PTAB

IPR2024-00825

Uber Technologies Inc v. EnvoSys LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Communication System and Method
  • Brief Description: The ’726 patent discloses a wireless communication system for locating portable mobile remote units (PRUs). The challenged claims are directed to two distinct embodiments: "Geographic Boundary Claims" for notifying and locating PRUs within a user-specified geographic area, and "Proximity Alert Claims" for a tracking mode that alerts a user when another mobile unit maintains relative proximity to them over time while in motion.

3. Grounds for Unpatentability

Ground 1: Obviousness of Geographic Boundary Claims - Claims 12 and 13 are obvious over Suarez.

  • Prior Art Relied Upon: Suarez (Patent 6,212,393).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Suarez, which discloses a vehicle dispatch system, taught all limitations of claims 12 and 13. Suarez’s system managed a fleet of vehicles (PRUs) that received assignment messages from a dispatch center. Petitioner asserted that these messages contained a "location parameter" (e.g., GPS coordinates) and a "criteria parameter" (e.g., a radius), which collectively defined the claimed "geographic boundary information." The PRUs in Suarez received this notification and verified their location against the boundary, and if within the boundary, transmitted a reply to the dispatch center, satisfying the limitations of independent claim 12 and dependent claim 13.
    • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness of Geographic Boundary Claims - Claim 8 is obvious over Suarez in view of Mezhvinsky.

  • Prior Art Relied Upon: Suarez (Patent 6,212,393) and Mezhvinsky (Australian Patent Application No. 200037767).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Suarez taught most limitations of claim 8, which is a system claim corresponding to the method of claim 12. The key difference addressed by Mezhvinsky was the "means for a wireless consumer to specify and forward... geographic boundary information." While Suarez disclosed a dispatch center operator defining the boundary, Mezhvinsky taught a system where an end-user, using a PC or PDA, specified their own location and a desired search radius (e.g., "radius of 3kms") to find nearby service providers like taxis.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Mezhvinsky's user-defined search functionality with Suarez's dispatch system to improve it. Petitioner argued this combination was motivated by the desire to allow a user to provide their precise location requirements directly, which Mezhvinsky taught was "preferable" for increased specificity and user control.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success as both references involved dispatching mobile units based on location within a defined geographic region, making the integration of user-defined boundaries straightforward.

Ground 3: Obviousness of Proximity Alert Claims - Claim 1 is obvious over Layson’757 in view of Layson’213 and IllinoisLaw.

  • Prior Art Relied Upon: Layson’757 (Patent 5,731,757), Layson’213 (Patent 6,405,213), and IllinoisLaw (720 Ill. Comp. Stat. 5/12-7.3).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner mapped the elements of claim 1 to a combined offender-victim tracking system. Layson’757 disclosed portable tracking devices for both an offender and a victim, with a central database that created a dynamic "buffer zone" (the claimed geographic boundary) around the moving victim. The system requested location information from offenders within this zone. Layson’213, by the same inventor, was argued to provide a complementary system for correlating location data and reporting violations based on a "loiter time." IllinoisLaw, a state statute, provided the legal definition of stalking as moving in "relative proximity to a person as that person moves from place to place," mapping to the "maintained relative proximity...while in motion" limitation.
    • Motivation to Combine (for §103 grounds): A POSITA implementing Layson’757’s anti-stalking system would be motivated to consult Layson’213 for reporting capabilities and IllinoisLaw for the legal definition of the crime being addressed. This would lead to a system that specifically identifies and reports on subjects who follow a victim for a minimum time and distance, fulfilling the purpose of the tracking system.
    • Expectation of Success (for §103 grounds): Success was expected because the references shared the same inventor and subject matter (offender tracking), and Layson'213 explicitly incorporated Layson'757 by reference, making their combination a natural design choice.

  • Additional Grounds: Petitioner asserted that claims 8, 12, and 13 are obvious over Heedfeld (German Application DE 19751741A1), and that claim 2 is obvious over the Layson/IllinoisLaw combination in further view of Wang (Patent 5,365,451).

4. Key Claim Construction Positions

  • Petitioner argued that several terms in claims 1 and 8 are means-plus-function limitations under 35 U.S.C. § 112, ¶ 6 and proposed constructions based on structure identified in the ’726 patent specification.
  • Claim 8: For the "means for a wireless consumer to specify and forward...geographic boundary information," Petitioner identified the function as specifying and forwarding this data to the network. The corresponding structure was identified as an "input panel 25" with "antenna 20 and a transceiver circuitry 21," programmed to obtain geographic data such as latitude, longitude, and radius.
  • Claim 1: For the "means to determine and report...that, another portable mobile remote unit has maintained relative proximity...over a period of time while in motion," Petitioner identified the structure as a "control unit" programmed to receive location data at intervals, maintain a list of units within a boundary, and report on those units that have moved a minimum distance over a period of time.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under Fintiv. The basis for this argument was that, at the time of filing the petition, the co-pending district court litigation had not yet set a trial date, meaning the concerns about inefficiency and duplicative efforts underlying the Fintiv factors were not present.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 8, and 12-13 of the ’726 patent as unpatentable.