Finite Methods as a Ground for Obviousness

| Adam Powell


Before Prost, Dyk, and Wallach. Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Because a mapping technique must be performed on either a server or a terminal, using a server-side technique disclosed in one piece of prior art was a “predictable variation” of the terminal-side technique disclosed in another piece of prior art.

Uber petitioned for IPR of X One’s patent. The claims generally related to a remote server creating a map, populating it with group-members’ locations, and then transmitting the map to a user’s device. The PTAB considered two pieces of prior art: Okubo and Konishi. Okubo disclosed creating a terminal-side method wherein the map is created on a user’s device and then populated with group members’ locations. Konishi disclosed a server-side method of mapping vehicles. The Board held the patent was not obvious because Konishi’s server-side plotting would be a “wholesale modification to Okubo.” Uber appealed.

The Federal Circuit reversed, stating that Okubo and Konishi demonstrate there are two finite and predictable methods of map-plotting in the field of location-sharing: server-side and terminal-side. Because a person of ordinary skill in the art would have to choose between one of those two methods, using the server-side method disclosed in Konishi was a “predictable variation” of Okubo.

Editor: Paul Stewart