PTAB

IPR2024-00826

Uber Technologies Inc v. EnvoSys LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Communication System Having Remotely Locatable Mobile Transceivers
  • Brief Description: The ’752 patent discloses a communication system for remotely locatable mobile units. It describes two main embodiments: a "proximity alert" or "tracking mode" where a user is alerted to other mobile units maintaining close proximity over time, and a "geographic boundary" mode for verifying the location of remote units within specified geographic areas and subregions.

3. Grounds for Unpatentability

Ground 1: Proximity Alert Claims - Claim 1 is obvious over Layson in view of Layson

  • Prior Art Relied Upon: Layson (’757 patent) and Layson (’213 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Layson ’757 teaches a victim-offender tracking system where portable devices assigned to each subject communicate their locations to a central database. The central database sends "location constraints" (e.g., a buffer zone around the victim) to the offender's device. Layson ’213, which relates to the same subject matter, was asserted to add a system for correlating offender location data and generating reports of "exclusion zone violations" only when an offender remains in a prohibited area for a "loiter time," as opposed to merely passing through. This combination allegedly teaches all limitations of claim 1, including determining that a remote unit maintained close proximity over a period of time before forwarding its location.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references because they address the same subject matter (offender tracking), share a common inventor, and Layson ’213 expressly incorporates Layson ’757 by reference. A POSITA would have looked to Layson ’213's "loiter time" concept to provide specific guidelines for the reporting system of Layson ’757, thereby avoiding false alarms for inadvertent or temporary proximity.
    • Expectation of Success: The petition argued for a high expectation of success because the combination involves applying a known data filtering technique (loiter time) to a known tracking system to achieve the predictable result of improved reporting accuracy.

Ground 2: Geographic Boundary Claim - Claim 6 is obvious over Suarez in view of Mintz

  • Prior Art Relied Upon: Suarez (’393 patent) and Mintz (’702 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Suarez discloses a vehicle dispatch system where a central dispatch receives a request and sends an assignment message to vehicles within a geographic area defined by a location and a radius ("criteria parameter"). To find a vehicle, Suarez’s system can expand this radius in steps. Mintz was argued to teach a similar taxi dispatch system that explicitly "splits" a circular target area into a plurality of concentric sectors, querying the closest sectors first before expanding the search outward to minimize wait times. The combination allegedly teaches splitting a geographic boundary into subregions and querying them to find a responsive remote unit, as recited in claim 6.
    • Motivation to Combine: A POSITA, seeking to improve the efficiency of Suarez’s dispatch system, would have been motivated to incorporate Mintz’s method of systematically querying concentric subregions. Mintz explicitly states this prioritizes responses from the closest vehicles, which Petitioner argued is a known method for improving dispatch efficiency by reducing travel and wait times.
    • Expectation of Success: Petitioner asserted success would be expected because combining Mintz's efficient, concentric search strategy with Suarez's dispatch system was a straightforward application of known dispatch optimization principles to achieve the predictable result of faster and more efficient service allocation.

Ground 3: Proximity Alert Claims with Movement - Claims 9 and 14 are obvious over Layson/Layson in view of IllinoisLaw

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

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on the Layson/Layson combination from Ground 1. Petitioner argued that to address the specific crime of stalking, a POSITA would look to the legal definition of the crime. IllinoisLaw defines stalking as involving moving in relative proximity to a person as that person "moves from place to place." This was asserted to supply the claimed limitation of verifying that the tracked and tracking units have traveled a "minimum pre-specified distance" over the tracking period.
    • Motivation to Combine: Petitioner contended that since the Layson patents are directed to preventing stalking, a POSITA implementing that system would be motivated to consult the legal definition of stalking to ensure the system accurately identifies criminal behavior. Incorporating a minimum travel distance from IllinoisLaw would distinguish actual stalking from incidental proximity (e.g., two people being in the same area for a period but not traveling together), thereby improving the system's accuracy.
    • Expectation of Success: Success would have been predictable, as it involved adding a logical filter (minimum travel distance) to an existing location tracking system to better conform its output to a specific, real-world definition.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 4 and 15 over Layson/Layson in view of Wang and/or IllinoisLaw, based on using "exclusion regions" to conserve resources and prevent false alarms.

4. Key Claim Construction Positions

  • Petitioner argued that claims 14 and 15 contain means-plus-function limitations under 35 U.S.C. §112, ¶6. Key proposed constructions include:
    • “means to determine and report... that, another mobile remote unit... has tracked the portable mobile remote over a period of time” (Claim 14): Petitioner identified the structure as a control unit programmed to receive locations of both units at intervals, maintain a list of units within a boundary, and verify movement over a minimum distance before transmitting a message. This construction was central to the argument for combining Layson/Layson with IllinoisLaw.
    • “means to further determine if location disclosure... is prohibited at a specific geographic boundary” (Claim 15): Petitioner identified the structure as a control unit programmed to compare its current location to an exclusion zone and abort transmission if within that zone. This construction was key to the obviousness ground that added Wang.

5. Arguments Regarding Discretionary Denial

  • The petition argued that the Board should not deny institution under Fintiv. Petitioner stated that at the time of filing, the co-pending district court litigation had not set a trial date, and therefore the concerns animating potential discretionary denial were not present.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 4, 6, 9, and 14-15 of the ’752 patent as unpatentable.