Google Inc. v. Patent of Vederi, LLC

• Decision Date: 01 June 2021
• Docket Number: APPEAL 2016-006116,Reexamination Control 95/000,682
• Parties: GOOGLE INC. Requester, v. Patent of VEDERI, LLC Patent Owner Patent 7, 239, 760 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

GOOGLE INC. Requester,
v.
Patent of VEDERI, LLC Patent Owner

Patent 7, 239, 760 B2 Technology Center 3900

APPEAL 2016-006116

Reexamination Control 95/000, 682

United States Patent and Trademark Office, Patent Trial and Appeal Board

June 1, 2021

FILING DATE 08/17/2012

FOR PATENT OWNER: LEWIS ROCA ROTHGERBER CHRISTIE LLP

FOR THIRD-PARTY REQUESTER: O'MELVENY & MYERS LLP

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH, Administrative Patent Judges.

DECISION ON APPEAL

POTHIER, ADMINISTRATIVE PATENT JUDGE

I. STATEMENT OF CASE

This proceeding returns to us on remand from the Court of Appeals for the Federal Circuit ("Federal Circuit"), vacating our previous decisions for this proceeding mailed June 26, 2015, ^[1] July 16, 2015 ("Errata"^[2]), and September 27, 2016. See Vederi, LLC v. Google LLC, 813 Fed.Appx. 499, 501 (Fed. Cir. 2020).

As background, Requester requested an inter partes reexamination of U.S. Patent No. 7, 239, 760 B2 ("the '760 patent"). The '760 patent claims priority to U.S. Application 09/758, 717 (now U.S. Patent No. 6, 895, 126 B2), filed on January 11, 2001. Id., code (62). Pursuant to 35 U.S.C. § 154(a)(2), the term of the '760 patent ended twenty (20) years from the filing date (i.e., January 11, 2001) of the earliest application (i.e., U.S. Application No. 09/758, 717) for which a benefit is claimed under 35 U.S.C. §§ 120 and 121. See 35 U.S.C. § 154(a)(2) (2013); see also the Manual of Patent Examining Procedure (MPEP) § 2701(1). Thus, the '760 patent expired on January 11, 2021.^[3]

"No amendment may be proposed for entry in an expired patent." 37 C.F.R § 1.530(j); see also 37 C.F.R § 1.121(j) (referring to § 1.530). That is, "[a]lthough the Office actions will treat proposed amendments [during a reexamination proceeding] as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published." 37 C.F.R. § 1.530(k). Notably, "no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent." 37 C.F.R. § 1.530(j).

Accordingly, the reexamination proceeding will now be based on the original patent claims of the '760 patent. Although Patent Owner submitted proposed amendments (see, e.g., the January 8, 2013 Amendment ("Jan. 2013 Amendment") to the claims during this reexamination proceeding, these proposed amendments, including new claims 39-50 (id. at 10-12), are improper at this time. See MPEP § 2666.01. On the other hand and even though the '760 patent has expired, Patent Owner's proposed claim amendments to cancel claim (i.e., claims 1, 4, 5, 7, 20, and 38 (see the Jan. 2013 Amendment 4, 7, 10)) are permitted. See MPEP § 2666.01; 37 C.F.R. § 1.530(j). Additionally, claims 6, 9-11, 19, 27, 28, 30, and 31 are not subject to reexamination. See RAN 1 (box lb).^[4] Based on the foregoing, the reexamination proceeding will be based on original patent claims 2, 3, 8, 12-18, 21-26, 29, and 32-37.

Upon review, we REVERSE the Examiner's decision not to reject patent claims 2, 3, 8, 12-18, 21-26, 29, and 32-37 and present new grounds ofrejection for these claims pursuant to 37 C.F.R. § 41.77(b).

Related Matters

Requester indicates that the '760 patent is the subject to the following litigation: Vederi, LLC v. Google Inc., Civil No. 2:10-CV-07747 AK-CW (CD. CaL), Vederi, LLC v. Google Inc., Case No. 13-1057 (Fed. Cir.), and Vederi, LLC v. Google Inc., Case No. 13-1296 (Fed. Cir.).^[5] Appeal Br 1, 47 (Related Proceedings App.). Additionally, Requester indicates that this appeal may be related to U.S. Patent No. 7, 805, 025 B2 ("the '025 patent"), which is the subject of inter partes reexamination assigned Control No. 95/000, 681 and which is a continuation of the '760 patent. Id. at 1. The opinions in the proceeding for Control No. 95/000, 681 were similarly vacated in Vederi. Vederi, 813 Fed.Appx. at 501.

Parties Appeals

Requester appealed the decision in the Right of Appeal Notice confirming or finding claims 2, 3, 8, 12-18, 21-26, 29, and 32-37 patentable. Appeal Br. 1, 4.

The Examiner's Answer relied on the RAN, incorporating it by reference. See Ans. 1.

An oral hearing was conducted on May 13, 2015. The transcript of the hearing has been made of record.

Another panel^[6] at the Patent Trial and Appeal Board reversed Examiner's decision not to reject claims 2, 3, 8, 12-18, 21-26, 29, and 32-37. June 2015 Opinion 16 (vacated); Errata 2 (vacated). The panel presented new grounds of rejection for these claims. Id.

Patent Owner requested the proceeding be reopened. See generally PO Reopen Request ("the Request"). The proceeding was remanded to the Examiner for consideration of claims now considered improper. See November 2015 Order 5 (remanding to consider claims 39-44 and 46-51); see also Ex. Deter. 6 (noting "only claims 39-44 and 46-51 are being considered here."). Under 37 C.F.R. § 41.77(f), we maintained our decision to reject claims 2, 3, 8, 12-18, 21-26, 29, and 32-37. Sept. 2016 Opinion 26 (vacated).

Our decisions were vacated. Vederi, 813 Fed.Appx. at 501. Here, we reevaluate claims 2, 3, 8, 12-18, 21-26, 29, and 32-37 and the non-adoption of the proposed rejections of these claims based on the claim construction discussed in Vederi. Appeal Br. 7-34. In reaching our decision, we consider the record as a whole.

Claimed Subject Matter

Canceled claim 1 and claim 8 are relevant to this appeal and are reproduced below:

1. (Canceled) In a system including an image source and a user terminal having a screen and an input device, a method for enabling visual navigation of a geographic area from the user terminal, the method comprising

receiving a first user input specifying a first location in the geographic area

retrieving from the image source a first image associated with the first location, the image source providing a plurality of images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area, wherein the images are associated with image frames acquired by an image recording device moving along a trajectory;

receiving a second user input specifying a navigation direction relative to the first location in the geographic area

determining a second location based on the user specified navigation direction; and

retrieving from the image source a second image associated with the second location

8. The method of claim 1, wherein the retrieving of the image corresponding to the first or second location comprises:

identifying a street segment including the first or second location;

identifying a position on the street segment corresponding to the first or second location; and

identifying an image associated with said position.

The '760 patent, 15:57-16:9, 16:38-45 (emphasis added).

Prior Art Relied Upon

Prior to withdrawing the rejections, the Examiner relied on the following as evidence of unpatentability:

Name	Reference	Date
Lachinski[7]	US 5, 633, 946	May 27, 1997

Michael J. Shiffer, Augmenting Geographic Information with Collaborative Multimedia Technologies, 11 Proc. Auto Carta. 367-376 (1993) ("Shiffer").

Frank Yee, GPS & Video Data Collection in Los Angeles County: A Status Report, Position Location and Navigation Symposium, Proc. IEEE Position Location and Navigation 388-393 (1994) ("Yee").

Kheir Al-Kodmany, Using Web Based Technologies and Geographic Information Systems in Community Planning, 7 J. Urb. Tech. 1-30 (2000) ("Al-Kodmany").

Withdrawn Rejections

The Examiner withdrew the following proposed rejections, for which Requester appeals:

Reference(s)	Basis	Claim(s)
Al-Kodmany	§ 102(a)[8]	8	RAN 11-12	(referring to ACP 10-11); Appeal Br. 7-9
Shiffer, Yee	§	103(a)	2, 3, 8, 12-18, 21-26, 29, 32-37	RAN 13-15 (referring to ACP 12-14); Appeal Br. 9-34

Appeal Br. 2-3.

II. MAIN ISSUES ON APPEAL

We review the appealed rejections for error based upon the issues identified by Patent Owner, and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). "Any arguments or authorities not included in the brief permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown." 37 C.F.R. § 41.67(c)(1)(vii).

Based on the record, the main issues on appeal are:

(A) Did the Examiner err by failing to construe properly the recitation, "wherein the images are associated with image frames acquired by an image recording device moving along a trajectory" found in all the claims on appeal; and

(B) Did the Examiner err in withdrawing the rejection of patent claim 8 based on Shiffer and Yee?

III. ANALYSIS

A. Claim Construction

As noted above, the '760 patent has expired. We generally give claims' recitations in expired patents their ordinary and customary meaning as would have been understood by "a person of ordinary skill in the art in question at the time of the invention." See Phillips v. AWH, Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005); see also MPEP § 2258(I)(G) (citing Phillips, 415 F.3d at 1316; Ex parte Papst-Motoren, 1 U.S.P.Q.2d 1655 (BPAI Dec. 23, 1986)). Additionally, "[c]laims 'must be read in view of the specification, of which they are a part'" (Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc))), and "the specification 'is always highly relevant to the claim construction analysis'" (id. (quoting Vitronics Corp. v....