IP Law Daily Uber’s apps did not infringe patents for software that helps friends locate one another on a map
Friday, February 14, 2020

Uber’s apps did not infringe patents for software that helps friends locate one another on a map

By Robert B. Barnett Jr., J.D.

Uber’s En Route view did not violate mapping patents because Uber’s apps use processes different from those protected by the patents.

In a patent infringement suit by X One, Inc, the developer of buddy-finder mapping software, against Uber Technologies, Inc., the first six of 34 infringement claims were dismissed for noninfringement because (1) X One’s patent covered a process using the same map three times but Uber uses different maps in its ride-hailing and food-delivery apps and (2) X One’s patent does not contemplate users inputting information but Uber’s apps require it before the final map is produced, the federal district court in San Jose, California has ruled. In reaching its decision, the court ruled that X One’s statements made to the Patent Office in a separate proceeding could be used in this proceeding to narrow the court’s interpretation of X One’s patent claim (X One, Inc. v. Uber Technologies, Inc., February 11, 2020, Koh, L.).

Background. X One has at least two patents on a system for exchanging GPS or other position data between wireless devices (the ‘593 patent and the ‘647 patent). Using this technology, software-enabled phones or devices are able to mutually track positions. Thus, a friend makes a request for the location of a designated set of friends, who is then presented with a map showing their locations, while the friends are also presented with a map showing the requester’s location. X One in 2016 filed suit against Uber, asserting that its Uber Rider and Uber Eats apps infringed six claims under patent ‘593 and 28 claims under patent ‘647. Pursuant to the court’s claim-narrowing order. X One chose to go first with six claims, one under ‘593 and five under ‘647. While the case was pending, Uber filed a petition for InterPartes Review of the patents, and the court stayed the proceedings to allow X One to return to the Patent Office to justify the patents’ legitimacy, which it did successfully. After the stay was removed and discovery undertaken, Uber filed a motion to dismiss the six claims under both noninfringement and invalidity theories.

Infringement of ‘593. Under the Uber Eats app (both apps operate similarly), the user taps on the icon to open it. When the app opens, it displays a map of the user’s current location, with the surrounding geographic area, and the location of nearby drivers. The first map, which is called the Eyeball view, is obtained from a third party. The user then inputs a destination, which prompts the user to select the type of product desired (for example, Uber X). The user is then prompted to confirm the pickup at the current location. At his point, Uber matches the user with a driver and produces an En Route map, which shows the driver’s progress to the pickup point. It is the production of this En Route map that X One alleges infringes its buddy-finding technology. The crucial issue for purposes of whether the ‘593 patent was infringed was its description that it covered a process "to obtain a map," "to plot...on the map," and "to transmit the map with plotted lines." The question for the court was: Did "map" in ‘593 refer to the same map or to multiple maps? The court agreed with Uber that the terms, as used, implied that it was the same map. A key construction point was that the first reference was to "a map," while the second two references were to "the map." That implies, the court concluded, that the patent was referring to the same map. As a result, the ‘593 patent contemplates that the obtaining, plotting, and transmitting occur to the same map. Uber, however, uses different maps. X One, therefore, failed to identify a single map that would cause Uber’s mapping to violate ‘593. The court thus concluded that Uber as a matter of law did not infringe the ‘593 patent.

Prior statements. The ‘647 patent covered the map and other claimed functions "invoked responsive to launching an application" and "in association with an application launched." In previous hearings, the court opted for X One’s interpretation of those phrases as broadly requiring that they happen in response to launching. In the proceeding before the Patent Office involving the ‘647 patent, however, which occurred after the court’s construction of the terms, X One made statements that gave the patent a narrower interpretation. It disavowed the idea that "launching" required any user input to trigger the claimed method. In other word, "launching" meant only opening the app. A dispute arose about whether the court could consider those comments to further narrow the construction of the patent. Ultimately, the court concluded that it had the right to consider those statements. As a result, the court altered its interpretation of what the ‘647 patent covered, in line with X One’s statements to the Patent Office.

Infringement of ‘647. The question before the court, under patent ‘647, was whether Uber Rider and Uber Eats invoked the En Route view upon launch. The court agreed with Uber that the requisite relationship between the En Route view and "launching" was missing. For one thing, Uber users can open the app without engaging En Route at all. For example, they can open the app to change personal information, switch credit cards, or view a past charge, all without opening the En Route view. For another, the En Route view can be reached only after the user inputs data, which X One had told the Patent Office was not part of what it meant by launching. As a result, the court granted Uber’s motion for summary judgment on patent ‘647 for noninfringement. The court went on to say, however, that even if it had not used X One’s statements to narrow the scope of the claim, Uber would still have prevailed, and largely for the same reasons. The court would have given "launching" its general meaning to require a relationship between a launch and the En Roure view. Users can use the app without ever engaging the En Route view. The fact that Uber assigns a session ID every time a user launches the application was not determinative. The session ID is assigned even if the user never sees the En Route view.

Because X One failed to raise any genuine dispute of material fact on either patent, the court granted Uber’s motion for summary judgment on noninfringement for all six patent infringement claims. The court also denied Uber’s motion for summary judgment on invalidity.

This case is No. 5:16-cv-06050-LHK.

Attorneys: Jacob Adam Schroeder (Finnegan, Henderson, Farabow, Garrett & Dunner LLP) for X One, Inc. Michael A. Jacobs (Morrison & Foerster LLP) for Uber Technologies, Inc.

Companies: X One, Inc.; Uber Technologies, Inc.

MainStory: TopStory Patent TechnologyInternet CaliforniaNews

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