Google LLC v. Lee

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC,

Appellant

v.

JI-SOO LEE,

Cross-Appellant

______________________

2017-2227, 2017-2272

______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2016-

00022.

______________________

Decided: March 28, 2019

______________________

GREGORY A. CASTANIAS, Jones Day, Washington, DC,

argued for appellant. Also represented by ISRAEL SASHA

MAYERGOYZ, Chicago, IL; DAVID B. COCHRAN, Cleveland,

OH; JOSHUA R. NIGHTINGALE, Pittsburgh, PA.

JAMES E. HOPENFELD, Singer Bea LLP, San Francisco,

CA, argued for cross-appellant.

______________________

2 GOOGLE LLC v. LEE

Before PROST, Chief Judge, MAYER and LOURIE,

Circuit Judges.

PROST, Chief Judge.

Google LLC (“Google”) petitioned for inter partes re-

view (“IPR”) of claims 64, 77, and 79 of U.S. Patent No.

6,532,413 (“the ’413 patent”). The Patent Trial and Appeal

Board (“Board”) held claims 64 and 77 unpatentable and

upheld claim 79. Google appeals the Board’s decision up-

holding claim 79, and Ji-Soo Lee (“Lee”) cross-appeals the

Board’s decision holding claims 64 and 77 unpatentable.

Having considered the parties’ arguments, we reverse as to

Google’s appeal and we affirm as to Lee’s cross-appeal.

I

The ’413 patent is purportedly assigned to Lee. 1 The

’413 patent relates to “a method and an apparatus for

providing time-invariant geographical information such as

traffic information, and more particularly to a method and

apparatus for efficiently transmitting image-based time-

variant geographical information.” ’413 patent col. 1 ll. 8–

12. Claim 64 of the ’413 patent is representative of claim

77 and states:

64. Time-variant geographical information device

capable of being coupled to a display panel, com-

prising:

a receiver for receiving a RII(route indication infor-

mation) including a map identification and a plu-

rality of graphic vectors, each of said graphic

vectors for RII including an attribute designating

statement, a shape designating statement and a

position designating statement, said attribute des-

ignating statement being composed of an attribute

1 The assignment is disputed in the related district

court litigation.

GOOGLE LLC v. LEE 3

designating command and at least one attribute

value;

a memory for storing at least one BM(=basic map),

said BM including an image data for representing

time-invariant components in a region;

means for selecting a basic map in accordance with

said map identification of the RII; and

means for producing a route-information contain-

ing image in accordance with said BM and said RII,

said route information-containing image repre-

senting at least one path to a specific location.

Id. at claim 64.

Claim 79 of the ’413 patent recites:

79. A computer-readable medium containing a pro-

gram of instructions to perform a method for a

time-variant geographical traffic information, said

method comprising the steps of:

receiving a TVI(=time-variant information), said

TVI including a map identifier and at least one

time-variant data in section-wise;

selecting at least one section map based on the map

identifier of said TVI, wherein said section map in-

cludes a plurality of sections, each section of said

section map including at least one component;

designating an attribute of said component based

on the time-variant data of said TVI in section-

wise, so as to produce a graphic file for a region;

and

producing an information-containing image data in

accordance with said graphic file, which is to be ap-

plied to a display panel.

Id. at claim 79.

4 GOOGLE LLC v. LEE

Google filed a petition for inter partes review challeng-

ing claims 64, 77, and 79 of the ’413 patent. The Board

instituted review of claims 64 and 77 on two grounds:

(1) obviousness based on U.S. Patent No. 5,848,373 (“De-

Lorme”) alone or in combination with U.S. Patent No.

5,243,528 (“Lefebvre”); and (2) obviousness based on “U.S.

Patent No. 5,968,109 (“Israni”) alone or in combination

with U.S. Patent No. 5,274,387 (“Kakihara”). Google Inc.

v. Lee, No. IPR2016-00022, 2016 WL 2848912, at *18

(PTAB Apr. 25, 2016) (“Institution Decision”). The Board

instituted review of claim 79 on one ground: obviousness

based on Japanese Patent No. JPH 08-7197 (“Degawa”)

alone or in combination with Japanese Patent No. JPH 09-

16892 (“Maruoka”). Id.

In its final written decision, the Board held that Google

had shown by a preponderance of the evidence that claims

64 and 77 were unpatentable as obvious over the combina-

tion of Israni and Kakihara but that Google had not shown

by a preponderance of the evidence that claim 79 was un-

patentable as obvious. Google Inc. v. Lee, No. IPR2016-

00022, Paper No. 30, at 39 (PTAB Apr. 21, 2017) (“Final

Written Decision”).

Google timely appealed the Board’s determination that

claim 79 was not obvious, and Lee timely cross-appealed

the Board’s determination that claims 64 and 77 were ob-

vious. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(4)(A).

II

Obviousness is a question of law based on underlying

factual determinations. Belden Inc. v. Berk-Tek LLC, 805

F.3d 1064, 1073 (Fed. Cir. 2015). We review the Board’s

ultimate obviousness determination de novo and underly-

ing factual findings for substantial evidence. Harmonic

Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.

2016). Substantial evidence is “such relevant evidence as

a reasonable mind might accept as adequate to support a

GOOGLE LLC v. LEE 5

conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229

(1938).

We review the Board’s determination of the broadest

reasonable interpretation of the claim language de novo.

Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d

1356, 1360 (Fed. Cir. 2015).

III

We first address Google’s appeal of the Board’s deter-

mination that claim 79 was not invalid as obvious in view

of the prior art of record.

A

Google first argues that the Board departed from or

misapplied the claim’s plain meaning when evaluating ob-

viousness in light of the prior art. Specifically, Google con-

tends that the Board committed legal error by “importing

an unrecited limitation into the claim language when eval-

uating [the] patentability” of the “selecting at least one sec-

tion map based on the map identifier” limitation.

Appellant’s Br. 14; see also id. at 18–22. Google argues that

in doing so, the Board failed to give claim 79 its broadest

reasonable interpretation. 2 Id. at 20. We agree.

2 We note that the U.S. Patent and Trademark Office

has since changed the claim construction standard used in

IPR proceedings. See 37 C.F.R. § 42.100(b); Changes to the

Claim Construction Standard for Interpreting Claims in

Trial Proceedings Before the Patent Trial and Appeal

Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018). The

new standard applies only to petitions filed on or after No-

vember 13, 2018, and therefore does not impact this case.

In this IPR, the claims were to be construed using the

broadest reasonable interpretation in light of the specifica-

tion. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,

2146 (2016).

6 GOOGLE LLC v. LEE

When evaluating Google’s arguments that Degawa

teaches the “selecting at least one section map based on the

map identifier” limitation, the Board’s analysis indicates

that it understood the claim to require using a map identi-

fier to select a section map that “is displayed.” See Final

Written Decision, at 37–38 (emphasis added). This is evi-

dent from the Board’s numerous statements faulting Deg-

awa for failing to disclose a map identifier that selects a

road map “for display” or “that is displayed.” See id.

Google argues that nothing in claim 79 requires that

the claimed map identifier be used to select a map “for dis-

play.” Appellant’s Br. 19. Lee responds that “[t]he only

reasonable reading of that language is that the ‘section

map is displayed’” and that “[t]he section map must, there-

fore, be displayed because otherwise a graphic file of a re-

gion could not be displayed.” Cross-Appellant’s Br. 21–22.

But Lee does not identify any specific language in the

claim, or support in the specification or prosecution history,

showing that the “selecting” step requires selecting a sec-

tion map for display. We agree with Google that claim 79

does not require that the claimed map identifier be used to

select a section map “for display.” Instead, claim 79 is clear

that what is displayed is the “information-containing im-

age data” that is recited two steps later. ’413 patent col. 46

ll. 48–50 (listing fourth step as “producing an information-

containing image data in accordance with said graphic file,

which is to be applied to a display panel” (emphases

added)). The “at least one section map” that is selected in

the second step of the method has individual sections, each

of which “include[] at least one component.” Id. at col. 46

ll. 41–44. The third step of the method, “designat[es] an

attribute” of said component and “produce[s] a graphic file

for a region.” Id. at col. 46 ll. 45–47. The fourth step of the

method includes “producing an information-containing im-

age data in accordance with said graphic file.” Id. at col.

46 ll. 48–50. Then, and only then, is the “information-con-

taining image data” applied to a display. Id.

GOOGLE LLC v. LEE 7

The broadest reasonable interpretation of “selecting at

least one section map based on the map identifier” would

not require using a map identifier to select a section map

that is displayed or is for display.

We have reversed or vacated and remanded final writ-

ten decisions of the Board when the Board departs from the

proper construction when assessing patentability in view

of the prior art. See, e.g., D’Agostino v. MasterCard Int’l

Inc., 844 F.3d 945, 950 (Fed. Cir. 2016) (finding that the

Board erred in “depart[ing] from or misappl[ying]” the

clear meaning of a claim “whether as a matter of claim con-

struction or as a matter of application to [the prior art]”);

Corning v. Fast Felt Corp., 873 F.3d 896, 900–01 (Fed. Cir.

2017) (finding that the Board erred by deviating from the

broadest reasonable construction of the claim when evalu-

ating obviousness in light of the prior art), cert. denied,

Fast Felt Corp. v. Owens Corning, 138 S. Ct. 2633 (2018).

Here, we conclude that the Board erred in effectively im-

porting the additional limitation “for display” into the “se-

lecting” step.

B

In this case, it is not necessary to remand for the Board

to reassess the evidence under the correct construction. We

have held that reversal, rather than remand, is appropri-

ate where, “[o]n the evidence and arguments presented to

the Board, there is only one possible evidence-supported

finding: [that] the Board’s determination . . . when the cor-

rect construction is employed, is not supported by substan-

tial evidence.” Corning, 873 F.3d at 901–02 (reversing,

rather than remanding, when “only one answer is sup-

ported by substantial evidence”); see also Belden, 805 F.3d

at 1077 (reversing, rather than remanding, when “the rec-

ord is one-sided”).

Here, the only evidence-supported finding is that Deg-

awa teaches the disputed “selecting at least one section

map based on the map identifier” limitation. Google argues

8 GOOGLE LLC v. LEE

that “a straightforward reading of Degawa demonstrates

that the reference discloses exactly what claim 79 recites:

‘selecting at least one section map’ (Degawa’s mesh map)

‘based on the map identifier of said [time-variant infor-

mation]’ (Degawa’s mesh number J3 that identifies a spe-

cific mesh map where traffic congestion exists).”

Appellant’s Br. 23 (alternation in original). Before the

Board, Google argued, and its expert explained, that Deg-

awa satisfied this limitation. J.A. 174–75 (Pet.), J.A. 893–

94 ¶¶ 111–12 (Dr. Michalson Decl.); J.A. 1736–37 ¶ 105

(Dr. Michalson 2nd Decl.); J.A. 1106 ¶ 19 (Degawa). Lee

did not dispute that Degawa discloses using a map identi-

fier to select a section map, J.A. 1429–32 (Patent Owner

Response), and offered no rebuttal expert testimony on

claim 79, J.A. 1435–37 (Mr. Cole Decl.). On claim 79, Lee

challenged only whether Degawa disclosed the terms

“time-variant information in section-wise” and a “section

map” under its proposed constructions, which the Board

declined to adopt. See J.A. 1391–96, 1429–32; Final Writ-

ten Decision, at 18.

Other than Lee’s argument under its rejected construc-

tion of “section map,” Lee does not point to any evidence in

the record before the Board to rebut Google’s showing that

Degawa teaches the “selecting” limitation. Instead, Lee ar-

gues that it “need not have provided rebuttal evidence on

this point because Petitioner did not meet its burden to

make a threshold showing that the ‘selection’ element is

present in Degawa.” Cross-Appellant’s Br. 24. But, as ex-

plained above, Google showed, including with unrebutted

expert testimony, that Degawa taught the disputed limita-

tion as properly construed. Based on Google’s showing, and

the absence of any rebuttal evidence from Lee, the only con-

clusion supported by the evidence is that Degawa teaches

GOOGLE LLC v. LEE 9

the disputed limitation. 3 We therefore reverse, rather than

remand, the Board’s decision.

IV

We now turn to Lee’s cross-appeal of the Board’s deter-

mination that claims 64 and 77 were invalid as obvious.

Lee argues that the Board conducted a legally im-

proper “inference on inference” obviousness analysis. See

Cross-Appellant’s Br. 25–31 (“[T]he PTAB first drew an in-

ference to find that Kakihara ‘suggests’ the missing claim

limitation, then the PTAB combined the modified Ka-

kihara with Israni based on a second inferred ‘motivation’

in order to achieve the claimed invention.”). Our obvious-

ness framework permits modifying one reference and com-

bining it with a second reference. See Smith & Nephew,

Inc. v. Rea, 721 F.3d 1371, 1380–81 (Fed. Cir. 2013). More-

over, the obviousness analysis “need not seek out precise

teachings directed to the specific subject matter of the chal-

lenged 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 Int’l Co. v. Teleflex Inc., 550 U.S. 398,

418 (2007) (emphasis added); see also ClassCo, Inc. v. Ap-

ple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The ra-

tionale of KSR does not support [the] theory that a person

of ordinary skill can only perform combinations of a puzzle

element A with a perfectly fitting puzzle element B.”). We

3 Moreover, after Google requested outright reversal

in its opening brief, Lee did not ask for a remand if we re-

jected the Board’s claim interpretation requiring “for dis-

play.” In Corning, we held that “where only one answer is

supported by substantial evidence and there is neither a

request nor an apparent reason to grant a second record-

making opportunity, reversal is warranted.” 873 F.3d at

901–02.

10 GOOGLE LLC v. LEE

find no legal error in this aspect of the Board’s obviousness

analysis.

The only remaining issue is whether the Board’s fac-

tual findings underpinning its determination are sup-

ported by substantial evidence. We hold that they are.

There is substantial evidence of record supporting the

Board’s finding that the disputed “attribute designating

statement” limitation was satisfied by Kakihara. In reach-

ing this determination, the Board evaluated the disclosure

of Kakihara, cited Google’s expert testimony, rejected Lee’s

arguments, and discredited Lee’s expert’s testimony. Final

Written Decision, at 28–29. The Board’s finding that a per-

son of ordinary skill in the art would have been motivated

to combine Kakihara with Israni is also supported by sub-

stantial evidence. Id. at 33–35. For example, the Board

found that a person of ordinary skill in the art would have

realized that “incorporating Kakihara’s feature of desig-

nating a selected route of travel in a different color than

other roads . . . into Israni’s navigation system, would ad-

vantageously have allowed a driver to better recognize the

selected route on the display.” Id. at 34 (citing J.A. 155–56

(Pet.); J.A. 1084 at col. 2 ll. 25–34 (Kakihara); J.A. 869 ¶ 77

(Dr. Michalson Decl.)).

We have considered Lee’s remaining arguments and

find them unpersuasive. We affirm the Board’s final writ-

ten decision that claims 64 and 77 of the ’413 patent are

invalid as obvious over the combination of Israni and Ka-

kihara.

V

On Google’s appeal, because the only conclusion sup-

ported by the evidence is that Degawa teaches the disputed

limitation as properly construed, we reverse the Board’s fi-

nal written decision upholding claim 79. On Lee’s cross-

appeal, because substantial evidence supports the Board’s

findings, we affirm the Board’s determination that claims

64 and 77 are unpatentable as obvious over the

GOOGLE LLC v. LEE 11

combination of Israni and Kakihara. Because all of the

challenged claims are unpatentable, we do not remand for

the Board to consider the non-instituted grounds.

AFFIRMED-IN-PART, REVERSED-IN-PART

COSTS

Costs to Google.