Uber Technologies Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2021-01308
• Patent #: 10,299,100
• Filed: July 23, 2021
• Petitioner(s): Uber Technologies, Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1-23

2. Patent Overview

• Title: Ad Hoc Digital and Voice Network
• Brief Description: The ’100 patent describes an ad hoc communication network comprising multiple Internet Protocol (IP) capable mobile devices (e.g., PDA/GPS devices) and a remote server. The system enables network participants to share location and status information with each other without needing to pre-enter contact details like names or phone numbers.

3. Grounds for Unpatentability

Ground 1: Obviousness over Makoto, Konishi, Paul, and Hamynen - Claims 1-12, 16-19, and 23 are obvious over Makoto in view of Konishi, Paul, and Hamynen.

• Prior Art Relied Upon: Makoto (Japanese Application Publication No. 2002-199433), Konishi (Japanese Application Publication No. 2002-352388), Paul (Patent 6,356,838), and Hamynen (Application # 2005/0228860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Makoto, the primary reference, discloses the core method of a mobile device in a group network determining its own location via GPS and receiving location information of other devices from a server for display on a map. To meet remaining limitations, Petitioner asserted Konishi teaches receiving detailed map data from a server; Paul teaches associating mobile devices with vehicles to display vehicle locations; and Hamynen teaches marking a map with facility symbols (e.g., gas stations) and allowing a user to select a map position to initiate a search for the nearest facility.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve upon Makoto’s system. A POSITA would incorporate Konishi’s server-based map data to avoid storing large map files on a mobile device, improving portability and map detail. Paul’s teaching of vehicle tracking would be a natural addition to create a location-based transportation service. Hamynen would be combined to enhance the user interface by allowing users to find nearby points of interest and interact with the map via touch, improving the system's overall utility and convenience.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as the combination involves integrating well-known features (server-based maps, vehicle tracking, interactive facility search) into a conventional location-sharing network using standard programming techniques.

Ground 2: Obviousness over Makoto, Konishi, Paul, Hamynen, and Agrawal - Claims 13-15 are obvious over Makoto in view of Konishi, Paul, Hamynen, and Agrawal.

• Prior Art Relied Upon: Makoto, Konishi, Paul, Hamynen, and Agrawal (Application # 2003/0142642).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Agrawal to address limitations in claims 13-15 related to using the Internet Protocol (IP) for communication. Petitioner argued that while the primary combination teaches a server-based communication network, it does not explicitly name the protocol. Agrawal expressly discloses wireless IP networks that employ IP to communicate between a network and mobile terminals, including the assignment of a unique IP address to each device.
  • Motivation to Combine: A POSITA implementing the system of Makoto would need to select a communication protocol. Given that IP was a well-known, widespread, and flexible protocol for wireless communication at the time, a POSITA would have been motivated to look to art like Agrawal and implement IP to enable the "virtually instantaneous communication" required for an effective location-sharing service. This addition addresses the claim limitations requiring data transmission to a server using IP and the server’s IP address being accessible to the mobile device.
  • Expectation of Success: Success was expected because using IP in wireless networks was a common and well-understood practice, requiring no undue experimentation.

Ground 3: Obviousness over Makoto, Konishi, Paul, Hamynen, and Scaer - Claims 20-22 are obvious over Makoto in view of Konishi, Paul, Hamynen, and Scaer.

• Prior Art Relied Upon: Makoto, Konishi, Paul, Hamynen, and Scaer (Application # 2004/0243299).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented the combination from Ground 1 with Scaer to address limitations in claims 20-22 concerning user input of an "event symbol" on a map. Scaer discloses a map-like display system for logistics and transportation that allows users to input and display incidents (i.e., events) such as traffic accidents or road closures on a map by adding symbols and text.
  • Motivation to Combine: A POSITA would combine Scaer with the base mapping system of Makoto/Hamynen to add valuable functionality. Enabling users to specify the location of an event on a map and share it with others in the group is a logical extension of a system already designed for sharing location data. This would provide users with real-time information about road conditions or other points of interest (e.g., meeting locations), enhancing the system’s utility for coordination and logistics.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in programming the established Makoto system to share location data for user-defined events, as taught by Scaer, in addition to sharing device locations. This would be a straightforward extension of the system's existing capabilities.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate. The parallel district court proceeding was in its early stages, with significant resources yet to be expended, as fact discovery was ongoing and expert discovery had not begun. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the inter partes review (IPR) was instituted, eliminating concerns of duplicative efforts and promoting system efficiency. Petitioner asserted that the strength of its petition and the public interest in canceling invalid patent claims weighed heavily in favor of institution.

5. Relief Requested

• Petitioner requests institution of IPR for claims 1-23 of the ’100 patent and cancellation of those claims as unpatentable.