Takeaway: A motion to exclude must state why the evidence is inadmissible, identify the corresponding objection in the record, and explain the objection.

In its Final Written Decision, the Board determined that Petitioner has proven by a preponderance of the evidence, that claims 1 and 3-11 of the ’181 patent are unpatentable. The Board had instituted review on the following grounds: (1) claims 1, 3–7, and 9–11 as anticipated under 35 U.S.C. § 102(b) by Di Bernardo, (2) claims 1, 3–7, and 9–11 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Kawabe, and (3) claim 8 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Lachinski. The Board maintained its construction for the term “geographic location of interest” as provided in its Decision on Institution. In addition, the Board stated that no patentable weight would be given to the term “server farm,” and that even if it were to accord patentable weight to the term, the broadest reasonable interpretation would be “a group of networked servers.” As for the means plus function interpretation of claims 7-10, the Board declined to adopt Patent Owner’s interpretation that the corresponding structure is only the algorithm provided in the specification.

Regarding Petitioner’s anticipation challenge based on Di Bernardo, Patent Owner asserted that Di Bernardo teaches away from identifying precisely a “geographic location of interest” because such identification would involve computationally intensive, cumbersome, or inefficient processes. The Board agreed with Petitioner, and stated that a teaching away argument is irrelevant for an anticipation analysis. Further, Patent Owner’s argument relied upon a construction of “geographic location of interest” that the Board did not adopt. Thus, the Board agreed with Petitioner and determined that claim 1 is disclosed and taught by Di Bernardo. As for claims 3-7 and 9-11, the Board agreed with Petitioner that Di Bernardo discloses these claims as well. Thus, the Board concluded that claims 1, 3-7, and 9-11 are anticipated by Di Bernardo.

Turning to Petitioner’s obviousness challenge of claims 1, 3-7, and 9-11, the Board noted that it has already determined that Di Bernardo teaches “geographic location of interest.” Consequently, Patent Owner’s argument that Kawabe does not teach this feature is irrelevant. Further, Patent Owner asserted that Kawabe teaches away from Di Bernardo. The Board noted that a “reference teaches away from a combination when, for example, a person of ordinary skill in the art would be discouraged from following the path set out in the reference, or would be led in a direction divergent from that chosen by the inventor.” The Board agreed with Petitioner that Di Bernardo’s description regarding “dense sampling of images of an object/scene” as being “computationally intensive and hence cumbersome and inefficient,” is not a disparagement of any and all computationally intensive processes. Thus, the Board determined that claims 1, 3-7, and 9-11 of the ’181 patent are unpatentable based on the combination of Di Bernardo and Kawabe.

Finally the Board agreed with Petitioner that claim 8 of the ’181 patent is unpatentable as obvious over Di Bernardo and Lachinski.

Patent Owner filed a Motion to Exclude Evidence under 37 C.F.R. § 42.64, seeking to exclude certain portions of the Declaration of Dr. Fuchs, the rebuttal declaration of Dr. Grindon, and certain exhibits. Patent Owner’s basis for the Motion is for reasons of, inter alia, relevance regarding the Declaration of Dr. Fuchs. Patent Owner objected to Dr. Grindon’s testimony concerning a definition of a person of ordinary skill in the art. A motion to exclude must state why the evidence is inadmissible, identify the corresponding objection in the record, and explain the objection. In this case, the Board stated that Patent Owner had not met its burden to explain adequately its objections to the cited portions of Dr. Fuch’s testimony or Dr. Grindon’s testimony. The Board stated that its Decision did not rely upon the exhibits that Patent Owner moved to exclude; thus, Patent Owner’s request is moot. Thus, the Board denied the Motion to Exclude. As for Patent Owner’s Motion for Observation, the Board also noted that it had considered Patent Owner’s observations and Petitioner’s responses in rendering the Decision.

GOOGLE INC. v. VISUAL REAL ESTATE, INC., IPR2014-01339

Paper 39: Final Written Decision

Dated: January 25, 2016 Patent 7,389,181

Before: Michael R. Zecher, Beverly M. Bunting, and Kevin W. Cherry

Written by: Bunting

Related Proceedings: Visual Real Estate, Inc., v. Google, Inc., No. 3:14-cv-00274-TJC-JRK (M.D. Fla., March 10, 2014); IPR2014-01338.