The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious
The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103. Uber Techs., Inc. v. X One, Inc., Case No. 19-1164 (Fed. Cir. May 5, 2020) (Prost, CJ).
X One sued Uber Technologies asserting a patent directed to exchanging location information between mobile devices, such that a user could add other mobile device users to a “Buddy List,” share her location with listed buddies or temporary “instant buddies,” and see the locations of her buddies on a map. The patent’s purported novelty lay in “two way position information sharing,” creation of location sharing “groups,” and “temporary location sharing” that “automatically expires.”
Uber filed a petition for inter partes review (IPR), and the Patent Trial and Appeal Board (PTAB) instituted review. In its final written decision, the PTAB concluded that the challenged claims were not established to be unpatentable as obvious, based on its determination that the asserted primary and secondary prior art references did not render obvious the independent claim limitation “software . . . to transmit the map with plotted locations to the first individual.” This so-called missing limitation was required by both independent claims, and since a tertiary reference (disclosing this limitation) was not relied upon to disclose this limitation, the PTAB did not analyze the remaining references or limitations of the challenged claims. Uber appealed.
Uber argued that the PTAB’s conclusions were legal error and misapplied the law of obviousness under the seminal Supreme Court case KSR International v. Teleflex, because the server-side plotting and terminal-side plotting discussed in its IPR prior art references were both well-known design choices in the prior art, and therefore it would have been obvious to substitute one for another. Uber also argued that the PTAB committed legal error by refusing to consider the primary prior art reference Okubo in combination with other prior art on the basis that Okubo was “successful” in and of itself.
Like X One’s patent, Okubo generally described transmitting location information between mobile devices, including embodiments showing the locations of friends or vehicles. Mobile device users can form “groups,” which allows each group member to see the locations of all other group members and themselves plotted on a map as shown in Figure 3.
A secondary reference, Konishi, disclosed a “vehicle allocation system,” with which a “customer” can reserve a vehicle using his “mobile telephone.” Konishi’s system plots “the current positions of the customer and available vehicles” and “transmits the map” to the customer.
The parties did not dispute that Konishi disclosed “server-side plotting,” and after plotting, to “transmit the map with plotted locations” to a user’s mobile device. Okubu did not expressly disclose server-side plotting, but did disclose “terminal-side” plotting. The PTAB concluded that combining Okubu’s system with Konishi’s server-side plotting would be achieved only with impermissible hindsight, as a “wholesale modification to Okubu.” Because Okubo “sufficiently teaches the implementation of plotting the locations of group members on a map on its mobile terminal,” the PTAB was “not persuaded by [Uber’s] assertions that one of ordinary skill would seek out a design choice for combination with Okubo.”
The Supreme Court in KSR set forth an expansive and flexible approach to obviousness, design choices and predictable variations:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.
As explained by Uber’s expert and repeated in its petition, Okubo, Konishi and the X One patent all attempt to solve the same problem: “helping one user view and track the location of other users.” The Federal Circuit found that the record reflected only two possible methods of addressing this problem—server-side plotting and terminal-side plotting—and both were undisputedly known in the prior art. Accordingly, the Court agreed with Uber that a person of ordinary skill in the art would have recognized server-side plotting and terminal-side plotting as the two available methods for displaying a map with plotted locations. Thus server-side plotting and terminal-side plotting represent “a finite number of identified, predictable solutions” to a design need that existed at the relevant time, which a person of ordinary skill in the art “ha[d] good reason to pursue,” as discussed in KSR.
The Federal Circuit further noted that the X One patent identified its purported novelty as “two way position information sharing,” not whether plotting occurs server-side or terminal-side, and moreover was entirely silent on how to transmit user locations and maps from a server to a user’s mobile device other than to use “existing platforms and infrastructure”—which suggested that a person of ordinary skill in the art was more than capable of selecting between the known methods. The Court found no “impermissible hindsight” or “wholesale modification,” since Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art as the only two identified, predictable solutions for transmitting a map and plotting locations, such that it would have been a “predictable variation” and obvious to substitute Konishi’s server-side plotting for the terminal-side plotting in Okubo’s system.
The Court reversed the PTAB’s non-obviousness determination as to this limitation, and remanded for the PTAB to analyze the remaining limitations of the challenged claims.