Patent Directed to Geographic Parcel Boundary Maps (for Tax Purposes) Not a Covered Business Method

On May 24, 2016, the U.S. Patent Office Patent Trial and Appeal Board (PTAB) issued a decision denying institution of covered business method (CBM) patent review of U.S. Patent No. 7,092,957 owned by Boundary Solutions.  This decision illustrates a "mini" trend of some PTAB boards requiring explicit or at least implicit language in the claims themselves referring to a financial product or service in order for the patent to qualify as a CBM patent.

CoreLogic filed the Petition to institute a CBM patent review of claims 1–19 of the '957 patent.  BSI filed a Preliminary Response and a disclaimer of claims 13, 16, 17, and 18.

The '957 patent relates generally to Geographic Information Systems ("GIS") and, in particular, to a National Online Parcel-Level Map Data Portal ("NPDP") that provides online delivery of parcel-level map data.  The '957 patent describes the NPDP as an electronic repository for parcel-level maps and linked attribute data acquired from public and private entities.  Databases from different jurisdictions are assembled and stored in a standard format, with each jurisdictional database placed in an individual directory.  The system normalizes information to a single universal protocol.  Parcel-level information includes parcel boundaries and geocodes linked using a parcel identifier to a non-graphic database containing property tax records.

The '957 patent describes retrieving a parcel-level map based on the address of a parcel requested by an end user.  The system searches a jurisdictional lookup table to identify the jurisdiction in which the requested parcel is located.  The system searches the non-graphic database for that jurisdiction for a record matching the address, and uses the parcel identifier for that record to access a graphic database containing the selected parcel.  The system can display the selected parcel and surrounding parcels, with the selected parcel shown as a highlighted polygon.  The system can also display the parcel's linked data (e.g., tax record).

The '957 patent describes a business revenue model that "begins with the establishment by the NPDP service provider of a publicized parcel-level map data web site with links to a tax record database."  For example, the model contemplates generating revenue through various subscription agreements.

Claims 1–19 are the subject of the Petition, and claims 13 and 16–18 have since been disclaimed by Patent Owner.  Claim 1 is representative and is reproduced below.

1.  An interactive computer implemented method for retrieving geographic parcel boundary polygon maps and associated parcel attribute data linked to a non-graphic database, wherein the data is acquired electronically, comprising:
    a. activating a computer terminal connected to a computer network;
    b. accessing an applications program for access to the data;
    c. accessing a data entry screen and entering a parcel attribute to call up the parcel selected;
    d. subsequently accessing a national parcel map database comprising multiple jurisdictional databases which have been normalized to a common data protocol;
    e. searching a jurisdiction look up table associated with the national parcel map database, said look up table indexed for identification of the pertinent jurisdictional database, whereby a numerical jurisdictional identifier for the selected jurisdiction is located, and the identified jurisdictional database thereafter accessed; and,
    f. thereafter displaying on screen a parcel boundary polygon map, along with surrounding parcel boundary polygons, the default scale of the displayed map selected to fill the computer display screen with parcel boundaries within a selected distance around the subject parcel, the selected parcel boundary polygon highlighted, defining both the location and boundary of the parcel, and associated attribute data for the highlighted parcel displayed.

A threshold question is whether the '957 patent is a CBM patent, as defined by the AIA.  CoreLogic bears the burden of persuasion.  The AIA defines "covered business method patent" as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions."  A patent need have only one claim directed to a covered business method to be eligible for review.

CoreLogic contended that claim 1 of the '957 patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.  CoreLogic also relied on dependent claims 13 and 16–18, but because BSI disclaimed claims 13 and 16–18 at the same time it filed its Preliminary Response, the statutory disclaimer had the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.  Thus, the disclaimed claims are not consulted when determining whether the patent is a covered business method patent under AIA § 18(d)(1).

The PTAB noted that other Board decisions have evaluated compliance with CBM standing requirements at the time of filing, but found those cases to be distinguishable and not binding here (e.g., examples of canceling claims after institution are distinguishable).  Any suggestion in those cases that a decision on institution should address the disclaimed claims because they existed at the time the petition was filed is inconsistent with Federal Circuit precedent instructing to treat the claims as if they never existed.  Thus, the disclaimed claims 13 and 16–18 were not considered in the analysis.

With respect to claim 1, CoreLogic argued that the Specification confirms that this claim is directed to processing data as part of a financial process because the Specification describes a "financial process in which subscribers pay to gain access to parcel boundary data using the claimed method."  CoreLogic argued that the '957 patent is explicit that the purpose of the claimed method is to provide data in exchange for money.

CoreLogic also contended that the Specification describes using the maps retrieved in the claimed method for business purposes and financial activities.  According to CoreLogic, determining real estate parcel boundaries is a fundamental business practice used by various companies, including title companies, insurance providers, and land developers.

The PTAB noted that CoreLogic had not explained adequately how any of the claims of the '957 patent recite a method or apparatus "for performing data processing or other operations used in the practice, administration, or management of a financial product or service."  AIA § 18(d)(1).  While CoreLogic focused on claim 1, CoreLogic failed to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way.

The PTAB noted that CoreLogic's reliance on portions of the Specification was unavailing.  CoreLogic did not direct the PTABs to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods.  The PTAB also noted that CoreLogic failed to address portions of the Specification that indicate the claimed invention can be used "for free," i.e., without any generation of revenue or financial aspect at all.  Given that the Specification contemplates use of the claimed inventions for free, it is not apparent that the "purpose of the claimed method is to provide data in exchange for money," as CoreLogic suggests.

At most, CoreLogic established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step.  Under these circumstances, the PTAB concluded that the "financial prong" had not been met.  Thus, because neither the claim language nor the Specification supported CoreLogic's contention that the '957 patent claims a financial product or service, the '957 patent did not qualify as a CBM patent under § 18 of the AIA.

The PTAB noted that "financial product or service" should be interpreted broadly, but that does not mean interpretation of "financial product or service" to encompass any claimed invention that might be used to generate revenue when the Specification describes the methods of generating revenue.  The PTAB stated that if the mere ability to make money selling a claimed invention, or providing access to a claimed method, were sufficient, the "financial product or service" requirement would be rendered nugatory.

The PTAB referenced prior Board decisions finding the "financial products or services" requirement met even in the face of claim language that does not expressly mention financial activity, based on analysis of the Specification.  The PTAB noted that those cases turn on their particular facts as well as the claim language and Specifications at issue, and were not binding here.

Before Administrative Patent Judges Lynne E. Pettigrew, Peter P. Chen, and Richard H. Marschall
Decision by Administrative Patent Judge Peter P. Chen