PTAB

IPR2020-01231

Uber Technologies Inc v. Quartz Auto Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Location Dependent Data Processing
  • Brief Description: The ’004 patent discloses a system and method for location-dependent data processing using a mobile device (like a PDA) with a GPS locator. The system allows for the future execution of tasks linked to a user's arrival at or near a geographic location, without specifying an exact time or precise destination beforehand.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lotvin and Hose - Claims 1-8, 11-18, and 23-29 are obvious over Lotvin in view of Hose.

  • Prior Art Relied Upon: Lotvin (Patent 7,062,452) and Hose (International Publication No. WO 2000/004730).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lotvin taught the core limitations of the challenged claims. Lotvin disclosed an "Internet-accessible entity" called a "personal page" that allows a user to specify activities (e.g., purchasing goods, requesting services) to be executed based on their current geographical location, which is determined by a GPS-equipped wireless device. The execution could be triggered when the user entered a predefined proximity of an indeterminate destination, such as the "location of closest supermarket" or an "authorized repair shop." Petitioner asserted this personal page software, which could be stored on a server, constituted the claimed "executable software code" that is executed when the proximity condition is met. However, Petitioner contended Lotvin did not explicitly disclose transmitting a specific street "address." Hose was alleged to cure this deficiency by teaching a location-based service where a user's device receives the precise address of a nearby point of interest (e.g., "The nearest ATM is located at [address]").
    • Motivation to Combine (for §103 grounds): A POSITA would combine Hose's teaching of transmitting a precise address with Lotvin's location-triggered system to improve its functionality. Providing a human-readable street address would make the destination location more precise and easily identifiable for the user compared to relying solely on GPS data, which has limited resolution. This modification was presented as a predictable and straightforward improvement to enhance the user experience.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in this combination, as both references operated in the known field of location-based services, and integrating an address-delivery feature into a location-aware notification system was a simple application of known technologies.

Ground 2: Obviousness over Lotvin, Hose, and De Vries - Claims 22 and 33 are obvious over Lotvin in view of Hose and De Vries.

  • Prior Art Relied Upon: Lotvin (Patent 7,062,452), Hose (WO 2000/004730), and De Vries (Patent 6,968,179).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Lotvin and Hose from Ground 1 and added De Vries to address the limitations of claims 22 and 33, which recite a proximity range based on the location of multiple "group members." Petitioner argued that the primary combination of Lotvin and Hose taught a system for executing tasks based on an individual user's proximity to a location. De Vries was introduced because it explicitly taught proximity-based information services for groups, disclosing a system that provides notifications to a user when a "sufficient number of friends are clustered in a particular place" (e.g., more than four friends at a basketball court). This teaching directly corresponded to the "group members" limitation in the claims.
    • Motivation to Combine (for §103 grounds): A POSITA would combine De Vries with the Lotvin/Hose system to expand its functionality from individual-based triggers to group-based triggers. This enhancement would facilitate social interactions and in-person meetings, a benefit explicitly described in De Vries. Improving Lotvin's system to trigger notifications, reservations, or other activities when a group of friends arrives at a restaurant or park was argued to be a desirable and obvious extension to make the system more socially useful.
    • Expectation of Success (for §103 grounds): Success was predictable because implementing group proximity logic was a known concept in the art, as shown by De Vries, and applying it to trigger the automated tasks already taught by Lotvin would be a straightforward integration of known elements for a predictable result.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a), considering the Fintiv factors, was not appropriate. The petition asserted that the parallel district court litigation was in its early stages, with no trial date set and a likely trial not occurring until January 2022 or later, well after the statutory deadline for a Final Written Decision. Petitioner also stated it filed the IPR petition promptly after receiving the patent owner's infringement contentions. Crucially, Petitioner stipulated that if the IPR is instituted, it would not pursue the same invalidity grounds in the district court litigation, thereby avoiding duplicative efforts and conserving judicial resources.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8, 11-18, 22-29, and 33 of the ’004 patent as unpatentable.