Uber Technologies Inc v. Fall Line Patents LLC

1. Case Identification

• Case #: IPR2018-00535
• Patent #: 9,454,748
• Filed: January 25, 2018
• Petitioner(s): Uber Technologies, Inc. and Choice Hotels International, Inc.
• Patent Owner(s): Fall Line Patents, LLC.
• Challenged Claims: 1, 2, 5, 9, 11, 13, and 15-22

2. Patent Overview

• Title: Method and System for Management of Data
• Brief Description: The ’748 patent describes a method for distributing and managing electronic forms on mobile devices. The system uses computerized questionnaires with "tokens" that are sent to a remote, handheld computing device, allowing a user to complete the form offline for later transmission to a server.

3. Grounds for Unpatentability

Ground 1: Claims 1, 9, 11, 13, and 15-22 are obvious over Barbosa in view of Bandera.

• Prior Art Relied Upon: Barbosa (Patent 6,961,586) and Bandera (Patent 6,332,127).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barbosa taught most limitations of the challenged claims. Barbosa disclosed methods for conducting field assessments using handheld data management devices with integrated GPS. The system involved downloading "templates" or "programs" (the claimed "questionnaire") from a server, executing them on the handheld device to collect user input, storing the data locally, and later transmitting it to a remote server for analysis. However, the key limitation of a questionnaire comprising "a plurality of device independent tokens" was not explicitly disclosed. Petitioner contended that a person of ordinary skill in the art (POSITA) would have understood Barbosa's disclosure of implementing its program in an object-oriented language like Java to inherently meet this limitation.
  • Motivation to Combine: To the extent Barbosa alone was deemed insufficient, Petitioner argued a POSITA would combine it with Bandera. Both references were in the same field of location-based services for mobile devices. Barbosa presented a system that would benefit from platform independence. Bandera explicitly taught that the Java programming language is "portable and architecturally neutral" and that its source code is compiled into a "machine-independent format" that can run on any machine with a Java Virtual Machine (JVM). A POSITA would therefore have been motivated to implement Barbosa's system using the device-independent techniques taught by Bandera to solve the known problem of creating applications for diverse mobile hardware and operating systems.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as implementing a known application (Barbosa) using a well-known, platform-independent language (Java, as taught by Bandera) was a predictable and common practice.

Ground 2: Claims 1, 2, 5, 9, 11, 13, and 15-22 are obvious over Hancock in view of Bandera.

• Prior Art Relied Upon: Hancock (Patent 6,202,023) and Bandera (Patent 6,332,127).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hancock disclosed a method for providing services over a network using its "Go2 Application" on a portable computing device. This device had an embedded GPS receiver ("ALI device") and could download the Go2 Application from a server. The application functioned as the claimed "questionnaire," prompting the user for input (e.g., location, category of interest) through a series of questions with branching logic. Hancock taught executing the application after download, storing user responses in a local data packet, and transmitting the packet to a server, which would then return a URL with relevant results.
  • Motivation to Combine: While Hancock described the functionality of its Go2 Application, it was silent on the specific programming language used for implementation. Petitioner contended it would have been an obvious design choice for a POSITA to implement Hancock's application using Java, as taught by Bandera, to achieve device independence. The motivation was to solve the well-known market need for applications that could run on a wide variety of mobile devices without being rewritten for each one.
  • Expectation of Success: A POSITA would have expected success in combining these references, as it involved applying a standard, known programming solution (Java for platform independence) to a known type of application (Hancock's location-based service).
  • Key Aspects: Petitioner's argument relied heavily on the idea that implementing Hancock's system using Java was an obvious design choice to achieve device independence, which in turn would satisfy the "device independent tokens" limitation.

• Additional Grounds: Petitioner asserted additional obviousness challenges against various claims based on Barbosa alone and Hancock alone, arguing the references inherently taught or rendered obvious all claim limitations without the need for a secondary reference.

4. Key Claim Construction Positions

• "GPS integral thereto": Petitioner proposed this term, found in claims 9, 19, and 21, should be construed as "GPS receiver integral thereto." Petitioner argued a POSITA would understand that the entire Global Positioning System, including satellites, could not be integral to a handheld device, and that the context referred to an integrated GPS receiver, which was a common feature in the art.
• "token": Petitioner argued for the construction "a distinguishable unit of a program, such as an index, an instruction, or a command that can represent something else such as a question, answer, or operation." This construction was previously adopted by the Board in an IPR for the parent patent. This broad construction allowed Petitioner to map the limitation to prior art that disclosed computer programs with instructions and branching logic, even if the word "token" was not used.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d) based on a previously filed IPR by a different party ("Unified IPR"). The arguments centered on the fact that this petition was brought by different real parties-in-interest (Uber and Choice Hotels), challenged eight additional claims not addressed in the Unified IPR, and relied on entirely different prior art references (Barbosa, Hancock, Bandera). Petitioner asserted that these differences meant the current petition was not redundant and denying it would unfairly deprive them of access to the inter partes review (IPR) process.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1, 2, 5, 9, 11, 13, and 15-22 of the ’748 patent as unpatentable.