By Eugene Lisovskiy - Own work, CC BY-SA 4.0,

Federal Circuit Finds “Obvious” Solution Not Patentable

Patent rejected
Because it’s too obvious –
Federal Circuit

Software-related patents are often rejected based on 35 U.S. Code § 101. Software often fails to qualify for patentability under § 101 because the claimed invention is merely an abstract idea performed by a computer.

However, in a recent case the Federal Circuit found a claimed software invention unpatentable because it was obvious.

Uber Techs., Inc. v. X One, Inc. arose out of an appeal from a final decision of the Patent Trial and Appeal Board (PTAB).

X One owned a patent for a “Buddy Watch application” that allows a mobile device user to add other mobile device users to her “Buddy List” and then see the locations of her buddies displayed on a map.

Uber sought inter partes review to invalidate the patent.

Under 35 U.S. Code § 103,

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

As the US Supreme Court noted, “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”

In this case, according to the Federal Circuit,

The difference between server-side plotting and terminal-side plotting amounts to a design choice between whether to plot locations before transmitting location information (server-side plotting) or after transmitting location information (terminal-side plotting). A person of ordinary skill would therefore have two predictable choices for when to perform plotting, providing them with a simple design choice as to whether to plot server-side or terminal-side.

Thus, the court found that the PTAB had erred in not finding that aspect of the claimed invention obvious.

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