7,577,316 B2 et al.

Patent Trials and Appeals Board

Dec 16, 2021

2018007271 (P.T.A.B. Dec. 16, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,683 08/17/2012 7,577,316 B2 13557-105153.R2 1052
23363 7590 12/16/2021
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/16/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.
Requester,

v.

Patent of VEDERI, LLC.
Patent Owner.
____________

Appeal 2018-007271
Reexamination Control 95/000,683
Patent 7,577,316 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and ERIC B. CHEN,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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STATEMENT OF THE CASE
This proceedings involves U.S. Patent No. 7,577,316 B2 (“the ’316
patent), which expired on January 11, 2021. Dec. 2.1 This proceeding is
also related to Reexamination Control Nos. 95/000,681, 95/000,682, and
95/000,684, involving U.S. Patent Nos. 7,805,025 B2, 7,239,760 B2, and
7,813,596 B2 respectively, all of which have also expired.
This proceeding returns to the Board on remand from the Court of
Appeals for the Federal Circuit, which vacated previous Board decisions for
this proceeding mailed August 15, 2016 and September 28, 2018. Vederi,
LLC v. Google LLC, 813 F. App’x 499, 501, 505 (Fed. Cir. 2020); see Dec.
2. On remand, another panel2 rendered a Decision on Appeal (“the June
2021 Decision”) on June 1, 2021, (1) reversing the rejections of claims 13
and 18–24 based on various references, including Dykes,3 Al-Kodmany,4

1 Throughout this Opinion, we refer to: (1) the Request for Inter Partes
Reexamination (“Request”) filed August 20, 2012, (2) the Right of Appeal
Notice (RAN) mailed September 24, 2013, (3) the Patent Owner’s Appeal
Brief (PO Appeal Br.) filed December 24, 2013, (4) the Requester’s Appeal
Brief (3PR Appeal Br.) filed September 8, 2014, (4) the Board’s Decision
mailed June 1, 2021 (“Dec.”), (10) Patent Owner’s Request for Rehearing
(“Req. Reh’g”) filed July 1, 2021, and (11) Requester’s Comments in
Opposition to Patent Owner’s Request for Rehearing (“3PR Comments”)
filed August 2, 2021.
2 The panel included Judges Pothier, Chen, and Branch.
3 J. Dykes, An Approach To Virtual Environments For Visualization Using
Linked Geo-referenced Panoramic Imagery, 24 Computers, Env’t & Urb.
Sys. 127–52 (2000) (“Dykes”).
4 Kheir Al-Kodmany, Using Web-Based Technologies and Geographic
Information Systems in Community Planning, 7 J. Urb. Tech. 1–31 (2000)
(“Al-Kodmany”).
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Bates,5 Yee,6 Murphy,7 and Shiffer,8 and (2) entering a new ground of
rejection under 37 C.F.R. § 41.77(b) for claims 13 and 18–24 based on Yee,
Lachinski,9 and Dykes under 35 U.S.C. § 103(a). Dec. 4, 22–41.
In response to the new ground, Patent Owner requested rehearing
under 37 C.F.R. § 41.79 (“Request for Rehearing”) on July 1, 2021.
Requester responded with comments pursuant to 37 C.F.R. § 41.79(c) (“3PR
Comments”) on August 2, 2021.
We have reconsidered the Decision in light of Patent Owner’s
contentions in the Request for Rehearing. Patent Owner sets forth reasons
why the earlier panel allegedly misapprehended or overlooked points in
entering the new ground of rejection. As discussed below, we maintain the
determinations made in the June 2021 Decision.

DISCUSSION
“The request for rehearing must address any new ground of
rejection and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of rejection

5 Nada Bates-Brkljac & John Counsell, Issues in Participative Use of an
Historic City Millennial Web Site, IEEE Proc. Int’l Conf. Info. Visualization
119–25 (2000) (“Bates”).
6 Frank Yee, GPS & Video Data Collection In Los Angeles County: A Status
Report, Position Location And Navigation Symposium, Proc. IEEE Position
Location and Navigation 388–93 (1994) (“Yee”).
7 U.S. 6,282,362 B1, issued Aug. 28, 2001 (“Murphy”).
8 Michael J. Shiffer, Augmenting Geographic Information with
Collaborative Multimedia Technologies, 11 Proc. Auto Carto. 367–76
(1993) (“Shiffer”).
9 U.S. 5,633,946, issued May 27, 1997 (“Lachinski”).
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and also state all other grounds upon which rehearing is sought.” 37
C.F.R. § 41.77(b)(2) (2020); see also 37 C.F.R. § 41.79(b)(1) (2020).
Patent Owner argues that the June 2021 Decision does not construe
several terms in the claims of the ’316 patent under their ordinary and
customary meanings. Req. Reh’g 2. These terms include “a composite
image” in claims 13, 18, and 23 (id. at 2–8) and “an arbitrary address” in
claim 20 (id. at 8–13). Patent Owner also asserts that: (1) Yee alone or Yee
and Dykes in combination do not disclose “a composite image” in claims 13,
18, and 23 (id. at 13–19), (2) Yee, Lachinski, and Dykes do not teach the
recited “arbitrary address” in claim 20 (id. at 19–21), and (3) Yee and
Lachinski do not teach the limitations in claim 21 (id. at 21–23).
Requester disagrees. See generally 3PR Comments 2–12. We
address each of Patent Owner’s contentions below.

ANALYSIS
I. Claim construction
A. “[A] composite image” in claims 13, 18, and 23
The phrase “composite image” is found in claims 13, 18, and 23, each
of which ultimately depends from canceled independent claim 1. The ’316
patent 16:37–38, 16:56–57, 17:14–15. In the June 2021 Decision, the Board
found this phrase means “a single image that may be created by comb[in]ing
or uniting image data . . . .” Dec. 18–29.
Patent Owner asserts that the phrase “composite image,” as defined in
the June 2021 Decision, is “unclear” because “it does not define what is
meant by ‘single image.’” Req. Reh’g 3. Patent Owner argues that “single
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image,” consistent with the ’316 patent’s Specification, “would be
understood to refer to a single image that is created by uniting those multiple
image frames into a single image.” Id. Patent Owner further argues that “a
composite image” “[a]s used in the Vederi patents” (1) “depicts a single new
view of the objects in the geographical area” (id. (citing the ’316 patent,
5:54–61, 9:10–21)), (2) “[t]he single new view is different from any of the
views depicted in any one of the individual image frames prior to forming
the composite image” (id. (citing the ’316 patent 2:37–39, 5:47–51)), and (3)
“would not encompass a collage of disparate images,” including “a two-by-
two grid of views of four different participants on a video conference” (id. at
7–8). For support, Patent Owner quotes and cites to various passages of the
’316 patent. See id. at 3–7 (quoting the ’316 patent, Abstract, 1:27–57,
2:10–12, 2:19–20, 2:33–39, 3:46–49, 5:45–51) (citing the ’316 patent 2:37–
39, 3:54–57, 5:47–51, 5:54–6:5, 9:10–21) (reproducing the ’316 patent, Fig.
16; Provisional Application No. 60/238,490, Fig. 11). Patent Owner
concludes that “composite image,” under Phillips10 and consistent with the
’316 patent, “refers to a single image created by combining different image
data or by uniting image data[,] where the single image provides a single
view.” Id. at 8.
Requester asserts Patent Owner’s arguments were previously rejected
by the Board and the Federal Circuit. See 3PR Comments 2–4 (citing
Vederi, 813 F. App’x at 503; Dec. 16; the ’316 patent 5:66–6:1).
Additionally, Requester asserts Patent Owner is attempting to limit the

10 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
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phrase “composite image” “to cover only narrow preferred embodiments in
the specification.” Id. at 4 (citing Dec. 17).
The Board gave the claim recitations in the ’316 patent “‘their
ordinary and customary meaning’ as would have been understood by ‘a
person of ordinary skill in the art in question at the time of the invention.’”
Dec. 9 (quoting Phillips, 415 F.3d at 1312–13); see id. at 16 nn.11–13
(addressing the term “composite”) (citing Merriam-Webster’s Online
Dictionary (11th ed.)). Additionally, the Board stated “[c]laims ‘must be
read in view of the specification, of which they are a part’” and that “the
specification ‘is always highly relevant to the claim construction analysis.’”
Id. at 9 (quoting Phillips, 415 F.3d at 1315 (citations omitted)). Consistent
with these principles, the Board considered how the Specification describes
a “composite image” in arriving in its claim construction. See id. at 15–16
(citing the ’316 patent, Abstract, 2:20–22, 2:33–35, 3:46–49, 5:45–47, 5:66–
6:15).
We further considered and gave appropriate weight to the Federal
Circuit’s construction of the phrase “composite image,” which agreed with
the Board’s claim construction of “a composite image.” Id. at 16–17
(quoting Vederi, 813 F. App’x at 503). Notably, the Federal Circuit rejected
Vederi’s proffered
narrowing construction that would limit “composite image” to
“a new image, created by processing pixel data of a plurality of
image frames, that depicts a single new view (from a single
location) of the objects in the geographical area that is different
from any of the views depicted in any one of the image frames
from which the composite image is created.”

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Vederi, 813 F. App’x at 503; see also Dec. 17 (quoting Vederi, 813 F. App’x
at 503).
We thus disagree that the Board overlooked or misapprehended an
argument that the phrase a “composite image” in claims 13, 18, and 23 was
construed inconsistent with the ’316 patent or its plain and ordinary meaning
as an ordinarily skilled artisan would have understood.
B. “[A]n arbitrary address” in claim 20
Claim 20 depends from canceled independent claim 1 and recites, in
pertinent part, “the first location specified by the first user input is an
arbitrary address entered via the first user input . . . .” The ’316 patent,
16:62–64. Regarding this recitation, the June 2021 Decision stated “one
ordinary meaning of ‘arbitrary’ includes those based on the user’s preference
or convenience.” Dec. 20. We further “determine[d] ‘an arbitrary address
entered via the first user input,’ as claim 20 recites, can be various addresses,
including an assigned address and an address selected from a group
associated with tagged images.” Id. at 21.
Patent Owner contends that the term “arbitrary address” in claim 20
should have its ordinary and customary meaning under Phillips and
consistent with the Specification. Req. Reh’g 8. Patent Owner argues the
ordinary meaning of “‘arbitrary address’ means ‘any potential addresses
(assigned and unassigned) in the geographic area, not preselected or
constrained by the system.’” Id. For support, Patent Owner cites to a
dictionary definition and the ’316 patent, as well as providing hypothetical
examples. Id. at 9 n.1 (citing Arbitrary, The American Heritage®
Dictionary, available at
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https://www.ahdictionary.com/word/search.html?q=arbitrary (defs. 1 and 2)
(“adj. 1. Determined by chance, whim, or impulse, and not by necessity,
reason, or principle: stopped at the first motel we passed, an arbitrary
choice. 2. Based on or subject to individual judgment or preference: The diet
imposes overall calorie limits, but daily menus are arbitrary”)); see id. at 9–
13 (citing the ’316 patent, 2:45–49, 6:37–47, 7:15–20, 11:4–12, 13:21–
14:14; Dec. 19–20). Patent Owner also argues that its construction “does
not intend to exclude assigned addresses.” Id. at 20. Patent Owner further
asserts “[t]he district court” construed this term “to mean ‘assigned and
unassigned addresses.’” Id. at 8.
Requester determines the Board’s construction that “an ordinary
understanding of ‘arbitrary address’ includes an address selected by users
based on their preferences or convenience” is correct and confirmed by
Patent Owner’s definition. 3PR Comments 9 (citing Dec. 20; Req. Reh’g 9
n.1). Requester contends that “Patent Owner raised the same narrow claim
construction with the Board, and the Board rejected Patent Owner’s
proposed construction and related arguments.” Id. at 8 (citing Aug. 15, 2016
Decision 13–14, 22–23 (vacated)). Requester asserts the ’316 patent does
not use the phrase “unassigned address” and does not discuss “the address is
arbitrary, unassigned, or unconstrained by the system” or “any potential
address, unassigned, or ‘not preselected’ as argued by Patent Owner.” Id. at
8. Requester states the ’316 patent refers to “‘an arbitrary address’ as
including an address selected from a group of addresses.” Id. (citing the
’316 patent 11:45–46, 12:20–26, 12:32–35, 13:21–24.). Requester also
states “the ’316 patent discusses entering ‘an address of the location’—
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rather than some random address—and returning a map corresponding to the
address.” Id. (citing the ’316 patent 11:45–46). Requester further notes
Patent Owner “fails to provide any citation or other support for that
proposition” of the district court’s adopted construction for “an arbitrary
address.” Id. at 9 (citing Req. Reh’g 8; Aug. 15, 2016 Dec. 14).
Patent Owner repeats many of the arguments made in its Appeal Brief
and previously. For example, Patent Owner argues that “an arbitrary
address” in claim 20 means “any potential addresses (assigned and
unassigned) in the geographic area, not preselected or constrained by the
system.” Req. Reh’g 8; see PO Appeal Br. 21 (arguing the same). The June
2021 Decision considered and addressed this argument. Dec. 19–20; see
also August 2016 Decision 22–23 (now vacated). Additionally, Patent
Owner argued that “the district court” adopted a similar construction. Req.
Reh’g 8 (stating the court found “‘an arbitrary address’ to mean ‘assigned
and unassigned addresses’”); see PO Appeal Br. 21–22 (arguing the same).
The June 2021 Decision considered and addressed this argument. Dec. 21
(indicating Patent Owner provided no “supporting evidence” for this
assertion). In the Request for Rehearing, Patent Owner does not provide any
further evidence of the court’s findings. See Req. Reh’g 8; see also 3PR
Comments 9 (noting Patent Owner “fails to provide any citation or other
support for that proposition [of the purported court’s construction for ‘an
arbitrary address’].”). As yet a third example, Patent Owner asserts the ’316
patent describes entering an address “regardless of whether that address
actually exists.” Req. Reh’g 10 (citing the ’316 patent 13:21–14:14); see PO
Appeal Br. 23 (arguing the same). The June 2021 Decision considered and
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addressed this argument. Dec. 20 (indicating the cited passages do not
describe what Patent Owner asserts). As such, we did not overlook these
points in entering the new ground of rejection for claim 20 based on Yee,
Lachinski, and Dykes.
Patent Owner also repeats that an ordinary meaning of “arbitrary”
means “arbitrary something” and that this “refers to any member of a set of
potential or possible ‘somethings.’” Req. Reh’g 9; see PO Appeal Br. 22
(asserting the same). The Board considered this argument in the June 2021
Decision, but found that an ordinary meaning of “arbitrary” includes “those
based on the user’s preference or convenience” (Dec. 20; id. at 20 n.14
(citing Arbitrary, Merriam-Webster Online Dictionary, available at
https://www.merriam-webster.com/dictionary/arbitrary (def. 1b) (defining
“arbitrary” as “based on or determined by individual preference or
convenience rather than by necessity or the intrinsic nature of something”)))
and thus, “an ordinary understanding of ‘arbitrary address’ includes an
address selected by users based on their preferences or conveniences.” Id.
at 20; see id. at 20–21.
In the Request for Rehearing, Patent Owner introduces another
definition of “arbitrary” to include “1. Determined by chance, whim, or
impulse, and not by necessity, reason, or principle: stopped at the first motel
we passed, an arbitrary choice” and “2. Based on or subject to individual
judgment or preference: The diet imposes overall calorie limits, but daily
menus are arbitrary.” Req. Reh’g 9 n.1 (citing Arbitrary, The American
Heritage® Dictionary, available at
https://www.ahdictionary.com/word/search.html?q=arbitrary (defs. 1 and
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2)). Some of this definition (e.g., “[b]ased on or subject to individual
judgment or preference”) is similar to that presented in the June 2021
Decision (e.g., “based on the user’s preference or convenience” (Dec. 20)).
As such, we did not misapprehend the ordinary meaning of “arbitrary” and
thus, the ordinary meaning of “arbitrary address” found in claim 20.
Importantly, the June 2021 Decision (as well as the vacated August
2016 Decision) considered various passages in the ’316 patent, indicating
that the ’316 patent “does not discuss arbitrary addresses” (Dec. 19), “does
not mention that the address is arbitrary or unassigned by the system” (id. at
19; see id. at 19–20 (citing the ’316 patent 11:45–46)), “does not describe
selecting a potential address without one-to-one correspondence” (id. at 20
(citing the ’316 patent 2:45–49)), and “do not describe a user entering an
address ‘regardless of whether that address actually exists’” (id. (quoting PO
Appeal Br. 23) (citing the ’316 patent 13:21–14:14)). See id. at 19–20
(further citing the ’316 patent 7:15–20, 12:20–22, 12:32–35, 13:23, 13:28–
29). Patent Owner quotes and discusses these and other passages to support
its proposed construction. See Req. Reh’g 9–13 (citing the ’316 patent
2:45–49, 6:37–47, 7:15–20, 11:4–12, 13:21–14:14). But, most of these
passages were considered and support the Board’s construction in the June
2021 Decision. See Dec. 19–20; see also Aug. 2016 Decision 23 (vacated)
(citing and considering the ’316 patent 11:45–46, 12:20–26, 12:32–35,
13:21–24). These arguments thus were not overlooked. Indeed, as the June
2021 Decision states, the cited passages in the ’316 patent merely describe
“entering ‘an address of the location’—not some random address—and
returning a map corresponding to the address.” Dec. 20 (citing the ’316
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patent 11:45–46, 12:20–22, 12:32–35, 13:21–24); see also Aug. 2016
Decision 14 (vacated) (stating the same).
We add that the ’316 patent states “the image database contains
substantially all of the static objects in the geographic area allowing a user to
visually navigate the area from a user terminal” (the ’316 patent 2:45–48)
and does not address “the ability to select any potential address within a
geographic area,” “the ability to . . . view that address without one-to-one
corresponding street images,” or the meaning of “an arbitrary address”
contrary to Patent Owner’s contentions. Req. Reh’g 9; see id. at 9–10.
Moreover, contrary to Patent Owner’s assertions (Req. Reh’g 11–13), the
’316 patent description of (1) segmenting a trajectory of captured images
into street segments, (2) associating them with number range (the ’316
patent 6:37–47), and (3) using an offset value to correct computed street
numbers (the ’316 patent 11:4–12) do not address what a user inputs into its
system and in particular, whether the input is “an arbitrary address” as claim
20 recites. Similarly, the ’316 patent discussion of “the desired street
number” (see the ’316 patent 14:8–14) does not indicate that this number is
“an ‘arbitrary address’” as argued. See Req. Reh’g 13.
Notably, even the hypothetical presented by Patent Owner (e.g.,
asserting that an “arbitrary number” is “any number between 1 and 100” to
support that “an arbitrary address” includes “each member of the set” (Req.
Reh’g 9)) has been previously considered by the Board. See Aug. 2016
Decision 23–24 (vacated). Entering or inputting the number “70” of an
existing street address, for example, is still one of the possible numbers in
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Patent Owner’s hypothetical. We thus did not misapprehend the meaning of
“an arbitrary address” consistent with the ’316 patent.
Lastly, Patent Owner argues that its construction for “arbitrary
address” in claim 20 “does not intend to exclude assigned addresses.” Id. at
20. Yet, when discussing the prior art, Patent Owner argues that Yee fails to
teach “an arbitrary address” because “Yee is silent with regard to how the
system will react to the entry of street addresses that are not tagged.” Id. As
such, Patent Owner implicitly argues either that “an arbitrary address” is one
that is not tagged (e.g., excluding an assigned address) or must encompass
multiple addresses (e.g., all possible addresses). See id. at 9. Neither of
these proposed constructions is consistent with an ordinary meaning of an
“address” when considering the ’316 patent.
In sum, we disagree that the Board overlooked or misapprehended an
argument that the phrase “an arbitrary address” in claim 20 was construed
inconsistent with the ’316 patent or its plain and ordinary meaning as an
ordinarily skilled artisan would have been understood. We maintain that “an
arbitrary address” can be various addresses, including those based on the
user’s preference or convenience, and can be an assigned address or an
address selected from a group associated with tagged images.

II. New ground based on Yee, Lachinski, and Dykes
Background
The June 2021 Decision presented a new ground of rejection for
claims 13 and 18–24 under 35 U.S.C. § 103(a) based on Yee, Lachinski, and
Dykes. See Dec. 22–40. Patent Owner argues claims 13, 18, and 23 as a
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group, claim 20 individually, claims 21–24 as a group, and the remaining
claims as a group. See Req. Reh’g 13–23. We address each of these
groupings below.
A. Claims 13, 18, and 23
As previously discussed, claims 13, 18, and 24 recite “a composite
image.” The ’316 patent 16:37–38, 16:56–57, 17:14–15. Each claim thus
includes the discussed “composite image” addressed above in Section I.A.
The June 2021 Decision determined that Yee, Lachinski, and Dykes teach
this recitation found in claims 13, 18, and 23. Dec. 24–31.
Patent Owner argues that Yee alone or Yee and Dykes in combination
do not disclose the recited “composite image.” Req. Reh’g 13–17. Patent
Owner specifically argues that “Yee does not clearly disclose ‘composite
images’ in accordance with the proper construction . . . under the Phillips
standard.” Id. at 14.11 We disagree.
As stated in the June 2021 Decision,
Yee addresses collected data made available with its product.
Yee 389. The data includes provided various views, including
“curbside view, front and back,” “street view, front and back,”
“real estate view left and right,” “real estate and addresss [sic]
zoom, 4-view,” and “composites of them.” Id. Yee explicitly
discloses “composites” (id.); and “them” refers back to the
other discussed views, including a curbside view, a street view,

11 As addressed in Section I.A, we determined that the phrase “composite
image” consistent with the ’316 patent and its plain and ordinary meaning is
“a single image created by combining different image data or by uniting
image data” and that “a single image” does not have to be a new image that
depicts a single new view from a single location that is different from any of
the views.
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and a real estate view. Thus, Yee teaches creating “composites”
of these various views.

Dec. 25–26; see also 3PR Comments 4 (stating “Yee explicitly used the term
‘composite’ in its disclosure.”); id. at 4–5 (quoting Yee 389).
Regarding the GeoSpan Brochure12 (Req. Reh’g 14–15), Patent
Owner asserts the brochure’s “composite view” “clarifies the meaning of
‘composite of them’ as the term was used in Yee and rebuts the
characterization of Yee as allegedly disclosing a ‘composite image’ as the
term” should be construed. Req. Reh’g 15; see id. (reproducing the image in
the GeoSpan Brochure on GEO_0000173). Patent Owner further asserts
“there is no other evidence cited from the record associated with [the] Yee
reference (e.g., related to the work by the GeoSpan Corporation) that uses
the word ‘composite’ or variants thereof.” Id. at 15; see also id. at 16.
Patent Owner further asserts that the GeoSpan Brochure’s “composite
view,” and thus, Yee’s “composite of them” (Yee 389) “shows four images,”
not “a single image.” Id. at 16.
The reproduced image in the Request for Rehearing (Req. Reh’g 15)
is described as a “4-way Composite View” (id. (emphasis added)), whereas
Yee describes the “4-view” as a separate view from the “composite of
them.” Yee 389; see also Dec. 26 (stating “the language ‘composite of
them’ in Yee is separate from the ‘4-view’”) (citing Yee 389); 3PR
Comments 5 (noting the same). Also, although “GeoVista” and “GeoSpan”

12 DRIVE AROUND TOWN ON YOUR PC WITH GEOVISTA, VISUAL
GEOGRAPHIC INFORMATION, GEO_0000172–177 (Exhibit A) (“the GeoSpan
Brochure”). Patent Owner assert this reference was included in its January
8, 2013 Reply “as Appx1332.” Req. Reh’g 14.
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are discussed in Yee (see, e.g., Yee 388, 392), there is insufficient evidence
that the “4-way” view in the GeoSpan Brochure demonstrates the only
possible 4-view that Yee creates. See Dec. 27 (noting “the described
GeoSpan Brochure is just one image example of data acquired by GeoSpan
Corporation discussed in Yee”); see 3PR Comments 5 (noting the same).
Also, despite Lachinski13 failing to use the word “composite” (Req.
Reh’g 14), the Board found that Lachinski provides insight as to what Yee’s
“4-view” may encompass. First, Lachinski is a patent issued to GeoSpan
Corporation on May 27, 1997. Second, “GeoSpan” and a “4-view” are
discussed in Yee. See Yee 388–89. Third, the June 2021 Decision indicates
there are similarities between Yee and Lachinski. See Dec. 27–28 (citing
Yee 392; Lachinski 5:25–31, Fig. 3). As stated, Lachinski’s teaching:
supports that the “4-view” discussed in Yee (Yee 389) is
produced as a single image that combines four reduced images,
one in each of four comers that is reduced in size. Lachinski
5:25-31; Fig. 3.
. . .
Moreover, Yee teaches that data from the four images,
which include their pixel data, are used to create the reduced-
sized images. Each of the “four views in a frame” discussed in
Yee (Yee 392) or the “single video image” with four-views,
each one-fourth of its original size that form “reduced images,”
as further explained in Lachinski (Lachinski 5:25-31), is a
single image that is made up of different parts or image frames
(e.g., image data from multiple views) . . . .

13 Lachinski was previously introduced into the record and was permitted
under § 1.948(a)(2). See 3PR Appeal Br. 11 n.1.

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Dec. 28 (emphases added); see also 3PR Comments 5 (stating “[a]nother
example of a 4-view of Yee, as further explained in Lachinski,[] includes a
single image made out of four reduced size images”) (omitting footnote)
(citing Yee 392; Lachinski 5:25-31, Fig. 3)).
Lastly, Patent Owner’s arguments (Req. Reh’g 13–17) overlook the
June 2021 Decision’s further discussion of Dykes teachings in this regard.
The June 2021 Decision additionally states:
Yee is not deficient in teaching “a composite image” as claims
13, 18, and 23 recite. Nonetheless, presuming, without
agreeing, that Yee and Lachinski do not teach the recited
“composite image,” Dykes teaches another known technique for
creating “composites” by combining and uniting images (e.g.,
stitching) to produce a panoramic image. Dykes 132–36, Fig.
2. When substituting one known element for another known in
the art (e.g., [substituting] Yee’s composite technique for
Dykes’ panoramic technique of forming a composite), “the
combination must do more than yield a predictable result.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Dec. 30–31; see also id. at 24 (adopting the Requester’s findings and
conclusions, which discuss both Yee and Dykes). The new ground of
rejection therefore relies on both Yee and Dykes’s teachings collectively to
arrive at the claimed “composite image” found in the claims.
Accordingly, we are not persuaded that the rejection fails to
demonstrate that Yee, Lachinski, and Dykes teach or suggest “a composite
image” as recited in claims 13, 18, and 23, such that the Board
misapprehended or overlooked any point in the newly presented ground.

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B. Reason with rational underpinning for combining Yee and Dykes
Patent Owner “submits that it is unclear why one of skill in the art
would have combined the cited Yee and Dykes . . . to arrive at ‘composite
image’ as properly construed under the Phillips standard.” Req. Reh’g 17;
see id. at 17–19 (quoting Dec. 4014; Dykes 135) (reproducing Dykes, Fig. 2).
Patent Owner argues that (1) Dykes requires that there be a “small overlap”
between images, (2) Yee does not disclose the “small overlap” feature
allegedly required by Dykes, and (3) it is not clear how Yee would be
suitable for Dykes’s stitching feature. Id. at 19.
We are not persuaded. As the Court states, “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). As proposed (see Dec. 24, 29–30), combining
Yee and Dykes to arrive at a “composite image” (e.g., a panoramic image) is
no more than the simple substitution of one known element (e.g., Yee’s
“composites of them” (Yee 389)) for another (e.g., Dykes’s composite image
arrived at by stitching images together (Dykes 132–36, Fig. 2)) or “the mere
application of a known technique to a piece of prior art ready for the
improvement.” KSR, 550 U.S. at 417; see also Dec. 29–30.
Moreover, Patent Owner does not demonstrate adequately that the
proposed combination would not yield the predictable result of “a composite
image” as claims 13, 18, and 23 recite. See Req. Reh’g 17–19. As
Requester indicates (see 3PR Comments 6–7), Yee captures many images,

14 The quoted passage on page 40 was not located.
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which would encompass the coverage needed to create Dykes’s panoramic
images. See id. at 7 (citing Yee 391) (noting Yee teaches 10 cameras
capturing 63-degree horizontal, angled views). We agree with Requester
that Yee teaches or at least suggests to an ordinarily skilled artisan that some
of its images would contain the overlap discussed in Dykes’s stitching
techniques (see Dykes 135) as evidenced by (1) the front, back, left, right,
curbside, street, real estate, and address views (see Yee 389, 391) and (2)
collecting data “looking globally” and “comprehensively” to “ensure[] no
object is lost behind an obstruction” (id. at 390).
For the reasons discussed above, we are not persuaded that the
rejection fails to provide a reason with a rational underpinning to combine
Yee and Dykes to arrive at the claims at issue, such that the Board
misapprehended or overlooked a point in the newly presented ground.
C. “[A]n arbitrary address” in claims 20
Claim 20 depends from claim 1 and further recites in relevant part,
“the first location specified by the first user input is an arbitrary address
entered via the first user input . . . .” The ’316 patent, 16:62–64. The June
2021 Decision found this recitation was taught by Yee and Lachinski. See
Dec. 32–36 (citing Yee 391–92; Lachinski 16:63–66, 17:15–21).
Patent Owner argues that “Yee is silent with regard to how the system
will react to the entry of street addresses that are not tagged, and therefore
this portion of Yee does not appear to disclose an ‘arbitrary address.’” Req.
Reh’g 20 (citing Dec, 35; Yee 392). Patent Owner also asserts pointing to a
road segment or a location on a map does not specify “an arbitrary address.”
Id. (citing Dec. 35; Yee 391–92). Patent Owner further contends Lachinski
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does not disclose entering an arbitrary address but rather only that an address
can be parsed, and it is unclear to an ordinarily skilled artisan if the disclosed
address parsing in Lachinski “may refer to other operations for converting
the user entry into a ‘standard address.’” Id. at 21; see also id. at 20–21
(citing Dec. 36; Lachinski 16:33–35, 16:63–66).
Requester disagrees. 3PR Comments 9–11.
Based on our construction of “an arbitrary address” in Section I.B, “an
arbitrary address” includes an address based on the user’s preference or
convenience and can be include an assigned address or an address selected
from a group associated with tagged images. As such, Yee’s Visual
Interface System (VIS), which retrieves images based on a user entering a
street address or selecting a road segment or specific location on a map (e.g.,
entered or selected based on the user’s preference or convenience) (see Yee
391–92), teaches and suggests “the first location specified by the first user
input is an arbitrary address entered via the first user input” as claim 20
recites. See Dec. 34–35 (citing and discussing Yee 391–92). Moreover,
even under Patent Owner’s proposed interpretation, Yee discloses “[a] user
can point at a road segment or specific location on a computerized map”
(Yee 391) and thus, include an address determined by whim or impulse or
“the first location specified by the first user input is an arbitrary address” as
claim 20 recites. See also 3PR Comments 10 (nothing the same).
Also, Lachinski teaches “a user supplied address” is converted to a
standard address for matching to “a real address range” (Lachinski 16:63–
66), “[a] video image can be recalled” (id. at 17:15), and the process of
“retrieval of the nearest video image to a coordinate pair” “rel[ies] on the
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segment-video relationship discussed above” (id. at 17:18–20 (emphasis
added)). See also 3PR Comments 10 (citing the ’316 patent 17:19–20); cf.
the ’316 patent 14:15–20, 14:57–65. Thus, Lachinski also teaches a user
entering a chosen address. Yet, the rejection further discusses applying
Lachinski’s teachings to Yee, such that the combination would predictably
yield no more than permitting a user to enter an address near or close to an
address in a system (e.g., another form of a “first location specified by the
first user input is an arbitrary address”) and retrieving an image associated
with the location. See Dec. 36. We thus disagree with Patent Owner that
one skilled in the art would not have recognized that Lachinski’s teachings
in this regard refer to operations other than converting the user’s entry into a
standard address as asserted.
For the reasons discussed above, we are not persuaded that Yee or the
Yee/Lachinski combination fail to teach or suggest the recited “arbitrary
address” in claim 20 or that an ordinary skilled artisan would not have
combined Lachinski’s teachings with Yee as the rejection explains, such that
the Board misapprehended or overlooked any point in the newly presented
ground.
D. Claims 21–24
Claim 21 depends from claim 20 and further recites additional
limitations. The ’316 patent, 16:67–17:9. Claims 22–23 ultimately depend
from claim 21 and are not separately argued. Req. Reh’g 21–23. We select
claim 21 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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Patent Owner repeats that Yee and Lachinski do not disclose the
recited “arbitrary address” and thus fail to teach claim 21. Req. Reh’g 22.
We are not persuaded for the reasons previously stated.
Patent Owner next argues Yee and Lachinski do not disclose all the
recitations in claim 21. Req. Reh’g 21–22. However, Patent Owner only
discusses the specific step of “identifying one of the plurality of street
segments based on the arbitrary address” in claim 21. See id. at 22–23.
Thus, for the other recitation in claim 21, Patent Owner’s mere assertion Yee
and Lachinski do not teach the features of claim 21 by reciting the claim
features (see id. at 21) is not considered a separate argument for
patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
As for the disputed “identifying one of the plurality of street segments
based on the arbitrary address” in claim 21, Patent Owner argues Yee does
not teach this limitation because Yee directly selects a road segment by
pointing and thus does not need to identify the street segment based on the
arbitrary address. Req. Reh’g 22. As for Lachinski, Patent Owner argues
the reference only addresses creating “associations between the recorded
videos and road segments” and not identifying road segments based on the
user input. Id. (citing Lachinski 13:60–63).
Requester disagrees. 3PR Comments 11–12. In particular, Requester
states the Federal Circuit considered whether Dykes and Yee teach “street
segments” as required by some claims and determine there was substantial
evidence to support the Board’s findings. Id. at 11 (quoting Vederi, 813 F.
App’x at 505). Requester also contends Lachinski is not limited to
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associating videos and road segments but rather retrieves the nearest video
image to a user’s selected position. Id. at 12 (quoting Lachinski, 14:56–63).
As discussed above when addressing Yee and Lachinski in context of
claim 20, Yee’s teaches a system that retrieves images based on a user
entering a street address or selecting a road segment or specific location on a
map (e.g., entered or selected based on the user’s preference or
convenience). See Yee 391–92. An ordinarily skilled artisan would have
recognized from this teaching that the system must include processing the
selected road segment in Yee’s map in order to identify, retrieve, and display
the selected road segment based on the selection. As such, Yee teaches and
suggests “identifying one of the plurality of street segments based on the
arbitrary address” as claim 21 recites. Additionally, as discussed above,
Lachinski teaches that retrieving “the nearest video image to a coordinate
pair” “rel[ies] on the segment-video relationship discussed above.”
Lachinski 17:18–20. Cf. the ’316 patent 14:15–20, 14:58–68 (addressing
selecting a particular location on a map and displaying the new location
based on the selection by determining the image “closest to the distance of
the input location from the origin.”); see also 3PR Comments 12 (quoting
the ’316 patent 14:56–63). Lachinski in combination with Yee thus also
suggests to an ordinary skilled artisan “identifying one of the plurality of
street segments based on the arbitrary address” as claim 21 recites.
Lastly, when addressing “‘street segments’ as required by some of the
claims,” the Federal Circuit held that “substantial evidence supports the
Board’s finding that the prior art discloses the disputed claim limitations.”
Vederi, 813 F. App’x at 505. To the extent this holding related to “street
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segments” includes the recited “identifying one of the plurality of street
segments based on the arbitrary address” in claim 21, this determination
provides further evidence that the prior art teaches and suggests what is
recited in claim 21.
For the reasons discussed above, we are not persuaded that Yee,
Lachinski, and Dykes combination fail to teach or suggest the recited
“identifying one of the plurality of street segments based on the arbitrary
address” in claim 21, such that the Board misapprehended or overlooked any
point in the newly presented ground.
E. The remaining claim
Other than referencing the previous arguments made for canceled
independent claim 18, Patent Owner does not separately argue dependent
claim 19. See generally Req. Reh’g. We are not persuaded for the reasons
previously discussed.
Conclusion
For the foregoing reasons, Patent Owner has not shown any points
that the earlier panel misapprehended or overlooked in entering the new
ground of claims 13 and 18–24 under 35 U.S.C. § 103(a) based on Yee,
Lachinski, and Dykes.

CONCLUSION
We have granted the Request for Rehearing to the extent that we have
reconsidered the June 2021 Decision in light of Patent Owner’s Request for
Rehearing, but have denied the Request for Rehearing in all other respects.

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Outcome of Decision on Rehearing:

Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
13, 18–24 103(a) Yee, Lachinski,
Dykes
13, 18–24
Overall
Outcome
13, 18–24

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
13 102(a) Dykes 13
13 102(a) Al-Kodmany 13
13 102(a) Bates 13
13, 18–24 103(a) Yee, Dykes 13, 18–24
13, 18–24 103(a) Murphy, Yee 13, 18–24
13, 18–24 103(a) Shiffer, Yee 13, 18–24
13, 18–24 103(a) Yee, Lachinski,
Dykes
13, 18–
24
Overall
Outcome
13, 18–24 13, 18–
24

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See Manual of Patent Examining
Procedure (MPEP) § 2665; see also 37 C.F.R. § 41.79.

DENIED

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PATENT OWNER:

Lewis, Roca, Rothgerber, Christie LLP
P. O. Box. 29001
Glendale, CA 91209-9001

THIRD PARTY:

O’Meleveny & Myers LLP
IP & T Calendar Department
400 South Hope Street
Los Angeles, CA 90071-2899