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Uber Techs., Inc. v. X One, Inc.

United States Court of Appeals for the Federal Circuit

May 5, 2020, Decided

2019-1164

Opinion

 [*1335]  Prost, Chief Judge.

Uber Technologies, Inc. ("Uber") appeals from a final written decision of the Patent Trial and Appeal Board ("Board") finding claims 1, 2, 5, 6, 9, and 19 of U.S. Patent No. 8,798,593 ("the '593 patent") not unpatentable as obvious. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255, Paper No. 41 (PTAB Oct. 12, 2018) ("Final Written Decision"). The Board's conclusion was based on its determination that the asserted prior art does not render obvious the limitation "software . . . to transmit the map with plotted locations to the first individual." Because the Board's decision incorrectly applied the relevant legal principles, we reverse the Board's [**2]  non-obviousness determination as to this limitation, and remand for the Board to analyze the remaining limitations of the challenged claims in the first instance.

X One, Inc. ("X One") owns the '593 patent, which is generally directed towards exchanging location information between mobile devices. The '593 patent describes a "Buddy Watch application" that allows a mobile device user to add other mobile device users to her "Buddy List." '593 patent Abstract, col. 2 ll. 51-66. The user can share her location with her Buddies through the application and then press a "Mapit" button to see the locations of all of her buddies displayed on a map. Id. at col. 6 ll. 29-38, col. 9 ll. 39-57. Alternatively, a user may set up "instant buddies" on a temporary basis. Id. at col. 1 ll. 63-67; see id. at col. 3 ll. 20-25. For example, a stranded motorist may wish to be instant buddies with the driver of a tow truck, allowing each phone to "show the location of the other phone on its moving map. This allows the tow truck driver to find the user tow truck customer and the user customer to know where the tow truck driver is." Id. at col. 15 ll. 26-38. The purported novelty of the '593 patent lies in this "two way position information sharing," [**3]  id. at col. 1 ll. 30-31, the creation of such location sharing "groups," id. at col. 1 ll. 62-63, and "temporary location sharing" that "automatically expires," id. at col. 1 ll. 63-66.

Claim 1, which is representative for the purposes of this appeal, recites:

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957 F.3d 1334 *; 2020 U.S. App. LEXIS 14253 **; 2020 U.S.P.Q.2D (BNA) 10476

UBER TECHNOLOGIES, INC., Appellant v. X ONE, INC., Appellee

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-01255.

Disposition: REVERSED AND REMANDED.

CORE TERMS

plotting, map, user, server-side, skill, terminal-side, mobile, predictable, software, patent, teachings, customer, phones, cellular, terminal, finite, discontinued, variations, session, solve

Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Nonobviousness, Evidence, Fact & Law Issues, Elements & Tests, Elements & Tests, Prior Art