Case: 19-1164   Document: 47     Page: 1   Filed: 05/05/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

            UBER TECHNOLOGIES, INC.,
                    Appellant

                            v.

                     X ONE, INC.,
                        Appellee
                 ______________________

                       2019-1164
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 01255.
                  ______________________

                  Decided: May 5, 2020
                 ______________________

     CHRISTOPHER DRYER, Fish & Richardson PC, Washing-
 ton, DC, argued for appellant. Also represented by LAUREN
 ANN DEGNAN, MICHAEL JOHN BALLANCO, WALTER KARL
 RENNER.

    DORIS JOHNSON HINES, Finnegan, Henderson,
 Farabow, Garrett & Dunner, LLP, Washington, DC, ar-
 gued for appellee. Also represented by JEFFREY CURTISS
 TOTTEN; KEVIN D. RODKEY, Atlanta, GA; JACOB ADAM
 SCHROEDER, Palo Alto, CA.
                  ______________________
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 2                      UBER TECHNOLOGIES, INC. v. X ONE, INC.




       Before PROST, Chief Judge, DYK and WALLACH,
                      Circuit Judges.
 PROST, Chief Judge.
     Uber Technologies, Inc. (“Uber”) appeals from a final
 written decision of the Patent Trial and Appeal Board
 (“Board”) finding claims 1, 2, 5, 6, 9, and 19 of U.S. Patent
 No. 8,798,593 (“the ’593 patent”) not unpatentable as obvi-
 ous. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255,
 Paper No. 41 (PTAB Oct. 12, 2018) (“Final Written Deci-
 sion”). The Board’s conclusion was based on its determina-
 tion that the asserted prior art does not render obvious the
 limitation “software . . . to transmit the map with plotted
 locations to the first individual.” Because the Board’s deci-
 sion incorrectly applied the relevant legal principles, we re-
 verse the Board’s non-obviousness determination as to this
 limitation, and remand for the Board to analyze the re-
 maining limitations of the challenged claims in the first in-
 stance.
                                I
      X One, Inc. (“X One”) owns the ’593 patent, which is
 generally directed towards exchanging location infor-
 mation between mobile devices. The ’593 patent describes
 a “Buddy Watch application” that allows a mobile device
 user to add other mobile device users to her “Buddy List.”
 ’593 patent Abstract, col. 2 ll. 51–66. The user can share
 her location with her Buddies through the application and
 then press a “Mapit” button to see the locations of all of her
 buddies displayed on a map.

6 ll. 29–38, col. 9
 ll. 39–57. Alternatively, a user may set up “instant bud-
 dies” on a temporary basis.
 

1 ll. 63–67; see
 

3 ll. 20–25. For example, a stranded motorist may wish
 to be instant buddies with the driver of a tow truck, allow-
 ing each phone to “show the location of the other phone on
 its moving map. This allows the tow truck driver to find
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                        3



 the user tow truck customer and the user customer to know
 where the tow truck driver is.”
 

15 ll. 26–38. The
 purported novelty of the ’593 patent lies in this “two way
 position information sharing,”
 

1 ll. 30–31, the cre-
 ation of such location sharing “groups,”
 

1 ll. 62–
 63, and “temporary location sharing” that “automatically
 expires,”
 

1 ll. 63–66.
    Claim 1, which is representative for the purposes of this
 appeal, recites:
     1. An apparatus, comprising:
     a server;
     a database representing an account for a first indi-
     vidual, the account having an associated buddy list
     that identifies multiple users; and
     software responsive to a request from the first in-
     dividual to obtain a map, to obtain a last known po-
     sition 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 trans-
     mit the map with plotted locations to the first indi-
     vidual;
     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 geogra-
     phy represented by the map and to transmit to the
     first individual a map representing the changed ge-
     ography with plotted position of at least one of the
     multiple users, each in a manner not requiring con-
     current voice communications; and
     wherein the software to obtain the map is to obtain
     the map in a manner having a default geographic
     resolution.

 Id. at claim 
1 (emphasis added).
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 4                      UBER TECHNOLOGIES, INC. v. X ONE, INC.




     Uber filed a petition for inter partes review asserting
 that claims 1, 2, 5, 9, and 19 of the ’593 patent were obvious
 in view of Japanese Unexamined Patent Application Pub-
 lication No. 2002-10321 (“Okubo”) in combination with
 Japanese Unexamined Patent Application Publication
 No. 2002-352388 (“Konishi”). In a second ground, Uber
 also asserted that claims 1, 2, 5, 6, and 9 were obvious in
 view of Okubo, Konishi, and U.S. Patent No. 6,636,803
 (“Hartz”). 1
    Like the ’593 patent, these pieces of prior art generally
 describe transmitting location information between mobile
 devices, including embodiments that can be used to show
 the locations of friends or vehicles. For example, Okubo
 describes a two-way “mobile terminal position information
 communication system” which “enable[s] acquisition of the
 position information for group members belonging to the
 same group.” J.A. 1142 (English translation of Okubo).
 Mobile device users can form “groups” which allow each
 group member to see the locations of all other group mem-
 bers, and themselves, plotted on a map. J.A. 1142–43. Fig-
 ure 3 depicts an exemplary plotted map that a user may
 see, showing the user’s own location (14, annotated in
 green) as well as the locations of other group members (15
 and 16, annotated in yellow):




     1   Uber’s petition included two additional grounds of
 obviousness based on Japanese Unexamined Patent Appli-
 cation Publication No. 2002-199433 (“Makoto”), alone or in
 combination with Hartz. However, Uber has elected not to
 appeal the Board’s decision with respect to those grounds.
 Appellant’s Br. 18 n.3.
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                     5




 Appellant’s Br. 10 (annotating Okubo Fig. 3, J.A. 1145); see
 J.A. 1142, 1144.
     Konishi discloses a “vehicle allocation system” in which
 a “customer” can reserve a vehicle using their “mobile tele-
 phone set.” J.A. 1214–16. When “a customer searches for
 available vehicles” (i.e., taxis for hire), the system plots
 “the current positions of the customer and available vehi-
 cles” on a map and “transmits the map to an information
 terminal of the customer.” J.A. 1214. Once the customer
 reserves a vehicle, the user’s map also shows the location
 of that reserved vehicle, in addition to the locations of the
 user and other available vehicles. J.A. 1214–15.
      The Board instituted review but concluded in its final
 written decision that Uber had failed to demonstrate that
 independent claim 1 was unpatentable as obvious. The
 Board concluded that the combination of Okubo and Kon-
 ishi failed to render obvious the claim limitation “software
 . . . to transmit the map with plotted locations to the first
 individual.” Final Written Decision, at 24. Because this
 limitation is also present in independent claim 19, and be-
 cause all other challenged claims depend from independent
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 6                     UBER TECHNOLOGIES, INC. v. X ONE, INC.




 claim 1, the Board found all challenged claims not un-
 patentable. The Board reached the same conclusion with
 respect to the second obviousness ground consisting of
 Okubo, Konishi, and Hartz, as Uber did not rely on Hartz
 for any teachings related to this limitation.
 Id. Accord-
 ingly, 
the Board did not analyze the remaining limitations
 of claims 1 or 19, nor did it analyze the challenged depend-
 ent claims.
     Uber timely appealed. We have jurisdiction pursuant
 to 28 U.S.C. § 1295(a)(4)(A).
                              II
     “We review the Board’s factual findings for substantial
 evidence and review its legal conclusions de novo.” In re
 Cuozzo Speed Techs., LLC, 
793 F.3d 1268
, 1280 (Fed. Cir.
 2015). The Board’s ultimate determination on obviousness
 is a legal determination that we review de novo, although
 we review any underlying factual findings for substantial
 evidence. Belden Inc. v. Berk-Tek LLC, 
805 F.3d 1064
,
 1073 (Fed. Cir. 2015).
     The parties’ dispute arises from the claim limitation
 “software responsive to a request from the first individual
 to obtain a map, to obtain a last known position for multi-
 ple 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.” ’593 patent claim 1 (emphasis added).
 This limitation requires a server to first plot certain known
 locations on a map, and then, only after plotting, to “trans-
 mit the map with plotted locations” to a user’s mobile de-
 vice. It is undisputed that Konishi discloses such “server-
 side” plotting. Appellant’s Br. 2; Appellee’s Br. 19.
     Okubo, in contrast, does not expressly disclose server-
 side plotting. Rather, as the Board found, Okubo discloses
 “terminal-side” plotting, wherein the user’s mobile device
 first receives a map and only then, on the mobile device,
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                     7



 are the locations of other users plotted on the map. Final
 Written Decision, at 22.
    In its final written decision, the Board concluded that
 the combination of Okubo’s system and Konishi’s server-
 side plotting does not render obvious the server-side plot-
 ting limitation of claim 1 because such a combination “rep-
 resents impermissible hindsight,” or would be a “wholesale
 modification to Okubo.”
 Id. at 23. 
The Board also con-
 cluded that, because Okubo “sufficiently teaches the imple-
 mentation of plotting the locations of group members on a
 map on its mobile terminal,” it was “not persuaded by
 [Uber’s] assertions that one of ordinary skill would seek out
 a design choice for combination with Okubo.”
 Id.
    On appeal, 
Uber argues that these conclusions were le-
 gal error. It argues that the Board misapplied the law of
 obviousness under KSR International Co. v. Teleflex Inc.,
 
550 U.S. 398 
(2007), because server-side plotting and ter-
 minal-side plotting were both well-known design choices in
 the prior art, and therefore it would have been obvious to
 substitute one for another. It also argues that the Board
 committed legal error by refusing to consider Okubo in
 combination with other prior art on the basis that Okubo
 was “successful” in and of itself.
                              A
     The Supreme Court has “set forth an expansive and
 flexible approach” to “the question of obviousness” under
 35 U.S.C. § 103. 
KSR, 550 U.S. at 415
. The Court’s discus-
 sion of design choices and predictable variations is instruc-
 tive here.
     When a work is available in one field of endeavor,
     design incentives and other market forces can
     prompt variations of it, either in the same field or
     a different one. If a person of ordinary skill can
     implement a predictable variation, § 103 likely
     bars its patentability. For the same reason, if a
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 8                       UBER TECHNOLOGIES, INC. v. X ONE, INC.




     technique has been used to improve one device, and
     a person of ordinary skill in the art would recognize
     that it would improve similar devices in the same
     way, using the technique is obvious unless its ac-
     tual application is beyond his or her skill.

 
Id. at 417. 
Moreover,
     [w]hen there is a design need or market pressure
     to solve a problem and there are a finite number of
     identified, predictable solutions, a person of ordi-
     nary skill has good reason to pursue the known op-
     tions within his or her technical grasp. If this leads
     to the anticipated success, it is likely the product
     not of innovation but of ordinary skill and common
     sense. In that instance the fact that a combination
     was obvious to try might show that it was obvious
     under § 103.

 Id. at 421.
     As explained by Uber’s expert, and repeated in its peti-
 tion, Okubo, Konishi, and the ’593 patent all attempt to
 solve the same problem—“helping one user view and track
 the location of other users.” J.A. 161, 1061. The ’593 patent
 itself identifies this same design need as existing in the
 field of mobile location tracking at the time of its invention.
 “One of the needs business, families, and individuals have
 is the need to know where their employees, children and
 friends are.” ’593 patent col. 1 ll. 27–29. According to
 Uber’s expert, Okubo “states that it addresses the problem
 of ‘enable[ing] recognition of the mutual current positions
 of multiple mobile terminals,” J.A. 1061 (quoting Okubo at
 Abstract), and Konishi addresses “the problem of enabling
 the recognition of the mutual current positions of multiple
 terminals in the context of a user ordering a taxi service,
 letting the user see and track the location of multiple taxi
 vehicles.” J.A. 1061 (citing Konishi at Abstract). Likewise,
 as the ’593 patent notes, “[i]t is useful to be able to share
 locations among multiple cell phones” and to “have a map
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                      9



 display on cell phones which are picture enabled and to plot
 the locations on the map of persons in a group.” ’593 patent
 col. 2 ll. 3–15.
     The record reflects only two possible methods of achiev-
 ing this: server-side plotting and terminal-side plotting.
 Both were undisputedly known in the prior art. As the
 Board found, Konishi expressly discloses server-side plot-
 ting and Okubo discloses terminal-side plotting. Final
 Written Decision, at 15–16; see J.A. 1144. And as Uber ar-
 gues, a person of ordinary skill in the art would have rec-
 ognized server-side plotting and terminal-side plotting as
 the two available methods for displaying a map with plot-
 ted locations. J.A. 2751–52; see J.A. 1068–69. 2 The parties
 have identified only these two methods of transmitting lo-
 cation information to a mobile device. See Appellant’s Br.
 32; Appellee’s Br. 28; J.A. 2751–52; J.A. 2278–93. Accord-
 ingly, server-side plotting and terminal-side plotting rep-
 resent “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 pur-
 sue.” 
KSR, 550 U.S. at 421
.
    Importantly, the alleged novelty of the ’593 patent is not
 related to the differences between server-side or terminal-
 side plotting. ’593 patent col. 1 ll. 30–31 (identifying pur-
 ported novelty as “two way position information sharing”).
 The specification of the ’593 patent is entirely silent on how


     2   Uber argued before the Board that Okubo teaches
 displaying a map on the user’s device, but is silent on
 whether plotting occurs server-side or terminal-side. The
 Board disagreed and found that Okubo discloses terminal-
 side plotting. While Uber disagrees with that finding, it
 argues that the Board’s legal conclusion of non-obviousness
 cannot stand even if we credit its findings related to Okubo,
 as Konishi teaches the claimed server-side plotting. Appel-
 lant’s Br. 27 n.5. As discussed above, we agree.
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 10                     UBER TECHNOLOGIES, INC. v. X ONE, INC.




 to transmit user locations and maps from a server to a
 user’s mobile device, suggesting that a person of ordinary
 skill in the art was more than capable of selecting between
 the known methods of accomplishing this. The ’593 patent
 confirms that its invention, including any necessary plot-
 ting, “utilizes existing platforms and infrastructure” and
 does not “require development of new cell phone or PDA
 technology, nor do[es it] require development of new cellu-
 lar communication infrastructure.”
 

2 ll. 44–50.
    Accordingly, we hold that the Board erred when it de-
 termined that a person of ordinary skill in the art would
 not have been motivated to combine the teachings of Okubo
 with Konishi’s server-side plotting to render obvious the
 limitation “software . . . to transmit the map with plotted
 locations to the first individual.” This combination does not
 represent “impermissible hindsight” or “wholesale modifi-
 cation,” as the Board found. Final Written Decision, at 22.
 Rather, because Okubo’s terminal-side plotting and Kon-
 ishi’s server-side plotting were both well known in the art,
 and were the only two identified, predictable solutions for
 transmitting a map and plotting locations, it would have
 been obvious to substitute server-side plotting for termi-
 nal-side plotting in a combination of Okubo and Konishi.
 See 
KSR, 550 U.S. at 421
. The combination of Okubo with
 Konishi’s known server-side plotting is obvious because it
 would have been a “predictable variation” of Okubo’s sys-
 tem as written, using a technique that was known to one of
 ordinary skill in the art.
 
Id. at 417.
     Our prior decision in CRFD Research, Inc. v. Matal, 
876
 F.3d 1330 
(Fed. Cir. 2017), reinforces this conclusion. In
 that case, the claim in question required “transmitting a
 session history . . . after said session is discontinued.”
 Id.
 at 1334 
(emphasis added). The petitioner argued that this
 was one of only two possible solutions: either the session
 history was transmitted after the session is discontinued,
 or was transmitted before the session is discontinued, and
 a person of ordinary skill would have understood that prior
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                      11



 art systems could perform either.
 Id. at 1346. 
As here, the
 Board in CRFD found that while the claim required one
 solution (transmitting after discontinuation), a prior art
 reference taught only the other solution (transmitting be-
 fore discontinuation).
 Id. at 1344–45. 
The Board con-
 cluded that the petitioner had “failed to provide a sufficient
 reason for why” a person of ordinary skill would be moti-
 vated to modify the prior art to implement the second solu-
 tion.
 Id. at 1345 
(internal quotation marks and citation
 omitted). We reversed, explaining that “a person of ordi-
 nary skill would have two predictable choices for when the
 [prior art] would transmit browser information, providing
 a person of ordinary skill with a simple design choice” be-
 tween the two options.
 Id. at 1347 
(citing 
KSR, 550 U.S. at
 421
).
     The same is true here. The difference between server-
 side plotting and terminal-side plotting amounts to a de-
 sign choice between whether to plot locations before trans-
 mitting location information (server-side plotting) or after
 transmitting location information (terminal-side plotting).
 A person of ordinary skill would therefore have two predict-
 able choices for when to perform plotting, providing them
 with a simple design choice as to whether to plot server-
 side or terminal-side.
 Id. 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. 
KSR, 550 U.S. at 417
, 421; see also
 ACCO Brands Corp. v. Fellowes, Inc., 
813 F.3d 1361
, 1367
 (Fed. Cir. 2016) (explaining that where an “ordinary arti-
 san would . . . be left with two design choices . . . [e]ach of
 these two design choices is an obvious combination”); Wyers
 v. Master Lock Co., 
616 F.3d 1231
, 1238 (Fed. Cir. 2010)
 (holding that a motivation to combine and a reasonable ex-
 pectation of success exist when “it is simply a matter of
 common sense” to combine known elements of the prior art
 to solve a known problem).
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 12                    UBER TECHNOLOGIES, INC. v. X ONE, INC.




     X One attempts to distinguish CRFD on the ground that
 the patent owner in that case “admitted that design choices
 were ‘equally likely’” while, here, the “proposed alteration
 would result in a ‘wholesale modification’ of Okubo.” Ap-
 pellee’s Br. 38 (quoting Final Written Decision, at 23). We
 find this argument circular. The Board’s conclusion that
 the proposed combination would be a “wholesale modifica-
 tion” of Okubo was based on failure to recognize that, under
 KSR, server-side and terminal-side plotting are two
 known, finite, predictable, solutions for solving the same
 problem. Conclusions based on that legal error cannot un-
 dermine our correct application of KSR and CRFD. Even
 if the two proposed solutions would have required different
 implementation, that does not negate the fact that server-
 side and terminal-side plotting are two known, finite, pre-
 dictable solutions for solving the same problem which, con-
 sistent with precedent, renders obvious the challenged
 limitation.
     We are also not persuaded by X One’s technical argu-
 ments attempting to distinguish the systems of Okubo and
 Konishi. X One argues that Okubo uses a “low-data-rate
 differential GPS (DGPS) system” while Konishi uses a “cel-
 lular” network. Appellee’s Br. 2. As an initial matter,
 X One wrongly asserts that the Board agreed with or
 adopted these factual contentions. It did not. The Board
 merely included this argument in its recitation of X One’s
 contentions. J.A. 18. It is not clear from the record that
 Okubo is necessarily limited to DGPS systems, as X One
 contends. For example, Uber’s expert testified that the
 “mobile terminals” used in Okubo “could be cell phones.”
 J.A. 1070. And X One’s expert testified that DGPS systems
 were not ordinarily capable of “two-way communication,”
 despite X One’s contention that Okubo disclosed a two-way
 communication system. J.A. 2915.
    Ultimately, however, it does not matter whether Okubo
 teaches cellular transmission or merely DGPS transmis-
 sion, because Konishi undisputedly discloses a cellular
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 UBER TECHNOLOGIES, INC. v. X ONE, INC.                     13



 network. “[I]t is not necessary that [two pieces of prior art]
 be physically combinable to render obvious” the asserted
 patent. Allied Erecting and Dismantling Co., Inc. v. Gene-
 sis Attachments, LLC, 
825 F.3d 1373
, 1381 (Fed. Cir. 2016)
 (quoting In re Sneed, 
710 F.2d 1544
, 1550 (Fed. Cir. 1983)).
 Rather, the question is “whether the claimed inventions
 are rendered obvious by the teachings of the prior art as a
 whole.” In re Etter, 
756 F.2d 852
, 859 (Fed. Cir. 1985) (not-
 ing that whether one prior art reference can be incorpo-
 rated into another is “basically irrelevant.”) In evaluating
 the combination of Okubo and Konishi, the prior art undis-
 putedly discloses cellular networks. The precise breadth of
 Okubo’s teachings on their own, whatever it may be, does
 not alter our conclusion that, viewing the prior art as a
 whole, server-side plotting and terminal-side plotting were
 two known, finite, predictable solutions for achieving the
 transmission of maps and plotted locations, including by
 cellular networks.
     Accordingly, we find that the Board erred in determin-
 ing that the combination of Okubo and Konishi does not
 render obvious the limitation “software . . . to transmit the
 map with plotted locations to the first individual.” 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.
                               B
     Because we conclude that the limitation is obvious for
 the reasons discussed above, we do not reach Uber’s alter-
 native argument that the Board erred by failing to consider
 Okubo in light of other prior art because it was “successful”
 on its own.
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 14                     UBER TECHNOLOGIES, INC. v. X ONE, INC.




                              III
      For the reasons stated above, we reverse the Board’s
 determination as to the obviousness of the limitation “soft-
 ware . . . to transmit the map with plotted locations to the
 first individual” in view of Okubo and Konishi. We there-
 fore remand for the Board to evaluate in the first instance
 the remaining limitations of the claims challenged in
 grounds 1 and 2 of Uber’s petition.
                REVERSED AND REMANDED
                            COSTS
      The parties shall bear their own costs.