Paper No. 9
`
`Trials@uspto.gov
`571-272-7822 Entered: May 24, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORELOGIC, INC.
`Petitioner,
`
`v.
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00018
`Patent 8,065,352 B2
`____________
`
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`
`Case CBM2016-00018
`Patent 8,065,352 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner CoreLogic, Inc. (“CoreLogic”) filed a Petition (Paper 2,
`
`“Pet.”) to institute a covered business method (“CBM”) patent review of
`
`claims 1–23 of U.S. Patent No. 8,065,352 B2 (Ex. 1001, “the ’352 patent”),
`
`owned by Boundary Solutions, Inc. (“BSI”). BSI filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`
`§ 324. For the reasons that follow, the information presented in the Petition
`
`does not establish that the ʼ352 patent qualifies as a covered business
`
`method patent for purposes of § 18(d)(1) of the Leahy-Smith America
`
`Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 331 (2011).
`
`Accordingly, we decline to institute a covered business method patent
`
`review of claims 1–23 of the ’352 patent. See 35 U.S.C. § 324(a).
`
`
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`The parties state that BSI has asserted the ’352 patent against
`
`CoreLogic in Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-cv-
`
`00761 (N.D. Cal.) (filed Feb. 19, 2014). Pet. 67; Paper 5 (Patent Owner’s
`
`Mandatory Notices). BSI also has asserted related U.S. Patent No.
`
`7,499,946 (“the ’946 patent”) and U.S. Patent No. 7,092,957 (“the
`
`’957 patent”) in that proceeding. Pet. 67–68; Paper 5. The ’946 patent and
`
`the ’957 patent were the subject of inter partes reviews in Cases IPR2015-
`
`00226 and IPR2015-00228, respectively, based on petitions filed by
`
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`Case CBM2016-00018
`Patent 8,065,352 B2
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`CoreLogic. We recently issued final decisions in Cases IPR2015-00226 and
`
`IPR2015-00228.
`
`CoreLogic filed three petitions for inter partes review of the ’352
`
`patent. In Case IPR2015-00219, claims 12–15 and 17–21 of the ’352 patent
`
`are subject to inter partes review based on one asserted ground of
`
`unpatentability. CoreLogic, Inc. v. Boundary Solutions, Inc., Case IPR2015-
`
`00219 (PTAB May 21, 2015) (Paper 6). In Case IPR2015-00222, each of
`
`claims 1–23 of the ’352 patent are subject to inter partes review based on
`
`two asserted grounds of unpatentability. CoreLogic, Inc. v. Boundary
`
`Solutions, Inc., Case IPR2015-00222 (PTAB May 21, 2015) (Paper 7). We
`
`recently issued final decisions in each of these proceedings related to the
`
`’352 patent. In IPR2015-00222, we concluded that CoreLogic demonstrated
`
`by a preponderance of the evidence that claims 1–23 of the ’352 patent are
`
`unpatentable. CoreLogic, Inc. v. Boundary Solutions, Inc., Case IPR2015-
`
`00222 (PTAB May 19, 2016) (Paper 48). In Case IPR2015-00225, we did
`
`not institute an inter partes review because the information presented in the
`
`petition did not establish a reasonable likelihood that CoreLogic would
`
`prevail. CoreLogic, Inc. v. Boundary Solutions, Inc., Case IPR2015-00225
`
`(PTAB May 21, 2015) (Paper 7).
`
`B. The ’352 Patent
`
`The ’352 patent relates generally to Geographic Information Systems
`
`(“GIS”) and, in particular, to a National Online Parcel-Level Map Data
`
`Portal (“NPDP”) that provides online delivery of parcel-level map data.
`
`Ex. 1001, Abstract, 1:22–37. The ’352 patent describes the NPDP as an
`
`electronic repository for parcel-level maps and linked attribute data acquired
`
`from public and private entities. Id. at 2:41–53. 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 4:8–10, 7:22–
`
`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
`
`boundaries and geocodes linked using a parcel identifier to a non-graphic
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`database containing property tax records. Id. at 1:60–64, 4:10–17, 8:14–25.
`
`The ’352 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 1:65–2:1, 4:52–56. The
`
`system searches a jurisdictional lookup table to identify the jurisdiction in
`
`which the requested parcel is located. Id. at 8:26–30. 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 3:56–63. The system can
`
`display the selected parcel and surrounding parcels, with the selected parcel
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`shown as a highlighted polygon. Id. at 4:61–63. The system can also
`
`display the parcel’s linked data (e.g., tax record). Id. at 4:63–64.
`
`The ’352 patent also describes a business revenue model that “begins
`
`with the establishment by the NPDP service provider of a publicized parcel-
`
`level map data web site with links to a tax record database.” Id. at 13:10–13.
`
`For example, the model contemplates generating revenue through various
`
`subscription agreements. Id. at 14:9–15:46. The ’352 patent also describes
`
`providing access to the database for free. See id. at 2:67, 13:63–65, 14:28–
`
`29, 15:59–63.
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`
`C. Illustrative Claim
`
`CoreLogic refers to independent claim 12 as “representative” in its
`
`Petition. Pet. 19. Claim 12 reads:
`
`12. A method for retrieving and displaying geographic
`
`parcel boundary polygon maps comprising:
`
`receiving, by a server, a request for a parcel boundary
`
`polygon map for a selected parcel;
`
`searching, by the server, using a jurisdictional identifier[,]
`
`a multi-jurisdictional digital parcel map database for the selected
`parcel boundary polygon and the parcel boundary polygons of
`adjacent and surrounding parcels,
`the database having
`information about individual land parcels normalized to a
`common spatial data protocol, including polygon data used to
`describe the boundaries of a plurality of properties; and,
`
`transmitting the parcel boundary polygon map data for the
`
`selected parcel along with the adjacent and surrounding parcels
`for display, wherein the parcel boundary polygon map includes
`the selected parcel polygon along with adjacent and surrounding
`parcel boundary polygons around the selected parcel.
`
`Ex. 1001, 17:13–30.
`
`D. Asserted Grounds of Unpatentability
`
`CoreLogic asserts that claims 1–23 of the ’352 patent are unpatentable
`
`under 35 U.S.C. § 101. Pet. 30.
`
`
`
`III. DISCUSSION
`
`A threshold question is whether the ’352 patent is a “covered business
`
`method patent,” as defined by the AIA. CoreLogic bears the burden of
`
`persuasion that the ’352 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 ’352 patent is a
`
`“covered business method patent.”
`
`The AIA defines “covered business method patent” as “a patent that
`
`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, except that the term does not include patents for
`
`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
`
`activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.’” Transitional Program for Covered
`
`Business Method Patents—Definitions of Covered Business Method Patent
`
`and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug.
`
`14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed.
`
`Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`
`1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a
`
`covered business method patent review, the focus is on the claims. AIA
`
`§ 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R.
`
`§ 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4)
`
`(“[T]he definition set forth in § 42.301(a) . . . is based on what the patent
`
`claims.”). A patent need have only one claim directed to a covered business
`
`method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736
`
`(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
`
`review, even if the patent includes additional claims.”).
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`CoreLogic contends that the ’352 patent is a covered business method
`
`patent because “[a]t least claim 12 of the ’352 patent claims data processing
`
`or other operations that are financial in nature or, at a minimum, incidental
`
`or complementary to a financial activity.” Pet. 10. CoreLogic advances two
`
`arguments in support of this contention. First, CoreLogic argues that the
`
`specification “confirms that this claim is directed to processing data as part
`
`of a financial process” because the specification describes a “financial
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`process in which subscribers pay to gain access to parcel boundary data
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`using the claimed method.” Id. at 10–11. According to CoreLogic, the ’352
`
`patent “is explicit that the purpose of the claimed method is to provide data
`
`in exchange for money.” Id. at 11. CoreLogic points to the “transmitting
`
`the parcel boundary polygon map data” step of claim 12, and asserts that the
`
`specification provides examples where the map data can be used in “state,
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`federal and local environmental assessments and compliance.” Id. at 12
`
`(quoting Ex. 1001, 6:29–31). CoreLogic further relies on the specification’s
`
`discussion of different ways to use the map data to generate revenue, and
`
`argues that these revenue models underscore the financial activities covered
`
`by the claimed methods. Id. at 12–14.
`
`Second, CoreLogic contends that the specification describes using the
`
`maps retrieved in the claimed method “for business purposes and financial
`
`activities.” Pet. 14. According to CoreLogic, “[d]etermining real estate
`
`parcel boundaries is a fundamental business practice used by various
`
`companies,” including “title companies, insurance providers, and land
`
`developers.” Id. at 14–15. CoreLogic contends that selling subscriptions to
`
`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 17.
`
`BSI contends that the ’352 patent is not a CBM patent because it does
`
`not claim a financial product or service. Prelim. Resp. 8. BSI argues that
`
`the CBM analysis must remain focused on the claims, and that without any
`
`financial term in the claims, the specification can demonstrate that the claim
`
`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
`
`claimed “invention can be used in connection with a financial product does
`
`not mean that it is a CBM Patent.” Id. at 14. BSI distinguishes cases relied
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`on by CoreLogic, pointing out that unlike those cases, “no claim of the ’352
`
`patent that relates to ‘ordering,’ ‘purchasing,’ ‘selling,’ ‘marketing,’ or
`
`paying for (by electronic transfer or otherwise) any product.” Id. at 19. BSI
`
`relies on several cases concluding that the “financial prong” was not met in
`
`allegedly similar circumstances, including Qualtrics, LLC v. OpinionLab,
`
`Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8). Prelim. Resp. at 20–22.
`
`According to BSI, Qualtrics properly focused on the claim language rather
`
`than “exemplary” embodiments in the specification, and rejected arguments
`
`similar to CoreLogic’s arguments here. Id. at 21–22. BSI portrays
`
`CoreLogic’s repeated references to the specification as insufficient because
`
`of the “missing nexus” to language in the claims. Id. at 25. BSI counters
`
`CoreLogic’s assertion that the “purpose of the claimed method is to provide
`
`data in exchange for money” by pointing out that the specification
`
`“discusses using the claimed process in transactions for pay and for free.”
`
`Id. at 28.
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`We agree with BSI. CoreLogic does not explain adequately how any
`
`of the claims of the ’352 patent recite a method or apparatus “for performing
`
`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” AIA § 18(d)(1).
`
`CoreLogic focuses on claim 12, but fails to identify any limitation in claim
`
`12 or any other claim that relates to a financial activity in any way. Claim 12
`
`claims a “method for retrieving and displaying geographic parcel boundary
`
`polygon maps,” which has applicability to retrieving and displaying map
`
`data, not financial products and services. CoreLogic suggests that the
`
`“transmitting” step of claim 12 “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. 12.
`
`CoreLogic asserts that the specification of the ’352 patent describes
`
`several methods of generating revenue using the claimed methods, and that
`
`numerous businesses may pay for access to map data generated using the
`
`claimed method. Pet. 11–17. CoreLogic’s reliance on these portions of the
`
`specification is unavailing. First, CoreLogic fails to address how these
`
`disclosures relate directly to, or meaningfully informs our analysis of, the
`
`language of the claims. For example, CoreLogic does not direct us to any
`
`claims or claim limitations that require users to pay for access to the map
`
`database or use of the claimed methods. Second, CoreLogic fails to address
`
`portions of the specification that indicate the claimed invention can be used
`
`“for free,” i.e., without any generation of revenue or financial aspect at all.
`
`See Ex. 1001, 2:67 (“These end users may access for free . . . .”), 13:63–65
`
`(“Another public-private alliance option is to offer the free use of the NPDP
`
`server to such data sponsors in addition to or in lieu of their revenue
`
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`share.”), 14:28–29 (“[C]ommodity service subscriber end users (customers)
`
`can have access to the NPDP at no charge.”), 15:59–63 (“It is also
`
`contemplated that other independent public and private data sponsors could
`
`be provided with links as part of the NPDP display which end users could
`
`access on a free or fee basis.”). Given that the specification contemplates
`
`use of the claimed inventions for free, it is not apparent that the “purpose of
`
`the claimed method is to provide data in exchange for money,” as CoreLogic
`
`suggests. Pet. 11.
`
`At most, CoreLogic has established that the claimed methods could be
`
`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
`
`
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`expressly indicate a financial context.1 In Qualtrics, LLC v. OpinionLab,
`
`Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8), for example, the claims
`
`were “devoid of any terms that reasonably could be argued as having any
`
`particular relation to a financial product or service,” but the specification
`
`discussed using a claimed survey “for marketing and valuation of a
`
`website.” Id. at 5–6. The Board found that the examples in the specification
`
`were merely exemplary, and that the specification also spoke in broader
`
`terms. Id. at 6–7. The Board also rejected the Petitioner’s argument that the
`
`
`1 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
`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 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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`“specification’s disclosure of charging a fee . . . moves the 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 ’352 patent specification mentions charging fees
`
`and generating revenue, but the claims never mention, much less require,
`
`any of these steps, and the specification repeatedly states that the claimed
`
`method could be used without charging any fee. See Ex. 1001, 2:67, 13:63–
`
`65, 14:28–29, 15:59–63.
`
`
`
`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
`
`“financial product or service” requirement would be rendered nugatory. We
`
`decline to read the statute so broadly. Moreover, in cases finding the
`
`“financial product or service” requirement met, the language of the claims at
`
`issue typically refers to the financial aspect of the invention. See Versata
`
`Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1312 (Fed. Cir. 2015)
`
`(claiming “method for determining a price”); SightSound Techs., LLC v.
`
`Apple Inc., 809 F.3d 1307, 1315–16 (Fed. Cir. 2015) (claiming, in part,
`
`“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
`
`(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
`
`specification.2 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
`
`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
`
`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 ’352 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
`
`
`2 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).
`
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`financial activity or complementary to a financial activity.” AIA § 18(d)(1);
`
`CBM Final Rules 77 Fed. Reg. 48,374, 48,735.
`
`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 ’352 patent qualifies as a covered business
`
`method patent under § 18 of the AIA.
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that a covered business patent method review is not
`
`instituted for claims 1–23 of the ’352 patent.
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`
`
`FOR PETITIONER:
`
`Erika H. Arner
`Justin E. Loffredo
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`erika.arner@finnegan.com
`justin.loffredo@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