Google Inc.v.Jongerius Panoramic Technologies, LLC

Patent Trial and Appeal Board

Aug 12, 2014

09416505 (P.T.A.B. Aug. 12, 2014)

Trials@uspto.gov Paper 70
571-272-7822 Entered: August 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC. and APPLE INC.,
Petitioners,

v.

JONGERIUS PANORAMIC TECHNOLOGIES, LLC,
Patent Owner.
____________

Case IPR2013-00191
Patent 6,563,529 B1
____________

Before KARL D. EASTHOM, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

CHANG, 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
Google Inc. and Apple Inc. (collectively “Google”) filed a Petition on
March 15, 2013, requesting an inter partes review of claims 1–6, 10–15, 17–
19, 21, 23–25, 27, and 28 of U.S. Patent No. 6,563,529 B1 (Ex. 1001;
“the ’529 patent”). Paper 6 (“Pet.”). In response, Jongerius Panoramic
Technologies, LLC (“JPT”) filed a Preliminary Response. Paper 11
(“Prelim. Resp.”). Taking into account JPT’s Preliminary Response, we
determined that the information presented in the Petition demonstrated that
there was a reasonable likelihood that Google would prevail with respect to
claims 1–6, 10–15, 17–19, 21, 23–25, 27, and 28. Pursuant to 35 U.S.C.
§ 314, we instituted this trial as to all the challenged claims. Paper 12
(“Dec.”).
After institution, JPT filed a Patent Owner Response (Paper 28,
“PO Resp.”), and Google filed a Reply to the Patent Owner Response
(Paper 32, “Pet. Reply”). JPT also filed a Motion to Amend Claims
(Paper 29 “Mot. Amend”); Google filed an Opposition to JPT’s Motion to
Amend Claims (Paper 33, “Pet. Opp.”); and JPT then filed a Reply to
Google’s Opposition (Paper 40, “PO Reply”). Oral hearing was held on
April 3, 2014.
1

We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons set forth
below, we conclude that Google has shown by a preponderance of the
evidence that claims 1–6, 10–15, 17–19, 21, 23–25, 27, and 28 of the ’529
patent are unpatentable. JPT’s Motion to Amend Claims is denied.

1
A transcript of the oral hearing is included in the record as Paper 69.
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A. Related Proceeding
Google indicates that the ’529 patent is asserted in Jongerius
Panoramic Technologies, LLC. v. Google, Inc., No. 12-03798-YGR
(N.D. Cal.). Pet. 4.

B. The ’529 patent
The ’529 patent relates to computer-simulated or virtual touring of
scenes. Ex. 1001, Abs. The ’529 patent describes an interactive system for
displaying both a detailed view of an area and a map of the area
simultaneously. Id. Figure 4 of the ’529 patent is reproduced below:

As depicted by Figure 4 of the ’529 patent, the computer display has
two sections, left section 40 showing the detailed view and right section 38
showing the map. Id. at 3:12–15, 5:12–15. The map is a top view of the
area and includes compass rose 10 to show geographical directions and dot
30 to show the position of the camera from which the panoramic image has
been taken. Id. at 5:1–5. Viewed area 36 is highlighted to show visually the
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area of section 40. Id. at 5:8–11, 20–22. Whenever the user changes the
field of view in section 40, the highlighted section shown in section 38 will
change automatically and simultaneously to the show the new field of view.
Id. at 6:13–16.

C. Illustrative Claim
Of the challenged claims, claims 1, 10, 17, and 23 are independent
claims. Claim 1 is illustrative and reproduced as follows:
1. A method for displaying a detailed view of an area
within a territory, taken from a predetermined location within
said territory, and indicating the area and direction in which
said detailed view is taken from within said territory,
comprising:
providing a display that can display a map of a territory
and a detailed view of an area within said territory, said
detailed view being taken from a predetermined location within
said territory,
displaying said map of said territory on said display,
displaying said detailed view, as taken from said
predetermined location within said territory, as an image on
said display,
providing an input means for a human operator to change
the angular direction and area of said detailed view as seen
from said location within said territory,
using said input means to change said angular direction
and said area of said detailed view, thereby to move virtually
through said territory,
indicating on said map said angular direction and said
area of said detailed view, thereby providing, on said map, an
indication of said angular direction and said area of said
detailed view as seen from said location within said territory,
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causing any change in said angular direction and said
area of said detailed view to be simultaneously indicated by a
corresponding change in said indication on said map, such that
both said detailed view and said indication on said map change
substantially simultaneously,
thereby to create a highly interactive display, which
allows a human operator to better understand, by looking at said
map, the area and direction of said detailed view.
Ex. 1001, 10:11–44 (emphases added).

D. Prior Art Relied Upon
Google relies upon the following prior art references:
Chan US 6,346,938 B1 Feb. 12, 2002 (Ex. 1005)
Prouty US 6,097,393 Aug. 1, 2000 (Ex. 1020)

Wilbert O. Galitz, The Essential Guide to User Interface Design
(Ch.1; Ex. 1009), 13–50 (Ch. 2; Ex. 1010), 91–148 (Step 3; Ex. 1011), 486–
514 (Step 9; Ex. 1012) (Wiley Computer Publishing 1997) (“Galitz”).

Shou-Kang Wei et al., Color Anaglyphs for Panorama Visualizations,
19 COMMUNICATION AND INFORMATION TECHNOLOGY RESEARCH TECHNICAL
REPORT (1998) (Ex. 1006) (“Wei”).

Patrick Naughton & Herbert Schildt, Java 1.1: The Complete
Reference xxv–xxvi (McGraw-Hill, 2nd Ed. 1998) (Preface; Ex. 1013), 3–16
(Ch. 1; Ex. 1014), 17–39 (Ch. 2; Ex. 1015), 269–304 (p.) (Ex. 1016), 559–
584 (Ch.18; Ex. 1017), 585–619 (Ch.19; Ex. 1018), 621–663 (Ch. 20)
(Ex. 1019) (“Naughton”).

Jason Dykes et al., Virtual Environments for Student Fieldwork Using
Networked Components, 13(4) INTERNATIONAL JOURNAL OF GEOGRAPHICAL
INFORMATION SCIENCE 397–416 (1999) (Ex. 1007) (“Dykes”).

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E. Grounds of Unpatentability
We instituted the instant trial based on the following grounds of
unpatentability:
Claims Basis References
1, 4–6, 17, 23, 28 § 102(e) Chan
1, 4, 5, 17, 21, 23, 27 § 102(b) Wei
10, 13–15 § 103(a) Chan and Naughton
2, 3, 11, 12, 18, 19, 24, 25 § 103(a) Chan, Galitz, and Naughton
15, 21, 27 § 103(a) Chan and Prouty
2, 3, 10–15, 18, 19, 21, 24, 25 § 103(a) Wei and Naughton
6, 28 § 103(a) Wei and Dykes

II. ANALYSIS
A. Claim Construction
Consistent with the statutory language and legislative history of the
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
(“AIA”), we interpret claims using the broadest reasonable construction in
light of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
(Aug. 14, 2012). Claim terms 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. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).

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In the Decision on Institution, we set forth the claim constructions for
three claim terms and four means-plus-function elements under 35 U.S.C.
§ 112, ¶ 6.
2
Dec. 7–15. Specifically, we applied the following claim
constructions in the Decision on Institution:
Claim Terms Claim constructions
Detailed view
A detailed display of data or an image
from a given perspective or location.
Dec. 8.
Synchronizer
Software or computer code that runs on
a computer to perform the recited
functions. Dec. 9.
The origin
The position from which the detailed
view is taken. Dec. 9.

Means-Plus-Function Claim
Elements
Corresponding Structures
Detail display means for
displaying a detailed view of an
area within a territory, as seen
from a point within said territory,
and for enabling a user to change
the origin, area, and angular
direction of said area shown in
said detailed view
A microprocessor programmed to
perform the algorithms of
(a) outputting all or part of an image
for display (e.g., lines 193–336 of
pmvr.java); (b) changing the all or part
of the image displayed in response to
user input (e.g., lines 403–433, 480–
515 and 552–575 of pmvr.java); and
an image viewer. Ex. 1001, 4:25–39,
5:45–50, 59–67, 6:45–63, 7:34–67,
8:1–36, 9:1–21; Dec. 12.

2
Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
§ 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296–307 (2011). Because the
’529 patent has a filing date before September 16, 2012 (effective date), we
will refer to the pre-AIA version of 35 U.S.C. § 112 in this decision.
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Means-Plus-Function Claim
Elements Corresponding Structures
Map display means for
displaying a map of said territory
and indicating the origin, area,
and angular direction of said area
within said territory, as shown in
said detailed view

A microprocessor programmed to
perform the algorithms of
(a) outputting all or part of an image
for display (e.g., lines 19 – 226 of
floorplan.java); (b) rendering on the
image a graphical indication of the
origin, area, and angular direction
shown in the detailed view (e.g., lines
189–219 of floorplan.java); and an
image viewer. Ex. 1001, 4:60–67,
5:1–11, 50–58, 7:20–55; Dec. 11–12.
Input means for a human
operator to change the angular
direction and area of said
detailed view as seen from said
location within said territory
A mouse or keyboard. Ex. 1001,
1:39–42, 4:31–36; Dec. 14–15.
Synchronization means for
changing, in said map, the origin,
area, and angular direction of
said territory shown in said
detailed view, said changing
occurring in response to and in
correspondence with changes in
the origin, area, and angular
direction of said territory shown
in said detailed view, or for
changing said detailed view in
response to and in
correspondence with changes in
the origin, area, and angular
direction of said detailed view of
said area of said territory shown
in said map
A microprocessor programmed to
perform the algorithm of (a) upon
detecting a change to the detail display
causing the map display means to
render on the map display a graphical
indication of the origin, area, and
angular direction corresponding to the
new detailed display (e.g., lines 290–
316 of pmvr.java and 147–157 of
floorplan.java), or (b) upon detecting a
change to the map display causing the
detail display means to change all or
part of the image displayed (e.g., lines
122–130 of pmvr.java and lines 267–
272 of floorplan.java). Ex. 1001,
8:25–27; Dec. 13–14.

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The parties do not contest our interpretations for the claim terms
“synchronizer” and “the origin,” as well as the means-plus-function claim
elements identified above. However, JPT proposes a different claim
construction for the claim term a “detailed view” and Google disagrees with
JPT’s proposed construction. PO Resp. 6; Pet. Reply 3. We have reviewed
the parties’ arguments and supporting evidence, and discern no reason to
modify the claim constructions set forth in the Decision on Institution. We
address JPT’s arguments regarding the claim term a “detailed view” below.
Claim 1 recites “providing a display that can display a map of a
territory and a detailed view of an area within a territory . . . displaying said
detailed view . . . as an image on said display.” Ex. 1001, 10:16–24
(emphasis added). JPT asserts that the claim term “detailed view” should be
construed as “part of a panoramic image that is constructed from one or
more photographs or video taken from a location within a territory.”
PO Resp. 6 (citing Ex. 2008 ¶ 17) (emphases added). Google responds that
JPT’s proposed claim construction improperly would import limitations
from the Specification into the claims. Pet. Reply 3. We agree with Google
that JPT’s claim construction is unreasonably narrow.
There is a “heavy presumption” that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002). An inventor may rebut the presumption by
providing a definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). Here, JPT has not alleged that the inventor of the ’529 patent acted
as his own lexicographer and provided a special definition in the
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Specification for the claim term a “detailed view” that is different from its
recognized meaning to one with ordinary skill in the art.
As Google points out, the Specification of the ’529 patent is not
limited to photographs or video images. Pet. Reply 4. Indeed, the
Specification of the ’529 patent indicates that one of the objectives for the
disclosed invention is “to provide an improved virtual image viewing and
panning system.” Ex. 1001, 2:30–31 (emphasis added). It also provides an
example, in the Background section, that uses “a virtual camera,” and
defines the term “virtual” as “computer-simulated.” Ex. 1001, 1:36–37, 2:7–
25. As Google notes, JPT’s expert witness, Dr. Michael Neff, stated that “a
virtual image is a synthetic image,” and it is “an image that does not exist in
the real world.” Id. (citing Ex. 1026, 11:4–5) (emphasis added). Therefore,
in light of the Specification of the ’529 patent, one of ordinary skill in the art
would not have excluded virtual images from the term “detailed view,” or
limited the term “detailed view” to only photographs or video taken from a
location within a territory.
Accordingly, we decline to import the limitations—“part of a
panoramic image that is constructed from one or more photographs or video
taken from a location within a territory”—from a preferred embodiment
disclosed in the Specification into the claims, as urged by JPT. See Deere &
Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim
terms are understood in light of the specification, a claim construction must
not import limitations from the specification into the claims.”); Altiris, Inc.
v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003) (Even in cases
where a patent describes only a single embodiment, courts have rejected the
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contention that the claims of the patent must be construed as being limited to
that embodiment.).
In the context of the claimed subject matter and the Specification of
the ’529 patent, the term “view” ordinarily is understood as “the display of
data or an image from a given perspective or location.” See MICROSOFT
COMPUTER DICTIONARY 497 (3rd ed. 1997) (Ex. 3001) (defining “view” as
“n. 1. The display of data or an image from a given perspective or
location.”). Therefore, in light of the Specification, we construe the claim
term a “detailed view” broadly, but reasonably, as a detailed display of data
or an image from a given perspective or location.

B. Principles of Law
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). While the elements must be arranged or combined in the same way
as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “A
reference anticipates a claim if it discloses the claimed invention such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.” In re
Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). This means prior art
references must be “considered together with the knowledge of one of
ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480. Moreover, “it
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is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
A patent 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 the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. 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 skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
established when the prior art, itself, would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art
may be reflected by the prior art of record. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
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C. Grounds of Unpatentability based on Chan, by itself or in
Combination with Other References
1. Claims 1, 4–6, 17, 23, and 28—Anticipated by Chan
Google asserts that claims 1, 4–6, 17, 23, and 28 are unpatentable
under 35 U.S.C. § 102(e) as anticipated by Chan. Pet. 10–18. In support of
this asserted ground of unpatentability, Google provides detailed
explanations as to how each claim limitation is met by Chan, as well as the
Declaration of Dr. Michael S. Braasch. Id. (citing Ex. 1003 ¶¶ 59–78).
JPT counters that Chan does not disclose all of the claim limitations
recited in independent claims 1, 17, and 23. PO Resp. 4–15. As support,
JPT proffers the Declaration of Dr. Neff. Id. (citing Ex. 2008 ¶¶ 17–33).
Claims 4–6 depend from claim 1, and claim 28 depends from claim 23.
Upon consideration of the parties’ contentions and supporting
evidence, we determine that Google has demonstrated by a preponderance of
evidence that claims 1, 4–6, 17, 23, and 28 are anticipated by Chan. In our
analysis below, we address JPT’s arguments presented in the Patent Owner
Response, focusing on the disputed claim limitations.
Chan
Chan relates to computer-simulated or virtual touring of scenes.
Ex. 1005, Abs. Specifically, Chan describes a digital-image processing
system for displaying simultaneously views of a three-dimensional (3D)
image and a map of a geographic scene. Id. at 1:8–16, 1:40–49. The system
provides a user interface for navigating within the in-scene view of the 3D
image—e.g., “street level” movement through an urban scene. Id. at 1:49–
67, 2:9–11.
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Figures 5 and 6 of Chan are reproduced below:

As shown in Figure 6, inset viewport 22 shows a 3D view of an urban
scene (a detailed view), and main viewport 21 shows a map of the same
scene (a map view). Id. at 5:28–31. In Figure 5, the views are switched—
insert viewport 22 displays a map and main viewport 21 displays a 3D view
of the urban scene. Id. at 5:25–27. Location 23 is the user’s position from
which the scene has been taken. Id. at 9:4–14. The in-scene view represents
what would be seen by a user located in the 3D scene, showing how a person
is able to view his or her surroundings within the in-view scene. Id. at 2:38–
49. The user may change the location and orientation in the scene, using
either a joystick or mouse. Id. at 2:11–12, 3:37–49.
Detailed view
Claim 1 recites “a detailed view of an area within a territory, said
detailed view being taken from a predetermined location with said territory.”
Claims 17 and 23 each recite “a display for displaying a detailed view of an
area within a territory as seen from a point within said territory.”
In its Petition, Google asserts that Chan’s in-scene view of a
geographic scene discloses the “detailed view” claim features. Pet. 11–12,
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15, 17. JPT counters that Chan does not disclose “a detailed view of an area
of a territory, as seen from a point within said territory,” as recited in
claims 17, 23, and 28. PO Resp. 5–7, 11, 15. According to JPT, Chan does
not disclose a “detailed view” because Chan does not describe “a panoramic
image that is constructed from one or more photographs or video taken from
a location within that territory.” Id. at 6, 11 (emphases added). Google
responds that, under a proper claim construction, Chan discloses a “detailed
view” when disclosing “an in-scene view . . . [of a] 3D perspective of the
virtual world.” Pet. Reply 4 (citing Ex. 1005, 9:6).
As discussed above, we decline to adopt JPT’s overly narrow
proposed claim construction, importing limitations—“a panoramic image
that is constructed from one or more photographs or video taken from a
location within a territory”—from the Specification into the claims. Rather,
in light of the Specification, we construe the claim term a “detailed view”
broadly, but reasonably, as the detailed display of data or an image from a
given perspective or location.
Chan describes a digital-image processing system for displaying
simultaneously views of a 3D image and a map of a geographic scene, such
as an urban scene at the street level. Ex. 1005, 1:8–2:12, Figs. 5–6. In
particular, the 3D image of the urban scene, shown in main viewport 21 of
Figure 5 of Chan, displays an in-scene view (a detailed view), representing
what would be seen by a user located in the 3D urban scene (an area within a
territory). Id. at 2:38–49, Fig. 5. Applying the proper claim construction,
we determine that Chan’s in-scene view of a 3D image of a geographic
scene discloses a “detailed view of an area within a territory,” as recited in
claims 1, 17, and 23. Ex. 1005, 1:45–49, 9:4–8 (“The in-scene view . . .
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closely approximates how an upright human would typically view his/her
surroundings within the 3D scene”); Figs. 5–7.
JPT also argues that Chan’s in-scene view is not “taken from a
predetermined location within said territory,” as required by claim 1.
PO Resp. 11–13. In particular, JPT alleges that Chan’s focus is to create
views of a 3D scene from any location within the scene and is not limited to
predefined locations. Id. (citing Ex. 2008 ¶¶ 24–25). JPT further contends
that Chan’s user interface, allowing a user to manipulate the user’s location
within the 3D scene “relates to a location of the user icon after an arbitrary
input by the user, and not to a location from which an image was taken and
subsequently displayed in the in-scene view.” Id. at 12–13.
Google responds that the record does not support JPT’s position that
the claimed “predetermined location” is “a location from which an image
was taken and subsequently displayed in the in-scene view.” Pet. Reply 4–5.
According to Google, “Chan clearly discloses a location determined in
advance, stating that the user icon is placed ‘at a predetermined location . . .
within the 3D scene.’” Id. at 5 (citing Ex. 1005, 3:39–46).
After considering the parties’ arguments and the evidence before us,
we are not persuaded by JPT’s arguments, as they are not commensurate
with the scope of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (It is well established that limitations not appearing in the claims
cannot be relied upon for patentability.). Notably, JPT asserts that the claim
term “predetermined” means “determined in advance.” Prelim. Resp. 13.
Nevertheless, JPT attempts improperly to import additional limitations—“a
location from which an image was taken and subsequently displayed in the
in-scene view”—from the Specification into the claims. PO Resp. 13. We
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decline to import those limitations into the claims in the absence of an
express definition set forth in the Specification. Rather, in light of the
Specification, we construe the claim term a “predetermined location”
broadly, but reasonably, as “a location determined in advance.”
Applying the proper claim construction, we agree with Google that
Chan’s in-scene view of a geographic 3D image is taken from a location
determined in advance within the scene. Indeed, Chan discloses that the
user may navigate through a view, using either the joystick or mouse to
manipulate the user’s location and orientation within the scene. Ex. 1005,
3:36–47; 17:62–18:34; Figs. 21–23. More importantly, Chan states that
“[a]dvantages of this user icon transition mechanism include the fact that
only a single press/drag/release mouse operation is required to position the
user icon at a predetermined location . . . within the 3D scene, orient the
user icon, set the viewing direction, and set the look-at point to another
point on a target surface within the scene.” Id. (emphasis added).
In view of the foregoing, we conclude that Google has demonstrated
sufficiently that Chan describes the “detailed view” claim features.
Synchronizer
Claim 17 recites “a synchronizer for changing, in said map, the origin,
area, and angular direction of said area [] within said territory shown in said
detailed view in response to and in correspondence with changes in said
origin, area, and angular direction of said territory shown in said detailed
view.” Claim 23 recites a similar feature, and claim 28 depends from
claim 23.
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JPT alleges that Chan does not disclose “a synchronizer,” as recited in
claims 17, 23, and 28. PO Resp. 7–10, 15. In particular, JPT argues that
Chan merely describes reconfiguring the display by switching the in-scene
view and the map view between the viewports. Id. JPT also contends that
Chan’s disclosure concerning the use of input device values to place the user
icons within the in-scene view does not describe any synchronization,
because the input device values are not used to place the user icon in the
map view. Id. at 8–9 (citing Ex. 1005, 11:38–41).
Google responds that Chan’s disclosure of a “synchronizer” is not
limited to “toggling of images” between the two views. Pet. Reply 2.
Google points out that both views are updated synchronously during
interpolation, as the “interpolation occurs when two camera views are
simultaneously updated in step 805 in response to receiving ‘new inputs
from the user’ at steps 806–807 [as shown in Figure 8].” Id. (citing
Ex. 1005, 11:35–41, Fig. 8) (emphasis added by Google); see Pet. 13–14.
We agree with Google. Indeed, Chan discloses that, in addition to
switching views between the viewports, the user may navigate through a
view to manipulate the user’s location and orientation within the scene.
Ex. 1005, 3:36–39. A user may change the location and orientation of a user
virtual representation icon—a software-generated object that represents the
user’s location and orientation within the 3D scene. Id. at 2:12–16. For
example, pushing forward on the joystick moves the user icon location
forward in the scene. Id. at 11:5–10. As the user manipulates the icon, the
interpolation mechanism creates the 3D scene and defines the overview map
and in-scene presentations of the image to the respective viewports. Id. at
2:16–22. As Google points out (Pet. Reply 2), Dr. Neff explains that “one
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camera is the high [map] view, one camera that is the in-scene view, and
they basically interpolate between those views,” and “that interpolation is
synchronized.” Ex. 1026, 45:17–19.
Figure 8 of Chan illustrates a flow chart of the overall operation of the
image viewer, and is reproduced below.

As shown in Figure 8 of Chan (step 803), the main view is assigned
the SET interpolation function, and the inset view interpolation function is
set to FOLLOW. Id. at 11:1–3. The FOLLOW function for the inset view
causes the user’s location and orientation in the map view to be calculated
based on the location of the user icon in the in-scene view. Id. at 11:14–19.
Both views are updated simultaneously in response to receiving the new
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inputs from the user at steps 806–807. Id. at 11:34–41. Therefore, the
evidence before us, including the disclosure of Chan, supports Google’s
position that both views are updated synchronously during interpolation.
JPT also argues that the two views are out of synchronization, because
Chan states that “[t]he user’s viewpoint will not change within the window
until the operation is complete.” PO Resp. 8 (quoting Ex. 1005, 3:45–48)
(emphases added by JPT). That argument is unpersuasive because that
operation is merely a single press/drag/release mouse operation used by the
user to position the user icon at a predetermined location. Ex. 1005, 3:42–
45. As Google points out, once that mouse operation is complete, “the
interpolation operation synchronously computes ‘a new location and
orientation . . . for each camera by the interpolation function.’” Pet. Reply 3
(quoting Ex. 1005, 11:47–49, Fig. 8 (step 805), Fig. 9) (emphases added by
Google). Moreover, we observe that the Specification of the ’529 patent
uses a similar mouse operation to change the views simultaneously.
Ex. 1001, 5:25–37. In addition, as noted above, Chan allows a user to use a
joystick to submit inputs when navigating within the in-scene view (e.g.,
pushing forward on the joystick to move the user icon location forward in
the scene), and both views are updated synchronously during interpolation in
response to the user’s input. Ex. 1005, 11:5–20, 11:34–41.
Upon consideration of the parties’ contentions and evidence, we
determine that Google has demonstrated by a preponderance of evidence
that Chan describes a synchronizer, as recited in claims 17, 23, and 28.
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Changing angular direction and area of the detailed view
Claim 1 recites “providing an input means for a human operator to
change the angular direction and area of said detailed view as seen from said
location with said territory, using said input means to change said angular
direction and said area of said detailed view, thereby to move virtually
through said territory.” Dr. Neff testifies that given “that the location is
fixed, the second feature of changing the area clearly refers to the ability to
zoom in or out from the current location.” Ex. 2008 ¶ 25, p. 22. Based on
Dr. Neff’s testimony, JPT asserts that Chan does not describe this claim
limitation, because Chan does not have a zooming feature. PO Resp. 14.
Google disagrees with JPT’s claim construction that requires a
zooming feature, because the Specification of the ’529 patent does not limit
a “change in area” to a “zoom.” Pet. Reply 5–6. Google argues that, even if
the claim requires such a feature, Chan discloses zooming and changing
angular direction and area. Id. (citing Ex. 1005, 8:65–9:3, 17:62–65).
At the outset, we agree with Google that the disputed claim limitation
does not require a zooming feature. Neither Dr. Neff nor JPT points out
where the Specification of the ’529 patent discloses a zooming feature. Nor
do we find one in the Specification.
We observe that the disputed limitation includes a means-plus-
function element—“input means for a human operator to change the angular
direction and area of said detailed view as seen from said location within
said territory.” We identified, in the Decision on Institution, the
corresponding structure for the recited function—permitting a human
operator to change the angular direction and area of the detailed view as seen
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from the location within the territory—to be a mouse or keyboard. Dec. 14–
15 (citing Ex. 1001, 1:39–42, 4:31–36). Therefore, the means-plus-function
claim element covers a mouse or keyboard, “and equivalents thereof”—a
device whose purpose is to allow a user to give input to a computer system.
See 35 U.S.C. § 112, ¶ 6.
The disputed claim limitation also recites a method step—“using said
input means to change said angular direction and said area of said detailed
view, thereby to move virtually through said territory.” Neither the “input
means” nor this method step requires a zooming feature. Consequently, we
discern no requirement of a zooming feature in the disputed claim limitation.
Applying the proper claim construction, we determine that Google’s
position that Chan discloses the disputed claim limitation is supported by the
evidence before us. As discussed above, Chan’s system permits a user to
navigate through a view to manipulate the user’s location and orientation
within a scene using a joystick or a mouse. Ex. 1005, 3:36–39, 9:50–52,
17:62–65. The user also may use the joystick handle to change the altitude
of the overview map viewpoint, which provides magnification and
demagnification actions, allowing the user to “zoom into” or “zoom out” of
the scene. Id. at 8:65–9:3. Moreover, Chan indicates that changing the
user’s location will cause the map view to pan—changing the area covered
by the map view. Id. at 8:63–65. The user also may change the viewing
elevation in the in-scene view using a joystick. Id. at 9:42–49. Given those
disclosures of Chan, we are not persuaded by JPT’s argument that Chan does
not describe the “changing angular direction and area” claim features.
In view of the foregoing, we conclude that Google has shown
sufficiently that Chan describes the disputed claim limitation.
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Conclusion
For the foregoing reasons, we determine that Google has
demonstrated by a preponderance of evidence that claims 1, 4–6, 17, 23, and
28 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Chan.

2. Claims 10 and 13–15—Obvious Over Chan and Naughton
Google asserts that claims 10 and 13–15 are unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Chan and Naughton.
Pet. 36–39. As support, Google explains how the combination of Chan and
Naughton collectively teaches each claim limitation and provides a rationale
for combining the references. Id. Google directs our attention to
Dr. Braasch’s Declaration to support its contentions. Id. (citing Ex. 1003
¶¶ 148–158).
JPT counters that the combination of Chan and Naughton does not
teach or suggest “detail display means for displaying a detailed view of an
area within a territory” and “synchronization means for changing, in said
map, the origin, area, and angular direction of said territory shown in said
detailed view,” as recited in claim 10. PO Resp. 28–30. As support, JPT
proffers the Declaration of Dr. Neff. Id. (citing Ex. 2008 ¶¶ 47–48).
However, JPT essentially reiterates the same arguments presented with
regard to independent claims 1, 17, and 23. We have addressed those
arguments in our analysis above regarding the anticipation ground of
unpatentability based on Chan as to claims 1, 4–6, 17, 23, and 28, and
determined those arguments to be unavailing. For instance, we rejected
JPT’s arguments that are predicated on its overly narrow claim construction
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of the claim term a “detailed view,” because it improperly imports
limitations—“a panoramic image that is constructed from one or more
photographs or video”—from the Specification into the claims.
Rationale to combine
JPT further alleges that Google fails to articulate a rationale to
combine Chan and Naughton. PO Resp. 29 (citing Ex. 2008 ¶ 50). Google
responds that the Petition sets forth a sufficient rationale to combine the
references and that it is supported by Dr. Braasch’s testimony. Pet. Reply
13; Pet. 36–38; Ex. 1003 ¶¶ 148–158. Indeed, Dr. Braasch testifies that one
of ordinary skill in the art would have coded Chan’s software modules using
the software programing language Java, including certain Java capabilities
(e.g., multithreading in Java and the synchronized modifier that is built into
Java). Pet. 38; Ex. 1003 ¶¶ 152–157. According to Dr. Braasch, those Java
capabilities were well-known at the time of the invention, as evidenced by
Naughton’s disclosure. Id. Dr. Braasch further testifies that using those
Java capabilities to code Chan’s software modules to achieve
synchronization would have allowed the use of separate threads for the in-
scene view and the map view, ensuring that resources shared between two
synchronized modules would have been managed properly. Id. We credit
Dr. Braasch’s testimony as it is consistent with the technical disclosure of
Chan and Naughton.
Neither JPT nor Dr. Neff explains adequately why coding Chan’s
software modules for synchronization using those Java capabilities would
have been beyond the level of ordinary skill, or why one with ordinary skill
in the art would not have had a reasonable expectation of success in
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combining the technical disclosures. Given the evidence on this record, we
are persuaded that it would have been obvious to code Chan’s software
modules for synchronizing the in-scene view and the map view of a
geographic scene using the software programing language Java, including
the synchronized modifier and multithreading capabilities of Java, in light of
Naughton’s disclosure. See KSR, 550 U.S. at 417 (2007) (“[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.”).
Analogous art
JPT further argues that one of ordinary skill in the art would not have
combined Chan and Naughton because Chan is non-analogous art. PO Resp.
29 (citing Ex. 2008 ¶ 49). We are not persuaded by that argument, because
the technical field of computer-simulated or virtual touring is not limited to
panoramic images of a real physical environment, 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.
A prior-art reference is considered to be analogous if it is either:
(1) from the same field of endeavor, regardless of the problem addressed; or
(2) reasonably pertinent to the particular problem with which the inventor is
concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” Id.
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at 659. In that regard, “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one.” KSR, 550 U.S. at 417.
Here, Dr. Neff testifies that Chan is not from the same field of
endeavor as the claimed invention, as it is specifically directed to rendering
rasterized projections of 3D models, and “not ‘viewing panoramic images’
to present a virtual tour of ‘real physical environments’ as is the ’529
patent.” Ex. 2008 ¶ 49 (emphases added). However, that characterization of
the ’529 patent’s field of endeavor is overly narrow and is not consistent
with the Specification of the ’529 patent.
As described in the Specification of the ’529 patent, its field of
endeavor is not limited to viewing panoramic images and navigating
through virtual tour of real physical environments. In fact, the Specification
of the ’529 patent indicates that one of the objectives for the disclosed
invention is “to provide an improved virtual image viewing and panning
system.” Ex. 1001, 2:30–31 (emphasis added). It also provides an example,
in the Background section, that uses “a virtual camera,” and defines the term
“virtual” as “computer-simulated.” Ex. 1001, 1:36–37, 2:7–25. Dr. Neff
testifies that “a virtual image is a synthetic image,” and it is “an image that
does not exist in the real world.” Ex. 1026, 10:25–11:5. Moreover, none of
the independent claims of the ’529 patent recites panoramic images of real
physical environments.
As such, we decline to adopt Dr. Neff’s overly narrow definition of
the ’529 patent’s field of endeavor. Rather, we observe that the ’529
patent’s field of endeavor is computer simulated or virtual touring.
Ex. 1001, 2:30–58. The particular problem the patentee intended to address
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was to provide a dynamic map view for the computer-simulated or virtual
tours. Id. at 1:37–2:26.
Chan relates to computer simulated or virtual touring of scenes,
describing a digital-image processing system for displaying simultaneously
views of a 3D image and a map of a geographic scene. Ex. 1005, 1:8–2:12,
3:37–49, 5:25–31, Figs. 5–6. Chan’s system provides a user interface for
navigating within the in-scene view and the map view of the scene. Id. at
1:49–67, 2:9–37. Therefore, Chan is from the same field of endeavor as the
’529 patent, and Chan is reasonably pertinent to the patentee’s problem, at
least with respect to providing a dynamic map view for virtual tours.
Accordingly, we determine that Chan is analogous art.
Conclusion
Claims 13, 14, and 15 depends from independent claim 10. JPT has
not raised any additional argument with regard to dependent claims 13, 14,
and 15 other than those addressed above. Id. at 30.
For the foregoing reasons, we determine that Google has
demonstrated by a preponderance of evidence that claims 10 and 13–15 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Chan and Naughton.

3. Claims 2, 3, 11, 12, 18, 19, 24, and 25—Obvious over Chan,
Galitz, and Naughton; and Claims 15, 21, and 27—Obvious
over Chan and Prouty
Google asserts that claims 2, 3, 11, 12, 18, 19, 24, and 25 are
unpatentable under 35 U.S.C. § 103(a) over the combination of Chan, Galitz,
and Naughton. Pet. 39–41. Google also asserts that claims 15, 21, and 27
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are unpatentable over the combination of Chan and Prouty. Id. at 41–43.
Google relies upon Dr. Braasch’s Declaration for support. Id. at 39–43
(citing Ex. 1003 ¶¶ 159–167).
JPT counters that the combinations of cited prior art reference do not
disclose all of the claim limitations of the challenged claims. PO Resp. 30–
33. JPT also directs our attention to Dr. Neff’s Declaration. Id. (citing
Ex. 2008 ¶¶ 54, 56, 58–59). However, JPT essentially reiterates the same
arguments presented with regard to independent claims 1, 10, 17, and 23.
Id. We have addressed those arguments in our analysis above regarding the
grounds of unpatentability based, at least in part, on Chan as to independent
claims 1, 10, 17, and 23, and determined those arguments to be unavailing.
As to claims 15, 21, and 27, JPT further maintains that there is no
rationale to combine the technical disclosures of Chan and Prouty. Id. at 32–
33 (citing Ex. 2008 ¶¶ 60–61). We are not persuaded by JPT’s argument
and supporting evidence. Rather, we observe that Chan’s disclosure is not
limited only to outside scenes and, in light of Prouty, it would have been
obvious to one with ordinary skill in the art to replace an outside scene with
an inside scene when navigating through the inside of a building.
Prouty describes a 3D graphical resource management system.
Ex. 1020, Abs. Figs. 1, 7. Figure 1 of Prouty, reproduced below, illustrates a
computer screen display of a computer 3D graphical system.
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As depicted in Figure 1 of Prouty, the computer monitor screen
simultaneously displays both main view window 104, depicting a 3D interior
area of a floor plan and a room of a building (the detailed view), and view
box window 108, showing a top plan view of the interior area (the map
view). Ex. 1020, 7:30–67, 9:29–49. Prouty’s computer system allows users
to navigate through the interior area using input devices, such as a keyboard,
mouse, or joystick. Id. at 8:36–63.
Although Chan’s preferred embodiment shows an urban scene,
Chan’s digital image processing system is capable of displaying other scenes
and, therefore, it is not limited to outside scenes. Ex. 1005, 1:39–49,
Figs. 5–7. Google relies upon Prouty to describe a 3D-graphical system that
allows a user to display a floor plan or interior area of a building. Pet. 41–
43; Ex. 1020, 7:34–35, Fig. 1. Dr. Braasch testifies that “in looking for
ways to manipulate the map in an exterior setting, it would have been
obvious try the same thing as inside a building in view of Prouty.” Ex. 1003
¶ 167.
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Given the evidence on this record, we determine that Google has
demonstrated sufficiently that it would have been obvious to one of ordinary
skill in the art to use Chan’s digital image processing system to display and
navigate through a floor plan or interior area of a building, in light of
Prouty, so that a user may familiarize himself or herself with the floor plan
or interior area of the building. See KSR, 550 U.S. at 417 (2007) (The
simple substitution of one known element for another is likely to be obvious
if it does no more than yield predictable results.).
Conclusion
For the foregoing reasons, we determine that Google has
demonstrated by a preponderance of evidence that claims 2, 3, 11, 12, 18,
19, 24, and 25 are unpatentable over the combination of Chan, Galitz, and
Naughton, and that claims 15, 21, and 27 are unpatentable over the
combination of Chan and Prouty.

D. Grounds of Unpatentability based on Wei, by itself or in
Combination with Other References
Claims 1, 4, 5, 17, 21, 23, and 27—Anticipated by Wei
Google asserts that claims 1, 4, 5, 17, 21, 23, and 27 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by Wei. Pet. 18–25. In its Petition,
Google explains how each claim limitation is met by Wei and directs our
attention to Dr. Braasch’s Declaration. Id. (citing Ex. 1003 ¶¶ 79–107).
In response, JPT argues that Wei does not describe all of the
limitations recited independent claims 1, 17, and 23, citing Dr. Neff’s
Declaration for support. PO Resp. 15–27 (citing Ex. 2008 ¶¶ 27–46).
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Claims 4 and 5 depend from claim 1; claim 21 depends from claim 17; and
claim 27 depends from claim 23.
We have reviewed Google’s Petition, JPT’s Patent Owner Response,
and Google’s Reply, as well as the parties’ supporting evidence discussed in
those papers. Given the evidence before us, we determine that Google has
demonstrated by a preponderance of evidence that claims 1, 4, 5, 17, 21, 23,
and 27 are anticipated by Wei. In our analysis below, we address JPT’s
arguments presented in the Patent Owner Response, focusing on the disputed
claim limitations.
Wei
Wei describes a real-time interactive player for navigating in a
panoramic scene (a detailed view). Ex. 1006, 1, Abs. Specifically, the
interactive player is a navigation tool for exploring a photo-realistic 3D
world in 360° panoramic view, allowing the user to interact dynamically
within the panoramic scene. Id. at 10, 13. The interactive player has several
basic functions—horizontal and vertical panning, zooming, and hopping
between multi-nodes within the panoramic-scene viewport. Id.
The interactive player also includes a graphical directional indicator
(a dynamic map view) to help the user explore the panoramic scene more
effectively. Id. at 11–14, Fig. 4.7. Figure 4.7 of Wei, reproduced below,
illustrates a directional indicator.
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As depicted in Figure 4.7 of Wei, the directional indicator shows the
user’s current position and viewing direction in the panoramic scene, as well
as where the user can go next in the scene. Id. at 11. More specifically, the
red node represents the user’s current position in the panoramic scene
(i.e., the origin, the position from which the panoramic scene is taken).
Id. at 6, 14. The projection from the red node (the highlighted triangular
area on the left side) indicates the current viewing direction and field of view
of the panoramic scene that is displayed simultaneously in the viewport.
Id. at 14. The field of view synchronously rotates as the panoramic view
horizontally moves around (panning) in the viewport. Id. The directional
indicator further displays the path and inactive node (shown in Figure 4.7 as
a blue node), where the user can change his or her position to in the
panoramic scene. Id.
Displaying a map and a detailed view
In its Patent Owner Response, JPT alleges 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. PO Resp. 23–25 (emphasis
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added by JPT). JPT also contends that Wei fails to disclose displaying the
detailed view and the map view simultaneously, because Wei’s directional
indicator only appears “as needed,” and it is not always present. Id. at 16–
17, 23–25 (citing Ex. 1006, 14). JPT further argues that it is unclear where,
how, or when the directional indicator is displayed. Id. at 24–25. According
to JPT, “it is reasonable to assume that the two viewports would be on
different displays,” because Wei discloses that the directional indicator
should not contain any controls used for the navigation flow or take over the
role of the panoramic-scene viewport, and the directional indicator appears
to be a 2D view, not a 3D anaglyphic image. Id. at 17–18, 20, 24–25 (citing
2008 ¶ 40).
Google responds that Wei’s directional indicator is a component of
the player, specifically an enhancement or a new feature to the player.
Pet. Reply 11. According to Google, Wei discloses displaying the
panoramic view and the directional indicator on the same display, as “it
would make no sense to have a dedicated display for the sole purpose of
displaying a [directional indicator] that appears when needed.” Id.
Having considered the evidence on this record, we are not persuaded
by JPT’s arguments. JPT’s arguments narrowly focus on the statement in
Wei that the directional indicator “appears as needed” (Ex. 1006, 14). JPT’s
arguments are predicated on the incorrect assumption that the disputed claim
language requires both the map and detailed view be displayed
simultaneously all the time. PO Resp. 15–18, 23–25. To the contrary, the
claim language does not set forth such a requirement. Therefore, JPT’s
arguments again are not commensurate with the scope of the claims.
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Moreover, we are not persuaded by Dr. Neff’s testimony that Wei
“does not reveal the need to show the map view and area view on the same
display, as indicated in claim 1” (Ex. 2008 ¶ 40) and JPT’s assertion that
Wei’s directional indicator “may not be present at all” (PO Resp. 17),
because they ignore the stated benefits of a directional indicator (a dynamic
map view) in Wei—guiding the user exploring the new panoramic world
more effectively and showing the current exploring status of the panoramic
scene to the viewer dynamically. Ex. 1006, 13–14. Neither JPT nor
Dr. Neff explains sufficiently why users would not need such a useful
navigation tool, especially given that JPT acknowledges those same benefits
and needs for a dynamic map view showing the current exploring status of a
panoramic scene in the Specification of the ’529 patent. Ex. 1001, 1:64–2:7
(“help the individual to understand fully the field of view, direction, and
relation of the detailed views to the overall layout”).
We observe that the disclosure of Wei supports Google’s position that
the directional indicator and the panoramic scene are displayed on the same
computer monitor or display. Wei discloses a real-time interactive player
that includes a computer, a computer monitor (a display), image processing
software, a mouse, and a keyboard. Ex. 1006, 1–3, 13, 15. The directional
indicator is one of the three new features that are part of the interactive
player, and not some other separate device. Id. at 1, Abs. (“In addition to
the standard functions provided in the player, three new features are
equipped to the player (i.e. a new driving method, manipulable objects
embedded in the stereo panorama and a directional indicator).” (emphases
added)). Contrary to JPT’s assumption that “the two viewports would be on
different displays” (PO Resp. 18, 25), nothing in Wei indicates that a second
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computer monitor or display is required to implement the new features,
including the directional indicator. In fact, Wei specifically states that the
only extra hardware needed to implement the new features is a pair of 3D
eyeglasses. Id. at 2, 5–6.
We also are not persuaded by JPT’s argument and Dr. Neff’s
testimony that the directional indicator must be on a different display. JPT
and Dr. Neff narrowly focus on a single statement in Wei—the directional
indicator “should not contain any controls used for the navigation flow, or
even take over the role of the view port where the world is explored”
(Ex. 1006, 14)—to substantiate their positions. PO Resp. 25; Ex. 2008 ¶ 40.
That statement does not indicate that the directional indicator cannot be
displayed on the same computer monitor as the panoramic scene. Rather, it
merely explains that the user mainly navigates through the panoramic-scene
viewport, such as manipulating the objects shown in the panoramic scene.
Ex. 1006, 13.
We disagree with JPT’s assumption that the directional indicator is a
2D image and, therefore, it cannot be on the same display as the panoramic
scene. PO Resp. 25. Nothing in Wei indicates that the directional indicator
must be shown as a 2D image, and cannot be a 3D-anaglyphic image. Even
if the directional indicator is shown as a 2D image, JPT does not explain
adequately why a 2D image cannot be displayed with a 3D-anaglyphic
image on the same computer monitor. JPT’s argument rests on the
unsupported assumption that a pair of 3D eyeglasses cannot be used to view
a display that is showing both a 2D image and a 3D-anaglyphic image.
The disclosure of Wei does not support JPT’s assertion that the
panoramic scene and the directional indicator are not displayed
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simultaneously. PO Resp. 16–17. As discussed above, the directional
indicator helps the user to navigate through the panoramic scene more
effectively by displaying the top view (a map) of the entire 360° panoramic
scene. Id. at 11, 13–14, Fig. 4.7. The directional indicator also displays the
user’s current position, as well as the current viewing direction and field of
view of the panoramic scene, thereby showing the current exploring status of
the panoramic scene dynamically. Id. More importantly, Wei states:
The projection emitted from the red node indicates the current
viewing direction and field of view, also it is rotating
synchronously as the horizontal panning in the view port of the
player. To indicate the connectivity between nodes, the path is
plotted in [dash]-line. User can only hop to the connected node
if the path is covered by the emitting projection from the
current node, i.e. user should see where she/he is hopping to in
the view port. All inactive nodes [are] represented by blue
node, when user jump to other node, the color of nodes are
updated as specified.
Id. at 14 (emphases added). That disclosure of Wei confirms that a change
of the user’s current position, angular direction, and area of the panoramic
scene is indicated simultaneously in the directional indicator.
For the foregoing reasons, we determine that Google has
demonstrated sufficiently that Wei discloses the “display” claim features.
Whether Wei is enabling prior art
JPT argues that Wei lacks sufficient detail regarding the directional
indicator to be considered an enabling reference. PO Resp. 24–25, n.3. In
particular, JPT alleges that “Wei provides no discussion that would permit a
person of ordinary skill in the art to carry out the invention, namely, to
construct a display that includes a detailed view and a map that change in a
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simultaneous and corresponding fashion as a user changes the field of view.”
Id.
Google responds that “Wei is a technical paper targeted at an audience
familiar with traditional panorama visualization techniques.” Pet. Reply 7.
Google points out that “Wei’s citations to multiple other prior art
publications further enables the target audience to find explanations of the
techniques used in Wei, if desired, making Wei an enabling reference.” Id.
According to Google, as shown in Wei and other prior art of record, a person
of ordinary skill in the art would have been “able to implement the described
co-located map and detailed view with synchronized changes between the
two.” Id. (citing Ex. 1005–1009).
Having considered the parties’ arguments and the evidence before us,
we agree with Google that Wei is an enabling prior art reference. Prior art
publications and patents are presumed to be enabled. In re Antor Media
Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012); Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). JPT does not
proffer persuasive evidence to support its assertion that Wei is a
non-enabling prior art reference. Nor does JPT explain adequately the basis
for its non-enablement assertion. Cf. In re Morsa, 713 F.3d 104, 110 (Fed.
Cir. 2013) (“Once an applicant makes a non-frivolous argument that cited
prior art is not enabling, however, the examiner must address that
challenge.”).
Dr. Braasch testifies that a person of ordinary skill in the art at the
time of the invention “would have had knowledge of maps, images, and
software for designing a user interface conducive to image presentation,
manipulation and synchronization,” and “would also have at least (a) a
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Bachelor of Science degree in a field such as computer science, electrical
engineering, and/or a similar field or (b) at least 2 years of experience in
graphics processing or a similar field.”
3
Ex. 1003 ¶¶ 17–18. On this record,
we determine Dr. Braasch’s testimony concerning the understanding of one
of ordinary skill in the art to be credible. Thus, the ordinary skill level in the
art at the time of the invention was quite advanced.
We further recognize that Wei’s target audience is not the general
public, but rather those that are familiar with the traditional panorama
visualization techniques. See, e.g., Ex. 1006, Abs. (“Traditional panorama
visualization techniques give only the single eye’s depth cues to the
audience of the 3D world navigation”), 1 (“There are at least two techniques
applicable with modern computer devices, one is the shutter stereoscope,
and the other is the anaglyph technique.”). Throughout its disclosure, Wei
cites to prior publications concerning digital image processing and virtual
navigation environment to help readers understand where to find more
explanations as to the particular technique or implementation steps. See,
e.g., id. at 2, 6, 15.
4

3
Dr. Braasch holds a Ph.D. in Electrical Engineering from Ohio University
and has more than 12 years of experience in the field of image mapping
software and manipulation and display software technology. Ex. 1003,
¶¶ 4–14. At the time of his Declaration, Dr. Braasch was employed by Ohio
University as a Professor of Engineering in the School of Electrical
Engineering and Computer Science. Id. We, therefore, conclude that
Dr. Braasch is qualified to testify as to the understanding of one of ordinary
skill in the art of providing a dynamic map view for virtual tours.
4
See, e.g., Bend Jähne, Digital Image Processing: Concepts, Algorithms,
and Scientific Applications (Springer-Verlag 2nd ed., 1993); Shenchang Eric
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JPT again narrowly focuses on a single statement in Wei—the
directional indicator “should not contain any controls used for the navigation
flow, or even take over the role of the view port where the world is
explored” (Ex. 1006, 14)—to substantiate its position. PO Resp. 24–25, n.3.
JPT’s argument ignores the stated benefits of displaying a directional
indicator (a dynamic map view) simultaneously with the panoramic view
and the directional indicator’s synchronization features (Ex. 1006, 13–14).
In fact, Wei provides detailed information as to how one of ordinary
skill in the art could implement the new panorama visualization technique on
a computer and a computer monitor. Id. at 1–13. For instance, Wei
discusses how the real-time re-projection of an environment map is used to
visualize a surrounding scene and to create interactive walk-through, and
how manipulable objects embedded in the panoramic scene are implemented
in the interactive player. Id. at 11, 13. In regard to the directional indicator,
Wei further discloses the following:
Like manipulable objects embedded feature, it requires more
labor work from the panorama maker. For example, the maker
needs to prepare a map (i.e. top view of panoramas), finds out
the reference node positions in the panorama image, calculates
the registration points between connected nodes, specify the
starting node and its initial viewing direction, and so on.
Id. at 14 (emphases added). JPT does not explain sufficiently why—given
the detailed information and considerable guidance disclosed in Wei—one
of ordinary skill in the art could not have constructed a display that includes

Chen, QuickTime® VR – An Image-Based Approach to Virtual Environment
Navigation, In Prc. SIGGRAPH’ 95, 29–38 (1995).
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a detailed view and a map showing changes simultaneously, as recited in
claim 1, without undue experimentation.
The fact that experimentation may be complex does not necessarily
make it undue, if the art typically engages in such experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). JPT does not identify with
sufficient specificity what experimentation is needed. In fact, neither JPT
nor its expert witness makes any assessment of the level of experimentation
that would be required for one ordinary skill in the art to make and use the
claimed invention. In view of the foregoing, JPT has not demonstrated
adequately that Wei is non-enabling prior art.
Synchronizer
Claim 23 recites “a synchronizer for changing, in said map, said point,
said area, and said angular direction of said area within said territory
indicated by said detailed view in response to and in correspondence with
changes in said point origin, said area, or said angular direction as shown in
said detailed view.” Claim 17 recites similar limitations.
JPT takes the position that Wei does not describe a synchronizer
because Wei’s directional indicator does not function as the claimed
synchronizer. PO Resp. 18–21, 27. In particular, JPT argues that the
directional indicator does not allow for exploring or navigating the
panoramic scene, and it does not change “in said map, said point . . . in
response to and in correspondence with changes in said point origin . . . as
shown in said detailed view,” as recited in claim 23. Id. JPT also asserts
that Wei’s system does not have the ability to manipulate the image of the
detailed view, or control the angular direction. Id. at 20, 22, 26. JPT further
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submits that Wei does not describe the ability to indicate simultaneously in
the map any change in the angular direction and area of the detailed view.
Id. at 23, 26.
Google first points out that a specific device labeled a “synchronizer,”
is not required. Pet. Reply 7–8. Google maintains that Wei discloses the
“synchronizer” claim features, because Wei describes an interactive player
that includes a directional indicator and that runs in software that performs
the synchronization function. Id. Google points out that Wei describes
input devices (e.g., a keyboard and a mouse) that the interactive player uses
to change the angular direction and area of the panoramic scene through
panning, hopping, and zooming. Id. at 11–12. According to Google, both
panning and hopping between nodes constitute a change in origin. Id. at 9–
10. Google further notes that Wei’s directional indicator shows the
projection that indicates the current viewing direction and rotates
synchronously as the panoramic scene horizontally moves around (panning)
in the viewport. Id. at 10.
After reviewing the evidence on this record, we are not persuaded by
JPT’s arguments. Rather, we agree with Google that Wei describes the
“synchronizer” claim features. JPT’s arguments narrowly focus on the
functionalities of Wei’s new directional indicator feature, and ignore other
features and functionalities of Wei’s interactive player—including the basic
functions, such as panning, zooming, and hopping between multi-nodes
within the panoramic scene.
Notably, Wei’s interactive player includes a computer with image
processing software, a monitor, a mouse, and a keyboard. Ex. 1006, 1–3, 13,
15. The interactive player is programed to allow a user to perform the
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following basic functions: (1) interact dynamically with the panoramic
scene; (2) walk through and explore the panoramic scene, including
controlling the viewing direction, horizontal and vertical panning, and
zooming in and out (i.e., changing the angular direction and area of the
panoramic scene); and (3) hop to a different position or node in the
panoramic scene (i.e., changing the origin of the panoramic scene). Id. at 6,
10, 13–14.
Wei’s interactive player includes a new directional indicator feature.
Id. at 1, Abs. The directional indicator shows a map of the panoramic scene,
displaying dynamically the current exploring status—e.g., the user’s current
position, field of view, and viewing direction of the panoramic scene shown
in the viewport. Id. at 14, Fig. 4.7. In other words, the directional indicator
shows, on the map, the point of origin, angular direction, and area of the
panoramic scene. Moreover, the projection emitted from the user’s current
position (the red node illustrated in Figure 4.7 of Wei) rotates synchronously
as the panoramic scene horizontally moves around (panning) in the
viewport, thereby indicating simultaneously changes in the angular direction
and area of the panoramic scene. Id.
We are not persuaded by JPT’s argument that “[t]here is no discussion
anywhere in Wei about changing the origin of the user from the viewport
when viewing the 3D anaglyphic panorama.” PO Resp. 20 (emphasis
added); see id. at 21–22, 27. As noted above, Wei specifically describes an
interactive player that allows the user to interact dynamically with the
panoramic scene. Ex. 1006, 10. Wei’s interactive player has several basic
functions, including horizontal and vertical panning, zooming in and out,
and hopping between multi-nodes in the panoramic scene as shown in the
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viewport. Id. at 10–11. Contrary to JPT’s assertion that hopping between
nodes is shown only in the directional indicator, not in the panoramic-scene
viewport (PO Resp. 21, n.2), Wei’s interactive player clearly permits a user
to hop between multi-nodes within the panoramic-scene viewport using the
basic functions as noted above. Ex. 1006, 10–11. Accordingly, Wei’s
interactive player enables a user to change the origin of panoramic-scene
viewport, and indicates simultaneously the new origin in the directional
indicator. Id. at 14.
We also are not persuaded by JPT’s argument that it is impossible for
Wei’s directional indicator to indicate any changes in angular direction and
area of the detailed view, because the directional indicator appears only “as
needed.” PO Resp. 23. As articulated previously, we have rejected that
argument, as it is predicated on the incorrect premise that the claim language
requires the map view be displayed all the time, and the directional indicator
“may not be present at all.”
We further are not persuaded by JPT’s argument that Wei allows the
user to control the rate of spinning, but not to change the angular direction.
PO Resp. 26. The disclosure of Wei does not support JPT’s assumption (id.)
that Wei abandoned the conventional feature—the feature that allows the
user to control “the viewing direction via toggling the mouse over the view
port to simulate the camera panning and types the specified keys in the
keyboard for other actions, such as zoom in, zoom out, hopping[,] etc.”
(Ex. 1006, 13)—in favor of the auto-spinning feature. Contrary to JPT’s
view that the conventional feature is a different system that has been
replaced by the auto-spinning feature, the auto-spinning feature merely is an
enhancement or a new additional feature to the interactive player. Ex. 1006,
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10–11. Nothing in Wei indicates the auto-spinning feature replaces the
interactive player’s basic functions—panning, zooming, and hopping
between multi-nodes—so that users can utilize only the auto-spinning
feature and not the conventional features and basic functions. Id. at 13
(“It preserves the conventional interaction rules . . . with one more option
allowing camera panning in the desired direction continuously without
further mouse toggling.” (emphases added)).
Upon consideration of the parties’ contentions and evidence before us,
we determine that Google has demonstrated sufficiently that Wei discloses
the “synchronizer” claim features.
Conclusion
For the foregoing reasons, we determine that Google has
demonstrated by a preponderance of evidence that claims 1, 4, 5, 17, 21, 23,
and 27 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Wei.

Claims 2, 3, 6, 10–15, 18, 19, 21, 24, 25, and 28—Obviousness
Grounds of Unpatentability Based in Part on Wei

Google asserts that claims 2, 3, 10–15, 18, 19, 21, 24, and 25 are
unpatentable over the combination of Wei and Naughton, and that claims 6
and 28 are unpatentable over the combination of Wei and Dykes. Pet. 43–
47. For each ground of unpatentability, Google explains how the
combination of the cited prior art references describes the claim limitations
and provides a sufficient rationale for combining the references. Id. Google
also provides the Declaration of Dr. Braasch to support its positions. Id.
(citing Ex. 1003 ¶¶ 168–176).
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With respect to claims 10–15, JPT counters that the combination of
Wei and Naughton fails to teach or suggest the detail display means, map
display means, and synchronization means, as recited in independent
claim 10, because Wei does not describe any means for changing the origin
in the detailed view and any means for changing the angular direction and
area in the directional indicator. PO Resp. 34–35 (citing Ex. 2008 ¶¶ 62,
64–66). In essence, JPT presents the same arguments with regard to
independent claims 1, 17, and 23.
We, however, have addressed those arguments in our analysis above
regarding the anticipation ground of unpatentability based on Wei as to
claims 1, 4, 5, 17, 21, 23, and 27, and determined that they are unpersuasive.
For instance, contrary to JPT’s assertion that Wei does not describe any
means for changing the origin in the detailed view, Wei’s interactive player
has several basic functions, including horizontal and vertical panning,
zooming in and out, and hopping between multi-nodes in the panoramic
scene as shown in the viewport. Ex. 1006, 10–11. In addition, the
projection emitted from the user’s current position (the red node illustrated
in Figure 4.7 of Wei), as shown in Wei’s directional indicator, rotates
synchronously as the panoramic scene horizontally moves around (panning)
in the viewport, thereby indicating simultaneously the changes in the angular
direction and area of the panoramic scene. Id. at 14, Fig. 4.7.
With respect to other dependent claims, JPT again essentially
reiterates the same arguments presented with regard to independent claims 1,
17, and 23. PO Resp. 33–37. We also have addressed those arguments in
our analysis above regarding the anticipation ground of unpatentability
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based on Wei as to independent claims 1, 17, and 23, and determined those
arguments to be unavailing.
Conclusion
For the foregoing reasons, we determine that Google has
demonstrated by a preponderance of evidence that claims 2, 3, 10–15, 18,
19, 21, 24, and 25 are unpatentable over the combination of Wei and
Naughton, and that claims 6 and 28 are unpatentable over the combination of
Wei and Dykes.

E. JPT’s Motion to Amend Claims
JPT moves to substitute claims 29 and 30 for challenged claims 24
and 23, respectively, if we find original claims 23 and 24 unpatentable. Mot.
Amend 1. As stated above, we determine that Google has demonstrated by a
preponderance of evidence that all of the challenged claims are unpatentable,
including claims 23 and 24. Therefore, JPT’s Motion to Amend is before us
for consideration. For the reasons set forth below, JPT’s Motion to Amend
Claims is denied.
Proposed substitute claim 29 depends from original claim 23 and
proposed substitute claim 30 is an independent claim. Original claim 23 and
proposed substitute claims 29 and 30 are reproduced, as follows:
23. A system for indicating the origin and area of a
detailed view of an area within in a territory, as seen from a
point within said territory, comprising:
a display for displaying a detailed view of an area within
a territory as seen from a point within said territory, and for
enabling a user to change the location of said point, said area,
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and the angular direction of said area as seen from said point, as
shown in said detailed view,
a map display for displaying a map of said territory and
indicating said point, said area, and said angular direction of
said area as seen from said point, as shown in said detailed
view, and
a synchronizer for changing, in said map, said point, said
area, and said angular direction of said area within said territory
indicated by said detailed view in response to and in
correspondence with changes in said point origin, said area, or
said angular direction as shown in said detailed view.
Ex. 1001, 12:25–44 (emphases added).
29. (Proposed Substitute for Original Claim 24) The
system of claim 23 wherein said map display is arranged to
indicate said area of said territory shown in said detailed view
in a different brightness than the rest of said map,
wherein the map display indicates the area shown in the
detailed view by displaying a sector on the map in the different
brightness, and
wherein the synchronizer rotates the sector on the map
simultaneously with a change in the angular direction in the
detailed view and
resizes the sector simultaneously with a change in the
area displayed in the detailed view.

30. (Proposed Substitute for Original Claim 23) A system
for indicating the origin and area of a detailed view of an area
within in a territory, as seen from a point within said territory,
comprising:
a display for displaying a detailed view of an area within
a territory as seen from a point within said territory, and for
enabling a user to change the location of said point, said area,
and the angular direction of said area as seen from said point, as
shown in said detailed view,
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a map display for displaying a map of said territory and
indicating said point, said area, and said angular direction of
said area as seen from said point, as shown in said detailed
view, and
a synchronizer for changing, in said map, said point, said
area, and said angular direction of said area within said territory
indicated by said detailed view in response to and in
correspondence with changes in said point origin, said area, or
said angular direction as shown in said detailed view,
wherein the detailed view is a portion of a panoramic
image of a geographic area, the panoramic image comprises a
combination of a plurality of images of the geographic area
captured by one or more digital cameras, said point displayed
on the map indicates a location of the one or more digital
cameras when the images were captured,
the display and the map display are presented
simultaneously in a single window, and
the synchronizer changes said area displayed in the
detailed view simultaneously with a change in said point
displayed on the map.
Mot. Amend 1–2 (emphases added by JPT to show the added features).
A motion to amend claims in an inter partes review is not, itself, an
amendment. As the moving party, JPT bears the burden of proof to establish
that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). Therefore,
JPT’s proposed substitute claims are not entered automatically, but only
upon JPT having demonstrated by a preponderance of the evidence the
patentability of those substitute claims. See, e.g., 37 C.F.R. § 42.1(d)
(noting that the “default evidentiary standard [in proceedings before the
Board] is a preponderance of the evidence.”).
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1. Claim Construction
Claim construction is an important step in a patentability
determination. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed.
Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) (“Both anticipation under § 102 and obviousness under § 103 are
two-step inquiries. The first step in both analyses is a proper construction of
the claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” (internal citations omitted)). A
motion to amend claims must identify how the proposed substitute claims
are to be construed, especially when the proposed substitute claims introduce
new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-
00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26).
In its Motion to Amend, JPT asserts that the claim term “map display”
should be construed as “a map that includes the area covered by the
panoramic image that indicates the direction and area over which the
detailed field of view is taken.” Mot. Amend 4 (citing Ex. 1001, 3:4–5, 42–
44). JPT’s proposed claim construction improperly would import
limitations—“panoramic image that indicates the direction and area over
which the detailed field of view is taken”—from the Specification into the
claims. JPT’s proposed claim construction also would render other claim
language superfluous—“indicating . . . said area, and said annular direction
of said area as seen from said point” (claim 23). See Bicon Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are
interpreted with an eye toward giving effect to all terms in the claim.”); see
also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
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2007) (denouncing claim constructions which render phrases in claims
superfluous). As such, we decline to adopt JPT’s claim construction.
The claim term “detailed view” is not a new claim term and we have
set forth the claim construction for this claim term in the Decision on
Institution. Dec. 8. Nevertheless, JPT maintains that the claim term
“detailed view” should be construed as “a detailed view of a panoramic
image.” Mot. Amend 4 (citing Ex. 1001, 3:41–42). JPT’s proposed claim
construction improperly would import limitations—e.g., “a panoramic
image”—from the Specification into the claims, as discussed above in our
claim construction analysis for the original challenged claims. JPT’s
proposed claim construction also would render other claim language
superfluous—“wherein the detailed view is a portion of a panoramic image
of a geographic area” (proposed substitute claim 30, Mot. Amend 2). As
such, we decline to adopt JPT’s claim construction. Rather, we apply the
same claim construction set forth in our claim construction analysis for the
original challenged claims above.
JPT introduced several new claim terms—e.g., “resizes the sector
simultaneously” and “presented simultaneously in a single window”—in its
proposed substitute claims. JPT argues that those claim features are critical,
distinguishing the proposed substitute claims from the prior art. See, e.g.,
Mot. Amend 12–13. Yet, JPT does not provide any claim constructions or
explanations as to how the new claim terms are to be construed.
Without a reasonable construction of the new claim features added by
the proposed substitute claims, JPT’s motion does not provide adequate
information for us to determine whether JPT has demonstrated the
patentability of its proposed substitute claims over the prior art generally.
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Therefore, we are not persuaded that JPT has met its burden to demonstrate
patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c).
2. Written Description Support
A motion to amend claims must identify clearly the written
description support for each proposed substitute claim. 37 C.F.R.
§ 42.121(b). The requirement that the motion to amend must set forth the
support in the original disclosure of the patent is with respect to each claim,
not for a particular feature of a proposed substitute claim. In other words, it
is inadequate to show written description support for just the claim feature
added by the proposed substitute claim. The motion must account for the
claimed subject matter as a whole, i.e., the entire proposed substitute claim,
when showing where there is sufficient written description support for each
claim feature. Nichia Corp. v. Emcore, IPR2012-0005, slip op. at 4 (PTAB
June 3, 2013) (Paper 27).
In its Motion to Amend, JPT does not set forth adequate written
description support for all of the claim features. Rather, JPT merely
addresses the new claim features added by the proposed substitute claims.
Mot. Amend 3–7. For that reason alone, JPT’s Motion to Amend is
insufficient.
In addition, we are not persuaded that JPT has demonstrated that the
original disclosure of the ’529 patent provides adequate written description
support under 35 U.S.C. § 112, ¶ 1, even for all of the new claim features.
Notably, JPT’s Motion to Amend does not provide sufficient explanation or
evidence to establish that the new “resizing” claim feature—“the
synchronizer . . . resizes the sector simultaneously with a change in the area
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displayed in the detailed view” (proposed substitute claim 29)—is disclosed
adequately in the ’529 patent’s original disclosure.
In its Motion to Amend, JPT directs our attention to the following
portions of the original disclosure to support its position that the “resizing”
claim feature is disclosed adequately (id at 3–5):
Simultaneously highlighted sector or arc 34 of Fig 3 will
rotate [counter-clockwise (CCW)] to highlight new field 36 in
Fig 4 and the actual area being viewed. The highlighted area
will still cover an angle or arc 32, which will be approximately
80°, but may change slightly because of imperfections in the
images. Thus when the viewed arc is moved, one of the lines
bounding the highlighted arc may move faster or slower than
the other line to reflect this.
Ex. 1021, 26; Ex. 1001, 5:51–58 (emphases added).
When the detailed field of view is changed, the highlighted area
in the map simultaneously changes to show the area being
viewed. This enables the user to be more easily acclimated to
and understand an area being viewed and also to understand
more fully the direction in which the detailed view is taken.
Ex. 1021, 32–33; Ex. 1001, 9:31–36 (emphasis added by JPT).
We reproduce below Figure 3 of the ’529 patent, which appears to be
the same as Figure 3 of the original disclosure (Ex. 1021, 43):

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Figure 3 of the ’529 patent depicts a window showing a map which
includes the area covered by a panoramic image. According to the ’529
patent’s original disclosure, the highlighted sector or arc 34 as shown in
Figure 3 will rotate to highlight the actual area being viewed in the detailed
view. Ex. 1021, 26; Ex. 1001, 5:51–53.
We are not persuaded by JPT’s argument that those cited portions of
the ’529 patent’s original disclosure provides adequate written description
support for the “resizing” claim feature. The written description test is
whether the original disclosure of the application relied upon reasonably
conveys to a person of ordinary skill in the art that the inventor had
possession of the claimed subject matter as of the filing date. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
We are cognizant that the original disclosure need not describe the
claimed subject matter in exactly the same way as the terms used in the
claims. See In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). However,
a description which renders obvious the invention sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Moreover, even if the claimed subject matter could have been “envisioned”
from the earlier disclosure, it is not enough to establish adequate written
description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir.
2010).
Here, we are unpersuaded that the mere disclosure of imperfections in
the images is sufficient to describe the claimed subject matter—“the
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synchronizer . . . resizes the sector simultaneously with a change in the area
displayed in the detailed view.” See Ex. 1021, 26:15–18; Ex. 1001, 5:51–58
(“The highlighted area will still cover an angle or arc 32, which will be
approximately 80°, but may change slightly because of imperfections in the
images.”) (emphasis added)).
The scope of the “resizing” claim feature is broad. However, the cited
portions of the ’529 patent’s original disclosure clearly indicate that the
system was neither programed nor designed for a user to resize the sector.
Id. Rather, it is the imperfections in the images that randomly cause the
resizing. In fact, the cited portions of the original disclosure indicate that the
system was designed to maintain a constant angle of approximately 80°. Id.
Furthermore, the imperfections of the images are caused by the
rotational movement of viewed arc 34. Id. (“[W]hen the viewed arc is
moved, one of the lines bounding the highlighted arc may move faster or
slower than the other line to reflect this [slight change in the angle of the
arc].”). It is unclear from the original disclosure that the resizing (if any)
caused by the imperfections in the images will be maintained once viewed
arc 34 stops rotating, or the system will correct itself, returning the arc to an
angle of approximately 80°. The user may not even notice the slight resizing
that occurred during the rotation.
Moreover, the ’529 patent’s original disclosure does not indicate that
the imperfections in the images occur consistently the same way or cause the
same degree of resizing. For instance, it is unclear whether the sector will
decrease or increase in size, which line bounding the highlighted arc is
moving faster or slower at what direction, or how much the section will be
resized. Such random and accidental changes caused by the imperfections in
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the images do not reasonably convey to one of ordinary skill in the art that
the inventor had possession of the claimed subject matter—“the
synchronizer . . . resizes the sector simultaneously with a change in the area
displayed in the detailed view.” The relied-upon portions of the
Specification fail to describe a “synchronizer” that has any control over
these imperfections or random movements.
In view of the foregoing, we are not persuaded that the ’529 patent’s
original disclosure reasonably conveys to one of ordinary skill in the art that
the inventor had possession of the “resizing” claim feature as of the filing
date of the original disclosure. For all of the reasons stated above, JPT’s
Motion to Amend fails to set forth the written description support for each
proposed substitute claim as required by 37 C.F.R. § 42.121(b)(1) and
§ 42.121(b)(2).
3. Patentability over Prior Art
The patent owner bears the burden of proof in demonstrating
patentability of the proposed substitute claims over the prior art in general,
and, thus, entitlement to add these claims to its patent. Idle Free, slip op.
at 7. In a motion to amend, the patent owner must show that the conditions
for novelty and non-obviousness are met for the prior art available to one of
ordinary skill in the art at the time of the invention. With regard to
obviousness as the basis of potential unpatentability of the proposed
substitute claims, the patent owner should present and discuss facts which
are pertinent to the first three underlying factual inquiries of Graham, 383
U.S. at 17–18: (1) the scope and content of the prior art, (2) differences
between the claimed subject matter and the prior art, and (3) the level of
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ordinary skill in the art, with special focus on the new claim features added
by the proposed substitute claims. The patent owner should identify each
new claim feature, and come forward with technical facts and reasoning
about that particular feature. Some discussion and analysis should be made
about the specific technical disclosure of the closest prior art as to each
particular feature, and the level of ordinary skill in the art, in terms of
ordinary creativity and the basic skill set of a person of ordinary skill in the
art, regarding the feature.
Here, we are unpersuaded that JPT has demonstrated by
preponderance of evidence that the proposed substitute claims are
patentable. In its Motion to Amend, JPT does not address, in any
meaningful way, what was previously known in the art, much less the level
of ordinary skill in the art, regarding each new claim feature added by its
proposed substitute claims. Notably, proposed substitute claim 30 adds the
following features:
(1) wherein the detailed view is a portion of a panoramic image of
a geographic area, the panoramic image comprises a
combination of a plurality of images of the geographic area
captured by one or more digital cameras, said point displayed
on the map indicates a location of the one or more digital
cameras when the images were captured,
(2) the display and the map display are presented simultaneously
in a single window, and
(3) the synchronizer changes said area displayed in the detailed
view simultaneously with a change in said point displayed on
the map.
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Panoramic image
First, JPT does not address, in its Motion to Amend, what was
previously known in the art, let alone the level of ordinary skill in the art,
regarding the “panoramic image” feature. JPT merely argues that Chan does
not disclose the new claim feature. Mot. Amend 11–12. Chan, however, is
not the closest known prior art with respect to the “panoramic image”
feature. Although Chan is the closest known prior art as to the claim
features recited in the original claims, the “panoramic image” feature was
not presented in the original claims.
Interestingly, JPT even fails to discuss its own admitted prior art
(Ex. 1001, 3:60–4:39) regarding the “panoramic image” claim feature. Nor
does JPT discuss Poelstra
5
in its Motion to Amend, with respect to that new
claim feature, even though JPT’s Motion confirms that Poelstra is known
prior art that was cited by the Examiner during the prosecution of the ’529
patent (Mot. Amend 8–9).
Figure 2 of the ’529 patent, labeled as “Prior Art,” shows a detailed
view of a portion of the 360° panoramic image of a geographic area, shown
in Figure 1, which also is labeled as “Prior Art.” Ex. 1001, 4:19–21.
According to JPT’s admitted prior art, the 360° panoramic image “was taken
with multiple successively rotated exposures using a digital camera to take a
series of pictures and splicing the pictures together to form the 360°
panoramic image, but it can also be taken with fewer exposures using a
camera with a panoramic or 180° (or narrower) lens.” Id. at 3:66–4:3.

5
Poelstra, US 5,563,650, issued Oct. 8, 1996 (Ex. 1028).
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Poelstra confirms that the techniques described in JPT’s admitted
prior art for producing panoramic images were well-known in the art at the
time of the invention—“The production of panoramic images whereby the
whole surroundings from one point can be observed is known.” Ex. 1028,
1:25–26 (emphasis added). Poelstra describes that for the purposes of
producing panoramic images, “a number of photos can be taken, with a
photographic camera, which can then be put together to form a panoramic
image.” Id. at 1:27–29. Poelstra further discloses displaying a point on a
map to indicate a location of the camera when the photos were taken. Id. at
3:38–39, Fig. 5.
There is no explanation, in the Motion to Amend, as to why such
technical disclosures do not meet the “panoramic image” feature. Indeed,
one of ordinary skill in the art would have recognized that at least Poelstra
describes or suggests that new claim feature. Addressing only a reference
that is not the closest known prior art with respect to the “panoramic image”
claim feature is insufficient to establish that proposed substitute claim 30 is
patentable over prior art.
Single window
JPT’s Motion to Amend also does not identify what was known
previously in the art regarding the “single window” feature. Nor does it
discuss the closest known prior art, or the level of ordinary skill in the art, as
to that particular claim feature.
As noted above, JPT does not provide a claim construction for the
claim term “a single window.” JPT directs our attention to the following
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portion of the ’529 patent’s original disclosure for the written description
support of the “single window” feature:
Fig 4 is similar to Figs 2 and 3, except that it combines the two
windows into one window with two sections, a left section 40—
the detailed field of view, and a right section 38—the map. The
single widow of Fig 4 is the presently preferred embodiment
since, by combining both windows into one, is simpler in
appearance.
Mot. Amend 6; Ex. 1021, 25; Ex. 1001, 5:13–18 (emphases added).
According to this cited disclosure, we observe that “a single window” may
have two sections, and “combining two windows into one is simpler in
appearance.”
To substantiate its position that proposed substitute claim 30 is
patentable, JPT asserts that Wei does not disclose the “single window” claim
feature. Mot. Amend 13. However, Wei is not the closest known prior art
with respect to that new claim feature. Although Wei is the closest known
prior art as to the claim features recited in the original claims, the “single
window” feature was not presented in the original claims.
Again, JPT’s Motion does not discuss the prior art references known
to JPT that appear to describe the new claim feature. For example, Chan and
Prouty, which are relied upon by Google in one of the instituted grounds of
unpatentability as discussed above, each show a computer screen that
displays both a map view and a detailed view of a scene. See Ex. 1005,
Figs. 5–6 (reproduced above in our anticipation analysis based on Chan);
Ex. 1020, Fig. 1.
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Figure 1 of Prouty, reproduced below, illustrates a computer screen
display of a computer 3D graphical system:

As shown in Figure 1 of Prouty, the computer monitor displays a
single window simultaneously depicting main view window 104, showing a
3D interior area of a building (the detailed view), and view box window 108,
showing a top plan view of the interior area (the map view). Ex. 1020,
7:30–67, 9:29–49. There is no explanation, in JPT’s Motion to Amend, as to
why such technical disclosures do not meet the “single window” feature.
Indeed, one of ordinary skill in the art would have recognized that at least
Prouty describes or suggests that new claim feature.
Although JPT’s Motion confirms that Chan is a known prior art
reference, JPT does not discuss Chan with respect to the “single window”
feature. Mot. Amend 9–10. Nor does JPT’s Motion acknowledge Prouty as
one of the known prior art references. Limiting the patentability analysis to
only Wei, which is not the closest prior art with respect to that the “single
window” claim feature, is insufficient to establish that proposed substitute
claim 30 is patentable over the prior art.
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Synchronizer
In its Motion to Amend, JPT argues that Wei does not disclose a
synchronizer that “changes said area displayed in the detailed view
simultaneously with a change in said point displayed on the map.” Mot.
Amend 12–13 (emphasis added). In particular, JPT alleges that, because
Wei indicates that the directional indicator shows the current exploring
status, “Wei advocates waiting until a user commits any changes in the
detailed view before updating the ‘current exploring status’ by changing
what is shown in the map view.” Id. at 12.
However, we are not persuaded by JPT’s arguments, because they fail
to recognize that Wei’s directional indicator reflects the current exploring
status of the active panorama dynamically (i.e., immediately and
concurrently). Ex. 1006, 14. JPT’s Motion also does not address Wei’s
disclosure regarding hopping between multiple nodes.
As discussed above in our anticipation analysis based on Wei, Wei’s
interactive player is a navigation tool for displaying and exploring a 360°
panoramic scene, allowing the user to interact dynamically with the
panoramic scene. Ex. 1006, 10, 13–14. Wei’s directional indicator (the
dynamical map view) shows the user’s current position and viewing
direction of the active panorama that is displayed simultaneously in the
viewport (the detailed view). Id. at 11, 13–14. The user may use the
interactive player to hop between multiple nodes. Id. at 14. Wei’s
directional indicator specifically shows where the user can go next in the
panoramic scene. Id.
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Figure 4.7 of Wei is reproduced below:

As depicted in Figure 4.7 of Wei, the directional indicator allows the
user to hop from the red node—a point displayed in the directional indicator
that represents the position of the current active panorama shown in the
viewport—to the connected inactive node (shown as a blue node with a
path). Id. at 14. Wei further describes that the user should see where he or
she is hopping to in the panoramic-scene viewport. Id. In light of Wei’s full
disclosure of the directional indicator, one of ordinary skill in the art would
have recognized that Wei describes or suggests “chang[ing] said area
displayed in the detailed view simultaneously with a change in said point
displayed on the map,” as recited in proposed substitute claim 30.
In its Motion to Amend, JPT does not address those relevant portions
of Wei. Therefore, we are not persuaded that JPT’s Motion has set forth a
sufficient showing to demonstrate that proposed substitute claim 30 is
patentable over the prior art.
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Level of Ordinary Skill
In addition, JPT’s Motion has not proffered sufficient explanations or
evidence to address the level of ordinary skill in the art at the time of the
invention. Notably, JPT does not explain adequately why one of ordinary
skill in the art would not have combined the technical disclosures that are the
closest prior art as to each of the claim features to arrive at the claimed
invention. For example, Wei describes a single computer monitor that
displays both a detailed view of a panoramic scene and a directional
indicator (a dynamic map view). Nevertheless, JPT does not provide
sufficient reason why, in light of Prouty’s disclosure of combining a detailed
view and a map view in a single window, it would not have been obvious to
modify Wei’s computer monitor to display both views in a single window,
much less why such a combination of known elements would have been
beyond the level of ordinary skill in the art. KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
4. Conclusion
For the foregoing reasons, JPT has not, in its Motion to Amend, set
forth a prima facie case for the relief requested or satisfied its burden of
proof. Consequently, the current situation does not require us to consider
Google’s Opposition and JPT’s Reply. JPT’s Motion to Amend is denied.

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F. JPT’s Motion to Exclude
JPT’s Motion to Exclude seeks to exclude the following items of
evidence:
(1) Dr. Braasch’s Declaration (Ex. 1003) filed in support of
Google’s Petition;
(2) Dr. Neff’s cross-examination testimony concerning Dykes
(Ex. 2032, 19:13–27:24); and
(3) Dr. Braasch’s Declaration (Ex. 1031) filed in support of
Google’s Opposition to JPT’s Motion to Amend. Paper 52
(“Mot. Exclude”).

Google filed an Opposition to JPT’s Motion to Exclude. Paper 60
(“Opp. Exclude”). However, JPT did not file a reply to Google’s Opposition
to its Motion to Exclude. As the movant, JPT has the burden of proof to
establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c).
For the reasons stated below, JPT’s Motion to Exclude is denied.
Dr. Braasch’s Declaration filed in support of Google’s Petition
JPT alleges that Dr. Braasch’s Declaration (Ex. 1003) should be
excluded, because Dr. Braasch did not interpret expressly the claim term
“detailed view” in his Declaration. Mot. Exclude 7–9. JPT contends that
Dr. Braasch’s testimony concerning Chan is not based on our claim
construction set forth in the Decision on Institution. Id. at 8. According to
JPT, Dr. Braasch’s testimony is “based on an improper understanding of the
claims” and, therefore, irrelevant. Id.
Google counters that JPT did not object timely to Dr. Braasch’s
testimony. Opp. Exclude 2–3. We agree that there is insufficient showing
that JPT has objected timely to Dr. Braasch’s testimony. Mot. Exclude 7–9.
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Under 37 C.F.R. § 42.64 (b), “[a]ny objection to evidence submitted
during a preliminary proceeding must be served within ten business days of
the institution of the trial.” A motion to exclude must identify the objection
in the record and must explain the objection. 37 C.F.R. § 42.64(c). Here,
JPT’s Motion to Exclude does not indicate that JPT served Google with an
objection to Dr. Braasch’s testimony in accordance with 37 C.F.R.
§ 42.64(b). Mot. Exclude 7–9. Nor does JPT’s Motion identify or explain
such an objection. Accordingly, JPT’s request to exclude Dr. Braasch’s
testimony concerning Chan (Ex. 1003) is denied.
Dr. Neff’s cross-examination testimony concerning Dykes
JPT argues that Dr. Neff’s cross-examination testimony concerning
Dykes (Ex. 2032, 19:13–27:24) should be excluded, because it exceeds
Dr. Neff’s direct testimony (Ex. 2028). Mot. Exclude 1–4. JPT proffers
Dr. Neff’s direct testimony (Ex. 2028) in support of JPT’s Reply to Google’s
Opposition to JPT’s Motion to Amend.
Google counters that it neither comments nor relies upon Dr. Neff’s
cross-examination testimony concerning Dykes in any briefing papers,
including its Observations on Cross-Examination of Dr. Neff. Opp.
Exclude 6. Upon review of the record before us, we agree with Google that
it does not rely, in any respects, on Dr. Neff’s cross-examination testimony
concerning Dykes. As such, JPT’s Motion has not identified sufficient
reasons to exclude Dr. Neff’s cross-examination testimony concerning
Dykes and, therefore, JPT’s request is denied.
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Dr. Braasch’s Declaration filed in support of Google’s Opposition to JPT’s
Motion to Amend
JPT also seeks to exclude Dr. Braasch’s Declaration (Ex. 1031)
concerning Noguchi (U.S. Patent No. 6,903,763) and the “resizing” claim
feature added by proposed substitute claim 29. Mot. Exclude 4–7, 9–12.
Dr. Braasch’s Declaration was filed in support of Google’s Opposition to
JPT’s Motion to Amend.
As noted above, the current situation did not require us to consider
Google’s Opposition to JPT’s Motion to Amend and JPT’s Reply filed in
support of its Motion to Amend. Consequently, we do not rely on
Dr. Braasch’s Declaration (Ex. 1031) concerning Noguchi (U.S. Patent No.
6,903,763) and the “resizing” claim feature added by the proposed substitute
claim 29, in rendering our decision on JPT’s Motion to Amend. Thus, JPT’s
request to exclude Dr. Braasch’s Declaration is denied as moot.
Conclusion
For the foregoing reasons, JPT’s Motion to Exclude is denied.

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III. CONCLUSION
Google has met its burden of proof by a preponderance of the
evidence in showing that claims 1–6, 10–15, 17–19, 21, 23–25, 27, and 28
of the ’529 patent are unpatentable based on the following grounds of
unpatentability:
Claims Basis References
1, 4–6, 17, 23, 28 § 102(e) Chan
1, 4, 5, 17, 21, 23, 27 § 102(b) Wei
10, 13, 14, 15 § 103(a) Chan and Naughton
2, 3, 11, 12, 18, 19, 24, 25 § 103(a) Chan, Galitz, and Naughton
15, 21, 27 § 103(a) Chan and Prouty
2, 3, 10–15, 18, 19, 21, 24, 25 § 103(a) Wei and Naughton
6, 28 § 103(a) Wei and Dykes

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–6, 10–15, 17–19, 21, 23–25, 27, and 28 of
the ’529 patent are held unpatentable;
FURTHER ORDERED that JPT’s Motion to Amend Claims is
denied;
FURTHER ORDERED that JPT’s Motion to Exclude Evidence is
denied; 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.
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For PETITIONER:

Michelle Holoubek
Eldora Ellison
Sterne, Kessler, Goldstein & Fox PLLC
mholoubek-PTAB@skgf.com
eellison-PTAB@skgf.com

For PATENT OWNER:

Tarek Fahmi
Michael Davitz
Ascenda Law Group, PC
tarek.fahmi@ascendalaw.com
michael.davitz@ascendalaw.com