Google Inc.v.Visual Real Estate, Inc.

Patent Trial and Appeal Board

Feb 22, 2016

11216465 (P.T.A.B. Feb. 22, 2016)

Trials@uspto.gov Paper 39
Tel: 571-272-7822 Entered: February 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE INC.,
Petitioner,
v.
VISUAL REAL ESTATE, INC.,
Patent Owner.

Case IPR2014-01338
Patent 7,389,181 B2

Before MICHAEL R. ZECHER, BEVERLY M. BUNTING, and
KEVIN W. CHERRY, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
Google Inc. (“Petitioner”) filed a corrected Petition requesting an inter
partes review of claims 1 and 3–11 (the “challenged claims”) of U.S. Patent
No. 7,389,181 B2 (Ex. 1002, “the ’181 patent”) pursuant to 35 U.S.C.
§§ 311–319. Paper 4 (“Pet.”). Patent Owner, Visual Real Estate, Inc.,
(“Patent Owner”) timely filed a Preliminary Response to the Petition.
Paper 9 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted this
trial on February 23, 2015 as to these claims based on the following asserted
grounds of unpatentability (“grounds”):1
1. Claims 1, 3–5, 7, and 9 as anticipated under 35 U.S.C.
§§ 102(a) or 102(e) by Yoichi;
2. Claims 6, 10, and 11 as unpatentable under 35 U.S.C.
§ 103(a) over Yoichi and Di Bernardo; and
3. Claim 8 as unpatentable under 35 U.S.C. § 103(a)
over Yoichi and Lachinski.
Paper 11 (“Decision on Institution” or “Dec. to Inst.”).
During the course of trial, Patent Owner timely filed a Patent Owner
Response (Paper 22 (“PO Resp.”)), and Petitioner timely filed a Reply
thereto (Paper 23 (“Pet. Reply”)). Patent Owner then filed two motions.
Patent Owner filed a Motion for Observation regarding certain cross-
examination testimony of Petitioner’s rebuttal witness, Dr. John. R. Grindon
(Paper 29 (“Obs.”)), and a Motion to Exclude (Paper 30 (“Mot. to
Exclude”)). In turn, Petitioner filed a Response to Patent Owner’s Motion

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
effect on March 18, 2013. Because the application from which the ’181
patent issued was filed before that date, our citations to 35 U.S.C. §§ 102
and 103 are to the pre-AIA version.
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for Observation (Paper 35 (“Obs. Resp.”)) and an Opposition to Patent
Owner’s Motion to Exclude (Paper 34 (“Exclude Opp.”)). An oral hearing
was conducted on October 28, 2015, and a transcript of the hearing is
entered in the record. Paper 38 (Tr.).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has demonstrated,
by a preponderance of the evidence, that claims 1 and 3–11 of the ’181
patent are unpatentable. We also deny Patent Owner’s Motion to Exclude.

B. Related Matters
The parties represent that the ’181 patent is the subject of the
following judicial proceeding: Visual Real Estate, Inc., v. Google, Inc., No.
3:14-cv-00274-TJC-JRK (M.D. Fla. March 10, 2014). Pet. 2; Paper 7, 2. In
addition to this Petition, Petitioner filed another corrected petition, in Case
IPR2014-01339, challenging the same claims of the ’181 patent on other
grounds. Case IPR2014-01339, Paper 4 (PTAB Sept. 5, 2014). We entered
a Final Written Decision in Case IPR2014-01339, concluding that Petitioner
demonstrated by a preponderance of the evidence that claims 1 and 3–11 of
the ’181 patent were unpatentable under §§ 102(b) and 103(a). Case
IPR2014-01339, Paper 39 (PTAB Jan. 25, 2016). Petitioner also filed two
other Petitions challenging the patentability of a certain subset of claims in
the following patents owned by Patent Owner: (1) U.S. Patent No.
7,929,800 B2 (Case IPR2014-01340); and (2) U.S. Patent No. 8,078,396 B2
(Case IPR2014-01341). Paper 7, 2–3. We instituted an inter partes review
in each of these cases. Case IPR2014-01340, Paper 11 (PTAB Feb. 27,
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2015); Case IPR2014-01341, Paper 11 (PTAB Feb. 27, 2015). We entered a
Final Written Decision in Case IPR2014-01341, concluding that Petitioner
demonstrated by a preponderance of the evidence that claims 1, 2, 5, 8–13,
and 16 of the ’396 patent were unpatentable under §§ 102(b) and 103(a).
Case IPR2014-01341, Paper 38 (PTAB Feb. 19, 2016).

C. The ’181 Patent (Ex. 1002)
The ’181 patent is directed to a system for providing a street-level
view of a selected geographic location using video drive-by data (Ex. 1002,
Abstract), as illustrated in Figure 1 reproduced below:

Figure 1 is a schematic diagram of a video and data server farm.
The system includes servers that provide digital storage for video image data
captured using a video capture system “of a neighborhood corresponding to
a geographic location.” Id. at 3:19–22. In a preferred embodiment, the
system includes a video and data server farm that “includes at least one
video storage server that stores video image files containing video drive-by
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data that corresponds to a geographic location, a database server that
processes a data query received from a user over the Internet that
corresponds to a geographic location of interest, and an image server.” Id. at
2:63–3:3.
Operatively, the video drive-by data is captured using a video capture
system that includes a camera array that generates video image data
corresponding to the geographic location. Id. at 3:19–22. The location of
the video image data is acquired concurrently using a positioning unit that
produces positioning data corresponding to the location of the camera array.
Id. at 3:22–24. A processing unit “processes the video image data and
positioning data to produce the video drive-by-data.” Id. at 3:24–25. In
response to a query from a user, the database server identifies video image
files stored in the video storage server that correspond to the requested
geographic location of interest, and transfers the identified video image files
to the image processing server via a pre-processing network. Id. at 3:3–7.
The image processing server “converts the video drive-by data to post-
processed video data corresponding to a desired image format,” which is
transferred back to the user via a post-processing network. Id. at 3:7–11.

D. Illustrative Claim
Of challenged claims 1 and 3–11 of the ’181 patent, claim 1 is
independent, and claims 3–11 depend directly or indirectly from claim 1.
Claim 1 is illustrative of the challenged claims and is reproduced below:
1. A system including a video and data
server farm comprising:
at least one video storage server that stores
video image files containing video drive-by data
that corresponds to a geographic location;
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a database server that processes a data query
received from a user over a communications
network that corresponds to a geographic location
of interest; and
an image processing server;
wherein the database server identifies video
image files stored in the video storage server that
correspond to the geographic location of interest
contained in the data query, and transfers the video
image files over a preprocessing network to the
image processing server; and
wherein the image processing server
converts the video drive-by data to post processed
video data corresponding to a desired image
format, and transfers the post processed video data
via post-processing network to the
communications network in response to the query.

Ex. 1002, 18:2–20.

E. Prior Art
Petitioner relies on the following prior art references (Pet. 4) and the
Declaration of Dr. Henry Fuchs (Ex. 1001):
Reference Patent/Printed
Publication No.
Date Exhibit
Yoichi U.S. Patent App. Pub. No.
2003/0210806 A1
Nov. 13, 2003 1004
Di Bernardo U.S. Patent App. Pub. No.
US 2002/0047895 A1
Apr. 25, 2002 1005
Lachinski U.S. Patent No. 5,633,946 May 27, 1997 1006

F. Instituted Grounds
As explained in the Introduction section above, we instituted trial
based on the grounds set forth in the table below. Dec. to Inst. 27.
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Reference(s) Basis Claim(s)
Challenged
Yoichi § 102(a) or (e) 1, 3–5, 7, and 9
Yoichi and Di Bernardo § 103(a) 6, 10, and 11
Yoichi and Lachinski § 103(a) 8

II. ANALYSIS
A. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)). There is evidence in the record before us that reflects the
knowledge level of a person with ordinary skill in the art. Petitioner’s expert
witness, Dr. Fuchs, attests that a person with ordinary skill in the art in the
relevant time frame would be an individual who possesses a combination of
experience and education in computer science, computer graphics, and
imaging technology. Ex. 1001 ¶ 14. According to Dr. Fuchs, this would
consist of the following: (1) a minimum of a bachelor degree in computer
science or a related engineering filed; and (2) 2–5 years of work or research
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experience in the field of computer science and its sub-field of imaging
technology.2 Id.
Additionally, we note that the prior art of record in this proceeding—
namely, Yoichi, Di Bernardo, and Lachinski—is indicative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91
(CCPA 1978).
B. Claim Interpretation
In an inter partes review, we interpret a claim term in an unexpired
patent according to the broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW.
3218 (U.S. Jan. 15, 2016) (No. 15-446) (“Congress implicitly approved the
broadest reasonable interpretation standard in enacting the AIA,” and “the
standard was properly adopted by PTO regulation.”).
Under the broadest reasonable interpretation standard, claim terms
generally 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). An inventor may rebut that presumption by providing a definition of
the term in the specification “with reasonable clarity, deliberateness, and

2 Petitioner’s rebuttal witness, Dr. John R. Grindon, offers testimony as to
the knowledge level of a person with ordinary skill in the art at the relevant
time frame that is essentially the same as Dr. Fuchs’s assessment. Ex. 1010
¶ 12.
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precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). We apply these general principles in construing the claims
of the ’181 patent.
In our Decision on Institution, we expressly construed the claim term
“video drive-by data” as “street-level video data.” Dec. to Inst. 7. Patent
Owner, in its Patent Owner Response, does not challenge expressly our
construction of this term. Now, based on the full record developed during
trial, we adopt our initial construction and analysis of “video drive-by data”
for purposes of this Decision. Id. See Paper 12, 3 (“The patent owner is
cautioned that any arguments for patentability not raised in the response will
be deemed waived.”).
We also determined in our Decision on Institution that there was no
need to expressly construe the claim term “geographic location of interest”
because Patent Owner’s narrow construction proposed in its Preliminary
Response (i.e.,“a subject property in relation to parcel boundaries or a
subject property at a specific street address”) was not supported by the
specification, which uses the term “broadly and generically, and consistent
with its plain and ordinary meaning.” Dec. to Inst. 8. In its Patent Owner
Response, Patent Owner did not challenge expressly our construction of
“geographic location of interest.” Nevertheless, Patent Owner’s arguments
surrounding this claim term still rely upon the definition proposed in its
Preliminary Response. See e.g., PO Resp. 36 (“Yoichi is not concerned with
returning “images” from the actual “geographic location” that matches the
“geographic location of interest.”). Based on the full record developed
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during trial, and for purposes of this Decision, our position and analysis
regarding the claim term “geographic location of interest” remains
unchanged.
Additionally, based on the full record developed during trial and for
purposes of this Decision, we provide construction of the following
additional claim terms.
1. “server farm”
In its Patent Owner Response, Patent Owner argues that the ’181
patent describes a “video and data server farm” as including at least one
video storage server, a database server, and an image server. PO Resp. 24
(citing Ex. 1002, 2:64–3:2). According to Patent Owner, this explanation is
consistent with the ordinary and customary meaning of the term “server
farm” as “a group of networked servers that are housed in one location.” Id.
In response, Petitioner counters that the disputed phrase “a video and data
server farm” is recited in the preamble of claim 1, and argues that Petitioner
fails to establish that the preamble should be read as a limitation on the
scope of the claim. Pet. Reply 2–3. We agree with Petitioner.
The preamble of claim 1 recites “[a] system including a video and
data server farm comprising . . . .” Ex. 1002, 18:2–3. “In general, a
preamble limits the invention if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002) (citations omitted). “Conversely, a preamble is not limiting ‘where a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention.’” Id.
In other words, the preamble is regarded as limiting if it recites essential
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structure that is important to the invention or necessary to give meaning to
the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305–06
(Fed. Cir. 2005). When the limitations in the body of the claim “rely upon
and derive antecedent basis from the preamble, then the preamble may act as
a necessary component of the claimed invention.” Eaton Corp. v. Rockwell
Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
At oral argument, Patent Owner addressed expressly the question of
whether the recitation of “server farm” in the preamble, regardless of its
intended meaning, should be considered a claim limitation. Tr. 45:6– 52:5.
For example,
MR. MACEDO: As I understand, whether or not the
preamble’s a limitation, it turns on whether or not it’s merely a
use or whether the elements of the claim refer back to it. And
therefore, it adds meaning and life to the claim. I think that in
this context, it does.
Id. at 50:17–22.
Here, it is unclear from the language of claim 1 as to what limitation
in the body of the claim, if any, would “refer back to” “server farm,” nor
what “meaning and life” the recitation of “server farm” would add to claim
1. Patent Owner also argued at oral hearing that:
the video and data server farm includes at least one video
data -- one video storage server that stores video image files
containing video drive-by data that corresponds to geographic
location; a database server that processes as data query received
from the user over the Internet and corresponds to a geographic
location; and an image server. Those are the three elements.
When it says in the claim a video and data storage server
comprising and then it gives those three elements as the
composition, that’s perfectly consistent with saying that’s an
important part of the claim.
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Id. at 48:20–49:9. Despite Patent Owner’s argument to the contrary,
we observe that the body of independent claim 1 appears to recite a
structurally complete invention that includes the elements cited by
Patent Owner of “at least one video storage server,” “a database
server,” and “an image processing server.” Ex. 1002, 18:4–10.
We further observe that the term “server farm” is not recited in
the body of claim 1, nor in dependent claims 3–11. Thus, it does not
appear to provide any antecedent basis support for any elements of the
claims. Indeed, all the term “server farm” appears to do is to give a
descriptive name to the set of limitations that completely set forth the
invention. In such an instance, the preamble does not limit the claims.
See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
(Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble
merely gives a descriptive name to the set of limitations in the body of
the claim that completely set forth the invention. Its use does not limit
the claims . . . .”). For these reasons, we do not accord patentable
weight to the recitation of “server farm” in the preamble of claim 1.
Nonetheless, even if we were to accord the recitation of “server farm”
in the preamble of claim 1 some patentable weight, we are not persuaded by
Patent Owner’s arguments and evidence that the broadest reasonable
interpretation of this term is limited to “a group of networked servers housed
in a single location.” The cited passage of the ’181 patent specification does
not explicitly disclose that the servers associated with video and data server
farm 100, as illustrated in Figure 1 and which includes, among other things,
video server 110, image processing servers 115, and database servers 120,
are housed in a single location. Tr. 54:4–55:11 (arguing that the direct
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connections between the various servers that make up video and data server
farm 100 implies that these servers are all housed in one location). Indeed,
we observe that the specification of the ’181 patent describes a preferred
embodiment of the video and data server farm as “utilize[ing] a set of servers
to provide digital storage of video drive-by data, and processes the video
drive-by data for deliver[y] to an end user.” Ex. 1002, 6:23–25. In our
view, the direct connections between the various servers that make up video
and data server farm 100 illustrated in Figure 1 do not indicate that these
servers are all housed in one location, but instead illustrate the flow of
information between these servers. See, e.g., id. at 6:21–62 (disclosing how
the video drive-by data is processed and delivered to the end user).
Likewise, the extrinsic evidence Patent Owner proffers to support its
proposed definition of “server farm” has uncertain evidentiary value,
specifically as to how an ordinary skilled artisan would have understood this
term in the 2004 time frame of the ’181 patent. PO Resp. 24–26 (citing Exs.
2008–11). Other than stating that this evidence was “last pulled on June 3,
2015,” Patent Owner has not demonstrated adequately the significance of
this extrinsic evidence in the relevant time frame. Id. As such, we agree
with Petitioner that extrinsic evidence regarding the use of this term in 2015
does not inform us whether ordinary skilled artisans in 2004, the earliest
priority date of the ’181 patent, would have had the same understanding of
this term. Pet. Reply 3–4. To illustrate this point, Petitioner presents
evidence showing, in the 2004 time period, the term “server farm” was
utilized in a broader context “to describe systems in which computers were
connected via a network while situated either at different locations or at the
same location.” Id. at 4 (citing Ex. 1011 ¶¶ 34–35; Ex. 1012; Ex. 1013).
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In summary, even if we were to accord the recitation of “server farm”
in the preamble of independent claim 1 patentable weight, we conclude that
the broadest reasonable interpretation of this term is simply “a group of
networked servers.” This construction is consistent with the specification of
the ’181 patent (see, e.g., Ex. 1002, 2:64–3:3, 6:21–62, Fig. 1), as well as the
ordinary and customary meaning of the term “server farm” as would be
understood by one of ordinary skill in the art at or around 2004 (see, e.g.,
Ex. 1011 ¶¶ 34, 35; Ex. 1012; Ex. 1013).
2. Means-plus-function limitations
In the Petition, Petitioner proposed a construction for the following
means-plus-function terms recited in claims 7–10:
a) “means for providing a variety of geo-coded data layers
in conjunction with the video drive-by data” (claim 7);

b) “means for creating geo-coded text, image and vector
data which is superimposed onto the post processed
video data that is transferred to the communications
network” (claim 8);
c) “means for linking latitude and longitude data with video
drive-by data” (claim 9); and
d) “means for calculating a camera position of designated
individual frames of video by using position data points
captured before and after a designated frame position”
(claim 10).
Pet. 10–15. Petitioner asserts that each of these means-plus-function claim
terms invokes 35 U.S.C. § 112, sixth paragraph. Id. Construction of a
“means-plus-function” limitation under 35 U.S.C. § 112, sixth paragraph,
involves two steps: first identifying the function explicitly recited in the
claim, and then identifying the corresponding structure set forth in the
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written description that performs the particular function set forth in the
claim. Asyst Techs, Inc. v. Empak, Inc., 268 F.3d 1364, 1369 (Fed. Cir.
2001). For each of these means-plus-function claim terms, Petitioner
identified the particular function performed by the means, as well as the
structure within the specification performing the identified function. Pet.
10–15. Accordingly, we ascertained in the Decision on Institution that
Petitioner had identified sufficiently corresponding structures for each of
these means-plus-function claim limitations for us to perform our analysis.
Dec. to Inst. 9.
The parties agree essentially on the specific function performed by
each of these means-plus-function claim limitations. See Pet. 10–15; PO
Resp. 44–51. Where the parties diverge, however, is in the type of analysis
required to demonstrate that the identified structure performs the identified
“means for” function. Id. For convenience, the parties’ positions are
summarized in the table below:

Claim “Means for” Function Petitioner’s
Structure
Patent Owner’s
Structure
7 Providing a variety of
geo-coded data layers in
conjunction with the
video drive-by data.
Any computer
system capable of
performing the
identified
function.
Software based on
open source
programming tool
Mencoder.

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Claim “Mean for” Function Petitioner’s
Structure
Patent Owner’s
Structure
8 Creating geo-coded text,
image and vector data
which is superimposed
onto the post processed
video data that is
transferred to the
communications
network.
Any computer
system capable of
performing the
identified
function.

Rendering
program (open
source
programming
suite tool Open
GL and
GraphicsMagick);
recompositing
program (open
source
programming tool
FFMPEG); and
streaming (open
source Apache
web server).
9 Linking latitude and
longitude data with video
drive-by data.
Any system
capable of
performing the
identified
function.
Open source
programming tool
GDAL.
10 Calculating a camera
position of designated
individual frames of
video by using position
data points captured
before and after a
designated frame
position.
Any system
capable of
performing the
identified
function.
GIS viewing
software, such as
open source
University of
Minnesota
MapServer.

Patent Owner takes the position that because the claimed function of
the computer implemented invention is performed by computer software,
“the corresponding structure is a software algorithm, not merely the
computer itself.” PO Resp. 43 (citing EON Corp. IP Holdings, LLC v.
AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015)). Patent Owner
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confirmed its position at the oral hearing. Tr. 64:12–73:23. Essentially,
Patent Owner urges us to find the Petition deficient because Petitioner’s
declarant, Dr. Fuchs, did not perform an analysis as to whether the asserted
prior art references used or disclosed the same or similar programs as the
open source software disclosed in the ’181 patent. PO Resp. 43–44 (citing
Ex. 2006, 258:3–20); Tr. 65:23-67:14.
To the extent EON Corp. IP Holdings stands for the proposition that
the corresponding structure must include an algorithm for performing the
claimed function performed by a computing device, Petitioner agrees. Pet.
Reply 24. Nonetheless, Petitioner also directs our attention to the Federal
Circuit’s holding that “[s]imply reciting ‘software’ without providing some
detail about the means to accomplish the function is not enough.” Id. (citing
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008)). Petitioner understands Finisar as holding that the corresponding
structure for the means-plus-function claim element is not the referenced
software example, ‘“but rather the special purpose computer programmed to
perform the disclosed algorithm’ as disclosed in the specification.” Id.
(citing Finisar, 523 F.3d at 1340 (quoting WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999))). Thus, Petitioner maintains
that Dr. Fuchs’s analysis of the ’181 patent identified the corresponding
structure, and then Dr. Fuchs “applied this construction to his analysis of
Yoichi.” Id. at 25 (citing Ex. 1001 ¶¶ 21–24, 44–47, 54–56, 59–63).
We agree with Petitioner that the corresponding structure that
performs the claimed function may include any computer system
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programmed to perform the identified function.3 Cf. WMS Gaming, 184
F.3d at 1349 (“In a means-plus-function claim in which the disclosed
structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the disclosed
algorithm.” (citation omitted)). In Eon Corp. IP Holdings LLC, the Federal
Circuit confirmed that, on this point, WMS Gaming remains correctly
decided and elaborated that:
the disclosure of a general purpose computer or a
microprocessor as corresponding structure for a software
function does nothing to limit the scope of the claim and “avoid
pure functional claiming.” [Aristocrat Techs. Australia Pty Ltd.
v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).] As
such, when a patentee invokes means-plus-function claiming to
recite a software function, it accedes to the reciprocal obligation
of disclosing a sufficient algorithm as corresponding structure.
Eon Corp. IP Holdings, 785 F.3d at 623.
Patent Owner’s efforts to limit the structure to the algorithms found in
exemplary open source computer software are unavailing. Patent Owner
does not direct us to, nor have we found, where the specification of the ’181
patent adequately describes the particular algorithm used by the open
source computer software in detail. The mere disclosure of the name of the
software is ineffective because “material incorporated by reference cannot
provide the corresponding structure necessary to satisfy the definiteness
requirement for a means-plus-function clause.” Default Proof Credit Card

3 Although we recognize this conclusion implicates 35 U.S.C. § 112, we do
not address whether these claims are unpatentable under that section because
an inter partes review may only consider grounds of unpatentability under
§§ 102 and 103. See 35 U.S.C. § 311(b).
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Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1301 (Fed. Cir. 2005)
(citing Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374,
1381 (Fed. Cir. 1999)). Instead,
The inquiry under § 112, ¶ 2, does not turn on whether a
patentee has “incorporated by reference” material into the
specification relating to structure, but instead asks first
“whether structure is described in specification, and, if
so, whether one skilled in the art would identify the
structure from that description.
Id. (quoting Atmel, 198 F.3d at 1381). We find that the only structure
disclosed and linked to the recited function in this way are the structures
identified by Petitioner. For the reasons discussed above, we do not agree
with Patent Owner that the recitation of exemplary software alone represents
the requisite structure. Thus, based on the specification, claim language and
evidence on the complete record before us, we adopt Petitioner’s proposed
structures for the means-plus-function claim limitations recited in claim 7–
10.
C. Anticipation by Yoichi
A claim is anticipated if each limitation of the claim is disclosed in a
single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated
by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes]
not expressly spell out’ all the limitations arranged or combined as in the
claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In
re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground
based on anticipation in accordance with the above-stated principles.
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Petitioner challenged clams 1, 3–5, 7, and 9 as anticipated under
35 U.S.C. § 102 by Yoichi. Pet. 15–23, 32–43. In its Petition, Petitioner
explains how Yoichi discloses each of the claim limitations (id.) and relies
on the declaration of Dr. Fuchs to support the analysis advocated in the
Petition (Ex. 1001). Patent Owner disagrees, and focuses its arguments on
challenging the teachings of Yoichi with respect to the claim elements of a
“video and data server farm,” an “image processing server” that “converts
the video drive-by data to post processed data corresponding to a desired
imaged format,” a “geographic location of interest,” and “360 degree view.”
PO Resp. 5–8, 22–36.
For the reasons given below, after consideration of the Petition, the
arguments in the Patent Owner Response, Petitioner’s Reply, and the
evidence of record, we conclude that Petitioner has demonstrated, by a
preponderance of the evidence, that each of claims 1, 3–5, 7, and 9 of the
’181 patent are anticipated by Yoichi. We begin our discussion with a brief
summary of the cited references, and then we address the parties’
contentions in turn.
1. Overview of Yoichi (Ex. 1004)
Yoichi describes a system and method for capturing video images
along a driving route in order to provide drivers with information about
conditions along the driving route (Ex. 1004 ¶¶ 1–2), as illustrated in
Figure 1 reproduced below.
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Figure 1 is a diagram of the system for image capture and sharing.
The vehicle is equipped with cameras and a computer in order to
communicate “directly or indirectly with other vehicles for a peer-to-peer
transfer” of video files. Id. ¶ 31. The captured data is stored in a service
center, and the service center provides new services based on such data. Id.
¶ 32. Associated information, such as date, time, or location, is attached to
the image, and stored in the vehicle for transmission to the service center for
storage or retransmission to another driver. Id. ¶ 33. Navigational
information is part of the data, and the service center “organizes, stores and
analyzes the data.” Id. ¶ 34. In response to a request from a user, the
service center will “transmit recent or real-time images from close to the
location.” Id. ¶ 37. The image and associated information then is displayed
to the requester. Id. ¶ 38.
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2. Claim 1
a. “video and data server farm”
Independent claim 1 recites in the preamble a “video and data server
farm.” Ex. 1002, 18:2. Petitioner asserts that Yoichi’s disclosure of a
“service center” and vehicles equipped with a plurality of digital cameras, a
computer and broadband wireless data communication satisfies this claim
term. Pet. 16. Patent Owner challenges this assertion. PO Resp. 22–30.
Relying on its understanding of server farm as “a group of networked
computers housed in a single location,” Patent Owner argues that the server
farm functions “to distribute the workload of strenuous computing
requirements.” Id. at 26. Patent Owner reasons, without support, that the
use of a server farm is unnecessary if computational requirements “are
minimal or not complex.” Id. Based on its understanding of “server farm,”
Patent Owner argues that Yoichi’s “computers aboard vehicles driving in
different locations that have…limited interconnectivity” do not satisfy this
claim term. Id. at 27.
As discussed in our claim construction section supra, the term “server
farm” recited in the preamble of claim 1 is not considered limiting.
Nonetheless, we explained that even if we were to accord the term “server
farm” recited in the preamble of claim 1 patentable weight, the broadest
reasonable interpretation of this term is simply “a group of networked
servers.” Relying on testimony of its declarant Dr. Fuchs, Petitioner
explains persuasively how Yoichi’s service center, and video storage and
computer in each vehicle, are a group of networked servers. Pet. Reply 4–6
(citing Ex. 1001 ¶¶ 29, 30–35).
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In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes the “video and
data server farm” recited in the preamble of independent claim 1.
b. “image processing server”
Claim 1 also recites, among other things, an “image processing
server” that “converts the video drive-by data to post-processed video data
corresponding to a desired image format, and transfers the post processed
video data via post-processing network to the communications network in
response to the query.” Ex. 1002, 18:16–20. In its Petition, Petitioner
contends that the “image processing server” claim element is met by the
disclosure in Yoichi of a computer located at each vehicle. Pet. 16–17
(citing Ex. 1001 ¶¶ 25, 30–32; Ex. 1004 ¶¶ 71, 127). According to
Petitioner, the Service Center in Yoichi receives a query from the user
corresponding to a geographic location of interest and transmits the data
from the vehicle to the requestor. Id. at 17–18 (citing Ex. 1001 ¶¶ 27, 31,
33; Ex. 1004 ¶¶ 37, 39, 40, 81, 99). Petitioner also directs our attention to an
alternative embodiment described in Yoichi, whereby the driver requests
that their vehicle system, or the service center, search for the desired data
from other vehicles, and when found in another vehicle, the data is
transmitted through the service center from the other vehicle to the
requestor. Id. at 18 (citing Ex. 1004 ¶ 39). Also relying on the testimony of
Dr. Fuchs, Petitioner contends that Yoichi describes the processing of video
drive-by data “into a desired format, e.g., a ‘secured image’ format that
includes a watermark.” Id. at 20 (citing Ex. 1001 ¶ 34).
Patent Owner challenges these contentions in its Patent Owner
Response, arguing that Yoichi does not teach an “image processing server”
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that “converts the video drive-by data to post-processed video data
corresponding to a desired image format.” PO Resp. 16, 19. Patent Owner
takes the position that updating an image file with additional information
and saving the image file in the same format is not ‘“convert[ing]’ the file
format, such as from a TIFF image format to MPEG2 image format.” Id. at
16 (citing Ex. 1004, ¶ 85). Patent Owner asserts that, although we made
reference to a definition for “desired” in the Decision on Institution (Dec. to
Inst. 13, n.2), we did not construe ‘“image format’ or ‘converting’ in the
context of an ‘image processing server’” in the Decision on Institution. PO
Resp. 31.
To demonstrate how the specification of the ’181 patent provides this
context, Patent Owner first directs our attention to passages which
purportedly address the “desired image format” and “converting” claim
terms. Id. at 31–34. For example, the description surrounding the manner in
which ‘“image processing servers’ ‘convert the original drive-by data to one
of many potential new image formats (depending on the particular
application) which constitute Post Processed Video Data (PPVD).” Id. at
31 (citing Ex. 1002, 6:53–56). This passage, according to Patent Owner,
describes the “desired image format” as “depending on the particular
application that the user will presumably view the image.” Id. at 32.
Petitioner argues persuasively that Yoichi’s conversion of the image file
from an unsecured image format to a secured (watermarked) image format
satisfies the “desired image format” claim element. Pet. Reply 14–15.
Moreover, even if we were to adopt Patent Owner’s narrow definition of
“desired image format” as a “new image format,” the secured image format
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of Yoichi is a “new image format” as compared to the unsecured image
format.
Patent Owner also cites passages in the specification regarding the use
of “open source MENCODER software ‘to convert [] the compressed
MPEG2 data in lossless TIFF image files’” (PO Resp. 31 (citing Ex. 1002,
9:25–26)); as well as “open source FFMPEG software to convert TIFF
images to create a compressed video file in an MPEG2 file” (id. (citing Ex.
1002, 9:44–47)). Although both MENCODER and FFMPEG are named by
way of example, Patent Owner does not present evidence demonstrating that
one of skill in the art would have recognized from these passages that
“converts” means that image files are converted from one format to another.
Indeed, the specification of the ’181 patent states that the invention has been
described with respect to certain preferred embodiments and that other
modifications and variations are possible. Ex. 1002, 17:48–51.
Next, Patent Owner proffers extrinsic evidence from a technical
dictionary to support its definition of “converting.” Specifically, the
definition of “conversion program,” namely “a program that is capable of
changing a file from one format to another.” PO Resp. 32 (citing
Ex. 2073).4 The relevance of the dictionary meaning of “conversion
program” is unclear, and Patent Owner does not proffer argument or
evidence demonstrating that one of skill in the art would have understood
“converting” to mean the same as “conversion program” in the context of
the specification of the ’181 patent.

4 We note that Ex. 2073 is not of record in this proceeding, and as such, we
are unclear as to what evidence Patent Owner is referring to.
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Further, Patent Owner argues that the file format in Yoichi is
unchanged by the watermark. PO Resp. 33. Patent Owner notes that the
Dictionary of Computer and Internet Terms defines a watermark as “a faint
pattern or second image added to a digital image for identification or other
purposes." Id. (citing Ex. 2073).5 Based on this definition, Patent Owner
concludes that “a watermark is an addition to an existing file in the same
file format and does not describe or suggest a conversion to a second, and
different requested file format.” Id.
Having considered Patent Owner’s arguments in this regard, we agree
with Petitioner that neither the claims nor the specification require
converting an image to a “wholly different ‘file format’ than a desired
‘image format.’” Pet. Reply 14. Petitioner explains persuasively how
Yoichi’s system converts the format of the image file into a desired format
because watermarking converts the image files “from an unsecured image
format into a ‘secured image’ format.” Pet. Reply 13 (citing Ex. 1001 ¶¶ 27,
34; Ex. 1004 ¶¶ 85–86, 97). Moreover, we agree with Petitioner that Patent
Owner’s narrow interpretation of “desired image format” is predicated on
our reading the term “file” into the language of claim 1, e.g., “desired image
file format.” Pet. Reply 13–14. As Petitioner notes, we stated in the
Decision on Institution, “there is no ‘explicit definition in the Specification
[of the ’181 patent] for the claim term desired image format’ and the
‘specification describes the converted image format as one of many potential
new image formats.’” Pet. Reply 14 (citing Dec. to Inst. 12). We, therefore,
decline Patent Owner’s invitation to narrow the scope of the term “desired

5 This reference to Exhibit 2073 is likewise unclear because it is not of
record in this proceeding.
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image format” to a particular type of resource for storing information, such
as a “file.”
Thus, contrary to Patent Owner’s assertion, we did not, in the
Decision on Institution, overlook Patent Owner’s specific arguments with
regards to the description of “converting” and “desired image format” in the
context of the specification of the ’181 patent. Rather, we considered these
passages in the context of the claims, but declined to import limitations from
the specification into the claims. See SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”).
Patent Owner concludes that Petitioner failed to meet its burden of
showing that Yoichi anticipates claim 1 because “[t]he mere possibility that a
prior art reference ‘could’ perform a claim limitation, but was not ‘required’ to
perform a claim limitation is insufficient to show anticipation as a matter of
law.” PO Resp. 34 (citing Gracenote, Inc. v. Iceberg lndust., Inc., IPR2013-
00551, slip op., at 31 (PTAB Feb. 28, 2014) (Paper 6)). Notwithstanding
Patent Owner’s assertion to the contrary, we agree with Petitioner that Dr.
Fuchs’s declaration does not rely upon inherent aspects of Yoichi’s system to
account for the “desired image format” as claimed, but rather “points out how
each structure of the claims is explicitly described by Yoichi and what a
POSITA would have recognized from Yoichi’s teaching.” Pet. Reply 15
(citing Ex. 1001 ¶¶ 25–63). Indeed, there is no dispute that Yoichi expressly
discloses adding a watermark to the image, which is what Petitioner relies upon
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as teaching this claim limitation. We have found that this express teaching is
within the meaning of this claim limitation. Thus, we do not agree Petitioner is
relying on inherency for this claim element.
In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes the “image
processing server” and associated conversion to a “desired image format”
recited in independent claim 1.
c. “geographic location of interest”
Claim 1 also recites, among other things, “wherein the database server
identifies video image files stored in the video storage server that correspond
to the geographic location of interest contained in the data query.” Ex. 1002,
18:11–15. In its Petition, Petitioner contends that this limitation is met by
the disclosure in Yoichi regarding the attachment of associated information
with the captured image, e.g., “[a] location where the image was taken.”
Pet. 17 (citing Ex. 1004 ¶ 33). Additionally, Petitioner relies on the
disclosure in Yoichi regarding the Service Center receiving a user submitted
query, identifying a video image file stored in a video storage server that
corresponds to the requested location of interest, and the server transferring
an image corresponding to the geographic location. Pet. 17–19 (citing
Ex. 1001 ¶¶ 27, 31, 33; Ex. 1004 ¶¶ 37, 39, 40, 81, 99, 107).
Patent Owner acknowledges that in the Decision on Institution we
disagreed with its proposed interpretation of the claim term “geographic
location of interest” as limited to “a specific street address.” PO Resp. 35.
Nevertheless, Patent Owner maintains that “it is clear that the claimed
system requires that the actual images of the ‘geographic location’ returned
in response to a query for a ‘geographic location of interest’ must be the
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same location.” Id. at 36. According to Patent Owner, because Yoichi is
directed to a different problem from the problem addressed in the ’181
patent, “Yoichi is not concerned with returning ‘images’ from the actual
‘geographic location’ that matches the ‘geographic location of interest.’” Id.
As discussed in the Decision on Institution, we disagreed with Patent
Owner’s proposed construction of the claim term “geographic location of
interest,” and instead determined that the evidence presently of record
supports applying this term’s ordinary and customary meaning. Dec. to
Inst. 7–8. Now, based on the full record developed during trial, Patent
Owner’s similar argument that the geographic location of interest specified
in the user query is limited to a street address, is likewise unpersuasive,
because this argument is not commensurate in scope with claim 1. We agree
with Petitioner that the broadest reasonable interpretation of the language of
claim 1 in light of the specification of the ’181 patent does not require that
the image “match with precision” the “geographic location of interest,”
rather that the image “corresponds” to the “geographic location of interest.”
Pet. Reply 16–17. That is, the user data query in Yoichi “corresponds to a
geographic location of interest,” and the video image files stored in the video
server “correspond to the geographic location of interest contained in the
data inquiry,” as recited in claim 1. Id. at 17–19.
To the extent Patent Owner’s argument is predicated on the notion
that Yoichi is non-analogous to the ’181 patent because, purportedly, it is
directed to a different problem from the problem addressed in the ’181
patent, we disagree. PO Resp. 36. It is well settled that whether or not a
reference constitutes analogous art is not relevant in an anticipation
evaluation. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“A
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reference may be . . . directed to an entirely different problem from the one
addressed by the inventor, yet the reference will still anticipate if it explicitly
or inherently discloses every limitation recited in the claims.”).
In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes the
“geographic location of interest” recited in independent claim 1.
d. Summary
In summary, we have reviewed each of the limitations of claim 1 in
light of Yoichi, and find that Petitioner’s arguments and evidence presented
in the Petition and Reply demonstrate, by a preponderance of the evidence,
that each limitation of claim 1 is disclosed by Yoichi.
3. Claims 3–5, 7 and 9
With regard to claim 3, Patent Owner challenges Petitioner’s assertion
that Yoichi discloses a “map server that provides a static image of an
overhead view of the geographic location of interest.” PO Resp. 36.
Specifically, Patent Owner argues that Yoichi does not describe the addition
of a map server that provides “a separate, static image of an overhead view
of the geographic location of interest as specified in a user query.” Id. at 36–
37. We agree with Petitioner that the broadest reasonable interpretation of
“overhead view” would include a map as disclosed in the ’181 patent, and
we recognize that Yoichi discloses a map. Pet. Reply 20 (citing Pet. 37–38;
Ex. 1001 ¶ 36–37; Ex. 1002, 3:16–18, 8:61–9:8). Further, we agree with
Petitioner that the language of claim 3, as would be understood by a person
of ordinary skill in the art, does not require a separate map server. Id.
Additionally, Petitioner presents evidence that Patent Owner’s argument in
this regard is contrary to its infringement contentions from other
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proceedings, in which it alleged that “the same single ‘server’ that operates
as the ‘video storage server,’ ‘database server,’ and image processing server’
of claim 1 (the ‘Street View server’) also provides the ‘map server.’ Id.
(citing Ex. 1007, 2, 5, 7, 8, 11).
In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes “a map server”
capable of presenting “an overhead view” as recited in claim 3.
Next, Patent Owner challenges Petitioner’s contention that Yoichi
discloses the claim 5 limitation “wherein the camera array includes a
plurality of camera units arranged to provide a 360 degree view of the
neighborhood.” PO Resp. 37–38. Specifically, Patent Owner argues that the
description in Yoichi of cameras aimed in different directions with different
angles does not meet the limitation of cameras “arranged to provide a 360
degree view” because of the need to adjust the camera angles to achieve this
360 degree view. Id. Relying on the testimony of Dr. Fuchs, Petitioner’s
assertion that this limitation is met by Yoichi’s disclosure of “a plurality of
cameras for ‘captur[ing] front, rear and side views,’” is persuasive. Pet.
Reply 21 (citing Ex. 1001 ¶ 43; Ex. 1004, 32). The specification of the ’181
patent confirms Petitioner’s position, in explaining that “modifications and
variations are possible within the scope of the appended claims” (Ex. 1002,
17:49–51), and that “[t]he number of cameras in the array may also vary”
(id. at 17:57–58).
Although Patent Owner also contends that Yoichi teaches away from
a camera arrangement with a 360 degree view because a 360 degree view
would not require adjustment, we note that teaching away is irrelevant to an
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anticipation evaluation. See Seachange Int’l, Inc. v. C-COR, Inc. 413 F.3d
1361, 1380 (Fed. Cir. 2005).
In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes “the camera
array” that provides “a 360 degree view” recited in claim 5.
Claim 7 requires a “means for providing a variety of geo-coded data
layers in conjunction with the video drive-by data.” Patent Owner
challenges Petitioner’s contention that Yoichi’s Service Center satisfies this
limitation, arguing that “nothing in Yoichi describes or mentions data layers,
no less geo-coded data layers.” PO Resp. 38–39. Specifically, Patent
Owner argues that the database in Yoichi is not equivalent to a data layer.
Id. at 39.
We agree with Petitioner that the structure that satisfies this limitation
is not a data layer, rather the ‘“means’ for providing the geo-coded data
layers.” Pet. Reply 22. For the reasons discussed supra, we concluded that
the “means for providing the geo-coded data layers” is “any computer
system capable of performing the identified function.” Relying on the
testimony of Dr. Fuchs, Petitioner argues persuasively that Yoichi’s Service
Center implements “algorithms for superimposing location specific
information over provided images.” Id. (citing Ex. 1001 ¶¶ 44, 45; Ex. 1004
¶ 97). Specifically, that the Service Center “searches its database to retrieve
geo-coded data to provide as layers on an identified image of a geographic
location of interest.” Id. (citing Ex. 1001 ¶¶ 44-45; Ex. 1004 ¶¶50–54, 95–
97, Figs. 7, 11).
In considering the record in its entirety, Petitioner has presented
sufficient evidence to support a finding that Yoichi describes the “means for
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providing a variety of geo-coded data layers in conjunction with the video
drive-by data” recited in claim 7.
Patent Owner does not address separately claims 4 and 9 in its
Patent Owner Response. We have reviewed the Petition and evidence cited
in the Petition regarding these claims, and find that Petitioner has shown by
a preponderance of the evidence that Yoichi anticipates these claims as well.
See Pet. 15–23; see also Paper 12, 3 (The patent owner is cautioned that any
arguments for patentability not raised in the response will be deemed
waived.).
4. Summary
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 3–5, 7 and 9 of the ’181 patent are anticipated by Yoichi.

D. Obviousness Based, in Part, on Yoichi
The Petition also challenges the patentability of clams 6, 10, and 11
under 35 U.S.C. § 103(a) as obvious based on Yoichi and Di Bernardo.
Pet. 24–30, 43–47. As support for this contention, Petitioner relies upon the
Declaration of Dr. Fuchs to explain how the combination of Yoichi and Di
Bernardo discloses the claimed subject matter. Ex. 1001 ¶¶ 48–58. In
addition, the Petition challenges the patentability of claim 8 under 35 U.S.C.
§ 103(a) as obvious based on Yoichi and Lachinski. Pet. 30–32, 47–49.
Petitioner again relies on Dr. Fuchs to explain how the combination of
Yoichi and Lachinski disclose the claimed subject matter. Ex. 1001 ¶¶ 59–
63.
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A claim is unpatentable under § 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) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze these
grounds based on obviousness in accordance with the above-stated
principles.
1. Patent Owner’s Arguments Solely Directed to Obviousness Based on
Yoichi and Di Bernardo
At pages 39–42 of the Patent Owner Response, Patent Owner asserts
that claims 6, 10, and 11 are not obvious over Yoichi and Di Bernardo. PO
Resp. 39. In particular, Patent Owner asserts that “[t]he Petition fails to
provide any meaningful obviousness analysis.” Id. Yet, the arguments
presented in support of this assertion are directed to a non-instituted ground
based on Yoichi alone and challenging claims 1, 3–5, 7, and 9. See e.g.,
(“Petitioner also requests inter partes review of the exact same claims as
being obvious over Yoichi (Ground 2), as an alternative to Ground 1. Pet at
23”). Id. at 39–40. Patent Owner’s arguments are inapposite because they
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do not address directly the instituted grounds based on obviousness over
Yoichi and Di Bernardo.
Next, Patent Owner argues that “[t]he problem solved and realized by
the invention enabled the use of video-drive-by data for professional use.”
Id. at 41–42. Specifically, Patent Owner argues that methodology described
in Yoichi, Di Bernardo and Lachinski does not disclose an “exact address,”
but rather a “range of addresses.” These arguments, however, are based on
Patent Owner’s overly narrow construction of “geographic location of
interest,” which, for the reasons discussed supra, are not persuasive.
2. Patent Owner’s Arguments Directed to Both Grounds Based on
Obviousness
Turning to Patent Owner’s combined arguments challenging the two
grounds asserted against claims 6, 8, 10 and 11, Patent Owner argues further
that Yoichi fails to teach or suggest all of the claims elements of independent
claim 1, from which these claims depend, and that Petitioner does not rely
on Di Bernardo nor Lachinski to cure the alleged deficiencies of claim 1. Id.
at 51–52. Petitioner counters that it relied on Di Bernardo and Lachinski to
address the additional recitations in claims 6, 8, 10 and 11, and not to cure
any alleged deficiency in Yoichi. Pet. Reply 22–23.
In the Decision on Institution, we were persuaded that Petitioner’s
proffered rationale and evidence was sufficient to support the proposed
modification of claims 6, 8, 10 and 11. Now, with the record fully
developed, Patent Owner does not proffer arguments or evidence to persuade
us otherwise. See generally PO Resp. 39–41. We, therefore, discern no
reason to address or alter our determination in this regard for the purposes of
this Final Written Decision.
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Thus, based on our further review of the record, and for the reasons
discussed above, Petitioner has demonstrated, by a preponderance of the
evidence, that: (1) claims 6, 10, and 11 of the ’181 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious based Yoichi and Di Bernardo; and (2)
claim 8 is unpatentable under 35 U.S.C. § 103(a) as obvious based Yoichi
and Di Bernardo.

III. MOTION TO EXCLUDE
Patent Owner filed a Motion to Exclude Evidence under 37 C.F.R.
§ 42.64, seeking to exclude certain portions of the Declaration of Dr. Fuchs
(Exhibit 1001); certain portions of the rebuttal declaration of Dr. Grindon
(Exhibit 1010); and Exhibits 1004, 1011, 1012, and 1013 in their entirety.
Mot. to Exclude. Petitioner, in turn, filed an opposition to Patent Owner’s
motion. Opp. Exclude. For the reasons discussed below, Patent Owner’s
Motion to Exclude is denied.
As an initial matter, we note that the party moving to exclude
evidence bears the burden of proving that it is entitled to the relief
requested—namely, that the material sought to be excluded is inadmissible
under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).
A motion to exclude must, among other things, explain each objection. See
37 C.F.R. § 42.64(c); Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,767 (Aug. 14, 2012).
With respect to the Exhibit 1001, Patent Owner moves to exclude
certain portions of Dr. Fuchs’s testimony for, among other reasons,
relevance. Mot. to Exclude 1–2. In particular, Patent Owner moves to
exclude paragraphs 12, 16, 59, and 83 of Dr. Fuchs’s testimony. Id.
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Because Patent Owner does not explain adequately its objections to the cited
portions of Dr. Fuchs’s testimony, Patent Owner has not met its burden of
demonstrating that the cited portions of Dr. Fuchs’s testimony should be
excluded.
As to the Rebuttal Declaration of Dr. Grindon (Ex. 1010), Patent
Owner moves to exclude paragraphs 13, 23, 28, 30 and 31 of Dr. Grindon’s
rebuttal testimony based on relevance. Mot. to Exclude 2. According to
Patent Owner, the evidence in these paragraphs was offered by Petitioner for
the first time in its Reply, and “should have been included as part of
Petitioner’s original petition[,] and should have been included as part of
Petitioner’s prima facie case of invalidity.” Id. at 3.
In considering the declaratory evidence of Dr. Grindon, it is
noteworthy that Dr. Grindon was introduced into this proceeding by Patent
Owner as evidence to support arguments made in its Patent Owner
Response. PO Resp. 11, 15. Specifically, Dr. Grindon’s Declaration was
used to support Patent Owner’s position that in contrast to the ’181 patent,
Yoichi and Di Bernardo sought to avoid “computationally intensive” and
“cumbersome” post-processing methods.” Id. at 10–11 (citing Ex. 2002 ¶
39). Dr. Grindon was retained by Petitioner as an expert consultant in an
unrelated matter that did not involve the ’181 patent, namely, Vederi, LLC v.
Google, Inc., No. 2:10-cv-07747 (C.D. Cal.). Ex. 2002 (“Vederi litigation”).
As a result of Patent Owner’s introduction of Dr. Grindon into this
proceeding, Petitioner sought clarification from Dr. Grindon regarding his
testimony in the Vederi litigation, via a rebuttal declaration. Pet. Reply 1–2
(citing Ex. 1010). The parties confirmed our understanding regarding the
insertion of Dr. Grindon into this proceeding and the relevance of his
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Patent 7,389,181 B2
38
testimony at oral argument. Tr. 87:22–98:1, 119:3–120:14. Nonetheless, in
this proceeding Patent Owner’s reliance on Dr. Grindon was minimal, and
we did not rely upon the testimony of Dr. Grindon in reaching this Final
Written Decision. Accordingly, this aspect of Patent Owner’s Motion to
Exclude is moot.
Further, Patent Owner moves to exclude Exhibit 1011, 1012 and 1013
on the basis of relevance. Mot. to Exclude 3. In particular, Patent Owner
alleges that this evidence was proffered by Petitioner for the first time in its
Reply, and “should have been included as part of Petitioner’s original
petition and should have been included as part of Petitioner’s prima facie
case of invalidity.” Id. at 4. Because our Decision does not rely on any of
these challenged exhibits, this aspect of Patent Owner’s Motion to Exclude
is also moot.
For these reasons, we deny Patent Owner’s Motion to Exclude.

IV. MOTION FOR OBSERVATION
Patent Owner filed a Motion for Observation on the cross-
examination testimony of Petitioner’s rebuttal witness, Dr. Grindon. Obs.
Petitioner, in turn, filed a Response.6 Obs. Resp. As discussed above, we
did not rely upon the testimony of Dr. Grindon in reaching this Final Written
Decision. Thus, Patent Owner’s observations are moot.

6 Petitioner’s response exceeds the 15-page limit specified by 37 C.F.R.
§ 42.24(b)(3). As such, only the first 15 pages of Petitioner’s response has
been considered. See Obs. Resp. 1–15.

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Patent 7,389,181 B2
39
V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, the unpatentability of:
(1) claims 1, 3–7 and 9–11 of the ’181 patent as anticipated by Yoichi; (2)
claims 6, 10, and 11 as obvious based on Yoichi and Di Bernardo; and (3)
claim 8 as obvious based on Yoichi and Lachinski.

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 3–11 of the ’181 patent are held to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude 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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Patent 7,389,181 B2
40
PETITIONER:
Michael T. Hawkins
hawkins@fr.com

John C. Phillips
phillips@fr.com

Kim H. Leung
leung@fr.com

Patrick J. Bisenius
IPR19473-0323IP1@fr.com
PATENT OWNER:
Charles R. Macedo
cmacedo@arelaw.com

Brian A. Comack
VRE-IPR@arelaw.com

Joseph Kincart
JKincart@ideationlaw.com