Design Choice and Obviousness under 35 U.S.C. § 103 at the Federal Circuit: Uber Tech., Inc. v. X One, Inc.
The Federal Circuit has reversed a PTAB determination of non-obviousness because, where the PTAB found no motivation to combine references, the Federal Circuit found a combination of references presented a simple design choice between a predictable, finite number of possibilities. Uber Tech., Inc. v. X One, Inc., No. 2019-1164 (May 5, 2020) (Chief Judge Prost, joined by Judges Dyk and Wallach) (precedential). This is an interesting case for patent applicants, patent owners, and patent challengers alike. On the one hand, for patent examiners and patent challengers, this decision reinforces the looseness of the requirement to show a reason to combine references to show obviousness under 35 U.S.C. § 103 and KSR Intern. Co. v. Teleflex Inc. (S. Ct. 2007). On the other hand, for patent applicants and owners, the court did identify a specific showing to support obviousness that will be unavailable in many cases. Claims of U.S. Patent No. 8,798,593 recite techniques for mobile devices to exchange location information according to a “buddy list” that could be dynamically generated and updated. Claim 1 of the ’593 patent, with the limitation at issue in this case shown in bold, is reproduced below: An apparatus, comprising: a server; a database representing… Read More »Design Choice and Obviousness under 35 U.S.C. § 103 at the Federal Circuit: Uber Tech., Inc. v. X One, Inc.