By Brian Craig, J.D.
The PTAB erred in finding that certain patent claims for sharing GPS data are not obvious.
In a challenge brought by Uber Technologies, Inc., concerning the validity of a patent owned by X One, Inc. for exchanging GPS data between two devices, the U.S. Court of Appeals for the Federal Circuit has concluded that the Patent Trial and Appeal Board erred in its obviousness analysis. The Federal Circuit reversed the Board’s determination of nonobviousness as to the independent claims for the patent, which provides for two-way location sharing, and also vacated the Board’s determination as to the dependent claims. The Federal Circuit concluded that the Board erred in concluding that two prior art references do not teach or suggest the "responsive to" limitations in the patent (Uber Technologies, Inc. v. X One, Inc., March 3, 2020, Dyk, T.).
X One owns U.S. Patent No. 8,798,647 ("the ’647 patent") which claims to exchange GPS data between two devices. The patent’s background section characterizes the prior art as limited to "one way location sharing" by sharing a location of a first device to a second device, but not from the second device back to the first device. The patent specification explains that the claimed invention allows "mutual tracking and optional position mapping displays of members of groups and instant buddies." In particular, the patent discloses a "Buddy Watch application" and a "Mapit" method with which a user can track and map other users, and also share the user’s location with other users. Uber filed a petition for inter partes review with the Board, challenging certain claims of the ’647 patent as obvious. The Board concluded that Uber failed to show that patent claims are unpatentable as obvious. The Board found that neither of the two prior art references, Konishi nor Mitsuoka, discloses the "responsive to" limitations in the patent. Uber appealed to the Federal Circuit.
Claim construction. In first construing the claims, the Federal Circuit found that the Board’s claim construction is imprecise, and that some refinement of the Board’s construction was necessary in light of the specification. The court recognized that a claim construction that does not encompass a disclosed embodiment is rarely, if ever, correct. Here, the specification contemplates scenarios in which there are minutes or hours between the launch of Buddy Watch and the invocation of Map it. In light of this disclosure, the Board’s "during or near" requirement must allow for method invocation minutes or hours after application launch. A contrary interpretation would exclude embodiments of the invention, the court held. The "responsive to" limitations in certain claims are met if "the method is invoked" within minutes or hours of "launching an application."
Obviousness. Under this construction, the Federal Circuit held that the Board erred in its obviousness analysis when the Board concluded that the two prior art reference do not teach or suggest the "responsive to" limitations. Konishi, one of the prior art references, discloses the "responsive to" limitations. Because X One did not argue before the Board that any other limitations in the patent claims were not disclosed by Konishi, the Federal Circuit concluded that those claims would have been obvious in light of Konishi. Mitsuoka, a second prior art reference, is directed to a system in which users re-serve taxis and view taxi positions on a map. Because X One did not argue before the Board that any other limitations were not disclosed by Mitsuoka, the Federal Circuit also concluded that those claims would have been obvious in light of Mitsuoka.
The Federal Circuit agreed, however, with the Board that the "in association with" limitation is broader than the "responsive to" limitation. Mitsuoka’s request for a taxi occurs after the portable user terminal’s connection to the launch of the application. Konishi and Mitsuoka thus teach that the "in association with" limitation would have been obvious in light of Konishi and, independently, in light of Mitsuoka.
Therefore, the Federal Circuit reversed the Board’s determination of nonobviousness as to the ’647 patent’s independent claims and vacated the Board’s determination of non-obviousness as to the dependent claims. The Federal Circuit remanded the case to the Board to separately consider the patentability of the dependent claims.
This case is No. 2019-1165.
Attorneys: Lauren Ann Degnan (Fish & Richardson PC) for Uber Technologies, Inc. Doris Johnson Hines (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for X One, Inc.
Companies: Uber Technologies, Inc.; X One, Inc.
MainStory: TopStory Patent FedCirNews
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