Uber secures location-sharing patent win
The US Court of Appeals for the Federal Circuit handed victory to Uber Technologies yesterday, May 5, reversing a Patent Trial and Appeal Board (PTAB) decision on a location-sharing patent.
In a precedential decision, the Federal Circuit concluded that the PTAB had incorrectly applied the law in finding that a patent owned by X One was not unpatentable as obvious.
Mobile communications company X One, which owns US patent number 8,798,593, sued Uber in 2016, accusing the technology company of infringing its location-sharing technology.
The ‘593 patent describes a “Buddy Watch application” that allows a mobile device user to add other mobile device users to their “Buddy List” and to share their location with the Buddies.
In a bid to have the patent found obvious, Uber filed a petition for inter partes review, asserting that the certain claims were obvious in light of two Japanese unexamined patent applications (Okubo and Konishi), and US patent 6,636,803.
But, after granting the petition, the PTAB found that the prior art doesn’t render the limitation “software ... to transmit the map with plotted locations to the first individual” obvious.
Uber subsequently appealed against the decision and, yesterday, the Federal Circuit reversed the board’s non-obviousness determination before remanding the decision for another analysis by the PTAB.
According to the court, the board erred when it determined that a person of ordinary skill in the art wouldn’t have been motivated to combine two pieces of prior art.
“This combination does not represent ‘impermissible hindsight’ or ‘wholesale modification’, as the board found,” added Chief Judge Sharon Prost, on behalf of the court.
Uber’s expert explained that Okubo, Konishi, and the ‘593 patent all attempt to solve the same problem—“helping one user view and track the location of other users”.
The record reflects only two possible methods of achieving this: server-side plotting and terminal-side plotting. Konishi expressly discloses server-side plotting and Okubo discloses terminal-side plotting.
Prost added that the combination of Okubo with Konishi’s known server-side plotting is obvious because it would have been a “predictable variation” of Okubo’s system.
“Because terminal-side plotting (as described in Okubo) and server-side plotting (as described in Konishi and claimed in the ‘593 patent) would have been two of a finite number of known, predictable solutions at the time of the invention of the ‘593 patent, a person of ordinary skill would have faced a simple design choice between the two, and therefore would have been motivated to combine the teachings of Okubo and Konishi to achieve the limitation,” said the Federal Circuit.
The case was reversed and remanded.
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Uber secures location-sharing patent win
