Boundary Solutions, Inc. v. Corelogic, Inc.
711 F. App'x 627
| Fed. Cir. | 2017Background
- Boundary Solutions, Inc. (BSI) appealed PTAB final written decisions invalidating claims of U.S. Pat. Nos. 7,499,946 and 7,092,957 (the Patents‑in‑Suit) in two inter partes reviews brought by CoreLogic.
- The asserted claims describe an interactive, online national/multi‑state parcel map database system that uses normalized jurisdictional databases and a “jurisdiction lookup table” keyed by a jurisdictional identifier (e.g., FIPS codes) to retrieve and display parcel boundary polygons and attributes.
- Prior art relied on: Christian Harder (1998) (web‑based GIS serving parcel maps; joining tax records to parcel shapefiles; search by address/parcel ID; highlighting parcel on client display) and Longley et al. (2001) (formatting and indexing multi‑jurisdictional GIS data, use of FIPS codes, grid/list indexing to speed queries).
- PTAB found by a preponderance of the evidence that claims would have been obvious over Harder in combination with Longley (and claim 11 over Harder, Longley, and another reference), reasoning that indexing and jurisdiction identifiers in the prior art render the claimed lookup table and identifier obvious.
- On appeal, BSI argued substantial evidence did not support obviousness because the cited references do not disclose the claimed “jurisdiction lookup table” or the required jurisdictional identifier; CoreLogic and the PTAB relied on Longley’s teaching of FIPS codes and indexing and on expert testimony about motivation to combine.
- The Federal Circuit affirmed, holding the PTAB’s obviousness findings supported by substantial evidence and declining to reweigh conflicting expert testimony.
Issues
| Issue | Plaintiff's Argument (BSI) | Defendant's Argument (CoreLogic) | Held |
|---|---|---|---|
| Whether claims are obvious over Harder + Longley | The combination does not disclose a “jurisdiction lookup table” or the required jurisdictional identifier (county FIPS) | Longley teaches indexing and use of FIPS (state or county) as jurisdictional identifiers; Harder teaches searchable web GIS; combined teachings render lookup table/identifier obvious | Affirmed — PTAB supported by substantial evidence that the combination renders claims obvious |
| Whether PTAB erred in finding a PHOSITA would be motivated to combine | No motivation to combine; experts for BSI testified against combination | CoreLogic’s expert explained obvious modifications (indexing to manage multi‑jurisdiction data and speed searches) | Affirmed — PTAB reasonably credited CoreLogic’s expert; court will not reweigh evidence |
| Whether claim term requires a specific code (county FIPS) | Jurisdictional identifier requires county FIPS, absent from prior art | Claim language admits any number/name/code; Longley’s state FIPS suffices as a jurisdictional identifier | Affirmed — PTAB correctly found no requirement for county FIPS specifically |
| Whether substantial evidence supports PTAB’s factual findings | Record insufficient to show lookup table and identifier in prior art | PTAB relied on combined teachings, indexing lists, and expert testimony — substantial evidence standard met | Affirmed — substantial evidence supports PTAB’s obviousness determination |
Key Cases Cited
- In re Adler, 723 F.3d 1322 (Fed. Cir. 2013) (standard of review for PTAB factual findings and legal conclusions)
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (definition of substantial evidence)
- In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) (appellate deference when record supports multiple reasonable conclusions)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (Graham factors for obviousness)
- United States v. Adams, 383 U.S. 39 (1966) (consideration of secondary factors in obviousness analysis)
- In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016) (motivation to combine teachings of prior art)
- In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) (obviousness test focuses on combined teachings)
- In re Keller, 642 F.2d 413 (C.C.P.A. 1981) (cannot show nonobviousness by attacking references individually)