Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 48
`Entered: August 4, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEXAS ASSOCIATION OF REALTORS,
`Petitioner,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00615
`Patent 8,510,045 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`ORDER DENYING MOTION TO AMEND
`37 C.F.R. § 42.121
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 48
`Entered: August 4, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEXAS ASSOCIATION OF REALTORS,
`Petitioner,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00615
`Patent 8,510,045 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`ORDER DENYING MOTION TO AMEND
`37 C.F.R. § 42.121
`
`
`
`
`
`
`
`IPR2016-00615
`Patent 8,510,045 B2
`
`
`Texas Association of REALTORS (“Petitioner”) filed a Petition
`
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`
`claims 1–28 (all claims) of U.S. Patent No. 8,510,045 B2, issued on August
`
`13, 2013 (Ex. 1001, “the ’045 patent”). Paper 1 (“Pet.”). POI Search
`
`Solutions LLC filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter
`
`partes review of all challenged claims. Paper 10 (“Dec. on Inst.”).
`
`On September 9, 2016, counsel for POI Search Solutions LLC,
`
`informed the Board that IP3, Series 100 of Allied Security Trust I (“IP3”)
`
`had acquired the ’045 patent. Paper 14, 2. IP3 filed updated mandatory
`
`notices reflecting the change of ownership and designating new lead and
`
`backup counsel. Paper 15, 2–3.
`
`During the trial, IP3 filed a Patent Owner Response (Paper 26, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner Response (Paper
`
`34, “Pet. Reply”). IP3’s fully briefed Motion to Amend also is pending.
`
`Paper 25 (“Mot. to Amend”); Paper 33 (“Opp. to Mot. to Amend”); Paper 36
`
`(“Reply to Mot. to Amend”). An oral hearing was held on April 4, 2017,
`
`and a copy of the transcript has been made part of the record. Paper 42
`
`(“Tr.”).
`
`Subsequently, on July 20, 2017, counsel for Uber Technologies, Inc.
`
`informed the Board that Uber had acquired the ’045 patent through an
`
`assignment executed on June 16, 2017 and recorded with the Office on July
`
`
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`2
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`IPR2016-00615
`Patent 8,510,045 B2
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`4, 2017. See Paper 46 (Decision Granting Motion to Substitute Counsel),
`
`Paper 47 (Mandatory Notices).1
`
`We have jurisdiction under 35 U.S.C. § 6(b). This Decision is a Final
`
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`
`claims on which we instituted trial. Based on the record before us, we
`
`determine that Petitioner has shown, by a preponderance of the evidence,
`
`that claims 1–28 of the ’045 patent are unpatentable under 35 U.S.C.
`
`§ 103(a). We also deny Patent Owner’s Motion to Amend.
`
`
`
`I. BACKGROUND
`
`A. The ’045 Patent
`
`The ’045 patent describes a method for “displaying points-of-interest
`
`(‘POIs’) on a digital map.” Ex. 1001, Abstract. The ’045 patent discloses a
`
`user selecting an arbitrary region on a digital map (displayed on an
`
`electronic device, such as a smart phone) and displaying POIs on the digital
`
`map that are within the geographic confines of the arbitrary region. Id. at
`
`1:15–19. POIs may include businesses, such as coffee shops, gas stations, or
`
`other attractions. Id. at 1:58–65. Along with selecting an arbitrary region,
`
`the user can enter a search query to allow retrieval of various POIs by the
`
`mapping application. Id. at 1:63–66. The ’045 patent describes retrieving
`
`POIs based on the search query, dimensions of the map, and any other logic
`
`used by the mapping application. Id. at 1:66–2:1. In one embodiment, a
`
`
`1 Because ownership of the ’045 patent changed over the course of this
`proceeding, we use the generic designation “Patent Owner” throughout this
`Decision for ease of reference.
`
`
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`3
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`IPR2016-00615
`Patent 8,510,045 B2
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`filtered subset of POIs may be displayed within the geographic confines of
`
`the user’s selected region. Id. at 2:1–5.
`
`B. Illustrative Claim
`
`Claim 1 of the ’045 patent recites:
`
`1. A method of displaying points-of-interest (“POI”s) on a
`digital map, comprising:
`
`displaying a digital map within a given view and at a given
`scale, on a graphical display of an electronic device;
`
`receiving user input containing a search query;
`
`providing one or more search results associated with the
`search query,
`the search
`results containing geographic
`coordinates;
`
`receiving user input defining a geographic region within
`the digital map, wherein the geographic region is defined from
`within the current view and current scale of the digital map, and
`wherein the geographic region is represented by a polygon;
`
`determining the one or more search results whose
`geographic coordinates are within the user defined geographic
`region; and
`
`displaying the determined one or more search results as
`one or more graphics on the digital map; wherein the one or more
`graphics represent one or more POIs.
`
`Ex. 1001, 11:64–12:16.
`
`C. Related Proceedings
`
`Petitioner and Patent Owner identify two related, but dismissed,
`
`litigations in the U.S. District Court for the Eastern District of Texas
`
`involving the ʼ045 patent:
`
`POI Search Solutions LLC v. Keller Williams Realty, Inc., 2-15-cv-
`
`00144 (E.D. Tex.); and POI Search Solutions LLC v. Fathom Realty, LLC,
`
`2-15-cv-00143 (E.D. Tex.). Pet. 59; Paper 8, 2.
`
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`4
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`D. Real Party-in-Interest
`
`In accordance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1),
`
`Petitioner identifies Texas Association of REALTORS (“TAR”) as the real
`
`party-in-interest in this proceeding. Pet. 59.
`
`
`
`Patent Owner argues that the Petition fails to identify all real
`
`parties-in-interest, but does not include substantive arguments in its Patent
`
`Owner Response. PO Resp. 15–16. Rather, pursuant to our authorization,
`
`Patent Owner filed a Motion to Terminate Inter Partes Review for failure of
`
`Petitioner to name all real parties-in-interest pursuant to 35 U.S.C.
`
`§ 312(a)(2). Paper 30. TAR filed an Opposition to Patent Owner’s Motion
`
`(Paper 28), and Patent Owner filed a Reply to TAR’s Opposition (Paper 31).
`
`After consideration of the party’s positions, we issued a Decision on January
`
`17, 2017, denying Patent Owner’s Motion to Terminate. Paper 32. Patent
`
`Owner has not produced any new evidence or argument that would impact
`
`our Decision denying Patent Owner’s Motion to Terminate. See PO Resp.
`
`15–16. Therefore, we maintain our previous determination, for the reasons
`
`set forth in the Decision (Paper 32).
`
`E. Prior Art
`
`The pending grounds of unpatentability in the instant inter partes
`
`review are based on the following prior art:
`
`U.S. Patent No. 7,373,246 B2, issued May 13, 2008 (Ex.
`1003, “O’Clair”);
`
`U.S. Patent Application Publication No. 2010/0094548
`A1, filed July 9, 2009, published April 15, 2010 (Ex. 1004,
`“Tadman”);
`
`U.S. Patent Application Publication No. 2009/0153492
`A1, filed December 13, 2007, published June 18, 2009 (Ex. 1005,
`“Popp”);
`
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`5
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`Patent 8,510,045 B2
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`International Patent Application Publication No. WO
`97/48065, published December 18, 1997
`(Ex. 1006,
`“DeLorme”);
`
`U.S. Patent Application Publication No. 2009/0132927
`A1, filed November 16, 2007, published May 21, 2009 (Ex.
`1007, “Reed”);
`
`U.S. Patent No. 6,791,536 B2, issued September 14, 2004
`(Ex. 1008, “Keely”); and,
`
`U.S. Patent Application Publication No. 2005/0270311
`A1, filed February 5, 2005, published December 8, 2005 (Ex.
`1009, “Rasmussen”).
`
`D. Pending Grounds of Unpatentability
`
`The instant inter partes review involves the following grounds of
`
`unpatentability under 35 U.S.C. § 103(a):
`
`
`
`References
`
`Claim(s) Challenged
`
`O’Clair and Tadman
`
`1, 2, 5, and 6
`
`O’Clair, Tadman, and
`Popp
`O’Clair, Tadman, and
`DeLorme
`O’Clair, Tadman, and
`Reed
`O’Clair, Tadman, Reed,
`and Popp
`O’Clair, Tadman, Reed,
`and Keely
`O’Clair, Tadman, and
`Rasmussen
`O’Clair, Tadman,
`Rasmussen, and Popp
`
`3 and 4
`
`7–10
`
`11, 12, and 14–20
`
`13
`
`21
`
`22 and 25–28
`
`23 and 24
`
`
`
`6
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`II. ANALYSIS
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and that burden never shifts to Patent Owner. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). To prevail, Petitioner must establish the facts supporting its
`
`challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael
`
`Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild
`
`(Ex. 1020). Patent Owner does not rely on any supporting declaration or
`
`cross-examination testimony. Below, we discuss whether Petitioner has met
`
`its burden with respect to claims 1–28.
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious to a
`
`person of ordinary skill in the art at the time the invention was made. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved
`
`based on 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 ordinary skill in the art; and (4)
`
`objective evidence of nonobviousness,2 i.e., secondary considerations. See
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`2 In this proceeding, the parties have not identified any objective evidence of
`nonobviousness that allegedly bears on the patentability of the challenged
`claims.
`
`
`
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`Patent 8,510,045 B2
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`
`A. Claim Interpretation
`
`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);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard).
`
`Petitioner proposes constructions for three terms. See Pet. 6–8
`
`(“demarcating,” “delimiting,” and “‘select’ control”).
`
`Patent Owner does not propose any interpretations of claim terms, and
`
`Patent Owner agrees with Petitioner’s proposed constructions of
`
`“demarcating” and “delimiting” as discussed below. Patent Owner does,
`
`however, contend that claim 1 requires certain steps of the method to be
`
`performed in a specific order, specifically, that the one or more search
`
`results must be provided before the “determining” step of claim 1 is
`
`performed. PO Resp. 4. As also discussed below, Petitioner agrees with this
`
`step order interpretation.
`
`Only terms that are in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). For the purposes of this
`
`Decision, we interpret “demarcating” and “delimiting” as follows, and
`
`further determine that certain steps of claim 1 must be performed in the
`
`recited order.
`
`1. Step Order Interpretation
`
`In the Decision on Institution, we determined that certain steps of
`
`claim 1 must be performed in the recited order. Dec. on Inst. 7–8. Claim 1
`
`recites “providing one or more search results associated with the search
`
`
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`query” and “determining the one or more search results whose geographic
`
`coordinates are within the user defined geographic region.” Ex. 1001, 12:2–
`
`4, 12:10–12. Patent Owner again maintains that because the “determining”
`
`step refers back to “the one or more search results,” claim 1 has a specific
`
`order, requiring that “the one or more search results” are provided before the
`
`“determining” step is performed. PO Resp. 4. Petitioner agrees with this
`
`interpretation and confirms that claim 1 has a specific order of the steps
`
`because the providing step is referenced in the determining step. Tr. 14:35–
`
`15:18; Pet. Reply 3 (“Patent Owner’s proposed interpretation of claim 1
`
`appears to be supported by the Specification.”).
`
`We do not perceive any reason or evidence that compels any deviation
`
`from our original interpretation. Accordingly, we adopt our previous
`
`analysis and conclusion as to the order of performing the steps of claim 1 for
`
`purposes of this Decision. Dec. on Inst. 7–8.
`
`2. “Demarcating” (Claim 11) and “Delimiting” (Claim 22)
`
`Independent claim 11 recites “demarcating a region of the presently
`
`displayed portion of the digital map approximately matching the polygonal
`
`area defined by the second set of user input.” Ex. 1001, 12:57–59.
`
`Independent claim 22 requires “delimiting the portion of the digital map
`
`selected by the user.” Id., 13:48–49. Petitioner proposes similar
`
`constructions for both terms. Pet. 6–7.
`
`First, Petitioner argues that based on the dictionary definition of
`
`“demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to
`
`determine or mark off the boundaries or limits of’ something.” Id. (quoting
`
`Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed.
`
`2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest
`
`
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`IPR2016-00615
`Patent 8,510,045 B2
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`reasonable interpretation of “delimiting” is “determining or marking off the
`
`boundaries or limits of something, such as by providing a perimeter line or
`
`highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons
`
`that the Specification provides examples of delimiting “via a perimeter line
`
`in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39,
`
`8:13–19).
`
`Patent Owner does not address these interpretations in its Response,
`
`but at oral hearing Patent Owner agrees that Petitioner’s interpretations were
`
`“a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there
`
`was no substantive difference between the two terms – “demarcating” and
`
`“delimiting.” Id. at 93:19–29.
`
`Petitioner’s proposed interpretations for “demarcating” and
`
`“delimiting” are consistent with the claim language, written description of
`
`the ’045 patent, and the plain meaning of each term. We therefore interpret
`
`“demarcating” to mean “determining or marking off the boundaries or limits
`
`of something,” and interpret “delimiting” to mean “determining or marking
`
`off the boundaries or limits of something, such as by providing a perimeter
`
`line or highlighting.”
`
`B. Level of Ordinary Skill in the Art
`
`The parties do not argue in the Petition or Patent Owner Response that
`
`we should adopt a specific formulation regarding the level of ordinary skill
`
`in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in
`
`the art at the time of the ’045 patent “would have had a Bachelor of Science
`
`degree (or its equivalent), and three years’ experience in the development,
`
`management, and use of geographic information systems and related
`
`geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented,
`
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`10
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`including our review of the ’045 patent and the types of problems and
`
`solutions described in the ’045 patent and cited prior art, we agree with
`
`Dr. Goodchild’s assessment of the level of ordinary skill in the art and
`
`therefore adopt it for purposes of this Decision. As noted, we have also
`
`considered the cited references as 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).
`
`C. Obviousness Ground Based on O’Clair and Tadman
`(Claims 1, 2, 5, and 6)
`
`We instituted trial on the ground that the subject matter of claims 1, 2,
`
`5, and 6 would have been obvious over O’Clair and Tadman. Dec. on Inst.
`
`8–13; see Pet. 9–18. Having now considered the evidence in the complete
`
`record established during trial, we are persuaded that, based on this record,
`
`Petitioner has demonstrated by a preponderance of the evidence that the
`
`claims would have been obvious over those references in combination.
`
`1. O’Clair
`
`O’Clair describes methods and systems for “using boundaries
`
`associated with a given map view for retrieving the location of businesses
`
`located within the boundaries of the map view.” Ex. 1003, 1:8–12. O’Clair
`
`describes adopting user-defined boundaries of a map view to “search a
`
`corpus of location listings” to identify entities or businesses “that are the
`
`most relevant to a given search query.” Id. at 2:54–65. In one embodiment,
`
`O’Clair describes a user-initiated search of businesses located within a user-
`
`defined geographical region. Id. at 3:39–46. The search includes providing
`
`a map view to a user, accepting search input from the user, and searching an
`
`index “to retrieve businesses that have corresponding latitude and longitude
`
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`location information located within the entirety of the geographical region.”
`
`Id. at 3:46–58. Figure 7 of O’Clair depicts the ranked identified businesses
`
`“with each business in the list including a map identifier 730, which visually
`
`indicates the location of a business on zoom level map view 700.” Id. at
`
`7:37–42.
`
`
`
`Figure 7 of O’Clair is a zoom level map identifying businesses located
`
`within the zoom level view. Id. at 2:42–45.
`
`As depicted in Figure 7, the map area is defined by the latitude (“lat”)
`
`and longitude (“lon”) corresponding to each corner of the zoom level map
`
`view to define the geographical search area. Id. at 7:6–13. In one
`
`embodiment, O’Clair describes that “the latitude and longitude coordinates
`
`associated with each indexed business that is determined to be relevant to
`
`the search query may be compared with the latitudes and longitudes
`
`associated with the geographic search area.” Id. at 7:20–24. In some
`
`embodiments, ranking of identified businesses may occur “based on their
`
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`proximity to one or more geographic locations.” Id. at 7:32–42. Also, map
`
`identifiers 730 identify the location of the businesses on the map as depicted
`
`in Figure 7.
`
`2. Tadman
`
`Tadman describes “systems and methods for advanced features for
`
`online mapping, searching, and planning driving tours.” Ex. 1004, Abstract.
`
`Tadman discloses that a user may define a destination search area displayed
`
`on a geographical map utilizing either spatial or non-spatial filters. Id.; see
`
`also id. ¶ 81 (“When searching, a user may be able to combine spatial and
`
`non-spatial criteria.”). The system may utilize “a spatial search” which
`
`“may be a search or filter based on a shape,” such as a “polygon.” Id. ¶ 53;
`
`see also id. ¶ 69. Tadman describes an “[i]nitial launch to [a] map results
`
`page showing the interactive map graphic” and a subsequent step in which
`
`“users can interact with the map via . . . drawing a custom shape on the
`
`map.” Id. ¶ 36.
`
`Tadman describes that the user may be able to search within selected
`
`areas for listing results and the system may also enable a user to select one
`
`or more shapes on the map to be searched. Id. ¶¶ 74, 81. In one
`
`embodiment, Tadman describes the use of geographic coordinates, for
`
`example, saving the “latitude and longitude of each point of the polygon.”
`
`Id. ¶ 146. Tadman also describes including a destination indicator within the
`
`destination search area that corresponds to the location of at least one
`
`destination. Id. ¶ 80.
`
`3. Claim 1
`
`With respect to claim 1, we have reviewed Petitioner’s analysis and
`
`supporting declarations and are persuaded that Petitioner has proved by a
`
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`preponderance of the evidence that claim 1 would have been obvious over
`
`Tadman and O’Clair. See Pet. 9–16.
`
`Petitioner contends that the claim 1 requirement of “displaying a
`
`digital map within a given view and at a given scale, on a graphical display
`
`of an electronic device,” is taught by O’Clair’s display of map document
`
`100, which may be at zoom level view 110 of the geographic location
`
`provided by a user and may have boundaries that encompass a specific
`
`geographic region at a specific scale. Pet. 11 (citing Ex. 1003, 3:16–38).
`
`Petitioner asserts that O’Clair teaches the claim 1 limitation of “receiving
`
`user input containing a search query,” as O’Clair describes that a user may
`
`provide a search query and the user may initiate a search of businesses
`
`located within the desired geographic region. Id. at 12 (citing Ex. 1003,
`
`6:65–7:4, 3:39–50). Petitioner contends the “providing one or more search
`
`results associated with the search query, the search results containing
`
`geographic coordinates,” limitation is taught by O’Clair. Id. at 11–12.
`
`Specifically, O’Clair’s search query retrieves businesses from a geographic
`
`region of a map view based on their latitude and longitude information. Id.
`
`at 9 (citing Ex. 1003, 3:39–58).
`
`Petitioner relies on Tadman as teaching “receiving user input defining
`
`a geographic region within the digital map, wherein the geographic region is
`
`defined from within the current view and current scale of the digital map,
`
`and wherein the geographic region is represented by a polygon.” Id. at 13–
`
`14. According to Petitioner, “Tadman describes an order of steps, which
`
`includes an ‘initial launch to [a] map results page showing the interactive
`
`map graphic’ . . . and a subsequent step in which ‘users can interact with the
`
`map via . . . drawing a custom shape on the map.’” Id. at 13 (quoting Ex.
`
`
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`14
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`1004 ¶ 36). Further, Tadman describes that “MLS software may include a
`
`polygon tool that may enable a user to select an area on a map by creating a
`
`polygon and enclosing an area on the map within the polygon.” Id. (quoting
`
`Ex. 1004 ¶ 69) (emphases omitted). According to Petitioner, the
`
`combination of O’Clair and Tadman teaches “determining the one or more
`
`search results whose geographic coordinates are within the user defined
`
`geographic region,” as required by claim 1, based on the ability to search
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`within a selected area, such as a polygon, for a business with latitudes and
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`longitudes associated with the defined geographic search area. Id. at 14.
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`Finally, Petitioner shows that the claim 1 requirements of “displaying the
`
`determined one or more search results as one or more graphics on the digital
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`map,” and that “the one or more graphics represent one or more POIs,” are
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`taught by Tadman’s description that the “graphical user interface may
`
`display the map search results” and “numbered flags may appear on a map to
`
`show the location of the results,” and the references’ descriptions of
`
`displaying real estate listings and businesses. Id. at 15–16 (quoting Ex. 1004
`
`¶¶ 80, 83). We find Petitioner’s arguments persuasive.
`
`Petitioner also provides a persuasive rationale for combining the
`
`teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically,
`
`Petitioner contends both references are in “similar fields,” with both
`
`references referring to the mapping application Google Maps, and
`
`[a] person of ordinary skill in the art would have found it
`obvious and desirable at the time of the ’045 Patent’s filing to
`combine the features of Tadman into O’Clair to achieve, for
`example, the ability for a “user to conduct a joint query by using
`both spatial and non-spatial searches” and the other “advanced
`features” described by Tadman.
`
`
`
`15
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`IPR2016-00615
`Patent 8,510,045 B2
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`Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr.
`
`Goodchild, “[t]he combination of O’Clair’s systems and methods with
`
`Tadman’s teachings of polygon-based search would yield the predictable
`
`and desirable result of a GIS [geographic information] system which
`
`allowed a user to obtain search results located with a polygon-shaped area of
`
`interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19.
`
`In its Response, Patent Owner does not contest Petitioner’s rationale
`
`for combining features of Tadman and O’Clair, nor does Patent Owner
`
`challenge Petitioner’s rationale for combining any of the prior art. See Tr.
`
`38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to
`
`combine is not argued in the Patent Owner Response). We find persuasive
`
`Petitioner’s arguments as to why a person of ordinary skill in the art would
`
`have had reason to combine the references’ teachings in the manner asserted.
`
`Patent Owner disputes Petitioner’s analysis for claim 1 for two
`
`reasons. First, Patent Owner argues Petitioner’s obviousness ground is
`
`deficient because O’Clair fails to teach “providing one or more search
`
`results associated with the search query, the search results containing
`
`geographic coordinates,” as required by claim 1. PO Resp. 1. More
`
`specifically, Patent Owner argues O’Clair does not teach “providing . . .
`
`search results containing geographic coordinates” because there is no
`
`“discussion in O’Clair that the ‘ranked identified businesses’ include
`
`‘geographic coordinates,’ as required by claim 1.” Id. at 1–2. Patent Owner
`
`further contends that the cited portions of O’Clair only discuss a search
`
`process performed by a server to identify businesses within a given location,
`
`but O’Clair does not discuss any search results. Id. at 2. According to
`
`Patent Owner, O’Clair does not teach “‘geographic coordinates’ being
`
`
`
`16
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`IPR2016-00615
`Patent 8,510,045 B2
`
`included with the ‘ranked identified businesses,’” and therefore O’Clair does
`
`not teach the providing step of claim 1. Id. at 3.
`
`Petitioner responds that “O’Clair’s teachings are clear: ‘ranked
`
`identified businesses,’ or search results, are indeed provided to the user, and
`
`these businesses include geographic coordinates.” Pet. Reply 5 (quoting Ex.
`
`1003, 7:37–42). Petitioner reiterates that “businesses are associated with
`
`latitude and longitude information, or geographic coordinates: ‘the latitude
`
`and longitude coordinates associated with each indexed business.’” Id.
`
`(quoting Ex. 1003, 3:51–57). Likewise, Petitioner contends that “the search
`
`results (the ranked identified businesses) have, or contain, geographic
`
`coordinates,” as taught by O’Clair. Id. at 6; Ex. 1020 ¶¶ 8–9.
`
`Petitioner has established persuasively that O’Clair teaches providing
`
`“search results containing geographic coordinates” as required by claim 1.
`
`O’Clair states “the latitude and longitude coordinates associated with each
`
`indexed business that is determined to be relevant to the search query may be
`
`compared with the latitudes and longitudes associated with the geographic
`
`search area.” Ex. 1003, 7:20–24 (emphasis added). O’Clair teaches each
`
`business subject to a user search has corresponding latitude and longitude
`
`information that is utilized during and after the search. Id. at 3:54–56 (the
`
`“index may be searched to retrieve businesses that have corresponding
`
`latitude and longitude location information”). For example, each identified
`
`business has a corresponding map identifier (730 of Fig. 7), which visually
`
`indicates the geographic location, or coordinates, of a business on the map.
`
`Id. at 7:39–42. O’Clair’s use of a map identifier in the disclosed map
`
`demonstrates that the search results contain geographic coordinates. See Pet.
`
`Reply 6 (“A person of ordinary skill in the art would have understood that,
`
`
`
`17
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`IPR2016-00615
`Patent 8,510,045 B2
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`to visually indicate the location of a (ranked identified) business on a zoom
`
`level map view, the geographic coordinates of that ranked identified
`
`business would need to be provided and used for rendering the visual
`
`location.”) (citing Ex. 1020 ¶ 9). Notably, the providing step does not
`
`require that the search results containing geographic coordinates be
`
`“provided” to the user as Patent Owner may suggest; the providing step does
`
`not specify to whom or what the search results are provided. See PO Resp.
`
`1–2 (“the only information ‘provided’ to the user are ‘ranked identified
`
`businesses”). The only output required to be displayed is the “digital map”
`
`displayed “on a graphical display of an electronic device” and the “search
`
`results as one or more graphics on the digital map” recited in the final step of
`
`the claimed method. Therefore, we are persuaded by Petitioner’s arguments
`
`that O’Clair teaches that the provided search results (identified businesses)
`
`contain geographic coordinates as required by claim 1.
`
`Second, Patent Owner alleges O’Clair and Tadman fail to teach
`
`“determining the one or more search results whose geographic coordinates
`
`are within the user defined geographic region” (hereinafter, the “determining
`
`step”). PO Resp. 4. Patent Owner argues that because the determining step
`
`refers back to “the one or more search results,” the steps of claim 1 must be
`
`performed in a specific order such that the search results are provided before
`
`the determining step is performed. Id. See supra Section II.A.1. Patent
`
`Owner contends that Tadman performs these steps in the opposite order by
`
`“first defining a shape on a map, and then searching for results within the
`
`shape.” Id. at 4–5. Thus, according to Patent Owner, Tadman does not
`
`teach the determining step of claim 1.
`
`
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`18
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`
`Petitioner, in its Reply, points out that “O’Clair is cited as teaching the
`
`‘providing one or more search results. . .’ limitation,” and “[o]nce those
`
`search results are provided as taught by O’Clair, the teachings of Tadman
`
`are applied to allow a user to define a geographic region within the digital
`
`map . . . and then determine search results within that defined geographic
`
`region,” as required by claim 1. Pet. Reply 8 (citing Ex. 1010 ¶ 52).
`
`Petitioner alleges that “Patent Owner analyzes the references in isolation,
`
`and fails to consider the combined teachings of O’Clair and Tadman.” Id. at
`
`9.
`
`For the reasons discussed above, we agree with Patent Owner that
`
`under the broadest reasonable interpretation of claim 1, the determining step
`
`of claim 1 must be performed after the search results are provided. But even
`
`under this interpretation, Patent Owner’s argument fails to convince us that
`
`Petitioner’s contentions are not supported. Petitioner relies first on O’Clair
`
`as teaching the providing step. Pet. 12. Specifically, O’Clair teaches
`
`“providing one or more search results” before the determining step is carried
`
`out according to Petitioner’s proposed combination. See id. at 12–15. After
`
`execution of the providing step by O’Clair, Petitioner relies on the
`
`combination of O’Clair and Tadman, not Tadman alone, as teaching the
`
`determining step. See id. at 14–15 (“the combination of Tadman and
`
`O’Clair teaches ‘determining the one or more search results whose
`
`geographic coordinates are within the user defined geographic region’”).
`
`Thus, Petitioner establishes that O’Clair teaches providing the one or more
`
`search results associated with the search query, Tadman teaches receiving
`
`user input representing a polygon, and the references in combination teach
`
`the determining step, with sufficient explanation as to why a person of
`
`
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`19
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`IPR2016-00615
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`ordinary skill in the art would have combined the references’ teachings in
`
`that manner. See id. at 12, 14; see also Ex. 2020 ¶¶ 13–17.
`
`For the reasons discussed above, we conclude that Petitioner has
`
`proved by a preponderance of the evidence that claim 1 would have been
`
`obvious over Tadman and O’Clair.
`
`4. Claims 2, 5, and 6
`
`With respect to claims 2, 5, and 6, we have reviewed Petitioner’s
`
`analysis and supporting declarations and are persuaded that Petitioner has
`
`proved by a preponderance of the evidence that claims 2, 5, and 6 would
`
`have been obvious over Tadman and O’Clair. See Pet. 16–18 (explaining
`
`how Tadman teaches the use of multiple geographic regions and
`
`highlighting and outlining the defined geographic regions). We examine
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`each
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