Invalidity dossier
US 9654921
Techniques for sharing position data between first and second devices
Current assignee: X One Inc
Added 9/26/2026, 3:22:44 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
Patent Overview: US 9,654,921 B1
Title: Techniques for sharing position data between first and second devices
Patent number: US9654921B1
Inventor: Richard D. Haney
Original/current assignee (as listed): X One Inc
Prior art date (as listed): 2005-04-04
Application number: US15/270,280
Filing date: 2016-09-20
Publication/grant date: 2017-05-16
Legal status (as listed): Expired – Lifetime; anticipated expiration 2025-04-04
Purpose and plain-language scope. The prior-art keywords supplied — user, buddy, position data, phone, request — indicate the subject matter concerns sharing location ("position data") between a first and second device, such as phones, in a "buddy" context triggered by a request. The classifications (H04W4/02 for services using location information; G01C21/20 for navigational calculations; G01S19/01 for satellite positioning systems such as GPS/GLONASS/GALILEO) are consistent with a wireless-device location-sharing technique built on satellite positioning. Beyond these labels, the supplied excerpt contains no claim text, abstract, or written description, so the specific scope of the claims cannot be stated from this text alone.
Procedural notes in the source. The record shows assignment of interest to X One, Inc. (assignor Haney, Richard D., entries dated 2016-09-20 and 2016-10-11) and an indication that the family has litigation (Darts-ip link), which is noted here only as it appears in the source.
What this excerpt does not establish.
- The language, number, or scope of the claims.
- Any abstract or detailed description of the technique.
- What the cited prior art actually teaches, or whether it anticipates the claims.
- The accuracy of the listed assignees, dates, or legal status (the source itself states these are assumptions and not legal conclusions).
- Any facts about litigation, ownership transfers, validity, or enforceability; these were not examined per instruction.
Generated 10/16/2026, 11:21:11 AM
Cases on file (0)
Specific litigation cases in our database that name US patent 9654921. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 9,654,921. Let me search multiple sources.
Let me search for litigation specifically naming X One as plaintiff.
Let me search more specifically for the '921 patent in court dockets and recent X One litigation.
Findings: Litigation involving US Patent 9,654,921
Bottom line: I could not confirm any litigation in which US Patent 9,654,921 is specifically identified as an asserted (or otherwise at-issue) patent. The searches I ran surfaced no complaint, docket, IPR, or court opinion naming the '921 patent itself. I want to be explicit about that rather than map neighboring cases onto this number.
What the sources do show
1. The patent family carries a litigation flag, but not necessarily for the '921 patent.
The Google Patents record for US 9,654,921 B1 (application 15/270,280; filed 2016-09-20; granted 2017-05-16; assignee X One, Inc.; inventor Richard D. Haney) includes a "Family has litigation / First worldwide family litigation filed" indicator pointing to a Darts-IP family record (family=37071237):
That flag means some member of the family has been litigated — it is not confirmation that the '921 patent itself was asserted. Given that the '921 patent is a continuation in the same chain (11/099,362 → 12/075,408 → 13/188,414 → 14/479,226 → 14/805,472 → 15/270,280), the family litigation almost certainly refers to the sibling patents below.
2. The confirmed X One litigation I found asserted sibling patents, NOT the '921.
| Item | Detail |
|---|---|
| Case | X One, Inc. v. Uber Technologies, Inc. |
| Court / No. | N.D. Cal., 5:16-cv-06050-LHK (filing date not confirmed in my results; complaint referenced ECF No. 1) |
| Patents asserted | US 8,798,593 ('593) and US 8,798,647 ('647) — not the '921 |
| Outcome | District court granted Uber summary judgment of noninfringement (2019), denying invalidity/validity motions as moot |
| Related PTAB | IPR2017-01255 ('593) |
| Related appeals | Uber Techs., Inc. v. X One, Inc., Nos. 2019-1164 and 2019-1165 (Fed. Cir. May 5, 2020) — Federal Circuit reversed the PTAB, holding certain claims obvious under §103 |
Sources: https://case-law.vlex.com/vid/x-one-inc-v-894408304 ; https://www.courtlistener.com/docket/[4495989](/patent/4495989)/73/x-one-inc-v-uber-technologies-inc/ ; https://cases.justia.com/federal/appellate-courts/cafc/19-1164/19-1164-2020-05-05.pdf ; https://www.alston.com/en/insights/publications/2020/05/patent-case-summaries-week-ending-may-8-2020/
3. A more recent X One filing appears to assert still other patents.
A complaint-analysis page references X One Inc v. Domino's Pizza Inc, E.D. Tex., case 2:26-cv-00311, concerning Domino's "Pinpoint Delivery"/"Domino's Tracker" and purporting to assert patents identified there as '402 and '705 — again, not the '921.
Caveats and recommended verification
- My access was limited (search calls were capped before I could fully traverse PACER, CourtListener dockets, or the Unified Patents litigation caselist). It is possible a suit asserting the '921 exists but did not surface.
- The '921 patent has a scheduled expiration around 2025-04-04 (per Google Patents), and its legal status is listed as "Expired – Lifetime," which may bear on whether it is currently being asserted.
- Per the strict instructions, I have not auto-corrected any identifiers. Note in particular that the '593, '647, '402, and '705 patents are different numbers from '921 and should not be treated as equivalents.
To confirm definitively, the authoritative next checks are:
- Unified Patents litigation caselist — https://portal.unifiedpatents.com/litigation/caselist (search "9,654,921")
- Darts-IP family 37071237 (linked from the Google Patents page) to see which family members were actually asserted
- PACER / CourtListener docket search for "X One" as plaintiff, filtering for complaints naming 9,654,921
If you'd like, I can run those targeted docket queries next and report back on whether the '921 specifically appears.
Generated 9/28/2026, 4:03:28 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by searching for any PTAB proceedings on US 9,654,921.
Let me dig into the specific proceedings involving X One patents.
The X One IPRs I found so far were on the '593 and '647 patents. Let me check whether the '921 patent itself was ever challenged, and look at the broader litigation family.
Proceedings overview
Total AIA trial proceedings on US 9,654,921: 0 (zero). The USPTO Open Data Portal structured block reports no IPR, PGR, or CBM on this patent, and my web searches surfaced none either — no institution decision, no FWD, no termination, no appeal. Breakdown by status is therefore: active 0 / claims invalidated 0 / claims sustained 0 / settled 0 / institution denied 0.
The bottom line for a defendant: no claim of the '921 has ever been tested at the PTAB, so nothing is canceled and nothing is estoppel-cleared — the patent is "untested," not "hardened." The single most important practical fact is different and in your favor: per the Google Patents record, the '921 expired 2025-04-04 (20 years from the 2005-04-04 priority date), and its recorded legal status is "Expired – Lifetime." A 2017-issued patent in the X One "Buddy Watch" family that survives to expiry without ever attracting an IPR is unusual; the rest of the family did not have that luck.
Related-proceeding intelligence (different patents — NOT enforceable against the '921)
Because there are no proceedings on the '921 itself, there is no per-proceeding section to populate. I am instead flagging the materially relevant activity on sibling X One family patents (same assignee X One, Inc.; same sole inventor Richard D. Haney; same 2005-04-04 priority date; overlapping specification). Treat this as intelligence only — it creates no estoppel and no claim-level effect on US 9,654,921.
Caveat on numbers: I could not confirm the underlying PTAB trial numbers for these IPRs from the sources I retrieved. I am therefore citing them by Federal Circuit docket number and marking the PTAB numbers as unconfirmed. I have deliberately not guessed them.
Fed. Cir. 19-1164 — Uber Technologies, Inc. v. X One, Inc. (IPR on U.S. 8,798,593)
- Type: Inter Partes Review (family-related patent; not US 9,654,921)
- PTAB trial number: not confirmed from available sources
- Status: FWD held challenged claims not unpatentable; reversed and remanded by the Federal Circuit
- Judge panel (CAFC): Prost (C.J.), Dyk, Wallach — 3-0, precedential, decided 2020-05-05
- Petition grounds: obviousness (§ 103) of claims 1, 2, 5, 9, 19 over Okubo (JP 2002-10321) + Konishi (JP 2002-352388); ground 2: claims 1, 2, 5, 6, 9 over Okubo + Konishi + U.S. 6,636,803 (Hartz); two further grounds based on Makoto (JP 2002-199433) — not appealed
- Institution: instituted
- FWD: Board found the limitation "software … to transmit the map with plotted locations to the first individual" not rendered obvious (rejected Uber's server-side-vs-terminal-side plotting substitution as impermissible hindsight / a "wholesale modification to Okubo"); because independent claim 19 shared the limitation and all others depended from claim 1, the Board found all challenged claims not unpatentable and never reached the remaining limitations
- Appeal: appealed as 19-1164; reversed and remanded — the panel held there are only two identified, predictable options (server-side vs. terminal-side plotting), so the substitution was an obvious design choice under KSR. Opinion
- Defensive value for the '921: this is the most useful roadmap in the family — Okubo/Konishi/Hartz are available art against the '921 too, and the CAFC (precedent) has already blessed the server-side-plotting combination. But it is only a roadmap; nothing about it is binding or estopped as to the '921.
Fed. Cir. 19-1165 — Uber Technologies, Inc. v. X One, Inc. (IPR on U.S. 8,798,647)
- Type: Inter Partes Review (family-related patent; not US 9,654,921)
- PTAB trial number: not confirmed from available sources
- Status: FWD held challenged claims not unpatentable; reversed by the Federal Circuit; X One then sought panel rehearing
- Judge panel (CAFC): not confirmed (opinion marked nonprecedential), decided 2020-03-03
- Petition grounds: obviousness (§ 103) of claims 1, 4-11, 13, 22-25, 27-28, 31-37, 39-42, 45; independent claims 1, 22, 28 based on Konishi (JP 2002-352388) and/or Mitsuoka (JP 2003-168190), with additional art for dependents
- FWD: Board construed "responsive to launching an application" as requiring invocation "during or near" launch, found Konishi/Mitsuoka did not teach it, and found the independent claims not unpatentable; it did not separately reach the dependent claims
- Appeal: appealed as 19-1165; reversed — the panel construed the limitation to allow invocation "minutes or hours" after launch (to preserve a disclosed embodiment) and held Konishi and Mitsuoka taught it. Opinion; see also the Mealey's report, 2020-03-04. X One filed a petition for rehearing (CAFC Doc. 49, filed 2020-04-02) arguing the panel made new fact findings; I could not confirm the disposition of that rehearing request.
Parallel district court exposure (same family, context only)
- X One, Inc. v. Uber Technologies, Inc., No. 16-cv-06050-LHK (N.D. Cal.) — asserted the '593 and '647 patents. Judge Lucy Koh granted summary judgment of noninfringement on '593 claim 19 and made related § 101 rulings. Docket on CourtListener. X One's IPR arguments were used against it as prosecution disclaimer in that case.
No defensive aggregator (e.g., Unified Patents) surfaced in any search on this family.
Strategic summary
Claim status on the '921. Every claim of US 9,654,921 is UNTESTED — there are no canceled claims and no sustained claims, because no AIA trial was ever instituted. Anyone who tells you "claims 1–5 of the '921 were canceled in an IPR" is confusing the '921 with the '593 or '647 (or inventing it). Conversely, do not treat the family's IPR history as a win for the patent owner: the Board's pro-patent-owner FWDs in both the '593 and '647 IPRs were reversed on appeal, so the Federal Circuit has never endorsed these claims. The claims' real vulnerability was never resolved at the PTAB; instead, the practical event is that the patent expired 2025-04-04 (verify the exact term date on Patent Center — including any § 154(b) patent term adjustment, terminal disclaimer, or maintenance-fee lapse). Post-expiry, there is no ongoing infringement; exposure is limited to past damages within the 35 U.S.C. § 286 six-year lookback, and only if suit was timely filed.
Estoppel landscape. No § 315(e)(2) estoppel attaches to any party as to the '921, because no IPR/PGR on the '921 ever reached FWD. Uber's estoppel (if any) is confined to the '593 and '647 claims it actually challenged. That means every prior-art ground remains available against the '921 — including Okubo, Konishi, Hartz, Mitsuoka, and Makoto, all of which the CAFC has already held to be combinable in this exact family and field. The practical constraints on a new IPR are procedural, not estoppel-based: (a) the § 315(b) one-year bar runs from service of a complaint alleging infringement of the '921 (so service on the '593/'647 does not start your clock); (b) the patent is expired, which makes IPR largely pointless now and, under the USPTO's 2025-era discretionary-denial practice (settled-expectations / parallel-litigation factors), an institution on a 2005-priority, expired patent is a very poor bet. District-court § 102/§ 103 invalidity and § 101 are the realistic vehicles if you are being sued on past conduct.
Pattern signals. Same petitioner (Uber) filed two separate IPRs against two different X One family patents with parallel appeals — and won both on appeal — so X One is a proven, repeated IPR target with a mixed record. X One litigated the appeals aggressively (including a rehearing petition in 19-1165). There is no aggregator in the chain. The striking asymmetry is that the '921 itself never drew a single petition, which is consistent with it being asserted later (it issued 2017-05-16) and/or less central to the campaign than the '593/'647.
Recommended next steps
- Lead with the expiry. If you hold a demand letter citing US 9,654,921, confirm the term date on Patent Center / the Google Patents record (patents.google.com/patent/US9654921/en) — recorded legal status is "Expired – Lifetime," anticipated expiration 2025-04-04. If accurate, ongoing-infringement and injunctive theories are dead; only pre-expiry past damages under § 286 remain live.
- Do not concede the "survived IPRs" narrative. There is no IPR on the '921 to survive. If opposing counsel implies otherwise, ask for the PTAB proceeding number and the FWD citation — the correct answer is that none exists.
- Mine the family IPRs as a free invalidity roadmap. Copy the Okubo / Konishi / Hartz / Mitsuoka / Makoto combinations and the CAFC's two reversals (19-1164, 19-1165), and build § 103 contentions against the '921 claims on that foundation in district court.
- If you have been served on the '921, calendar the § 315(b) one-year date from that specific complaint — but weigh a petition against the 2025 discretionary-denial climate; given expiry, a district-court invalidity/§ 101 posture is likely the better spend.
- Verify before you rely. Check PTAB E2E / P-TACTS directly for the '921, and confirm the unconfirmed PTAB trial numbers underlying CAFC 19-1164/19-1165. I have flagged every limitation in my sourcing rather than guess a proceeding number.
Confidence statement: I am confident the ODP block reports zero proceedings and that my searches found none on the '921. I am not able to confirm the PTAB trial numbers for the '593/'647 IPRs from the material retrieved, nor the outcome of the '593 remand or the '647 rehearing — those specific points should be verified on P-TACTS before being relied on.
Generated 9/28/2026, 4:04:12 PM
Ownership chain (2)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2016-09-20 · Assignment
? · recorded 2016-10-11 · Assignment
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 9654921 across the sources specified.
Ownership & Assignment Reconstruction — US 9,654,921 B1
Patent: US 9,654,921 B1, "Techniques for sharing position data between first and second devices"
App. No.: 15/270,280 · Filed: 2016‑09‑20 · Issued: 2017‑05‑16 · Priority: 2005‑04‑04 (continuation chain: 14/805,472 → 14/479,226 → 13/188,414 (US 8,831,635) → 12/075,408 (US 8,538,458) → 11/099,362 (US 7,353,034))
Status per Google Patents legal events: Expired – Lifetime (anticipated expiration 2025‑04‑04); Current Assignee: X One, Inc.
Data-access limitation, stated up front: I was able to retrieve the fact, type, assignor/assignee, and recording dates of the recorded assignments from Google Patents legal events and third-party mirrors (PlainSite). I was not able to retrieve USPTO reel/frame numbers or the correspondent of record from the Assignment Center within this session. Those two fields are exactly the ones you care most about, so treat the Reel/Frame and Correspondent lines below as "not retrieved — requires a manual query at the Assignment Center" rather than as blanks I filled. I have not invented numbers.
Inventors
| Inventor | Location at filing | Employer at filing |
|---|---|---|
| Richard D. Haney (sole inventor) | Union City, CA | X One, Inc. — Haney is described in litigation filings as "X One's principal" |
Pattern notes:
- Single-inventor portfolio. Every member of this family that I reviewed (7,353,034; 8,538,458; 8,831,635; 9,654,921; and the later continuations such as 10,200,811; 10,341,808; 11,356,799) lists Richard D. Haney as the sole named inventor. There are no co-inventors, so the classic "all inventors departed the assignee within 12 months" fire‑sale tell is not observable — and in any event the inventor never left: he is the assignee's principal.
- Founder-controlled, single-principal portfolio. The litigation record states the technology "was developed by Plaintiff's principal, Richard Haney" (X One, Inc. v. Uber Technologies, Inc., N.D. Cal. 5:16‑cv‑06050, Compl. ¶ 7). This is a one-man inventor/owner structure, not an R&D team that dispersed.
Original assignee
X One, Inc. — named as assignee on the face of the issued patent ('921) and of the parent '034 patent ("Assignee: X One, Inc., Union City, CA").
- Entity type / domicile: Delaware corporation with principal place of business in Union City, California (X One v. Uber, Compl. ¶ 1). Note: it is a corporation, not an LLC — no "IP/Holdings/Licensing/Ventures" shell suffix.
- Stated line of business: vendor of the "Buddy Watch™ / Buddy Tracker™" GPS location‑sharing application + server described in the specification. The spec describes the software as downloadable from the web or pre-installed at point of sale, and contemplates carrier subscription distribution.
- Did it ship a product embodying the claims? No credible evidence found. In every source I reviewed, X One appears only as a patent applicant, patent owner, and plaintiff — never as a seller of a commercial location‑sharing product. The specification itself is aspirational ("the teachings of the invention can also be integrated into other products"), and the portfolio profile (32 grants, all in G06F, −67% grant velocity over the last five years, per PatentsView/PlainPatent) is consistent with a continuation‑generation monetization portfolio rather than a shipping product line.
- Current status: Still in existence and still the owner of record; actively litigating as of 2026 (E.D. Tex. filings against Domino's and DoorDash). I found no record of acquisition, dissolution, or bankruptcy.
Assignment timeline
Only two post‑filing assignments are recorded against this patent/prosecution file. Both run from the sole inventor to the same entity that is already the named assignee. Neither transfers the patent out of X One, Inc.
2016‑09‑20 (recording event) — Reel/Frame: not retrieved (Assignment Center query required)
- Conveyance: Assignment — recorded in USPTO event data as "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)"
- Assignor: Haney, Richard D.
- Assignee: X One, Inc.
- Correspondent: not retrieved — cannot confirm or deny recurrence. If this correspondent also appears on the subsequent X One family recordings, that would be the single most probative field here; it is flagged as an open item.
- Context: Confirmatory / title‑perfection — inventor assigns the newly filed continuation application (15/270,280, filed the same day) to the pre‑existing assignee of the family, preserving a clean chain of title for the continuation.
2016‑10‑11 (recorded) — Reel/Frame: not retrieved (Assignment Center query required)
- Conveyance: Assignment — same "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)" form
- Assignor: Haney, Richard D.
- Assignee: X One, Inc.
- Correspondent: not retrieved — same open item as above.
- Context: Confirmatory / chain‑perfecting duplicate — identical assignor→assignee pair three weeks after the first record; consistent with a re‑record / correcting filing rather than a real change in ownership. Executed/recorded 8 days before X One filed its 2016‑10‑19 complaint against Uber (which asserted sibling patents '593 and '647, not '921) — a timing coincidence worth noting, not evidence of assignment‑to‑enable‑assertion.
Interpretation: There is no true "ownership chain" here. The chain is: inventor → original assignee, perfected twice at the USPTO in 2016, and it stops there. Everything X One owns, it has owned from the start. The patent has never been assigned to a third party, and the Google Patents legal‑events record shows no security agreement, merger, change of name, license, or release recorded against it.
Verification link (Assignment Center, search by patent number 9654921):
https://assignmentcenter.uspto.gov/ · legacy interface: https://assignment.uspto.gov/patent/index.html
Timeline diagram
timeline
title Ownership of US 9654921
2005 : Priority application filed by Haney
2008 : Parent patent 7353034 issues to X One
2016 : Continuation application filed
: Haney assignment recorded to X One
: Second Haney assignment recorded
: X One sues Uber on family patents
2017 : US 9654921 issues to X One
2020 : Uber wins summary judgment of noninfringement
2026 : X One sues Dominos and DoorDash
NPE / troll‑pattern signals
| # | Signal | Call | Evidence |
|---|---|---|---|
| 1 | Shell‑entity transfer | Not present | No assignment ever leaves the original assignee. There is no "IP / Holdings / Licensing / Ventures" LLC in the chain, no registered‑agent address, and no single‑member Delaware/Texas LLC. The only assignee is X One, Inc., a Delaware corporation at a real Union City, CA business address, and it held the patent from issuance to today. |
| 2 | Known asserter in the chain | Not present | Neither assignor nor assignee matches the Acacia / Marathon / IV / IPNav / Wi‑LAN / Conversant / Vringo / Pendrell / Innovatio / MPHJ / Lumen View / Round Rock / Spangenberg lists. X One appears in the RPX Insight litigation database only as a litigant (5:16‑cv‑06050), not as a flagged high‑frequency NPE portfolio. |
| 3 | Repeat correspondent across the chain | Unclear — cannot be called | Two recorded events exist, both of which would name a correspondent — but I could not retrieve the correspondent field for either. Per your instruction, I will not infer recurrence from naming alone. Action item: pull both records at the Assignment Center and compare correspondents. |
| 4 | Cascading transfers | Not present | The two records are 21 days apart (2016‑09‑20 and 2016‑10‑11), involve the same assignor and the same assignee, and are therefore a re‑record/confirmatory pattern, not chained LLCs. No consecutive transfers through different entities in <24 months. |
| 5 | Pre‑litigation transfer | Not present (as to this patent) | No infringement suit naming '921 was located. The nearest events are the second recording on 2016‑10‑11, eight days before the 2016‑10‑19 X One v. Uber complaint — but that case asserted US 8,798,593 and US 8,798,647, not '921 (which had not yet issued). The family-level proximity is noted; it does not satisfy the signal for this patent. |
| 6 | Bankruptcy fire‑sale | Not present | No Chapter 7/11 record; no assignment out of X One. |
| 7 | Privateering | Not present | No operating company transferred these patents to an NPE to assert against competitors. X One is itself the plaintiff and is the original owner. |
| 8 | Defensive aggregator | Not present | Chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. X One retains and asserts the assets. |
Additional conduct-level observations (not ownership‑chain signals, but relevant to posture):
- X One litigates its own family rather than licensing quietly: X One, Inc. v. Uber Technologies, Inc., N.D. Cal. 5:16‑cv‑06050, filed 2016‑10‑19, closed 2020‑02‑19 (summary judgment of noninfringement for Uber), with a parallel Federal Circuit appeal (19‑1164) in which the PTAB's refusal to cancel claims was affirmed.
- X One has filed newer campaigns: X One Inc v. Domino's Pizza Inc, E.D. Tex. 2:26‑cv‑00311 and X One Inc v. DoorDash Inc, E.D. Tex. 2:26‑cv‑00312, asserting sibling continuations in this same family (e.g., the '402, '705, '071, '310 and '415 patents) against customer/driver delivery‑tracking features.
- The Google Patents page carries the Darts‑ip "Family has litigation" flag for family 37071237 — a family-level, not patent-specific, flag.
Verdict
NPE — moderate confidence.
The moderate (rather than high) call is deliberate: on the ownership‑chain axis this patent is clean — it has never left X One, Inc., the original assignee named on the face of the patent, and the only two recorded assignments (2016‑09‑20 and 2016‑10‑11) are confirmatory inventor→assignee records for the continuation application, not transfers to a shell or to a known asserter (reel/frame and correspondent not retrievable this session). What drives the NPE characterization is conduct plus absence of any product: a single‑inventor‑controlled Delaware corporation that appears nowhere in commerce as a seller, that generates continuations over 2005–2024, and that files serial infringement suits against large third parties (N.D. Cal. 5:16‑cv‑06050 v. Uber, filed 2016‑10‑19, lost on summary judgment 2020‑02‑19; E.D. Tex. 2:26‑cv‑00311 v. Domino's and 2:26‑cv‑00312 v. DoorDash, 2026). That is a non‑practicing assertion posture, but it is not corroborated by the assignment record, which is why this is not a high‑confidence finding.
To upgrade to high confidence, retrieve two things manually: (1) the correspondent of record on both 2016 recordings — recurrence by a single attorney/firm across the X One family would be substantial; and (2) any license or exclusive‑license record for the family, which would clarify who is directing the campaign.
Primary verification: https://assignmentcenter.uspto.gov/ (search patent number 9654921) and https://assignment.uspto.gov/patent/index.html
Generated 9/28/2026, 4:04:10 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior-art citations for US Patent 9,654,921 specifically. Let me run targeted searches.
The searches surfaced the X One Family IPR prior art (Okubo, Konishi, etc.), but those were asserted against sibling patents ('593, '647), not necessarily '921. Let me pull the actual "References Cited" list for the '921 patent itself.
Prior-Art Analysis — US Patent 9,654,921 B1
Bottom line up front (and an honest limitation): I could not retrieve the verbatim "References Cited" / "Patent Citations" list as printed on the face of US 9,654,921, nor its granted claims. The authoritative full text supplied for this patent stops at the BRIEF DESCRIPTION OF THE DRAWINGS section, and my searches returned the Google Patents page structure and the family's litigation art — but not the exact examiner/applicant citation table for the '921 specifically.** Per the standing rule, I will not fabricate a citation list or a §102 mapping as though it were verbatim. What follows separates (A) what I verified, from (B) what is inferential, from (C) what must be pulled directly from USPTO.
1. What I could verify about the '921 patent itself
| Field | Value (as returned) | Source |
|---|---|---|
| Patent | US 9,654,921 B1 | Google Patents |
| Title | Techniques for sharing position data between first and second devices | Google Patents |
| Inventor | Richard D. Haney | Google Patents |
| Assignee | X One, Inc. | Google Patents |
| App. no. / filing | 15/270,280 / 2016-09-20 | Google Patents |
| Priority | 2005-04-04 (11/099,362) — Unified Patents lists 2005-04-03 | Google Patents / Unified Patents |
| Status | Expired – Lifetime; anticipated expiration 2025-04-04 | Google Patents |
| Family litigation flag | Darts-IP family 37071237 | Google Patents |
Important legal frame: because the effective priority date is April 2005 (pre-AIA), the §102 analysis for the '921 runs under the pre-AIA statute (§102(a)/(b)/(e)), not AIA §102(a)(1)/(a)(2). That matters for how each reference is characterized below — and it is why the family's IPR art (all pre-2005 Japanese publications and US patents) is directly probative.
2. Verified prior art from the X One family record (the strongest leads)
I could not confirm that these appear on the face of the '921 patent. However, they are the references the PTAB / Federal Circuit actually used against X One's sibling patents ('593 and '647) in the same continuation family and the same specification. They are the most probative art for the '921 subject matter because the '921 shares the specification. I present them with that express caveat.
(a) Okubo — JP 2002-10321 (Japanese Unexamined Patent Application Publication)
- Full citation: Japanese Unexamined Patent Application Publication No. 2002-10321 ("Okubo"), Mobile Terminal Position Information Communication System.
- Date: published 2002 (laid-open).
- What it discloses (as found by the CAFC): "a two-way 'mobile terminal position information communication system' which 'enable[s] acquisition of the position information for group members belonging to the same group.' Mobile device users can form 'groups' which allow each group member to see the locations of all other group members, and themselves, plotted on a map."
- §102/§103 relevance: Anticipates/renders obvious the two-way group location sharing and group-membership concepts. In the '593 IPR it was the primary reference for claim 1's "buddy list" + "map" concepts (terminal-side plotting).
- Source: CAFC No. 19-1164, slip op. (May 5, 2020), https://cases.justia.com/federal/appellate-courts/cafc/19-1164/19-1164-2020-05-05.pdf
(b) Konishi — JP 2002-352388
- Full citation: Japanese Unexamined Patent Application Publication No. 2002-352388 ("Konishi"), Vehicle Allocation System.
- Date: published 2002.
- What it discloses: a customer reserves a vehicle (taxi) via a "mobile telephone set"; the system plots "the current positions of the customer and available vehicles" on a map and "transmits the map to an information terminal of the customer." Once reserved, the customer's map also shows that specific vehicle.
- §102/§103 relevance: The CAFC held Konishi teaches the server-side plotting and transmission limitation ("software … to transmit the map with plotted locations to the first individual"). This maps onto the '921's server-mediated position-data exchange + map rendering.
- Source: same CAFC opinion; Uber Techs. v. X One, 957 F.3d 1334 (Fed. Cir. 2020).
(c) Hartz — U.S. Patent No. 6,636,803
- Full citation: U.S. Patent No. 6,636,803 ("Hartz").
- Date: issued Oct. 21, 2003.
- Use: added as a third reference in Uber's second IPR ground (Okubo + Konishi + Hartz).
- §103 relevance: secondary reference; Uber did not rely on Hartz for the disputed "transmit the map" limitation. Useful as corroborating art on client/server location architectures.
(d) Mitsuoka
- Full citation: "Mitsuoka" — Japanese-language prior art reference relied on in the '647 IPR.
- What it discloses (per CAFC): a system in which "users re-serve taxis and view taxi positions on a map."
- §102/§103 relevance: The Federal Circuit held the "'in association with' limitation would have been obvious in light of … Mitsuoka," and independently that the '647 independent claims were obvious over Mitsuoka. Directly relevant to on-demand position request + map display claims.
- Source: IP Law Daily summary, https://www.vitallaw.com/news/top-story-fed-cir-uber-wins-appeal-challenging-validity-of-patent-for-exchanging-gps-data-between-devices/...
(e) Makoto — JP 2002-199433
- Full citation: Japanese Unexamined Patent Application Publication No. 2002-199433 ("Makoto").
- Date: published 2002.
- Use: Uber's additional grounds (Makoto alone, and Makoto + Hartz). Not appealed.
- §102/§103 relevance: further 2002-era Japanese art on location exchange; corroborative.
Citation-relationship note (do not conflate): Okubo, Konishi, Hartz, Mitsuoka, and Makoto were asserted against US 8,798,593 and US 8,798,647, not against US 9,654,921. Those are different patent numbers and should not be treated as the '921's own face citations. They are offered because the shared specification makes them the best-grounded §102/§103 candidates for the '921's subject matter.
3. Inferential §102 mapping (explicitly flagged as inference, not verified claim text)
Because I do not have the verbatim claims of the '921, the following maps art to claim types rather than to numbered claims, and must be re-run against the actual claims once retrieved:
| Art | Likely claim element it reaches | Statute |
|---|---|---|
| Okubo (JP 2002-10321) | Two-way sharing; buddy-list/group formation; plotting group members on a map | §102(a)/(b) or §103 |
| Konishi (JP 2002-352388) | Server-side plotting; "transmit the map with plotted locations" to a user | §102/§103 |
| Mitsuoka | Requesting a position update and viewing positions on a map | §103 |
| Hartz (US 6,636,803) | Client/server location-services architecture | §103 (secondary) |
| Makoto (JP 2002-199433) | Location exchange between mobile terminals | §102/§103 |
All five predate the April 2005 priority date and therefore qualify as prior art under pre-AIA §102(a)/(b) (printed publications) — subject to confirmation that they were publicly available before the critical date.
4. What I could NOT retrieve — and how to get it (the authoritative next steps)
I must be direct: I did not obtain the face-of-patent citation table or the claims for the '921. The Google Patents structural data and Wayback snapshot returned only the classification tree, abstract, and description — not the "Patent Citations" / "Non-Patent Citations" tables or the claims column. I also did not successfully query the USPTO's own Patent Public Search / Patent Center in this session, and my last tool calls were capped.
To complete this task rigorously, pull the authoritative sources directly:
- USPTO Patent Public Search — https://ppubs.uspto.gov/pubwebapp/ (search 9654921) → "References Cited" and "Claims" tabs. This is the controlling data.
- USPTO Patent Center — https://patentcenter.uspto.gov/ (application 15/270,280) → full file wrapper, examiner citations, IDS.
- Google Patents → "Patent Citations" and "Cited By" — https://patents.google.com/patent/[US9654921B1](/patent/US9654921B1)/en (the citation tables are populated below the description; my fetches truncated before reaching them).
- FreePatentsOnline — https://www.freepatentsonline.com/9654921.html (renders the full "References Cited" table).
- Darts-IP family 37071237 — to confirm which family member's art actually maps to the '921.
5. Caveats and compliance notes
- No fabrication: I have not invented or "auto-corrected" any patent number or identifier. Where I lacked the '921's own citation list, I said so.
- Do not treat '593, '647, '402, '705 as the '921. Those are distinct numbers from different (though related) cases.
- '921 is expired (anticipated 2025-04-04), so §102/§103 prior-art analysis is now of largely historic/validity-value only — but it remains the correct frame if the family's later patents (or damages tail) are at issue.
- Confidence: High on the five family-record references and their dates/substance. Low on whether any of them appears on the '921's face — that requires the retrieval steps in §4.
If you'd like, I can next attempt the direct FreePatentsOnline/Google Patents citation-table fetch for 9654921 and produce a reference-by-reference table mapped to the actual granted claims.
Generated 9/28/2026, 4:03:54 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the actual claim set and prior-art record for this patent before analyzing. Let me run several targeted searches.
Let me pull the actual claim text for the '921 patent and check for any IPR/challenge history on it.
Obviousness Analysis — US 9,654,921 B1 (35 U.S.C. § 103)
Prepared: April 26, 2026 (per task date) — see the date-conflict flag in §0.2
Patent: US 9,654,921 B1, "Techniques for sharing position data between first and second devices," X One, Inc., appl. 15/270,280, filed 2016‑09‑20, issued 2017‑05‑16, priority 2005‑04‑04 (11/099,362).
0. Scope, data quality, and contradictions I must flag first
0.1 I do not have the '921 claim set, and no "Prior Art section" was supplied with this task. The user instruction says to "use the results from the Prior Art section of this page," but no such section exists in the material provided to me; the authoritative full text stops at the BRIEF DESCRIPTION OF THE DRAWINGS. Consistent with the earlier-generated sections, my searches did not surface verbatim claims for US 9,654,921 specifically. Therefore the element-by-element mapping in §4–§5 is built on (a) the specification common to this family, which I do have in full, and (b) the representative claims of sibling patents in the same continuation chain, which I could verify from court records. I label every such use explicitly. I will not present sibling claim language as the '921's claims.
0.2 Date conflict (flagged, not reconciled). The system/context date I am operating under is 2026‑09‑28; this task states April 26, 2026, and the previously generated sections were also written as of April 26, 2026. I have not auto-corrected either. Nothing in the analysis below turns on the ~5-month difference, but the reader should know the discrepancy exists.
0.3 A different patent is also called "the '921 patent" in the wild. A Maryland district court opinion refers to "the ‘921 patent" as containing "one independent claim—Claim 1" directed to a physical storage device/card, a reader, and software to automatically configure a baseball-pitching system for a user (FungoMan matter, https://storage.courtlistener.com/recap/gov.uscourts.mdd.[392862](/patent/392862)/gov.uscourts.mdd.392862.63.0.pdf). That is not US 9,654,921. I record this only because it is exactly the kind of identifier collision the no-auto-correction rule is designed to catch.
0.4 Confirmed consistency with prior sections: earlier sections found (i) no verbatim '921 claims and (ii) no litigation/CAFC/IPR docket naming the '921 itself. My searches again found no IPR petition naming US 9,654,921. The verified prior-art record below comes from the sibling patents' IPRs, not from a challenge to the '921.
0.5 Legal status caveat (from the earlier section, unchanged): Google Patents lists the '921 as "Expired – Lifetime," anticipated expiration 2025‑04‑04. Obviousness still matters for the pre-expiration damages window and for any pending dispute, but there is no live exclusivity to defend prospectively.
1. Governing law and the level of ordinary skill
Because the '921 claims an effective filing date of 2005‑04‑04 (assuming the §120 chain is supported — see §7), the pre‑AIA version of §103 governs. That is how the family was actually adjudicated: the Board wrote that "[a] patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious…" (Graham v. John Deere, 383 U.S. 1, 17–18 (1966); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)) — IPR2017‑01255 FWD, https://fedcircuitblog.com/wp-content/uploads/2020/06/Uber-op-below.pdf.
Level of ordinary skill in this art (adopted by the PTAB in the family's IPR): a person with a four-year degree in electrical engineering, computer science, or a related field (or equivalent experience) and two years of experience in or with mobile wireless communications and navigation systems. (The Board expressly declined to adopt the qualifier "at least" as to the degree because it "introduces vagueness.") The Board also credited the understanding that such a person grasps mobile wireless communications and navigation at the system level — from the user-facing application through the signal-receiving elements — without needing deep expertise in any single subsystem. Source: IPR2017‑01255 FWD (same URL); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020), https://cases.justia.com/federal/appellate-courts/cafc/19-1164/19-1164-2020-05-05.pdf.
Practical consequence: a relatively high level of skill makes obviousness easier to establish. The Board's framing of a system-level artisan with two years in mobile location services is favorable terrain for a §103 challenger, because it means the artisan would appreciate both client-side and server-side implementation options and the trade-offs between them.
2. The verifiable prior-art record for this family
| Reference | Identity | What the record establishes it teaches | Date / status |
|---|---|---|---|
| Okubo | JP Unexamined Patent App. Pub. No. 2002‑10321 | Two-way "mobile terminal position information communication system" that enables acquisition of position information for group members belonging to the same group; users form groups; each member sees the locations of all other group members, and themselves, plotted on a map (Fig. 3 shows own position in green, others in yellow) | Published 2002 → pre‑2005, §102(b)-eligible |
| Konishi | JP Unexamined Patent App. Pub. No. 2002‑352388 | "Vehicle allocation system" in which a customer reserves a vehicle (taxi) via a mobile telephone set; the system plots the current positions of the customer and available vehicles on a map and transmits the map to the customer's information terminal — i.e., server-side plotting | Published 2002 → pre‑2005, §102(b)-eligible |
| Hartz | U.S. Patent No. 6,636,803 | Cited only in Ground 2 of the '593 IPR (Okubo + Konishi + Hartz). I could not verify Hartz's specific teachings from my searches, and Uber did not rely on Hartz for the disputed limitation. I therefore assign no claim element to Hartz. | Issued 2003 → pre‑2005 |
| Makoto | JP Unexamined Patent App. Pub. No. 2002‑199433 | Asserted in Grounds 3/4 (alone or with Hartz); Uber elected not to appeal the Board's findings on those grounds | Published 2002 → pre‑2005 |
| Mitsuoka | JP Unexamined Patent App. Pub. No. 2003‑168190 | "Vehicle dispatch guidance system": a user uses a portable terminal to request dispatch of a taxi and maps the current location of the user and the current location of the taxi as the taxi approaches | Published 2003 → pre‑2005 |
| Appelman (AOL) — buddy-list art | cited in a 2017 IPR petition (Cooley LLP, Petition for IPR of U.S. Pat. No. 7,535,890, June 2, 2017) | "Buddy List" of co-users; implemented by a "Buddy List System"… a software program executing on a server… maintains a database; server transmits the list to the client with each co-user's status (IN/OUT) | IM/presence art — evidence that server-maintained, server-transmitted buddy lists with status were notoriously well known |
| Haney (this family's own disclosure) | X One's pre‑2005 disclosure, used as prior art by third parties | Multiple IPR petitions in other proceedings treat Haney as §102/§103 art, mapping it to: "sending first location information to a first server"; "receiving second location information… second devices included in the group"; and a "message [that] relates to joining a group" | Filed 2005; third-party petitions at https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1550152](/patent/1550152)/ and IPR2022‑01410 (https://ai-lab.exparte.com/case/ptab/IPR2022-01410/doc/3) |
⚠️ Note on the Haney row: the Haney disclosure being asserted against other companies (AGIS's '123 patent, in petitions where the art combination was "Haney, Fumarolo, and Choi") is a two-edged fact for the '921. It confirms the family's 2005 disclosure is deep and broad — which helps the patentee's §112 priority story — but it also means the '921's own specification is on record as disclosing rather than inventing several of the very elements its claims recite. I flag this because the previously generated sections did not surface it.
Also on record and relevant to claim scope (N.D. Cal. claim construction, X One v. Uber, 5:16‑cv‑06050‑LHK, https://archive.org/download/gov.uscourts.cand.[304306](/patent/304306)/gov.uscourts.cand.304306.73.0.pdf): the court construed/analyzed "buddy list" and "user list," and held that the specification contains "no instances where the specification explicitly discloses a buddy list of one other user"; it also held that the instant-buddy relationship is a different feature from the "buddy list" (four independent reasons). The court further held the claims are silent as to who selects the service provider and declined to narrow them. These constructions cut toward broader claims and thus toward easier §103 mapping.
3. The claim scaffold I am analyzing (explicitly inferential)
I anchor the analysis on the family's representative claims, which I verified from the Federal Circuit and PTAB records — not from the '921.
Representative independent claim (US 8,798,593, quoted in Uber v. X One, 957 F.3d 1334, 1336–38): an apparatus for exchanging position/location data between a first individual's device and others, comprising a server and software responsive to a request from the first individual to (i) obtain a map, (ii) obtain a last known position for multiple users identified by the buddy list, (iii) plot the last known location of at least two of the multiple users on the map, and (iv) transmit the map with plotted locations to the first individual; with further limitations on requesting/storing positions, permitting the first individual to change the geography represented by the map, transmitting the changed-geography map, all "in a manner not requiring concurrent voice communications," and "wherein the software to obtain the map is to obtain the map in a manner having a default geographic resolution."
Representative independent claims (US 8,798,647, per Fed. Cir. No. 19‑1165): a method invoked "responsive to" launching an application (claims 1, 28), and a variant "in association with" application launch (claim 22), involving selecting a provider and mapping the requestor's and provider's positions.
The '921's title — "Techniques for sharing position data between first and second devices" — tracks this same claim family. If the '921's actual claims contain elements materially different from the above (e.g., the "instant buddy" ask/accept/expiry limitations, the personal-bread-crumbs SOS limitations, or the TalkControl push-to-talk limitations, all of which appear in the shared specification), the grounds below must be re-run against the real claim text. See §8 for the precise retrieval instruction.
4. The specification's own admissions (which supply the "content of the prior art" and the motivation)
These are from the authoritative '921 text itself and are admissible as applicant statements about the state of the art:
- "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…" — one-way remote tracking plus two-way voice was known.
- "Other commercial services allow parents to track the locations of their children in a one way location sharing manner." — one-way child tracking was known.
- "No two way position information sharing technology currently exists as far as the applicant is aware." — an admission that, on the applicant's own account, the only asserted gap was adding the return path.
- "The teachings of the invention do not require development of new cell phone or PDA technology nor do they require development of new cellular communication infrastructure. The functionality implemented by the software of the invention utilizes existing platforms and infrastructure."
- "the cellular carriers do not have to invest in engineering or infrastructure to offer the Buddy Watch functionality" and "the software … can be downloaded from the web or installed at the point of sale."
- "Position information exchanged via radio transmission on the cellular infrastructure is encrypted…" — encryption of position packets is presented as an implementation detail, not a point of novelty.
- "The server is not limited to any specific language or technology nor is it limited to any specific wired or wireless solution or any particular transmission physical layer or protocol."
Admissions 4–7 are the same ones the Federal Circuit used against this family: quoting the '593 counterpart, the court observed that the specification "confirms that its invention, including any necessary plotting, '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'" (957 F.3d at 1339). Admissions like these are strong KSR ammunition: they concede that the only asserted contributions are software logic over known hardware and networks.
5. Obviousness grounds
Ground 1 — Okubo (primary) + Konishi (secondary) → the core location-sharing/mapping claims
Why this is the strongest ground. This is not hypothetical: it is the exact combination that the Federal Circuit held was improperly rejected as obvious. The court reversed the Board, holding that "because 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 in a combination of Okubo and Konishi." 957 F.3d at 1339–40; citing KSR, 550 U.S. at 417, 421; CRFD Research, Inc. v. Matal, 876 F.3d 1330 (Fed. Cir. 2017); ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361 (Fed. Cir. 2016).
Element mapping (against the family-representative claim scaffold):
| Claim element (family-representative, see §3) | Okubo | Konishi |
|---|---|---|
| Two-way sharing of position among a group | ✔ groups; each member sees all other members' positions and their own (J.A. 1142–43) | ✔ customer sees vehicle position and vehicle sees customer position |
| Server (not merely peer-to-peer) | Position information storage station 5 | Vehicle-allocation server |
| Obtain a map | (map display on terminal) | ✔ server holds map data |
| Obtain last known position for multiple users on a list | ✔ group members | ✔ vehicle(s) + customer |
| Plot at least two users' locations on the map | ✔ but terminal-side (Okubo Fig. 3) | ✔ server-side plotting |
| Transmit the map with plotted locations to the requester | ✖ (only position info transmitted) | ✔ "transmits the map to an information terminal of the customer" |
| Position updates / changing geography | periodic position reporting | ✔ as vehicle approaches |
Motivations to combine (articulated per KSR/§103, not as bare "same field"):
- Finite, predictable, pre-identified solutions. Only two architectures for getting a plotted map onto a handset existed in the art: client/terminal-side plotting or server-side plotting. Where the prior art discloses only two predictable choices, picking one — or substituting one for the other — is an obvious design choice. KSR, 550 U.S. at 421; CRFD, 876 F.3d at 1347.
- The '921's own specification identifies no server-side plotting requirement. The Federal Circuit noted the specification is "entirely silent on how to transmit user locations and maps from a server to a user's mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this" (957 F.3d at 1339). Silence in the specification + two known options = obvious.
- Known engineering payoff. Konishi's server-side plotting allows a resource-constrained mobile handset to avoid storing map data and rendering overlays, and lets map data be refreshed centrally — an ordinary, recognized engineering benefit that supplies a rational motivation regardless of whether the references are physically "combinable as a whole."
- Physical combinability is not the test. The court expressly dispatched the patentee's argument that Okubo's low-data-rate differential-GPS system and Konishi's cellular system could not be combined: "it is not necessary for two prior art references to be physically combinable to support a finding of obviousness. Instead, the question is whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." (Fed. Cir. 2020; summarizing the holding.)
- Market pressure. The '921's own background states carriers "are looking for opportunities to increase both revenue and profits by providing new services" — classic KSR market pressure to implement location sharing.
Result: the core "share position data between first and second devices via a server, with a map showing the other party's location" claims are, on the family's verified record, obvious as a matter of law on this combination as to the server-side plotting limitation, leaving the remaining limitations to be evaluated on remand — and on a re-run for the '921, evaluated fresh.
Ground 2 — Ground 1 + Hartz (or + Makoto) → secondary/dependent limitations
Uber's Ground 2 was Okubo + Konishi + Hartz, and Grounds 3/4 used Makoto alone or with Hartz. ⚠️ Honestly: my searches did not establish what Hartz or Makoto actually teach, and Uber did not rely on Hartz for the disputed limitation. I therefore cannot responsibly map either reference to specific '921 claim limitations. They remain art to check against any dependent claims directed to, e.g., direction/bearing/distance display, status coloring, or historical waypoint rendering. I flag this as a known gap in my evidence, not a finding of non-obviousness.
Ground 3 — Konishi + Mitsuoka → the "requestor/provider" and dispatch-family claims
For claims in the family requiring selection of a provider and mapping both the requestor's and the provider's positions as the provider approaches (the '647-style claims, and the '921's own "stranded motorist / tow truck / 911 rescuer" instant-buddy embodiment), the pairing of Konishi (customer + vehicle allocation, map transmitted to the customer) with Mitsuoka (portable terminal requests dispatch; user's and taxi's locations mapped as the taxi approaches) is a strong §103 combination:
- Same problem, same field: both are mobile-terminal dispatch systems that must let a waiting party see the approaching service party's location.
- The '921's own "instant buddy" use case is functionally Konishi/Mitsuoka's taxi scenario, transplanted from taxi to tow truck: a stranded motorist "call[s] a tow truck or 911 and get[s] the caller ID and carrier of the tow truck driver or rescuer," then shares and views locations so "the tow truck driver [can] find the user tow truck customer and the user customer [can] know where the tow truck driver is." A stranded motorist summoning a tow truck is the very model of a customer summoning a vehicle and watching it approach.
- Rationale to combine: a predictable, additive combination of two known dispatch/mapping functions with a common purpose; each reference is reasonably pertinent to the problem the claim addresses (KSR; Wyers v. Master Lock, 616 F.3d 1231, 1238 (Fed. Cir. 2010) — common-sense combinations supply the motivation).
- ⚠️ Defeat on record for one sub-limitation: the Board found — and the Federal Circuit affirmed (nonprecedentially) on March 3, 2020 — that "Konishi and Mitsuoka, relying on prior art for some limitations," do not teach a method "invoked responsive to launching an application" (or "in association with" launch), as the Board construed those terms to require invocation "during or near" application launch. https://cafc.uscourts.gov/sites/default/files/opinions-orders/19-1165.Opinion.3-3-2020_1543755.pdf. That is a claim-construction-dependent result (the court noted "neither party's construction is correct and… the Board's 'during or near' requirement is generally correct"), and it is nonprecedential. A challenger to a comparable '921 claim should either (i) add art disclosing automatic invocation of the location method on application launch, or (ii) litigate the construction of the launch-relationship limitation before, not after, committing to the ground.
Ground 4 — Okubo (or Konishi) + Appelman (buddy-list art) → the "buddy list maintained on a server and transmitted to the device" limitations
The '921 specification's central construct is the "Buddy List™" programmed into a Buddy Watch device, managed "on the fly in the field" (adding groups and members), with each buddy's status shown (active/inactive/lost contact). The 2017 petition against US 7,535,890 (Cooley LLP; https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1491254](/patent/1491254)/) establishes from the art that this construct was ubiquitous before 2005:
- Appelman (AOL) discloses a "Buddy List" of selected co-users, implemented by a "Buddy List System… executing on a server" that "maintains a database" storing each buddy's screen name and connectivity status (IN/OUT), and transmitting the list from the server to the client.
- The petition argues (as a §103 rationale) that using a "list" structure to organize and transmit recipients was "one of a finite number of well-known and predictable techniques," and that server-side buddy lists with online/offline status "were so ubiquitous in instant messaging systems prior to 2003 that basic market considerations would have compelled" their adoption.
Motivation to combine: Appelman is not merely analogous; it is the same user-facing paradigm — a server-maintained list of permitted counterparties with their availability status, pushed to/pulled by a mobile client — applied to position rather than presence. Combining Appelman's server-side buddy list management with Okubo's group position sharing (or Konishi's mapping) yields "buddy list," "group," "status of each buddy," and "add/delete buddies" limitations as a predictable use of a known technique for its known purpose (KSR; In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)).
This ground also matters because the N.D. Cal. court found the specification contains no disclosure of a "buddy list" of only one other user — so the patentee cannot retreat to a narrow "list of one" reading to avoid Appelman; and the court held the instant-buddy relationship is separate from the buddy list, meaning the buddy-list claims take their ordinary (broad) meaning.
Ground 5 — The "two-way" and "encryption"/"map-change" limitations
- Two-way sharing: the single assertedly novel feature ("two way position information sharing," and "the creation of such location sharing 'groups,'… and 'temporary location sharing' that 'automatically expires'") was identified by the patentee as the point of novelty. But one-way remote tracking (OnStar/TeleAid, kid-trackers — admitted in the '921's own background) plus any known two-way position-exchange system (Okubo) already yields two-way sharing; adding a return path to a known one-way system is a predictable improvement. The Federal Circuit noted the "alleged novelty of the '593 patent is not related to the differences between server-side or terminal-side plotting."
- Encryption of position packets: the '921 treats this as an implementation detail ("Position information exchanged via radio transmission on the cellular infrastructure is encrypted"). Encryption of transmitted data was a notoriously well-known technique; applying it to position packets would be obvious to the system-level artisan, and because the specification offers no algorithm or protocol specifics, there is little to hang a non-obviousness argument on.
- "Not requiring concurrent voice communications" and "default geographic resolution" (family-representative limitations): these are negative/parametric claim features. Absent evidence that the prior art required concurrent voice or fixed resolution, they are the kind of "unrecited advantage" limitations that a challenger attacks as either disclosed by the modified Okubo system or obvious as a matter of design choice under KSR/ACCO Brands.
- Historical positions / tracks ("Mapit with history," bread crumbs): the Fed. Cir. has repeatedly treated storing and displaying a history/trail of received positions as a conventional data-logging application of a known technique. I flag that I did not verify a specific pre-2005 reference squarely on historical-trail rendering, so this point should be supported with art before it is relied on.
Ground 6 — The "instant buddy" temporary-sharing/auto-expiry limitation (the hardest element)
This is where the §103 case is weakest, and I will say so plainly.
The specification defines the instant buddy relationship as "temporary location sharing between phones on an ask and accept basis which automatically expires after a configurable interval terminates," with a default timeout (24 hours, or "midnight"), and requires both parties' acceptance (in some embodiments, only the recipient's). The patentee has identified this as a core point of novelty.
- No IPR on record ever reached this limitation. In IPR2017‑01255 the Board stopped at the server-side-plotting limitation and never analyzed the remaining limitations; in the '647 IPR the Board stopped at the "responsive to" limitation. So the art's treatment of ask/accept + automatic expiry is unadjudicated.
- Candidates a challenger should develop (all unverified by me): (i) general session/lease/time-to-live expiry mechanisms for subscriptions in mobile data services; (ii) rental/dispatch timeout art; (iii) presence/subscription expiry in IM and presence systems; (iv) permitting/reciprocity art (the Metalcraft/Toro line caution, relied on by the Board in IPR2017‑01255, warns that "same field" or "more robust system" assertions are insufficient without a specific rationale). I did not verify any specific pre‑2005 reference disclosing automatic expiry of a mutual, consented location-sharing relationship, so I am not asserting this ground as established.
- Honest assessment: on the record I have, the "instant buddy" expiry limitation is the most plausible non-obviousness redoubt for a claim that recites it, and any §103 challenge should be built around it first (with a verified reference), not around the mapping limitations, where the Federal Circuit has already spoken.
Ground 7 — Contingent: intervening art if the 2005 priority claim fails (see §7)
If any '921 claim element is not supported by the 2005 disclosure, the effective filing date slides to 2016‑09‑20, and the 2005–2016 decade becomes prior art. In that event, a substantially different and much larger art set becomes available, including consumer friend-locator services and their publications from the 2009–2012 era, and this ground could subsume Grounds 1–6. I flag this as a lead requiring verification; I am not asserting any specific post-2005 reference as established prior art. (One obvious candidate class to check: services whose defining feature is temporary, self-expiring location sharing, launched in 2009 — but the priority-date predicate must be established first.)
6. Arguments the patent owner will make, and how they fared
| Patent-owner argument | Rebuttal / record |
|---|---|
| "The references are not physically combinable" (Okubo = low-data-rate differential GPS; Konishi = cellular) | Rejected. "It is not necessary for two prior art references to be physically combinable… the question is whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." |
| "This is impermissible hindsight / a wholesale modification of the primary reference" | Rejected as to server-side plotting: the two options were "the only two identified, predictable solutions," so substitution is a "predictable variation." |
| "The primary reference is successful on its own, so no motivation to look elsewhere" | The Federal Circuit noted (and the Board's reasoning relied on) the mutual exclusivity fallacy: success of one reference does not preclude combination. |
| "Two-way sharing, groups, and expiring temporary sharing are the novelty" | The court held the "alleged novelty… is not related to the differences between server-side or terminal-side plotting," and the specification is silent on server-side transmission details. |
| Objective indicia (secondary considerations) | None on the record. The Board: "Patent Owner does not argue on the record that there are objective indicia of nonobviousness." A challenger should nonetheless run a full Graham factor‑4 check (licensing, industry praise, copying, long-felt need) before finalizing — I found no verified evidence of any. |
7. Priority-date contingency (a note the earlier sections did not raise)
The '921 was filed 2016‑09‑20 as a continuation in a chain reaching back to 11/099,362 (2005‑04‑04). Under pre‑AIA §120, each intervening application must provide §112 written-description support for the claimed subject matter. The Federal Circuit's observation that the specification is "entirely silent" on how to transmit locations/maps server-to-client is a warning sign for at least the server-side-plotting-type claims: silence is not support. And in the parallel AGIS petitions, the Board was pressed on precisely this theory — that "entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed" (Lockwood, 107 F.3d at 1571–72), and that "each application in the chain… must comply with the written description requirement" (https://ptacts.uspto.gov/ptacts/public-informations/petitions/1550152/). A successful priority attack would (a) move the '921's critical date to 2016 and (b) open the 2005–2016 intervening art. This is a predicate question that should be resolved before investing in any §103 ground against the '921, because the answer determines which art is even available.
8. Bottom line and required verification
Bottom line (with confidence levels):
- High confidence: On the family's verified record, a §103 combination of Okubo + Konishi renders obvious the core "server obtains/last-known positions/plots/transmits a map with plotted locations to the requester" limitations, with a clear, court-endorsed motivation to combine (finite, predictable design choice; specification silence; known engineering benefit; no physical-combinability requirement). This holding is from Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020).
- Moderate confidence: Konishi + Mitsuoka (and + Okubo + Appelman for buddy-list/status limitations) render obvious the requestor/provider-mapping and server-maintained-buddy-list limitations, subject to the "responsive to application launch" limitation, which the Board and Federal Circuit found not shown.
- Low confidence / unverified: Any ground against the instant-buddy temporary-sharing-with-automatic-expiry limitation, and any ground relying on Hartz or Makoto; and the encryption and historical-trail limitations, for which I did not verify specific pre-2005 references. I am explicitly not asserting these as established.
- Cannot state: the '921's verbatim claim set. Absent it, the analysis above is a scaffold keyed to the family's representative claims.
To make this a defensible §103 opinion, the next three retrievals are mandatory:
- The '921 claim set, verbatim — USPTO Patent Center / Patent Public Search for application 15/270,280, or the granted-PDF claims columns of US 9,654,921 B1. Everything in §3–§5 must be re-mapped to this text.
- Hartz (US 6,636,803) and Makoto (JP 2002‑199433) full texts (with certified English translations for the JP references, as was done in the IPRs) — to determine whether they supply any limitation I left unmapped.
- A specific pre-2005 reference on temporary/auto-expiring consented location sharing — this is the gap that decides whether any '921 claim reciting the instant-buddy feature survives §103.
One further flagged inconsistency: this task directs me to "use the results from the Prior Art section of this page," but no Prior Art section was included in the material supplied, and the authoritative full text of US 9,654,921 stops before the claims. I have therefore substituted (a) the specification's own Background/Definitions admissions, which I do have, and (b) the verifiable prior-art record from the family's IPR and litigation files, cited by URL above. If a prepared Prior Art section exists elsewhere, it should be supplied so this analysis can be reconciled against it.
Generated 9/28/2026, 4:04:55 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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