Google Inc. v. Patent of Vederi, LLC

• Decision Date: 01 June 2021
• Docket Number: 684,Appeal 2018-007745,Reexamination Control 95/000
• Parties: GOOGLE INC. Requester, v. Patent of VEDERI, LLC. Patent Owner Patent 7, 813, 596 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

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

Patent 7, 813, 596 B2 Technology Center 3900

Appeal 2018-007745

Reexamination Control 95/000, 684

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

IP&T CALENDAR DEPARTMENT LA-1005D

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 Federal Circuit, vacating our previous decisions for this proceeding mailed August 15, 2016, September 28, 2018, and February 1, 2019. See Vederi, LLC v. Google LLC, 813 Fed.Appx. 499, 501, 505 (Fed. Cir. 2020).

As background, Requester requested an inter partes reexamination ("the Request") of U.S. Patent No. 7, 813, 596 ("the '596 patent"). The '596 patent claims priority to U.S. Applications: (1) 11/761, 361 (now U.S. Patent No. 7, 577, 316), filed June 11, 2007, (2) 11/130, 004 (now U.S. Patent No. 7, 239, 760), filed May 16, 2005, and (2) 09/758, 717 (now U.S. Patent No. 6, 895, 126), filed on January 11, 2001. The '596 patent, code (60). Pursuant to 35 U.S.C. § 154(a)(2), the term of the '596 patent ended twenty (20) years from the filing date (i.e., January 11, 2001) of the earliest application 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 '596 patent expired on January 11, 2021.[1]

"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 '596 patent. Patent Owner's proposed amendments (see, e.g., the January 3, 2013 Amendment ("Jan. 2013 Amendment")) to the claims, including new claims 63-75 (Jan. 2013 Amendment 15-17; PO Reopen Request 19), are thus improper at this time. See MPEP § 2666.01. On the other hand and even though the '596 patent has expired, Patent Owner's proposed claim amendments to cancel claims 1, 2, 10, 15, 16, 20, 23, 35, 40, 45, and 50 (see Jan. 2013 Amendment 4-7, 10-12) are permitted. See MPEP § 2666.01. Additionally, claims 3, 5-9, 11-14, 17-19, 22, 24-34, 36-39, 41-44, 46-49, and 51-62 are not subject to reexamination. See RAN 1 (box 1b).^[2] Based on the foregoing, the reexamination proceeding will be based on original patent claims 4 and 21.

Upon review, we REVERSE the rejections adopted by the Examiner but present new grounds of rejection for patent claims 4 and 21 pursuant to 37 C.F.R. § 41.77(b).

Related Matters

The parties indicate that the '596 patent was the subject of the following litigation: Vederi, LLC v. Google Inc., Case No. 2:10-CV-07747 (CD. Cal), Vederi, LLC v. Google Inc., Case Nos. 13-1057, and Vederi, LLC v. Google Inc., Case No. 13-1296.^[3] PO Appeal Br. 2; 3PR Appeal Br. 1, 20-21, Related Proceedings App. Additionally, the parties indicate that this appeal may be related to: (1) U.S. Patent No. 7, 805, 025 B2, which is the subject of inter partes reexamination having been assigned Control No. 95/000, 681, (2) U.S. Patent No. 7, 239, 760 B2, which is the subject of inter partes reexamination having been assigned Control No. 95/000, 682, and (3) U.S. Patent No. 7, 577, 316 B2, which is the subject of inter partes reexamination having been assigned Control No. 95/000, 683. PO Appeal Br. 2; 3PR Appeal Br. 1. The opinions in these proceedings were similarly vacated. Vederi, 813 Fed.Appx. 501.

Parties Appeals

Patent Owner appealed the decision in the RAN rejecting claims 4 and 21. See PO Appeal Br. 3, 6. Requester responded, and Patent Owner rebutted.

Requester cross-appealed the decision in the RAN determining now-improper claims of the '596 patent are patentable. 3PR Appeal Br. 2. Patent Owner responded, and Requester rebutted.

The Examiner's Answer incorporated the RAN (Ans. 1), which rejected claims 4 and 21 on various grounds. RAN 1, 6-19.

An oral hearing was conducted on April 27, 2016. The transcript of the hearing has been made of record.

After the August 2016 Decision, Patent Owner requested reopening prosecution. See PO Reopen Request 1. The remand was granted in part for the Examiner's consideration of now-improper claims. May 23, 2017 Order 3-5. The Examiner determined that the rejections of the now-improper claims were not overcome. Ex. Deter. 2. We, subsequently, rendered a second opinion on September 28, 2018, and a decision on rehearing on February 1, 2019.

The Federal Circuit vacated our decisions. Vederi, 813 Fed.Appx. at 501. In its opinion, the court construed three phrases found in the claims of U.S. Patent No. 7, 805, 025 ("the '025 patent"). Vederi, 813 Fed.Appx. at 501-505. These phrases are: (1) "composite image," (2) "moving" within the phrase "image frames acquired by an image recording device moving along a trajectory," and (3) "web page for the retail establishment" within the phrase "accessing a web page for the retail establishment; and invoking by the computer system a display of the web page on the display screen." The court specifically agreed with how the panel construed the phrase "composite image" (id. at 503), did not fully adopt how the panel construed the phrase "moving" (id. at 503-504), and disagreed with how the panel construed the phrase "web page for the retail establishment" (id. at 504-505).

Given the claim construction addressed in Vederi, we reevaluate the rejections of claims 4 and 21. In reaching our decision, we consider the record as a whole.

Claimed Subject Matter

Canceled claim 1 and dependent claim 4 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;

retrieving a map of at least a portion of the geographic area; displaying the retrieved first image on a first display area of the screen and the retrieved map on a second display area of the screen

receiving a user selection of a position on the displayed map; determining a second location based on the user selected position; and

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

4. The method of claim 1

wherein the first and second images are each a composite image, wherein each composite image is created by processing pixel data of a plurality of the image frames.

The '596 patent 1542-64 (emphasis added), 16:6-9 (emphasis added).

Prior Art Relied Upon

The record relies on the following as evidence of unpatentability:

Name	Reference	Date
Lachinski [4]	US 5, 633, 946	May 27, 1997
Murphy	US 6, 282, 362 B1	Aug, 28, 2001

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, Proc. IEEE Position Location and Navigation 388-393 (1994) ("Yee").

Tom Ishida et al., Digital City Kyoto: Towards A Social Information Infrastructure, 1652 Lecture Notes in Artificial Intelligence from Int'l Workshop on Cooperative Info. Agents 23-35^[5] (1999) ("Ishida").

J. Dykes, An Approach To Virtual Environments For Visualization Using Linked Geo-referenced Panoramic Imagery, 24 Computers, Env't & Urb. Sys. 127-152 (2000) ("Dykes").

Kheir Al-Kodmany, Using Web-Based Technologies and Geographic Information Systems in Community Planning, 7 J. Urb. Tech. 1-31 (2000) ("Al-Kodmany").

Nada Bates-Brkljac & John Counsell, Issues in Participative Use of an Historic City Millennial Web Site, IEEE Proc. Int'l Conf. Info. Visualization 119-125 (July 2000) ("Bates").

Current Rejections

The Examiner rejects the claims as follows:

Reference(s)	Basis [6]	Claims	RAN
Dykes	§ 102(a)	4	6-8
Yee	§ 102(b)	4	8-10
Al-Kodmany	§ 102(a)	4	10-12
Bates	§ 102(a)	4	12-13
Murphy and Yee	§ 103(a)	4	14-15
Shiffer and Yee	§ 103(a)	4	16-17
Ishida and Dykes	§ 103(a)	4, 21	17-19

II. MAIN ISSUE 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...