CoreLogic Inc v. Boundary Solutions Inc

1. Case Identification

• Case #: CBM2016-00016
• Patent #: 7,092,957
• Filed: November 24, 2015
• Petitioner(s): CoreLogic, Inc.
• Patent Owner(s): Boundary Solutions, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: System for a National Repository of Real Estate Parcel Data
• Brief Description: The ’957 patent discloses a method for developing and operating a national repository of real estate parcel data. The system aggregates vector-based parcel map data from multiple jurisdictions, normalizes it to a standard format, and provides subscribers with interactive, computer-implemented access to retrieve and display geographic parcel boundary maps and associated attribute data.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. § 101 - Claims 1-19 are directed to a patent-ineligible abstract idea.

• Prior Art Relied Upon: This ground is based on patent eligibility under §101 and the Alice framework, not prior art combinations. However, Petitioner referenced prior art from a related IPR proceeding (IPR2015-00228) to argue that the computer components recited in the claims represent well-known, conventional technology, thereby supporting the argument that they do not supply an inventive concept.
• Core Argument for this Ground:
  • Abstract Idea (Alice Step 1): Petitioner argued that claims 1-19 are directed to the abstract idea of searching a set of parcel maps for a selected property and its surroundings. This process was characterized as a longstanding human activity and a fundamental economic practice, analogous to a person manually searching physical property maps in a filing cabinet. Petitioner contended that the claims merely computerize this conventional process using generic technology, which does not render the underlying abstract idea patent-eligible. The claims are directed to the “what” (the abstract idea of organizing and searching for information) rather than a specific, technical “how.”
  • Lack of Inventive Concept (Alice Step 2): Petitioner argued that the claims, viewed individually and as an ordered combination, fail to add an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims recite only generic and conventional computer components, such as a "computer terminal," "computer network," "applications program," and "database," all performing their well-understood, routine functions. Petitioner asserted that these elements do not "add significantly more" to the abstract idea, do not improve the functioning of the computer itself, and fail the "machine-or-transformation test."
  • Dependent Claims Analysis: Petitioner further contended that dependent claims 2-19 fail to add an inventive concept. These claims were argued to recite only minor, conventional variations on the method of claim 1, such as specifying the type of parcel attribute to be searched (e.g., address, tax data), conventional data entry methods (e.g., pull-down menus), or routine data display options (e.g., adjusting scale, highlighting a parcel). Petitioner asserted these limitations are merely additional acts of data manipulation that do not impart patent eligibility.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the term "jurisdiction" which appears in independent claim 1 and its corresponding dependent claims.
  • Proposed Construction: "a geographical area to which a common association or authority applies, such as a zip code, town, city, county, district, state, country, and public or private association or organizational areas."
  • Importance: Petitioner argued this broad construction is consistent with the specification's varied examples and is critical to its §101 argument. By defining "jurisdiction" broadly, Petitioner supported its position that the patent claims the abstract concept of organizing conventional geographic information, rather than a specific, technical system tied to a particular type of jurisdictional data structure. This contrasts with a potentially narrower interpretation that might imply a more concrete technical implementation.

5. Key Technical Contentions (Beyond Claim Construction)

• Invention is Not Technological: A central contention of the petition was that the ’957 patent is not directed to a "technological invention" and does not solve a technical problem using a technical solution. Petitioner argued that the problem identified in the patent was a business problem—the lack of a single, centralized source for national parcel map data for industries like insurance and real estate. The patent’s proposed solution was likewise a business solution: aggregating existing data from various sources and creating a subscription-based revenue model. The use of generic computer hardware for this task was presented as merely a conventional implementation of a business method, not a technological innovation.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that it was not estopped from bringing this Covered Business Method (CBM) review. Although a related IPR was previously filed on the ’957 patent, Petitioner noted that a challenge under 35 U.S.C. § 101 is not permissible in an IPR proceeding pursuant to 35 U.S.C. § 311(b). Therefore, this CBM review, based solely on a §101 ground, presented a patentability challenge that could not have been previously raised before the Board, justifying the institution of a separate proceeding.

7. Relief Requested

• Petitioner requests institution of a covered business method review and cancellation of claims 1-19 of the ’957 patent as unpatentable under 35 U.S.C. § 101.