CoreLogic, Inc.v.Boundary Solutions, Incorporated

Patent Trials and Appeals Board

May 19, 2016

10347102 - (D) (P.T.A.B. May. 19, 2016)

Trials@uspto.gov Paper 50
571-272-7822 Entered: May 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CORELOGIC, INC.,
Petitioner,

v.

BOUNDARY SOLUTIONS, INC.,
Patent Owner.
____________

Case IPR2015-00228
Patent 7,092,957 B2
____________

Before LYNNE E. PETTIGREW, PETER P. CHEN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
CoreLogic, Inc. (“Petitioner”) filed a Corrected Petition requesting an
inter partes review of claims 1–19 of U.S. Patent No. 7,092,957 (Ex. 1001,
“the ’957 patent”). Paper 4 (“Pet.”). Boundary Solutions, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On May
21, 2015, we instituted an inter partes review for the challenged claims on
the grounds of unpatentability alleged in the Petition. Paper 8 (“Dec. to
Inst.”).
After institution of trial, Patent Owner filed a Corrected Patent Owner
Response (Paper 26, “PO Resp.”), to which Petitioner filed a Reply (Paper
37, “Pet. Reply”). Petitioner filed a Motion to Exclude Evidence (Paper 39,
“Mot. Excl.”), Patent Owner filed an Opposition to the Motion to Exclude,
Paper 43, and Petitioner filed a Reply in support of its Motion to Exclude,
Paper 44. An oral hearing was held on February 11, 2016, consolidated with
the hearings in IPR2015-00219, IPR2015-00222, and IPR2015-00226. The
transcript of the consolidated hearing has been entered into the record.
Paper 49 (“Tr.”). On February 26, 2016, Patent Owner filed a disclaimer of
claims 13 and 16–18. See CoreLogic, Inc. v. Boundary Solutions, Inc., Case
CBM 2016-00016, Ex. 2003.
The Board has statutory authority under 35 U.S.C. § 6(c). In this
Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has shown by a preponderance of the
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evidence that claims 1–12, 14, 15, and 19 of the ’957 patent are
unpatentable.
A. Related Proceedings
According to Petitioner, the ’957 patent is involved in the district
court case captioned Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-
cv-00761 (N.D. Cal.). Pet. 59. Patent Owner also has asserted related U.S.
Patent No. 8,065,352 (“the ’352 patent”) and U.S. Patent No. 7,499,946
(“the ’946 patent”) in that proceeding. Pet. 59; Paper 6.
We instituted inter partes reviews of the ’352 patent (IPR2015-00219,
IPR2015-00222) and the ’946 patent (IPR2015-00226). Petitions for
covered business method patent review of the ’957 patent, ’946 patent, and
’352 patent are pending in Cases CBM2015-00016, CBM2015-00017, and
CBM2015-00018, respectively.
B. The ’957 Patent
The subject matter of the challenged claims of the ’957 patent relates
generally to a Geographic Information System (“GIS”) and a National
Online Parcel-Level Map Data Portal referred to as a “NPDP.” Ex. 1001,
Title, Abstract, 1:17–26. The ’957 patent states that “[p]arcel-level GIS is a
mature technology” and adds that “[t]hough hundreds of local governments
have finished digitizing their parcel maps, a single national parcel map
source (portal) does not exist. The National Online Parcel-Level Map Data
Portal (NPDP) remedies this problem by providing the first national
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repository of parcel data for use by all industry sectors.” Id. at 3:19–20,
1:15–20. In particular, the ’957 patent describes an interactive online
method for users to retrieve geographic parcel maps and related data:
An end user, utilizing an assigned password, begins the NPDP
process by logging on from a computer terminal to an intranet or
internet start page of the NPDP, and enters the state, city, street
and number of a desired address. The NPDP address database is
searched for a matching tax record. If there is a match, the NPDP
displays the road right-of-ways, all parcel boundaries within a
select distance, the “exact” address location highlighted, the
pertinent parcel polygon changing the color to a brighter or
different color from surrounding parcels also displayed. In
addition, a list of property record attributes such as owner, use
code, assessed value and year constructed can be displayed for
the selected parcel. Other displayed parcels can also be selected
and their linked attributes viewed.

Id. at 1:54–67. 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 1:49–53, 4:1–4:11, 8:13–24.
Data from jurisdictions are normalized into a single standard format. Id. at
1:34–37, 7:31–54.
The ’957 patent describes retrieving a parcel-level map based on the
address of a requested parcel. Id. at 1:54–57, 4:47–51. A jurisdictional
lookup table is searched to identify, for example, the jurisdiction in which
the requested parcel is located. Id. at 8:25–30. In particular:
The Jurisdiction Lookup Table (JLT) 102 is a single tabular file,
developed and maintained by NPDP service provider. The JLT
makes it possible for the state and jurisdiction values stated in an
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address entry transaction to be used to determine the pertinent
county in which it is located. Hence, by the table also containing
the county's FIPS number, the appropriate county directory is
automatically accessed for data retrieval purposes. In addition,
the JLT is the source of the Metadata values assigned to the
parcel map data of each jurisdiction within a county. Each JLT
record contains the following fields: state, jurisdiction, county
name, county FIPS number, accuracy, publication date, percent
complete, ortho scale, ortho resolution, and update frequency.

Id. at 8:25–38. 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 3:41–
58. The selected parcel and surrounding parcels may be displayed, with the
selected parcel shown as a highlighted polygon. Id. at 3:58–61; 4:56–
58. The parcel’s linked data (e.g., tax record) also may be displayed. Id. at
4:58–59.
Illustrative Claim
Claims 1–19 are the subject of the Petition, and claims 13 and 16–18
have since been disclaimed by Patent Owner. Claim 1 is independent.
Claim 1 is reproduced as follows.
1. An interactive computer implemented method for retrieving
geographic parcel boundary polygon maps and associated parcel attribute
data linked to a non-graphic database, wherein the data is acquired
electronically, comprising:

a. activating a computer terminal connected to a computer network;

b. accessing an applications program for access to the data;
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c. accessing a data entry screen and entering a parcel attribute to call
up the parcel selected;

d. subsequently accessing a national parcel map database comprising
multiple jurisdictional databases which have been normalized to a
common data protocol;

e. searching a jurisdiction look up table associated with the national
parcel map database, said look up table indexed for identification of
the pertinent jurisdictional database, whereby a numerical
jurisdictional identifier for the selected jurisdiction is located, and the
identified jurisdictional database thereafter accessed; and,

f. thereafter displaying on screen a parcel boundary polygon map,
along with surrounding parcel boundary polygons, the default scale of
the displayed map selected to fill the computer display screen with
parcel boundaries within a selected distance around the subject parcel,
the selected parcel boundary polygon highlighted, defining both the
location and boundary of the parcel, and associated attribute data for
the highlighted parcel displayed.

Ex. 1001, 16:14–43.

C. Prior Art Relied Upon
The following references were asserted in the instituted grounds.
Reference Title Date Ex. No.
Harder “Serving Maps on the
Internet: Geographic
Information on the World
Wide Web,” Environmental
Systems Research Institute,
July 28, 1998 Ex. 1003
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Reference Title Date Ex. No.
Inc.
Longley “Geographic Information
Systems and Science,” John
Wiley & Sons, Ltd.
May 2001 Ex. 1015
Roy US 5,966,135 Oct. 12, 1999 (filed
Oct. 30, 1996)
Ex. 1012
Kearney “Internet Access to Real
Property Information,” in
Integrating Spatial
Information Technologies
for Tomorrow, GIS 1997
Conference Proceedings
Feb. 1997 Ex. 1021
ARC/INFO “Understanding GIS, The
ARC/INFO Method,”
Environmental Systems
Research Institute, Inc.
1997 Ex. 1004

D. The Asserted Grounds
The challenges to patentability on which we instituted trial are as
follows (not including claims 13 and 16–18, which were disclaimed by
Patent Owner).
Reference(s) Basis Claims Challenged
Harder and Longley § 103 1–10, 12–19
Harder, Longley, and Roy § 103 11
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Reference(s) Basis Claims Challenged
Kearney and ARC/INFO § 103 1–8, 16–19
II. ANALYSIS
A. Claim Construction
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);
see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). 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). An inventor may provide a meaning
for a term that is different from its ordinary meaning by defining the term in
the specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
In our Decision to Institute, we construed “numerical jurisdictional
identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7–
8. We based our construction on the only appearance of “jurisdictional
identifier” in the written description of the ’957 patent:
FIG. 3 illustrates a USA County Boundary Map (USACM). This
is a public domain boundary file of each and every of the 3140
counties within the United States. Each of these polygons is
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geocoded with its county name and FIPS number, a numerical
jurisdictional identifier, as illustrated in the figure.
Ex. 1001, 8:48–53 (emphasis added).1
Patent Owner does not challenge our construction of “jurisdictional
identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner
challenge the construction in its Reply, see Reply 7. For this Final Written
Decision, after considering the complete record, we maintain our
construction of “numerical jurisdictional identifier” as “a number that
identifies a jurisdiction.”
Patent Owner also proposes a construction for “national parcel map
database comprising multiple jurisdictional databases which have been
normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s
proposal is 60 words long, and reads, “a database covering more than one
state including multiple jurisdictional databases, wherein a jurisdictional
database is a collection of data representing the boundaries of parcels from
the jurisdiction, each of the jurisdictional databases having been received
from a jurisdiction, and modified, transformed, amended or converted by a
common set of one or more processes applied to all data and updates.” PO
Resp. 8.
Patent Owner had in its Preliminary Response proposed a different
construction (“the database of individual land parcels having been

1 According to the ’957 patent, the Federal Information Processing Standards
(“FIPS”) number “is used nationally to numerically identify specific county
jurisdictions.” Ex. 1001, 7:27–30.
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transformed by a set of one or more automated and/or semiautomated
processes applied to data and data updates supplied by sponsoring
jurisdictions using a set of rules or procedures”) for nearly the identical
phrase (“multiple jurisdictional databases which have been normalized to a
common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent
Owner’s proposed construction in our Decision to Institute, and we do not
adopt its revised (and lengthier) construction in this Final Written Decision,
for the reasons argued by Petitioner in its Reply (Reply 2–5) and also
because the Patent Owner’s prolix proposed construction does not add
clarity to the term. We decline to provide an express construction for this
term or for any other terms in the claims other than discussed above.
B. Principles of Law
To prevail in challenging BSI’s claims, CoreLogic must demonstrate
by a preponderance of the evidence that the claims are unpatentable. 35
U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35
U.S.C. § 103(a) if the differences between the claimed subject matter and the
prior art are such that the subject matter, as a whole, would have been
obvious at the time of the invention to a person having ordinary skill in the
art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
of obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
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skill in the art; and (4) objective evidence of nonobviousness. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
C. Level of Ordinary Skill in the Art
Petitioner’s proposal for the level of ordinary skill in the art is “at
least a bachelors degree in geographic information science, survey
engineering, geomatics, or similar education, and two years of experience in
a relevant field (e.g., land or geographic information science), or six years of
experience in the relevant field.” Ex. 1006 (Declaration of Michael
Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in
the art would possess a “a Bachelor’s degree or higher in, GIS engineering
with at least 5 years of academic or industry experience in GIS database
design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13.
We determine that an express definition of the level of ordinary skill
is not required. The level of ordinary skill in the art can be reflected in the
cited prior art references. 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.”) (internal
quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Therefore, we find the level of ordinary skill in the art to be reflected in the
cited references.

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D. Claims 1–10 and 12–19: Asserted Obviousness over Harder and
Longley

Petitioner contends claims 1–10 and 12–19 are unpatentable under
35 U.S.C. § 103(a) as obvious over Harder and Longley. Pet. 12–46. In
view of Patent Owner’s disclaimer of claims 13 and 16–18, we analyze
claims 1–10, 12, 14, 15, and 19. Claim 1 is independent. Relying on the
testimony of Dr. Michael F. Goodchild, Petitioner explains how the
references allegedly teach or suggest the claim limitations and sets forth a
rationale for combining the references. Id. (citing Ex. 1006).
Harder (Exhibit 1003)
Harder is a book titled “Serving Maps on the Internet,” published by
the Environmental Systems Research Institute (ESRI). Harder “presents
case studies of a dozen different private and public organizations that are
delivering geographic information” online. Ex. 1003, Preface. Harder
notes: “The convergence of geographic information systems (GIS) and the
World Wide Web has changed mapmaking forever.” Id. at 1.2 Harder
discloses that web-based geographic information systems were well-known
at the time of the alleged invention of the ’957 patent. Id. at 3, 12–17, and
19–25. Web-based GISs generally have a client/server architecture, where a
server receives requests for parcel information from a client computer,
searches a database for the selected parcel information, and returns the

2 All citations herein are to page numbers in the original underlying
references, rather than to the exhibit page numbers affixed by Petitioner.

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information to the client computer. Id. at 7, 8, 13, 111, 113. The database
can be a relational database system. Id. at 13.
Harder also describes applications that implement a web-based GIS,
including a GIS application developed for a county in North Carolina to
provide the public with access to the county’s land records database. Id. at
19. A user can query the system for a parcel map by entering an address or
parcel identification number of the desired parcel. Id. at 7, 21. Geographic
and non-geographic data associated with the selected parcel are retrieved
and transmitted to a client computer for display with the selected parcel
highlighted. Id. at 21–22. For example, a parcel information table
containing information about the selected parcel, such as parcel owner, tax
value, and property value data can be displayed with the geographic map.
Id. Harder describes an application that, using ARC/INFO GIS software,
joins tables of tax records to parcel information, converts the data to
shapefiles, and indexes key fields to speed up user-defined searches. Id. at
24. Harder explains that the disclosed processes could be used to select data
and control the “geographic area to be displayed (from statewide down to
the town level).” Id. at 7.
Longley (Ex. 1015)
Longley is a book titled “Geographic Information Systems and
Science.” Longley discloses features and technologies relating to GISs that
search and retrieve parcel-level data from a database of parcel data that may
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cover many jurisdictions. Ex. 1015, 2–5, 10–11, 13–14, 17–18, 28–31, 35–
37, 80, 83–86, 164–172, 194–198, 226–244.
Longley references “look up” operations (id. at 191), and describes
known technologies and features regarding such systems, including methods
of configuring and formatting data and storing it in different ways in a
database, such as tables (id. at 226–29), linking the collections of data based
on Federal Information Processing Standard (“FIPS”) codes or other types of
jurisdictional identifiers (id. at 226–30), searching and accessing such data,
such as through indexing (id. at 226, 237–38), and maintaining such data in
common formats (id. at 226–31, 237–38). A user can request a property
map based on property values, by querying for properties similarly valued
within a selected distance range, with the selected properties displayed on
the screen. Id. at 36.
Analysis
Petitioner provides explanations of how the subject matter of each of
the challenged claims is taught or suggested by Harder or Longley. Pet. 12–
46. For independent claim 1, Petitioner contends Harder teaches the recited
limitations of activating a computer terminal connected to a computer
network (Pet. 13; Ex. 1003, 7–13, 21, 106–113); accessing an applications
program for access to parcel attribute data (Pet. 13–14; Ex. 1003, 7–13, 20–
21, 106–113); and accessing a data entry screen and entering a parcel
attribute (Pet. 14–15; Ex. 1003, 8, 13, 19–25, 113, 117).
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Petitioner also contends that Harder and Longley teach or suggest
subsequently accessing a national parcel map database comprising multiple
jurisdictional databases which have been normalized to a common data
protocol (Pet. 15–18; Ex. 1003, 7–8, 13, 21–22, 42, 48–51, 106; Ex. 1015,
2–5, 10–11, 13–14, 17–18, 28–31, 35–37, 80, 83–86, 164–172, 194–198,
229–233).
Petitioner further contends that Harder and Longley teach or suggest
searching a jurisdiction look up table associated with the national parcel map
database, where the look up table is indexed for identification of the
pertinent jurisdictional database, whereby a numerical jurisdictional
identifier for the selected jurisdiction is located, and the identified
jurisdictional database thereafter accessed. Pet. 19–22. In particular,
Petitioner contends that Harder discloses an index for identifying a
jurisdictional database, and that Longley describes characteristics of national
parcel databases, which may be configured with identifiers that link tables in
the database to assist in searching for data. Pet. 19–21; Ex. 1003, 24; Ex.
1015, 226–30. Petitioner contends Longley further discloses searching
tables relating to databases of multiple jurisdictions, such as states and sub-
regions comprising more than one state. Pet. 20; Ex. 1015, 229–32. The
tables include keys, “which may include numerical jurisdictional identifiers,
such as a state ‘FIPS’ identifier.” Pet. 20–21 (citing Ex. 1015, 229–30, Figs.
11.2 (a)-(c)).
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Lastly, Petitioner contends Harder and Longley teach or suggest claim
1’s limitation of displaying on screen a parcel map, along with surrounding
parcel boundary polygons, the selected parcel highlighted and filling the
screen. Pet. 23–27.
Patent Owner’s arguments in its Response resemble those in its
Preliminary Response, which, as we noted in the Decision to Institute, focus
on the separate disclosures of Harder and Longley. Dec. to Inst. 11.
Nonobviousness, however, cannot be established by attacking references
individually in isolation, when the asserted ground of unpatentability is
based on a combination of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981).
We agree with Petitioner that Patent Owner’s arguments in its
Response are “often unclear” (Pet. Reply 9), but discern several arguments
by Patent Owner asserting Harder and Longley do not teach or suggest the
recited “national parcel map database comprising multiple jurisdictional
databases which have been normalized to a common data protocol,” or the
recited searching of “a jurisdiction look up table associated with the national
parcel map database, said look up table indexed for identification of the
pertinent jurisdictional database, whereby a numerical jurisdictional
identifier for the selected jurisdiction is located.” PO Resp. 16, 22–29.
First, Patent Owner argues that Harder does not disclose databases
that have been normalized to a common data protocol. PO Resp. 22–23.
Petitioner cites the ’957 patent’s description of data being normalized into a
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universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41),
and Harder’s description of how its system’s datasets are “stored in the
industry-standard shapefile (.shp) format” and how the system “converts the
data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also
notes that Patent Owner’s declarant acknowledged that assembling databases
according to a standard protocol was in the prior art. Pet. Reply 11; Ex.
1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that
Harder teaches or suggests databases that have been normalized to a
common data protocol.
Second, Patent Owner argues about the lack of disclosure of multiple
jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple
jurisdictional databases are taught by both Harder and Longley, which
explicitly discloses a “STATES table” that is a multi-state database. Pet.
Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that
Harder and Longley teach or suggest multiple jurisdictional databases.
Third, Patent Owner argues about the lack of disclosure of claim 1’s
limitation of “searching a jurisdiction look up table associated with the
national parcel map database, said look up table indexed for identification of
the pertinent jurisdictional database, whereby a numerical jurisdictional
identifier for the selected jurisdiction is located” (see PO Resp. 24–28).
Petitioner concedes that Harder and Longley “disclose retrieving a
jurisdictional identifier using an index, but do not expressly refer to an index
as a look up table.” Pet. 23. Harder discloses that its system “indexes key
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fields,” Ex. 1003, 24, and Longley describes indexes and tables, Ex. 1015,
226–231. In particular, Longley discloses a grid index, in which grid
locations “are recorded in a list (the index),” and a query to locate an object
searches the indexed list to find the object and then retrieves the object . . .
for further analysis.” Pet. Reply 16; Ex. 1015, 237, Fig. 11.8.
There is additional evidence that Harder and Longley teach or suggest
the recited look up table. First, Longley specifically references a “look-up
operation.” Ex. 1015, 191. In addition, at the oral hearing, Patent Owner’s
counsel equated an index with a look up table, stating, “a lookup table serves
the same purpose as an index . . . I presume you can call a lookup table a
kind of index . . . I certainly understood when [Dr. Goodchild] said
jurisdictional lookup table is a kind of index.” Tr. 83:9–11, 83:13–14.
Patent Owner’s counsel also distinguished another of Petitioner’s references
by stating, “ARC/INFO has a particular kind of lookup table . . . I don’t
think that’s the kind of lookup table that we’re talking about here, which is
more akin to an index.” Id. at 85:24–25, 86:8–9.
Petitioner further explains why its proposed combination of Harder
and Longley teaches or suggests the recited look up table:
[O]ne skilled in the [art] would have found it obvious at the time
of the alleged invention of the ’957 patent to have the index used
in the combined system of Harder and Longley arranged as a
look-up table to allow the system to locate the appropriate
location where requested parcel information is stored in the
national parcel map database of the combined system. Ex. 1006
[Goodchild declaration], ¶ 44. Implementing an index as a look-
up table would have been a predictable and common sense
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modification to the combined system that would have increased
the efficiency of the searching functions disclosed by the
combined system of Harder and Longley.

Pet. 23. Based on the evidence and arguments set forth above, we find that
the recited jurisdiction look up table is taught or suggested by Petitioner’s
proposed combination of Harder and Longley.
Lastly, Patent Owner argues that the references do not disclose the
recited numerical jurisdictional identifier because Longley’s FIPS identifier
is used to join tables, “there is no disclosure of using a county FIPS code in
connection with indexing,” and “no one before the patent had thought of
using the county FIPS code . . . as a jurisdictional identifier.” PO Resp. 24,
27–28. Patent Owner’s argument, however, focuses on this teaching in
Longley in isolation. Petitioner’s obviousness argument cites the FIPS
identifier in Longley as an example of a jurisdictional identifier used as a
key in database tables. See Pet. 20–21; Reply 17–18. Patent Owner
acknowledges this, agreeing that the state FIPS code in Longley is used as a
key for finding records. See PO Resp. 26. Petitioner then relies on that
teaching in combination with Harder’s teaching that indexing key fields can
speed up searches and Longley’s disclosure of the benefits of indexing
geographic databases. See Pet. 22–23; Reply 17–18; Ex. 1003, 24;
Ex. 1015, 237–38.
In addition, as we explained in the Decision to Institute, our
construction of “numerical jurisdictional identifier” does not require a
specific county FIPS code, and we find that Longley’s FIPS code teaches or
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suggests the recited numerical jurisdictional identifier. Dec. to Inst. 13; Ex.
1015, 229–30, Fig. 11.2.
In summary, we agree with Petitioner’s contentions and find that
Harder and Longley teach or suggest the limitations of independent claim 1.
Patent Owner also argues, “there is no motivation to combine the two
references.” PO Resp. 27. We disagree. The Petition cites to the Goodchild
declaration and to KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and
explains why one of ordinary skill in the art would have combined Harder
and Longley as to the limitations of claim 1:
Given the knowledge of one skilled in the art, the disclosure of
Harder and the known configurability of such databases as
described by Longley, it would have been obvious to one of
ordinary skill in the art to configure the combined system with
separate and distinct databases associated with specific
jurisdictions such as states, etc., to allow more efficient access to
parcel data spanning multiple jurisdictions. Ex. 1006, ¶¶ 34-39.
. . . [T]he disclosure of Longley and the knowledge of one skilled
in the art would have motivated such a person to modify
Harder’s system given that Harder discloses parcel-based
searching and display functionalities for a jurisdiction (e.g., Ex.
1003, 21-25) and for multiple states (id., 49-51), and discloses
that databases in GIS environments could span multiple
jurisdictions (id., 7, 49-51), and that Longley discloses
configuring such databases to include data relating to different
states and also discloses parcel based systems. Moreover, one
skilled in the art would have been motivated to look to Longley
to supplement the features of the systems and processes of
Harder given they both describe[] features of ESRI systems. Ex.
1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database
in such a way would have been a common sense and predictable
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modification that was within the realm of knowledge of one
skilled in the art at the time of the alleged invention. See KSR,
550 U.S. at 417; Ex. 1006, ¶¶ 34-39.

Pet. 18–19. The Petition continues:
[O]ne skilled in the art would have realized that using an index
in the combined system of Harder and Longley would have been
a predictable and common sense modification to the system,
which would have had the foreseeable result of improving the
effectiveness of locating parcel data in the national parcel map
database of the combined system of Harder and Longley. See
KSR, 550 U.S. at 401, 417; Ex. 1006, ¶ 43. One skilled in the art
would have been motivated to look to Longley to modify Harder
as explained above because Longley discloses functionalities that
are related to GIS features similar to those of Harder. . . . One
of ordinary skill in the art would have understood that
implementing such a modification would have been common
sense, predictable, and within the realm of knowledge of one
skilled in the art, and that doing so would have resulted in
enhanced performance of the combined system to locate
requested parcel information in the national parcel map database
of the combined system. See KSR, 550 U.S. at 417; Ex. 1006,
¶¶ 40-43.

Pet. 22–23. Petitioner’s Reply further cites to the Goodchild declaration and
asserts that it would have been obvious to modify Harder’s system “in view
of Harder’s other disclosures of GIS systems” and Longley’s “disclosure of
ways in which multi-state databases comprising multiple jurisdictional
databases may be efficiently accessed . . . . This is particularly so given that
both Harder and Longley disclose features relating to GIS systems, database
configurations, and ESRI systems.” Pet. Reply 13. Petitioner also relies on
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“the harmonies between the systems in Harder and Longley given that both
disclose similar technologies and features, including those related to ESRI.”
Pet. Reply 14.
Finally, we note that Harder was published by ESRI, and Longley
expressly acknowledged the contributions of ESRI to the GIS industry. Ex.
1003, ii; Ex. 1015, xv, 12, 362. ESRI’s involvement and influence in both
references further supports Petitioner’s contention that one of ordinary skill
in the art would have combined Harder with Longley. We agree with and
adopt Petitioner’s reasoning in the Petition, Reply, and Goodchild
declaration, and find that Petitioner has provided articulated reasoning, with
rational underpinning, for a motivation to combine Harder and Longley.
Claims 2–10 and 12, 14, 15, and 19 all depend directly or indirectly
from claim 1, and recite further features of the interactive online method for
retrieving and displaying parcels. Ex. 1001, 16:44–17:4, 17:9–11, 17:16–17,
18:1–3, 18:14–15. Petitioner provides explanations of how Harder, or the
combination of Harder and Longley, teaches or suggests the recited features
of these dependent claims (Pet. 27–38, 40–43, 44–46), and sets forth reasons
for combining the references (Pet. 30, 32, 37–38, 40–43, 44–46). Patent
Owner makes no separate arguments as to these dependent claims. We
agree with and adopt Petitioner’s reasoning for why the limitations of the
dependent claims are taught or suggested by Harder and Longley, and why
one of ordinary skill in the art would have been motivated to combine
Harder with Longley.
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In summary, we are persuaded that Harder and Longley teach or
suggest the limitations of claims 1–10, 12, 14, 15, and 19, and that Petitioner
has provided articulated reasoning supported by rational underpinnings for
combining the references. We conclude that Petitioner has proved by a
preponderance of the evidence that claims 1–10, 12, 14, 15, and 19 would
have been obvious over Harder and Longley.
E. Claim 11: Asserted Obviousness Over Harder, Longley, and Roy
Dependent claim 11 depends indirectly from claim 1 and adds the
limitation, “where the user can highlight several parcel boundary polygons at
once and query the database to generate a data table for the highlighted
parcel boundary polygons.” Ex. 1001, 17:5–8. Relying on the testimony of
Dr. Goodchild, Petitioner explains why claim 11 is unpatentable under
35 U.S.C. § 103(a) as obvious over Harder, Longley, and U.S. Patent No.
5,966,135 to Roy (Ex. 1012). Pet. 46–47.
Roy is titled, “Vector Based Geographic Data,” and describes a
computer-implemented geographic information system that enables viewing
map pictures (comprised of map objects, such as states and cities) that are
generated from vector-based data. Ex. 1012, Abstract. Map objects can be
chosen to obtain additional information, for example, a different map
picture. Id. For claim 11, Petitioner in particular states that:
Roy discloses that an initial map picture is displayed after the
location of map data is identified, which then enables a user to
make “requests for additional information” causing the “map
viewer [to] download[] additional map data identified in the map
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window file from a map server.” Ex. 1012, 3:19-24. . . .
“Information related to the chosen map objects can be presented
in reports.” Ex. 1012, 3:51-52.

Pet. 46–47. Additionally, Roy states that “an individual map object is
chosen by pointing at the map object with a mouse pointer and double
clicking the mouse button. The present invention also enables choosing
multiple map objects through various techniques, such as choosing multiple
objects from lists or using a spatial technique of enclosing multiple objects
within a circle or polygon.” Ex. 1012, 3:44–51.
Patent Owner argues only that “Roy does not provide any of the
missing limitations” of Harder and Longley, and does not argue specifically
as to claim 11’s limitations. PO Resp. 29–30. We agree with Petitioner’s
contention that Roy’s “requests for additional information,” “choosing
multiple objects,” and “reports,” teach or suggest the recited limitation of
claim 11 for highlighting several parcels at once.
Petitioner cites to the Goodchild declaration and further contends why
one of ordinary skill in the art would have combined Harder, Longley, and
Roy:
[I]t would have been [a] common sense and foreseeable modification
to enable a user to highlight multiple parcels to obtain additional data,
as disclosed by Roy, which would have been within the realm of
knowledge of one skilled in the art at the time of the alleged
invention. See KSR, 550 U.S. at 417. Ex. 1006 ¶¶ 83–85.

Pet. 47. Patent Owner does not argue specifically on this issue. We agree
with and adopt Petitioner’s reasoning and find that Petitioner has shown
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sufficiently a reason to combine Roy with Harder and Longley. We are
persuaded that Harder, Longley, and Roy teach or suggest the limitations of
dependent claim 11, and that Petitioner has provided articulated reasoning
supported by rational underpinnings for combining the references. We
conclude that Petitioner has proved by a preponderance of the evidence that
dependent claim 11 is obvious over Harder, Longley, and Roy.

F. Claims 1–8 and 16–19: Asserted Obviousness over Kearney and
ARC/INFO

Petitioner contends claims 1–8 and 16–19 are unpatentable under
35 U.S.C. § 103(a) as obvious over Kearney and ARC/INFO. Pet. 47–59.
In view of Patent Owner’s disclaimer of claims 16–18, we analyze claims 1–
8 and 19. Relying on the testimony of Dr. Goodchild, Petitioner explains
how the references allegedly teach or suggest the claim limitations and
attempts to provide a rationale for combining the references. Id. (citing
Ex. 1006).
Kearney (Ex. 1021)
Kearney is titled “Internet Access to Real Property Information,” was
published in the 1997 GIS conference proceedings, and discloses an online
system and process for retrieving parcel boundary polygon maps and
associated attribute data for a single jurisdiction, the Province of New
Brunswick, Canada. Ex. 1021, 575–76, 578. The disclosed processes
include maintaining databases of parcels in the Province with indexing and
searching tools to provide parcel map data and related attribute data for
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display to users. Id. Kearney notes, “[w]ith the introduction of this service,
New Brunswick is one of the first jurisdictions in North America to offer
complete integrated on-line access to both property mapping and attribute
data across the Internet.” Id. at 579.
ARC/INFO (Exhibit 1004)
ARC/INFO is a “self study workbook” that is “an introduction to the
concepts and capabilities of GIS” and a software GIS product called
ARC/INFO. Ex. 1004, cover, xiii. In particular, the training workbook
leads the user through a small “sample project” using the ARC/INFO
software and “teaches the basics” of GIS “in the context of completing an
ARC/INFO project.” Id. at ix, xi. It further states: “During the training, you
will . . . design and develop a digital spatial database, perform spatial
analysis, create a map, and generate a report.” Id. at ix. The sample project
designs a database to identify a site for an aquaculture lab and office
building in a coastal farming area, and creates a map and a report. Id. at 3-6.
Analysis
Petitioner provides explanations of how the subject matter of each of
the challenged claims is disclosed, or taught or suggested by Kearney and
ARC/INFO. Pet. 47–59. Patent Owner argues, inter alia, that neither
Kearney nor ARC/INFO discloses the limitations in claim 1 reciting a
“national parcel map database comprising multiple jurisdictional databases
which have been normalized to a common data protocol.” PO Resp. 30–34.
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Petitioner concedes Kearney “does not expressly disclose a national
database.” Pet. 49. Petitioner cites to paragraphs 91 and 92 of the
Goodchild declaration as support for the assertion that one of ordinary skill
in the art “would have found it obvious to implement” Kearney’s system
“for other types of areas, such as those with national-based jurisdictions”
(Pet. 49). Only paragraph 91 refers to Kearney, and that paragraph merely
repeats the language of the Petition without explanation of why one of
ordinary skill would implement the Kearney single-province system on a
national level.
Petitioner then asserts that “employing parcel-level GIS’s for various
types of jurisdictions was known at the time of the alleged invention,
including multiple states, as demonstrated by ARC/INFO,” citing to
paragraphs 90–93 of the Goodchild declaration and fourteen pages of the
ARC/INFO workbook (pages 1-2 through 1-5, 2-3, 2-4, 2-20, D-4, 3-2 to 3-
4, 3-6, 3-8, and 3-24). Pet. 49–50. The fourteen ARC/INFO pages are
excerpts from chapters entitled, “Why GIS?,” “Geographic data concepts,”
and “Starting Your ARC/INFO project,” Ex. 1004. The cited pages of the
ARC/INFO workbook do not disclose or suggest multiple states, much less a
national database, and instead focus on the workbook’s sample project,
which guides new users of the ARC/INFO software in designing a database
to identify sites for an aquaculture laboratory and office building in coastal
farming areas. Ex. 1004, 3-5 to 3-6.
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Paragraphs 92 and 93 of the Goodchild declaration refer to the
ARC/INFO workbook. Paragraph 92 repeats some of the arguments at page
50 of the Petition and largely paraphrases and reproduces figures from
ARC/INFO but also mischaracterizes page 3-6 of ARC/INFO in contending
“the first step in the design of the database is to determine what data to
include, such as the geographic features (e.g., counties, states, parcels, etc.)
and their attributes.” Page 3-6 does mention “the first step of database
design is to determine what data to include in the database . . . identify the
geographic features you need in the database.” Ex. 1004, 3-6. Contrary to
the Goodchild declaration, page 3-6 does not list “counties, states, parcels,
etc.” as geographic features, but rather lists soil conditions, local land use
codes, and purchase cost. Ex. 1004, 3-6. Paragraph 93 of the Goodchild
declaration consists of two sentences, regarding Kearney and alleged design
choice, which do not explain whether or why ARC/INFO discloses, teaches,
or suggests a national database.3
We find that the claimed national parcel map database would not have
been obvious to a person of ordinary skill in the art in view of the

3 We do not consider any of Petitioner’s citations in its Reply or its
Demonstrative slides to excerpts from ARC/INFO that were not cited in the
Petition, or to testimony by Patent Owner’s declarant about such excerpts.
35 U.S.C. § 312; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,767–68 (Aug. 14, 2012).

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combination of Kearney and ARC/INFO, which does not teach or suggest
such a database. The remaining challenged claims depend from claim 1, and
Petitioner thus has not shown that the combination of Kearney and
ARC/INFO discloses, teaches, or suggests the limitations of claims 1–8 and
19. Accordingly, Petitioner has failed to prove by a preponderance of
evidence that these claims would have been obvious over Kearney and
ARC/INFO.
G. Petitioner’s Motion to Exclude Evidence
Petitioner moves to exclude the redirect testimony of Patent Owner’s
expert, Mr. William Huxhold, on the ground that it was provided in response
to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The
redirect testimony relates to a portion of Mr. Huxhold’s cross-examination
testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on
Mr. Huxhold’s testimony, Petitioner’s motion is dismissed as moot.

CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1–10 and 12, 14, 15, and 19 of
the ’957 patent would have been obvious over Harder and Longley, and that
claim 11 would have been obvious over Harder, Longley, and Roy.
Petitioner has not demonstrated by a preponderance of the evidence that
claims 1–8 and 19 would have been obvious over Kearney and ARC/INFO.
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III. ORDER
Accordingly, it is ORDERED that:
Claims 1–12, 14, 15, and 19 of the ’957 patent have been
shown to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

FOR PETITIONER:
Joseph Palys
josephpalys@paulhastings.com

Naveen Modi
naveenmodi@paulhastings.com

Daniel Zeilberger
danielzeilberger@paulhastings.com

FOR PATENT OWNER:
Lawrence Edelman
lawrence.edelman@comcast.net

Bruce Wecker
bwecker@hausfeld.com