Uber Technologies Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2021-01306
• Patent #: 10,341,838
• Filed: July 23, 2021
• Petitioner(s): Uber Technologies, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-26

2. Patent Overview

• Title: Communication Method and System
• Brief Description: The ’838 patent discloses a communication system where multiple cellular phones with GPS receivers report their position and status to a remote server. The server routes this data to all participants in the communication network, enabling them to exchange location and other information for display on a map.

3. Grounds for Unpatentability

Ground 1: Obviousness over Makoto, Konishi, Hamynen, and Scaer - Claims 1-12 and 14-25 are obvious over Makoto in view of Konishi, Hamynen, and Scaer.

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Hamynen (Application # 2005/0228860), and Scaer (Application # 2004/0243299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims.
    • Makoto was asserted to disclose the foundational system: a server-based method for mobile devices to join a group and share location information, which is then displayed on a map. This allegedly taught the core limitations of claim 1, such as a server obtaining data from mobile devices, permitting them to join a network, receiving location data, and sending participant data to other devices in the network.
    • Konishi was argued to supply the limitation of a mobile device "corresponding to a vehicle." Konishi discloses a communication network for sharing location data between wireless devices, including a "vehicle information terminal" mounted in a vehicle.
    • Hamynen was used to teach user input provided "via a display," such as a touchscreen. Hamynen discloses mobile terminals with touchscreens for interacting with a map, such as selecting an approximate location to initiate a search.
    • Scaer was asserted to teach receiving "entity-of-interest data," such as the location of a traffic accident. Scaer discloses a map-based system where users can input and share the location of incidents or other points of interest, distinct from their own device locations.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to improve upon the base system of Makoto.
    • A POSITA would combine Makoto with Konishi to apply Makoto's location-sharing system to vehicles, a known application for such technology, to improve vehicle-related services.
    • A POSITA would combine the result with Hamynen to incorporate a modern and more user-friendly touchscreen interface, which was a well-known and common feature for such devices.
    • A POSITA would further combine this system with Scaer to enhance its utility by allowing users to share not just their own locations but also the locations of other relevant points of interest (e.g., road conditions, accidents), providing more comprehensive information to all users in the group.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because combining these elements involved applying known technologies for their intended purposes. Integrating a vehicle-mounted device, a touchscreen interface, and a feature for sharing points of interest were all routine modifications that used predictable and well-understood programming principles.

Ground 2: Obviousness over Makoto, Konishi, Hamynen, Scaer, and Van Bosch - Claims 13 and 26 are obvious over the combination of Ground 1 in view of Van Bosch.

• Prior Art Relied Upon: Makoto, Konishi, Hamynen, Scaer, and Van Bosch (Application # 2005/0221876).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1. Claims 13 and 26 add the limitation that a "message" sent between devices comprises at least one of a text message, a photograph, or a video. Petitioner argued that while the primary combination taught sending location data as a message, Van Bosch explicitly teaches a system for posting and receiving location-based messages that can be "textual, audio, video, or pictorial."
  • Motivation to Combine: A POSITA would combine Van Bosch's multimedia messaging capability with the system of Ground 1 to enhance communication between users. Adding text, photos, or video to a location-based message would beneficially contextualize shared locations or entities of interest, providing users with richer, more relevant information.
  • Expectation of Success: Petitioner asserted success would be expected, as implementing text, photo, and video messaging was a well-known and conventional feature in mobile communication devices and would involve straightforward programming.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. Addressing the Fintiv factors for co-pending district court litigation, Petitioner asserted that institution was favored. Key arguments included that Petitioner plans to seek a stay in the district court, which is reasonably likely to be granted; significant resources have not yet been expended in the parallel case as discovery is in early stages; and Petitioner has stipulated it will not pursue the same invalidity grounds in district court if the IPR is instituted, eliminating concerns of overlap. Petitioner also contended that the strong merits of the petition and the public interest in canceling invalid patent claims weigh heavily in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of the ’838 patent as unpatentable.