US 8538458

Patent Overview — US8538458B2

Title: Location sharing and tracking using mobile phones or other wireless devices

Patent number: US8538458B2

Inventor: Richard D. Haney

Assignee: X One Inc (original assignee); a 2010-12-09 reassignment record lists X ONE, INC. with assignor Haney, Richard D., Mr.

Key dates (as listed):

• Priority date: 2005-04-04
• Filing date: 2008-03-11 (application US12/075,408)
• Publication of US20080227473A1: 2008-09-18
• Grant/publication of US8538458B2: 2013-09-17
• Legal status listed as Active, with an adjusted expiration of 2028-02-24

Status note: The source states the legal status is an assumption, not a legal conclusion, and that no legal analysis was performed.

Purpose and plain-language scope (derived only from the supplied text):
The patent concerns sharing and tracking the location of individuals using mobile phones or other wireless devices. The prior-art keywords listed — map, buddy, individual, server, multiple users — frame the subject matter as a server-based system for displaying and sharing the locations of multiple users ("buddies") on a map. The patent is part of a large family: the source lists numerous later-filed continuation or related applications sharing the same 2005-04-04 priority date, with granted family members including US8385964B2, US8831635B2, US8750898B2, US8798645B2, US8712441B2, US8798593B2, and others extending through US11968590B2.

Source: https://patents.google.com/patent/[US8538458](/patent/US8538458)/en

What the supplied excerpt does not establish:

• The full text of the claims or written description (only front-matter, family, and keyword data were supplied)
• Specific claim limitations defining the metes and bounds of the invention
• Any named prior-art references
• Litigation, licensing, or ownership-transfer details beyond the single reassignment entry shown
• Validity, enforceability, or actual expiry outcome
• Whether the listed assignee information is accurate

No facts beyond the supplied text have been added.

I'll search for litigation involving US patent 8538458.

Found a lead. Let me dig deeper into X One Inc's litigation campaign involving this patent.

Let me search for the X One enforcement campaign and specifically which cases asserted the '458 patent.

Bottom line

Based on the searches I was able to run (including against the litigation-oriented sources reachable via web search, and the Darts‑IP "family has litigation" record linked from the patent's Google Patents page), I did not find any case in which U.S. Patent No. 8,538,458 itself was specifically asserted. I found litigation involving other patents in the same X One, Inc. family (the '458 is the parent of that family), but no complaint, IPR, or appeal that identifies the '458 patent as an asserted patent‑in‑suit.

Per your instruction not to auto‑correct identifiers: I am reporting only what the sources show, and I flag where the sources do not name the '458.

Patent identification (as it appears in the authoritative text)

The '458 is the root of a large continuation family (e.g., US 7,353,034; 8,385,964; 8,798,593; 8,798,645; 8,798,647; 8,831,635; 8,752,441; 10,299,071; 10,750,309/310/311; 11,778,415; etc.).

Litigation found (X One family — NOT specifically the '458)

1. X One, Inc. v. Uber Technologies, Inc. — N.D. Cal.

• Plaintiff: X One, Inc. (Delaware corp., principal place of business Union City, CA)
• Defendant: Uber Technologies, Inc. (Delaware corp., San Francisco, CA)
• Jurisdiction: U.S. District Court for the Northern District of California
• Case number: Not confirmed from the sources retrieved; the district‑court docket ID surfaced is gov.uscourts.cand.304306. (I will not fabricate a case number.)
• Patents asserted: U.S. 8,798,593 and U.S. 8,798,647 — not the '458.
• Outcome/status: District court granted Uber's motion for summary judgment of noninfringement of the '593 and '647 patents, denied as moot Uber's invalidity motion and X One's validity motion, and denied as moot the parties' six motions to strike/exclude (order on file at archive.org, courtlistener‑style docket).
• Related appeal: Uber Techs., Inc. v. X One, Inc., Case No. 19‑1164 (Fed. Cir. May 5, 2020) (Prost, C.J.) — an appeal from an IPR/PTAB decision (Uber petitioned for inter partes review), in which the Federal Circuit applied KSR and found the location‑plotting claims obvious under 35 U.S.C. § 103, reversing the PTAB.
• Note: the IPR and the civil action are distinct proceedings; both concern family members other than the '458.

2. X One Inc v. DoorDash Inc — E.D. Tex.

• Plaintiff: X One Inc
• Defendant: DoorDash Inc
• Jurisdiction: U.S. District Court for the Eastern District of Texas (Texarkana Division per the "2:" prefix)
• Case number: 2:26-cv-00312
• Filing date: 04/17/2026
• Cause: Patent Infringement (Nature of Suit 830)
• Status: Open; pending judge assignment
• Patents asserted: U.S. 10,299,071; U.S. 10,750,310; U.S. 11,778,415 (one complaint‑analysis source also references a "'705" patent) — not the '458.

3. Darts‑IP family litigation record

The Google Patents page for US 8,538,458 carries a "Family has litigation / First worldwide family litigation filed" entry linking to Darts‑IP (family ID 37071237). This confirms the family has been litigated, but the link does not itself name the '458 as an asserted patent, and I could not open the underlying Darts‑IP case list.

What I could not confirm

• No case specifically asserting US 8,538,458 was identified. The cases found assert sibling/continuation patents ('593, '647, '071, '310, '415), not the '458.
• I was unable to complete a full PACER / Unified Patents caselist / CourtListener sweep — my tool calls hit their step limit before I could query those databases directly for the exact number "8538458." The searches returned results for related numbers and the family, which I have deliberately kept separate from the '458.

Recommended verification (given the above limits)

To be certain about the '458 specifically, the following should be checked directly, since these are the authoritative sources and my search access was incomplete:

1. USPTO Patent Center / Patent Assignment for US 12/075,408 - "Patent Litigation" tab.
2. Unified Patents litigation portal — https://portal.unifiedpatents.com/litigation/caselist (search exact string "8538458").
3. PACER / CourtListener RECAP — docket searches for "8,538,458" and for plaintiff "X One".
4. PTAB PTACTS / Patent Trial and Appeal Board — search for IPR/PGR petitions naming 8,538,458.
5. Darts‑IP family 37071237 — to enumerate worldwide family litigation.

If the litigation history matters for an opinion, deadline, or estoppel analysis, I'd strongly recommend pulling the PACER dockets and the Patent Center litigation tab directly rather than relying on the aggregated web results above, which I could only partially retrieve.

I'll verify the structured block's "no PTAB activity" default against public sources before writing anything up.

Key lead: Uber filed IPRs against X One patents with Federal Circuit appeals. I need to pin down whether 8538458 specifically was among them.

Uber's IPRs hit two family members ('593 and '647 patents). Now I need to confirm whether 8538458 itself was ever petitioned, and chase the 2024 petition I spotted.

Proceedings overview

Zero AIA trial proceedings are on file against US 8,538,458 — the structured PTAB block (USPTO ODP) returns no IPR, PGR, or CBM for this patent, and my web searches surfaced none either. Breakdown: 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution denials. All claims of 8538458 are therefore UNTESTED at the Board.

The honest defensive posture is not "this patent survived IPRs and is hardened." It is: the '458 has never been challenged, but its own patent family has been — and the family's PTAB/CAFC record is bad for the patent owner. The same specification, asserted by the same owner (X One, Inc.), was challenged by Uber in two 2017 IPRs against sibling patents — IPR2017-01255 (US 8,798,593) and IPR2017-01264 (US 8,798,647). The Board sustained both in Final Written Decisions dated 2018-10-12, and the Federal Circuit reversed both in 2020. One of those reversals, Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020), held obvious the exact "server-side plotting / transmit the map with plotted locations" limitation that appears in claim 1 of 8538458. So the practical bottom line for a defendant is: you are not estopped, the art is not "used up," and the most on-point appellate invalidity holding in this family has already been written — it just wasn't written about this patent.

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IPR2017-01255 — Uber Technologies, Inc. v. X One, Inc. (sibling patent U.S. 8,798,593 — not 8,538,458)

• Type: Inter Partes Review (§ 311)
• Filed: 2017-04-11 (petition filing; Law360 PTAB case record for Uber Technologies, Inc. v. X One, Inc. lists an April 11, 2017 filing)
• Status (web-sourced, not from the ODP block): Final Written Decision issued 2018-10-12; reversed and remanded by the Federal Circuit on 2020-05-05; post-remand outcome not verified by me.
• Judge panel: Not confirmed in the sources I could retrieve. (The FWD PDF text I obtained does not include the APJ caption.)
• Petition grounds: Obviousness (§ 103) of claims 1, 2, 5, 9, 19 of the '593 patent over Japanese Unexamined Patent Application Publication No. 2002-10321 ("Okubo") in view of Japanese Unexamined Patent Application Publication No. 2002-352388 ("Konishi"); a second ground against claims 1, 2, 5, 6, 9 adding U.S. Patent No. 6,636,803 ("Hartz"); and further grounds based on Japanese Unexamined Patent Application Publication No. 2002-199433 ("Makoto") alone and with Hartz, which Uber did not appeal.
• Institution decision: Instituted (both proceedings proceeded to FWD; the N.D. Cal. case was stayed pending IPR on 2017-10-25). Exact institution date and panel reasoning not confirmed in accessible sources.
• Final Written Decision: Petitioner failed. The Board held Uber had not shown independent claim 1 (and, by extension, claim 19, which contains the same limitation, and the challenged dependents) unpatentable, because the combination did not render obvious the limitation "software ... to transmit the map with plotted locations to the first individual." Konishi was found to disclose server-side plotting; Okubo only terminal-side plotting. The Board called the proposed combination "impermissible hindsight" and a "wholesale modification to Okubo," and stated it was "not persuaded by [Uber's] assertions that one of ordinary skill would seek out a design choice for combination with Okubo." Because that limitation was dispositive for both independent claims, the Board never analyzed the remaining limitations or the dependent claims.
• Settlement / termination: None — decided on the merits.
• Appeal: Yes — Appeal No. 19-1164 (Fed. Cir.), decided 2020-05-05, Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Prost, C.J.; Dyk and Wallach, JJ.). The court reversed, holding the Board legally erred under KSR: server-side and terminal-side plotting were the only two identified, predictable solutions, so substituting one for the other was an obvious design choice, not "impermissible hindsight." X One sought rehearing (a rehearing petition dated 2020-06 is on the Federal Circuit blog's copy of the 19-1164 briefs). Remand outcome unknown to me.
• Defensive value: The FWD is a liability, not an asset — it was reversed. But it also gives a defendant a narrow roadmap: the Board never reached most limitations, so a fresh petition would need to map Okubo/Konishi/Hartz across the full claim, not just the plotting limitation. X One is represented by Finnegan, which has litigated this family aggressively.

IPR2017-01264 — Uber Technologies, Inc. v. X One, Inc. (sibling patent U.S. 8,798,647 — not 8,538,458)

• Type: Inter Partes Review (§ 311)
• Filed: 2017-04-11 (same campaign as above)
• Status (web-sourced): Final Written Decision 2018-10-12; reversed in part / vacated in part by the Federal Circuit on 2020-03-03 (nonprecedential); rehearing sought 2020-04-02; post-remand outcome not verified.
• Judge panel: Not confirmed.
• Petition grounds: Obviousness (§ 103) of claims 1, 4–11, 13, 22–25, 27–28, 31–37, 39–42, and 45 (independent claims 1, 22, 28) over Konishi and Japanese Unexamined Patent Application Publication No. 2003-168190 ("Mitsuoka"), with additional art for various dependent claims.
• Institution decision: Instituted as to all of the above claims.
• Final Written Decision: Petitioner failed. The Board construed the "responsive to" limitation in claims 1 and 28 as requiring the method to be invoked "during or near" application launch, and "in association with" in claim 22 as requiring "some relationship." Under those constructions it found neither Konishi nor Mitsuoka taught the limitations, and — because it stopped at the independent claims — it did not separately analyze any dependent claim.
• Settlement / termination: None — decided on the merits.
• Appeal: Yes — Appeal No. 19-1165 (Fed. Cir.), nonprecedential opinion 2020-03-03. The panel modified the Board's claim construction, holding the "responsive to" limitation is met if the method is invoked "minutes or hours" after launch (a narrower reading would exclude the preferred embodiment), then made new fact findings that Konishi and Mitsuoka disclose the limitations — reversing as to claims 1 and 28 and vacating as to the remaining challenged claims for remand. X One filed a petition for rehearing (dated 2020-04-02) asking the court to vacate the new fact findings and remand for the Board to apply the corrected construction.
• Defensive value: A defendant today gets two gifts: (i) a claim-construction holding on the "responsive to"/"in association with" limitations that is broader than the Board's and therefore easier for prior art to meet; and (ii) the roadmap that Konishi (taxi dispatch + map + GPS) is a viable primary reference against this specification.

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Flagged but unverified — one 2024 petition I could not tie to this patent

A PTAB petition filed 2024-11-22 (Wolf, Greenfield & Sacks; Elisabeth Hunt) challenging claims 1–35 of a patent claiming "A method of mobile-to-mobile locating" with "location access rights," levels of access, and city/state approximation is indexed at the PTAB petitions system (artifactId for petition 1556989). I could not confirm the patent number it targets, and its claims do not match 8538458's claim 1, which is directed to a server maintaining a buddy-list account, storing last-known positions, plotting positions on a retrieved map, and transmitting the map with plotted positions. Treat this as an unresolved lead only; do not cite it as a proceeding on 8,538,458.

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Strategic summary

Canceled / sustained / untested. For US 8,538,458 itself there is no PTAB outcome of any kind — every claim, from independent claim 1 (the only independent claim I could verify; the public claim listing truncated at claim 15) through its dependents, is UNTESTED at the Board and un-narrowed by any AIA trial. The picture changes when you map the family: US 8,798,593 ("Location sharing and tracking using mobile phones or other wireless devices" — the same title as the '458) and US 8,798,647 were both challenged and both sustained by the PTAB on 2018-10-12, then both reversed on appeal in 2020. Critically, the '593 claim 1 limitation the Federal Circuit held obvious — a server that plots locations and transmits the map with plotted locations to the user — is functionally identical to the "plotting positions on the map ... and transmitting the map with plotted positions to the first individual for display" steps of 8538458 claim 1. That is the strongest written authority a defendant has, and it is not about this patent.

Estoppel landscape. Because no IPR was ever filed on the '458, no § 315(e)(2) estoppel attaches to anyone with respect to this patent. Uber and its privies are plausibly estopped as to the '593 and '647 patents on grounds raised or reasonably could have been raised in IPR2017-01255/01264 — although the FWDs were reversed, note that § 315(e)(2) keys to issuance of a final written decision, so the estoppel argument survives the reversal; that question is not one I can resolve from the sources I retrieved. The practical point for you: there is no estoppel protecting the patent owner on the '458, and no art is off the table. Okubo, Konishi, Mitsuoka, Hartz and Makoto were all used in the family, but none of them was mapped across all limitations of the '458 claims (the Board stopped at the independent claims in both proceedings), so a well-built petition can still rely on them, expanded. Conversely, nothing estops you either — there is no prior IPR petitioner whose conduct constrains your grounds.

Pattern signals. Uber filed a coordinated, multi-patent IPR campaign against this family in April 2017, won a district-court stay, lost at the Board, appealed twice, and won reversals in both appeals (19-1164 precedential-ish, reported at 957 F.3d 1334; 19-1165 nonprecedential). X One, represented by Finnegan, litigated the appeals hard, including requests for rehearing. I found no sign of a defensive aggregator (e.g., Unified Patents) in the chain — the only petitioner of record I could identify for this family is Uber. That matters: the family was challenged by a single, economically motivated defendant, not by a systematic aggregator campaign, which is consistent with the '458 itself never being petitioned. Two non-PTAB data points for context: Uber's Alice motion to dismiss was denied (2017-03-07), and the N.D. Cal. case is X One, Inc. v. Uber Techs., Inc., No. 5:16-cv-06050-LHK, which generated claim-construction rulings on the "buddy list"/"account" terms (including that a "buddy list" must contain at least two other users, and that "account" requires authenticated access).

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Recommended next steps

• Do not represent to a court or a counterparty that this patent has been through IPR. It has not. There is no FWD to quote and no canceled claim to point to; the structured ODP record and my searches agree on zero proceedings.
• Use the sibling FWD and the CAFC dispositions as your authority, and say precisely what they are. Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020) (Appeal No. 19-1164) — opinion at https://cases.justia.com/federal/appellate-courts/cafc/19-1164/19-1164-2020-05-05.pdf and https://www.courtlistener.com/opinion/[4731842](/patent/4731842)/uber-technologies-inc-v-x-one-inc/ — holding the Board erred in finding the "software ... to transmit the map with plotted locations to the first individual" limitation non-obvious. The nonprecedential 19-1165 opinion (2020-03-03) on the "responsive to launching an application" limitation is at https://cafc.uscourts.gov/sites/default/files/opinions-orders/19-1165.Opinion.3-3-2020_1543755.pdf. The underlying Board decision text (the '647 FWD, with institution of claims 1, 4–11, 13, 22–25, 27–28, 31–37, 39–42, 45) is reproduced at https://fedcircuitblog.com/wp-content/uploads/2020/04/Uber-opinion-below.pdf. Attribute each to its patent number explicitly — the '593 and '647 are not the '458, and a brief that blurs them will draw a motion to strike.
• Check the post-remand status before relying on the 2020 reversals' final effect. The Federal Circuit remanded both appeals; I could not verify what the Board did on remand or whether further appeal followed. Confirm in PTAB E2E (https://ptab.uspto.gov) under IPR2017-01255 and IPR2017-01264, and pull the PTAB Decisions database for any remand FWDs.
• Mind the § 315(b) clock. If you have been served with a complaint asserting 8538458, the one-year window to petition runs from service; a defendant served more than a year ago is barred from filing its own IPR on this patent. Because there is no prior petitioner, no one else's filing can cure that.
• Assessment of whether an IPR is worth it. Factors cutting for filing: claim 1 of the '458 shares the "plot and transmit map with plotted locations" architecture already held obvious in the '593 appeal; the family's claim constructions in the '458 specification have been narrowed against the owner ("buddy list" needs at least two other users; "account" needs authenticated access); there is no estoppel and no competing petitioner. Factors cutting against: the patent's Google Patents-adjusted expiration is 2028-02-24 (priority 2005-04-04), which leaves a meaningful but finite damages tail; and a petition would be litigating an untested claim set with no Board precedent to leverage. Note also that PGR is unavailable (pre-AIA effective filing date) and CBM has sunset, so IPR is the only AIA vehicle.
• Verify the "zero proceedings" conclusion against a live source before finalizing, since ODP ingest can lag: PTAB E2E (https://ptab.uspto.gov) and the USPTO PTAB Decisions search (https://developer.uspto.gov/ptab-web/#/search/decisions). I also could not confirm whether 8538458 was among the patents X One asserted in N.D. Cal. No. 5:16-cv-06050-LHK — worth a PACER check, because assertion without an IPR is exactly the posture that leaves the '458 claims untested.

Confidence notes. High confidence: zero proceedings on 8538458; existence, claims, FWD dates (2018-10-12), and CAFC dispositions of IPR2017-01255 and IPR2017-01264. Lower confidence / not verified: the APJ panels; the exact institution dates; the post-remand outcomes; the exact filing date (2017-04-11) for both petitions specifically; and the identity of the patent targeted by the 2024-11-22 petition. I have not fabricated any proceeding number or outcome beyond what the cited sources state.

I'll research the assignment record, litigation history, and entity status for US 8538458 before assembling the report.

Good initial results. Now let me dig into the assignment records, correspondent of record, and whether X One is still the owner.

Assignment & Ownership Reconstruction — US 8,538,458 B2

Patent: US 8,538,458 B2, "Location sharing and tracking using mobile phones or other wireless devices"
App.: 12/075,408 · filed 2008-03-11 · granted 2013-09-17 · priority 2005-04-04 (parent 11/099,362 → US 7,353,034)
Source of record: Google Patents legal events for US8538458B2 · USPTO Assignment Center · plainsite profile for X One, Inc.

Data-integrity note up front. I was able to confirm that an assignment record exists for this patent and who the parties are, but the public sources I could reach did not display the reel/frame numbers or the correspondent of record for the Haney→X One recordings. I have deliberately left those fields marked as not retrieved rather than inventing values. Every reel/frame below must be pulled directly from Assignment Center by searching patent number 8538458.

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Inventors

• Haney is the sole inventor across the entire family (US 7,353,034 lists "Inventor: Richard D. Haney, Union City, CA"; US 8,538,458 lists only Haney).
• Unusual pattern check — not present. The classic fire-sale precursor (all inventors departing the original assignee within 12 months of filing) does not apply. Haney never left: he is the assignee's principal, and he remains the driving force behind the asserting entity through at least the 2026 filings. There is no multi-inventor team to fragment.
• Founder-as-sole-inventor pattern. This is the "inventor-owned small company" archetype, not a corporate R&D assignee. It has direct consequences for the NPE analysis below: there is no parent corporation to divest from and no portfolio to spin out.

Original assignee

• Name as issued: X One, Inc., Union City, California (US 7,353,034 face: "Assignee: X One, Inc., Union City, CA (US)"). In X One, Inc. v. Uber Technologies, Inc., No. 5:16-cv-06050-LHK (N.D. Cal.), the complaint (ECF No. 1 ¶ 1) describes X One as "a Delaware corporation with its primary place of business in Union City, California."
• Line of business: developer of the "Buddy Watch" / "Buddy Tracker" GPS location-sharing client and the corresponding "Buddy Watch" / "Rubicon" server. The specification is written as a product/service description — carrier subscription billing, activation/deactivation codes, downloadable Java client, map serving via MapQuest, TalkControl push-to-talk. Trademarks asserted in the text include Buddy Watch™, Buddy Tracker™, Buddy List™, Personal Bread Crumbs™, Mapit™.
• Did they ship a product embodying the claims? Unverified. The specification describes a service intended for carrier subscription (Nextel is named as an example carrier), and the claims recite the server/database/buddy-list/map-plotting combination. I found no evidence in the sources I checked — no press coverage, no SEC filing, no licensee disclosure — that X One ever commercially deployed the claimed system. Treat "operating company that shipped a product" as not established. What is established is that X One is the entity that developed (as opposed to acquired) the patented subject matter.
• Current status: Active. Not dissolved, not in bankruptcy, not acquired. It is litigating in its own name as of the 2026 filings described below.

Assignment timeline

Confirmed recorded activity for this patent (chain link):

• 2010-12-09 (execution date as indexed; not independently confirmed) / recorded 2010-12-09 — Reel not retrieved / Frame not retrieved
  • Conveyance: Assignment — brief of record: "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)."
  • Assignor: HANEY, RICHARD D., MR.
  • Assignee: X ONE, INC.
  • Correspondent: not retrieved. (The only firm positively identifiable anywhere in this patent's paper trail is Schwegman, Lundberg & Woessner, PA, the prosecution firm of record on the parent US 7,353,034. That is not the assignment correspondent and appears once only — per the instructions, a single appearance is not a finding.)
  • Context: Inventor-to-company assignment. Not a sale, not a reorg, not securitization. Notably recorded ~2.7 years after the 2008-03-11 filing and after the 2008-09-18 publication of US 2008/0227473 A1 — administrative cleanup of an original-applicant assignment, not an ownership change.

Related family records that will appear alongside it in Assignment Center (do not confuse them with transfers of the '458):

• 2006-03-31 — Haney assignor, application 11/099,362 → US 7,353,034 (parent). Reel/frame not retrieved. Same inventor-to-company conveyance.
• 2013-04-12 — plainsite indexes a second Haney assignment record associated with this patent family. Unverified: I could not retrieve its reel/frame, conveyance type, or assignee. It is most consistent with a family/continuation recording or a confirmatory filing executed at issue, but I am not asserting that. Verify in Assignment Center before relying on it.

Plain statement of the finding: There is no recorded post-issuance assignment of US 8,538,458 to any third party. Every recorded link runs from the sole inventor to the original applicant company. There is no LLC chain, no holding company, no collateral agent, no acquisition.

Timeline diagram

timeline
    title Ownership of US 8538458
    2005 : Parent app filed by X One Inc
         : Haney named sole inventor
    2008 : Continuation app 12 075 408 filed
    2010 : Haney assignment recorded to X One
    2013 : Patent US 8538458 issued
    2016 : X One sues Uber
    2020 : Federal Circuit reverses PTAB
    2026 : X One sues DoorDash and Dominos

NPE / troll-pattern signals

Additional context (outside the eight required signals, flagged for completeness):

• Continuation-family build-out. Google Patents' "priority to" chain shows a very large family spun out of the 2005/2008 filings — e.g. 13/155,262 → US 8,385,964; 13/188,414 → US 8,831,635; 13/745,551 → US 8,750,898; 13/753,602 → US 8,798,645; 13/861,373 → US 8,712,441; and many more through 2023. Heavy continuation practice is common in software portfolios and is not by itself an NPE signal.
• Litigation posture. X One v. Uber: the district court granted Uber's motion for summary judgment of noninfringement (N.D. Cal., 440 F. Supp. 3d 1019), while the Federal Circuit reversed the PTAB on the '593 obviousness question, Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). Related IPRs: IPR2017-01255 ('593) and IPR2017-01264 ('647).
• 2026 assertion wave — new, and unverified as to the '458 specifically. E.D. Tex. dockets 2:26-cv-00311, X One Inc v. Dominos Pizza Inc and 2:26-cv-00312, X One Inc v. DoorDash Inc, both filed 2026-04-17, nature of suit 830 (patent). The docketing aggregator labels the patent owner "Operating Company." I could not confirm which patents are asserted in these two cases — the '593/'647 continuations and the '458 are all candidates. Do not attribute the '458 to these suits without checking the complaints. The venue shift from N.D. Cal. to E.D. Tex. is a monetization-posture observation, not a transfer-based NPE signal.

Verdict

Operating-company assertion.

Justification: the assignment record contains only the original inventor→applicant conveyance (Haney → X One, Inc., recorded 2010-12-09), and X One — the original applicant and assignee of record, a Delaware corporation with its principal place of business in Union City, California — is the entity suing in its own name, first against Uber on 2016-10-19 and again against DoorDash and Domino's in E.D. Tex. on 2026-04-17. All eight transfer-based NPE signals are not present: no shell-entity transfer, no cascading LLC chain, no pre-litigation assignment (the ~5-year-10-month gap between the 2010-12-09 recording and the 2016-10-19 suit affirmatively negates it), no known asserter, no bankruptcy sale, no privateering, no defensive termination. The honest limitation on this call is that X One's shipment of a commercial product embodying the claims is not documented in any source I could reach; if that prong cannot be substantiated, the accurate characterization is "small original-owner patent holder monetizing its own portfolio," which is a business-model observation rather than an NPE-chain finding.

Verify at: USPTO Assignment Center — search patent number 8538458. Confirm (a) the reel/frame for the 2010-12-09 Haney→X One assignment, (b) the correspondent of record on that recording, and (c) whether the plainsite-indexed 2013-04-12 Haney entry is a separate recording and, if so, its conveyance type and assigned properties.

I'll research the specific prior-art citations for US 8,538,458. Let me start with targeted searches.

Let me pull the specific "References Cited" (front-page prior art) for US 8,538,458.

Let me try to retrieve the front-page "References Cited" list from dedicated patent databases.

Prior-Art Analysis — U.S. Patent No. 8,538,458 (searched literally as "8538458")

1. Patent as identified in the authoritative source

The claim set I am mapping against is the granted claim set (source: Espacenet claims page for US8538458 B2, https://si.espacenet.com/publicationDetails/claims?CC=US&NR=[8538458B2](/patent/8538458B2)&KC=B2&FT=D&ND=10&date=20130917&DB=&locale=si_SI). Independent claim 1 recites a server-implemented method: (a) maintaining an account identifying a buddy list of multiple users; (b) storing a last known position for each of the multiple users; (c) in response to a first request, retrieving a map selected in dependence on a position, plotting positions of each of the multiple users on the map (based on correspondence between stored last-known positions and the map geography), and transmitting the map with plotted positions; (d) in response to a second request, changing the geography and transmitting a second map with a plotted position; and (e) all storing/transmitting steps performed "in a manner not requiring concurrent voice communications." Dependent claims add GPS-receiver sourcing (cl. 4), encrypted coordinates (cl. 5), per-user location-sharing on/off (cl. 7), TCP/IP transmission (cl. 8), lat/long/timestamp (cl. 9), center-of-gravity map centering (cl. 11), JAVA compliance (cl. 12), and browser delivery (cll. 13–14).

Because the effective filing date is 2005-04-04, the governing law is pre-AIA 35 U.S.C. § 102(a)/(b)/(e) and § 103(a).

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2. Important limitation on what I was able to retrieve — please read before relying on this

Your instruction was to "search the USPTO database." I must flag a hard limitation honestly:

• My available tool for this task is web search, not a direct connection to USPTO Patent Public Search (PPUBS), Patent Center, or the USPTO Open Data/Bulk APIs. I cannot issue a structured query against the Office's own systems.
• I attempted multiple targeted queries for the exact string "8538458" and for the patent's front‑page (56) References Cited table. The results returned the patent itself, its family (US 7,353,034; 8,385,964; 8,798,593/645/647; 8,831,635; 8,752,441; 10,299,071; 10,750,309/310/311; 11,778,415; etc.), and third‑party patents that cite the '458 (e.g., US D786,899, where "8538458 | September 17, 2013 | Haney" appears in a Referenced Cited table) — but not a clean, authoritative reproduction of the '458's own (56) list.
• Per your standing rule, I will not auto‑correct numbers and I will not fabricate citations, titles, or claim mappings to fill the gap. Where I could not verify something, I say so explicitly.

Bottom line: I could not fully and reliably retrieve the complete (56) References Cited list for US 8,538,458 with the tools available in this session. The structured list I did partially retrieve is described in §3, with its provenance flagged as unverified. Any complete § 102 mapping must be built from the patent's actual front page or the file-wrapper IDS, which I could only partially access.

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3. What I did retrieve

3.1 Partial structured reference list (provenance unverified — read caveat)

A web result surfaced the Justia page for this patent (https://patents.justia.com/patent/8538458). Its tables included a long US‑patent table in ascending number order dating from the year 2000, of the form:

• 6,018,619 | Jan. 25, 2000 | Allard et al.
• 6,018,718 | Jan. 25, 2000 | Walker et al.
• 6,023,653 | Feb. 8, 2000 | Ichimura et al.
• 6,026,304 | Feb. 15, 2000 | Hilsenrath et al.
• 6,026,370 | Feb. 15, 2000 | Jermyn
• 6,026,375 | Feb. 15, 2000 | Hall et al.
• 6,028,550 | Feb. 22, 2000 | Froeberg et al.
• 6,029,069 | Feb. 22, 2000 | Takaki
• 6,031,490 | Feb. 29, 2000 | Forssen et al.
• 6,032,051 | Feb. 29, 2000 | Hall et al.
• 6,035,025 | Mar. 7, 2000 | Hanson
• 6,041,280 | Mar. 21, 2000 | Kohli et al.
• 6,044,403 | Mar. 28, 2000 | Gerszberg et al.
• 6,047,236 | Apr. 4, 2000 | Hancock et al.
• 6,047,327 | Apr. 4, 2000 | Tso
• 6,049,710 | Apr. 11, 2000 | Nilsson
• 6,049,711 | Apr. 11, 2000 | Ben‑Yehezkel et al.
• 6,049,778 | Apr. 11, 2000 | Walker et al.
• 6,052,081 | Apr. 18, 2000 | Krasner
• 6,052,122 | Apr. 18, 2000 | Sutcliffe et al.
• 6,052,645 | Apr. 18, 2000 | Harada
• 6,055,434 | Apr. 25, 2000 | Seraj
• 6,058,300 | May 2, 2000 | Hanson
• 6,058,338 | May 2, 2000 | Agashe et al.
• 6,058,350 | May 2, 2000 | Ihara
• 6,061,018 | May 9, 2000 | Sheynblat
• 6,061,346 | May 9, 2000 | Nordman
• 6,061,681 | May 9, 2000 | Collins
• 6,064,335 | May 16, 2000 | Eschenbach
• 6,064,336 | May 16, 2000 | Krasner
• 6,064,398 | May 16, 2000 | Ellenby et al.
• 6,064,875 | May 16, 2000 | Morgan
• 6,067,045 | May 23, 2000 | Castelloe et al.
• 6,067,502 | May 23, 2000 | Hayashida et al.
• 6,069,570 | May 30, 2000 | Herring
• 6,070,067 | May 30, 2000 | Nguyen et al.
• 6,073,013 | June 6, 2000 | Agre et al.
• 6,073,062 | June 6, 2000 | Hoshino et al.
• 6,075,982 | June 13, 2000 | Donovan et al.
• 6,076,041 | June 13, 2000 | Watanabe
• 6,078,818 | June 20, 2000 | Kingdon et al.
• 6,081,206 | June 27, 2000 | Kielland
• 6,081,229 | June 27, 2000 | Soliman et al.
• 6,081,508 | June 27, 2000 | West et al.
• 6,081,803 | June 27, 2000 | Ashby et al.
• 6,085,090 | July 4, 2000 | Yee et al.
• 6,085,148 | July 4, 2000 | Jamison et al.
• 6,085,320 | July 4, 2000 | Kaliski, Jr.
• 6,087,965 | July 11, 2000 | Murphy
• 6,088,040 | July 11, 2000 | Oda et al.
• 6,088,594 | July 11, 2000 | Kingdon et al.
• 6,088,722 | July 11, 2000 | Herz et al.
• 6,091,956 | July 18, 2000 | Hollenberg
• 6,091,957 | July 18, 2000 | Larkins et al.
• 6,092,076 | July 18, 2000 | McDonough et al.
• 6,094,607 | July 25, 2000 | Diesel
• 6,097,958 | Aug. 1, 2000 | Bergen
• 6,098,118 | Aug. 1, 2000 | Ellenby et al.
• 6,100,806 | Aug. 8, 2000 | Gaukel
• 6,101,378 | Aug. 8, 2000 | Barabash et al.
• 6,101,443 | Aug. 8, 2000 | Kato et al.
• 6,104,090 | Aug. 15, 2000 | Unger et al.
• 6,104,931 | Aug. 15, 2000 | Havinis et al.
• 6,108,533 | Aug. 22, 2000 | Brohoff
• 6,108,555 | Aug. 22, 2000 | Maloney et al.
• 6,108,709 | Aug. 22, 2000 | Shinomura et al.
• 6,111,541 | Aug. 29, 2000 | Karmel
• 6,111,911 | Aug. 29, 2000 | Sanderford, Jr. et al.
• 6,112,186 | Aug. 29, 2000 | Bergh et al.
• 6,113,649 | Sept. 5, 2000 | Govindaraj
• 6,115,481 | Sept. 5, 2000 | Wiens
• 6,115,611 | Sept. 5, 2000 | Kimoto et al.
• 6,115,667 | Sept. 5, 2000 | Nakamura
• 6,115,680 | Sept. 5, 2000 | Coffee et al.
• 6,115,709 | Sept. 5, 2000 | Gilmour et al.
• 6,115,754 | Sept. 5, 2000 | Landgren
• 6,118,404 | Sept. 12, 2000 | Fernekes et al.
• 6,119,014 | Sept. 12, 2000 | Alperovich et al.
• 6,119,098 | Sept. 12, 2000 | Guyot et al.
• 6,121,922 | Sept. 19, 2000 | Mohan
• 6,122,503 | Sept. 19, 2000 | Daly
• 6,122,520 | Sept. 19, 2000 | Want et al.
• 6,122,521 | Sept. 19, 2000 | Wilkinson et al.
• 6,123,259 | Sept. 26, 2000 | Ogasawara
• 6,124,810 | Sept. 26, 2000 | Segal et al.
• 6,127,945 | Oct. 3, 2000 | Mura‑Smith
• 6,128,482 | Oct. 3, 2000 | Nixon et al.
• 6,128,571 | Oct. 3, 2000 | Ito et al.
• 6,128,599 | Oct. 3, 2000 | Walker et al.
• 6,131,028 | Oct. 10, 2000 | Whitington
• 6,131,067 | Oct. 10, 2000 | Girerd et al.
• 6,133,874 | Oct. 17, 2000 | Krasner
• 6,133,876 | Oct. 17, 2000 | Fullerton et al.
• 6,134,483 | Oct. 17, 2000 | Vayanos et al.
• 6,134,548 | Oct. 17, 2000 | Gottsman et al.
• 6,138,003 | Oct. 24, 2000 | Kingdon et al.
• 6,138,142 | Oct. 24, 2000 | Linsk
• 6,140,957 | Oct. 31, 2000 | Wilson et al.
• 6,141,347 | Oct. 31, 2000 | Shaughnessy et al.
• 6,144,336 | Nov. 7, 2000 | Preston et al.
• 6,148,197 | Nov. 14, 2000 | Bridges et al.
• 6,148,198 | Nov. 14, 2000 | Anderson et al.
• 6,148,262 | Nov. 14, 2000 | Fry
• 6,149,353 | Nov. 21, 2000 | Nilsson
• 6,150,980 | Nov. 21, 2000 | Krasner
• 6,151,309 | Nov. 21, 2000 | Busuioc et al.
• 6,151,498 | Nov. 21, 2000 | Roel‑Ng et al.
• 6,154,152 | Nov. 28, 2000 | Ito
• 6,154,172 | Nov. 28, 2000 | Piccionelli et al.
• 6,154,658 | Nov. 28, 2000 | Caci
• 6,157,381 | Dec. 5, 2000 | Bates et al.
• 6,157,841 | Dec. 5, 2000 | Bolduc et al.
• 6,163,749 | Dec. 19, 2000 | McDonough et al.
• 6,166,627 | Dec. 26, 2000 | Reeley
• 6,167,266 | Dec. 26, 2000 | Havinis et al.
• 6,167,274 | Dec. 26, 2000 | Smith
• 6,167,277 | Dec. 26, 2000 | Kawamoto
• 6,169,515 | Jan. 2, 2001 | Mannings et al.
• 6,169,552 | Jan. 2, 2001 | Endo et al.
• 6,169,891 | Jan. 2, 2001 | Gorham et al.
• 6,169,901 | Jan. 2, 2001 | Boucher
• 6,169,902 | Jan. 2, 2001 | Kawamoto
• 6,173,181 | Jan. 9, 2001 | Losh
• 6,175,740 | Jan. 16, 2001 | Souissi et al.
• 6,175,922 | Jan. 16, 2001 | Wang
• 6,177,905 | Jan. 23, 2001 | Welch
• 6,177,938 | Jan. 23, 2001 | Gould
• 6,178,505 | Jan. 23, 2001 | Schneider et al.
• 6,178,506 | Jan. 23, 2001 | Quick, Jr.
• 6,181,934 | Jan. 30, 2001 | Havinis et al.
• 6,181,935 | Jan. 30, 2001 | Gossman et al.
• 6,184,829 | Feb. 6, 2001 | Stilp
• 6,185,427 | Feb. 6, 2001 | Krasner et al.
• 6,188,354 | Feb. 13, 2001 | Soliman et al.
• 6,188,752 | Feb. 13, 2001 | Lesley
• 6,188,909 | Feb. 13, 2001 | Alanara et al.
• 6,188,959 | Feb. 13, 2001 | Schupfner
• 6,189,098 | Feb. 13, 2001 | Kaliski, Jr.
• 6,195,557 | Feb. 27, 2001 | Havinis et al.
• 6,195,609 | Feb. 27, 2001 | Pilley et al.
• 6,195,646 | Feb. 27, 2001 | Grosh et al.
• 6,198,390 | Mar. 6, 2001 | Schlager
• 6,198,431 | Mar. 6, 2001 | Gibson
• 6,198,927 | Mar. 6, 2001 | Wright et al.
• 6,199,014 | Mar. 6, 2001 | Walker et al.
• 6,199,045 | Mar. 6, 2001 | Giniger et al.
• 6,199,099 | Mar. 6, 2001 | Gershman et al.
• 6,199,113 | Mar. 6, 2001 | Alegre et al.
• 6,202,008 | Mar. 13, 2001 | Beckert et al.
• 6,202,023 | Mar. 13, 2001 | Hancock et al.
• 6,202,058 | Mar. 13, 2001 | Rose et al.
• 6,204,812 | Mar. 20, 2001 | Fattouche
• 6,205,330 | Mar. 20, 2001 | Winbladh
• 6,208,290 | Mar. 27, 2001 | Krasner
• 6,208,297 | Mar. 27, 2001 | Fattouche et al.
• 6,208,854 | Mar. 27, 2001 | Roberts et al.
• 6,208,857 | Mar. 27, 2001 | Agre et al.
• 6,208,866 | Mar. 27, 2001 | Rouhollahzadeh et al.

Caveat you must apply: I could not verify whether this table is the '458's own "References Cited" list, a merged family list, or an aggregated list on the Justia page, and the scrape appears truncated (it stops at 6,208,866, which cannot be the whole list for a 2005-era application). I also do not have the corresponding titles/abstracts for most entries. Consequently, I am not able to give a defensible per-reference § 102 anticipation mapping for each item as your instruction requests — doing so would require the full text of each reference and the verified list, neither of which I could retrieve.

3.2 Prior art the applicant expressly characterized in the specification

The '458 specification itself (authoritative text supplied) identifies the closest prior art conceptually. These are the references the patentee put on the record as background:

1. "One-way location-sharing prior art" — OnStar and Mercedes-Benz TeleAid. Quoted directly: "the one way location sharing prior art includes On Star and the Mercedes Benz TeleAid services where, via GPS receivers and cellular phone capability built into a car, an aid center can track cars all over the world and speak with the occupants and sense when the cars airbags have deployed."
2. Commercial child-tracking services — "Other commercial services allow parents to track the locations of their children in a one way location sharing manner."
3. The specification asserts these systems are one-way — "None of these services allow the occupants of the car to know where the aid center is or allows the children to know where their parents are" — and that "the prior art kid tracking systems could not be reconfigured in the field to add new individuals."

Under pre-AIA § 102(a)/(b), public-use/known systems such as these (and printed descriptions of them) are potentially material, though they are more naturally invoked under § 103 than as clean § 102 anticipating patents because the applicant used them as the starting point the invention improves upon.

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4. § 102 anticipation analysis

Legal framework (pre-AIA, effective filing date 2005-04-04). For a reference to anticipate a claim under § 102, a single reference must disclose every element of the claim, arranged as in the claim (Net MoneyIN v. VeriSign); and for the '458's method claims, the reference must disclose the elements performed by the recited actor (the server). To be prior art at all, a reference must predate the 2005-04-04 effective filing date (with § 102(b)'s one-year bar reaching back to 2004-04-04 for printed publications/public use).

What an anticipating reference would have to show for claim 1. A single prior-art reference would need to disclose, together:

1. a server maintaining an account that identifies a buddy list of multiple users;
2. storing a last known position for each of the multiple users;
3. responsive to a first request, retrieving a map selected based on a user's position, plotting the positions of each of the multiple users on it, and transmitting that map;
4. responsive to a second request, changing the geography and transmitting a second map with a plotted position; and
5. all storing/transmitting without concurrent voice communication.

Assessment. Based on the material I could verify, I cannot identify with confidence any single reference in the retrieved list that anticipates claim 1. The retrieved references cluster into recognizable technology areas that, on their face, tend to disclose pieces of claim 1 rather than all of it:

• GNSS/satellite-positioning enablement — e.g., the Krasner and Krasner et al. entries (6,052,081; 6,064,336; 6,133,874; 6,150,980; 6,185,427; 6,208,290), Sheynblat (6,061,018), Soliman et al. (6,081,229; 6,188,354), Fullerton et al. (6,133,876). These are directed to computing position (elements (2)/(3) partially), not to a server-side buddy list of multiple users with remote map plotting and geography changes.
• Wireless-network subscriber location — e.g., the Havinis et al. entries (6,104,931; 6,167,266; 6,181,934; 6,195,557), Kingdon et al. (6,078,818; 6,088,594; 6,138,003), Roel-Ng et al. (6,151,498), Stilp (6,184,829). These disclose locating a mobile station for network purposes (E911, handoff), not an account-based buddy list with plotted multi-user maps delivered to a requesting user's device.
• Mapping / navigation systems — e.g., Hancock et al. (6,047,236; 6,202,023), McDonough et al. (6,092,076; 6,163,749), Ashby et al. (6,081,803), Fry (6,148,262), Watanabe (6,076,041), Endo et al. (6,169,552). These render maps, but not a server-mediated location-sharing group plotted on a requested map.
• Portable/position-aware computing devices — e.g., the Ellenby et al. entries (6,064,398; 6,098,118), Want et al. (6,122,520) (Xerox PARC location-aware computing lineage), Herring (6,069,570), Piccionelli et al. (6,154,172), Welch (6,177,905), Giniger et al. (6,199,045). These are the closest conceptually to location-aware services, but I cannot verify from the retrieved data that any one of them discloses the complete claim-1 combination (server + buddy-list account + stored last-known positions for multiple users + requested multi-user map plotting + change-of-geography + no concurrent voice).

Conclusion on § 102: On the record I was able to retrieve, the cited references appear to be § 103 (obviousness) type art — building blocks that patent examiners commonly combine — rather than clean § 102 anticipators of claims 1–15. I explicitly decline to assign specific claims to specific references, because (a) I could not verify the complete (56) list, and (b) I do not have the reference texts/titles needed to show element-by-element disclosure. Assigning claims here would be guesswork.

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5. The one thing I can state with high confidence about "prior art" against the '458

The '458's own parent is not § 102 prior art against it, and its siblings are not either. US 7,353,034 (application 11/099,362, filed 2005-04-04) is the parent of 12/075,408 and shares the same specification. A parent application/patent whose disclosure is carried forward by a continuation cannot be § 102(b) prior art against that continuation (same inventive entity/disclosure). Likewise, US 8,385,964; 8,795,859; 8,798,593/645/647; 8,831,635; 8,752,441; 10,299,071; 10,750,309/310/311; 11,778,415 and the other family members are continuations/divisionals, not prior art.

Also note a directionality trap in the search results: patents that list "8538458 | September 17, 2013 | Haney" in their tables (e.g., US D786,899) are later patents citing the '458 — the reverse direction. They are not prior art to the '458.

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6. What I could not confirm — and the authoritative sources that will settle it

Because your request specifically requires "each patent citation" plus a claim-by-claim § 102 mapping, and I could not retrieve the verified, complete list, I recommend pulling these directly:

1. USPTO Patent Public Search (PPUBS) — https://ppubs.uspto.gov — open US 8,538,458 and read the front-page (56) "References Cited" table and the "Referenced By" table separately.
2. The granted patent PDF front page via Google Patents' PDF link and patentimages — the (56) list is printed there.
3. USPTO Patent Center / file wrapper (IFW) — https://patentcenter.uspto.gov — for application 12/075,408, retrieve the IDS submissions and examiner Form PTO-892; those show exactly which references the examiner considered and applied.
4. USPTO Patent Assignment page for 12/075,408 (record-chain, not prior art, but confirms assignee).
5. Espacenet / Global Dossier for the family, to catch any foreign search-report citations (EPO category "X"/"Y" documents) that would be strong § 102/§ 103 candidates.
6. Litigation/IPR record (per the earlier section of this analysis, X One's asserted patents were siblings such as '593, '647, '071, '310, '415 — not the '458) — petition record and institution decisions often contain the parties' own prior-art analysis of this family.

Once the (56)/PTO‑892 lists are in hand, the § 102 mapping I have outlined in §4 (elements 1–5 of claim 1, plus the dependent-claim limitations) can be applied mechanically to each named reference.

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7. Cross-check against the previously generated sections

• Consistency: The litigation section concluded that US 8,538,458 itself was not identified as an asserted patent-in-suit, and that the asserted patents were family siblings. Nothing in this prior-art research contradicts that.
• No contradictions to flag between the litigation summary and this prior-art analysis. One shared caveat applies to both: the earlier section also could not complete direct database sweeps (PACER/Patent Center/Unified Patents), and that same access gap is what prevented a complete (56) retrieval here.

Honest statement of confidence: I have high confidence in the patent identification, in the claim-1 element structure, in the family/parent relationship, and in the § 102 legal framework and per-claim hurdle. I have low confidence that the partial reference list in §3.1 is the '458's complete and correct (56) list, and I therefore do not assert any specific claim-to-reference anticipation pairing.

I'll start by pulling the actual prior-art record and claim language for the '458, since the pasted Google Patents page omitted the References Cited list.

The searches are returning the family but not the '458's own claim text or its face-citations. Let me target those specifically.

Obviousness Analysis — U.S. Patent No. 8,538,458 Under 35 U.S.C. § 103

Scope note: The task directs me to use the results from the Prior Art section of this page. The pasted Google Patents text supplies only the "Prior art keywords" field (map, buddy, individual, server, multiple users) and the specification's own discussion of prior art; it does not reproduce the patent's "References Cited" list. I therefore recovered (a) the verbatim claim text, and (b) the leading portion of the face-citation list, via search. Where I could not verify a reference, I say so explicitly rather than inventing one.

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0. Verification status (read this first)

Consistency check against the previously generated section: the earlier section stated the '458 is a continuation of application 11/099,362, now US 7,353,034. That is confirmed by the archived family listing (US11/099,362 … US7353034B2 … Location sharing and tracking using mobile phones or other wireless devices, filed 2005-04-04). No contradiction. I flag one earlier statement that remains only partly corroborated: the earlier section's description of the Federal Circuit's KSR-based reversal in Case No. 19-1164. My searches surfaced related in-family PTAB activity (e.g., docket references to Uber Technologies Inc. exhibit sets and to IPR2022-01349 [Cellco Partnership d/b/a Verizon Wireless](/litigations/by-plaintiff/Cellco%20Partnership%20d%2Fb%2Fa%20Verizon%20Wireless) v. AGIS Software Development LLC), but I could not retrieve the 19-1164 opinion itself in this session, so I treat it as reported, not independently verified.

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1. The claims at issue

Claim 1 (verbatim, Espacenet):

"1. A method of determining positions of multiple users, the method employing a server, the method comprising:
maintaining an account for a first individual, the account identifying a buddy list including the multiple users, the account accessible to the server;
storing a last known position for each of the multiple users;
in response to a first request from the first individual,
retrieving at the server a map representing a first geography, the map selected in dependence on position of at least one of the first individual or one of the multiple users,
based on correspondence if any between the last known position for each of the multiple users and the geography represented by the map, plotting positions on the map of each of the multiple users with the last known positions, and
transmitting the map with plotted positions to the first individual for display; and
in response to a second request from the first individual,
changing the geography to a second geography, and
transmitting a map representing the second geography with plotted position of at least one of the multiple users to the first individual for display;
where the storing of the last known position for each of the multiple users, the transmitting of the map representing the first geography and the transmitting of the map representing the second geography are each performed in a manner not requiring concurrent voice communications."

Decomposition into §103 limitations:

Dependent claims recovered: 2 (plot the requester's own position), 4 (automatically receive GPS from a built-in GPS device of a cell phone, absent contemporaneous voice), 7 (account per user; each user may selectively turn location sharing on/off), 8 (TCP/IP packets), 9 (lat/long + timestamp), 10 (map centered on a buddy), 11 (map centered on a center of gravity of at least two buddies), 12 (JAVA-compliant; re-center option), 13 (deliver to a cell phone internet browser), 14 (remote application run by cell-phone browser), 15 (JAVA rendering), 16 (default radius), 17 (default zone of size/shape), 18 (opt-in before a person is added to a buddy list), 19 (truncated in the source). Claims 3, 5, 6 and the balance of 19 were not recovered.

Critical date. Application 12/075,408 was filed 2008-03-11 as a continuation of 11/099,362, filed 2005-04-04. Assuming benefit holds, the §103 critical date is 2005-04-04 (pre-AIA §102(b) art: published/patented before that date; §102(e) art: U.S. filings before that date). Note the litigation risk in the other direction: because claim 1 was newly drafted in the 2008 continuation, a challenger may argue the claims are not entitled to the 2005 date, in which case X One's own pre-grant publications and the '034 itself become available art. I flag this as a priority/§103(c) battleground rather than resolving it.

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2. Legal framework applied

Graham v. John Deere Co., 383 U.S. 1 (1966): scope and content of the prior art; differences between the prior art and the claims; level of ordinary skill; secondary considerations. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007): combinations of known elements are obvious where the improvement is a predictable use of prior-art elements according to their established functions; design incentives and market forces count; a "finite number of identified, predictable solutions" makes the combination obvious; the motivation need not be found in the references themselves. In re Keller, 642 F.2d 413 (CCPA 1981): the test is what the combined teachings would have suggested to a PHOSITA. In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009): "obvious to try" applies where the art provides a finite, predictable set of options.

A negative limitation such as Element E ("not requiring concurrent voice communications") does not confer patentability where it merely recites the absence of a capability the prior art did not require in the first place or the inherent mode of operation of a known data channel (here, SMS/TCP-IP). In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) (a functional/negative recitation does not distinguish apparatus that inherently or foreseeably possesses the capability).

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3. The prior art on the record

3.1 Applicant-admitted prior art (from the specification quoted in this page)

The specification's "Definitions"/background passages in the provided text expressly concede:

1. "the one way location sharing prior art includes On Star and the Mercedes Benz TeleAid services where, via GPS receivers and cellular phone capability built into a car, an aid center can track cars all over the world and speak with the occupants and sense when the cars airbags have deployed." — This is a server-based, GPS-position-reporting, cellular, map-monitoring system: Elements A/B/C3 in one-way form.
2. "Other commercial services allow parents to track the locations of their children in a one way location sharing manner." — Server-based multi-target tracking with a "buddy list" (parent→child), i.e., a last-known-position store keyed to subscribed users.
3. "the prior art kid tracking systems could not be reconfigured in the field to add new individuals with whom location information was to be shared." — An admission that list-based tracking with editable membership existed.
4. The specification describes FIG. 12 as "a block diagram of a typical prior art cellular system infrastructure" and FIG. 16 as a "typical" cellular system with gateway, WAN and server. In other words, the entire transport architecture of claim 1 (cell network → gateway → TCP/IP → server) is admitted art.
5. The specification states the Buddy Watch server operates with an off-the-shelf "map server such as Yahoo maps" / MapQuest to obtain the map, and that "the map data may be for 'entire geographical areas' or a specific area 'that surrounds the positions of buddies to be displayed'" — i.e., server-selected, position-dependent map retrieval is admitted art.

Admissions in the specification are prior art for §103 purposes. In re Nomiya, 509 F.2d 566 (CCPA 1975); MPEP § 2129.

3.2 References cited on the face of the patent (leading portion recovered)

From uspto.report (ascending list, abridged to the ones most probative of claim 1):

Caveat: I recovered only the first ~45 entries of what is evidently a substantially longer list. The complete "References Cited" set, and the examiner's own §102/§103 grounds for 12/075,408, must be pulled from the file wrapper before any opinion is relied upon. What follows is an analyst-constructed obviousness case, not a reproduction of a rejection.

3.3 The page's own prior-art keyword set

The Google Patents "Prior art keywords" field for this document is: map, buddy, individual, server, multiple users. This is the searcher-classified conceptual core of the claims, and it maps 1:1 onto limitations A/B/C1/C3 — the fact that the Office's own classification of the invention reduces to five generic concepts is itself material to the Graham "scope and content" step.

3.4 The invention's own disclosure as third-party prior art

Search results show the Haney/"Buddy Tracker" disclosure has been used by third parties as prior art in later PTAB proceedings (e.g., petitions invoking Haney's "Instant Buddy," "Buddy Watch server," and "mapit command" teachings — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550152](/patent/1550152)/... and https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1555976](/patent/1555976)/...). Those are proceedings about other patents, but they establish that the '458 family's 2008 publication date is sufficient to make the same specification anticipatory/obviousness art against post-2008 filings — a fact pattern that matters for the continuation family generally.

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4. Person having ordinary skill in the art (PHOSITA), c. 2005

A POSITA would have a bachelor's degree in electrical engineering, computer science, or equivalent, plus 2–3 years' experience, or a master's degree plus 1–2 years, in one or more of: wireless/cellular data services; GPS/assisted-GPS positioning; client-server and web application development; and digital mapping/GIS. The POSITA knows: (i) A-GPS/E911 drove GPS into handsets; (ii) GPRS/1xRTT, WAP, SMS and J2ME/Java enabled packet data and downloadable client applications on phones; (iii) commercial map-rendering services (MapQuest, Yahoo Maps) exposed HTTP APIs for arbitrary center points and zoom levels; and (iv) the standard "cell tower → gateway → IP network → application server" topology that the '458 itself calls "typical prior art."

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5. Element-by-element analysis and combinations

5.1 Element mapping

5.2 Combination 1 — "Admitted prior art plus a conventional digital map service" (strongest, broadest)

Primary: the applicant-admitted OnStar / TeleAid / parental-tracking systems.
Secondary: US 5,642,303 (Small et al.) and US 5,559,707 (DeLorme) for on-display map plotting; and the admitted commercial map service (MapQuest/Yahoo) for server-selected, center-parameter-driven map retrieval.

Motivation (KSR, market forces): The specification itself states the business rationale that supplies the motivation — carriers needed to "recoup some of the costs imposed upon them by the E911 requirement," and the existing one-way services left the tracked party blind to the tracker. A POSITA seeking to (i) reuse the E911 GPS investment and (ii) convert a one-way tracking service into a mutual convenience feature would (a) retain the admitted server/account architecture, (b) add the reverse data path so the tracked user can see the others, and (c) present the result on the map display that DeLorme/Small and the commercial map services already provided. Every step is a substitution of one known element for another, with predictable results — the KSR paradigm.

Predicted scope: renders claim 1 obvious, and independently claims 2, 4 (E911 GPS handsets), 7 (sharing on/off), 8, 9 (TCP/IP, lat/long/time), 10, 13, 16, 17.

5.3 Combination 2 — "Cellular position-reporting references plus map-render references" (face-cited art only)

Primary: US 5,559,520 (Barzegar — cellular position locating) or US 5,650,770 (Schlager) or US 5,568,153 (Beliveau).
Secondary: US 5,559,707 (DeLorme) / US 5,574,648 (Pilley) / US 5,642,303 (Small) for GPS-to-map rendering; US 5,598,572 (Tanikoshi) for the portable-device position-aware UI.
Tertiary: US 5,629,693 / US 5,552,772 (Janky) for periodic position reporting to a central station of multiple tracked units (supplies "store last known position," "multiple users," "plot each").

Motivation: All three families address the same problem (locating and displaying the positions of multiple mobile units) and are from the same field and the same era; the references themselves are combinable because they are cited by this very patent as the state of the art. Under In re Keller, the test is what the combination teaches, and a POSITA implementing a multi-unit tracking display in 2005 would consult the fleet-tracking references (multi-unit, position-store, periodic report) and the navigation-display references (GPS→map plotting) as a matter of ordinary engineering.

Predicted scope: claim 1's limitations A–C3 and the dependent claims directed to lat/long/time and to the display, i.e., claims 9, 10, 13.

5.4 Combination 3 — "One-way system plus symmetric expansion" (attacks the asserted novelty of mutual sharing)

The specification's own statement of the problem — OnStar/TeleAid and kid trackers are "one way," and "None of these services allow the occupants of the car to know where the aid center is or allows the children to know where their parents are" — frames the invention's contribution as symmetry (bidirectional sharing) plus field reconfiguration (adding buddies on the fly).

For §103, a "reverse the direction"/"make it two-way" modification is the textbook example of an obvious design change where the benefit is inherent in the modification and the prior art already had the machinery in both directions (a server that stores positions for N subscribers need only serve the stored positions back to the N subscribers). KSR, 550 U.S. at 417 ("if a 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"); cf. In re Harza, 274 F.2d 669 (CCPA 1960) (duplication of parts is not inventive where no new result).

Motivation: commercial (value-added reverse channel; parental "check-in" and child "where are my parents" use cases are described in the spec itself as desirable) and technical (no architectural change needed).

5.5 Combination 4 — "Known client + known map server + known change-geography command" (attacks claims 8, 12–15, 16–17 and limitation D)

Primary: the admitted topology of FIG. 16 (cell → gateway → IP → server → map server).
Secondary: the admitted map services (MapQuest/Yahoo) and the admitted J2ME/Java, web-enabled handset platform.
Tertiary: the admitted "default radius / zone" configuration described in the '458's own FIG. 28A/28B discussion (Mapit screen radius, refresh rate).

Motivation: the '458's claim 1 does not claim how the geography is changed; it claims the bare step of changing it on a second request. Where the art supplies a map service that takes center/zoom parameters, using a second request with new parameters is "the mere arrangement of the parts" and entails no new function. KSR; In re Kuhle, 526 F.2d 553 (CCPA 1975) (a change in a single parameter yielding no unexpected result is obvious).

Predicted scope: claims 8 (TCP/IP), 12, 14, 15 (Java/browser rendering), 16, 17 (default radius/zone) are the most vulnerable of all.

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6. Claim-by-claim assessment

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7. Where the patent can defend itself (Graham factor 4 and the counter-case)

1. No single reference, and no pairing, discloses "map selected in dependence on user position with all in-geography buddies plotted from stored last-known positions." The patent owner's best argument is that the specific allocation — the server selects the geography and does the conditional spatial join, while the device merely displays — was not the natural architecture of the cited one-way services (which pushed a single tracked vehicle to a dispatcher). This is a "specific structure/ordering of steps" argument, and it is the strongest available.
2. Secondary considerations. To rebut, X One would need evidence (as of 2005 and later) of: (i) licensing/adoption by third parties (the family's large continuation set and the asserted licensing campaigns are consistent with, but are not themselves, evidence of commercial success); (ii) long-felt need for mutual location sharing; (iii) industry praise; (iv) unexpected results. I did not find, in this session, record evidence of secondary considerations — they must be sourced from the litigation record, which the prior section already flagged as incomplete.
3. Priority-date leverage. If the 2005-04-04 benefit holds, a challenger loses all X One's own 2008 publications and much of the 2005–2008 art. Conversely, if a challenger breaks the priority chain (new claim 1 matter introduced in the 2008 continuation), the field of available art expands sharply — including the pre-grant publication US 2008/0227473A1 and the '034. The priority question is therefore the single highest-leverage issue in any §103 challenge to this patent.
4. Precedent within the family cuts against the patent. The Fed. Cir. decision reported in the prior section (Case No. 19-1164) applied KSR and held location-plotting claims of sibling family members obvious under §103. My searches also surfaced in-family/ecosystem PTAB activity in which the Haney disclosure is itself used as prior art (e.g., the IPR2022-01349 Cellco/AGIS exhibit materials and Uber petition exhibits). Neither is an adjudication of the '458, but the direction of authority in this technology area is unfavourable to broad "plot buddy positions on a server-selected map" claims.

Bottom line: every element of claims 1, 2, 4, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17 and 18 appears to be disclosed or suggested by the applicant's own admitted prior art read together with the references cited on the face of the patent and the commercially available map services the specification itself names. The strongest §103 grounds are (i) admitted prior art + a conventional map server, and (ii) the face-cited position-reporting references + the face-cited GPS map-display references. The combination motivation is supplied directly by KSR-type market forces that the specification itself recites (E911 cost recovery, carrier demand, the deficiency of one-way tracking). The principal surviving defences are the specific server-side map-selection/plotting architecture and whatever secondary-considerations evidence the litigation record contains.

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8. Limitations of this analysis and what must be verified

1. The full "References Cited" list was not obtained. I recovered only entries beginning US 5,539,829 through US 5,650,770 from https://uspto.report/patent/grant/8,538,458. The complete list, and the examiner's citations for 12/075,408, should be pulled from USPTO Patent Center / Global Dossier. My combinations 2–4 are constructed from the recovered subset and are therefore illustrative, not exhaustive.
2. Claims 3, 5, 6 and the remainder of claim 19 are not in the Espacenet extract I retrieved; they are marked undetermined rather than assumed.
3. No IPR/PGR naming 8,538,458 was found — consistent with the prior litigation section. The IPR/PTAB items surfaced by my searches (1550152, 1555976, 2022-01349, and the Uber exhibit sets) concern other patents.
4. The Federal Circuit decision described in the prior section (19-1164) is reported there and not independently verified here; if it does not in fact rest on §103/KSR, the "precedent cuts against the patent" point in §7.4 should be revised.
5. Priority/§102(e) analysis depends on a limitation-by-limitation comparison of the new claim 1 of 12/075,408 against the disclosure of 11/099,362. The '458's specification (same disclosure) appears to support claim 1, which favours the 2005-04-04 date — but this should be confirmed against the file wrapper and the '034 as issued.
6. Per the operating rule, I have not auto-corrected any identifier. Where a reference number appears above, it is as returned by the source cited next to it; references in §5 that are not anchored to a specific URL are drawn from the cited-reference list at https://uspto.report/patent/grant/8,538,458 and should be confirmed against the granted patent's first page before being relied on in any filing.