Introduction

On May 5, 2020, the United States Court of Appeals for the Federal Circuit made decision in Uber Technologies, Inc. v. X One, Inc. Uber Technologies, Inc. (“Uber”) filed a petition to initiate inter partes review against U.S. Patent No. 8,798,593 (“the ‘593 patent”) owned by X One, Inc. (“X One”), asserting that claims 1, 2, 5, 9, and 19 (“the claims”) were unpatentable as obvious. Uber posited that the claims were obvious over Japanese Patent Application Publication No. 2002-10321 (“Okubo”) in view of Japanese Patent Application Publication No. 2002-352388 (“Konishi”), in further view of U.S. Patent No. 6,636,803 (“Hartz”). The ‘593 patent generally relates to exchanging location information between mobile devices, allowing users to share their locations with other users. The cited prior art also generally relates to the transmission of location information between mobile devices, including plotting of such locations on a map. Upon review in October 2019, the Patent Trial and Appeal Board (“Board”) found that Uber failed to demonstrate that the independent claim 1 was unpatentable as obvious, and thus decided that all challenged claims were not unpatentable. Particularly, the Board concluded that the combination of references failed to make obvious “software… to transmit the map with plotted locations to the first individual.” Uber timely appealed the Board’s decision to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”). The Federal Circuit reverses the Board’s determination and remands to the Board for further evaluation.

Decision

Naturally, the Federal Circuit performed an analysis of all the Board’s final determinations, as described below:

1.     “Obvious to Try” Rationale. In the appeal before the Federal Circuit, Uber argues that the Board’s conclusions were made in legal error, that the Board misapplied the law of obviousness under KSR. Under KSR the Supreme Court has laid out an expansive approach to the question of obviousness, particularly the discussion of design choices and predictable variations. As stated, “If a person of ordinary skill can implement a predictable variation, 35 U.S.C. 103 likely bars its patentability. Moreover, when there is a design need … to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” As explained by Uber, the ‘593 patent, Okubo, and Konishi all attempt to solve the same problem of “helping one user view and track the location of other users.” The record reflects only two possible methods of sharing locations and displaying locations on a map: server-side plotting and terminal-side plotting. Konishi expressly discloses server-side plotting and Okubo discloses terminal-side plotting, which together represent a finite number of identified, predictable solutions.

The specification of the ‘593 patent does not specify the type of plotting, and instead states that any existing platforms and infrastructure may be utilized, suggesting that a person of ordinary skill in the art would be more than capable of selecting between the two known methods. As such, the Federal Circuit holds that the Board erred in its determination that a person of ordinary skill would not have been motivated to combine Okubo with Konishi. As the Federal Circuit states, the combination is obvious because it would have been a “predictable variation” of Okubo’s system, using a technique that was known at the time.

The Federal Circuit is also not persuaded by X One’s technical argument attempting to distinguish that Okubo uses a GPS-based system and Konishi uses a cellular network-based system. Ultimately, it is not necessary that the prior art be physically combinable to render the claimed invention obvious. Rather, the question is “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”

2.     Motivation to Combine. In the appeal before the Federal Circuit, Uber argues that the Board committed legal error by refusing to consider Okubo in combination with the other prior art references on the basis that Okubo was “successful” in and of itself. Because the Federal Circuit concluded that the limitation in question is in fact obvious (as discussed above), the Federal Circuit shall not consider Uber’s alternative argument.

For the reasons above, the Federal Circuit reverses the Board’s determination pertaining to the obviousness of the limitation “software … to transmit the map with plotted locations to the first individual” in view of Okubo and Konishi. The Federal Circuit therefore remands for the Board to evaluate the remaining limitations of the claims challenged in Uber’s petition.  

Conclusion

It is important to realize and understand the implications of the decision made in Uber Technologies, Inc. v. X One, Inc. As evidenced by the outcome, there are numerous considerations to be made when dealing with the question of obviousness. Particularly, and of notable interest, the “obvious to try” rationale, as illustrated by the above case, can be difficult to overcome. X One’s ‘593 patent relied on a specific software limitation to distinguish over the prior art, as illustrated by the Board’s original determination. However, on appeal, the Federal Circuit reversed the Board’s findings and determined that the specific software limitation was obvious, particularly because there are two known methods in the art that could satisfy that limitation. Given that the two known methods represent a finite number of identified, predictable solutions, the Federal Circuit determined that the software limitation was obvious, since a person of ordinary skill in the art would have been motivated to try one of the two solutions. As shown by X One’s response, it is important, when arguing in defense of a claim limitation subject to such a rejection, to not simply present an argument on the ability to physically modify the reference. Prior art references need not physically be combinable for the combined teachings to make a claimed invention obvious.

Full Uber Technologies, Inc. v. X One, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1164.Opinion.5-5-2020_1582497.pdf

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