Trials@uspto.gov Paper No. 15
`571.272.7822
`
`
` Date: February 2, 2021
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TETRA TECH CANADA INC.,
`Petitioner,
`
`v.
`
`GEORGETOWN RAIL EQUIPMENT COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01409
`Patent 8,209,145 B2
`____________
`
`
`
`Before HUBERT C. LORIN, JENNIFER S. BISK, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
` 35 U.S.C. § 318(a)
`
`
`
`
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`IPR2019-01409
`Patent 8,209,145 B2
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`I. INTRODUCTION
`This is a Final Written Decision in an inter partes review challenging
`
`the patentability of claims 1–12 of U.S. Patent No. 8,209,145 B2 (Ex. 1001,
`“the ’145 patent”). We have jurisdiction under 35 U.S.C. § 6.
`
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e). Having reviewed the
`arguments of the parties and the supporting evidence, we find that Petitioner
`has demonstrated by a preponderance of the evidence that claims 1–12 are
`unpatentable.
`A. Background
`Tetra Tech Canada Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–12 of the ’145 patent. Paper 1 (“Pet.”).
`Georgetown Rail Equipment Company (“Patent Owner”) did not file a
`Preliminary Response to the Petition.
`
`On February 5, 2020, we instituted an inter partes review, pursuant to
`35 U.S.C. § 314(a). Specifically, we instituted an inter partes review of
`claims 1–12 on all asserted grounds of unpatentability. Paper 6 (“DI”).
`
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 8, “PO Resp.”); Petitioner filed a Reply (Paper 9, “Pet. Reply”); and
`Patent Owner filed a Sur-reply (Paper 11, “PO Sur-reply”).
`On November 4, 2020, the parties presented arguments at oral
`hearing, the transcript of which is of record. Paper 14 (“Tr.”).
`B. Related Proceedings
`Petitioner indicates that it “is unaware of any related matters involving
`the ’145 patent.” Pet. 2. Petitioner identifies various proceedings involving
`patents related to the ’145 patent, including three inter partes review
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`proceedings (IPR2019-00619, IPR2019-00620, and IPR2019-00662)1 and
`co-pending litigation captioned Georgetown Rail Equipment Company v.
`Tetra Tech Canada Inc. (E.D. Tex.) (Tyler) (6:18-cv-377). Id. at 3. After
`filing the petition in this case, Petitioner filed a petition for inter partes
`review of related Patent No. 8,081,320 B2. See IPR2019-01581, Paper 1.2
`Petitioner also notifies us of proceedings in Canada involving Canadian
`national stage entries of patents related to the ’145 patent. Pet. 4.
`C. The ’145 patent (Ex. 1001)
`1. Disclosure
`The ’145 patent, titled “Methods for GPS to Milepost Mapping,”
`
`“relates generally to methods for determining the location of various features
`along a railroad track, and, more particularly to [a] method for increasing the
`accuracy of GPS to milepost mapping.” Ex. 1001, code (54), 1:32–35.
`
`The ’145 patent describes an imaging system that captures features of
`a rail system and increases the accuracy of interpolation of mileposts in the
`rail system. Id. at 1:57–62. “Based upon this image data and data provided
`in the track chart, reference points are selected along the track, and their
`location is verified using GPS data” and “the milepost location of various
`points between the reference points are determined using mathematical
`interpolation.” Id. at 1:62–67.
`
`Figures 1 and 2 of the ’145 patent, reproduced below, illustrate
`“inspection system 30.” Id. at 2:19–23.
`
`
`1 Trial was instituted in each of these proceedings. See IPR2019-00619,
`Paper 12; IPR2019-00620, Paper 8; IPR2019-00662, Paper 13.
`2 Trial was instituted. See IPR2019-01581. Paper 6.
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`Figures 1 and 2 (above) show a system for inspecting railroad track. Id.
`at 3:15–17.
`As shown in both figures, “[t]he track bed includes crossties 10,
`
`rails 12, tie plates 14, spikes 16, and ballast 18.” Id. at 3:36–37.
`“[I]nspection system 30 includes a light generator such as a laser 40” (id.
`at 3:22–23) which “projects a beam 42 of laser light at the track bed” (id.
`at 3:37–38).
`As shown in Figure 2, “beam 42 produces a projected line L.” Id.
`at 3:38–39. Projected line L “follows the contours of the surfaces and
`components of the track bed” (id. at 3:39–40) and, further, projected line L
`“is substantially straight and extends substantially across the track bed” (id.
`at 4:11–12). “The light receiver, camera 50, captures an image of the line L
`of laser light 42 projected on the track bed. The camera 50 sends the
`captured image to the processing device 60 for processing and analysis.” Id.
`at 3:41–44.
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`Figure 3, reproduced below, illustrates “[a]n example image or frame
`
`showing the projected line L of the track bed.” Id. at 5:30–31.
`
`
`Fig. 3 illustrates an image or frame projecting across line L of Fig. 1.
`The description associated with Figure 3 (above) is as follows:
`The image data or frame includes a plurality of pixels given X-
`Y coordinates and shows a contour of the track bed captured by
`the cameras 50. Due to filtering and other image processing
`techniques known in the art, the image includes two pixel values,
`where the dark pixels represent the contour of the track bed.
`Every pixel of a given image data is given the same Z-coordinate,
`which represents the particular position along the length of the
`track at which the image data was captured. In this manner, a
`plurality of captured images produce a three-dimensional scan of
`the track bed in which each image of the scan has X-Y
`coordinates showing the contour of the track bed and has a Z-
`coordinate representing the particular position of the contour
`along the length of rail.
`Id. at 5:31–44.
`The ’145 patent also describes methods of identifying the location of
`track features. Id. at 13:48–50. As shown in Figure 1, inspection system 30
`includes Global Position System (GPS) receiver 64. Id. at 5:66–67. In one
`embodiment of the ’145 patent, “the system records a unique global position
`satellite (GPS) location for each rail feature it records.” Id. at 13:57–59.
`“Milepost identification is achieved via a lookup table, provided by each
`customer that provides a milepost location marker and its corresponding
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`GPS location” (id. at 13:59–62) and locations “of rail features that lie
`between these milepost mappings are derived through mathematical
`interpolation using a method of encoder odometer marks that calculate the
`distance traveled” (id. at 13:62–65).
`Figure 19 of the ’145 patent, reproduced below, depicts a flowchart of
`a method of determining the location of features between references points.
`Id. at 14:20–15:25.
`
`
`Figure 19 depicts a flowchart of a method of determining the location
`of features between references points.
`As shown in Figure 19, “[a]t step 100, a point of reference is
`determined.” Id. at 14:21–22. By way of example, the ’145 patent explains
`that “a customer track chart . . . may be utilized to determine which
`landmarks along a railroad track can be used as points of reference.” Id.
`at 14:23–25. Next, “at step 102, the GPS location of the selected point of
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`reference is verified.” Id. at 14:27–28. The ’145 patent explains that
`verification
`is accomplished by comparing camera imaging data of the
`reference point, such as described herein, to satellite GPS images
`of GPS signatures of the same reference point. Since each
`camera image has a unique GPS location signature assigned to it,
`the camera's image, along with the image’s GPS location
`signature, is then compared to a satellite image of the same GPS
`location to verify the location of the selected point of reference.
`Id. at 14:29–36. Then, “at step 104, it is determined whether the GPS
`signatures and camera images are the same.” Id. at 14:37–38. The ’145
`patent explains that:
`If the Satellite image shows the railroad feature that the camera
`image also shows at the exact same GPS location, then the two
`are the same point. If the two points are not the same, another
`point of reference is selected and the process begins again at step
`100. However, if the two points are the same, the reference point
`location is marked and recorded at step 106. Here, the exact
`feature. Such as a crosstie, for example, is marked in the
`customer deliverable report with the milepost as described in the
`customer provided track chart. Thereafter, as many reference
`points as desired may be determined and marked.
`Id. at 14:38–48. Next, mathematical interpretation is performed at step 108,
`which is described as follows:
`
`In order to perform the interpolation of step 108, using the
`customer deliverable report and the customer Track Charts, the
`distance (in feet) traveled between two reference points is first
`determined at step 1. Each crosstie has a distance measure as
`determined from the vehicle encoder from the beginning of the
`scan to each crosstie. Next, at step 2, determine the distance
`between the two reference points (in miles) as stated by the
`customer track chart. Next, at step 3, divide step 1 by step 2 to
`determine the ratio of feet per mile. Thereafter, at step 4, note
`the milepost of the two reference points in the report file as
`determined from the customer’s Track Chart. At step 5, the
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`following interpolation formula is applied to the location of each
`individual crosstie between the two reference points: (Previous
`crosstie MilePost)+(distance between current & previous
`crosstie÷(ratio of feet per mile as determined from step 3×12 in
`per foot)).
`
`Example: if 1st reference point is at MilePost 100.25 and
`the 2nd reference point is at Milepost 100.78, and the distance
`between them as determined by the vehicle encoder is 2809 feet,
`then the ratio for step 3 is 2809 ft/0.53 mile=5300 ft/mile.
`
`A further Example: In step 5 above, the formula would
`look like this if the distance between current & previous crosstie
`happened to be 22.48 inches as determined by vehicle encoder:
`
`100.25 ÷ (22.48 inches(5300 ft/mile × 12 inchs/ft))
`Thereafter, at step 110 (of FIG. 19), the interpolation formula is
`applied to each successive crosstie to determine it’s [sic] unique
`milepost value.
`Id. at 14:63–15:25.
`2. Claims
`The ’145 patent has 12 claims, all of which are challenged. Claims 1
`and 7 are independent claims. Claims 2–6 depend from claim 1 and
`claims 8–12 depend from claim 7.
`Independent claim 1, reproduced below, is illustrative.
`1. A method for determining a location of features along a rail
`road track, the method comprising the steps of:
`
` (a) determining at least two reference points, the reference
`points being features of the rail road track;
`
` (b) verifying a GPS location of the reference points, the
`verification being accomplished by comparing imaging data of
`the reference points to satellite images of GPS signatures of the
`reference points;
`
` (c) marking the location of the reference points;
`
` (d) performing mathematical interpolation for at least one
`feature between the reference points; and
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` (e) determining the location of the feature between the
`
`reference points.
`Ex. 1001, 16:53–65.
`
`Independent claim 7, reproduced below, is broader than claim 1 in
`that it does not specify the use of GPS and omits the third step recited in
`claim 1 (i.e., “marking the location of the reference points”).
`7. A method for determining a location of features along a rail
`road track, the method comprising the steps of:
`(a) determining two reference points, the reference points being
`features of the rail road track;
`(b) verifying a location of the reference points;
`(c) performing mathematical interpolation for at least one feature
`between the reference points; and
`(d) determining the location of the feature between the reference
`points.
`Id. at 17:18–18:2.
`D. Asserted References
`Petitioner relies on the following references:
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`Reference
`U.S. Patent Application Publication No.
`2006/0017911 A1 to Villar et al.
`U.S. Patent No. 7,755,660 to Nejikovsky et al. 1006
`International Patent Pub. No. WO 01/66401 to
`Schnieder
`U.S. Patent No. 6,873,998 to Dorum et al.
`R. Gordon Kennedy, “Problems of
`Cartographic Design in Geographic
`Information Systems for Transportation,”
`Cartographic Perspectives (July 20, 1999)
`
`Ex. No.
`
`1005
`
`1007
`
`1008
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`1009
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`IPR2019-01409
`Patent 8,209,145 B2
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`Name
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`Villar
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`Nejikovsky
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`Schnieder
`
`Dorum
`
`Kennedy
`
`
`Petitioner also relies on the Declaration of Nikos Papanikolopoulos,
`Ph.D. (Ex. 1004) as support for the various contentions. Patent Owner has
`not submitted any declarations.
`
`E. Grounds Asserted
`Petitioner contends that claims 1–12 of the ’145 patent are
`unpatentable under the following grounds:
`
`Claim(s)
`Challenged
`1–12
`
`7
`
`8, 9
`
`35 U.S.C.
`
`Reference(s)/Basis
`
`§ 1033
`
`Villar, Dorum, Kennedy
`
`§ 103
`
`§ 103
`
`Schnieder, Dorum
`
`Schnieder, Dorum, Kennedy
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’145 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
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`Patent 8,209,145 B2
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`Claim(s)
`Challenged
`1, 3–5
`
`2, 6
`
`10
`
`11, 12
`
`Pet. 7.
`
`35 U.S.C.
`
`Reference(s)/Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Schnieder, Dorum, Nejikovsky
`
`Schnieder, Dorum, Nejikovsky, Kennedy
`
`Schnieder, Dorum, Kennedy, Nejikovsky
`
`Schnieder, Dorum, Nejikovsky
`
`II. ANALYSIS
`
`A. Principles of Law
`1. Burden
`“[T]he petitioner has the burden from the onset to show with
`
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a) (3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden of persuasion never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (discussing the burden of proof in inter partes review).
`2. Obviousness
`A 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 at the time the
`invention was made to a person having ordinary skill in the art to which that
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
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`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, if
`present. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`In analyzing the obviousness of a combination of prior art elements, it
`can be important to identify a reason that would have prompted one of skill
`in the art “to combine . . . known elements in the fashion claimed by the
`patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. Id. Rather, “any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent can provide a
`reason for combining the elements in the manner claimed.” Id. at 420.
`Accordingly, a party that petitions the Board for a determination of
`unpatentability based on obviousness must show that “a skilled artisan
`would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal
`quotation marks and citations omitted). Under the proper inquiry,
`“obviousness cannot be avoided simply by a showing of some degree of
`unpredictability in the art so long as there was a reasonable probability of
`success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
`
`We analyze the instituted grounds of unpatentability in accordance
`with these principles.
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`
`Petitioner contends, inter alia, that
`a person of ordinary skill in the art for the ’145 patent would have
`a bachelor’s degree
`in electrical engineering, computer
`engineering, mechanical engineering, computer science, physics,
`or a related field, and at least four years of experience (or the
`academic equivalent) in the field of computer or machine vision,
`including image-based localization and mapping.
`Pet. 12 (citing Ex. 1004 ¶ 30).
`
`Patent Owner states: “For purposes of this response, Patent Owner
`does not contest Petitioner’s asserted level of ordinary skill in the art. See
`Petition at 12.” PO Resp. 1.
`
`Based on the positions of Petitioner and Patent Owner, we find
`agreement as to the level of skill of such ordinarily skilled artisans and,
`consistent therewith, we are persuaded that one of ordinary skill in the art at
`the time of the invention would have had a bachelor’s degree in electrical
`engineering, computer engineering, mechanical engineering, computer
`science, physics, or a related field, and at least four years of experience (or
`the academic equivalent) in the field of computer or machine vision,
`including image-based localization and mapping.
`
`The level of ordinary skill in the art is also reflected by the references
`themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art
`does not give rise to reversible error ‘where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.’”).
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`C. Claim Construction
`
`For petitions filed on or after November 13, 2018 (as in this case),
`“[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. § 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 42 C.F.R. § 100(b) (2019).
`
`Petitioner does not offer any constructions for any terms of the
`challenged claims, and indicates that “[t]he terms of claims 1–12 in the ’145
`patent should be given their plain and ordinary meaning.” Pet. 13.
`Patent Owner states: “For purposes of this response, Patent Owner
`agrees with the Petitioner that the ’145 patent terms should be given their
`plain and ordinary meaning. See Petition at 12-13.” PO Resp. 1.
`We determine that it is not necessary to construe any other claim term
`expressly to resolve the parties’ disputes apart from those discussed in the
`body of the decision below, namely “determining a distance between two
`reference point in feet and miles” and “a ratio of feet per mile using the
`distance” (claim 2); “customer track chart” (claim 6); and “feature” (claim
`7). See sections II.E.2.[a] and [b]; II.E.6.; and, II.F.1(c), respectively; Vivid
`Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are
`in controversy, and only to the extent necessary to resolve the
`controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the
`context of an inter partes review).
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`D. Overview of the Prior Art References
`1. Villar
`Villar (Ex. 1005) describes a system and method for inspecting a
`railroad track. Id. ¶ 2.
`Fig. 1, reproduced below, illustrates inspection system 30 that appears
`to be structurally identical to inspection system 30 shown in Figure 1 of
`the ’145 patent (reproduced supra in section I.C.1.).4
`
`
`Fig. 1 of Villar is a block diagram illustrating a railroad track
`inspection system.
`
`
`4 This is due to the fact that Villar is a parent of the ’145 patent. Villar
`(Christopher M. Villar, II, John Anthony Nagle, and Stephen C. Orrell) and
`the ’145 patent (David Pagliuco, Christopher M. Villar, II, John Anthony
`Nagle, and Stephen C. Orrell) have overlapping named inventors. Although
`Villar and the ’145 patent have similar specifications, the ’145 patent
`specification describes interpolation techniques that are not described in
`Villar.
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`2. Dorum
`Dorum (Ex. 1008) describes a reporting program and system for
`receiving error reports and updating a master copy of a geographic database
`based on an analysis of satellite images. Id. at 2:45–54.
`Fig. 1, reproduced below, illustrates an error reporting system 102.
`Id. at 2:65–66.
`
`
`Fig. 1 of Dorum is a block diagram illustrating an error
`reporting system for updating a geographic database.
`As shown in Figure 1 of Dorum, on-line error reporting program 112
`
`is operated by geographic database developer 100. Id. at 3:21–22. End
`users 104 access on-line reporting program 112 to make reports about
`perceived errors or inaccuracies in the geographic data. Id. at 3:41–46.
`Reports are reviewed by a technician (i.e., a researcher) working for
`geographic database developer 100. Id. at 5:9–11.
`
`Fig. 3, reproduced below, illustrates an example of a display screen
`350 for use by a researcher reviewing an error report. Id. at 6:64–65.
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`Fig. 3 of Dorum is an example of a display screen for use by a
`technician reviewing an error report.
`Shown as a background on the display screen 350 is the satellite
`image 326. The satellite image 326 shows portions of several
`roads. Overlaid on the Satellite image 326 are representations of
`several road segments 354. The representations of road segments
`354 are formed using the data 338 from the master copy of the
`geographic database.
`To assist the researcher, the position of the reported error may be
`located at the center of the display screen 350. The position of
`the reported error may be highlighted or a square, circle, or other
`shape may be generated about the position of the reported error.
`Alternatively, the corresponding latitude and longitude may be
`displayed as the researcher moves a cursor over the image so that
`the researcher can find the position of the reported error.
`Id. at 6:65–7:12.
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`3. Kennedy
`Kennedy (Ex. 1009, 6–22) describes cartographic design in
`geographic information systems for transportation (GIS-T). Id. at 6.
`Kennedy explains that “[t]ransportation organizations need information
`about features and events that occur on the routes comprising the network,”
`and “[p]ositioning features on the links of a network is accomplished by
`reference to linear distance measures like highway mileposts, rather than by
`geographic coordinates.” Id. Kennedy further explains that “[t]he process
`of interpolating positions in a linear reference system is called dynamic
`segmentation in the GIS-T literature.” Id. at 7. Kennedy describes that
`“[j]unctions, bridges, tunnels and so forth are each assigned their own
`milepost value” (Id. at 11) and “[b]y using these reference points as well as
`physically posted milepost signs, any feature of interest can be assigned an
`interpolated or estimated milepost value.” Id. at 11–12.
`a. Prior Art Status of Kennedy
`Kennedy is applied as a prior art reference under Grounds I, III, V,
`
`and VI.
`
`Ex. 1009 consists of several pages from an issue of the journal
`“Cartographic Perspectives”, preceded by a declaration from Rachel J.
`Watters. Ex. 1009, 3–22 (Exhibit A, Kennedy), 1–2.
`
`The cover page of Kennedy states “Number 32, Winter 1999,”
`“cartographic perspectives,” and “journal of the North American
`Cartographic Information Society.” Id. at 3. The words are repeated on the
`next page and below them is an ISSN (“1048–9085”), a list of the names of
`six “Editor”s with their contact information, and below that, the words
`“Cartographic Perspectives Editorial Board” followed by the names of
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`IPR2019-01409
`Patent 8,209,145 B2
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`various individuals. Id. at 4. The next page presents a table of contents of
`the issue. On this page, three “Featured Articles” are indicated as being “in
`this issue,” including the article “Problems of Cartographic Design in
`Geographic Information Systems for Transportation R. Gordon Kennedy”
`and, to the right, “44.” Id. at 5. Near the center at the top of this page there
`is a date stamp of “JUL 2 0 1999.” Id. The article begins on the next page,
`at the top of which it states “44 cartographic perspectives Number 32,
`Winter 1999” and below to the left the name “R. Gordon Kennedy” with his
`contact information. Id. at 6. The article begins on the right of this page
`with an “Introduction” and continues for the next 16 pages, in sequential
`order as indicated by the numerals “45” to “60” at the top of each the page.
`Id. at 6–22.
`
`The declaration from Rachel J. Watters states that she is “a librarian,
`and the Director of Wisconsin TechSearch . . . an interlibrary loan
`department at the University of Wisconsin-Madison.” Id. at 1. She states
`that the declaration “relates to the dates or receipt and availability of
`[Kennedy]”. She states that “Exhibit A to the Declaration is [a] true and
`accurate copy of the title page with library date stamp of Cartographic
`Perspectives (1999), from the University of Wisconsin– Madison Library
`collection.” Id. She describes the standard operating procedures for
`materials at the University of Wisconsin-Madison Libraries and states that
`“[b]ased on the information in Exhibit A, it is clear that [Kennedy was]
`catalogued and available to library patrons within a few days or at most 2 to
`3 weeks after July 20, 1999.” Id. at 2.
`
`Patent Owner contends that “Petitioner fails to show that Kennedy …
`is prior art” because Petitioner has not satisfied its “burden to prove that
`[Kennedy] is a prior art printed publication.” PO Resp. 1.
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`“To prevail in a final written decision in an inter partes review, the
`
`petitioner bears the burden of establishing by a preponderance of the
`evidence that a particular document is a printed publication. Nobel Biocare
`Servs., 903 F.3d at 1375 (citing Medtronic, 891 F.3d at 1380); see also In re
`Wyer, 655 F.2d at 227 (a party asserting a reference as a prior art printed
`publication should provide sufficient proof of accessibility).” Hulu, LLC v.
`Sound View Innovations, LLC, IPR2018-01039 (PTAB Dec. 20, 2019)
`(Paper 29) at 11.
`i.
`Incorporation by Reference
`First, Patent Owner contends that the Petition’s citation to the
`
`Declaration of Rachel J. Watters is an improper incorporation by reference
`and that “[t]he Board’s rules expressly prohibit incorporation by
`reference.’” PO Resp. 3 (citing 37 C.F.R. § 42.6(a)(3)).
`
`We do not agree that the Petition improperly incorporated by
`reference the Watters declaration. Instead, the Petition properly relies on the
`Watters Declaration to support its contention that Kennedy is a printed
`publication. See Pet. 5–6. Although the Petition’s discussion of the issue is
`succinct, we are not persuaded that any more was necessary. The Watters
`Declaration consists of 2 pages of straightforward testimony supporting
`Petitioner’s position that Kennedy was published in 2009 and, therefore, no
`further explanation was necessary prior to any dispute on this issue.
`
`We note Patent Owner’s contention that “the standard of proof at
`institution is ‘qualitatively different,’ from the ‘preponderance of the
`evidence’ standard of proof required ‘to prevail at trial’ in an IPR.” PO Sur-
`reply 2, citing Hulu. But Patent Owner did not file a Preliminary Response
`or contest the prior art status of any reference at institution.
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`IPR2019-01409
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`ii. Public Accessibility
`Second, Patent Owner contends, the Watters Declaration
`
`insufficiently shows that Kennedy was publicly accessible.
`
`Patent Owner argues that “[n]othing identified as ‘Exhibit A’ was
`submitted with the declaration.” PO Resp. 4.
`
`We are unpersuaded. We agree with Petitioner that “‘Exhibit A’
`clearly refers to the only document (Ex-1009, 3-22) that follows and is
`identified in Ms. Watters’ declaration. Id., 1-2.” Pet. Reply 3 n.3. Ms.
`Watters testifies that
`
`Exhibit A to this Declaration is true and accurate copy of
`the
`title page with
`library date stamp of Cartographic
`Perspectives (1999), from the University of Wisconsin-Madison
`Library collection. Exhibit A also includes an excerpt of pages
`44 to 60 of that volume, showing the article entitled Problems of
`cartographic design in geographic information systems for
`transportation (1999).
`Ex. 1009, 1–2. It is clear that, in referring to the title page having a library
`date stamp of Cartographic Perspectives (1999), from the University of
`Wisconsin-Madison Library collection, of “that volume,” Ms. Watters is
`referring to page 5 of the attached document where the data stamp of “Jul 20
`1999” is clearly indicated. Ex. 1009, 5. The “excerpt of pages 44 to 60 of
`that volume” follow the title page. Id. at 6–22.
`
`Patent Owner further argues that a POSITA would have been unable
`to locate Kennedy by exercising reasonable diligence. According to the
`Patent Owner, “[a]lthough the Kennedy article is a portion of a scientific
`journal (Cartographic Perspectives 1999), the Watters declaration does not
`indicate how a POSITA would be able to locate Kennedy by exercising
`reasonable diligence.” PO Resp. 3. According to Patent Owner, there is “no
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`IPR2019-01409
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`evidence that Kennedy was cataloged or indexed in the library such that a
`POSITA, or other interested person, exercising reasonable diligence would
`have been able to locate that article in a search, such as by searching for key
`words in Kennedy’s title or content.” PO Sur-reply 4.
`
`Petitioner disagrees, arguing inter alia that
`
`GREX provides no evidence purporting to show that a
`library patron—including, e.g., a POSITA—would have been
`unable to locate Kennedy with a reasonable search of the
`University of Wisconsin-Madison Library records. In fact,
`GREX concedes that Ms. Watters’ declaration “provides
`evidence that a person searching for the scientific journal could
`locate the journal.” Response, 4. There is no reason why “a
`person searching
`for
`the scientific
`journal”—yet not a
`POSITA—could not have located Kennedy by exercising
`reasonable diligence.
`
`Pet. Reply 2–4 (emphasis added)
`
`We have reviewed the evidence and find that it weighs in favor of
`Petitioner’s position.
`
`There is no dispute that a POSITA would have been able to locate
`“Cartographic Perspectives,” Number 32, Winter 1999, i.e., “volume,”
`which includes the Kennedy article “Problems of Cartographic Design in
`Geographic Information Systems for Transportat