Uber Technologies, Inc. v. X One, Inc.

Docket No. 2019-1165 (IPR2017-01264)
PROST, DYK, WALLACH
March 3, 2020
Non-precedential

Brief Summary: Board IPR decision of no obviousness of certain mapping-related claims reversed as claim construction would exclude the preferred embodiment; obviousness of another claim affirmed.

Summary: Uber appealed Board IPR decision findings certain claims of X One’s US 8,798,647 regarding methods for “displaying a map of the positions of a ‘first wireless device’ and a ‘second wireless device’ on the first wireless device, and updating that map based on ‘positional update[s]’ as to the location of the second wireless device”, each step in the method being “in some way tied to the ‘launch’ of an ‘application’” not unpatentable as obvious. The FC panel reviewed the Board’s claim construction “based on evidence intrinsic to the patent” and since this “IPR stems from a petition filed before November 13, 2018” under “the ‘broadest reasonable interpretation’ consistent with the specification” (Williamson, FC 2015; Game & Tech., FC 2019). It found “that the Board’s ‘during or near’ requirement is generally correct” but “that the Board’s claim construction is imprecise and that some refinement…is necessary in light of the specification” as it “would exclude the specification’s preferred embodiment” (e.g., “the Board’s ‘during or near’ requirement must allow for method invocation minutes or hours after application launch”; Medrad, FC 2005). And under the revised construction, the FC panel concluded that the Board erred in finding the prior art (Konishi and Mitsouka) “do not teach or suggest the ‘responsive to’ limitations” (e.g., “[t]he very purpose of Konishi is to start mapping shortly after the launch of the vehicle allocation service”) and therefor concluded certain claims would have been obvious in view of Konishi or Misuoka. Claim 22 includes the limitation “that a ‘second wireless device’ (whose location is to be mapped) is ‘selected in association with launch of the application’” which the Board found to be disclosed by Konishi and Mitsuoka, and the FC panel agreed. The Board’s decision was therefore reversed-in-part and affirmed-in-part.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.