Tuesday, October 17, 2017

CAFC affirms PTAB's inter partes review decisions in Boundary Solutions

Within Boundary Solutions v. CoreLogic, 2017 U.S. App. LEXIS 20214 (CAFC) :

Rather than look to whether individual elements of the Asserted Claims are present in the prior art, the actual question we must address is whether the PTAB's determination, that the "subject matter as a whole" would have been obvious, 35 U.S.C. ยง 103(a), is supported by substantial evidence. "[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (emphasis added); see In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) ("[One] cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references."). Through this lens, we address BSI's conten-tion that the combined teachings of Harder and Longley do not disclose a "jurisdiction look up table."


We do not agree with BSI's contention that there is nothing to support a finding that a PHOSITA would be motivated to combine Harder and Longley. See Appel-lant's Br. 29; Reply Br. 22-25. As CoreLogic's expert, Michael Goodchild, explained, and the PTAB found per-suasive, see J.A. 21-22, it would have been obvious to a PHOSITA to modify the GIS database system of Harder to use an index for locating jurisdictional identifiers associated with parcel data in the database as disclosed by Longley "to more easily manage parcel information across multiple jurisdictions" and make "searching parcel data more efficient," J.A. 416-17. On appeal, BSI avers that its expert, Mr. William Huxhold, offered more accurate testimony regarding the motivation to combine. See Appellant's Br. 32-34. However, we have repeatedly stated that "[w]e may not reweigh evidence on appeal." Warsaw, 832 F.3d at 1333. CoreLogic's expert testimony, along with the PTAB's other findings, is sufficient to support a conclusion that a PHOSITA would have been motivated to combine Harder and Longley.


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