Finite Methods as a Ground for Obviousness

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

Before Prost, Dyk, and Wallach.  Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Because a mapping technique must be performed on either a server or a terminal, using a server-side technique disclosed in one piece of prior art was a “predictable variation” of the terminal-side technique disclosed in another piece of prior art.  

Uber petitioned for IPR of X One’s patent.  The claims generally related to a remote server creating a map, populating it with group-members’ locations, and then transmitting the map to a user’s device.  The PTAB considered two pieces of prior art: Okubo and Konishi.  Okubo disclosed creating a terminal-side method wherein the map is created on a user’s device and then populated with group members’ locations.  Konishi disclosed a server-side method of mapping vehicles.  The Board held the patent was not obvious because Konishi’s server-side plotting would be a “wholesale modification to Okubo.”  Uber appealed.

The Federal Circuit reversed, stating that Okubo and Konishi demonstrate there are two finite and predictable methods of map-plotting in the field of location-sharing: server-side and terminal-side.  Because a person of ordinary skill in the art would have to choose between one of those two methods, using the server-side method disclosed in Konishi was a “predictable variation” of Okubo.

Editor: Paul Stewart