Uber Technologies, Inc. v. X One, Inc.
Docket No. 2019-1165 (IPR2017-01264)
PROST, DYK, WALLACH
March 3, 2020
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.