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Uber Technologies, Inc. v. X One, Inc.

Substituting One Predictable Technology for its Only Alternative was Obvious

Uber Technologies, Inc. v. X One, Inc.957 F.3d 1334 (Fed. Cir. May 5, 2020) (PROST, Dyk, Wallach) (PTAB) (3 of 5 stars)

Fed Cir reverses IPR decision that Uber had not shown X One’s claims to be obvious, and remands. X One’s patent relates to the exchange of location information between mobile devices. The Board erred as a matter of law when it held that substitution of one technique for another one was nonobvious, where the record established that these were the “only two identified, predictable solutions” for a known issue. Op. at 10. Such a substitution “would have been a ‘predictable variation’ of [Uber’s main reference] as written, using a technique that was known to one of ordinary skill in the art.” Id. (quoting KSR, 550 U.S. 398 (2007)). The opinion describes CRFD Research, 876 F.3d 1330 (Fed. Cir. 2017), as analogous. The Board’s logic that substituting the two technologies would require “wholesale modification” of the primary reference was not on point. “Even if the two proposed solutions would have required different implementation, that does not negate the fact that [they] are two known, finite, predictable solutions for solving the same problem which, consistent with precedent, renders obvious the challenged limitation.” Op. at 12.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); DESIGN CHOICE