Intellectual Property News and Reports

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 obvious. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255, Paper No. 41 (PTAB Oct. 12, 2018) (“Final Written Decision”). The Board’s conclusion was based on its determination 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 decision incorrectly applied the relevant legal principles, we reverse the Board’s non-obviousness determination as to this limitation, and remand for the Board to analyze the remaining limitations of the challenged claims in the first instance.

Download Uber Technologies Inc. v. X One Inc.