Uber Technologies Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2021-01307
• Patent #: 10,299,100
• Filed: July 23, 2021
• Petitioner(s): Uber Technologies, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 24-31

2. Patent Overview

• Title: Ad Hoc Digital and Voice Network
• Brief Description: The ’100 patent relates to an ad hoc digital and voice network composed of Internet Protocol (IP) capable mobile devices (e.g., PDA/GPS devices) and a remote server. The server stores user IP addresses and facilitates the exchange of location and status information among network participants who may not have each other's contact details.

3. Grounds for Unpatentability

Ground 1: Claims 24-29 are obvious over Makoto, Konishi, Paul, and Hamynen

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Paul (Patent 6,356,838), and Hamynen (Application # 2005/0228860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Makoto, the primary reference, disclosed the core system of a mobile communication network with GPS-enabled devices that communicate with a location information server. Makoto was argued to teach key features of independent claim 24, including a CPU, storage, GPS receiver, and a transmitter for associating a device with a user identifier. The petition contended that the remaining limitations would have been obvious additions:
    • Hamynen was cited to teach using a touch screen display for map interaction, a feature not explicitly disclosed in Makoto.
    • Konishi was introduced to teach downloading mapping data that includes a map and coordinate translation data from a server, addressing the fact that Makoto's "map information" was not explicitly a downloadable map file.
    • Paul was used to supply the teaching of associating mobile devices with vehicles and displaying vehicle-specific symbols, extending Makoto’s user-centric system to a vehicular context.
    • Hamynen was also cited for displaying symbols for facilities (e.g., gas stations) on a map based on a user-initiated search.
  • Motivation to Combine: Petitioner argued a POSITA would combine these references for predictable benefits. Adding Hamynen's touch screen would provide a simpler, more intuitive user interface for map selection. Incorporating Konishi's server-based map data would solve the known problem of limited storage on mobile devices. Modifying Makoto's system with Paul's vehicle-tracking features would improve location-based services for transportation. Finally, adding Hamynen's facility search would enhance the overall utility of the location-based service application.
  • Expectation of Success: The petition argued that a POSITA would have had a reasonable expectation of success in making these combinations because touch screens, server-based mapping, and GPS tracking for vehicles were all well-known and commonly used technologies at the time. Their integration would have involved the application of predictable and routine engineering principles.

Ground 2: Claims 30-31 are obvious over Makoto, Konishi, Paul, Hamynen, and Agrawal

• Prior Art Relied Upon: Makoto (Japanese Application # 2002-199433), Konishi (Japanese Application # 2002-352388), Paul (Patent 6,356,838), Hamynen (Application # 2005/0228860), and Agrawal (Application # 2003/0142642).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination asserted in Ground 1 to address the additional limitations in claims 30 and 31, which require transmitting data to a server using an Internet Protocol (IP) and the server using a stored IP address to communicate. The petition asserted that while the base combination from Ground 1 taught the system's functionality, it did not specify the communication protocol. Agrawal was added to explicitly teach the use of IP for communication between mobile terminals and servers in a wireless network. Agrawal disclosed that communication is achieved by specifying the source and destination IP addresses, thereby teaching the server's use of a stored IP address to transmit information to a specific device.
  • Motivation to Combine: The primary motivation asserted was that a POSITA, seeking to implement the system taught by the primary combination, would have naturally looked to well-known and suitable communication protocols. Because Makoto did not specify a protocol, a POSITA would have been motivated to use IP as taught by Agrawal due to its widespread adoption and known advantages, such as enabling "virtually instantaneous communication" and providing "tremendous convenience, power and flexibility" in wireless networks.
  • Expectation of Success: Petitioner argued for a high expectation of success, as the use of IP for wireless data communication was a standard, well-established practice at the relevant time. Implementing the Makoto system over a standard IP network, as taught by Agrawal, would have been a routine task for a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors. The petition asserted that a stay of the parallel district court proceeding was likely, trial proximity was uncertain, and significant investment in the parallel litigation had not yet occurred. Most critically, Petitioner stated it had stipulated to the Patent Owner that it would not pursue the same invalidity grounds in district court if the IPR was instituted, eliminating any overlap of issues. Petitioner argued these factors, combined with the strong merits of the petition, weighed heavily in favor of institution.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 24-31 of the ’100 patent as unpatentable.