Google Inc. and Apple Inc. v. Jongerius Panoramic Technologies, LLC Final Written Decision IPR2013-00191
Monday, August 18, 2014

Takeaway: In a motion to amend, the patent owner must show how each claim element is patentable over each piece of prior art known to it, including the admitted prior art.

In its Final Written Decision, the Board found that all challenged claims (1-6, 10-15, 17-19, 21, 23-25, 27, and 28) of the ’529 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The ’529 Patent relates to computer-simulated or virtual touring of scenes, specifically an interactive system for displaying both a detailed view of an area and a map of the area simultaneously.

The Board began with claim construction, stating that it interprets claims using the broadest reasonable construction in light of the specification. The Board reiterated its claim constructions from the Decision on Institution, which included three claim terms as well as four means-plus-function elements.  The parties only disagreed with one of these constructions, the term “detailed view.”  However, after reviewing the evidence, the Board found no reason to modify the construction from the one it adopted in the Decision on Institution.  Specifically, the Board found that Patent Owner’s construction was unreasonably narrow by limiting the term to photographs or video images, which is not supported by the specification.

The Board then reviewed the ground that claims 1, 4-6, 17, 23, and 28 are anticipated by Chan. Patent Owner argued that Chan does not disclose the recited detailed view based upon its proposed claim construction.  The Board reiterated that it did not adopt the narrow claim construction, and found that Chan does disclose a detailed view.  The Board also found that Patent Owner’s argument that Chan’s in-scene view is not “taken from a predetermined location within said territory” was not commensurate with the scope of the claims because Patent Owner improperly imported additional limitations from the specification into the claims.  The Board also rejected Patent Owner’s argument that Chan does not disclose “a synchronizer.”  Further, the Board disagreed with Patent Owner’s assertion that Chan does not describe the input means of claim 1 because it does not have a zooming feature.  The Board agreed with Petitioner that the claim limitation does not require a zooming feature, and applying the proper construction, Chan discloses the disputed limitation.

Next, the Board reviewed the ground that claims 10 and 13-15 are obvious over Chan and Naughton. Patent Owner argued that the combination of Chan and Naughton does not teach or suggest the detail display means or synchronization means recited in claim 10.  However, the Board found that Patent Owner merely recited the arguments that were rejected regarding the unpatentability of claims 1, 4-6, 17, 23, and 28 based on Chan.  Patent Owner also argued that Petitioner failed to articulate a rationale to combine Chan and Naughton, which Petitioner disputed stating that the motivation to combine was supported by the declaration of its expert.  The Board credited the expert’s testimony, and stated that neither Patent Owner nor Patent Owner’s expert adequately explained why this rationale was not valid.  Patent Owner also asserted that Chan is non-analogous art, but the Board was not persuaded by this argument because it found that Patent Owner’s expert used a narrow definition of the ’529 Patent’s field of endeavor and Chan is reasonably pertinent to the problem addressed by the ’529 Patent, at least with respect to adding a dynamic map view to computer-simulated or virtual tours.

The Board then turned to the grounds that claims 2, 3, 11, 12, 18, 19, 24, and 25 are obvious over Chan, Galitz, and Naughton, and the claims 15, 21, and 27 are obvious over Chan and Prouty. The Board noted again that Patent Owner reiterated the same failed arguments it presented with regard to independent claims 1, 10, 17, and 23.  Patent Owner also argued that as to claims 15, 21, and 27, there is no rationale to combine the disclosures of Chan and Prouty, but the Board was not persuaded by Patent Owner’s evidence because it would have been obvious for one of skill in the art to replace the outside scene of Chan with the inside scene of Prouty when navigating through a building.

The Board next addressed the ground that claims 1, 4, 5, 17, 21, 23, and 27 are anticipated by Wei. Patent Owner argued that Wei does not describe “a display that can display a map of a territory and a detailed view of an area within said territory,” as recited in claim 1.  The Board found that Patent Owner’s arguments are not commensurate with the claim scope because they are dependent on the incorrect assumption that the claim language requires that both the map and detailed views be displayed simultaneously.  Further, the Board noted that the disclosure supports Petitioner’s position that the directional indicator and the panoramic scene are displayed on the same computer monitory or display.  Patent Owner also argued that Wei is not enabling prior art, but the Board disagreed, finding that prior art publications and patents are presumed to be enabled and Patent Owner had not proffered persuasive evidence to rebut the presumption.  Patent Owner further argued that Wei does not disclose a synchronizer as recited in claims 17 and 23; however, the Board disagreed stating that Patent Owner’s arguments focused narrowly on one feature and functionality of Wei while ignoring the others.

Next, the Board discussed the grounds that claims 2, 3, 10-15, 18, 19, 21, 24, and 25 are obvious over Wei and Naughton, and claims 6 and 28 are obvious over Wei and Dykes. The Board noted that with respect to these claims, Patent Owner reiterated its failed arguments made against anticipation based on Wei.  The Board again rejected those arguments.

The Board then turned to the Motion to Amend, which proposed substitute claims 29 and 30 for challenged claims 24 and 23, respectively. The Board stated that the burden of proof is on Patent Owner to establish that it is entitled to the relief requested by showing by a preponderance of the evidence that the substitute claims are patentable.  The Board began with claim construction, and rejected Patent Owner’s construction of “map display” as improperly importing limitations from the specification into the claims and rendering other claim language superfluous.  Patent Owner again presented its construction of “detailed view,” but the Board again rejected it and applied the same construction as in the challenge to the original claims.  The Board then noted that Patent Owner introduces several new terms in its substitute claims without providing any proposed constructions for those terms.  Therefore, the Board found that Patent Owner did not provide adequate information for it to determine whether Patent Owner had demonstrated the patentability of its substitute claims over the prior art.

The Board then noted that a motion to amend must identify clearly the written description support for each proposed claim, including support for the entire proposed claim, not just for each claim feature. The Board noted that Patent Owner failed to do so and that it was not persuaded that Patent Owner had provided adequate written description support for all the new claim features.  Specifically, the Board did not think that the disclosure of imperfections in the images was sufficient to describe “the synchronizer . . . resizes the sector simultaneously with a change in the area displayed in the detailed view.”

Next, the Board addressed the patentability of the substitute claims over the prior art, stating that the patent owner bears the burden of demonstrating patentability over the prior art in general. The Board found that Patent Owner had not addressed in any meaningful way what was previously known in the art or the level of ordinary skill in the art regarding each added claim feature.  Patent Owner only argued over the art discussed in the challenged grounds, but did not discuss its own admitted prior art.

Finally, the Board discussed Patent Owner’s Motion to Exclude Petitioner’s expert declaration filed with the Petition, the cross-examination testimony of Patent Owner’s expert regarding Dykes, and Petitioner’s expert declaration filed with the Opposition to the Motion to Amend. Regarding the expert declaration in support of the Petition, Patent Owner alleged that it should be excluded because the expert did not expressly interpret the term “detailed view” and did not base his testimony concerning Chan on the construction set forth in the Decision on Institution, and was therefore irrelevant.  The Board agreed with Petitioner that Patent Owner did not timely object to the testimony and denied the Motion as to that aspect.  Regarding the cross-examination of its own expert, Patent Owner argued that it exceeded the scope of his direct testimony.  Petitioner stated that it neither commented upon nor relied upon the cross-examination testimony in any of its papers and the Board agreed, denying the Motion as to that aspect.  Finally, regarding the Motion to Exclude Petitioner’s expert declaration in support of its Opposition to the Motion to Amend, the Board noted that it did not consider the Opposition in denying the Motion to Amend and denied as moot the Motion to Exclude as to that aspect.

Google Inc. and Apple Inc. v. Jongerius Panoramic Technologies, LLC, IPR2013-00191
Paper 70: Final Written Decision
Dated: August 12, 2014
Patent 6,563,529 B1
Before: Karl D. Easthom, Joni Y. Chang, and Michael R. Zecher
Written by: Chang
Related Proceeding: Jongerius Panoramic Technologies, LLC v. Google, Inc., No. 12-03798-YGR (N.D. Cal.)

 

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