PTAB

IPR2017-01255

Uber Technologies Inc v. X One Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Location Sharing And Tracking Using Mobile Phones Or Other Wireless Devices
  • Brief Description: The ’593 patent discloses a server-based system using software installed on GPS-enabled mobile devices. The system allows a user to create a "buddy list" and, upon request, obtain a map plotting the respective locations of multiple users on that list.

3. Grounds for Unpatentability

Ground 1: Obviousness over Okubo and Konishi - Claims 1, 2, 5, 9, and 19 are obvious over Okubo in view of Konishi.

  • Prior Art Relied Upon: Okubo (Japanese Application # 2002-10321) and Konishi (Japanese Application # 2002-352388).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Okubo disclosed the core of the invention: a two-way position information communication system with a server ("position information storage station") and database that stores location information for registered group members. Okubo taught that a user's mobile terminal could request and receive a map displaying its own location alongside the last known locations of other group members. Petitioner asserted that Konishi, which described a taxi dispatch system, provided the necessary details for plotting and transmitting maps with multiple locations to a user's mobile device. Specifically, Konishi taught transmitting a map with the customer's position and the real-time positions of vacant taxis, which would have been an obvious way to implement the map display functionality described more generally in Okubo.
    • Motivation to Combine: A POSITA would combine Okubo and Konishi because both references were in the same field of location sharing for mobile phones and addressed the same problem of enabling a user to view and track the locations of others. Combining Konishi's specific map plotting and transmission methods with Okubo's group tracking system was argued to be a straightforward path to creating a more robust and functional system.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the known mapping features of Konishi with the group tracking system of Okubo involved applying conventional techniques to yield predictable results.

Ground 2: Obviousness over Makoto - Claims 1, 2, 5, 9, and 19 are obvious over Makoto.

  • Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Makoto, as a single reference, taught all limitations of the challenged claims. Makoto disclosed a system for mapping the location of group members on a mobile phone, including a "position information service providing device" (server) that stores group and location data. In Makoto, a user could register a group of mobile devices, and the server would store their location information associated with a group ID. Upon a "location information request" from a group member, the server transmitted the GPS information for other group members, which the mobile device then used to display a map plotting their locations. Makoter also explicitly disclosed changing the map via zooming and using different default map resolutions depending on whether one or multiple users were being displayed.

Ground 3: Obviousness over Okubo, Konishi, and Hartz - Claims 1, 2, 5, 6, and 9 are obvious over Okubo and Konishi in view of Hartz.

  • Prior Art Relied Upon: Okubo (Japanese Application # 2002-10321), Konishi (Japanese Application # 2002-352388), and Hartz (Patent 6,636,803).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Okubo and Konishi to specifically address claim 6, which required obtaining a map "from a server of a third party map provider." Petitioner argued that Hartz explicitly disclosed using web-accessible, third-party map generation programs like MapQuest to generate maps for display on mobile devices.
    • Motivation to Combine: A POSITA implementing the group tracking system of Okubo and Konishi would naturally look to known third-party mapping services for map data, as this was a common and obvious design choice at the time. Hartz demonstrated the ready availability and use of such services (e.g., MapQuest), making its integration a predictable step to source map imagery for the system.
    • Expectation of Success: Integrating a third-party mapping service as taught by Hartz into the Okubo/Konishi system would have been a routine task for a POSITA with a clear expectation of success.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 6 based on Makoto in view of Hartz, relying on similar reasoning for incorporating a third-party map provider.

4. Key Claim Construction Positions

  • "default geographic resolution" (claim 1): Petitioner proposed this term should be construed as "initial map resolution." This construction was argued to be consistent with the claim language, which required both obtaining a map with a "default" resolution and permitting the user to "change [the] geography." Petitioner asserted the "default" is simply the initial state before user modification, a feature disclosed by prior art like Okubo which showed a map with an initial scale that could be changed by the user.
  • "account" (claims 1 and 19): As the specification did not define "account," Petitioner proposed it be construed as "an arrangement to enable data sharing." Petitioner argued that this construction fit the patent's context of a "buddy list" and mapped directly to the prior art's disclosure of a registered "affiliated group" (Okubo) or a "group ID" (Makoto) used to associate and share location data among multiple users.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should institute review on all presented grounds and not exercise its discretion to select only certain grounds. The basis for this argument was that the petition was concise, asserting only four grounds based on a small set of four prior art references, and that Petitioner would be prejudiced if precluded from asserting its best challenge.

6. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and issue a final written decision canceling claims 1, 2, 5, 6, 9, and 19 of the ’593 patent as unpatentable.