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 an account for a first individual, the account having an associated buddy list that identifies multiple users; and

software responsive to a request from the first individual to obtain a map, to obtain a last known position for multiple users identified by the buddy list, and to plot the last known location of at least two of the multiple users on the map, and to transmit the map with plotted locations to the first individual;

where the software is to request and store position information associated with cell phones of plural ones of the multiple users and where the software is to permit the first individual to change geography represented by the map and to transmit to the first individual a map representing the changed geography with plotted position of at least one of the multiple users, each in a manner not requiring concurrent voice communications; and

wherein the software to obtain the map is to obtain the map in a manner having a default geographic resolution.

There was no dispute that one reference, Konishi, disclosed “server-side” plotting of locations on a map,’ and then, only after plotting, to ‘transmit the map with plotted locations” to a user’s mobile device.” Another reference, Okubo, disclosed only “terminal-side” plotting in which a mobile device plotted other user’s locations on a map after receiving the map. The PTAB’s conclusion of non-obviousness was based on a finding that modifying Okubo with Konishi’s server-side plotting would have been “impermissible hindsight” or “wholesale modification to Okubo.”

On this background, the Court considered the appellant’s argument that “because server-side plotting and terminal-side plotting were both well-known design choices, . . . it would have been obvious to substitute one for another.” Applying KSR’s “‘expansive and flexible approach’ to ‘the question of obviousness,’” the court agreed with the appellant.

Okubo and Konishi were directed to the same problem: tracking and providing, on mobile devices, views of user locations. The record provided evidence of “only two possible methods of achieving this: server-side plotting and terminal-side plotting,” both of which “were undisputedly known in the prior art.” The alleged novelty of the ’593 patent did not hinge on which of these two methods were used, and the ’593 patent specification was in fact silent on which method to use. Therefore, the ’583 patent suggested “that a person of ordinary skill in the art was more than capable of selecting between the known methods” for transmitting “user locations and maps from a server to a user’s mobile device.”

The PTAB’s conclusion that it would not have been obvious to combine the references was therefore erroneous. Terminal-side and server-side plotting “were the only two identified, predictable solutions for transmitting a map and plotting locations,” making a combination of references using these two solutions predictable variations and obvious. The court concluded that

Because terminal-side plotting (as described in Okubo) and server-side  plotting  (as  described  in  Konishi  and  claimed  in  the  ’593  patent)  would  have  been  two  of  a  finite  number  of  known, predictable solutions at the time of the invention of the ’593 patent, a person of ordinary skill would have faced a  simple  design  choice  between  the  two,  and  therefore  would  have  been  motivated  to combine  the  teachings  of  Okubo and Konishi to achieve the limitation.

Lessons for Practice

Even though this case supported a conclusion of obviousness, it may be helpful for patent prosecutors  or owners wanting to overcome obviousness arguments. The court’s description of the facts supporting obviousness was fairly specific. Where there are a finite number of readily applicable ways to do something, and it truly is a simple matter to substitute one for the other, then design choice is appropriate to support obviousness. In many cases, however, one cannot demonstrate such a straightforward and finite set of possibilities. In other words, the facts of this case could be useful to provide a contrast, for example, to arguments that an unquantifiable number of possible modifications support design choice obviousness.

On the other hand, if you are a patent examiner or patent challenger, this case certainly reinforces that, under KSR, the prior art does not need to provide an explicit motivation or reason to combine references. If two or more prior art references have all of the elements of a claim when put together, that alone may be enough to support obviousness.