S.C. 112 6.2 Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).
Although failure to recite the word means creates a presumption that the
term was not intended to invoke functional claiming, the presumption can
be overcome and 112, para. 6 will apply if the challenger demonstrates that
the claim term, as understood by persons of ordinary skill in the art, fails to
recite sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function. Id. (internal citations and
quotations omitted).
Construing a means-plus-function claim term is a two-step process
wherein we first identify the claimed function and then determine what
structure, if any, disclosed in the specification corresponds to the claimed
function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta
AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St.
Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, structure
disclosed in the specification is corresponding structure only if the
specification or prosecution history clearly links or associates that structure
to the function recited in the claim. Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at
1113. This analysis applies under the broadest reasonable construction
2
Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
112-29, 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. 112 6 as
35 U.S.C. 112(f). Because the 498 patent has a filing date before
September 16, 2012 (effective date of the statute), we refer to the pre-AIA
version of 35 U.S.C. 112.
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standard. In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) ([T]he
broadest reasonable interpretation . . . [of] means-plus-function language is
that statutorily mandated in [Section 112] paragraph six. (quoting In re
Donaldson Co., 16 F.3d 1189, 119495 (Fed. Cir. 1994) (en banc)));
Donaldson, 16 F.3d at 1193 ([P]aragraph six applies regardless of the
context in which the interpretation of means-plus-function language arises,
i.e., whether as part of a patentability determination in the PTO or as part of
a validity or infringement determination in a court.).
Our Rules specifically require that a petition for inter partes review
identify how each challenged claim is to be construed, including
identification of the corresponding structure for means-plus-function
limitations. 37 C.F.R. 42.104(b)(3). In particular, where the claim to be
construed contains a means-plus-function limitation as permitted under
35 U.S.C. 112 6, the construction of the means-plus-function limitation
must identify the specific portions of the specification that describe the
structure, material, or acts corresponding to each claimed function. Id.
Petitioner asserts claim limitations 13a and 13d constitute means-plus-
function limitations as permitted under 35 U.S.C. 112 6. Pet. 10; see also
supra Section II.B (bracketed notations identifying limitations). For each
limitation, Petitioner identifies a recited function and corresponding
structure disclosed in the Specification. Pet. 1013. Patent Owner does not
challenge Petitioners identification of limitations 13a and 13d as subject to
construction under 35 U.S.C. 112 6 or Petitioners corresponding
proffered constructions of these limitations. See generally Prelim. Resp.
Limitation 13a recites a device for sensing a location for the
vehicle. Petitioner identifies the function of the claimed device as sensing
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a location of the vehicle. Pet. 12 (citing Ex. 1001, 20:9). Generic terms
such as mechanism, element, device, and other nonce words that reflect
nothing more than verbal constructs may be used in a claim in a manner that
is tantamount to using the word means because they typically do not
connote sufficiently definite structure and therefore may invoke 112,
para. 6. Williamson, 792 F.3d at 1348 (internal citations omitted). In light
of this tenet, we agree with Petitioner that limitation 13a is subject to 35
U.S.C. 112 6 and adopt Petitioners identification of the claimed function
as sensing a location of the vehicle. Relying on Dr. Michalson, Petitioner
further identifies the corresponding structure for the identified function as a
GPS receiver, or equivalents thereof. Id. at 13 (citing Ex. 1007 29). We
observe the Specification recites navigation subsystem 141 in FIG. 1
receives signals from a constellation of satellites[,] which is part of the U.S.
governments GPS. Ex. 1001, 12:1315. Given this disclosure, we agree
with Petitioner that the corresponding structure for the claimed device for
sensing a location for the vehicle is a GPS receiver, or equivalents
thereof.
Limitation 13d recites a processor configured to provide for display
on the display element of the indication of the selectable option to order,
through a communications network, one or more of the plurality of products
or services based on the information. Petitioner and Dr. Michalson
summarily assert limitation 13d constitutes a means-plus-function limitation.
Pet. 13; Ex. 1007 29. Petitioner does not set forth in the record before us
sufficient analysis of why one of ordinary skill in the art would fail to
understand the processor recited in limitation 13d as providing sufficiently
definite structure for performing the claimed function. See id. Petitioner
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thus fails to rebut the presumption that limitation 13d is not intended to
invoke 35 U.S.C. 112 6 because it does not recite the word means.
Williamson, 792 F.3d at 1348. Accordingly, we are not persuaded on the
record before us that limitation 13d constitutes a means-plus-function
limitation.
C. Discretion to Institute Inter Partes Review under 35 U.S.C.

314(a).
Patent Owner urges us to deny the Petition under 314(a) because the
requested inter partes would result in a colossal waste of the Boards and
Patent Owners resources. Prelim. Resp. 13. According to Patent Owner,
[t]here simply is no dispute in connection with the 498 patent because
Patent Owner has taken no action to enforce the 498 patent against
Petitioner. Id. at 8. Patent Owner further contends that, like the 498 patent,
four additional patents were each the subject of a petition for inter partes
review by Google, Inc. Id. at 78. All five matters were resolved by Google
and Patent Owner before a preliminary response was filed or a decision on
institution was entered by the Board in any of the matters. See id.; see also
IPR2015-01747 (Paper 9); IPR 2015-01737 (Paper 9); IPR2015-01746
(Paper 9); IPR2015-01738 (Paper 9); IPR2015-01748 (Paper 9). Thus,
Petitioner contends:
If the Board countenances Unifieds Petition in this
instance, it seems likely that Unified will be emboldened
to file recycled petitions copying the rest of the Google
IPRs, for a total of FIVE pointless IPRs that recycle
Petitions from long- resolved proceedings, leading to a
colossal waste of the Boards and Patent Owners
resources.
Prelim. Resp. 9. We are not persuaded by Patent Owners argument.
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Institution of inter partes review is discretionary. See 35 U.S.C.

314(a); 37 C.F.R. 42.108(a). We exercise our discretion with an eye
toward ensuring fairness for both petitioner and patent owner, and,
particularly, in proceedings where a petitioner has previously challenged the
same patent claims. See Decision Denying Institution of Inter Partes
Review, NVIDIA Corp. v. Samsung Elecs. Co., Ltd., Case IPR2016-00134,
Paper 9, slip op at 78 (PTAB May 4, 2016). When determining whether to
exercise our discretion not to institute review, we consider a number of
factors, including the non-exhaustive list of seven factors enumerated in
NVIDIA. Id.; see also General Plastic Industrial Co., Ltd. v. Canon
Kabushiki Kaisha, Case IPR2016-01357, (PTAB September 6, 2017)
(Paper 19) (informative) (reaffirming application of the NVIDIA factors).
Patent Owner fails to address the NVIDIA factors. See generally
Prelim. Resp. Nevertheless, we consider the NVIDIA factors in this matter
and determine none of the circumstances that would normally give us pause
when a petition is later filed is present in this matter. The instant Petitioner
is not Google, Inc., the petitioner in IPR2015-01747 that earlier challenged
the 498 patent. No patent owner preliminary response or other substantive
paper was filed or issued in IPR2015-01747 before that matter was resolved,
so the instant Petitioner could not have relied on such a substantive paper to
adjust positions in the current Petition. Finally, Patent Owners argument that
[t]here simply is no dispute in connection with the 498 patent is
unpersuasive because it seeks to create a requirement that inter partes
review must be predicated upon an underlying enforcement action. Prelim.
Resp. 8. No such requirement exists. Accordingly, we decline to exercise
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our discretion not to institute review under 314(a) and turn to the merit of
the Petition.
D. Asserted Obviousness of Claims 14, 716, and 1924 over

Maekawa and Dickson
1. Independent Claim 1
Petitioners analysis, as supported by the Michalson First Declaration,
demonstrates where Petitioner contends each element of claim 1 is taught or
suggested in Maekawa and Dickson. Pet. 1327; Ex. 1007 4557.3 In
particular, Petitioner identifies Maekawas location detection by a present
position detecting unit 2 as meeting the location sensing recited in limitation
1a, indicators of landmarks as meeting the indicator of at least one product
or service provider in limitation 1b, and display of business information as
meeting the showing of information in response to a user selection of the
indicator as recited in limitation 1c. Pet. 1420; Ex. 1007 46. Petitioner
further identifies Dicksons restaurant menu as meeting the information
concerning a plurality of products or services which may be purchased as
recited in limitation 1c, and ordering functionality as meeting the selectable
option to order recited in limitation 1d. Pet. 1827; Ex. 1007 46, 5457.
Relying on Dr. Michalsons testimony, Petitioner contends that it
would have been obvious to an artisan of ordinary skill to add the in-vehicle
ordering option and restaurant menu of Dickson to the vehicle dashboard
display disclosed in Maekawa. Id. at 21 (citing Ex. 1007 4853). An
ordinarily skilled artisan, according to Dr. Michalson, would have realized
3
Petitioner identifies the limitations of claim 1 using different notations
from ours. See Pet. 1327. We refer to the limitations of claim 1 as
indicated by the notations set forth in Section II.B above.
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that the combination would have provided a two-fold advantage of

increasing customer and business-owner convenience. Ex. 1007 51. This
increased convenience would obtain from reduced congestion and wait times
at restaurants, the ability to have orders ready for pickup upon arrival, and,
in the case of a drive-thru restaurant, the ability of vehicle passengers to see
and interact with a menu when ordering, rather than relying on the driver to
do so. Id. 4950. Finally, Dr. Michalson testifies that an artisan of
ordinary skill would have been able to combine the cited teachings of
Maekawa and Dickson with predictable success. Id. 5253, 5557.
We have reviewed the information provided by Petitioner, including
the relevant portions of the supporting Michalson First Declaration.
Petitioner has identified relevant teachings and suggestions in Maekawa and
Dickson and has adduced evidence in support of its challenge, including the
Michalson First Declaration. Pet. 1327; Ex. 1007 4557. Patent Owner
does not address Petitioners contentions regarding claim 1. See generally
Prelim. Resp. We credit Petitioners evidence, including the testimony of
Dr. Michalson, in the absence of evidence to the contrary in the record
before us. Based on the record at this stage of the proceeding, therefore, we
are persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on its challenge to claim 1.
2. Independent Claim 13
Petitioners analysis of independent claim 13 refers back to its
corresponding analysis of claim 1, and provides further information to show
how the combination of Maekawa and Dickson teaches the limitations of
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claim 13. Pet. 3648.4 For example, to meet the device for sensing a
location limitation, which we have construed as a mean-plus-function
limitation requiring a GPS receiver as the means for sensing the location,
Petitioner identifies Maekawas GPS receiver 21. Pet. 37 (citing Ex. 1004,
4:4553, Fig. 1). Petitioner further identifies structures recited by Maekawa
and Dickson for meeting limitations 13c and 13d. Id. at 4348. For
instance, to meet limitation 13c, Petitioner identifies Maekawas touch
screen display 12 as an interface, and relies on the combined teachings of
Maekawa (selecting and displaying restaurant information) and Dickson
(selecting and displaying a restaurant menu, and an option to order from the
menu) to disclose an interface configured to receive a user request to obtain
information concerning a plurality of products or services offered by the
provider indicated by the indicator and to receive a user request to order one
or more of the plurality of products or services. Id. at 46. To meet
limitation 13d, Petitioner identifies Maekawas central processing system 4
and CPU 40, together with the teachings of Dickson regarding displaying
order information, to disclose a processor configured to provide for display
on the display element . . . the indication of the selectable option to order . . .
one or more of the plurality of products or services. Id. As with claim 1,
Petitioner relies on Dr. Michalsons testimony to contend that it would have
been obvious to an artisan of ordinary skill to combine the cited teachings of
Maekawa and Dickson. Id. at 3648 (citing Ex. 1007 6981). Thus,
4
Petitioner identifies the limitations of claim 13 using different notations
from ours. See Pet. 3648. We refer to the limitations of claim 13 as
indicated by the notations set forth in Section II.B above.
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demonstrates where Petitioner contends each element of claim 13 is taught

or suggested by the combination of Maekawa and Dickson. Id.
the relevant portions of the supporting Michalson First Declaration.
Petitioner has identified relevant teachings and suggestions in Maekawa and
Dickson and has adduced evidence in support of its challenge, including the
Michalson First Declaration. Pet. 3648; Ex. 1007 6982. Patent Owner
does not address Petitioners contentions regarding claim 13. See generally
Prelim. Resp. We credit Petitioners evidence, including the testimony of
Dr. Michalson, in the absence of evidence to the contrary in the record
before us. Based on the record at this stage of the proceeding, therefore, we
are persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on its challenge to claim 13.
3. Dependent claims 2 and 14
Dependent claims 2 and 14 recite, in relevant part, wherein the
communications network includes a wireless communication network.
demonstrates where Petitioner contends each element of dependent claims 2
and 14 is taught or suggested by Maekawa and Dickson. Pet. 2730, 48
(citing Ex. 1007 5860, 82). In particular, Petitioner identifies Dicksons
satellite and radio communications network and Maekawas data transceiver
for communicating with a traffic communication center as meeting the
claimed wireless communication network. Id. at 28.
the relevant portions of the supporting Michalson First Declaration. Patent
Owner does not address Petitioners contentions regarding claims 2 and 14.
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See generally Prelim. Resp. Based on the current record at this stage of the
proceeding, we determine Petitioner has shown a reasonable likelihood of
prevailing with respect to its obviousness challenges to claims 2 and 14 over
Maekawa and Dickson.
information includes descriptions of the products or services. Claim 15
further recites and the display element is further configured to show the
information. Petitioners analysis, as supported by the Michalson First
Declaration, demonstrates where Petitioner contends each element of
dependent claims 3 and 15 is taught or suggested by Maekawa and Dickson.
Pet. 30, 4950 (citing Ex. 1007 61, 83). In particular, Petitioner identifies
Dicksons menu as meeting the claimed description of products. Id.
descriptions comprise a menu.5 Petitioners analysis, as supported by the
Michalson First Declaration, demonstrates where Petitioner contends each
5
Dependent claim 4 recites comprises while dependent claim 16 recites
comprise.
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Patent 8,538,498 B2
element of dependent claims 4 and 16 is taught or suggested by Maekawa

and Dickson. Pet. 31, 50 (citing Ex. 1007 62, 84). In particular,
Petitioner identifies Dicksons menu as meeting the claimed menu. Id.
Dependent claim 7 recites, in relevant part, showing, on the display
element, data concerning the provider in response to a user request for the
data. Dependent claim 19 recites, in relevant part, wherein the interface if
[sic] further configured to receive a user request to obtain data concerning
the provider. Petitioners analysis, as supported by the Michalson First
dependent claims 7 and 19 is taught or suggested by Maekawa and Dickson.
Pet. 3133, 5051 (citing Ex. 1007 63, 85). In particular, Petitioner
identifies Maekawas display of business data (e.g., operating hours, phone
number, and address) and directions to the business upon user request as
meeting these limitations. Id.
26
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Patent 8,538,498 B2

Dependent claims 8 and 20 recite, in relevant part, wherein the data
includes directions for reaching the location of the provider. Petitioners
analysis, as supported by the Michalson First Declaration, demonstrates
where Petitioner contends each element of dependent claims 8 and 20 is
taught or suggested by Maekawa and Dickson. Pet. 3334, 51 (citing Ex.
1007 64, 86). In particular, Petitioner identifies Maekawas directions as
meeting the claimed directions. Id.
Dependent claims 9 and 21 recite, in relevant part, wherein the data
includes connection information for communicating with the provider.
demonstrates where Petitioner contends each element of dependent claims 9
and 21 is taught or suggested by Maekawa and Dickson. Pet. 3435, 51
(citing Ex. 1007 65, 87). In particular, Petitioner identifies Maekawas
telephone number as the claimed information for communicating. Id.
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Patent 8,538,498 B2

provider includes a restaurant. Petitioners analysis, as supported by the
Petitioner identifies Maekawas family restaurant as meeting the claimed
restaurant. Id.
prevailing with respect to its obviousness challenges to claims 10 and 12
over Maekawa and Dickson.
selectable option is provided on the display element. Petitioners analysis,
as supported by the Michalson First Declaration, demonstrates where
28
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Patent 8,538,498 B2
Petitioner contends each element of dependent claims 11 and 23 is taught or

suggested by Maekawa and Dickson. Pet. 3536, 52 (citing Ex. 1007 67,
89). In particular, Petitioner identifies Maekawa and Dicksons display of a
selectable option to order as meeting the claimed selectable option. Id.
Dependent claim 12 recites, in relevant part, wherein the location of
the vehicle is sensed using a global positioning system (GPS) technique.
Dependent claim 24 recites, in relevant part, wherein the device
incorporates GPS technology. Petitioners analysis, as supported by the
Petitioner identifies Maekawas present position detecting unit 2 including a
GPS receiver as meeting the claimed use of GPS. Id. at 35.
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Patent 8,538,498 B2

E. Asserted Obviousness of Claims 5, 6, 17, and 18 over

Maekawa, Dickson, and Spiegel
1. Dependent Claims 5 and 17
descriptions of the products or services previously ordered are indicated in a
selected status. Petitioners analysis, as supported by the Michalson First
dependent claims 5 and 17 is taught or suggested by Maekawa, Dickson, and
Spiegel. Pet. 5356 (citing Ex. 1007 4344, 9297, 102). In particular,
Petitioner identifies Spiegels listing of past ordered items in past order box
202 as meeting the claimed indication of the descriptions of products or
services previously ordered in a selected status. Id. at 54. Petitioner
contends one of ordinary skill in the art would have been motivated to
modify the Maekawa-Dickson combination with this teaching of Spiegel in
order to improve user efficiency, specifically by allowing a user to reselect a
past order. Id. (citing Ex. 1007 95).
See generally Prelim. Resp. We credit Petitioners evidence, including the
testimony of Dr. Michalson, in the absence of evidence to the contrary in the
record before us. Further, we observe Spiegel describes past order box 202
as displaying status information for past orders. Ex. 1006, 6:2728.
Given this disclosure, we agree with Petitioner that Spiegels listing of a past
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Patent 8,538,498 B2
orders in past order box 202 teaches or suggests the claimed indication of the
descriptions of products or services previously ordered in a select status,
which we construed above as a representation reflecting a previous order of
a product or service. See supra Section III.B.1. We are persuaded,
therefore, that Petitioner has demonstrated in the record before us a
reasonable likelihood of prevailing on its challenge to claims 5 and 17.
information includes promotional information. Petitioners analysis, as
supported by the Michalson First Declaration, demonstrates where Petitioner
contends each element of dependent claims 6 and 18 is taught or suggested
by Maekawa, Dickson, and Spiegel. Pet. 5659 (citing Ex. 1007 98101,
103). In particular, Petitioner identifies Dicksons menu as meeting the
claimed promotional information. Id. at 56. Neither party addresses directly
the scope of term promotional information in the record before us.
Petitioner further does not identify evidence, either intrinsic or extrinsic to
the 498 patent, that would suggest a menu such as that disclosed in Dickson
would constitute promotional information. See id. Therefore, we are not
persuaded that Dicksons menu meets this claim limitation under its broadest
reasonable interpretation.
Alternatively, Petitioner identifies Spiegels teaching to customize
recommendations for items to purchase based on the purchasing or, more
generally, access patterns of a user as meeting the claimed inclusion of
promotional information. Id. at 57 (citing Ex. 1006, 2:4649; Ex. 1007
99, 103). Petitioner further identifies Spiegels teaching to track the
electronic commerce activity of the user . . . and customize advertising and
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Patent 8,538,498 B2
recommendations for the user. Id. (citing Ex. 1006, 3:3640, 4:2327;
Ex. 1007 99, 103). Patent Owner does not address Petitioners
contention. See generally Prelim. Resp. At this stage of the proceeding and
based on the record before us, we agree with Petitioner that Spiegels
description of displaying to the user particular items for purchase based on
the users purchasing and access patterns (Ex. 1006, 2:4652) and Spiegels
description of providing customized advertising to the user based on the
users electronic commerce activity (id. at 3:3640, 4:2327) teaches or at
least suggests the claimed promotional information.
Having reviewed the information provided by Petitioner, including the
relevant portions of the supporting Michalson First Declaration, and based
on the current record at this stage of the proceeding, we determine Petitioner
has shown a reasonable likelihood of prevailing with respect to its
obviousness challenge to claims 6 and 18. We direct the parties to address
the scope of the term promotional information at trial. In so doing, the
parties shall proffer all evidence in support of their arguments, including
citations to the Specification and file history of the 498 patent.
IV. SUMMARY
We determine that Petitioner has demonstrated a reasonable likelihood
of prevailing on its challenges. At this stage, we have not made a final
determination as to the patentability of any of the Challenged Claims.
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Patent 8,538,498 B2
V. ORDER
It is, therefore,
ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review of the 498 patent is hereby instituted on the following grounds:
A. Obviousness of claims 14, 716, and 1924 over Maekawa and
Dickson;
B. Obviousness of claims 5, 6, 17, and 18 over Maekawa, Dickson,
and Spiegel.
FURTHER ORDERED that review based on any other proposed
grounds of unpatentability is not authorized; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial
commencing on the entry date of this Decision.
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Patent 8,538,498 B2
FOR PETITIONER:
Ashraf A. Fawzy
Jonathan Stroud
UNIFIED PATENTS INC.
afawzy@unifiedpatents.com
jonathan@unifiedpatents.com
PATENT OWNER:
Glen L. Nuttall
Daniel M. Cavanagh
KLEIN, ONEILL & SINGH, LLP
gnuttall@koslaw.com
dcavanagh@koslaw.com
34

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Unified Patents Inc. v. Silver State Intellectual Technologies, IPR2017-01198, (PTAB Sept. 28, 2017)

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.,

SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,

Before JOHN F. HORVATH, JOHN A. HUDALLA, and

JIVANI, Administrative Patent Judge.

Figure 6 depicts the main directory screen displayed to a user,

Figure 7 depicts icons representing the locations of restaurants around

Figure 9 depicts the further information displayed when a user selects

Figure 10 depicts the restaurant menu page that enumerates types of

[1c.] showing, on the display element, information

13. A system for use in a vehicle, comprising:

C. Evidence Relied Upon

2. Dickson et al., U.S. Patent No. 6,574,603 (Dickson) (Ex. 1005);

D. Proposed Grounds of Unpatentability

Figure 5A of Maekawa depicts a road map displayed on a touch

Figure 5C of Maekawa depicts facility selecting switches such as

Figure 6A of Maekawa depicts landmarks of a facility type around the

Figure 13B depicts display of the selected landmark at the center of

Figure 2 depicts display of shopping cart information, including a

the broadest reasonable construction standard, claim terms generally are

plurality of specific products or services which may be purchased. Claim 3

2. Means Plus Function Limitations

C. Discretion to Institute Inter Partes Review under 35 U.S.C.

Prelim. Resp. 9. We are not persuaded by Patent Owners argument.

Institution of inter partes review is discretionary. See 35 U.S.C.

D. Asserted Obviousness of Claims 14, 716, and 1924 over

that the combination would have provided a two-fold advantage of

demonstrates where Petitioner contends each element of claim 13 is taught

element of dependent claims 4 and 16 is taught or suggested by Maekawa

proceeding, we determine Petitioner has shown a reasonable likelihood of

We have reviewed the information provided by Petitioner, including

Petitioner contends each element of dependent claims 11 and 23 is taught or

prevailing with respect to its obviousness challenges to claims 12 and 24

E. Asserted Obviousness of Claims 5, 6, 17, and 18 over

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