PTAB

IPR2024-00827

Uber Technologies Inc v. Enovsys LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Communication System and Method for Determining if a Wireless Consumer is Being Tracked
  • Brief Description: The ’918 patent discloses a communication system with mobile units capable of location disclosure. The challenged claims relate to a "tracking mode" where a wireless consumer is alerted to the presence of other mobile units that are maintaining relative proximity to the consumer over time.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 15 over Layson/Layson

  • Prior Art Relied Upon: Layson’757 (Patent 5,731,757) and Layson’213 (Patent 6,405,213).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Layson’757 taught a system for tracking criminal offenders relative to victims using portable tracking devices that report location to a central database. This system established dynamic "buffer zones" around the victim. Petitioner asserted that Layson’213 disclosed a complementary "correlation database" system for analyzing offender location data to generate reports, specifically teaching the use of a "loiter time" to verify that an offender’s presence in an exclusion zone is intentional before issuing a violation report. The combination, Petitioner contended, met the limitations of claim 15 by using Layson'757's devices to obtain locations of a "victim" (first unit) and "offender" (second unit) at intervals, and using Layson'213's "loiter time" concept to verify that the offender maintained proximity within the victim's buffer zone for a "tracking period" before forwarding a report to a network requestor (e.g., law enforcement).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they addressed the same subject matter (offender tracking), shared an inventor, and Layson’213 explicitly incorporated Layson’757 by reference. A POSITA would have been motivated to integrate the advanced reporting and analysis features of Layson’213 with the tracking hardware of Layson’757 to create a more effective and reliable system that reduces false alarms.
    • Expectation of Success: A POSITA would have had a high expectation of success, as both systems were designed to operate on the same type of offender location data.

Ground 2: Obviousness of Claims 1 and 22 over Layson/Layson in view of IllinoisLaw

  • Prior Art Relied Upon: Layson’757, Layson’213, and IllinoisLaw (720 Ill. Comp. Stat. Ann. 5/12-7.3).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination built upon the Layson/Layson system by incorporating the legal definition of stalking from IllinoisLaw. IllinoisLaw defined stalking as when a person "follows another person," which means "to move in relative proximity to a person as that person moves from place to place." Petitioner asserted that this legal standard provided the missing element of requiring movement over a minimum distance, in addition to proximity over time ("loiter time"), to confirm stalking. This combination allegedly met the "means to determine and report" that one unit "has tracked" another over a period of time by adding a minimum distance threshold to the Layson/Layson system's time-based proximity check.
    • Motivation to Combine: A POSITA developing a stalking detection system would be motivated to consult the legal definition of the crime to ensure the system accurately identified legally relevant behavior. This would lead them to incorporate the "moves from place to place" requirement from IllinoisLaw as a minimum travel distance filter to distinguish between incidental proximity and actual tracking, thereby improving the system's accuracy and utility for law enforcement.
    • Expectation of Success: Integrating a minimum distance check into a system that already processes location and time data would have been a straightforward and predictable modification.

Ground 3: Obviousness of Claim 15 over Taylor in view of Fast

  • Prior Art Relied Upon: Taylor (Patent 6,160,481) and Fast (Patent 5,497,149).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Taylor disclosed a "dual tracking system" for monitoring a "restrictee" (e.g., stalker) relative to a "restrictor" (e.g., victim) using defined perimeters that move with the victim. When a restrictee breached a perimeter, a notification was sent to an "oversight authority." Petitioner asserted that Fast, in the same field of restraining order enforcement, taught waiting for a "predetermined time limit" after two tracked beacons become "too close together" before notifying a supervising authority. This delay confirmed the violation was ongoing and not brief or inadvertent.
    • Motivation to Combine: A POSITA would be motivated to implement Fast’s "predetermined time limit" concept into Taylor’s system to prevent false alarms. Reporting every brief, unintentional perimeter breach would waste law enforcement resources and cause unnecessary stress for the victim. Combining the teachings would result in a more practical and reliable system that only reports sustained proximity violations.
    • Expectation of Success: Adding a time-delay condition before triggering a pre-existing alert function in a location-monitoring system was a well-understood and predictable design choice.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (Claim 2 over Layson/Layson/IllinoisLaw/Wang) which added Wang's teaching of location-reporting suppression within "permitted regions" to avoid false alarms when prohibited and permitted zones overlap. Petitioner also asserted Ground 5 (Claims 1, 2, and 22 over Taylor/Fast/IllinoisLaw), which added the "minimum distance" requirement from IllinoisLaw to the Taylor/Fast combination.

4. Key Claim Construction Positions

  • The petition argued that multiple terms in claims 1, 2, and 22 should be construed as means-plus-function elements under 35 U.S.C. § 112, ¶6.
  • For the term "means to determine and report to the system upon request that, another mobile remote unit of the network has tracked the portable mobile remote over a period of time" (Claim 1), Petitioner proposed the function is to perform that determination and reporting. The corresponding structure identified in the ’918 patent was a control unit programmed to: (1) receive locations of a "tracked" unit and "other" units at intervals, (2) maintain a list of "other" units within a predefined boundary of the "tracked" unit for a period of time as they move a minimum distance, and (3) transmit a message identifying the tracking units.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. The core reason provided was that the co-pending district court litigation had not yet set a trial date, meaning the concerns regarding parallel proceedings and judicial economy that animate the Fintiv factors were not present at the time of filing.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-2, 15, and 22 of the ’918 patent as unpatentable.