In a decision issued on May 5, 2020, the Federal Circuit
reversed a PTAB decision upholding patent claims challenged for
obviousness. Uber Technologies,
Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The
Board failed to properly apply the obviousness test of KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007), which recognized that a person of skill in the art has good
reason to pursue the use of a finite number of identified,
predictable solutions to solve a problem.
Uber challenged certain claims of U.S. Patent No. 8,798,593,
directed to plotting shared locations on map on a user's mobile
device. The Board determined that the prior art did not render
obvious the limitation "software ...to transmit the map with
plotted locations to the first individual" because one of
ordinary skill would not have been motivated to combine a prior art
reference in which the locations are plotted at the server and sent
to a user's mobile device with a reference in
