Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: July 22, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`JI-SOO LEE,
`Patent Owner.
`_______________
`
`IPR2016-00045
`Patent 6,233,518 B1
`_______________
`
`
`
`Before PATRICK R. SCANLON, DANIEL J. GALLIGAN, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`571-272-7822
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`Paper 43
`Date: July 22, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`JI-SOO LEE,
`Patent Owner.
`_______________
`
`IPR2016-00045
`Patent 6,233,518 B1
`_______________
`
`
`
`Before PATRICK R. SCANLON, DANIEL J. GALLIGAN, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
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`IPR2016-00045
`Patent 6,233,518 B1
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`INTRODUCTION
`I.
`On October 13, 2015, Google Inc. (“Petitioner”) filed a Petition
`(Paper 2; “Pet.”) to institute an inter partes review of claims 45 and 46 of
`U.S. Patent No. 6,532,518 B1 (Ex. 1001; “the 518 Patent”).1 The Petition
`asserted five separate grounds of unpatentability against the challenged
`claims, which Petitioner labeled in the Petition as Grounds 1–5. Pet. 4.
`We instituted a trial as to Ground 2 (obviousness of claims 45 and 46
`over Sone and Roy), but declined to institute as to Grounds 1 and 3–5. See
`Paper 7 (“Institution Decision” or “D.I.”), 25. We subsequently issued a
`Final Written Decision determining that Petitioner had failed to demonstrate
`that claims 45 and 46 of the ’518 Patent were unpatentable over Sone and
`Roy. Paper 28, 21 (the “initial Final Written Decision”). Petitioner
`appealed this decision to the Court of Appeals for the Federal Circuit. See
`Paper 29.
`After Petitioner filed its appeal, the Supreme Court ruled that the
`Board may not institute an inter partes review as to fewer than all
`challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359
`(2018) (“[E]verything in the statute before us confirms that SAS is entitled
`to a final written decision addressing all of the claims it has
`challenged . . . .”). The Federal Circuit subsequently interpreted SAS as
`precluding the Board from instituting an inter partes review as to fewer than
`all grounds raised by the Petitioner. See PGS Geophysical AS v. Iancu, 891
`F.3d 1354, 1360 (Fed. Cir. 2018) (holding that, according to SAS, § 314
`
`1 Google also identifies Samsung Electronics America, Inc., LG Electronics
`Mobilecomm U.S.A., Inc., HTC America, Inc., and Motorola Mobility LLC
`as real parties in interest. Pet. 2.
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`“require[s] a simple yes-or-no institution choice respecting a petition,
`embracing all challenges included in the petition”).
`On March 28, 2019, the Federal Circuit affirmed our2 determination
`that Petitioner had failed to demonstrate that claims 45 and 46 of the ’518
`Patent were unpatentable over Sone and Roy. Paper 39, 7. The Federal
`Circuit also remanded this proceeding pursuant to SAS and PGS, instructing
`us “to consider whether claims 45 and 46 are unpatentable over the non-
`instituted grounds.” Id.
`After remand, Patent Owner filed a Patent Owner Response
`addressing the remanded grounds (Grounds 1 and 3–5). Paper 37 (“Remand
`Resp.”). Petitioner filed a Reply. Paper 38 (“Remand Reply”). The parties
`waived oral argument. See Paper 41.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 45 and 46 are unpatentable.
`
`BACKGROUND
`II.
`Related Proceedings
`A.
`Patent Owner has identified five lawsuits involving the ’518 Patent
`that were filed in the U.S. District Court for the Eastern District of Texas.
`Paper 35, 2. All five of these lawsuits have been terminated. See CM/ECF
`
`
`2 Although the panel has changed since the initial Final Written Decision
`(see Paper 34 (Panel Change Order)), we use first person plural pronouns
`when referring to previous Board decisions in this proceeding.
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`Dockets of Case Nos. 2:15-cv-456, 2:15-cv-457, 2:15-cv-458, 2:15-cv-459,
`and 2:15-cv-4560 (E.D. Tex.).
`Patent Owner also states that the ’518 Patent was challenged in
`IPR2016-00887. That proceeding was terminated prior to issuance of an
`institution decision. See IPR2016-00887, Paper 8.
`
`The ’518 Patent
`B.
`The ’518 Patent “relates to a traffic information providing service
`method and system, and in particular, to a method and a system for
`providing an image vector-based traffic information.” Ex. 1001 at 1:7–10.
`Figure 1A of the ’518 Patent is reproduced below.
`
`
`Figure 1A depicts a block diagram of a traffic information providing system.
`Ex. 1001, 6:42–45. The system includes traffic information collector 110,
`traffic information converter 120, traffic information transmitter 130, and
`one or more user devices 140. Id. at 6:46–51.
`Traffic information collector 110 collects traffic information from
`various sources and produces text-based traffic information (“TBTI”), which
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`is then communicated to traffic information converter 120. Ex. 1001, 6:52–
`64. Traffic information converter 120 “converts the text-based traffic
`information TBTI into image vector-based traffic information, more
`specifically, into a traffic state map TSM or a traffic information map TIM.”
`Id. at 6:65–7:1. The image vector entities in a traffic state map (“TSM”) are
`time-variant and represent, for example, “a road, the color of which varies
`according to the velocity on the road.” Id. 7:43–47. A traffic information
`map (“TIM”) may be composed of a TSM and a basic map. Id. at 7:1–3. A
`basic map is a map composed of time-invariant image vector entities, each
`of which corresponds to a real entity, such as a mountain, a river, or a
`building. Id. at 7:4–7. A basic map may be stored in traffic information
`converter 120, or alternatively in user device 140. Id. at 7:36–38.
`Traffic information transmitter 130 receives a TSM or TIM from the
`traffic information converter 120 and provides the TSM or TIM to user
`device 140. Ex. 1001, 7:50–54. User device 140 includes a communication
`function for receiving the TSM or TIM and a screen for displaying “image
`based traffic information.” Id. 7:65–8:1.
`
`Challenged Claims
`C.
`Challenged claims 45 and 46 are independent claims. Claim 45 is
`illustrative and is reproduced below.
`45. A method for displaying an image-based traffic
`information comprising the steps of:
`receiving a traffic information map which includes
`at least a traffic state map, said traffic state map
`includes a plurality of time-variant image vector
`entities in a specified region and each of the
`time-variant image vector entity includes an
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`1006, 1007
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`1008
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`1009
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`attribute-designating statement, an shape-
`designating
`statement
`and
`a
`position-
`designating statement;
`displaying a first image in accordance with a basic
`map on a screen, said basic map including a
`plurality of time-invariant image vector entities
`in the specified region; and
`displaying a second image in accordance with said
`traffic state map such that said second image is
`cumulatively displayed on the first image.
`References and Materials Relied Upon
`D.
`Petitioner relies on the following references and materials in support
`of the grounds of unpatentability that remain pending on remand:
`References and Materials
`Exhibit No.
`U.S. Patent No. 5,313,200 (iss. May 17, 1994)
`1004
`(“Sone”)
`Japanese Patent No. JPH 09-252260 (laid open Sept.
`22, 1997) (“Yamada”)
`PCT Pub. No. WO 95/24029 A1 (pub. Sept. 8, 1995)
`(“Rosenquist”)
`U.S. Patent No. 5,293,163 (iss. Mar. 8, 1994)
`(“Kakihara”)
`Japanese Patent No. JPH 08-7197 (laid open Jan. 12,
`1996) (“Degawa”)
`Declaration of Dr. William Michalson
`Second Declaration of Dr. William Michalson
`Third Declaration of Dr. William Michalson
`
`1003
`1015
`1021
`
`1010, 1011
`
`See Pet. 3–4; Remand Reply 1, 3, 5.
`
`Patent Owner relies on the Declaration of J. Tipton Cole (Ex. 2014).
`See Remand Resp. 18, 34.
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`3
`4
`5
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`E. Grounds of Unpatentability
`The following grounds of unpatentability are pending on remand:
`Ground
`Claims
`35 U.S.C. §3 Reference(s)
`Challenged
`45, 46
`45, 46
`45, 46
`45, 46
`
`102(b)
`103
`102(b)
`102(b)
`
`Sone
`Yamada, Rosenquist
`Kakihara
`Degawa
`
`See Pet. 4; Paper 7, 24; Paper 39, 7.
`
`III. ANALYSIS
`Arguments Regarding Institution Decision
`A.
`Patent Owner argues that we should vacate our Institution Decision
`and deny the Petition in its entirety pursuant to 35 U.S.C. § 314(a) because
`Petitioner has failed to demonstrate a reasonable likelihood of prevailing as
`to any of the grounds before us on remand. Remand Resp. 7–10. Patent
`Owner alternatively argues that we should vacate our Institution Decision
`and deny the Petition in its entirety in the interests of efficiency and justice.
`Id. at 10–13. According to Patent Owner, we retain discretion to reconsider
`our Institution Decision notwithstanding the Federal Circuit’s affirmance of
`
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`3 The ’518 Patent issued on May 15, 2001. Ex. 1001, code (45). Thus, the
`pre-America Invents Act (“AIA”) versions of 35 U.S.C. §§ 102 and 103
`apply. See Leahy–Smith America Invents Act, Pub. L. No. 112–29, sec.
`3(c), 125 Stat. 284, 293 (2011) (explaining that the pre-AIA version of the
`Patent Act generally applies to patents with effective filing dates before
`March 16, 2013).
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`our initial Final Written Decision (id. at 13), and doing so would not be
`contrary to our rules or practice (id. at 14–15).
`Petitioner argues, inter alia, that vacating our Institution Decision
`would be inconsistent with the Federal Circuit’s remand order. Remand
`Reply 1–3. We agree with Petitioner.
`Once issued, the Federal Circuit’s mandate and opinion “govern
`further proceedings in this case.” 35 U.S.C. § 144. “[B]oth the letter and
`the spirit of the mandate must be considered.” Engel Indus., Inc. v.
`Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999). The Federal
`Circuit’s mandate in this case is straightforward: We are instructed to
`“consider whether claims 45 and 46 are unpatentable over the non-instituted
`grounds.” Paper 39, 7. In other words, we are instructed to consider
`Grounds 1 and 3–5 on the merits.
`Patent Owner’s citation to Biodelivery Sciences v. Aquestive
`Therapeutics, 935 F.3d 1362 (Fed. Cir. 2019), is not persuasive because that
`decision is distinguishable. In Biodelivery Sciences, the Board was found to
`have had discretion to vacate prior institution decisions after a remand in
`which the Federal Circuit did not address the merits of any appealed issue
`and also vacated the Board’s final written decisions. Id. at 1364. Here, the
`Federal Circuit did not vacate the earlier final written decision; rather, the
`court addressed a substantive ground on which we instituted trial when it
`affirmed our decision that claims 45 and 46 had not been shown to be
`unpatentable over Sone and Roy. Paper 39, 7. The Federal Circuit also
`explicitly instructed us to consider on remand “whether claims 45 and 46 are
`unpatentable over the non-instituted grounds.” Id. Vacating the institution
`decision and refusing to consider the merits of Grounds 1 and 3–5 would be
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`directly contrary to the Federal Circuit’s mandate in this case. Accordingly,
`we will not reconsider our Institution Decision. We now consider Grounds 1
`and 3–5 on the merits.
`
`Level of Ordinary Skill in the Art
`B.
`In our Institution Decision and initial Final Written Decision, we
`declined to adopt a specific formulation regarding the level of ordinary skill
`in the art, and instead found that the cited references were representative of
`the level of ordinary skill in the art. D.I. 10 n.4; Paper 28, 7. On remand,
`neither party proposes a specific formulation regarding the level of ordinary
`skill in the art, or disputes our prior determinations that the cited references
`are representative of this level of skill.
`Consistent with our prior decisions, we decline to adopt a specific
`formulation regarding the level of ordinary skill in the art, and find that the
`cited references are representative of the level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
`ordinary skill in the art may be evidenced by the cited references
`themselves).
`
`Claim Construction
`C.
`“Image Vector Entity”
`a.
`Challenged claims 45 and 46 recite the limitation “image vector
`entity.” In our Institution Decision, we construed this limitation to mean “a
`format of information representing an image to be displayed which includes
`a shape designating statement and a position designating statement used to
`draw the shape of a real entity at the specified position.” D.I. 9–10. We also
`adopted and applied this construction in our initial Final Written Decision.
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`See Paper 28, 9–11, 15. In so doing, we declined Patent Owner’s request to
`construe “image vector entity” as “a format of information representing an
`image to be displayed which includes a shape-designating statement, a
`position-designating statement, and an attribute-designating statement used
`to draw the shape of a real entity at the specified position.” See Paper 18, 2
`(emphasis added). We explained that Patent Owner’s proposal—which is
`substantively identical to our construction except for the additional
`requirement for an “attribute-designating statement”—would not change the
`scope of the two challenged claims. Paper 28, 10. Claims 45 and 46 already
`require a “time-variant image vector entity [that] includes an attribute-
`designating statement.” Id. at 10. Accordingly, adding a requirement for an
`“attribute-designating statement” to our construction of “image vector
`entity” would not further narrow either challenged claim. See id.
`The Federal Circuit affirmed our initial Final Written Decision in this
`case. Paper 39, 7. Accordingly, all issues determined in our initial Final
`Written Decision, including our construction of the “image vector entity”
`claim limitation, “are deemed incorporated within the [Federal Circuit’s]
`mandate and thus are precluded from further adjudication.” Engel Indus.,
`166 F.3d at 1383.
`On Remand, Patent Owner re-asserts its argument that the claim
`limitation “image vector entity” should be construed so as to require an
`“attribute-designating statement.” Remand Resp. 16–17. Assuming,
`arguendo, that this argument is not inconsistent with the Federal Circuit’s
`mandate (because we declined to consider it rather than explicitly rejecting
`it), we reject it on the merits for the same reasons set forth in our initial Final
`Written Decision. Claims 45 and 46, the only claims challenged in this
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`proceeding, both explicitly require that the “image vector entity” include an
`“attribute-designating statement.” Thus, revising our construction of “image
`vector entity” so as to require an “attribute-designating statement” would not
`further narrow either challenged claim. In other words, in the context of this
`proceeding, this dispute is moot. See Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
`construed ‘to the extent necessary to resolve the controversy.’” (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`Accordingly, consistent with our prior determinations and the Federal
`Circuit’s mandate, we construe “image vector entity” as “a format of
`information representing an image to be displayed which includes a shape
`designating statement and a position designating statement used to draw the
`shape of a real entity at the specified position.”
`
`“Attribute-Designating Statement”
`b.
`Patent Owner also proposes in its Remand Response that we construe
`the claim limitation “attribute-designating statement” as “an attribute-
`designating command and an attribute value to be processed to express an
`attribute of the route to be drawn.” Remand Resp. 17–18. We declined to
`address this argument in our initial Final Written Decision because we found
`that doing so was not necessary in order to resolve the issues then in dispute.
`Paper 18, 4; Paper 28, 11.
`Petitioner argues on remand that Patent Owner is improperly seeking
`to limit the claims to embodiments disclosed in the specification and that
`Patent Owner’s argument is inconsistent with at least claims 5, 10, and 24.
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`Remand Reply 3–4. Petitioner does not propose a construction of its own.
`See id. We agree with Petitioner that Patent Owner’s proposed construction
`is unduly narrow.
`Patent Owner correctly observes that several portions of the ’518
`Patent Specification refer to an “attribute-designating statement” as being
`composed of an attribute-designating command and attribute value. See
`Remand Resp. 17–18 (citing Ex. 1001, 2:28–29, 3:5–7, 11:46–48). These
`statements, however, do not individually or collectively amount to a
`lexicographic definition that “clearly and unambiguously define[s]” a claim
`term. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed.
`Cir. 1996). Indeed, one of the Specification excerpts cited by Patent Owner
`recites that the attribute-designating statement “is preferably composed of
`two parts: ADC(Attribute-Designating Command) and C(attribute content,
`e.g., color).” Ex. 1001, 11:46–48 (emphasis added). This language plainly
`contemplates that an “attribute-designating statement” could be composed of
`something other than an attribute-designating command and an attribute
`content (i.e., attribute value).
`The doctrine of claim differentiation also counsels against adopting
`Patent Owner’s proposal. For example, independent claim 1 recites the step
`of “generating an attribute-designating statement.” Dependent claim 5
`further recites that the “attribute-designating statement” of claim 1 “is
`composed of an attribute-designating command and an attribute value.”
`Patent Owner’s proposed construction would render superfluous the
`additional limitations recited in claim 5.
`For the foregoing reasons, we reject Patent Owner’s request to
`construe the claim term “attribute-designating statement” so as to require an
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`attribute-designating command and an attribute value. Having resolved the
`parties’ dispute, we determine that it is unnecessary to further construe this
`claim limitation. Wellman, 642 F.3d at 1361.
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`D. Grounds of Unpatentability
`
`1.
`
`Overview
`In Grounds 1, 4, and 5, Petitioner argues that both challenged claims
`are unpatentable under 35 U.S.C. § 102. Pet. 4. In order to anticipate a
`patent claim under 35 U.S.C. § 102, a single prior art reference must
`“describe every element of the claimed invention, either expressly or
`inherently.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272,
`1282 (Fed. Cir. 2000).
`In Ground 3, Petitioner argues that both challenged claims are
`unpatentable under 35 U.S.C. § 103. Pet. 4. A claim is unpatentable under
`35 U.S.C. § 103 if the differences between the claimed subject matter and
`the prior art are “such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill
`in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). The
`question of obviousness under 35 U.S.C. § 103 is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
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`2.
`Objective Indicia of Nonobviousness
`The parties have not identified with specificity any objective evidence
`of nonobviousness that allegedly bears on the patentability of the challenged
`claims.
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`3.
`
`Ground 3: Alleged Obviousness of Claims 45 and 46 over Yamada
`and Rosenquist
`Overview of Yamada
`a.
`Yamada is directed to a traffic information display system in which
`traffic information image data is superimposed on a map image. Ex. 1007,
`code (57). Figure 1 of Yamada is reproduced below.
`
`
`Figure 1 of Yamada, above, is a functional block diagram depicting an
`embodiment of Yamada’s traffic information display system. Ex. 1007 ¶ 19.
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`Traffic information data receiver 3 receives traffic information from, for
`example, traffic beacons, and outputs this data to superimposition data
`generation unit 4. Ex. 1007 ¶ 24. Superimposition data generation unit 4
`then uses road link data in the received traffic information data and
`information from road link latitude/longitude database 2 to determine if the
`received traffic information data corresponds to a portion of the map that is
`currently being displayed. See Ex. 1007 ¶¶ 28–29. If so, superimposition
`data generation unit 4 generates superimposition data “constituting traffic
`information image data for traffic information display.” Ex. 1007 ¶ 29. This
`traffic information image data indicates traffic jam information “using
`vectors and generates restriction information for display using symbols.”
`Ex. 1007 ¶ 29. Image data generation unit 5 then generates image data by
`combining the data from superimposition data generation unit 4 with map
`data. Ex. 1007 ¶ 30. The resulting image is displayed on image display unit
`6. Ex. 1007 ¶ 30.
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`Overview of Rosenquist
`b.
`Rosenquist is directed to a traffic information system that receives
`traffic information from a traffic information center. Ex. 1008, code (57).
`Rosenquist discloses coding traffic information in digital radio
`communication messages, such as Radio Data System (RDS) / traffic
`message channel (TMC) messages. Ex. 1008, 9:11–10:11. Rosenquist
`discloses that, “[a]fter the reception and the decoding of the TMC messages,
`they are to be forwarded to the user” by displaying them on a map display.
`Ex. 1008, 10:34–11:20. More particularly, Rosenquist explains that “a
`message is illustrated as symbols, signs etc. which are overlaid a map
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`display, e.g. a colour display. In the illustrated embodiment a particular
`symbol language is used for the first level of information.” Ex. 1008,
`11:14–18. Figure 4 of Rosenquist is reproduced below.
`
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`Figure 4 of Rosenquist, above, illustrates symbols used to display the traffic
`information received. Ex. 1008, 11:18–19.
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`c.
`
`Analysis
`Claim 45 Preamble
` 45. A method for displaying an
`image-based traffic information
`comprising the steps of:
`
`Claim 46 Preamble
` 46. A program storage device
`readable by a digital processing
`apparatus and tangibly embodying a
`program of instructions executable
`by the digital processing apparatus
`to perform method steps for
`displaying an image-based traffic
`information, said method
`comprising the steps of:
`
`Petitioner argues that, to the extent the preambles of claims 45 and 46
`are limiting, Yamada teaches this subject matter. Pet. 34–35 (citing Ex.
`1007 ¶¶ 1, 19, 27, Fig. 2; Ex. 1003 ¶¶ 129, 158). Patent Owner does not
`dispute this assertion. See Remand Resp. 35–41.
`We need not determine whether the preambles are limiting because
`we agree with Petitioner that Yamada teaches the subject matter of the
`preambles. Yamada discloses a traffic information display system that
`generates a display “in which . . . traffic information image data is
`superimposed on map image data.” See Ex. 1007 ¶ 1. The disclosed traffic
`information display system includes a “memory card” (i.e., a program
`storage device) that contains a “database for map display,” and a “main
`operating sequence” (i.e., executable program instructions). See id. ¶¶ 19,
`27, Fig. 2.
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`Claim 45, Step 1
`receiving a traffic information map
`which includes at least a traffic
`state map, said traffic state map
`includes a plurality of time-
`variant image vector entities in a
`specified region and each of the
`time-variant image vector entity
`includes an attribute-designating
`statement, an shape-designating
`statement and a position-
`designating statement;
`
`Claim 46, Step 1
`receiving a traffic information map
`which includes at least a traffic
`state map, said traffic state map
`including a plurality of time-
`variant image vector entities in a
`specified region and each of the
`time-variant image vector entity
`includes an attribute-designating
`statement, an shape-designating
`statement and a position-
`designating statement;
`
`Petitioner argues this subject matter would have been obvious to a
`person of ordinary skill in the art based on the combined teachings of
`Yamada and Rosenquist. Pet. 35–39. Petitioner argues that Yamada’s
`disclosure of receiving “traffic information data” that includes “traffic
`information content” and “traffic jam information” teaches receiving a
`traffic information map having a traffic state map including “a plurality of
`time-variant image vector entities in a specified region,” as recited in claims
`45 and 46. Pet. 35–37 (citing Ex. 1007 ¶¶ 3–4, 17, 24, 29, Fig. 4; Ex. 1003
`¶¶ 130–133, 159–162). Petitioner further argues that the combination of
`Yamada and Rosenquist teaches the three recited “statement[s]” of which
`the image vector entity is comprised. Pet. 37–39.
`First, as to the recited “attribute-designating statement,” Petitioner
`argues that “Yamada describes that the ‘restriction information’ is used to
`generate ‘symbols’ that are displayed as part of the ‘traffic information
`image data.’” Pet. 37 (quoting Ex. 1007 ¶ 29). Petitioner also argues that
`Rosenquist discloses that traffic information received in TMC messages is
`used to select colors of graphics that are presented to the user, as illustrated
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`in Figure 4. Pet. 37–38 (citing Ex. 1008, 9:11–10:1, Fig. 4; Ex. 1003
`¶¶ 135–137, 164–166).
`Second, as to the recited “shape-designating statement,” Petitioner
`argues that Yamada’s Figure 4 depicts the display of various shapes
`illustrating traffic information, and that Rosenquist discloses that
`information in the TMC messages is used to select certain symbols to
`display to the user. Pet. 38 (citing Ex. 1007 ¶¶ 3–4, Fig. 4; Ex. 1008, 9:11–
`24, Fig. 4; Ex. 1003 ¶¶ 141–147, 168–174).
`Third, as to the recited “position-designating statement,” Petitioner
`cites Yamada’s disclosure of “latitude/longitude” of traffic information
`image data, and also argues that Rosenquist discloses that traffic information
`received in TMC messages includes “information identifying ‘location of the
`disturbance or incident.’” Pet. 39 (citing Ex. 1007 ¶¶ 17, 22; Ex. 1008,
`9:11–10:1; Ex. 1003 ¶¶ 148–151, 175–178).
`Petitioner argues that a person of ordinary skill in the art
`would have been prompted to modify Yamada’s traffic
`information system to include Rosenquist’s traffic information
`and display features, such “as symbols, signs, etc. which are
`overlaid a map display,” because it would allow for a user “to be
`able to quickly get an overview of the current situation in a given
`area.”
`Pet. 32 (quoting Ex. 1008, 11:8–16) (citing Ex. 1008, 4:4–24, 14:2–7; Ex.
`1003 ¶ 138). Petitioner also argues that combining the teachings of Yamada
`and Rosenquist would have been “merely the use of a known technique (e.g.,
`receiving and displaying traffic information) to improve similar devices
`(e.g., systems for displaying traffic information on a map) in the same way.”
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`Pet. 32–33 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007);
`Ex. 1007 ¶ 1, Fig. 1; Ex. 1008, 4:4–24, Figs. 4–5; Ex. 1003 ¶ 140).
`Patent Owner argues that Petitioner has not shown that the prior art
`teaches the claimed image vector entity, and Patent Owner focuses in
`particular on the “attribute-designating statement” of the image vector entity.
`Remand Resp. 38–41. As an initial matter, we disagree with Patent Owner’s
`assertion that “[t]he Petition fails to point out exactly what disclosure of
`Yamada corresponds, teaches, or discloses the unique combination of
`features recited in” the receiving steps of claims 45 and 46. See Remand
`Resp. 39. Petitioner’s contentions, which we summarize above, identify
`with sufficient particularity how the disclosures of Yamada and Rosenquist
`teach the recited subject matter. See Pet. 35–39.
`As to the recited “attribute-designating statement,” Patent Owner
`argues that Petitioner’s assertion that information contained in Rosenquist’s
`TMC messages is “used to select colors” actually demonstrates that the
`TMC messages do not include the color (attribute). Remand Resp. 40
`(quoting Pet. 38). Patent Owner argues that, “according to the Petition,
`Rosenquist teaches designating an attribute after the message is received”
`and, therefore, that “a TMC message is not an ‘attribute designating
`statement.’” Remand Resp. 40. Patent Owner is correct that the Petition
`states that “information included in ‘TMC messages’ is used to select colors
`(attributes)” that are displayed. See Pet. 38.
`Petitioner clarifies in its Reply, however, that the phrase “used to
`select colors” in the Petition refers to Rosenquist’s disclosure of decoding a
`message to determine what color and symbol are represented in the message.
`Remand Reply 10–11. Petitioner cites the testimony of its declarant, Dr.
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`Michalson, explaining how Rosenquist’s TMC messages include coded
`information that designates colors to be displayed. Remand Reply 8–9
`(citing Ex. 1003 ¶¶ 136, 146, 150; Ex. 1021 ¶ 8). For example, Dr.
`Michalson testifies that a person of ordinary skill in the art
`would have recognized that Rosenquist’s discussion of receiving
`information that indicates colors to represent different traffic
`conditions is similar to the ’518 patent’s discussion of “attribute-
`designating statements,” which the ’518 patent describes as
`indicating “a color, a brightness or a pattern” where “the color is
`preferably determined according
`to the velocity on
`the
`corresponding road (i.e. the average velocity of a car running on
`the road).”
`Ex. 1003 ¶ 136 (citing Ex. 1001, 11:24–27, 11:48–51).
`Rosenquist discloses coding traffic information into TMC messages,
`and it states that “[w]ith an efficient coding of the information as related to
`above which relates to one event, can the messages be sent using only 37
`bits.” Ex. 1008, 9:11–10:11. Rosenquist discloses that TMC messages are
`received and decoded and that “a message is illustrated as symbols, signs
`etc. which are overlaid a map display, e.g. a colour display.” Ex. 1008,
`10:34–35, 11:14–16. Dr. Michalson explains that a person of ordinary skill
`in the art would have understood, based on Rosenquist’s disclosure of a
`client device decoding and displaying messages, that “the color information
`(for those symbols to be drawn) was encoded in Rosenquist’s TMC
`messages using conventional methods that were ubiquitous at the time.” Ex.
`1021 ¶ 11. Dr. Michalson further explains as follows:
`conventional
`For
`instance,
`one
`example
`of
`such
`encoding/decoding at the time would use bitwise/numerical
`values to encode and represent the color information (e.g., color
`value of ‘0’ designates “yellow” and color value of ‘1’ designates
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`“red”), and Rosenquist’s client device would receive and simply
`decode these bitwise/numerical values (e.g., translates from
`color value ‘0’ to “yellow” color for the corresponding shape) for
`drawing the color shapes on the map to represent the part of the
`road suffe
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