CoreLogic, Inc.v.Boundary Solutions, Inc.

Patent Trial and Appeal Board

May 21, 2015

13065023 (P.T.A.B. May. 21, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Entered: May 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CORELOGIC, INC.,
Petitioner,

v.

BOUNDARY SOLUTIONS, INC.,
Patent Owner.
____________

Case IPR2015-00225
Patent 8,065,352 B2
____________

Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
PETER P. CHEN, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
Petitioner, CoreLogic, Inc., filed a Petition for inter partes review of
claims 1–23 of U.S. Patent No. 8,065,352 B2 (Ex. 1001, “the ’352 patent”).
Paper 1 (“Pet.”). Patent Owner, Boundary Solutions, Inc., filed a Corrected
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Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
partes review is authorized by statute when “the information presented in the
petition . . . and any response . . . shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
Upon consideration of the Petition and the Preliminary Response, we
conclude the information presented does not show there is a reasonable
likelihood that Petitioner would prevail in establishing the unpatentability of
claims 1–23 of the ’352 patent.
A. Related Matters
The parties state that Patent Owner recently asserted the ’352 patent
against Petitioner in Boundary Solutions, Inc. v. CoreLogic, Inc., No. 3:14-
cv-00761 (N.D. Cal.) (filed Feb. 19, 2014). Pet. 59; Paper 4 (Patent
Owner’s Mandatory Notice). Patent Owner also has asserted related U.S.
Patent No. 7,499,946 (“the ’946 patent”) and U.S. Patent No. 7,092,957
(“the ’957 patent”) in that proceeding. Pet. 59; Paper 4.
Petitioner has filed two additional petitions for inter partes review of
the ’352 patent—IPR2015-00219 and IPR2015-00222. Petitioner also has
filed petitions for inter partes review of the ’946 patent (IPR2015-00226)
and the ’957 patent (IPR2015-00228).
B. The ’352 Patent
The ’352 patent relates generally to Geographic Information Systems
(“GIS”) and, in particular, to a National Online Parcel-Level Map Data
Portal (“NPDP”) that provides online delivery of parcel-level map data.
Ex. 1001, Abstract, 1:22–37. The ’352 patent describes the NPDP as an
electronic repository for parcel-level maps and linked attribute data acquired
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from public and private entities. Id. at 2:41–53. Databases from different
jurisdictions are assembled and stored in a standard format, with each
jurisdictional database placed in an individual directory. Id. at 4:8–10, 7:22–
30. Information is normalized to a single universal spatial protocol.
Id. at 3:16–19, 7:33–54. Parcel-level information includes parcel boundaries
and geocodes, which are linked using a parcel identifier to a non-graphic
database containing property tax records. Id. at 1:60–64, 4:10–17, 8:14–25.
The ’352 patent describes retrieving a parcel-level map based on the
address of a parcel requested by an end user. Id. at 1:65–2:1, 4:52–56. A
jurisdictional lookup table is searched to identify, for example, the
jurisdiction in which the requested parcel is located. Id. at 8:26–30. The
non-graphic database for that jurisdiction is searched for a record matching
the address, and the parcel identifier for that record is used to access a
graphic database containing the selected parcel. Id. at 3:56–63. The
selected parcel and surrounding parcels may be displayed, with the selected
parcel shown as a highlighted polygon. Id. at 4:61–63. The parcel’s linked
data (e.g., tax record) also may be displayed. Id. at 4:63–64.
C. Illustrative Claim
Claims 1, 9, and 12 of the ’352 patent are independent. Claim 12 is
illustrative of the claimed subject matter:
12. A method for retrieving and displaying geographic
parcel boundary polygon maps comprising:
receiving, by a server, a request for a parcel boundary
polygon map for a selected parcel;
searching, by the server, using a jurisdictional
identifier[,] a multi-jurisdictional digital parcel map database
for the selected parcel boundary polygon and the parcel
boundary polygons of adjacent and surrounding parcels, the
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database having information about individual land parcels
normalized to a common spatial data protocol, including
polygon data used to describe the boundaries of a plurality of
properties; and,
transmitting the parcel boundary polygon map data for
the selected parcel along with the adjacent and surrounding
parcels for display, wherein the parcel boundary polygon map
includes the selected parcel polygon along with adjacent and
surrounding parcel boundary polygons around the selected
parcel.
Ex. 1001, 17:13–30.
D. Asserted Grounds of Unpatentability
Petitioner contends that claims 1–23 of the ’352 patent are
unpatentable based on the following specific grounds (Pet. 13–59):
References Basis Challenged Claims
Majid
1
35 U.S.C. § 102(a) 12–18
Majid and Nearhood
2
35 U.S.C. § 103(a) 1–6, 12–18, and 23
Majid, Nearhood, and
Longley
3

35 U.S.C. § 103(a) 7, 8, and 19–22
Majid, Nearhood, and
Dugan
4

35 U.S.C. § 103(a) 6
Majid and Longley 35 U.S.C. § 103(a) 1–23

1
Shamsul A. Majid, A Multi-Purpose Cadastre Prototype on the Web (thesis
submitted Aug. 2000) (Ex. 1021, “Majid”).
2
U.S. Patent No. 7,249,072 B1, issued July 24, 2007 (Ex. 1017,
“Nearhood”).
3
Paul A. Longley et al., Geographic Information Systems and Science
(2001) (Ex. 1015, “Longley”).
4
U.S. Patent No. 5,499,325, issued Mar. 12, 1996 (Ex. 1019, “Dugan”).
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II. DISCUSSION
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Consistent with the broadest reasonable construction, claim terms are
presumed to have their ordinary and customary meaning as understood by a
person of ordinary skill in the art in the context of the entire patent
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
Petitioner and Patent Owner propose constructions for several claim
terms. For purposes of this decision, we determine that no claim terms
require express construction.
B. Asserted Anticipation by Majid
Petitioner contends that claims 12–18 are unpatentable under 35
U.S.C. § 102(a) as anticipated by Majid. Pet. 13–23. Relying on the
testimony of Dr. Michael F. Goodchild, Petitioner explains how Majid
allegedly discloses each limitation of the claims. Id. (citing Ex. 1006).
1. Majid
Majid is a thesis in which the author reviews several online cadastral
5

and geo-spatial systems and describes a prototype server-based cadastral
system using data from the Australian state of Victoria. Ex. 1021, 11–12
(describing research objectives). The prototype model includes a

5
“Cadastral” means “showing or recording property boundaries, subdivision
lines, buildings, and related details.” http://www.merriam-
webster.com/dictionary/cadastral (last visited May 15, 2015).
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middleware component that is located on a server and serves as a bridge
between a front-end user interface on the web and back-end databases
distributed across government agencies. Id. at 18, 102 (Fig. 31), 112–13.
2. Analysis
Petitioner contends that Majid discloses all of the limitations of
independent claim 12, including a multi-jurisdictional database with
information about individual land parcels “normalized to a common spatial
data protocol.” Pet. 18. For this limitation, Petitioner first argues that Majid
“discloses that the data maintained by the database is normalized to a
common cadastral layer to ‘eliminate problems . . . such as reference
datums, map grids, scale and quality that might exist in different cadastral
sources.’” Id. (quoting Ex. 1021, 121). Read in context, however, the cited
passage explains that for the prototype system, the distributed databases
contain a common cadastral layer made up of data from “an identical
subdivision region in Melbourne’s North-West region, with approximately
100 cadastral parcels making up the cadastral layer used.” Ex. 1021, 121.
Although Majid discloses that each of the distributed databases contains the
same information, Petitioner does not point to any disclosure in Majid
indicating that the information itself has been normalized to a common
spatial data protocol or format. Moreover, it appears that the distributed
databases used in the prototype do not constitute a multi-jurisdictional
database, as Petitioner contends, Pet. 17–18, because they all contain data
from the same jurisdiction. Ex. 1021, 121.
Petitioner also relies on other isolated passages from Majid, but we
are not persuaded they show sufficiently that Majid discloses the recited
limitation. See Pet. 18–19. First, Petitioner cites two pages of Majid as
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“describing common means of digitally representing geo-spatial
information,” but neither passage discloses the use of a common spatial data
protocol in a multi-jurisdictional database. Id. at 18 (citing Ex. 1021, 69,
109). Petitioner also refers to Majid’s prototype, which uses an Open
Database Connectivity (ODBC) protocol in its middleware component to
“hide[] the different characteristics of proprietary vendor-based or
commercial databases underneath the cover of ODBC.” Id. at 18–19
(quoting Ex. 1021, 145). This disclosure does not indicate that the
underlying databases have information that has been normalized to a
common spatial data protocol, as required by claim 12. If anything, it seems
to show that the databases have information that has not been normalized.
For these reasons, we are not persuaded that Petitioner has shown
sufficiently that Majid discloses a multi-jurisdictional database with
information about individual land parcels “normalized to a common spatial
data protocol,” as recited in independent claim 12. Thus, the information
presented does not show a reasonable likelihood that Petitioner would
prevail in establishing that claim 12 and dependent claims 13–18 are
anticipated by Majid.
C. Asserted Obviousness Grounds
For the remaining asserted grounds, Petitioner contends that claims 1–
23 are unpatentable as obvious based on Majid in combination with other
references. Pet. 23–59. For these grounds, Petitioner relies on Majid, rather
than Nearhood, Longley, or Dugan, for teaching a database having
information about individual land parcels “normalized to a common spatial
data protocol,” which is recited in independent claims 1, 9, and 12.
Id. at 26–27, 46–47, 54. As discussed above, Petitioner has not shown
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sufficiently that Majid teaches this limitation. Therefore, the information
presented does not show a reasonable likelihood that Petitioner would
prevail in establishing that claims 1–23 are unpatentable for obviousness
over Majid in combination with the other asserted references.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that claims 1–23 of the ’352 patent are unpatentable on
the grounds asserted in the Petition.
IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied and no trial is instituted.

FOR PETITIONER:
Joseph E. Palys
Naveen Modi
Paul Hastings LLP
josephpalys@paulhastings.com
naveenmodi@paulhastings.com

FOR PATENT OWNER:
Lawrence Edelman
The Law Office of Lawrence Edelman
lawrence.edelman@comcast.net