Trials@uspto.gov
`571-272-7822
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`Paper 50
`Entered: May 19, 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 IPR2015-00228
`Patent 7,092,957 B2
`____________
`
`
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
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`
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`
`
`
`
`
`
`
`Paper 50
`Entered: May 19, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CORELOGIC, INC.,
` Petitioner,
`
`
`v.
`
`
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2015-00228
`Patent 7,092,957 B2
`____________
`
`
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2015-00228
`Patent 7,092,957 B2
`
`
`I. INTRODUCTION
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`CoreLogic, Inc. (“Petitioner”) filed a Corrected Petition requesting an
`
`inter partes review of claims 1–19 of U.S. Patent No. 7,092,957 (Ex. 1001,
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`“the ’957 patent”). Paper 4 (“Pet.”). Boundary Solutions, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On May
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`21, 2015, we instituted an inter partes review for the challenged claims on
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`the grounds of unpatentability alleged in the Petition. Paper 8 (“Dec. to
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`Inst.”).
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`After institution of trial, Patent Owner filed a Corrected Patent Owner
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`Response (Paper 26, “PO Resp.”), to which Petitioner filed a Reply (Paper
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`37, “Pet. Reply”). Petitioner filed a Motion to Exclude Evidence (Paper 39,
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`“Mot. Excl.”), Patent Owner filed an Opposition to the Motion to Exclude,
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`Paper 43, and Petitioner filed a Reply in support of its Motion to Exclude,
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`Paper 44. An oral hearing was held on February 11, 2016, consolidated with
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`the hearings in IPR2015-00219, IPR2015-00222, and IPR2015-00226. The
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`transcript of the consolidated hearing has been entered into the record.
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`Paper 49 (“Tr.”). On February 26, 2016, Patent Owner filed a disclaimer of
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`claims 13 and 16–18. See CoreLogic, Inc. v. Boundary Solutions, Inc., Case
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`CBM 2016-00016, Ex. 2003.
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`The Board has statutory authority under 35 U.S.C. § 6(c). In this
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`Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
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`§ 42.73, we determine Petitioner has shown by a preponderance of the
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`evidence that claims 1–12, 14, 15, and 19 of the ’957 patent are
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`unpatentable.
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`A. Related Proceedings
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`According to Petitioner, the ’957 patent is involved in the district
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`court case captioned Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-
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`cv-00761 (N.D. Cal.). Pet. 59. Patent Owner also has asserted related U.S.
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`Patent No. 8,065,352 (“the ’352 patent”) and U.S. Patent No. 7,499,946
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`(“the ’946 patent”) in that proceeding. Pet. 59; Paper 6.
`
`We instituted inter partes reviews of the ’352 patent (IPR2015-00219,
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`IPR2015-00222) and the ’946 patent (IPR2015-00226). Petitions for
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`covered business method patent review of the ’957 patent, ’946 patent, and
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`’352 patent are pending in Cases CBM2015-00016, CBM2015-00017, and
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`CBM2015-00018, respectively.
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`B. The ’957 Patent
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`The subject matter of the challenged claims of the ’957 patent relates
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`generally to a Geographic Information System (“GIS”) and a National
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`Online Parcel-Level Map Data Portal referred to as a “NPDP.” Ex. 1001,
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`Title, Abstract, 1:17–26. The ’957 patent states that “[p]arcel-level GIS is a
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`mature technology” and adds that “[t]hough hundreds of local governments
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`have finished digitizing their parcel maps, a single national parcel map
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`source (portal) does not exist. The National Online Parcel-Level Map Data
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`Portal (NPDP) remedies this problem by providing the first national
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`repository of parcel data for use by all industry sectors.” Id. at 3:19–20,
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`1:15–20. In particular, the ’957 patent describes an interactive online
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`method for users to retrieve geographic parcel maps and related data:
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`An end user, utilizing an assigned password, begins the NPDP
`process by logging on from a computer terminal to an intranet or
`internet start page of the NPDP, and enters the state, city, street
`and number of a desired address. The NPDP address database is
`searched for a matching tax record. If there is a match, the NPDP
`displays the road right-of-ways, all parcel boundaries within a
`select distance, the “exact” address location highlighted, the
`pertinent parcel polygon changing the color to a brighter or
`different color from surrounding parcels also displayed. In
`addition, a list of property record attributes such as owner, use
`code, assessed value and year constructed can be displayed for
`the selected parcel. Other displayed parcels can also be selected
`and their linked attributes viewed.
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`Id. at 1:54–67. Parcel-level information includes parcel boundaries and
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`geocodes, which are linked using a parcel identifier to a non-graphic
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`database containing property tax records. Id. at 1:49–53, 4:1–4:11, 8:13–24.
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`Data from jurisdictions are normalized into a single standard format. Id. at
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`1:34–37, 7:31–54.
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`The ’957 patent describes retrieving a parcel-level map based on the
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`address of a requested parcel. Id. at 1:54–57, 4:47–51. A jurisdictional
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`lookup table is searched to identify, for example, the jurisdiction in which
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`the requested parcel is located. Id. at 8:25–30. In particular:
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`The Jurisdiction Lookup Table (JLT) 102 is a single tabular file,
`developed and maintained by NPDP service provider. The JLT
`makes it possible for the state and jurisdiction values stated in an
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`address entry transaction to be used to determine the pertinent
`county in which it is located. Hence, by the table also containing
`the county's FIPS number, the appropriate county directory is
`automatically accessed for data retrieval purposes. In addition,
`the JLT is the source of the Metadata values assigned to the
`parcel map data of each jurisdiction within a county. Each JLT
`record contains the following fields: state, jurisdiction, county
`name, county FIPS number, accuracy, publication date, percent
`complete, ortho scale, ortho resolution, and update frequency.
`
`
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`Id. at 8:25–38. The non-graphic database for that jurisdiction is searched for
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`a record matching the address, and the parcel identifier for that record is
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`used to access a graphic database containing the selected parcel. Id. at 3:41–
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`58. The selected parcel and surrounding parcels may be displayed, with the
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`selected parcel shown as a highlighted polygon. Id. at 3:58–61; 4:56–
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`58. The parcel’s linked data (e.g., tax record) also may be displayed. Id. at
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`4:58–59.
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`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.
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`1. An interactive computer implemented method for retrieving
`geographic parcel boundary polygon maps and associated parcel attribute
`data linked to a non-graphic database, wherein the data is acquired
`electronically, comprising:
`
`
`a. activating a computer terminal connected to 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 attribute to call
`up the parcel selected;
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`d. subsequently accessing a national parcel map database comprising
`multiple jurisdictional databases which have been normalized to a
`common data protocol;
`
`e. searching a jurisdiction look up table associated with the 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 located, and the
`identified jurisdictional database thereafter accessed; and,
`
`f. thereafter displaying on screen a parcel boundary 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, 16:14–43.
`
`
`C. Prior Art Relied Upon
`
`The following references were asserted in the instituted grounds.
`
`Reference
`
`Title
`
`Date
`
`Ex. No.
`
`July 28, 1998
`
`Ex. 1003
`
`Harder
`
`“Serving Maps on the
`Internet: Geographic
`Information on the World
`Wide Web,” Environmental
`Systems Research Institute,
`
`6
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`Reference
`
`Title
`
`Longley
`
`Inc.
`
`“Geographic Information
`Systems and Science,” John
`Wiley & Sons, Ltd.
`
`Roy
`
`US 5,966,135
`
`Kearney
`
`ARC/INFO
`
`“Internet Access to Real
`Property Information,” in
`Integrating Spatial
`Information Technologies
`for Tomorrow, GIS 1997
`Conference Proceedings
`
`“Understanding GIS, The
`ARC/INFO Method,”
`Environmental Systems
`Research Institute, Inc.
`
`Date
`
`Ex. No.
`
`May 2001
`
`Ex. 1015
`
`Oct. 12, 1999 (filed
`Oct. 30, 1996)
`
`Ex. 1012
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`Feb. 1997
`
`Ex. 1021
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`1997
`
`Ex. 1004
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`
`
`
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`D. The Asserted Grounds
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`The challenges to patentability on which we instituted trial are as
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`follows (not including claims 13 and 16–18, which were disclaimed by
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`Patent Owner).
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`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Harder and Longley
`
`§ 103
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`1–10, 12–19
`
`Harder, Longley, and Roy
`
`§ 103
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`11
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`7
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`Reference(s)
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`Basis
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`Claims Challenged
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`Kearney and ARC/INFO
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`§ 103
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`1–8, 16–19
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`
`see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
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`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`890 (mem.) (2016). Claim terms generally are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning
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`for a term that is different from its ordinary meaning by defining the term in
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`the specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`In our Decision to Institute, we construed “numerical jurisdictional
`
`identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7–
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`8. We based our construction on the only appearance of “jurisdictional
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`identifier” in the written description of the ’957 patent:
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`FIG. 3 illustrates a USA County Boundary Map (USACM). This
`is a public domain boundary file of each and every of the 3140
`counties within the United States. Each of these polygons is
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`8
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`IPR2015-00228
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`geocoded with its county name and FIPS number, a numerical
`jurisdictional identifier, as illustrated in the figure.
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`Ex. 1001, 8:48–53 (emphasis added).1
`
`Patent Owner does not challenge our construction of “jurisdictional
`
`identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner
`
`challenge the construction in its Reply, see Reply 7. For this Final Written
`
`Decision, after considering the complete record, we maintain our
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`construction of “numerical jurisdictional identifier” as “a number that
`
`identifies a jurisdiction.”
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`Patent Owner also proposes a construction for “national parcel map
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`database comprising multiple jurisdictional databases which have been
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`normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s
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`proposal is 60 words long, and reads, “a database covering more than one
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`state including multiple jurisdictional databases, wherein a jurisdictional
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`database is a collection of data representing the boundaries of parcels from
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`the jurisdiction, each of the jurisdictional databases having been received
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`from a jurisdiction, and modified, transformed, amended or converted by a
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`common set of one or more processes applied to all data and updates.” PO
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`Resp. 8.
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`Patent Owner had in its Preliminary Response proposed a different
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`construction (“the database of individual land parcels having been
`
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`1 According to the ’957 patent, the Federal Information Processing Standards
`(“FIPS”) number “is used nationally to numerically identify specific county
`jurisdictions.” Ex. 1001, 7:27–30.
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`transformed by a set of one or more automated and/or semiautomated
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`processes applied to data and data updates supplied by sponsoring
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`jurisdictions using a set of rules or procedures”) for nearly the identical
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`phrase (“multiple jurisdictional databases which have been normalized to a
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`common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent
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`Owner’s proposed construction in our Decision to Institute, and we do not
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`adopt its revised (and lengthier) construction in this Final Written Decision,
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`for the reasons argued by Petitioner in its Reply (Reply 2–5) and also
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`because the Patent Owner’s prolix proposed construction does not add
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`clarity to the term. We decline to provide an express construction for this
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`term or for any other terms in the claims other than discussed above.
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`B. Principles of Law
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`To prevail in challenging BSI’s claims, CoreLogic must demonstrate
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`by a preponderance of the evidence that the claims are unpatentable. 35
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`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35
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`U.S.C. § 103(a) if the differences between the claimed subject matter and the
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`prior art are such that the subject matter, as a whole, would have been
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`obvious at the time of the invention to a person having ordinary skill in the
`
`art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
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`of obviousness is resolved on the basis of underlying factual determinations
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`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of ordinary
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`skill in the art; and (4) objective evidence of nonobviousness. Graham v.
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`John Deere Co., 383 U.S. 1, 17–18 (1966).
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`C. Level of Ordinary Skill in the Art
`
`Petitioner’s proposal for the level of ordinary skill in the art is “at
`
`least a bachelors degree in geographic information science, survey
`
`engineering, geomatics, or similar education, and two years of experience in
`
`a relevant field (e.g., land or geographic information science), or six years of
`
`experience in the relevant field.” Ex. 1006 (Declaration of Michael
`
`Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in
`
`the art would possess a “a Bachelor’s degree or higher in, GIS engineering
`
`with at least 5 years of academic or industry experience in GIS database
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`design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13.
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`We determine that an express definition of the level of ordinary skill
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`is not required. The level of ordinary skill in the art can be reflected in the
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`cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
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`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`
`the art does not give rise to reversible error where the prior art itself reflects
`
`an appropriate level and a need for testimony is not shown.”) (internal
`
`quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
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`Therefore, we find the level of ordinary skill in the art to be reflected in the
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`11
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`cited references.
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`D. Claims 1–10 and 12–19: Asserted Obviousness over Harder and
`Longley
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`Petitioner contends claims 1–10 and 12–19 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Harder and Longley. Pet. 12–46. In
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`view of Patent Owner’s disclaimer of claims 13 and 16–18, we analyze
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`claims 1–10, 12, 14, 15, and 19. Claim 1 is independent. Relying on the
`
`testimony of Dr. Michael F. Goodchild, Petitioner explains how the
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`references allegedly teach or suggest the claim limitations and sets forth a
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`rationale for combining the references. Id. (citing Ex. 1006).
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`Harder (Exhibit 1003)
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`Harder is a book titled “Serving Maps on the Internet,” published by
`
`the Environmental Systems Research Institute (ESRI). Harder “presents
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`case studies of a dozen different private and public organizations that are
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`delivering geographic information” online. Ex. 1003, Preface. Harder
`
`notes: “The convergence of geographic information systems (GIS) and the
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`World Wide Web has changed mapmaking forever.” Id. at 1.2 Harder
`
`discloses that web-based geographic information systems were well-known
`
`at the time of the alleged invention of the ’957 patent. Id. at 3, 12–17, and
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`19–25. Web-based GISs generally have a client/server architecture, where a
`
`server receives requests for parcel information from a client computer,
`
`searches a database for the selected parcel information, and returns the
`
`
`2 All citations herein are to page numbers in the original underlying
`references, rather than to the exhibit page numbers affixed by Petitioner.
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`12
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`information to the client computer. Id. at 7, 8, 13, 111, 113. The database
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`can be a relational database system. Id. at 13.
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`Harder also describes applications that implement a web-based GIS,
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`including a GIS application developed for a county in North Carolina to
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`provide the public with access to the county’s land records database. Id. at
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`19. A user can query the system for a parcel map by entering an address or
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`parcel identification number of the desired parcel. Id. at 7, 21. Geographic
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`and non-geographic data associated with the selected parcel are retrieved
`
`and transmitted to a client computer for display with the selected parcel
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`highlighted. Id. at 21–22. For example, a parcel information table
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`containing information about the selected parcel, such as parcel owner, tax
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`value, and property value data can be displayed with the geographic map.
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`Id. Harder describes an application that, using ARC/INFO GIS software,
`
`joins tables of tax records to parcel information, converts the data to
`
`shapefiles, and indexes key fields to speed up user-defined searches. Id. at
`
`24. Harder explains that the disclosed processes could be used to select data
`
`and control the “geographic area to be displayed (from statewide down to
`
`the town level).” Id. at 7.
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`Longley (Ex. 1015)
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`
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`Longley is a book titled “Geographic Information Systems and
`
`Science.” Longley discloses features and technologies relating to GISs that
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`search and retrieve parcel-level data from a database of parcel data that may
`
`13
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`cover many jurisdictions. Ex. 1015, 2–5, 10–11, 13–14, 17–18, 28–31, 35–
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`37, 80, 83–86, 164–172, 194–198, 226–244.
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`Longley references “look up” operations (id. at 191), and describes
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`known technologies and features regarding such systems, including methods
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`of configuring and formatting data and storing it in different ways in a
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`database, such as tables (id. at 226–29), linking the collections of data based
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`on Federal Information Processing Standard (“FIPS”) codes or other types of
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`jurisdictional identifiers (id. at 226–30), searching and accessing such data,
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`such as through indexing (id. at 226, 237–38), and maintaining such data in
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`common formats (id. at 226–31, 237–38). A user can request a property
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`map based on property values, by querying for properties similarly valued
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`within a selected distance range, with the selected properties displayed on
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`the screen. Id. at 36.
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`Analysis
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`Petitioner provides explanations of how the subject matter of each of
`
`the challenged claims is taught or suggested by Harder or Longley. Pet. 12–
`
`46. For independent claim 1, Petitioner contends Harder teaches the recited
`
`limitations of activating a computer terminal connected to a computer
`
`network (Pet. 13; Ex. 1003, 7–13, 21, 106–113); accessing an applications
`
`program for access to parcel attribute data (Pet. 13–14; Ex. 1003, 7–13, 20–
`
`21, 106–113); and accessing a data entry screen and entering a parcel
`
`attribute (Pet. 14–15; Ex. 1003, 8, 13, 19–25, 113, 117).
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`14
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`Petitioner also contends that Harder and Longley teach or suggest
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`subsequently accessing a national parcel map database comprising multiple
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`jurisdictional databases which have been normalized to a common data
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`protocol (Pet. 15–18; Ex. 1003, 7–8, 13, 21–22, 42, 48–51, 106; Ex. 1015,
`
`2–5, 10–11, 13–14, 17–18, 28–31, 35–37, 80, 83–86, 164–172, 194–198,
`
`229–233).
`
`Petitioner further contends that Harder and Longley teach or suggest
`
`searching a jurisdiction look up table associated with the national parcel map
`
`database, where the look up table is indexed for identification of the
`
`pertinent jurisdictional database, whereby a numerical jurisdictional
`
`identifier for the selected jurisdiction is located, and the identified
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`jurisdictional database thereafter accessed. Pet. 19–22. In particular,
`
`Petitioner contends that Harder discloses an index for identifying a
`
`jurisdictional database, and that Longley describes characteristics of national
`
`parcel databases, which may be configured with identifiers that link tables in
`
`the database to assist in searching for data. Pet. 19–21; Ex. 1003, 24; Ex.
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`1015, 226–30. Petitioner contends Longley further discloses searching
`
`tables relating to databases of multiple jurisdictions, such as states and sub-
`
`regions comprising more than one state. Pet. 20; Ex. 1015, 229–32. The
`
`tables include keys, “which may include numerical jurisdictional identifiers,
`
`such as a state ‘FIPS’ identifier.” Pet. 20–21 (citing Ex. 1015, 229–30, Figs.
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`11.2 (a)-(c)).
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`Lastly, Petitioner contends Harder and Longley teach or suggest claim
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`1’s limitation of displaying on screen a parcel map, along with surrounding
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`parcel boundary polygons, the selected parcel highlighted and filling the
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`screen. Pet. 23–27.
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`Patent Owner’s arguments in its Response resemble those in its
`
`Preliminary Response, which, as we noted in the Decision to Institute, focus
`
`on the separate disclosures of Harder and Longley. Dec. to Inst. 11.
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`Nonobviousness, however, cannot be established by attacking references
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`individually in isolation, when the asserted ground of unpatentability is
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`based on a combination of references. See In re Keller, 642 F.2d 413, 426
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`(CCPA 1981).
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`We agree with Petitioner that Patent Owner’s arguments in its
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`Response are “often unclear” (Pet. Reply 9), but discern several arguments
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`by Patent Owner asserting Harder and Longley do not teach or suggest the
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`recited “national parcel map database comprising multiple jurisdictional
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`databases which have been normalized to a common data protocol,” or the
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`recited searching of “a jurisdiction look up table associated with the national
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`parcel map database, said look up table indexed for identification of the
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`pertinent jurisdictional database, whereby a numerical jurisdictional
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`identifier for the selected jurisdiction is located.” PO Resp. 16, 22–29.
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`First, Patent Owner argues that Harder does not disclose databases
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`that have been normalized to a common data protocol. PO Resp. 22–23.
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`Petitioner cites the ’957 patent’s description of data being normalized into a
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`universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41),
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`and Harder’s description of how its system’s datasets are “stored in the
`
`industry-standard shapefile (.shp) format” and how the system “converts the
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`data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also
`
`notes that Patent Owner’s declarant acknowledged that assembling databases
`
`according to a standard protocol was in the prior art. Pet. Reply 11; Ex.
`
`1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that
`
`Harder teaches or suggests databases that have been normalized to a
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`common data protocol.
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`Second, Patent Owner argues about the lack of disclosure of multiple
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`jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple
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`jurisdictional databases are taught by both Harder and Longley, which
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`explicitly discloses a “STATES table” that is a multi-state database. Pet.
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`Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that
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`Harder and Longley teach or suggest multiple jurisdictional databases.
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`Third, Patent Owner argues about the lack of disclosure of claim 1’s
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`limitation of “searching a jurisdiction look up table associated with the
`
`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 located” (see PO Resp. 24–28).
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`Petitioner concedes that Harder and Longley “disclose retrieving a
`
`jurisdictional identifier using an index, but do not expressly refer to an index
`
`as a look up table.” Pet. 23. Harder discloses that its system “indexes key
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`17
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`fields,” Ex. 1003, 24, and Longley describes indexes and tables, Ex. 1015,
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`226–231. In particular, Longley discloses a grid index, in which grid
`
`locations “are recorded in a list (the index),” and a query to locate an object
`
`searches the indexed list to find the object and then retrieves the object . . .
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`for further analysis.” Pet. Reply 16; Ex. 1015, 237, Fig. 11.8.
`
`There is additional evidence that Harder and Longley teach or suggest
`
`the recited look up table. First, Longley specifically references a “look-up
`
`operation.” Ex. 1015, 191. In addition, at the oral hearing, Patent Owner’s
`
`counsel equated an index with a look up table, stating, “a lookup table serves
`
`the same purpose as an index . . . I presume you can call a lookup table a
`
`kind of index . . . I certainly understood when [Dr. Goodchild] said
`
`jurisdictional lookup table is a kind of index.” Tr. 83:9–11, 83:13–14.
`
`Patent Owner’s counsel also distinguished another of Petitioner’s references
`
`by stating, “ARC/INFO has a particular kind of lookup table . . . I don’t
`
`think that’s the kind of lookup table that we’re talking about here, which is
`
`more akin to an index.” Id. at 85:24–25, 86:8–9.
`
`Petitioner further explains why its proposed combination of Harder
`
`and Longley teaches or suggests the recited look up table:
`
`[O]ne skilled in the [art] would have found it obvious at the time
`of the alleged invention of the ’957 patent to have the index used
`in the combined system of Harder and Longley arranged as a
`look-up table to allow the system to locate the appropriate
`location where requested parcel information is stored in the
`national parcel map database of the combined system. Ex. 1006
`[Goodchild declaration], ¶ 44. Implementing an index as a look-
`up table would have been a predictable and common sense
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`18
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`modification to the combined system that would have increased
`the efficiency of the searching functions disclosed by the
`combined system of Harder and Longley.
`
`Pet. 23. Based on the evidence and arguments set forth above, we find that
`
`the recited jurisdiction look up table is taught or suggested by Petitioner’s
`
`proposed combination of Harder and Longley.
`
`
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`Lastly, Patent Owner argues that the references do not disclose the
`
`recited numerical jurisdictional identifier because Longley’s FIPS identifier
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`is used to join tables, “there is no disclosure of using a county FIPS code in
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`connection with indexing,” and “no one before the patent had thought of
`
`using the county FIPS code . . . as a jurisdictional identifier.” PO Resp. 24,
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`27–28. Patent Owner’s argument, however, focuses on this teaching in
`
`Longley in isolation. Petitioner’s obviousness argument cites the FIPS
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`identifier in Longley as an example of a jurisdictional identifier used as a
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`key in database tables. See Pet. 20–21; Reply 17–18. Patent Owner
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`acknowledges this, agreeing that the state FIPS code in Longley is used as a
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`key for finding records. See PO Resp. 26. Petitioner then relies on that
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`teaching in combination with Harder’s teaching that indexing key fields can
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`speed up searches and Longley’s disclosure of the benefits of indexing
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`geographic databases. See Pet. 22–23; Reply 17–18; Ex. 1003, 24;
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`Ex. 1015, 237–38.
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`In addition, as we explained in the Decision to Institute, our
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`construction of “numerical jurisdictional identifier” does not require a
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`specific county FIPS code, and we find that Longley’s FIPS code teaches or
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`19
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`suggests the recited numerical jurisdictional identifier. Dec. to Inst. 13; Ex.
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`1015, 229–30, Fig. 11.2.
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`In summary, we agree with Petitioner’s contentions and find that
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`Harder and Longley teach or suggest the limitations of independent claim 1.
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`Patent Owner also argues, “there is no motivation to combine the two
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`references.” PO Resp. 27. We disagree. The Petition cites to the Goodchild
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`declaration and to KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and
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`explains why one of ordinary skill in the art would have combined Harder
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`and Longley as to the limitations of claim 1:
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`Given the knowledge of one skilled in the art, the disclosure of
`Harder and the known configurability of such databases as
`described by Longley, it would have been obvious to one of
`ordinary skill in the art to configure the combined system with
`separate and distinct databases associated with specific
`jurisdictions such as states, etc., to allow more efficient access to
`parcel data spanning multiple jurisdictions. Ex. 1006, ¶¶ 34-39.
`. . . [T]he disclosure of Longley and the knowledge of one skilled
`in the art would have motivated such a person to modify
`Harder’s system given that Harder discloses parcel-based
`searching and display functionalities for a jurisdiction (e.g., Ex.
`1003, 21-25) and for multiple states (id., 49-51), and discloses
`that databases in GIS environments could span multiple
`jurisdictions (id., 7, 49-51), and
`that Longley discloses
`configuring such databases to include data relating to different
`states and also discloses parcel based systems. Moreover, one
`skilled in the art would have been motivated to look to Longley
`to supplement the features of the systems and processes of
`Harder given they both describe[] features of ESRI systems. Ex.
`1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database
`in such a way would have been a common sense and predictable
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`20
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`modification that was within the realm of knowledge of one
`skilled in the art at the time of the alleged invention. See KSR,
`550 U.S. at 417; Ex. 1006, ¶¶ 34-39.
`
`Pet. 18–19. The Petition continues:
`
`[O]ne skilled in the art would have realized that using an index
`in the combined system of Harder and Longley would have been
`a predictable and common sense modification to the system,
`which would have had the foreseeable result of improving the
`effectiveness of locating parcel data in the national parcel map
`database of the combined system of Harder and Longley. See
`KSR, 550 U.S. at 401, 417; Ex. 1006, ¶ 43. One skilled in the art
`would have been motivated to look to Longley to modify Harder
`as explained above because Longley discloses functionalities that
`are related to GIS features similar to those of Harder. . . . One
`of ordinary skill in the art would have understood that
`implementing such a modification would have been common
`sense, predictable, and within the realm of knowledge of one
`skilled in the art, and that doing so would have resulted in
`enhanced performance of the combined system to locate
`requested parcel information in the national parcel map database
`of the combined system. See KSR, 550 U.S. at 417; Ex. 1006,
`¶¶ 40-43.
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`
`Pet. 22–23. Petitioner’s Reply
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