Uber prevails on appeal

The outcome:


Uber Technologies, Inc. (“Uber”) appeals from a final
written decision of the Patent Trial and Appeal Board
(“Board”) finding claims 1, 2, 5, 6, 9, and 19 of U.S. Patent
No. 8,798,593 (“the ’593 patent”) not unpatentable as obvious. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255,
Paper No. 41 (PTAB Oct. 12, 2018) (“Final Written Decision”). The Board’s conclusion was based on its determination that the asserted prior art does not render obvious the
limitation “software . . . to transmit the map with plotted
locations to the first individual.” Because the Board’s decision incorrectly applied the relevant legal principles, we reverse the Board’s non-obviousness determination as to this
limitation, and remand for the Board to analyze the remaining limitations of the challenged claims in the first instance.




The presence of a finite number of solutions:


The record reflects only two possible methods of achieving this: server-side plotting and terminal-side plotting.
Both were undisputedly known in the prior art. As the
Board found, Konishi expressly discloses server-side plotting and Okubo discloses terminal-side plotting. Final
Written Decision, at 15–16; see J.A. 1144. And as Uber argues, 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. J.A. 2751–52; see J.A. 1068–69.2 The parties
have identified only these two methods of transmitting location information to a mobile device. See Appellant’s Br.
32; Appellee’s Br. 28; J.A. 2751–52; J.A. 2278–93. Accordingly, 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.” KSR, 550 U.S. at 421.

(...)

because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art,
and were the only two identified, predictable solutions for
transmitting a map and plotting locations, it would have
been obvious to substitute server-side plotting for terminal-side plotting in a combination of Okubo and Konishi.
See KSR, 550 U.S. at 421. The combination of Okubo with
Konishi’s known server-side plotting is obvious because it
would have been a “predictable variation” of Okubo’s system as written, using a technique that was known to one of
ordinary skill in the art. Id. at 417.



[obvious design choices]

The conclusion:

For the reasons stated above, we reverse the Board’s
determination as to the obviousness of the limitation “software . . . to transmit the map with plotted locations to the
first individual” in view of Okubo and Konishi. We therefore remand for the Board to evaluate in the first instance
the remaining limitations of the claims challenged in
grounds 1 and 2 of Uber’s petition.