Boundary Solutions, Inc. v. Corelogic, Inc. , 711 F. App'x 627 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BOUNDARY SOLUTIONS, INC.,
Appellant
v.
CORELOGIC, INC.,
Appellee
______________________
2016-2354, 2016-2355
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00226, IPR2015-00228.
______________________
Decided: October 17, 2017
______________________
BRUCE JOSHUA WECKER, Hausfeld LLP, San Francis-
co, CA, argued for appellant.
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for appellee. Also represented by
NAVEEN MODI, JOSEPH PALYS, DANIEL ZEILBERGER.
______________________
Before PROST, Chief Judge, WALLACH and STOLL, Circuit
Judges.
2 BOUNDARY SOLS., INC. v. CORELOGIC, INC.
WALLACH, Circuit Judge.
Appellant Boundary Solutions, Inc. (“BSI”) appeals
two related inter partes review decisions of the U.S.
Patent and Trademark Office’s Patent Trial and Appeal
Board (“PTAB”) entering judgment in favor of Appellee
CoreLogic, Inc. (“CoreLogic”). The PTAB found claims 1–
12, 14–15, and 19–21 of U.S. Patent No. 7,499,946 (“the
’946 patent”) and claims 1–12, 14–15, and 19 of U.S.
Patent No. 7,092,957 (“the ’957 patent”) (together, “Pa-
tents-in-Suit”) 1 (collectively, the “Asserted Claims”)
obvious over two prior art references. See CoreLogic, Inc.
v. Boundary Sols., Inc. (CoreLogic I), No. IPR2015-00226
(P.T.A.B. May 19, 2016) (J.A. 1–31) (invalidating the
aforementioned claims of the ’946 patent); CoreLogic, Inc.
v. Boundary Sols., Inc. (CoreLogic II), No. IPR2015-00228
(P.T.A.B. May 19, 2016) (J.A. 32–61) (invalidating the
aforementioned claims of the ’957 patent). 2
BSI appeals. 3 We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A) (2012). We affirm.
1 The ’957 patent is the parent of the ’946 patent,
and these Patents-in-Suit share a common specification.
We cite to the ’946 patent when referring to the common
specification.
2 The records in the two inter partes review pro-
ceedings are largely identical. For ease of reference, we
cite to CoreLogic I for findings common to both decisions,
unless otherwise noted.
3 BSI appeals all findings with respect to all As-
serted Claims except claim 20 of the ’946 patent. See
Appellant’s Br. 2 n.1.
BOUNDARY SOLS., INC. v. CORELOGIC, INC. 3
BACKGROUND
I. The Patents-in-Suit
The Patents-in-Suit relate to geographic information
system (“GIS”) technology, specifically disclosing a Na-
tional Online Parcel-Level Map Data Portal (“NPDP”).
See ’946 patent, Abstract. This national repository,
assembled using an “interactive computer implemented
method,” id. col. 15 l. 57, seeks to collect and assemble
already-existing data from hundreds of local government
parcel maps to “provid[e] the first national repository of
parcel data for use by all industry sectors,” id. col. 1
ll. 21–22; see id. col. 1 ll. 13–22. The NPDP uses files
from “original jurisdiction graphic database[s]” that have
been normalized to a single protocol (e.g., shapefile (.shp)
format). Id. col. 7 l. 22; see id. col. 1 ll. 52–56, col. 7 ll. 21–
44.
Independent claim 1 of the ’946 patent is illustrative,
and recites:
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 ac-
quired electronically, comprising:
a. activating a computer terminal;
b. accessing an applications program for
access to the data;
c. accessing a data entry screen and enter-
ing a parcel attribute to call up the parcel
selected;
d. subsequently accessing a multi-state
parcel map database comprising multiple
jurisdictional databases which have been
normalized to a common data protocol;
4 BOUNDARY SOLS., INC. v. CORELOGIC, INC.
e. searching a jurisdiction look up table
associated with the multi-state parcel map
database, said look up table indexed for
identification of the pertinent jurisdiction-
al database, whereby a jurisdictional iden-
tifier 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 sur-
rounding parcel boundary polygons, the
default scale of the displayed map selected
to fill the computer display screen with
parcel boundaries within a selected dis-
tance around the subject parcel, the se-
lected parcel boundary polygon
highlighted, defining both the location and
boundary of the parcel, and associated at-
tribute data for the highlighted parcel dis-
played.
Id. col. 15 l. 57–col. 16 l. 14 (emphases added). 4
II. The Prior Art References
Two prior art references are relevant to this appeal:
(1) Christian Harder, Serving Maps on the Internet:
Geographic Information on the World Wide Web (1998)
(“Harder”) (J.A. 1074–188); and (2) Paul A. Longley et al.,
Geographic Information Systems and Science (2001)
(“Longley”) (J.A. 1206–458). The PTAB found the Assert-
4 The asserted claims of the ’957 patent do not dif-
fer from this illustrative claim for purposes of obvious-
ness. See, e.g., ’957 patent col. 16 ll. 14–43 (claim 1)
(replacing “multi-state map database” with “national
parcel map database” in subpart (d) and adding “numeri-
cal” before “jurisdictional identifier” in subpart (e)).
BOUNDARY SOLS., INC. v. CORELOGIC, INC. 5
ed Claims would have been obvious over Harder in com-
bination with Longley.
A. Harder
Harder discloses web-based GISs where a server re-
ceives requests for parcel information from a client com-
puter, searches a database for the selected parcel
information, and returns the information to the client
computer. See J.A. 1089–90, 1095, 1187–88. Harder also
discloses applications that implement a web-based GIS,
such as a GIS application developed to provide the public
access to a county’s land records database. J.A. 1100.
According to Harder, this application joins tables of tax
records to parcel information, “converts the data to shape-
files,” and “indexes key fields to speed up user-defined
searches.” J.A. 1085, 1105. The application permits a
user to query the system for a parcel map by entering an
address or parcel identification number of the desired
parcel. J.A. 1089, 1102. Geographic and non-geographic
data associated with the selected parcel, such as parcel
owner, tax value, and property value, are retrieved and
transmitted to a client computer for display with the
selected parcel highlighted. J.A. 1102–03. Harder ex-
plains that its processes could be used to select data and
control the “geographic area to be displayed (from
statewide down to the town level).” J.A. 1089.
B. Longley
Longley describes methods of configuring and format-
ting parcel-level data retrieved by GISs from many juris-
dictions and storing it in a database, J.A. 1440–45,
linking the collections of data based on Federal Infor-
mation Processing Standard (“FIPS”) 5 codes or other
5 According to the ’946 patent, the FIPS number is
“used nationally to numerically identify specific county
jurisdictions.” ’946 patent col. 7 ll. 17–18.
6 BOUNDARY SOLS., INC. v. CORELOGIC, INC.
jurisdictional identifiers, see, e.g., J.A. 1443, searching
and accessing the data through, inter alia, indexing
tables, J.A. 1451–52, and maintaining the data in com-
mon formats, J.A. 1439–45. Longley explains that
“[g]eographic databases tend to be very large and, because
of this, geographic queries . . . can take a very long time.”
J.A. 1451. Longley discloses improvements over the prior
art by “speed[ing] up queries” through “index[ing] a
database.” J.A. 1451. To index databases or tables in
grid form, “[t]he grid location(s) of each object is recorded
in a list (the index)” and then “[a] query to locate an object
searches the indexed list first to find the object [in a grid
cell] and then retrieves the object [from the grid cell].”
J.A. 1451.
III. The IPR Proceedings
The PTAB determined, in part, that CoreLogic had
demonstrated by a preponderance of the evidence that
claims 1–10, 12, 14–15, and 19–21 of the ’946 patent, as
well as claims 1–10, 12, 14–15, and 19 of the ’957 patent,
would have been obvious over the combination of Harder
and Longley; and claims 11 of the Patents-in-Suit would
have been obvious over the combination of Harder,
Longley, and a third prior art reference not relevant to
this appeal. J.A. 29, 60. Subparts (d) and (e) of claims 1
of the Patents-in-Suit were the focus of the disputes
regarding claim obviousness. See J.A. 8–10, 14–25, 39–
41, 45–56.
DISCUSSION
BSI argues there is no substantial evidence to support
the PTAB’s determination of obviousness because the
jurisdiction lookup table, “a central limitation” of the
Asserted Claims, “is not present” in the cited prior art.
Appellant’s Br. 1; see id. at 30–46. After articulating the
BOUNDARY SOLS., INC. v. CORELOGIC, INC. 7
applicable standard of review and legal standard, we
address BSI’s argument. 6
I. Standard of Review and Legal Standard
We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo. In re Adler,
723 F.3d 1322, 1325 (Fed. Cir. 2013) (citations omitted).
“Substantial evidence is something less than the weight of
the evidence but more than a mere scintilla of evidence,”
meaning that “[i]t is such relevant evidence as a reasona-
ble mind might accept as adequate to support a conclu-
sion.” In re NuVasive, Inc., 842 F.3d 1376, 1379–80 (Fed.
Cir. 2016) (internal quotation marks and citations omit-
ted). If two “inconsistent conclusions may reasonably be
drawn from the evidence in record, [the PTAB]’s decision
to favor one conclusion over the other is the epitome of a
decision that must be sustained upon review for substan-
tial evidence.” In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.
2002).
6 The PTAB declined to expressly construe various
terms of the Patents-in-Suit. See J.A. 10, 41. BSI con-
cedes that it has abandoned any claim construction ar-
guments. See Oral Arg. at 00:49–1:40,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2354.mp3 (Q: “[O]n appeal you are presenting a new
claim construction argument . . . that requires a special
normalization process . . . . Where in the record did you
raise those positions in front of the PTAB?” A: “Those are
not positions we are taking on appeal. We are not raising
any claim construction issues. There was some confusion
in [our] opening brief. We addressed the issue of the
‘normalization’ element, but it is purely to put in context
the function of the jurisdictional look up table, which is
the only issue we are raising on this appeal.”)
8 BOUNDARY SOLS., INC. v. CORELOGIC, INC.
A patent claim is invalid “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 [(‘PHOSITA’)].”
35 U.S.C. § 103(a) (2006). 7 Obviousness is a legal deter-
mination based on underlying findings of fact. See Adler,
723 F.3d at 1325. Those underlying findings of fact
include (1) “the scope and content of the prior art,”
(2) “differences between the prior art and the claims at
issue,” (3) “the level of ordinary skill in the pertinent art,”
and (4) secondary considerations, i.e., the presence of
objective indicia of nonobviousness. Graham v. John
Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966); see
United States v. Adams, 383 U.S. 39, 50–52 (1966). In
assessing the prior art, the PTAB also “consider[s] wheth-
er a PHOSITA would have been motivated to combine the
prior art to achieve the claimed invention.” In re Warsaw
Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016)
(internal quotation marks, brackets, and citation omit-
ted).
II. Substantial Evidence Supports the PTAB’s
Determinations that the Asserted Claims
Would Have Been Obvious
The PTAB found, inter alia, that CoreLogic estab-
lished by a preponderance of the evidence that the Assert-
7 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the Patents-in-Suit have never contained (1) a
claim having an effective filing date on or after March 16,
2013, or (2) a reference under 35 U.S.C. §§ 120, 121, or
365(c) to any patent or application that ever contained
such a claim, the pre-AIA § 103 applies. See id. § 3(n)(1),
125 Stat. at 293.
BOUNDARY SOLS., INC. v. CORELOGIC, INC. 9
ed Claims would have been obvious over a combination of
Harder and Longley. J.A. 20, 23. BSI avers that neither
Longley nor Harder teach or suggest a “jurisdictional
identifier” as used in conjunction with the claim term
“jurisdiction lookup table.” Appellant’s Br. 42; see id. at
29–46. In its analysis, the PTAB acknowledged the
parties’ agreement that a “jurisdiction lookup table” is a
type of index. See J.A. 17–19; ’946 patent col. 16 ll. 1–3.
The PTAB further defined a “jurisdictional identifier”––
the item used to enter searches in a jurisdiction lookup
table––as “a number or other name, code, or description
that identifies a jurisdiction.” J.A. 9.
Rather than look to whether individual elements of
the Asserted Claims are present in the prior art, the
actual question we must address is whether the PTAB’s
determination, that the “subject matter as a whole” would
have been obvious, 35 U.S.C. § 103(a), is supported by
substantial evidence. “[T]he test for obviousness is what
the combined teachings of the references would have
suggested to [a PHOSITA].” In re Mouttet, 686 F.3d 1322,
1333 (Fed. Cir. 2012) (emphasis added); see In re Keller,
642 F.2d 413, 426 (C.C.P.A. 1981) (“[One] cannot show
non-obviousness by attacking references individually
where . . . the rejections are based on combinations of
references.”). Through this lens, we address BSI’s conten-
tion that the combined teachings of Harder and Longley
do not disclose a “jurisdiction look up table.”
We find that substantial evidence supports the
PTAB’s obviousness conclusion. The Patents-in-Suit
disclose an interactive online method for users to retrieve
geographic parcel maps and related data. See ’946 patent
col. 1 l. 57–col. 2 l. 3. This includes operations such as
“accessing” a “multi-state[/national] parcel map database”
where the database comprises “multiple jurisdictional
databases which have been normalized to a common data
protocol.” See id. col. 15 ll. 65–67; ’957 patent col. 16 ll.
26–28.
10 BOUNDARY SOLS., INC. v. CORELOGIC, INC.
As the PTAB found, a combination of Harder’s teach-
ing that indexing key fields “can speed up searches” with
Longley’s disclosure of “the benefits of indexing geograph-
ic databases” renders the claims of the Patents-in-Suit
obvious. J.A. 17–18 (citing J.A. 1105 (Harder) (“[A]
custom . . . script . . . indexes key fields to speed up user-
defined searches.”), 1440–45 (describing tables and index-
es), 1451 (Longley) (“[A] query to locate an object searches
the indexed list first to find the object and then retrieves
the object . . . for further analysis.”)). Relevant here, the
combination of Harder and Longley discloses the use of a
state FIPS code as the basis for searching through data-
bases to collect information, rendering the “jurisdictional
identifier” feature obvious. See J.A. 1443–44 (Longley)
(utilizing FIPS). Further, while Harder and Longley do
not use the express verbiage “look up table,” their combi-
nation renders obvious the claimed look up table based, in
part, upon the list in Longley’s grid indexing which oper-
ates just like the claimed look-up table. See J.A. 1451
(Longley) (providing that “[t]he grid location(s) of each
object is recorded in a list (the index)” and then “[a] query
to locate an object searches the indexed list first to find
the object [in a grid cell] and then retrieves the object
[from the grid cell]”).
BSI’s counter-arguments are unpersuasive. BSI first
argues that a “jurisdictional identifier” requires a county
FIPS code, which is not disclosed in Harder or Longley.
See Appellant’s Br. 31–34. However, the term as con-
strued requires no specific code. See J.A. 9 (construing
“jurisdictional identifier” as “a number or other name,
code, or description that identifies a jurisdiction” (internal
quotation marks omitted)). The PTAB properly found
that the state FIPS identifier found in Longley was a
jurisdictional identifier. J.A. 19; see J.A. 1440–44
(Longley). BSI offers no explanation for why we should
find a meaningful distinction between a county FIPS code
BOUNDARY SOLS., INC. v. CORELOGIC, INC. 11
and a state FIPS code as related to jurisdictional identifi-
ers. See generally Appellant’s Br.
We do not agree with BSI’s contention that there is
nothing to support a finding that a PHOSITA would be
motivated to combine Harder and Longley. See Appel-
lant’s Br. 29; Reply Br. 22–25. As CoreLogic’s expert,
Michael Goodchild, explained, and the PTAB found per-
suasive, see J.A. 21–22, it would have been obvious to a
PHOSITA to modify the GIS database system of Harder
to use an index for locating jurisdictional identifiers
associated with parcel data in the database as disclosed
by Longley “to more easily manage parcel information
across multiple jurisdictions” and make “searching parcel
data more efficient,” J.A. 416–17. On appeal, BSI avers
that its expert, Mr. William Huxhold, offered more accu-
rate testimony regarding the motivation to combine. See
Appellant’s Br. 32–34. However, we have repeatedly
stated that “[w]e may not reweigh evidence on appeal.”
Warsaw, 832 F.3d at 1333. CoreLogic’s expert testimony,
along with the PTAB’s other findings, is sufficient to
support a conclusion that a PHOSITA would have been
motivated to combine Harder and Longley.
CONCLUSION
We have considered BSI’s remaining arguments and
find them unpersuasive. For these reasons, the Final
Written Decisions of the U.S. Patent and Trademark
Office’s Patent and Trial Appeal Board are
AFFIRMED