In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The Board failed to properly apply the obviousness test of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), which recognized that a person of skill in the art has good reason to pursue the use of a finite number of identified, predictable solutions to solve a problem.

Uber challenged certain claims of U.S. Patent No. 8,798,593, directed to plotting shared locations on map on a user’s mobile device. The Board determined that the prior art did not render obvious the limitation “software …to transmit the map with plotted locations to the first individual” because one of ordinary skill would not have been motivated to combine a prior art reference in which the locations are plotted at the server and sent to a user’s mobile device with a reference in which the plotting occurs on the mobile device itself. The Federal Circuit reversed the decision because the PTAB “incorrectly applied the relevant legal principles” of obviousness, adding hurdles not required by KSR.

The ‘593 patent is directed generally to allow a person to share her location with a list of her friends and to see on a map those friends’ locations. The alleged novelty is in the two-way position information sharing.

Uber asserted invalidity based on, among other grounds, the combination of Japanese Unexamined Patent Application Publication No. 2002-10321 (“Okubo”) in combination with Japanese Unexamined Patent Application Publication No. 2002-352388 (“Konishi”) and, in a second ground, in view of Okubo, Konishi, and U.S. Patent No. 6,636,803 (“Hartz”). Okubo is directed to a two-way position information system that allows mobile device users to form groups, wherein each group member can see the positions of all other group members. Konishi is directed to a vehicle location system, where a customer can see both where the customer is located and where available vehicles are located. Hartz was not relied on with respect to the limitation at issue.

The Board concluded that Uber failed to show that the prior art rendered obvious the limitation “software … to transmit the map with plotted locations to the first individual.” The Federal Circuit agreed that this limitation requires that the locations be plotted on the server side and transmitted to the user’s mobile device. It was undisputed that Konishi discloses such server-side plotting, but Okubo performed the plotting on the user’s device.

The Board concluded that it would be impermissible hindsight to combine Konishi and Okubo and such a combination would require “wholesale modification to Okubo.”

Uber appealed, arguing that both server-side and terminal-side plotting were well known design choices and that it would have been obvious to substitute one for the other. It also argued that the Board erred by refusing to consider combinations with Okubo because Okubo was successful on its own.

The Federal Circuit agreed the evidence showed that one of skill in the art would have recognized server-side and terminal-side plotting as the two available methods for displaying a map with plotted locations. Citing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), the Court explained that these 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.” The Court further noted that the novelty of the invention did not turn on the difference between server-side and terminal-side plotting. In fact, the specification was silent as to how to transmit locations to the user’s device, “suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.” Uber, 957 F.3d at 1339. Thus, the Court agreed that the Board erred when it determined that one of skill in the art would not have been motivated to combine Okubo and Konishi.

The Court looked to its earlier decision in CFRD, Inc. v. Matal (discussed here) as reinforcing its decision. In both instances, the Court explained, where a person of ordinary skill is faced with two predictable design choices, it would be obvious to modify one prior art reference to implement the second predictable design choice. “Because a person of ordinary skill ‘has good reasons to pursue the known options within his or her technical grasp,’ § 103 bars the patentability of such obvious variations.” Uber, 957 F.3d at 1340.

The Court rejected the argument that the proposed combination would require wholesale modification of Okubo as “circular” because it fails to recognize the server-side and terminal-side plotting options as predictable, known design choices for solving the same problem. The Court continued that, even if the modification would require different implementation, such implementation of the predicable solution renders the combination obvious. Id. at 1341.

The Federal Circuit invoked several of its obviousness principles in rejecting the Board’s concerns that changes constitute “wholesale modification” to Okuba and would not be undertaken because Okubo already worked. Obviousness does not require the physical combination of two prior art references. “Rather, the question is ‘whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.’” Id. at 1341 (citations omitted). If a person can implement a variation of one prior art solution using known, predictable solutions, as KSR explained, that successful implementation is not the result of innovation, but of the obvious use of ordinary skill and common sense. KSR, 550 U.S. at 417; 421. The Board cannot create its own, more difficult test for obviousness.