Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
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`Entered: December 11, 2017
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01531
`Patent 7,650,234 B2
`____________
`
`
`
`Before JOHN F. HORVATH, JOHN A. HUDALLA, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper 7
`
`Entered: December 11, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01531
`Patent 7,650,234 B2
`____________
`
`
`
`Before JOHN F. HORVATH, JOHN A. HUDALLA, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`IPR2017-01531
`Patent 7,650,234 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Unified Patents Inc. requested an inter partes review of
`
`claims 1–30 (the “Challenged Claims”) of U.S. Patent No. 7,650,234 B2
`
`(“the ’234 patent”). Paper 1 (“Petition” or “Pet.”). Patent Owner Silver
`
`State Intellectual Technologies, Inc. filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless it is determined that there is a reasonable likelihood that Petitioner
`
`will prevail with respect to at least one of the Challenged Claims. Applying
`
`this standard, we are not persuaded Petitioner has shown a reasonable
`
`likelihood that it would prevail with respect to at least one of the Challenged
`
`Claims because the Petition does not account properly for all the limitations
`
`of independent claims 1, 9, 17, and 24. Accordingly, we deny the Petition
`
`and decline to institute inter partes review of the Challenged Claims for the
`
`reasons set forth below.
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’234 patent (Ex. 1001)
`
`The ’234 patent relates to a navigation system that takes into account
`
`user preferences. See Ex. 1001, 1:2–22. The ’234 patent describes a
`
`navigation device that has been “expanded [beyond] the concept of the
`
`traditional navigation to broadly include providing a navigated route subject
`
`to user preferences, together with information concerning facilities and
`
`events surrounding the navigated route for the user’s convenience.” Id. at
`
`1:59–63. A route is selected in order to satisfy the purpose of a trip, which
`
`according to the ’234 patent, can be: (i) to reach a given destination, as
`
`taught in the prior art, or (ii) “to perform certain tasks enroute [sic] or at the
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`IPR2017-01531
`Patent 7,650,234 B2
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`destination, which may include purchasing business supplies, shopping for
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`gifts, dining, obtaining entertainments, etc.” Id. at 1:63–2:1. The described
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`system and method store user profiles including preferences for types of
`
`restaurants, shops, entertainment, etc. for use in navigating according to the
`
`latter purpose. Id. at 2:1–4. The actual route selected for a trip may also
`
`depend on external conditions, such as traffic, weather, and road conditions.
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`Id. at 5:49–51. The ’234 patent describes receiving information concerning
`
`such external conditions from a server and then selecting the most efficient
`
`route to accomplish the purpose of the trip, “despite any adverse traffic,
`
`weather and road conditions.” Id. at 5:52–57.
`
`Figure 1 of the ’234 patent, reproduced below, depicts a navigator
`
`arrangement 100, for use either as a handheld device or a docked device
`
`within another system such as a computer or vehicle. Id. at 3:27–35.
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`
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`3
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`IPR2017-01531
`Patent 7,650,234 B2
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`After a user creates a profile, navigator arrangement 100’s processor 103
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`obtains from GPS receiver 119 coordinates for the current location of the
`
`navigator arrangement and creates a record of the coordinates associated
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`with the user. Id. at 6:35–43. Processor 103 then uses communication
`
`unit 120 to request a map and related information from navigation
`
`server 630, shown in Figure 5 reproduced below. Id. at 7:3–27.
`
`
`
`Figure 5 depicts navigator arrangement 100’s communication with
`
`navigation server 630 via an internet service provider’s access server 622.
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`Id. “Navigation server 630 . . . provides the navigation service in
`
`accordance with the invention.” Id. at 7:33–34. Navigation server 630
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`“receives data from different sources and maintains numerous databases
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`therein including a map database, a weather database, a traffic database, a
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`4
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`IPR2017-01531
`Patent 7,650,234 B2
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`road-condition database, a subscriber database, a non-subscriber database,
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`etc.” Id. at 7:35–39. Navigation server 630 responds to the request from
`
`processor 103 in navigation arrangement 100 by sending navigation
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`arrangement 100 a map and a list of personal favorite facilities and events,
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`which navigation arrangement 100 stores in a record 400. Id. at 8:26–55.
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`The ’234 patent further describes a “NAVIGATE option 657 for
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`navigation by arrangement 100.” Id. at 9:56–57. The NAVIGATE option
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`provides the user with an interface to enter an origination and destination
`
`address, with the user’s current location being the default origination. Id. at
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`10:5–10. Processor 103 determines whether the navigation coverage based
`
`on the map stored in record 400 includes the origination and destination
`
`addresses, and whether the stored map and related information are current.
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`Id. at 10:27–34. If the navigation coverage includes the addresses and the
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`map and information are current, processor 103 analyzes the map and
`
`information to select the fastest route from the origination to the destination.
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`Id. at 10:35–52. Otherwise, processor 103 requests an updated map and
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`related information from navigation server 630. Id. at 10:55–62. Navigation
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`server 630 responds by preparing a new map and related information
`
`covering “at least the origination address to the destination address.” Id. at
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`10:66–11:2. Navigation server 630 sends the new map and related
`
`information to navigation arrangement 100, which stores the new map and
`
`information in record 400. Id. at 11:8–11.
`
`B.
`
`Challenged Claims
`
`Claims 1 9, 17, and 24 are independent. Claim 1 and 17 are
`
`reproduced below with bracketed material and formatting added.
`
`5
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`
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`IPR2017-01531
`Patent 7,650,234 B2
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`
`A method for navigation using a navigation device
`1.
`which includes a location-sensing element therein, the
`method comprising:
`
`[1a.] forming a database storing traffic information for
`extraction thereof with respect to areas;
`
`the
`location of
`[1b.] receiving data concerning a
`navigation device which is determined using the location-
`sensing element;
`
`[1c.] searching the database for traffic information
`specific to a coverage area including the location of the
`navigation device;
`
`[1d.] receiving a request for planning a route from an
`origination to a destination;
`
`[1e.] determining that the coverage area is different from
`one or more areas in navigation coverage defined at least
`by the origination and the destination;
`
`selected
`for
`the database
`[1f.] searching
`information specific to the one or more areas; and
`
`traffic
`
`[1g.] planning a route to the destination, taking into
`consideration at least traffic conditions derived from the
`selected traffic information.
`
`Id. at 13:57–14:10.
`
`17. A navigation system for a user traveling in a
`vehicle, comprising:
`
`[17a.] a database formed to store traffic information for
`extraction thereof with respect to areas;
`
`[17b.] a processing unit for searching the database for
`traffic information specific to a coverage area including
`the location of the vehicle; and
`
`[17c.] an interface for receiving a request for planning a
`route from an origination to a destination,
`
`[17d.] wherein when it is determined that the coverage
`area is different from one or more areas in navigation
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`6
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`IPR2017-01531
`Patent 7,650,234 B2
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`coverage defined at least by the origination and the
`destination,
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`[17e.] the processing unit searches the database for
`selected traffic information specific to the one or more
`areas, and
`
`[17f.] wherein a route to the destination is planned, taking
`into consideration at least traffic conditions derived from
`the selected traffic information.
`
`Id. at 14:64–15:13.
`
`Claim 9 recites limitations commensurate with those of claim 1,
`
`except that claim 9 addresses weather information and conditions instead of
`
`traffic information and conditions. Compare id. at 13:57–14:10, with id. at
`
`14:27–47. Similarly, claim 24 recites limitations commensurate with those
`
`of claim 17, except that claim 24 addresses weather information instead of
`
`traffic information. Compare id. at 14:64–15:13, with id. at 15:27–16:15.
`
`C.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references (Pet. 4):
`
`1. Xu et al., U.S. Patent No. 6,401,027 (“Xu”) (Ex. 1004);
`
`2. Trovato et al., U.S. Patent No. 5,835,881 (“Trovato”) (Ex. 1005);
`and
`
`3. Golding, U.S. Patent No. 5,933,100 (“Golding”) (Ex. 1006).
`
`Petitioner further relies on two declarations of William R. Michalson,
`
`Ph.D. (Ex. 1008) (“Michalson First Declaration”) and (Ex. 1012)
`
`(“Michalson Second Declaration”).
`
`D.
`
`Proposed Grounds of Unpatentability
`
`Petitioner advances the following grounds of unpatentability (Pet. 4):
`
`1. Claims 1–7, 9–15, 17–21, 23–28, and 30 as anticipated under
`
`35 U.S.C. § 102(e) by Xu;
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`IPR2017-01531
`Patent 7,650,234 B2
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`2. Claims 8, 16, 22, and 29 as rendered obvious under 35 U.S.C.
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`§ 103(a) by Xu and Trovato;
`
`3. Claims 1–7, 9–15, 17–21, 23–28, and 30 as rendered obvious
`
`under 35 U.S.C. § 103(a) by Xu and Golding; and
`
`4. Claims 8, 16, 22, and 29 as rendered obvious under 35 U.S.C.
`
`§ 103(a) by Xu, Golding, and Trovato.
`
`E.
`
`Related Proceedings
`
`The ’234 patent was the subject of a petition for inter partes review
`
`filed by Google Inc. on August 17, 2015. Google Inc. v. Silver State
`
`Intellectual Technologies, Inc., IPR2015–01738, Paper 1. Further, Petitioner
`
`states the ’234 patent was the subject of multiple lawsuits filed in the United
`
`States District Court for the District of Nevada, each of which has been
`
`terminated. Pet. 2.
`
`III. ANALYSIS
`
`A. Discretion to Institute Inter Partes Review under 35 U.S.C.
`§ 314(a).
`
`Patent Owner urges us to deny the Petition under § 314(a) because the
`
`requested inter partes would result in a “colossal waste” of the Board’s and
`
`Patent Owner’s resources. Prelim. Resp. 10. According to Patent Owner,
`
`“[t]here simply is no dispute in connection with the ’234 patent” because
`
`“Patent Owner has taken no action to enforce” the ’234 patent against
`
`Petitioner. Id. at 8. Patent Owner further contends that, like the ’234 patent,
`
`four additional patents were each the subject of a petition for inter partes
`
`review by Google, Inc. Id. at 7–8. All five matters were resolved by Google
`
`and Patent Owner before a preliminary response was filed or a decision on
`
`institution was entered by the Board in any of the matters. See id.; see also
`
`IPR2015-01737 (Paper 9); IPR2015-01738 (Paper 9); IPR 2015-01746
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`8
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`IPR2017-01531
`Patent 7,650,234 B2
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`(Paper 9); IPR2015-01747 (Paper 9); IPR2015-01748 (Paper 9). Thus,
`
`Petitioner contends:
`
`If the Board countenances Unified’s Petition in this
`instance and in the prior Petition it seems likely that
`Unified will be emboldened to file recycled petitions
`copying the rest of the Google IPRs, for a total of FIVE
`pointless IPRs that recycle Petitions from long-resolved
`proceedings, leading to a colossal waste of the Board’s and
`Patent Owner’s resources.
`
`Prelim. Resp. 9–10.
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). We exercise our discretion with an eye
`
`toward ensuring fairness for both petitioner and patent owner, and,
`
`particularly, in proceedings where a petitioner has previously challenged the
`
`same patent claims. NVIDIA Corp. v. Samsung Elecs. Co., Ltd., Case
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`IPR2016-00134, Paper 9, 7−8 (PTAB May 4, 2016). When determining
`
`whether to invoke our discretion to deny institution under 35 U.S.C. § 314(a)
`
`and 37 C.F.R. § 42.108(a), we consider a number of factors, including a non-
`
`exclusive list of seven factors enumerated in the Board’s precedential
`
`decision in General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`
`Case IPR2016-01357 (PTAB Sept. 6, 2017), Paper 19 (precedential)
`
`(reaffirming application of the seven factors previously set forth in NVIDIA).
`
`The seven General Plastic factors are:
`
`1.
`
`2.
`
`3.
`
`whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`
`whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`
`whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the
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`Patent 7,650,234 B2
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`4.
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`5.
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`6.
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`7.
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`first petition or received the Board’s decision on whether to
`institute review in the first petition;
`
`the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`
`whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`
`the finite resources of the Board; and
`
`the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`IPR2016-01357 Paper 19, 16 (citations omitted). We recognize that some of
`
`the General Plastic factors are phrased to address situations in which the
`
`same party files multiple petitions challenging the same patent. Our
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`discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), however, is
`
`not limited to situations where the same party files multiple petitions. We
`
`find that the General Plastic factors provide a useful framework for
`
`analyzing the facts and circumstances present in this case, in which a
`
`different petitioner filed a petition challenging a patent that had been
`
`challenged already in a previous petition.
`
`Patent Owner fails to address the General Plastic factors. See
`
`generally Prelim. Resp. Nevertheless, we consider the General Plastic
`
`factors in this matter and conclude that the circumstances present here do not
`
`warrant discretionary denial of institution.
`
`Factor 1 weighs in favor of considering the Petition on its merits
`
`because Petitioner has not previously sought inter partes review of the
`
`Challenged Claims. Indeed, the instant Petitioner is not Google, Inc., the
`
`petitioner in IPR2015-01738 that earlier challenged the ’234 patent. Pet. 6.
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`10
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`IPR2017-01531
`Patent 7,650,234 B2
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`Factor 2 is directed to situations in which the same petitioner files two
`
`separate petitions at different times. Thus, in light of factor 1, factor 2 is
`
`neutral here.
`
`Factor 3 addresses situations in which a petitioner delays filing a
`
`subsequent petition so that it can tailor its arguments to address issues
`
`identified by the patent owner or the Board during a prior proceeding.
`
`Applied to the facts of the matter before us, Factor 3 weighs in favor of
`
`considering the Petition on its merits. No patent owner preliminary response
`
`or other substantive paper was filed or issued in IPR2015-01738 before that
`
`matter was resolved, so Petitioner could not have relied on such a
`
`substantive paper to adjust positions in the current Petition.
`
`Factor 4 considers the duration of delay between the time a petitioner
`
`learns of the asserted prior art and the filing of the latter petition. The
`
`parties do not address in the record before us when Petitioner allegedly knew
`
`or should have known of the prior art asserted in this Petition. See generally
`
`Prelim. Resp. 6–18; see also generally Pet. Accordingly, based on the
`
`record before us, factor 4 is neutral.
`
`Factor 5 weighs in favor of invoking our discretion to deny institution
`
`because Petitioner provides no explanation for why it waited until June 7,
`
`2017 to file the Petition. See generally Pet.
`
`Factors 6 and 7 addresses the finite resources of and incremental
`
`burden to the Board in conducting the requested inter partes review.
`
`Applied to the facts of this case, these factors weigh in favor of reaching the
`
`merits of the Petition. The Board has not expended previously resources on
`
`a trial of the ’234 patent, and the Board did not expend resources issuing a
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`IPR2017-01531
`Patent 7,650,234 B2
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`decision on the merits of the earlier filed petition in IPR2015-01738. Thus,
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`there is no showing here of a waste of the Board’s resources.
`
`Because our analysis is fact-driven, no single General Plastic factor is
`
`determinative of whether we exercise our discretion and deny institution
`
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). Nonetheless, four of
`
`the factors considered in this case weigh in favor of addressing the merits of
`
`the Petition, two are neutral, and one favors exercising our discretion to deny
`
`institution. Thus, on this record, our analysis applying the General Plastic
`
`factors counsels reaching the merits of the Petition.
`
`As to Patent Owner’s remaining argument that “[t]here simply is no
`
`dispute in connection with the ’234 patent,” we determine this argument is
`
`unpersuasive because it seeks to create a requirement that inter partes
`
`review must be predicated upon an underlying enforcement action. Prelim.
`
`Resp. 8. No such requirement exists.
`
`In light of the foregoing, we decline exercising our discretion under
`
`§ 314(a) not to institute review and instead proceed to review the Petition on
`
`its merits.
`
`B.
`
`Claim Construction
`
`Petitioner proposes constructions for the following claim terms recited
`
`in each of independent claims 1, 9, 17, and 24: “searching the database,”
`
`“navigation coverage,” and “coverage area.” Pet. 10–13. Pursuant to
`
`37 C.F.R. § 42.104(b)(3), Petitioner identifies a number of claim terms that
`
`it contends constitute means-plus-function limitations invoking 35 U.S.C.
`
`§ 112 and identifies structures corresponding to the recited functions. Id. at
`
`13–15. Patent Owner responds to Petitioner’s proposed construction of
`
`“searching the database,” but does not respond to Petitioner’s other proposed
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`constructions and identification of means-plus-function limitations. Prelim.
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`Resp. 17.
`
`We construe claim terms to the extent necessary for our analysis on
`
`whether to institute a trial. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy). Consequently, we construe below the term “searching the
`
`database.” We further determine that construction of other terms, including
`
`the terms “navigation coverage,” “coverage area,” and the purported means-
`
`plus-function limitations, is not necessary for our analysis to resolve the
`
`current proceeding. Vivid Techs., 200 F.3d at 803.
`
`1.
`
`Principles of Law
`
`We interpret the claims of an unexpired patent that will not expire
`
`before issuance of a final written decision using the broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`
`the broadest reasonable construction standard, claim terms generally are
`
`given their ordinary and 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., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims,
`
`however, “should always be read in light of the specification and teachings
`
`in the underlying patent,” and “[e]ven under the broadest reasonable
`
`interpretation, the Board’s construction ‘cannot be divorced from the
`
`specification and the record evidence.’” Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted). Further, any
`
`special definition for a claim term must be set forth in the specification with
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`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
`
`are not to be read from the specification into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`2.
`
`“searching the database”/“searches the database”
`
`Claims 1, 9, 17, and 24 each recite the term “searching the database.”
`
`Ex. 1001, 13:65, 14:6, 14:35, 14:44, 15:1, 16:3. Claims 17 and 24 further
`
`recite the related term “searches the database.” Id. at 15:9, 16:11.
`
`Petitioner argues the term “searching the database” should be
`
`construed to mean “analyzing data from the database.” Pet. 10. Petitioner
`
`concedes that the Specification does not include an explicit definition of the
`
`term “searching the database.” Id. Petitioner contends, however, that the
`
`Specification is consistent with its construction because it provides two
`
`examples of analyzing data from a database. Id. (citing Ex. 1001, 8:26–55,
`
`10:27–11:14).
`
`Patent Owner counters that we should give the term “searching the
`
`database” its normal and ordinary meaning. Prelim. Resp. 15–16.
`
`According to Patent Owner, a person of ordinary skill in the art “would
`
`surely understand that [searching the database] entails looking for certain
`
`information in a computer database.” Id. at 16. Patent Owner directs our
`
`attention to a passage in the Specification describing that servers 622 and
`
`630 receive a request from a processor 103 and, in response, obtain
`
`information from numerous databases. Id. at 16 (citing Ex. 1001, 7:19–
`
`8:55). Patent Owner asserts: “It goes without saying that in order to obtain
`
`such information, the servers must first look for and locate it, which of
`
`necessity involves ‘searching the database’ for that information.” Id.
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`We agree with Patent Owner that term “searching the database” is a
`
`common term in the art. As Petitioner concedes, the Specification does not
`
`contain a special definition of that term requiring deviation from the
`
`ordinary and customary meaning. Pet. 10; accord In re Paulsen, 30 F.3d at
`
`1480. Petitioner does not persuasively explain why the examples it cites
`
`from the Specification would warrant deviating from that ordinary and
`
`customary meaning. For instance, Petitioner’s first cited example describes
`
`server 630 receiving a request from navigator arrangement 100 and, in
`
`response to the request, returning information including data from the
`
`database. Ex. 1001, 8:26–55. We agree with Patent Owner that one of
`
`ordinary skill in the art would understand “that in order to obtain such
`
`information, the servers must first look for and locate it, which of necessity
`
`involves ‘searching the database’ for that information.” Prelim. Resp. 16.
`
`Accordingly, for purposes of this Decision, we decline to adopt Petitioner’s
`
`proposed construction and instead accord the term “searching the database”
`
`and the related term “searches the database” their ordinary and customary
`
`meanings, which we determine is searching data within the database.
`
`C.
`Asserted Anticipation of Claims 1–7, 9–15, 17–21, 23–28, and
`30 by Xu
`
`1.
`
`Overview of Xu
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`Xu describes a remote traffic data collection and intelligent vehicle
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`route planning system, which is shown in Figure 1 reproduced below.
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`Ex. 1004, 1:56–58, 6:25–28.
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`As shown in Figure 1, each vehicle 20 is equipped with an in-vehicle
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`device 21 that receives information from satellites 42 of GPS 40. Id. at
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`6:31–34. Each in-vehicle device 21 uses the GPS information it receives to
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`determine its static road position and broadcasts its position to
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`communication station 50, which relays that information to traffic service
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`center 60. Id. at 6:34–45. In-vehicle device 21 is depicted in greater detail
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`in Figure 2, which is reproduced below.
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`In-vehicle device 21, shown in Figure 2, includes vehicle support
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`subsystem 30 comprising road network locator 32 and road explorer 34. Id.
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`at 7:21–23. Road network locator 32 within in-vehicle device 21 computes
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`static position information using data from GPS receiver 22 and data
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`broadcast from traffic service center 60 via the communication station 50,
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`including a digitized road map and traffic forecasts. Id. at 7:32–37, 7:45–46.
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`Computer system 26 within in-vehicle device 21 stores the data broadcast
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`from traffic service center 60. Id. at 7:46–48. Road network explorer 34
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`uses the stored data along with the driver’s instructions to provide intelligent
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`route guidance, such as an optimum travel route based on real-time traffic
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`conditions. Id. at 7:48–52. Traffic service center 60 is shown in greater
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`detail in Figure 3, which is reproduced below.
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`Figure 3 illustrates the configuration of traffic service center 60,
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`including database 66, wherein vehicle position data received from each in-
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`vehicle device 21 is stored. Id. at 8:18–19, 8:30–33. Traffic forecaster 68
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`retrieves the stored vehicle locations from database 66 in order to compute
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`real-time traffic forecasts. Id. at 8:26–31, 12:10–13. These forecasts are
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`then broadcast at prescribed time intervals from traffic center 60 to all in-
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`vehicle devices 21 via communication station 50. Id. at 13:22–25.
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`2.
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`Claim 1
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`Petitioner contends Xu anticipates claim 1 by relying, in relevant part,
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`on the following analysis. Petitioner identifies the “collections of data”
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`within database 66 of traffic service center 60 as disclosing “a database
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`storing traffic information,” as recited in limitation 1a. Pet. 19–21.
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`Petitioner and Dr. Michalson further identify in-vehicle device 21’s analysis
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`of particular data blocks parsed from the traffic forecasts broadcast by traffic
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`service center 60 as disclosing “searching the database for traffic
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`information,” as recited in limitation 1c. Id. at 22–23 (citing Ex. 1008 ¶ 41).
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`Patent Owner responds that Xu’s analysis of broadcast information does not
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`meet the limitation 1c recitation of “searching the database for traffic
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`information.” Prelim. Resp. 17–18.
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`We have reviewed the information cited by Petitioner, including the
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`relevant portions of the Michalson First Declaration. We are not persuaded
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`by Petitioner’s contentions for claim 1 because Petitioner’s analysis of Xu is
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`fatally inconsistent with respect to limitations 1a and 1c. Specifically,
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`Petitioner identifies database 66 of traffic service center 60 as the “database
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`storing traffic information” recited in limitation 1a. Pet. 19–21. Petitioner,
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`therefore, must show that Xu describes searching for traffic information data
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`within database 66, not data stored separately within in-vehicle device 21, to
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`meet the limitation of “searching the database for traffic information” recited
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`in limitation 1c. Yet the data analysis cited by Petitioner for limitation 1c is
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`performed on data “stored by the computer system 26” within in-vehicle
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`device 21, not on data within database 66 of traffic service center 60.
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`Ex. 1004, 7:47–48, 8:28–36. Petitioner thus irreconcilably relies on two
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`different elements in Xu as meeting the database recited in limitations 1a
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`and 1c. Compare Pet. 19–21, with id. at 22–23. Accordingly, Petitioner’s
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`proffered evidence is insufficient to establish a reasonable likelihood of
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`prevailing on its anticipation challenge to claim 1.
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`3.
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`Claims 2–7, 9–15, 17–21, 23–28, and 30
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`Petitioner’s analysis of claims 2–7, 9–15, 17–21, 23–28, and 30 refers
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`back to its analysis of claim 1. Pet. 26–44. For the same reasons discussed
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`above in the context of claim 1, we determine Petitioner has not
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`demonstrated a reasonable likelihood of prevailing on its anticipation
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`challenge to claims 2–7, 9–15, 17–21, 23–28, and 30.
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`D.
`Asserted Obviousness of Claims 8, 16, 22, and 29 over Xu and
`Trovato
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`Petitioner’s analysis of claims 8, 16, 22, and 29 refers back to its
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`analysis of claim 1. Pet. 44–48. Petitioner does not attempt to repair the
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`deficiencies of its claim 1 analysis using teachings or suggestions from
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`Trovato. See id. Accordingly, for the same reasons discussed above in the
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`context of claim 1, we determine Petitioner has not demonstrated a
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`reasonable likelihood of prevailing on this obviousness challenge to claims
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`8, 16, 22, and 29. See supra Section III.C.2.
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`E.
`Asserted Obviousness of Claims 1–7, 9–15, 17–21, 23–28, and
`30 over Xu and Golding
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`1.
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`Overview of Golding
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`Golding discloses a system for personalized traffic reports and route
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`planning using dynamically updated travel information. Ex. 1006, 3:16–19.
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`The system of Golding includes vehicle navigation system 1 and central
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`database 2, which are depicted in Figure 1 of Golding reproduced below. Id.
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`at 4:31–33.
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`Figure 1 shows that navigation system 1 includes route adviser 13,
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`which determines the best route from a starting point to a destination using
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`data stored in a local database of travel time information. Id. at 4:49–53. If
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`the data needed to determine the best route is not available in route
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`adviser 13’s local database, route adviser 13 can contact central database 2
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`to obtain travel time data 20. Id. at 4:56–58, 6:32–34.
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`2.
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`Claim 1–7, 9–15, 17–21, 23–28, and 30
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`As an alternative to its anticipation challenge discussed above in
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`Section III.C, Petitioner asserts that the combination of Xu and Golding
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`renders obvious claims 1–7, 9–15, 17–21, 23–28, and 30. Petitioner offers
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`this alternative ground in the event that Patent Owner asserts “the ‘searching
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`the database’ limitations must be performed at the database (whereas Xu
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`performs such operations at the client).” Pet. 48–53. In support of this
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`ground, Petitioner and Dr. Michalson analyze only limitations 1c, 1e, and 1f.
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`Id. (citing Ex. 1008 ¶¶ 70–73). Specifically, Petitioner contends that “[i]t
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`would have been obvious to one of ordinary skill in the art to modify Xu to
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`analyze data from the database for [traffic information or weather
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`information] specific to a coverage area including the location of the
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`navigation device (at the database).” Id. at 51.
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`Patent Owner summarily responds that the devices of Xu and Golding
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`“operate substantially differently from one another and are not properly
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`combinable, and even if combined they would not teach or suggest all the
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`recited limitations of the ’234 claims.” Prelim. Resp. 18.
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`We have reviewed the information cited by Petitioner, including the
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`relevant portions of the Michalson First Declaration. We are not persuaded
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`by Petitioner’s contentions. As discussed above, Petitioner’s analysis of Xu
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`relies on two different elements in Xu as meeting the database recited in
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`limitations 1a and 1c. See supra Section III.C.2. Specifically, Petitioner
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`identifies database 66 of traffic service center 60 as meeting the “database
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`storing traffic information” recited in limitation 1a. Pet. 19–22. In order to
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`meet the “searching the database for traffic information” recited in limitation
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`1c, however, Petitioner relies on Xu’s data analysis performed on data
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`“stored by the computer system 26” within in-vehicle device 21, not on data
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`within database 66. Id. at 22–23; Ex. 1004, 7:47–48, 8:28–36. Petitioner
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`does not explain persuasively why or how combining Golding’s teaching of
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`requesting data from central database 2 with the cited disclosure of Xu
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`would cure this inconsistency and meet the limitations of claim 1. See
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`Pet. 48–53; see also Ex. 1008 ¶¶ 70–73. For example, Petitioner indicates
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`Golding’s client side navigation system 1 includes a route advisor 13.
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`Pet. 50. Petitioner argues “Golding starts its route plannin
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