`
`Trials@uspto.gov
`571-272-7822 Entered: May 24, 2016
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORELOGIC, INC.
`Petitioner,
`
`v.
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00016
`Patent 7,092,957 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`INTRODUCTION
`
`Petitioner CoreLogic, Inc. (“CoreLogic”) filed a Petition (Paper 2,
`
`I.
`
`“Pet.”) to institute a covered business method (“CBM”) patent review of
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`claims 1–19 of U.S. Patent No. 7,092,957 B2 (Ex. 1001, “the ’957 patent”),
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`owned by Boundary Solutions, Inc. (“BSI”). BSI filed a Preliminary
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`Patent 7,092,957 B2
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`Response (Paper 7, “Prelim. Resp.”). BSI also filed a disclaimer of claims
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`13, 16, 17, and 18. Ex. 2003.
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`We have jurisdiction under 35 U.S.C. § 324. For the reasons that
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`follow, the information presented in the Petition does not establish that the
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`ʼ957 patent qualifies as a covered business method patent for purposes of
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`§ 18(d)(1) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
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`112–29, 125 Stat. 284, 331 (2011). Accordingly, we decline to institute a
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`covered business method patent review of claims 1–19 of the ’957 patent.
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`See 35 U.S.C. § 324(a).
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`The parties state that BSI has asserted the ’957 patent against
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`CoreLogic in Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-cv-
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`00761 (N.D. Cal.) (filed Feb. 19, 2014). Pet. 59; Paper 5 (Patent Owner’s
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`Mandatory Notices). BSI also has asserted related U.S. Patent No.
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`7,499,946 (“the ’946 patent”) and U.S. Patent No. 8,065,352 (“the
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`’352 patent”) in that proceeding. Pet. 59; Paper 5. The ’946 patent and the
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`’352 patent are the subject of inter partes reviews in Cases IPR2015-00226,
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`and in IPR2015-00219 and IPR2015-00228, respectively, based on petitions
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`filed by CoreLogic. In Case IPR2015-00225, we did not institute an inter
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`partes review because the information presented in the petition did not
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`establish a reasonable likelihood that CoreLogic would prevail. CoreLogic,
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`Inc. v. Boundary Solutions, Inc., Case IPR2015-00225 (PTAB May 21,
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`2
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`Patent 7,092,957 B2
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`2015) (Paper 7). We recently issued final decisions in Cases IPR2015-
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`00219, IPR2015-00222, and IPR2015-00228.
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`B. The ’957 Patent
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`The ’957 patent relates generally to Geographic Information Systems
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`(“GIS”) and, in particular, to a National Online Parcel-Level Map Data
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`Portal (“NPDP”) that provides online delivery of parcel-level map data.
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`Ex. 1001, Abstract, 1:17–26. The ’957 patent describes the NPDP as an
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`electronic repository for parcel-level maps and linked attribute data acquired
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`from public and private entities. Id. at 2:32–44. Databases from different
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`jurisdictions are assembled and stored in a standard format, with each
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`jurisdictional database placed in an individual directory. Id. at 4:3–5, 7:21–
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`30. The system normalizes information to a single universal spatial
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`protocol. Id. at 3:16–19, 7:33–54. Parcel-level information includes parcel
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`boundaries and geocodes linked using a parcel identifier to a non-graphic
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`database containing property tax records. Id. at 1:49–53, 4:1–11, 8:13–24.
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`The ’957 patent describes retrieving a parcel-level map based on the
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`address of a parcel requested by an end user. Id. at 1:54–57, 4:47–51. The
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`system searches a jurisdictional lookup table to identify the jurisdiction in
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`which the requested parcel is located. Id. at 8:25–30. The system searches
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`the non-graphic database for that jurisdiction for a record matching the
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`address, and uses the parcel identifier for that record to access a graphic
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`database containing the selected parcel. Id. at 3:41–58. The system can
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`display the selected parcel and surrounding parcels, with the selected parcel
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`shown as a highlighted polygon. Id. at 4:56–58. The system can also
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`display the parcel’s linked data (e.g., tax record). Id. at 4:58–59.
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`The ’957 patent describes a business revenue model that “begins with
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`the establishment by the NPDP service provider of a publicized parcel-level
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`map data web site with links to a tax record database.” Id. at 13:20–23. For
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`example, the model contemplates generating revenue through various
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`subscription agreements. Id. at 13:65–15:43. The ’957 patent also describes
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`providing access to the database for free. See id. at 2:58, 14:11–15, 14:41–
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`45, 16:8–12.
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`C. Illustrative Claim
`
`Claims 1–19 are the subject of the Petition, and claims 13 and 16–18
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`have since been disclaimed by Patent Owner. Claim 1 is independent.
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`Claim 1 is reproduced as follows.
`
`An interactive computer implemented method for
`1.
`
`retrieving geographic parcel boundary polygon maps and
`associated parcel attribute data linked to a non-graphic database,
`wherein the data is acquired electronically, comprising:
`
`activating a computer terminal connected to a
`a.
`computer network;
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`b. accessing an applications program for access to the data;
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`c. accessing a data entry screen and entering a parcel
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`attribute to call up the parcel selected;
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`d. subsequently accessing a national parcel map database
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`comprising multiple jurisdictional databases which have been
`normalized to a common data protocol;
`
`e. searching a jurisdiction look up table associated with the
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`national parcel map database, said look up table indexed for
`identification of the pertinent jurisdictional database, whereby a
`numerical jurisdictional identifier for the selected jurisdiction is
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`located, and the identified jurisdictional database thereafter
`accessed; and,
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`f. thereafter displaying on screen a parcel boundary
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`polygon map, along with surrounding parcel boundary polygons,
`the default scale of the displayed map selected to fill the
`computer display screen with parcel boundaries within a selected
`distance around the subject parcel, the selected parcel boundary
`polygon highlighted, defining both the location and boundary of
`the parcel, and associated attribute data for the highlighted parcel
`displayed..
`
`Ex. 1001, 16:14–42.
`
`D. Asserted Grounds of Unpatentability
`
`CoreLogic asserts that claims 1–19 of the ’957 patent are unpatentable
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`under 35 U.S.C. § 101. Pet. 33–59.
`
`III. DISCUSSION
`
`A threshold question is whether the ’957 patent is a “covered business
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`method patent,” as defined by the AIA. CoreLogic bears the burden of
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`persuasion that the ’957 patent is a covered business method patent. See 37
`
`C.F.R. § 42.304(a). For the reasons discussed below, we determine
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`CoreLogic has made an insufficient showing that the ’957 patent is a
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`“covered business method patent.”
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`The AIA defines “covered business method patent” as “a patent that
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`claims a method or corresponding apparatus for performing data processing
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`or other operations used in the practice, administration, or management of a
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`financial product or service, except that the term does not include patents for
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`technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a).
`
`The legislative history of the AIA “explains that the definition of covered
`
`business method patent was drafted to encompass patents ‘claiming
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`activities that are financial in nature, incidental to a financial activity or
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`complementary to a financial activity.’” Transitional Program for Covered
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`Business Method Patents—Definitions of Covered Business Method Patent
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`and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug.
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`14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed.
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`Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
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`1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a
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`covered business method patent review, the focus is on the claims. AIA
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`§ 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R.
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`§ 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4)
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`(“[T]he definition set forth in § 42.301(a) . . . is based on what the patent
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`claims.”). A patent need have only one claim directed to a covered business
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`method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736
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`(comment 8) (“A patent having one or more claims directed to a covered
`
`business method is a covered business method patent for purposes of the
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`review, even if the patent includes additional claims.”).
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`CoreLogic contends that the ’957 patent is a covered business method
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`patent because “[a]t least claim 1 of the ’957 patent claims data processing
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`or other operations that are financial in nature or, at a minimum, incidental
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`or complementary to a financial activity.” Pet. 7. CoreLogic also relies on
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`dependent claims 13 and 16–18, and argues that those claims “explicitly
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`limit the claims to financial applications.” Id. at 9; see also id. at 11
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`(alleging that claims 16–18 cover “subject matter incidental or
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`complementary to a financial activity”). As noted above, however, BSI
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`disclaimed claims 13 and 16–18 at the same time it filed its Preliminary
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`Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has
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`the effect of canceling the claims from the patent and the patent is viewed as
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`though the disclaimed claims had never existed in the patent.” Guinn v.
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`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that
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`have considered this issue under similar facts and concluded that the
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`disclaimed claims should not be consulted when determining whether the
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`patent is a covered business method patent under AIA §18(d)(1).1
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`We are mindful that other Board decisions have evaluated compliance
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`with CBM standing requirements at the time of filing, but those cases are
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`distinguishable2 and not binding here. Any suggestion in those cases that a
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`decision on institution should address the disclaimed claims because they
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`existed at the time the petition was filed is inconsistent with Federal Circuit
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`precedent instructing us to treat the claims as if they never existed, and our
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`Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d
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`at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based
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`on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015-
`
`00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying
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`Request for Rehearing) (rejecting petitioner’s argument that disclaimed
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`claim should be considered because it existed at the time the petition was
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`1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015-
`00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West
`Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at
`7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc.,
`CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11).
`
` 2
`
` In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC,
`CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the
`Patent Owner attempted to cancel a claim after institution, not disclaim a
`claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual
`Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016)
`(Paper 40), the Patent Owner’s disclaimer occurred after institution, not
`prior to institution.
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`filed). We therefore do not consider disclaimed claims 13 and 16–18 in our
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`analysis.
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`CoreLogic advances two arguments in support of this contention.
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`First, CoreLogic argues that the Specification “confirms that this claim is
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`directed to processing data as part of a financial process” because the
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`Specification describes a “financial process in which subscribers pay to gain
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`access to parcel boundary data using the claimed method.” Id. at 9.
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`According to CoreLogic, the ’957 patent “is explicit that the purpose of the
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`claimed method is to provide data in exchange for money.” Id. at 10.
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`CoreLogic states that claim 1 “is directed to searching a set of parcel maps
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`for a selected property and the properties that surround it using polygons,”
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`and asserts that the Specification provides examples where the map data can
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`be used in “state, federal and local environmental assessments and
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`compliance.” Id. at 10 (quoting Ex. 1001, 6:14–42). CoreLogic further
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`relies on the Specification’s discussion of different ways to use the map data
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`to generate revenue, and argues that these revenue models underscore the
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`financial activities covered by the claimed methods. Id. at 11–13.
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`Second, CoreLogic contends that the Specification describes using the
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`maps retrieved in the claimed method “for business purposes and financial
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`activities.” Pet. 13–16. According to CoreLogic, “[d]etermining real estate
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`parcel boundaries is a fundamental business practice used by various
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`companies,” including “title companies, insurance providers, and land
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`developers.” Id. at 13–14. CoreLogic contends that selling subscriptions to
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`these businesses in exchange for access to parcel data “is akin to allowing
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`customers to order products,” activities that the Board has described as
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`financial activity. Id. at 15.
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`BSI contends that the ’957 patent is not a CBM patent because it does
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`not claim a financial product or service. Prelim. Resp. 8. BSI argues that
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`the CBM analysis must remain focused on the claims, and that without any
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`financial term in the claims, the Specification can demonstrate that the claim
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`is financial in nature only in limited circumstances not at issue here. Id. at
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`11–12. According to BSI, the fact that the Specification discloses that the
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`claimed “invention can be used in connection with a financial product does
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`not mean that it is a CBM Patent.” Id. at 13.
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`BSI distinguishes cases relied on by CoreLogic, pointing out that
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`unlike those cases, “no claim of the ’957 patent that relates to the marketing
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`or sale of any product.” Id. at 18. BSI relies on several cases concluding
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`that the “financial prong” was not met in allegedly similar circumstances,
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`including Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164 (Feb. 3,
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`2016) (Paper 8). Prelim. Resp. at 21–23. According to BSI, Qualtrics
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`properly focused on the claim language rather than “exemplary”
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`embodiments in the Specification, and rejected arguments similar to
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`CoreLogic’s arguments here. Id. at 21–22. BSI portrays CoreLogic’s
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`repeated references to the Specification as insufficient because of the
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`“missing nexus” to language in the claims. Id. at 26. BSI counters
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`CoreLogic’s assertion that the “purpose of the claimed method is to provide
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`data in exchange for money” by pointing out that the Specification
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`9
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`“discusses using the claimed process in transactions for pay and for free.”
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`Id. at 28.
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`We agree with BSI. CoreLogic does not explain adequately how any
`
`of the claims of the ’957 patent recite a method or apparatus “for performing
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`data processing or other operations used in the practice, administration, or
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`management of a financial product or service.” AIA § 18(d)(1); see also
`
`37 C.F.R. § 42.301(a). CoreLogic focuses on claim 1, but fails to identify
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`any limitation in claim 1 or any other claim that relates to a financial activity
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`in any way. Claim 1 claims a “method for retrieving geographic parcel
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`boundary polygon maps and associated parcel attribute data,” which has
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`applicability to retrieving and displaying map data, not financial products
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`and services. CoreLogic suggests that the “transmitting” step of claim 1 “can
`
`be used” by various entities in a business context, but does not argue, let
`
`alone establish, that the claim terms on their face are financial in nature. See
`
`Pet. 1.
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`CoreLogic asserts that the Specification of the ’957 patent describes
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`several methods of generating revenue using the claimed methods, and that
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`numerous businesses may pay for access to map data generated using the
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`claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the
`
`Specification is unavailing. First, CoreLogic fails to address how these
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`disclosures relate directly to, or meaningfully informs our analysis of, the
`
`language of the claims. For example, CoreLogic does not direct us to any
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`claims or claim limitations that require users to pay for access to the map
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`database or use of the claimed methods. Second, CoreLogic fails to address
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`portions of the Specification that indicate the claimed invention can be used
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`“for free,” i.e., without any generation of revenue or financial aspect at all.
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`See Ex. 1001, 2:58 (“These end users may access for free . . . .”), 14:11–15
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`(“Another public-private alliance option is to offer the free use of the NPDP
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`server to such data sponsors in addition to or in lieu of their revenue
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`share.”), 14:41–45 (“[C]ommodity service subscriber end users (customers)
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`can have access to the NPDP at no charge.”), 16:8–12 (“It is also
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`contemplated that other independent public and private data sponsors could
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`be provided with links as part of the NPDP display which end users could
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`access on a free or fee basis.”). Given that the Specification contemplates
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`use of the claimed inventions for free, it is not apparent that the “purpose of
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`the claimed method is to provide data in exchange for money,” as CoreLogic
`
`suggests. Pet. 10.
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`At most, CoreLogic has established that the claimed methods could be
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`used to generate revenue in a number of ways, even though the language of
`
`the claims does not require any exchange of money or other financially
`
`related step. Under these circumstances, we conclude that the “financial
`
`prong” has not been met. Numerous Board decisions have taken a similar
`
`approach in situations where the Specification refers to potential financial
`
`applications for the claimed inventions but the claim language does not
`
`expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,
`
`
`3 See, e.g., ServiceNow, Inc. v. Hewlett–Packard, Co., Case CBM2015–
`00108, slip op. at 15–16 (PTAB Oct. 8, 2015) (Paper 10) (reasoning that,
`although “at least one illustrative embodiment [was] directed to applications
`of the claimed system in financial systems,” the patent’s claims “are of
`general utility”); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at
`11–12 (PTAB May 19, 2015) (Paper 11) (finding petitioner’s citation to
`allegedly financial aspects of the invention in the Specification insufficient
`because petitioner failed to explain any relationship between cited portions
`of Specification and claim language); Salesforce.com, Inc. v. Applications in
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`Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8), for example, the claims
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`were “devoid of any terms that reasonably could be argued as having any
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`particular relation to a financial product or service,” but the Specification
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`discussed using a claimed survey “for marketing and valuation of a
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`website.” Id. at 5–6. The Board found that the examples in the
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`Specification were merely exemplary, and that the Specification also spoke
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`in broader terms. Id. at 6–7. The Board also rejected the Petitioner’s
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`argument that the “specification’s disclosure of charging a fee . . . moves the
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`claimed invention into the realm of a financial product or service”:
`
`First and foremost, the claims say nothing about charging a fee
`for the survey report—they merely require “software . . . for
`reporting to the website owner.” There is no mention of a fee.
`Moreover, the specification makes clear that “[i]n a preferred
`embodiment,” the software is configured to provide the report
`“for free.”
`
`Id. at 7. Similarly here, the ’957 patent Specification mentions charging fees
`
`and generating revenue, but the claims never mention, much less require,
`
`
`Internet Time LLC, CBM2014-00162, slip op. at 9–10 (PTAB Feb. 2, 2015)
`(Paper 11) (“Petitioner’s contentions based on the written description alone
`do not show that the ’111 patent claims a method or apparatus ‘for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service’ or claims
`an activity that is ‘financial in nature, incidental to a financial activity or
`complementary to a financial activity.’”); Par Pharm. Inc. et al. v. Jazz
`Pharm., Inc., CBM2014-00149, slip op. at 10–13 (PTAB Jan. 13, 2015)
`(Paper 12) (finding that references in the Specification to insurance coverage
`and a patient’s ability to pay for a prescription did not render claim relating
`to a method for controlling access to a prescription drug a financial product
`or service); PNC Fin. Servs. Group, Inc. v. Intellectual Ventures I LLC,
`CBM2014-00032, slip op. at 11–16 (PTAB May 22, 2014) (Paper 13)
`(concluding that any financial aspect described in the Specification amounts
`to a non-limiting example).
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`any of these steps, and the Specification repeatedly states that the claimed
`
`method could be used without charging any fee. See Ex. 1001, 2:58, 14:11–
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`15, 14:41–45, 16:8–12.
`
`
`
`We are mindful of the instruction that “‘financial product or service’
`
`should be interpreted broadly.” 77 Fed. Reg. 48,374, 48,735 (Aug. 14,
`
`2012). “Broadly,” however, does not mean we must interpret “financial
`
`product or service” to encompass any claimed invention that might be used
`
`to generate revenue when the Specification describes the methods of
`
`generating revenue. If the mere ability to make money selling a claimed
`
`invention, or providing access to a claimed method, were sufficient, the
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`“financial product or service” requirement would be rendered nugatory. We
`
`decline to read the statute so broadly. Moreover, in cases finding the
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`“financial product or service” requirement met, the language of the claims at
`
`issue typically refers to the financial aspect of the invention. See Versata
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`Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1312 (Fed. Cir. 2015)
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`(claiming “method for determining a price”); SightSound Techs., LLC v.
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`Apple Inc., 809 F.3d 1307, 1315–16 (Fed. Cir. 2015) (claiming, in part,
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`“providing a credit card number of the second party . . . so the second party
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`is charged money”); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d at 1340
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`(finding that the claims “have an express financial component in the form of
`
`a subsidy, or financial inducement”).
`
`We are aware of prior Board decisions finding the “financial products
`
`or services” requirement met even in the face of claim language that does
`
`not expressly mention financial activity, based on analysis of the
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`Specification.4 These cases turn on their particular facts as well as the claim
`
`language and Specifications at issue, and are not binding on us here. See
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`Blue Calypso, 815 F.3d at 1340 (rejecting argument that “the Board has
`
`acted in an arbitrary and capricious manner through an ‘unpredictable
`
`application’ of the CBM definition” and noting that each case focuses on the
`
`claim language at issue). We do not interpret these cases as requiring a
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`finding that the “financial product or service” requirement is met whenever a
`
`Specification refers to a financial use for a claimed invention.
`
`We conclude that neither the claim language nor the Specification
`
`supports CoreLogic’s contention that the ’957 patent “claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service” or claims “activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.”
`
`IV. CONCLUSION
`
`For the foregoing reasons, based on the present record and particular
`
`facts of this case, we determine that the information presented in the Petition
`
`does not establish that the ’957 patent qualifies as a covered business
`
`method patent under § 18 of the AIA.
`
`
`4 See, e.g., Motorola Mobility LLC v. Intellectual Ventures I LLC,
`CBM2015-00004, slip op. at 20–25 (PTAB March 21, 2016) (Paper 33)
`(noting that the Specification expressly refers to “financial planning and
`portfolio management” and filing tax returns); Epicor Software Corp. v.
`Protegrity Corp., CBM2015-0006, slip op. at 19–21 (PTAB April 18, 2016)
`(Paper 54) (noting that the Specification expressly refers to the field of
`banking, which is a financial activity).
`
`14
`
`
`
`Case CBM2016-00016
`Patent 7,092,957 B2
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that a covered business patent method review is not
`
`instituted for claims 1–19 of the ’957 patent.
`
`
`
`FOR PETITIONER:
`
`Erika H. Arner
`Justin E. Loffredo
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`justin.loffredo@finnegan.com
`erika.arner@finnegan.com
`
`
`
`FOR PATENT OWNER:
`
`Lawrence Edelman
`THE LAW OFFICE OF LAWRENCE EDELMAN
`lawrence.edelman@comcast.net
`
`Bruce J. Wecker
`HAUSFELD LLP
`bwecker@hausfeld.com
`
`
`15