957 F.3d 1334
Fed. Cir.2020Background
- The ’593 patent (X One) covers two‑way location sharing between mobile devices; representative claim 1 requires server software to plot users’ last‑known locations on a map and then “transmit the map with plotted locations to the first individual.”
- Uber petitioned for IPR, challenging claims 1, 2, 5, 6, 9, and 19 as obvious over Okubo (teaches terminal‑side plotting and group maps) combined with Konishi (teaches server‑side plotting and transmission), and a second ground adding Hartz.
- The PTAB found Okubo taught terminal‑side plotting and concluded combining Okubo with Konishi to get server‑side plotting would be impermissible hindsight or a "wholesale modification," and therefore claims were not shown obvious.
- Uber appealed, arguing KSR requires finding obviousness where the prior art presented two known, predictable design choices (server‑ vs terminal‑side plotting) and substituting one for the other is a predictable variation.
- The Federal Circuit held that server‑side and terminal‑side plotting were the only identified, predictable solutions to the same problem, so substituting server‑side plotting into Okubo was an obvious design choice under KSR; it reversed the Board as to that limitation and remanded for consideration of the remaining claim limitations.
Issues
| Issue | Uber (Appellant) | X One (Appellee) | Held |
|---|---|---|---|
| Whether the limitation "software ... to transmit the map with plotted locations to the first individual" (server‑side plotting) is obvious in view of Okubo + Konishi | Okubo and Konishi address the same problem; server‑side and terminal‑side plotting were known, finite, predictable choices, so substituting server‑side plotting is an obvious design choice under KSR | Okubo teaches terminal‑side plotting; combining Konishi’s server‑side plotting is improper hindsight and a wholesale modification | Reversed PTAB: the substitution was an obvious, predictable variation under KSR; remanded to analyze remaining claim limitations |
| Whether the Board erred by refusing to combine Okubo with other prior art because Okubo was "successful" alone | The Board should consider combinations; success of one reference does not preclude combination | The Board relied on Okubo’s sufficiency and declined to seek other combinations | Court did not reach this alternative argument because reversal on the primary ground made it unnecessary |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness includes predictable variations and obvious design choices)
- CRFD Research, Inc. v. Matal, 876 F.3d 1330 (Fed. Cir. 2017) (two predictable choices can render a claim obvious)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) (standard of review for PTAB factual and legal findings)
- ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361 (Fed. Cir. 2016) (ordinary artisan left with two design choices results in obvious combinations)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (common‑sense combinations can supply motivation to combine)