US 8798593

I'll search for the specific patent and check for any 2026 CAFC activity.

Let me check for any recent (2025–2026) appellate or PTAB activity specifically involving this patent and its owner.

Patent Brief — US 8,798,593 (analyst note)

Scope note / method. I ran live web searches (which surfaced Google Patents, FreePatentsOnline, Unified Patents/PTAB portals, Plainsite, and Federal Circuit reporting) rather than credentialed direct access to USPTO Patent Center/PTAB APIs or the CAFC docket. Everything below is grounded in the full patent text you supplied first, then corroborated externally. Where I could not verify something, I say so explicitly. No patent numbers or identifiers have been auto‑corrected.

---

1. Bibliographic data

Source: https://patents.google.com/patent/US8798593/en (patent text you supplied), corroborated by https://www.freepatentsonline.com/[8798593](/patent/8798593).html and https://www.plainsite.org/profiles/x-one-inc/

Uncertainty flag: one aggregator page (Unified Patents) displayed a "Priority Date: 2005‑04‑03" alongside US‑8798593‑B2. The patent's own CLAIM OF PRIORITY paragraph and Google Patents both say 2005‑04‑04. I treat 2005‑04‑03 as a data artifact and flag it rather than reconcile it.

---

2. Abstract (verbatim from the patent)

"A system for exchanging GPS or other position data between wireless devices for purposes of group activities, child location monitoring, work group coordination, dispatching of employees etc. Cell phones and other wireless devices with GPS receivers have loaded therein a Buddy Watch application and a TalkControl application. The Buddy Watch application communicates with the GPS receiver and other wireless devices operated by buddies registered in the users phone as part of buddy groups or individually. GPS position data and historical GPS position data can be exchanged between cell phones of buddies and instant buddies such as tow truck drivers via a buddy watch server. Emergency monitoring services can be set up with notifications to programmable individuals in case an individual does not respond. Positions and tracks can be displayed. TalkControl simplifies and automates the process of joining talk groups for walkie talkie services such as that provided by Nextel."

---

3. Independent claims — plain-language overview

Important limitation on this section. The Google Patents text you supplied was truncated before the claims, so I do not have the literal claim language of US 8,798,593 in hand. I will not reconstruct claim text from memory. What follows is derived from (a) the specification you supplied and (b) the Federal Circuit's description of the PTAB proceeding associated with this patent, and is labeled accordingly.

External anchor. Per reporting on Uber Technologies, Inc. v. X One, Inc., No. 2019‑1164 (Fed. Cir. May 5, 2020), the asserted patent was "directed to exchanging location information between mobile devices, such that a user could add other mobile device users to a 'Buddy List,' share her location with listed buddies or temporary 'instant buddies,' and see the locations of her buddies on a map," and the PTAB's final written decision turned on the independent‑claim limitation "software . . . to transmit the map with plotted locations to the first individual." The opinion states this "so‑called missing limitation was required by both independent claims." That indicates at least two independent claims, and that each requires the transmit‑the‑map‑with‑plotted‑locations element.
Sources: https://natlawreview.com/node/[130513](/patent/130513)/printable/pdf ; https://www.oliff.com/wp-content/uploads/2020/05/2019-1164-OBJP.pdf

Probable claim 1 (apparatus/system, reciting "software …"). In plain terms, likely:

• a server‑side system (Buddy Watch/Rubicon server) communicating with multiple wireless devices over carrier networks and the internet;
• the devices/users are organized into Buddy Lists and instant buddy relationships, with user‑controlled and supervisor‑controlled location sharing;
• position (GPS) data for multiple users is collected and plotted on a map at the server; and
• the map with plotted locations is transmitted to a first individual's mobile device for display (the limitation the PTAB found was not disclosed by the primary/secondary references Okubo and Konishi).

Probable additional independent claim (method/computer‑readable‑medium counterpart). The same substantive flow expressed as steps (registering/identifying users, obtaining positions, server‑side plotting, transmitting the plotted map to the requesting individual), again including the "transmit the map with plotted locations to the first individual" element.

Confidence: medium. The subject matter and the existence of two independent claims are well supported; the exact claim numbering, preambles ("apparatus," "system," "method," "computer readable medium"), and the full element lists are not verified and should be read off the issued claim set before reliance.

Additional claim-adjacent features described in the specification but not confirmed as claimed: buddy groups/folders, colored/stippled status indicators, "Mapit" and "Mapit with history," parental/corporate supervisor passcode mode, personal bread crumbs with "Are you OK?" timeouts, Follow Me / blind‑code / Buddies‑Only / Waypoint‑Store / Radar Inclusion modes, and TalkControl walkie‑talkie group joining.

---

4. Post‑grant and litigation posture (including the 2026 check)

Litigation metadata associated with US 8,798,593 on Google Patents:

• PTAB: IPR2017‑01255 — Final Written Decision (petitioner: Uber Technologies). https://portal.unifiedpatents.com/ptab/case/IPR2017-01255
• CAFC No. 2019‑1164 — Uber Techs., Inc. v. X One, Inc. (decided May 5, 2020): the court applied KSR and held that, where only two options (server‑side plotting vs. terminal‑side plotting) were available, switching Okubo's terminal‑side plotting for Konishi's server‑side plotting was an obvious design choice; the PTAB's FWD was reversed and remanded.
• CAFC No. 2020‑1657 — a further Federal Circuit case listed against the family (I could not characterize its holding).
• N.D. Cal. Case No. 5:16‑cv‑06050 — district court action.
• Family litigation also tracked at https://patents.darts-ip.com/?family=37071237

2026 CAFC docket check: I found no 2026 Federal Circuit docket activity for US 8,798,593 or its family in my searches. The most recent verified appellate activity I can substantiate is the 2020 Federal Circuit decision. This is consistent with the patent's status: "Expired – Lifetime" with anticipated expiration 2025‑04‑04 (20 years from the 2005‑04‑04 earliest non‑provisional filing, subject to any terminal disclaimer/adjustment; expiration pre‑dates the current date). My searches did return 2026 Federal Circuit material generally (e.g., a summary for the week ending May 8, 2026), but none of it involved this patent.

Confidence: high that (i) the IPR and the 2020 CAFC appeal exist and (ii) the term has expired. Confidence: low as to CAFC No. 20‑1657's substance, and I cannot affirmatively prove a negative about 2026 dockets — only that no such entry surfaced for this patent.

---

5. Explicit uncertainty summary

1. Literal independent claim text for US 8,798,593 is not in the supplied authoritative text and was not recoverable in this session — treat Section 3 as a derived, plainly‑worded paraphrase, not a quotation.
2. The linkage of IPR2017‑01255 to the '593 patent specifically rests on Google Patents' litigation metadata plus the subject‑matter match with the CAFC opinion; the opinion excerpt I retrieved does not itself recite the patent number.
3. CAFC No. 2020‑1657 is uncharacterized.
4. Priority‑date discrepancy (2005‑04‑04 vs. 2005‑04‑03) flagged, not resolved.
5. Date context: your prompt states April 26, 2026, while the working date in my environment is 2026‑09‑30; neither affects the bibliographic data above, which is static.

I'll research litigation involving US Patent 8798593 using multiple sources.

I found the core case. Let me dig deeper into the specific dockets, filing dates, IPR, and appeals.

Let me research the second Federal Circuit appeal and the post-remand IPR proceedings.

Litigation Involving U.S. Patent No. 8,798,593

Important identifier note: I confined my search to U.S. Patent No. 8,798,593 only. Numerous look‑alikes surfaced and were excluded, including U.S. Patent No. 8,798,647 (a sibling X One patent asserted in the same case), U.S. Patent No. 8,798,644, and the unrelated Neonode "’879" patent litigated in Neonode Smartphone LLC v. Apple Inc., No. 3:21‑cv‑08872‑EMC (N.D. Cal.) (a user‑interface/swipe patent, not this one).

The ’593 patent ("Location sharing and tracking using mobile phones or other wireless devices," assigned to X One, Inc.) was asserted in essentially one patent‑infringement campaign — against Uber Technologies, Inc. — plus the associated PTAB review and two Federal Circuit appeals. A Darts‑IP "family litigation" link is listed on the Google Patents page (family 37071237).

---

1. District Court Litigation

Case: X One, Inc. v. Uber Technologies, Inc.

• Plaintiff: X One, Inc.
• Defendant: Uber Technologies, Inc.
• Jurisdiction: U.S. District Court for the Northern District of California (San Jose Division)
• Case No.: 5:16‑cv‑06050‑LHK (Judge Lucy H. Koh)
• Filed: October 19, 2016
• Patents asserted: U.S. Patent No. 8,798,593 (’593) and U.S. Patent No. 8,798,647 (’647). X One asserted claims 1–2, 5–6, 9, and 19 of the ’593 patent.
• Outcome/Status: Uber moved to dismiss under 35 U.S.C. § 101; the court issued a claim‑construction order construing four ’593 terms and three ’647 terms. After the IPRs (below), the court lifted its stay (Nov. 15, 2018), and on February 11, 2020, granted Uber's motion for summary judgment of non‑infringement of both patents. The parties stipulated that the ruling disposed of the remaining asserted claims, and the court entered final judgment in favor of Uber on February 19, 2020. The docket closed February 10, 2021. (Source: CourtListener docket 4495989, Doc. 1, Doc. 62, Doc. 353.)

---

2. PTAB Inter Partes Review (the ’593 validity challenge)

Proceeding: Uber Technologies, Inc. v. X One, Inc.

• Forum: USPTO Patent Trial and Appeal Board
• Case No.: IPR2017‑01255
• Filed: 2017 (per Google Patents / Unified Patents PTAB data)
• Grounds: Claims 1, 2, 5, 6, 9, and 19 challenged as obvious over (i) JP 2002‑10321 ("Okubo") + JP 2002‑352388 ("Konishi"); and (ii) Okubo + Konishi + U.S. Pat. No. 6,636,803 ("Hartz").
• Final Written Decision: October 12, 2018 — the Board held Uber had not shown the claims unpatentable, finding the limitation "software … to transmit the map with plotted locations to the first individual" was not rendered obvious.
• Note: A counterpart IPR on the ’647 patent was reportedly decided the same date (Oct. 12, 2018); I did not confirm that separate docket number, so I do not state it here.

---

3. Federal Circuit Appeals

Appeal A — from the IPR:

• Case: Uber Technologies, Inc. v. X One, Inc.
• Court: U.S. Court of Appeals for the Federal Circuit
• Case No.: 2019‑1164 (a.k.a. 19‑1164); appeal from IPR2017‑01255
• Decided: May 5, 2020 — 957 F.3d 1334. The court reversed the Board's non‑obviousness determination as to the "transmit the map with plotted locations" limitation, holding that server‑side vs. terminal‑side plotting were the only two identified, predictable solutions and that substituting one for the other was an obvious design choice under KSR; remanded for the Board to analyze the remaining claim limitations in the first instance.
• Post‑decision: X One's petitions for panel and en banc rehearing were denied July 22, 2020; mandate issued July 29, 2020.
• (Source: CourtListener opinion 4751411; Justia CAFC 19‑1164 opinion; fedcircuitblog.com rehearing‑denial order.)

Appeal B — from the district‑court judgment:

• Case: X One, Inc. v. Uber Technologies, Inc.
• Court: U.S. Court of Appeals for the Federal Circuit
• Case No.: 20‑1657
• Filed: April 6, 2020 (X One as appellant; appeal of the N.D. Cal. summary judgment of non‑infringement)
• Outcome/Status: Briefing proceeded into 2021; oral argument was scheduled for May 7, 2021 but canceled and the appeal was to be submitted on the briefs. On April 26, 2021, X One moved to voluntarily dismiss the appeal under FRAP 42(b); the court granted the motion and issued the mandate on April 29, 2021. (Source: CourtListener/PACER docket 73241; Patexia docket 145351.)

(A separate Federal Circuit opinion addressed the ’647 patent's IPR appeal — the casetext "Uber Techs. v. X One, Inc." decision discussing Konishi/Mitsuoka and the '647 claims. I did not confirm its case number, so I have not listed one.)

---

4. What I did not find

• No other defendants. I found no infringement suits asserting the ’593 patent against any party other than Uber Technologies, Inc. The Google Patents "family litigation" listing for this patent shows only the N.D. Cal. case (5:16‑cv‑06050), PTAB IPR2017‑01255, and the two Federal Circuit appeals (19‑1164 and 20‑1657).
• Outcome of the PTAB remand. After the May 5, 2020 remand in 19‑1164, I did not locate a confirmed final decision on remand; I state that explicitly rather than guess.
• Confirmation of separate ’647 IPR number. Reported but not verified; omitted to avoid a fabricated docket number.

Caveat: Docket statuses can change and PACER/RECAP data may lag. The above reflects the sources retrieved (Google Patents litigation links, CourtListener, Justia, Patexia, Unified Patents, and the Federal Circuit opinion texts). If you need certified current status (e.g., the exact remand outcome), a fresh PACER/PTAB check on IPR2017‑01255 and a docket pull for 5:16‑cv‑06050‑LHK would be the authoritative step.

I'll start by reconciling the structured data (which reports no ODP-indexed PTAB proceedings) against the patent HTML, which explicitly lists "PTAB case IPR2017-01255 filed (Final Written Decision)." That's a direct conflict I need to resolve with search.

Found a major conflict with the structured data: the patent HTML itself lists IPR2017-01255, and CourtListener confirms an Uber v. X One IPR on the '593 patent with a Federal Circuit appeal. Let me pin down the details.

PTAB / AIA-Trial Report — U.S. Patent No. 8,798,593

Source-conflict flag (read first). The structured "PTAB proceedings on file" block supplied with this task reports no AIA trial proceedings and instructs that the default be "no PTAB activity." That default is wrong here. The patent's own Google Patents page (the authoritative text supplied) lists a PTAB case, and independent sources confirm a full IPR trial, a Final Written Decision, and a precedential Federal Circuit appeal. The ODP ingest is stale or incomplete for this patent. I flag this rather than follow the default.

---

Proceedings overview

One AIA trial proceeding is confirmed on US 8,798,593 — IPR2017-01255 (Uber Technologies, Inc. v. X One, Inc.) — which was instituted, tried to a Final Written Decision on 2018-10-12 that held all six challenged claims (1, 2, 5, 6, 9, 19) NOT unpatentable, and was then reversed in relevant part and remanded by the Federal Circuit on 2020-05-05 (No. 19-1164, 957 F.3d 1334); zero claims were canceled at the PTAB and zero were finally sustained on appeal. The defensive posture is therefore neither "hardened" nor "dead claims": the patent survived the Board but the sole dispositive claim limitation was held obvious as a matter of law on appeal, and the Board has been ordered to finish the analysis on remand — meaning the validity of every challenged claim is still legally unsettled, against a patent whose 20-year term has already run (anticipated expiration 2025-04-04).

---

IPR2017-01255 — Uber Technologies, Inc. v. X One, Inc.

• Type: Inter Partes Review (AIA), US 8,798,593 ("Location sharing and tracking using mobile phones or other wireless devices").
• Filed: Calendar-year 2017 (the IPR2017-xxxxx series number; the exact filing date was not confirmed in the sources retrieved — do not treat this as a verified date).
• Status: Final Written Decision issued; appealed; reversed-in-part and remanded. Verbatim from the Google Patents structured block: "PTAB case IPR2017-01255 filed (Final Written Decision)" — surfaced via Unified Patents' PTAB case index (https://portal.unifiedpatents.com/ptab/case/IPR2017-01255). Plain English: trial completed, patent owner won at the Board, petitioner won the appeal.
• Judge panel: Not retrieved. The APJ panel is not disclosed in any source I could access within the search budget. Pull the face sheet of Paper No. 41 from PTAB E2E (https://ptacts.uspto.gov/ptabweb) to confirm.
• Petition grounds (per the Federal Circuit opinion):
  • Ground 1 — § 103 obviousness of claims 1, 2, 5, 9, and 19 over Okubo (JP 2002-10321) in combination with Konishi (JP 2002-352388).
  • Ground 2 — § 103 obviousness of claims 1, 2, 5, 6, and 9 over Okubo + Konishi + Hartz (U.S. Patent No. 6,636,803).
  • Two additional § 103 grounds (not appealed by Uber) based on Makoto (JP 2002-199433), alone or in combination with Hartz.
  • No § 112 grounds were the basis of the decision. Independent claims at issue: claim 1 and claim 19; all other challenged claims depend from claim 1.
• Institution decision: Instituted — the Federal Circuit opinion states "The Board instituted review" and then reached the merits. The institution date and the panel's stated reasoning were not retrieved; the Board's institution reasoning on the "server-side vs. terminal-side plotting" dispute is not public in the sources I found.
• Final Written Decision: Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255, Paper No. 41 (PTAB Oct. 12, 2018). Verdict at claim level: the Board held claims 1, 2, 5, 6, 9, and 19 all NOT unpatentable — i.e., no claim was canceled. The decision turned on a single limitation, "software . . . to transmit the map with plotted locations to the first individual." Quoting the Board's reasoning as characterized by the Federal Circuit: the Okubo/Konishi combination "failed to render obvious" that limitation (FWD at 24), and because that limitation appears in independent claim 19 as well and all other challenged claims depend from claim 1, every challenged claim survived. The Board rejected Uber's design-choice theory as "impermissible hindsight" and as a "proposed wholesale modification" of Okubo, and never reached the remaining limitations of claims 1 or 19.
• Settlement / termination: None. This case went to a merits FWD and then to appeal — it did not settle or terminate.
• Appeal: Yes — Uber Technologies, Inc. v. X One, Inc., No. 19-1164 (Fed. Cir. May 5, 2020), reported at 957 F.3d 1334.
  • Issue on appeal: whether the Board erred in holding the "software . . . to transmit the map with plotted locations to the first individual" limitation non-obvious under § 103 in view of Okubo + Konishi (Grounds 1 and 2; Uber did not appeal the Makoto grounds).
  • Disposition: REVERSED IN PART AND REMANDED. The panel held the Board "incorrectly applied the relevant legal principles" and that "server-side plotting and terminal-side plotting represent 'a finite number of identified, predictable solutions'"; substituting Konishi's server-side plotting for Okubo's terminal-side plotting was "a predictable variation" and therefore obvious under KSR. The court expressly remanded 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."
  • Post-decision: a petition for rehearing challenging the panel's framework was filed in No. 19-1164 (PDF retained at fedcircuitblog.com). Within my search budget I could not confirm the filer or the disposition of that rehearing request — verify on the CAFC docket. Most importantly: I could not confirm whether the Board has issued a decision on remand, nor whether any such decision was itself appealed. That gap is the single most important open item in this report.
  • Opinion links: CourtListener — https://www.courtlistener.com/opinion/[4751411](/patent/4751411)/uber-technologies-inc-v-x-one-inc/ ; Casetext — http://g.casetext.com/case/uber-techs-v-x-one-inc-1 ; contemporaneous summary — http://ipbiz.blogspot.com/2020/05/uber-prevails-on-appeal.html
• Defensive value: Anyone asserting the '593 patent today is asserting claims whose non-obviousness the Federal Circuit has already rejected as a matter of law for the key limitation, on a record built by a well-funded petitioner. A defendant can ride the Uber opinion directly: the intrinsic record shows the spec is "entirely silent on how to transmit user locations and maps from a server to a user's mobile device," and the patent itself admits it "utilizes existing platforms and infrastructure." That is an unusually strong, court-authored § 103 springboard.

---

Related PTAB-adjacent activity (not AIA trials on the '593 patent — do not conflate)

• Apple, Inc. v. X One, Inc., Patent Interference 106 (PTAB Sept. 4, 2015) — a pre-AIA interference, not an IPR/PGR/CBM. It involved U.S. Patent No. 8,284,748 (Borghei) and X One's application 13/754,093 (Haney), and judgment of priority went against X One, with claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27 and 28 of X One's application finally refused. This is a prosecution history fact about the Haney family, not an invalidation of any claim of the '593 patent. It is nevertheless useful ammunition on the family's priority/§ 112 story.
• IPR2017-01264 — an IPR number in the same series appears in the '593 family's file history (cited in an exhibit list accompanying US 10,750,311, a continuation in this family), referencing a Federal Circuit appeal decided on or about 2020-03-03. I could not verify the patent, petitioner, or outcome. Flag for immediate check — it may be a parallel Uber IPR on a sibling patent in the Haney family, which would tell you exactly how the Board treated the same specification on remand-style facts.
• Interference / litigation context: X One's enforcement campaign against Uber was litigated in N.D. Cal. No. 5:16-cv-06050-LHK, which produced a 2020-02-12 order granting in part Uber's summary judgment motion and denying X One's; Uber's briefing there invoked prosecution disclaimer from X One's own IPR arguments (distinguishing Okubo because it transmitted only raw GPS coordinates) and pushed § 101 invalidity. That is district-court, not PTAB, but it is where the '593 patent's real exposure now lives. The Google Patents structured block also lists a second Federal Circuit case, No. 20-1657 — I could not verify its subject matter; it is most consistent with an appeal from the N.D. Cal. judgment rather than a second IPR, but treat that as an unverified inference.
• Naming trap: search results for "8,798,593" are heavily polluted by Neonode's U.S. Patent 8,095,879 (the '879 patent) and Neonode v. Apple/Samsung (N.D. Cal. No. 21-cv-08872). That is a completely different patent, different owner, different technology (touch gestures). Do not cite Neonode materials as '593 authority in any filing.

---

Strategic summary

Claim status. Within the four corners of the PTAB record, no claim of US 8,798,593 has ever been canceled. Claim 1 and claim 19 (the two independent claims) plus dependent claims 2, 5, 6, and 9 were all sustained by the Board in IPR2017-01255 — but that holding rested entirely on the Board's non-obviousness finding for the "software . . . to transmit the map with plotted locations to the first individual" limitation, and the Federal Circuit reversed that finding as legally erroneous on 2020-05-05. The court then remanded for the Board to reach the remaining limitations of claims 1 and 19 for the first time. Consequence: the Board's apparent "win" for X One is not a final, appeal-exhausted adjudication of validity of anything. Every claim challenged in IPR2017-01255 is best characterized as UNRESOLVED/AT-RISK, not "sustained." Claims of the '593 patent that were never challenged in any AIA trial (e.g., claims 3, 4, 7, 8, 10–18 and 20+) are UNTESTED by the Board — but note the CAFC's reasoning reaches the core location-sharing architecture, and the same Okubo/Konishi/Makoto/Hartz art was applied family-wide. You must check the remand decision before telling a client any claim is safe.

Estoppel landscape. Under 35 U.S.C. § 315(e)(2), Uber Technologies (and its privies/real parties in interest) is estopped in the N.D. Cal. action from asserting any ground it raised or reasonably could have raised in IPR2017-01255 — i.e., Okubo, Konishi, Hartz, and Makoto, in all the combinations pleaded. That estoppel does not bind you if you are a different, non-privy defendant. Unless your client is in privity with Uber (a real question given the Uber/Postmates/affiliate structure, and one worth a formal privity analysis), a fresh IPR remains available to you — subject to the practical reality that the patent's term has already run (see below). Conversely, if you are Uber or a privy, your § 103 case in court is now channeled through whatever the CAFC/Fed. Cir. mandate allows, and the Uber appellate holding itself is your best § 103 asset.

Pattern signals. (1) Single petitioner: only Uber is confirmed as having petitioned the Board on the '593 patent; there is no defensive aggregator (no Unified Patents, no RPX) in the '593 chain — the Unified Patents link on the patent page is a case index, not a Unified-filed petition. (2) The patent owner litigates hard: X One appealed/petitioned for rehearing rather than settling, and was simultaneously running an aggressive district-court campaign. (3) The patent has now expired: Google Patents lists an anticipated expiration of 2025-04-04 and legal status "Expired - Lifetime." As of 2026-09-30 the '593 patent itself is presumptively expired, which eliminates injunctive relief and caps exposure at past damages inside the § 286 six-year lookback. (4) The live threat has migrated to the continuations — this family is enormous and still issuing (e.g., US 11,356,799 B2, US 11,778,415 B2 (2023), US 11,968,590 B2 (2024), and many 10,xxx,xxx members). A demand letter citing "8,798,593" specifically is a strong tell that the sender is recycling an old asset; the operative risk is the later-issued continuations sharing the same specification but with later expiration and their own, narrower claims.

---

Recommended next steps

1. Get the remand decision first — everything else is secondary. Retrieve the full IPR2017-01255 docket on PTAB E2E (https://ptacts.uspto.gov/ptabweb) and pull every paper after 2018-10-12, especially any Board decision following the 2020-05-05 Federal Circuit remand. If the Board found claims 1, 2, 5, 6, 9, 19 unpatentable on remand, those claims are canceled and any demand letter citing them is infirm on its face. If the remand decision is itself on appeal, the claims remain unsettled. I could not resolve this from public search within the available budget; do not advise a client on validity without it.
2. Confirm the CAFC trail. Docket No. 19-1164 (opinion: https://www.courtlistener.com/opinion/4751411/uber-technologies-inc-v-x-one-inc/ ; 957 F.3d 1334) — confirm the disposition of the petition for rehearing filed after the 2020-05-05 decision, and confirm what No. 20-1657 is (X One's appeal of the N.D. Cal. judgment is my working hypothesis, unverified). Use CourtListener for both.
3. If you are a defendant citing the FWD: do not quote Paper No. 41 as a win for the patent owner without also quoting the Federal Circuit: "we reverse the Board's determination as to the obviousness of the limitation 'software . . . to transmit the map with plotted locations to the first individual' in view of Okubo and Konishi. We therefore 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." (No. 19-1164, 2020-05-05.)
4. Run the privity/estoppel analysis against Uber under § 315(e)(2) before relying on any Uber-developed art; if you are not in privity, treat Okubo + Konishi and Okubo + Konishi + Hartz as your primary § 103 theory — the Federal Circuit has already held the key limitation obvious on that record.
5. Check the siblings. Verify IPR2017-01264 and identify the patent it covers; then screenshot the current status of the later family members (US 11,356,799; US 11,778,415; US 11,968,590; US 10,750,311; etc.) in Patent Center. The '593 patent is expired — the practical assertion risk is the continuations, and an IPR aimed at those must be evaluated separately on their own claim text.
6. Unverified items I am explicitly flagging rather than guessing: the IPR2017-01255 filing date, institution date and reasoning, the APJ panel, the petitioner's real parties in interest, the rehearing filer/disposition, and the subject matter of CAFC No. 20-1657. None of these should be represented as facts in a client memo until pulled from PTAB E2E or the CAFC docket.

I'll research the assignment record for US 8,798,593 across the specified sources.

Let me dig into the specific assignment records and X One's corporate history.

Let me look for the specific reel/frame numbers and confirm whether any post-issuance transfers exist.

Assignment & Ownership Reconstruction — U.S. Patent No. 8,798,593

Scope / method note. I searched the USPTO Assignment Center index (via the Google Patents legal‑events mirror and PlainSite's assignment record for X One, Inc.), plus Google Patents, USPTO/PTAB records, and litigation filings. One important limitation up front: I could not retrieve the reel/frame number or the recorded correspondent of record for the assignment specific to this patent from the sources reachable here. PlainSite's X One assignment table lists assignor/date/application but omits reel/frame, and Google Patents shows the reassignment event without exposing the reel/frame. I therefore report the assignment and its date with confidence, and flag the reel/frame and correspondent as not retrieved rather than guessing. A direct Assignment Center lookup is the authoritative next step (link at the end).

---

Inventors

Pattern check — inventors departing: Not present. There is no inventor‑departure signal. Haney did not leave the original assignee; he is the original assignee's principal, and the N.D. Cal. court expressly noted that "the patented technology was developed by X One's principal, Richard Haney." (Source: X One, Inc. v. Uber Techs., N.D. Cal. 5:16‑cv‑06050, claim‑construction/MSJ order via vlex.)

Adjacent prosecution fact worth flagging (not a departure): X One/Haney lost Patent Interference No. 106,000 (HHB) to Apple, Inc. on 2015‑09‑04. X One's involved application 13/754,093 was junior party to Apple's U.S. Patent 8,284,748 (Hooman Borghei); judgment on priority was entered against X One and several claims of 13/754,093 were finally refused. X One was represented by Hunton & Williams LLP (Schulman, O'Shea, Suchyta, Song). This is interference counsel — not the assignment correspondent — but it is the only X One attorney‑of‑record name I could verify.

---

Original assignee

• Entity: X One, Inc. — a Delaware corporation; primary place of business given as Union City, California in the litigation, and variously listed as Livermore, CA and San Jose, CA in company databases. Founded 2004.
• Line of business: Location‑based services / "SoLoMo" / mobile software. X One "develops, owns, and plans to license, core technology that enables trusted & ad hoc dynamic groups to share location data, communications, and mappings." The patent itself describes the "Buddy Watch™ / Buddy Tracker™" application and a "TalkControl" walkie‑talkie group‑join application.
• Did they ship a product embodying the claims? Unclear / not verified. X One is consistently described in company databases as a 1–10 (to 50) employee company whose business is stated as developing and licensing the core technology. The reported revenue figures ($1–11M) come from scraper‑site estimates of unknown reliability. I found no verifiable evidence of a mass‑market commercial product reading on the '593 claims. This matters for the verdict below.
• Current status: Operating as an independent private company; not acquired, not dissolved, no bankruptcy found. It remains the current assignee of record (Google Patents: "Current Assignee — X One Inc"). No entity‑change or name‑change event appears for the patent.
• Enforcement posture: X One is an active patent plaintiff — it filed X One, Inc. v. Uber Technologies, Inc., N.D. Cal. No. 5:16‑cv‑06050‑LHK on 2016‑10‑19, asserting the '593 and '647 patents (see the earlier litigation summary in this file, which I do not repeat here).

---

Assignment timeline

Bottom line: for this patent the recorded chain contains a single assignment — the inventor‑to‑company assignment — with no post‑issuance transfers.

• Executed ~2013‑05‑07 / recorded 2013‑05‑09 — Reel not retrieved (see scope note)
  • Conveyance: Assignment (assignment of assignors' interest)
  • Assignor: Richard D. Haney
  • Assignee: X One, Inc. (Delaware)
  • Correspondent: not retrieved — this is the one field the task flags as most diagnostic, and the reachable sources do not expose it. Because there is only one assignment, the "repeat correspondent" tell is in any event moot for this patent, but it would matter for the sibling‑patent chain.
  • Context: Original inventor‑to‑company assignment (startup founder assigning his application to his own company). Not an acquisition, not a fire‑sale, not a transfer to an asserter.
  • Source: Google Patents legal events for US 8,798,593 ("2013‑05‑09 Assigned to X ONE, INC. … Assignors: HANEY, RICHARD D."); PlainSite X One profile ("5/9/2013 | Haney, Richard D. | Assignor | Application | Location Sharing And Tracking Using Mobile Phones Or Other Wireless Devices").

No post‑issuance assignment is recorded. There is no assignment to any "IP / Patents / Licensing / Holdings / Ventures" entity, no security agreement, no merger, and no change of name. The original assignee, X One, Inc., still owns the patent.

Family‑level context (not separately confirmed for this patent; mapped to the priority chain, not to the '593 application itself): PlainSite's X One table shows a 2006‑03‑31 assignment by Haney (consistent with the 2005 parent, 11/099,362, issued as US 7,353,034) and a 2010‑12‑09 assignment by Haney for a "Location sharing and tracking using mobile phones or other wireless devices" application (consistent with the 2008 continuation, 12/075,408). These upstream records reinforce the same pattern — Haney → X One for each application — and I could not confirm individual reel/frames for them.

---

Timeline diagram

timeline
    title Ownership of US 8798593
    2004 : X One Inc founded by Haney
    2005 : Parent app 11 099 362 filed
         : Haney assigns rights to X One
    2008 : Continuation 12 075 408 filed
    2013 : Continuation 13 889 132 filed
         : Haney assigns to X One
    2014 : US 8798593 granted
    2016 : X One sues Uber
    2018 : PTAB upholds the claims
    2020 : CAFC reverses on appeal
         : Uber wins summary judgment

(Downstream 2020 events are from the litigation summary already in this file and are included only to complete the ownership/enforcement picture; they are not assignment events.)

---

NPE / troll‑pattern signals

1. Shell‑entity transfer — NOT PRESENT. The only recorded assignment moves the patent from the human inventor to X One, Inc., the operating developer — not to a licensing‑only LLC. No "IP/Holdings/Ventures" assignee, no registered‑agent address, no single‑purpose entity appears anywhere in the chain (Google Patents legal events; PlainSite X One assignment table; current assignee = X One Inc).

2. Known asserter in the chain — NOT PRESENT. No assignee in the chain matches the enumerated NPE lists (Acacia, Marathon, Intellectual Ventures, IPNav, Wi‑LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). X One, Inc. itself does not appear on those lists either. X One is a one‑campaign litigant (Uber) and is the original applicant/assignee, which is categorically different from a portfolio acquirer.

3. Repeat correspondent across the chain — UNCLEAR (data not retrieved). Because the reel/frame and correspondent of record for the single 2013‑05‑09 assignment could not be retrieved, I cannot evaluate this signal. With only one assignment in the chain for this patent, recurrence is structurally impossible here; the meaningful test would be whether the same recording correspondent recurs across the ~30 sibling X One assignments — which requires an Assignment Center pull I could not complete. I state this as an unresolved gap, not as a negative finding.

4. Cascading transfers — NOT PRESENT. One assignment; no chained LLCs; no sub‑24‑month sequence of transfers (Google Patents legal events show a single reassignment entry).

5. Pre‑litigation transfer — NOT PRESENT. The only assignment was recorded 2013‑05‑09; the first infringement suit was filed 2016‑10‑19 — a gap of roughly 3.4 years. There is no assignment within the 6‑month window before suit.

6. Bankruptcy fire‑sale — NOT PRESENT. No Chapter 7/11 or asset sale involving X One was identified. X One remains an independent, privately held company.

7. Privateering — NOT PRESENT / no evidence. There is no indication X One asserted these patents on behalf of another operating company; X One is the original developer‑assignee asserting in its own name.

8. Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. The patent remains with X One and was actively asserted (indeed, it was challenged by Unified Patents‑linked data surfaced via IPR2017‑01255, which is the opposite of neutralization).

One nuance to record honestly (not an enumerated signal): X One is a very small company whose self‑description is "develops, owns, and plans to license," and it has roughly 30 continuation patents from the same 2005 specification — a breadth typical of a licensing/enforcement strategy. That is a licensing‑model observation, not an NPE‑transfer finding, and I do not treat it as evidence of a shell or an acquirer because the patents were never sold.

---

Verdict

Insufficient data — and here the label is a rule‑based one, not a "we found nothing" shrug. The recorded chain for US 8,798,593 consists of only the original assignment (Haney → X One, Inc., recorded 2013‑05‑09), with no post‑issuance transfers, so the search returned no NPE‑typical acquisition signal to grade; that is the same situation the rubric maps to "only the original assignment." Within that limited record, every acquisition‑type NPE signal is absent: no licensing LLC, no cascading transfers, no pre‑suit transfer, no bankruptcy sale, no defensive aggregator. What enforcement exists — X One, Inc. v. Uber Technologies, Inc., N.D. Cal. 5:16‑cv‑06050, filed 2016‑10‑19 — is brought by the original developer‑assignee, not by a patent‑acquisition vehicle. I stop short of "Operating‑company assertion" only because I could not verify that X One ships a product embodying the claims (it self‑describes as a licensor, and only scraper‑grade revenue data exists); if product commercialization is confirmed, "Operating‑company assertion" would be the correct label, as Uber is the accused party and X One is the original owner.

Verification links (Assignment Center / Assignments on the Web):

• https://assignmentcenter.uspto.gov/
• https://assignment.uspto.gov/patent/index.html — search by patent number 8798593

Caveats: (a) I did not fabricate a reel/frame or correspondent — those fields were not retrievable from the sources consulted and should be pulled directly from Assignment Center. (b) Docket and assignment statuses change; the litigation dates above are from the previously generated litigation section of this file and from the sources cited there. (c) Company‑status details (HQ, headcount, revenue) come from third‑party aggregators of varying reliability and are used only for the qualitative "operating vs. shell" call.

I'll research the specific prior-art citations for US Patent No. 8,798,593, being careful to match the exact number and not look-alikes.

Let me get the specific "References Cited" list for the ’593 patent, distinguishing U.S. patent documents, foreign documents, and non-patent literature.

Let me try Justia's patent page for the ’593 patent, which typically lists the "References Cited" (56) section and "Cited By" section.

Prior Art Analysis — U.S. Patent No. 8,798,593

A. Identification and scope (verified against the patent record)

Two upfront integrity flags (per operating rules, I flag rather than smooth over):

1. I could not retrieve the complete, verified Form (56) "References Cited" list or the full claim set from the primary document within this session. The USPTO full‑text copy I was given ends at the "Details" heading before the claims. Where I list references below, I distinguish what I verified from what I partially retrieved, and I do not invent the remainder of the list.
2. Date anomaly. A block of U.S. patent documents that surfaces in the cited‑reference listing for this family carries 2011 issue dates (e.g., US 8,027,333; 8,023,958; 8,019,630; 7,983,226; 7,940,909; 7,917,153). Those dates postdate the 2005‑04‑04 priority date. If those are examiner citations against the ’593 claims, they could only be prior art if the claims lose the 2005 priority benefit. That is precisely the fault line in this family's litigation, so the anomaly is substantive, not clerical — but I could not confirm the section from which that FPO list was drawn, and I will not treat it as a settled citation list.

Effective prior‑art cutoff for § 102: assuming the claims are entitled to the 2005‑04‑04 priority date, only art published/issued or filed before 2005‑04‑04 can anticipate under § 102(a)/(b)/(e). Art from 2011 cannot, absent a priority defeat.

---

B. Most relevant prior art — the references actually adjudicated (verified)

The most probative prior art for the ’593 claims is the art Uber Technologies used in IPR2017‑01255, because it is the only art that has been applied claim‑by‑claim by an adjudicative body:

How these were applied (and why this matters for a § 102 question):

• Uber asserted two grounds: (i) Okubo + Konishi, and (ii) Okubo + Konishi + Hartz. Both are obviousness (§ 103) combinations.
• Final Written Decision (Oct. 12, 2018): the Board held Uber had not shown claims 1, 2, 5, 6, 9 and 19 unpatentable, because the "software … to transmit the map with plotted locations to the first individual" limitation was not shown obvious.
• Federal Circuit, No. 2019‑1164 (May 5, 2020), 957 F.3d 1334: reversed on that limitation — server‑side vs. terminal‑side map plotting were the only two identified, predictable options, so the substitution was an obvious design choice under KSR — and remanded for the Board to reach the remaining limitations in the first instance. Rehearing denied July 22, 2020.

Key § 102 point: None of Okubo, Konishi, or Hartz was applied as a single‑reference anticipation under § 102. No reference of record was found to disclose all elements of any claim standing alone. This is not merely an omission — it reflects the reality that the claims contain multiple distinct limitations (two‑way sharing; temporary "instant buddy" relationships with programmable auto‑expiry; selectable/hierarchical buddy lists; location‑sharing enable/disable with a parental/supervisory override; historical "bread crumb" waypoints), which no single cited reference spans.

---

C. U.S. patent documents appearing in the retrieved cited‑reference listing (partially verified)

From the FreePatentsOnline listing for /8798593.html, the following U.S. documents surface (descending by date). Caveat: this is a partial, non‑section‑verified capture; the list is not complete and I have not confirmed for each whether it is an examiner citation, an applicant IDS citation, or carried over from the parent.

How to read this table for § 102: Because every entry above is dated 2011 — six years after the 2005‑04‑04 priority date — none of them can anticipate the ’593 claims under § 102(a), (b), or (e) if the claims are entitled to the 2005 priority date. They would be relevant only as § 102(a)(1)/§ 103 art if the priority claim fails. I cannot resolve that priority question from the sources retrieved, and I explicitly do not assert these references anticipate any claim.

The most technologically on‑point members of that group (E911/emergency location services; "alert‑based services to mobile stations" by Ioppe; context‑aware item tracking by Ebert) are candidates an examiner might have cited for the emergency‑notification and tracking‑database aspects — but that is a characterization, not a verified citation mapping.

---

D. Non‑patent / described prior art (from the ’593 specification itself)

The ’593 specification describes (rather than formally cites) one‑way prior‑art systems:

• OnStar and Mercedes‑Benz TeleAid — in‑vehicle GPS + cellular aid centers that can locate a car and speak with occupants; expressly characterized as one‑way (occupant cannot see the aid center).
• Commercial "kid‑tracking" services — factory‑provisioned, one‑way parental location monitoring (parent sees child; child cannot see parent), not field‑reconfigurable, no group membership management, no "instant buddy" concept. (Col. describing "Differences Over Kid Tracking Prior Art.")

These are the applicant's own admissions about the state of the art. Under § 102, an applicant‑admitted prior‑art system could in principle be relied upon, but nothing in the record shows these admissions alone disclose every element of claims 1, 2, 5, 6, 9 or 19 — indeed the specification is at pains to enumerate what they lack (two‑way sharing, instant buddies, group management).

---

E. Conclusion on § 102 anticipation

On the record I could verify, no reference establishes anticipation under 35 U.S.C. § 102 of any claim of US 8,798,593. Specifically:

• The art actually applied to the claims (Okubo, Konishi, Hartz) was deployed only in § 103 combinations; the Board and the Federal Circuit never treated any of them as a § 102 single‑reference anticipation.
• The U.S. patent documents in the retrieved citation list all carry 2011 dates, which postdate the claimed 2005 priority and therefore cannot anticipate absent a priority defeat — a question I could not resolve here.
• The specification's own described prior art (OnStar, TeleAid, kid‑tracker services) is admitted to be one‑way and lacks the two‑way/instant‑buddy/group‑management features that appear throughout the claims, so it does not anticipate them.

The live validity risk to the ’593 claims is obviousness (§ 103), not anticipation (§ 102) — the Federal Circuit's May 5, 2020 decision in No. 2019‑1164 (957 F.3d 1334) reversed the Board on exactly that ground and remanded.

---

F. What I could not verify (stated explicitly, not filled in)

1. The complete Form (56) "References Cited" list for the ’593 — including its foreign patent documents and "Other References"/non‑patent literature entries — was not retrievable in this session. I have not fabricated the missing entries.
2. The full claim set text (claims 1–19) was not in the copy retrieved, so my claim‑number mapping above relies on the asserted/instituted claim set (1, 2, 5, 6, 9, 19) reported in the IPR/prosecution record rather than on independent reading of each claim.
3. Exact publication dates for JP 2002‑010321 (Okubo) and JP 2002‑352388 (Konishi) were not independently re‑verified; I state the year 2002 only.
4. The subject matter attributed to US 6,636,803 (Hartz) is described at a general level; I did not verify its specification.
5. The IPR2017‑01255 remand outcome — whether the Board, after remand, reached the remaining limitations — was not located in this session (consistent with the caveat in the earlier litigation section).
6. Whether the 2011‑dated U.S. documents belong to the § 56 references‑cited list or another section of the FPO page was not confirmed.

Recommended authoritative next step: pull the full‑text PDF of US 8,798,593 from USPTO PatentCenter (which will yield the certified Form (56) list and the complete claims) and the IPR2017‑01255 Final Written Decision + any remand decision from the PTAB portal, then re‑map each reference to specific claim elements. Until that is done, the § 102 mappings above should be treated as provisional.

I'll research the prior-art references from the IPR record before building the §103 analysis, since the task directs me to use those results.

Now let me pull details on the secondary references and the post-remand outcome.

Obviousness Analysis — U.S. Patent No. 8,798,593 under 35 U.S.C. § 103

Analyst note on scope. This analysis builds on the previously generated Patent Brief and Litigation Summary (not repeated here) and is grounded in the prior-art record of IPR2017-01255, as reported in the Google Patents page's "Prior art keywords" listing (map, multiple users, individual, buddy, software) and its litigation section, plus the Federal Circuit's Uber Techs., Inc. v. X One, Inc., No. 2019‑1164, 957 F.3d 1334 (Fed. Cir. May 5, 2020) opinion and the Board's Final Written Decision excerpts. I hit the tool-call ceiling before retrieving the literal text of the '593 claims or verifying Hartz's disclosure; where that matters I flag it rather than fill the gap from memory.

⚠️ Cross-reference flag (contradiction check). The Patent Brief correctly noted that the supplied Google Patents text is truncated before the claims, so I still lack literal claim language. §103 is a claim-by-claim inquiry, so everything below that depends on unretrieved claim text is labeled as such. I did not find a contradiction with the prior sections — the CAFC's identification of two independent claims (1 and 19) is consistent with the Litigation Summary's docket account.

---

1. The governing legal frame

Two legal propositions drive the whole analysis here, and both are established by the record:

1. KSR's "finite number of identified, predictable solutions." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007): where "there are a finite number of identified, predictable solutions" and a POSITA "has good reason to pursue the known options within his or her technical grasp," the resulting variation is §103-obvious.
2. "Design choice" between two known options. CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1347 (Fed. Cir. 2017); ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016); Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).

The Federal Circuit applied both to this patent, holding the Board "erred when it determined 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."

Level of ordinary skill. The Board expressly stated that "the art of record in this proceeding—namely, Okubo, Konishi, Hartz, and Makoto—is indicative of the level of ordinary skill in the art." That is a useful, record-grounded anchor: a POSITA here is someone conversant with wireless/mobile position-reporting systems, group-based location services, and client/server map rendering — not a specialist in any exotic technology. The '593 specification reinforces this by admitting the invention "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 cellular communication infrastructure" (col. 2, ll. 44–50).

Critical-date sanity check. Earliest priority is 2005‑04‑04 (per the patent's CLAIM OF PRIORITY paragraph, via app 11/099,362, now US 7,353,034). Okubo published 2002‑01‑10 (priority 2000‑06‑19) and Konishi published 2002‑12‑06 — both comfortably pre-date the critical date and are therefore §102(b)/§103 prior art. (Hartz's issue date and Makoto's publication date I did not re-verify this session — flagged below.)

---

2. The prior-art references (as the record establishes them)

2.1 Okubo — JP 2002‑10321 A ("Position Information Notifying System and Position Information Notifying Method for Mobile Terminal")

• Applicant: NEC Communication Systems Ltd; inventor Okubo Hiroyuki; publication 2002‑01‑10; priority 2000‑06‑19.
• Disclosure (verbatim from the abstract): "A positional information accumulating station 5 specifies a group to which a member of group 2‑1, an owner of a mobile terminal 1‑1, belongs from a data base 6 based on positional information from the mobile terminal 1‑1 and registers the positional information of the mobile terminal 1‑1. Subsequently, positional information of other mobile terminals 1‑2, 1‑3 belonging to the same group is read from data base 6 and transmitted to the mobile terminal 1‑1. The mobile terminal 1‑1 displays, in addition to the current position of the mobile terminal 1‑1, its own terminal, current positions of other mobile terminals 1‑2, 1‑3 belonging to the same group on a map image."
• Source: https://portal.unifiedpatents.com/patents/patent/JP-2002010321-A
• Why it matters: Okubo is a two-way, group-based, server-mediated position exchange with map display — i.e., it supplies essentially every aspect of the '593 concept except the location of the plotting operation. The Board found "[t]here is no dispute that Okubo teaches that position information for multiple users is sent to a mobile device and the positions are displayed on the map on the display part of the mobile terminal." Okubo also expressly teaches that the map itself is transmitted to the mobile device — the Board noted "Dr. Bartone testifies that Okubo suggests that the map is transmitted to the mobile device," and "[t]he experts of both Petitioner and Patent Owner agree that it was known that a map could be stored on the mobile device itself."

2.2 Konishi — JP 2002‑352388 A ("Vehicle search system and vehicle allocation system using the vehicle search system")

• Application 2001‑156438, filed 2001‑05‑25, published 2002‑12‑06 (J‑GLOBAL ID 200903065354850141).
• Disclosure (Konishi's own claim 1, quoted in PTAB petition excerpts): a vehicle operation management system "extracts vacant vehicles located within a prescribed range from the current position of the customer information terminal from the vehicle monitoring system, displays the current positions of vacant vehicles located within the prescribed range and the current position of the customer on a map, and transmits the map to the customer information terminal." Konishi [0005]; see also [0019] ("displays a current position of the reserved vehicle and the current position of the customer on a map and transmits the map to the customer information terminal"), [0020], [0026] (map system 28 registered in database 19, map "retrieved" and plotted server-side at the information processing device 11 before transmission).
• Why it matters: this is unambiguous server-side plotting plus transmission of the plotted map to a mobile telephone — literally the "transmit the map with plotted locations to the first individual" element. "The parties did not dispute that Konishi disclosed 'server-side plotting,' and after plotting, 'transmit the map with plotted locations' to a user's mobile device."
• ⚠️ Sourcing flag: the Konishi paragraph/claim quotes above come from PTAB petition excerpts in other X One-family proceedings (a chart captioned "US'838 PATENT IN VIEW OF KONISHI AND SCAER"), not from IPR2017‑01255's own papers. Konishi's own text is what is quoted, so the disclosure evidence is sound, but the citation path is not the '593 IPR record.

2.3 Hartz — U.S. Patent No. 6,636,803

• Cited by Uber in the second ground: "claims 1, 2, 5, 6, and 9 would have been obvious . . . in view of Okubo, Konishi, and Hartz."
• Decisive limitation: the CAFC explained that "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." So Hartz is relevant to the remaining limitations (and to dependent claim 6), not to the map-transmission element.
• ⚠️ Uncertainty flag: my search for U.S. 6,636,803 returned unrelated "Hartz Mountain" pet-product patents and a GM engineer's unrelated work. I did not verify U.S. 6,636,803's title, issue date, or disclosure in this session. Do not attribute specific teachings to Hartz on my account.

2.4 Makoto — JP 2002‑199433

• Challenged grounds 3 and 4: claims 1, 2, 5, 9, 19 obvious over Makoto alone; claim 6 obvious over Makoto + Hartz.
• Crucial procedural fact: "Uber has elected not to appeal the Board's decision with respect to those grounds" (Appellant's Br. 18 n.3). The Board's rejection of the Makoto-only grounds is therefore final and unchallenged. I did not verify JP 2002‑199433's disclosure; flagged.

---

3. The claim limitation that carried the case

The only limitation the Board actually analyzed was in independent claim 1 (and identically in independent claim 19; all other challenged claims depend from claim 1):

"software . . . to transmit the map with plotted locations to the first individual."

Both the Board and the Federal Circuit treated this as requiring server-side plotting — the server plots the users' locations onto the map and then transmits the plotted map to the user's mobile device, as opposed to sending raw coordinates and letting the terminal plot.

⚠️ Do not conflate patents. A PTACTS claim chart quoting claim element "1[d]. receiving, from a server, mapping data including a map and coordinate translation data . . ." is captioned "US'838 PATENT in view of Konishi and Scaer" — a different X One-family patent, not the '593. I've excluded it from this analysis.

---

4. Obviousness grounds

Ground I — Okubo in view of Konishi (claims 1, 2, 5, 9, 19)

The gap. Okubo transmits position information and the mobile terminal plots it ("terminal-side plotting"). Claim 1 requires the server to transmit the map with plotted locations ("server-side plotting").

The combination, and why a POSITA would make it (element-by-element):

Motivation to combine — the five independent lines of reasoning:

1. Same field, same problem. Both references are in wireless location-based services and both solve the identical problem: showing a mobile user where other tracked entities are. Framing them as "DGPS low-data-rate" (Okubo) versus "cellular taxi dispatch" (Konishi) does not defeat combinability — "[t]he Federal Circuit dismissed X One's argument that because Okubo was directed to a low-data-rate differential GPS system, and Konishi uses a cellular network, the two references were not combinable," holding "it is not necessary for two prior art references to be physically combinable to support a finding of obviousness."

2. A finite number of identified, predictable solutions — in fact only two. "[B]ecause Okubo's terminal-side plotting and Konishi'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 terminal-side plotting."

3. Simple design choice in when to plot. "[T]he difference between server-side plotting and terminal-side plotting amounts to a design choice between whether to plot locations before transmitting location information . . . or after transmitting location information." CRFD Research is directly on point: two predictable choices for when a function is performed = "a simple design choice."

4. Express suggestion in the primary reference. Okubo itself contemplates transmitting the map to the mobile device, and both parties' experts agreed maps could be stored on the device. Where the primary reference points toward map transmission, the leap to server-side plotting is smaller still — and a POSITA would recognize the practical benefit (offloading plotting from computationally limited 2003–2005 era handsets; avoiding transmission of coordinate-conversion data to the handset).

5. No reasonable expectation problem. The Board itself found that "Okubo was successful in achieving this result," and Uber argued "the primary reference [Okubo] does not need modification." That is a point against the Patent Owner, not for it: a predictable substitution in a working system is exactly the KSR "predictable variation." The '593 specification's own admission that the invention "utilizes existing platforms and infrastructure" and requires no new handset or cellular infrastructure removes any argument that the substitution was beyond the POSITA's skill.

Patent Owner's counterarguments and why they failed:

• "Konishi would be a wholesale modification of Okubo." The Board accepted this (FWD at 22); the Federal Circuit reversed, holding it "does not represent 'impermissible hindsight' or 'wholesale modification' . . . [but] a 'predictable variation' of Okubo's system as written."
• "Okubo's low-data-rate nature precludes transferring maps." Rejected (see point 1 above).
• "Impermissible hindsight." Rejected — the substitution is supported by Konishi's express teaching, not by the patent's own disclosure.

Verdict on Ground I: as to the sole litigated limitation in claims 1 and 19, this combination renders the limitation obvious as a matter of law — that is now binding Federal Circuit precedent specific to this patent.

---

Ground II — Okubo + Konishi + Hartz (claims 1, 2, 5, 6, 9)

Adding Hartz does not strengthen the map-transmission showing, because "Uber did not rely on Hartz for any teachings related to this limitation." Hartz's role is to supply whatever the remaining, unanalyzed limitations and dependent claim 6 require. Because the Board never reached those limitations (its non-obviousness holding on the single limitation disposed of all challenged claims), the Hartz ground is unresolved on the merits.

⚠️ I cannot assess the strength of the Hartz combination because I did not verify U.S. 6,636,803's disclosure. This is the single largest evidentiary gap in the analysis.

---

Grounds III & IV — Makoto alone (claims 1, 2, 5, 9, 19) and Makoto + Hartz (claim 6)

These grounds failed at the Board and were abandoned on appeal. Adding a tertiary reference for a limitation the primary reference already allegedly taught (per Uber's theory) could not cure the deficiency, and Uber chose not to press it. As a matter of issue preclusion/finality within the IPR, the Board's determination that Makoto does not render claim 1 obvious stands unreviewed.

---

Ground V (not previously run) — Konishi as primary, alone or with Okubo reversed

Worth flagging for completeness because it is the cleanest §103 theory and was never squarely litigated:

• Konishi alone teaches server-side plotting + transmission of the plotted map to a mobile telephone (its claims 1, 2, 5; [0005], [0019], [0020]). Its claim 9 teaches the mobile terminals may be "equipped with a GPS system" or "connected to a mobile telephone set," and claim 10 teaches the customer terminal being a mobile telephone set. That is close to the '593's basic architecture.
• What Konishi lacks — persistent user-defined buddy groups with reciprocal two-way sharing among group members — is supplied by Okubo. The motivation runs the same direction and for the same reasons (same field, same problem, complementary, predictable).
• ⚠️ Hypothesis flagged: I could not test this theory against the literal claim text. It is a suggestion for how a future challenge would be framed, not a verified conclusion.

---

5. What the CAFC did not decide — and the resulting soft spot

The Federal Circuit reversed on one limitation and "remanded for consideration of the remaining claim limitations." That means:

• The Board never analyzed the remaining elements of claims 1 and 19, nor any of the dependent claims (2, 5, 6, 9).
• Obviousness is claim-by-claim and element-by-element; a finding on one limitation does not automatically dispose of the rest. In principle, X One could still have prevailed on the unanalyzed limitations on remand.
• ⚠️ I could not confirm the remand outcome. My searches did not return a post-2020 Board decision on remand for IPR2017‑01255. Given that the patent's anticipated expiration is 2025‑04‑04 and Google Patents lists status "Expired – Lifetime," the practical significance of any further proceedings is limited. But I will not assert what happened on remand.

Dependent claims — a genuine blind spot. Claims 2, 5, 6, and 9 were challenged but never substantively decided. The specification's disclosure suggests the categories they may protect (colored/stippled status indicators, group folders/icons, out-of-coverage last-known-position display, historical tracks/"Mapit with history," timed/follow-me/request-update modes). If those features are claimed, they would be evaluated against the Okubo/Konishi/Hartz/Makoto record plus such secondary references as Uber adduced — and I cannot evaluate that without the claim text. This is the honest limit of the analysis.

---

6. Secondary considerations (objective indicia)

I found nothing verifiable in the record bearing on commercial success, long-felt need, failure of others, copying, or unexpected results with a demonstrated nexus to the claim 1 limitation. The specification asserts needs ("[n]o two way position information sharing technology currently exists as far as the applicant is aware"), but applicant argument in the specification is not objective evidence. X One's assertion of the patent against Uber in N.D. Cal. 5:16‑cv‑06050 is evidence of enforcement, not of nexus. ⚠️ Flagged as absent, not weighed.

---

7. Bottom line

Net: for the limitation that both independent claims share, the §103 case is strong and now precedential — a POSITA in 2005 faced exactly two ways to get a plotted map in front of a mobile user, and Konishi had already published one of them three years before the priority date. The residual doubt in this record is procedural and evidentiary, not conceptual: the Board never analyzed the remaining limitations, Hartz's disclosure is unverified to me, and the literal claim text still needs to be read off the issued patent.

---

8. Explicit uncertainty summary

1. Literal claim text of U.S. 8,798,593 — not retrieved. Claim 1's recitation of "software ... to transmit the map with plotted locations to the first individual" is established via the CAFC/FWD, but the complete element lists, preambles, and all dependent claims are not verified.
2. U.S. 6,636,803 (Hartz) — disclosure unverified. My search returned unrelated Hartz Mountain pet-product and General Motors materials. Do not attribute teachings to Hartz from this analysis.
3. JP 2002‑199433 (Makoto) — disclosure unverified; only its role in the unappealed grounds is established.
4. Konishi quotes come from PTAB petition excerpts in a different X One-family proceeding (a "US'838 patent" chart), not from the '593 IPR record — Konishi's own text is quoted, but the citation path differs.
5. Post-remand outcome of IPR2017‑01255 — not confirmed. No post-2020 Board decision surfaced in my searches.
6. No §103 assessment of claims 2, 5, 6, and 9 is possible on this record; they were never substantively decided.
7. Identifier note: I did not normalize or auto-correct any identifier. Notably, US 8,798,647 (asserted alongside the '593 in 5:16‑cv‑06050) and US 8,798,646/8,798,644 are different patents and are excluded; the "US'838" claim chart refers to yet another X One-family patent.