PTAB

IPR2017-01264

Uber Technologies Inc v. X One Inc

Key Events

Petition

petition

Title: Tracking Proximity Of Services Provider To Services Consumer
Brief Description: The ’647 patent describes a system using software on wireless devices to allow a service requestor and a service provider to mutually track each other's location. The system enables the display of both parties' positions on a map, with updates to show movement, facilitating services like taxi dispatch.

Prior Art Relied Upon: Konishi (Japanese Application Publication No. 2002-352388).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Konishi disclosed all elements of the challenged claims. Konishi described a taxi dispatch system where a customer uses a GPS-enabled "mobile telephone set" (the first wireless device) to request a taxi. A central server identifies nearby vacant taxis, which are equipped with a "vehicle information terminal" (the second wireless device). The customer's phone then receives and displays a map showing both the customer's position and the real-time, updated position of the assigned taxi as it approaches. Petitioner asserted that when a customer selects a taxi and the reservation is accepted, a "use-specific group" is formed between the requestor and provider, and the subsequent real-time tracking on the customer's device meets the core limitations of independent claims 1, 22, and 28.
- Motivation to Combine (for §103 grounds): Not applicable, as this ground is based on a single reference. Petitioner contended that Konishi alone renders the claims obvious.
- Expectation of Success (for §103 grounds): Not applicable.

Prior Art Relied Upon: Konishi (Japanese Application Publication No. 2002-352388) and Rautila (Patent 6,714,797).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent Konishi did not explicitly disclose that its vehicle allocation service was a downloadable, non-native application invoked by a user, Rautila supplied this teaching. Rautila disclosed a system for users to download digital products, such as software and games, from an "electronic shop server" to an Internet-capable mobile phone. This addresses limitations in claims 1, 4, 22, 28, 31, and 40 related to invoking the method by "launching an application" and the application being "selectively downloaded."
- Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA), seeking to implement the system taught by Konishi, would have been motivated to look to references like Rautila to learn how software is provided and installed on mobile phones, as Konishi was silent on this point. The combination would simply use a known method of software distribution (Rautila) to implement a known service (Konishi).
- Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining the references, as it involved applying a conventional software delivery method to a software-based system, which was a predictable and well-understood integration at the time.

Prior Art Relied Upon: Mitsuoka (Japanese Application Publication No. 2003-168190).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Mitsuoka, like Konishi, disclosed a complete taxi dispatch system that rendered the claims obvious. Mitsuoka described a user with a "portable terminal" (first wireless device) requesting a taxi. An Application Service Provider (ASP) server sends the user a map showing their location and available taxis. After the user selects a taxi (second wireless device), the ASP server successively acquires location data from the selected taxi and transmits updated map information to the user's terminal in real-time. Petitioner argued this system teaches tracking a service provider, forming a use-specific group upon selection, and displaying updated positions on a map, meeting the limitations of the independent claims.
- Motivation to Combine (for §103 grounds): Not applicable, as this ground is based on a single reference.
- Expectation of Success (for §103 grounds): Not applicable.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Konishi or Mitsuoka with Adamczyk (Patent 6,925,381) for adding voice communication, Makoto (Japanese Application 2002-199433) for adding timeout functions, and Knotts (Patent 6,658,260) for enabling operation across different cellular carriers.

"responsive to launching an application" / "in association with an application launched": Petitioner proposed that under the broadest reasonable interpretation, these terms should mean "in association with the running of the application." This construction does not require the claimed method steps to be automatically triggered immediately upon launch but can occur after a user interacts with the running application's menu options.
"use-specific group": Petitioner argued this term, added during prosecution to overcome prior art, should be construed as "a group including a service requestor and a service provider." This construction is based on the applicant's own arguments distinguishing prior art that did not disclose forming a group with this specific relationship.

Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-11, 13, 22-25, 27-28, 31-37, 39-42, and 45 of the ’647 patent as unpatentable.