PTAB

IPR2022-00926

Uber Technologies Inc v. LBT IP II LLC

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1. Case Identification

2. Patent Overview

  • Title: Monitoring Location Tracking Devices Out of GPS Range
  • Brief Description: The ’289 patent discloses systems for monitoring the location of a first tracking device using a second tracking device. The second device determines the location coordinates of the first, communicates them to a monitoring station, and the information is relayed back to a user.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Tracking System Reference - Claims 8-10 and 13-15 are obvious over Robert

  • Prior Art Relied Upon: Robert (Patent 6,169,497).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Robert teaches every element of the challenged claims. Robert discloses a "Mobile Tracking and Positioning System" where a remote control unit 20 (a "remote user terminal") sends an initiation signal to a transmission unit 18 within a mobile target 16 (a "first tracking device"). In response, the transmission unit 18 broadcasts a reply signal containing identification codes. A mobile tracking station R 12 (a "second tracking device") receives this reply, compares the ID code to its own stored ID, and then determines the location of the target 16 using triangulation with another station. Dependent claim 9's requirement to determine location based on the second device's coordinates and the distance between devices is met by Robert's use of triangulation. Claim 10 is met because Robert's system is designed to work without the target having a GPS receiver, making it inherently capable of calculating coordinates when out-of-range of GPS satellites.
    • Motivation to Combine: This ground is based on a single reference. However, Petitioner argued that to the extent Robert does not explicitly disclose a "monitoring station connected to the user terminal," a person of ordinary skill in the art (POSITA) would have found it obvious to make this modification. Robert's system is for monitoring fleets of vehicles or persons, and a central monitoring station controlled by a system operator is a logical and advantageous way to manage the system and relay location data back to the user who initiated the tracking request.
    • Expectation of Success: A POSITA would have a high expectation of success in connecting Robert's "remote station" to the user's remote control, as it involves routine implementation of known communication technologies.

Ground 2: Obviousness over Robert in view of Curatolo - Claims 8-10 and 13-15 are obvious over Robert and Curatolo

  • Prior Art Relied Upon: Robert (Patent 6,169,497) and Curatolo (Application # 2003/0182055).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that Robert teaches all claim limitations, but to the extent the Board finds Robert fails to disclose a "monitoring station connected to a [remote] user terminal," Curatolo explicitly provides this element. Curatolo discloses a "Security and Tracking System" where a "remote receiver" (user terminal) can initiate a location request for a target device (e.g., a "GPS Watch"). The location information is sent to a central "monitoring station" which can then communicate the location data for display on the remote receiver or to other authorized users.
    • Motivation to Combine: A POSITA would combine Curatolo's explicit monitoring station and connected user terminal with Robert's system to gain a known benefit. Robert's system is intended for applications like monitoring fleets of vehicles, which would benefit from the centralized control and data aggregation provided by Curatolo's monitoring station. Combining the two would allow a system operator, as described in Robert, to efficiently manage tracking requests from multiple users and disseminate location data back to them, which was a well-known architecture for tracking systems.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involves integrating known components (a server-based monitoring station and a remote user device) into an existing tracking framework to achieve a predictable result.

Ground 3: Obviousness over a Client-Server Tracking System - Claims 8 and 13 are obvious over Girerd

  • Prior Art Relied Upon: Girerd (Patent 6,661,372).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Girerd's client-server architecture teaches all elements of the independent claims. In Girerd, a user's client computer 1 (a "remote user terminal") initiates a location request over the internet. A server 200 within a base station 10 (the "second tracking device" and "monitoring station") receives the request. The server then interrogates a remote sensor 20 (the "first tracking device"), which responds with its sensor ID (a "first identification code"). The server 200 receives this reply signal, validates the sensor ID against the user's request (comparing to a "stored identification code"), and then processes positioning data from the sensor to compute its location coordinates. Finally, the server communicates the location coordinates back to the user's computer by sending a web page with a map.
    • Motivation to Combine: This ground is based on a single reference.
    • Expectation of Success: Not applicable for a single-reference ground.

4. Arguments Regarding Discretionary Denial

  • Petitioner presented substantial arguments against discretionary denial under Fintiv. It argued that the parallel district court proceeding was in its early stages with minimal investment from the parties or the court, as discovery had not opened and claim construction was just beginning. Petitioner also stipulated that it would not pursue in district court any obviousness ground that includes the primary references from the IPR (Robert and Girerd). Furthermore, the petition challenges more claims than are asserted in the litigation, promoting system efficiency. Finally, Petitioner asserted that the strong merits of the petition weigh heavily against denial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 8-10 and 13-15 of Patent 8,531,289 as unpatentable under 35 U.S.C. §103.