PTAB

CBM2016-00018

CoreLogic Inc v. Boundary Solutions Inc

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: National Repository of Real Estate Parcel Data
  • Brief Description: The ’352 patent is directed to developing and operating a national repository of real estate parcel data. The system aggregates vector-based parcel map data from various local governments into a centralized, normalized database for use by subscribers such as title companies, insurance providers, and land developers.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility Under 35 U.S.C. §101 - Claims 1-23 are unpatentable as directed to an abstract idea.

  • Legal Basis: Petitioner argued that all challenged claims are patent-ineligible under 35 U.S.C. §101 as interpreted by the Supreme Court in Alice Corp. v. CLS Bank Int’l. This petition for Covered Business Method (CBM) Review asserted that the patent claims a method for performing a financial service or is complementary to a financial activity, and is not directed to a technological invention.
  • Core Argument: Petitioner’s argument followed the two-step framework from Alice.
    • Step 1: Directed to an Abstract Idea: Petitioner contended that the claims are directed to the abstract idea of searching a set of parcel maps for a selected property and its surrounding properties. This was characterized as a longstanding and fundamental human activity, analogous to the manual process a county records clerk would perform: (1) receiving a request for a map, (2) searching a collection of maps using an identifier (e.g., city name), and (3) transmitting the result. Petitioner asserted this process constitutes both a "fundamental economic practice" and a method of "organizing human activity." The claims merely computerize this conventional process, which is a strong indicator of an abstract idea.
    • Step 2: Lack of an Inventive Concept: Petitioner argued that the claims fail to add "significantly more" to the abstract idea to transform it into a patent-eligible invention. The implementation of the abstract idea relies entirely on generic and conventional computer components.
      • The claims recite only generic technology, such as a "server" to receive requests and perform searches, and a "database" to store information. The patent specification itself described these components as being based on "industry standard" platforms.
      • Petitioner contended that limitations such as using a "jurisdictional identifier," normalizing data to a "common spatial data protocol," and arranging records in "service area directories" do not constitute an inventive concept. These were framed as mere data organization techniques that are well-known and conventional, rather than specific, novel improvements to computer technology.
      • The claims do not improve the functioning of the computer itself or solve a problem rooted in computer networks. Instead, they use computers as a tool to perform a longstanding business and data-retrieval process more efficiently. Therefore, the claims do not pass the "machine-or-transformation test" and lack any inventive concept beyond the abstract idea itself.

4. Key Claim Construction Positions

  • "jurisdiction": Petitioner proposed that this term should be construed broadly as "a geographical area to which a common association or authority applies," including entities like zip codes, cities, counties, or private associations. This broad construction supports the argument that the claims cover a wide-ranging, abstract concept of organizing geographic data, not a specific technical solution.
  • "service area directories": Petitioner proposed the construction "a subset of a database for a service area (e.g., jurisdiction)." This construction frames the directories as a conventional file organization method, reinforcing the argument that the claim elements are generic and not inventive.
  • "multi-jurisdictional database": Petitioner proposed this term means "a collection of data relating to two or more jurisdictions." This construction emphasizes that the patent merely claims the aggregation of data, a fundamental aspect of the underlying abstract idea, rather than a specific, patentable database structure or technology.

5. Arguments Regarding Estoppel

  • Petitioner argued that it is not barred or estopped from requesting CBM review of the ’352 patent. Although related inter partes review (IPR) proceedings on the same patent were pending (IPR2015-00219, IPR2015-00222), those proceedings were statutorily limited to challenges under §102 and §103. Petitioner could not have raised the patent ineligibility ground under §101 in those IPRs. Therefore, Petitioner asserted that it was free to challenge claims 1-23 on §101 grounds for the first time in this CBM proceeding.

6. Relief Requested

  • Petitioner requested the institution of a Covered Business Method Review and the cancellation of claims 1-23 of the 8,065,352 patent as unpatentable under 35 U.S.C. §101.