`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`NIANTIC, INC.,
`Petitioner,
`
`v.
`
`NANT HOLDINGS IP, LLC,
`Patent Owner.
`
`
`
`IPR 2021-01119
`U.S. Patent No. 10,664,518 B2
`
`______________________
`
`PETITIONER’S REQUEST FOR REHEARING
`OF FINAL WRITTEN DECISION
`UNDER 37 C.F.R. § 42.71(d)(2)
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`LEGAL STANDARD .................................................................................... 2
`II.
`III. ARGUMENT .................................................................................................. 2
`A.
`The Decision Overlooked CaveLie’s Disclosure of Tessellated
`Tiles Because the Decision Misapprehended the Combination
`of CaveLie with Altman ....................................................................... 2
`The Decision Misapplied the Law and Overlooked and Misapprehended
`Altman’s Disclosure of Tessellated Tiles .............................................................. 5
`CONCLUSION ................................................................................................................ 14
`
`IV.
`
`B.
`
`
`
`
`
`-i-
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.71(d)(2), Petitioner Niantic, Inc. moves for
`
`rehearing of the Decision Denying Institution of Inter Partes Review (Paper 8,
`
`“Decision” or “DI”) on claims 1-9, 11-20, 23-32, and 34-36 of U.S. Patent
`
`No. 10,664,518 (Ex. 1001, “’518 Patent”).
`
`I.
`
`INTRODUCTION
`
`Rehearing is warranted because the Decision failed to consider Petitioner’s
`
`combination of Altman (Ex. 1003) and CaveLie (Ex. 1004) in Ground 2, thus
`
`overlooking CaveLie’s disclosure of “tessellated tiles.” The Petition explained that
`
`Ground 2 introduced CaveLie in combination with Altman “[t]o the extent there is
`
`any question whether Altman’s map tiles satisfy the ’518 Patent’s map tile
`
`limitations,” including the limitations requiring tessellated tiles. (Pet. at 43.) Yet
`
`the Decision erroneously concluded that it did not need to even reach the question
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`of whether CaveLie discloses tessellated tiles (which it does) because it found that
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`Altman on its own does not disclose tessellated tiles. (DI at 25.) This is a
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`nonsensical result that fails to account for the stated rationale behind combining
`
`Altman with CaveLie in order to implement Altman using the tessellated map tiles
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`disclosed in CaveLie.
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`The Decision further erred in Ground 1 by misapplying the law as to the
`
`obviousness argument, overlooking evidence in the Altman reference, and
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`misapprehending that a POSA would have understood that the set of features
`
`1
`
`
`
`
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`described by Altman would have been implemented using “tessellated tiles,” as
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`explained in Dr. Zyda’s Declaration (Ex. 1002 (“Zyda”)). Petitioner respectfully
`
`requests that the Board correct these errors by rehearing the Decision and instituting
`
`inter partes review.
`
`II. LEGAL STANDARD
`
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37
`
`C.F.R. § 42.71(d). Clearly erroneous fact findings and erroneous conclusions of law
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`are abuses of discretion that warrant reconsideration. Stevens v. Tamai, 366 F.3d
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`1325, 1330 (Fed. Cir. 2004).
`
`III. ARGUMENT
`
`A. The Decision Overlooked CaveLie’s Disclosure of Tessellated Tiles
`Because the Decision Misapprehended the Combination of CaveLie
`with Altman
`In Ground 2, the Petition explained that the combination of Altman with
`
`CaveLie would have resulted in implementing Altman using CaveLie’s tessellated
`
`map tiles, thus remedying any potential deficiencies in Altman’s map tile
`
`disclosures. (Pet. at 43-47.) But the Decision disposed of Ground 2 without fully
`
`considering the disclosures of CaveLie because “Petitioner’s rationale for combining
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`Altman and CaveLie proceeds on the assumption that Altman discloses tessellated
`
`2
`
`
`
`
`
`tiles,” and the Decision found that Altman did not disclose tessellated tiles. (DI at
`
`25.) The Decision’s reasoning apparently and nonsensically would have required
`
`Petitioner to show that Altman disclosed tessellated tiles before reaching the
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`question of whether an absence of disclosed tessellated tiles in Altman would be
`
`cured by combination with CaveLie. Thus, the Decision erred by not fully
`
`considering Petitioner’s combination of Altman with CaveLie and CaveLie’s clear
`
`disclosure of “tessellated tiles.”
`
`The Decision mistakenly found that Petitioner’s reasoning for combining
`
`CaveLie with Altman was limited to both references disclosing tessellated tiles,
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`which the parties agreed to construe as “tiles fitted together to cover an area without
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`gaps.” (DI at 25; see also id. at 9-10.) As explained below, the Petition did show
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`that Altman implicitly discloses tessellated tiles. But even if the Board disagrees,
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`the Petition explained that, “[t]o the extent there is any question whether Altman’s
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`map tiles satisfy the ’518 Patent’s map tile limitations,” including the tessellated tile
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`requirements, “CaveLie provides implementation details which could be applied to
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`Altman’s map tiles.” (Pet. at 43.) As explained, following CaveLie’s
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`implementation details would have resulted in Altman using tessellated map tiles.
`
`(See Pet. at 44-46.)
`
`The Petition thus did not point to CaveLie simply as further confirmation that
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`Altman itself disclosed and rendered obvious tessellated tiles. The Petition
`
`3
`
`
`
`
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`explained that, even if Altman alone did not disclose using tessellated tiles, it would
`
`have been obvious based on CaveLie’s own disclosure of tessellated tiles: “a POSA
`
`would have implemented Altman’s map tiles according to the model disclosed by
`
`CaveLie, with multiple levels of detail and different map tile sizes stored for a given
`
`map area,” and under that model, “[e]ach level of CaveLie’s map tiles is a set of
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`tessellated tiles[.]” (Pet. at 47, 45.)
`
`There is no dispute that CaveLie discloses “tessellated tiles.” As explained,
`
`CaveLie provides a detailed discussion of map tiles that can store the same map data
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`at different “zoom levels” that correspond to a different number of tiles representing
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`the same map data. (See, e.g., Pet. at 44-46; CaveLie, Ex. 1004, ¶¶0042-0045, Fig.
`
`3.) Figure 3, in particular, clearly shows a single map area being divided up into
`
`different map tiles without any gaps between them. (Pet. at 44-45 (citing CaveLie,
`
`Fig. 3); see also Zyda, ¶¶290-291.)1 Thus, even if the Board finds that Altman does
`
`not disclose “tessellated tiles,” CaveLie’s clear disclosure of “tessellated tiles”
`
`renders the claim limitation obvious because a POSA would have incorporated
`
`CaveLie’s tessellation into Altman’s map tiles. (Pet. at 45-47.)
`
`
`1 Figures 4A-4C and 6A-6C similarly show map areas that are divided into tiles,
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`such that the map area is shown continuously and there are no gaps between the tiles.
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`(See CaveLie, ¶¶0051-0052, 0056.)
`
`4
`
`
`
`
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`The Petition makes clear that a POSA would have been motivated to combine
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`Altman and CaveLie regardless of whether Altman discloses tessellated tiles. Only
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`after explaining how implementing Altman in light of CaveLie results in Altman’s
`
`map tiles being tessellated tiles does the Petition make reference to Altman’s
`
`“tessellated tiles,” and merely as a shorthand for Altman’s map tile disclosures. (Pet.
`
`at 46-47.) The Petition has already explained that tessellated tiles would have been
`
`obvious in view of CaveLie, and in fact, the Petition’s discussion of the manner,
`
`rationale, and motivation to combine uses the term “map tiles” far more frequently
`
`than “tessellated tiles” to describe how and why a POSA would have combined
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`Altman and CaveLie. (See id.) Likewise, the cited portion of Dr. Zyda’s declaration
`
`similarly refers to “map tiles” rather than “tessellated tiles.” (See Zyda, ¶¶305-311.)
`
`Petitioner therefore respectfully submits that the Decision misapprehended the
`
`Petition’s application of CaveLie’s teachings to Altman. The Decision also
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`overlooked and failed to discuss significant evidence regarding combining Altman
`
`and CaveLie. (See, e.g., Pet. at 46-47 (citing Zyda, ¶¶305-311; Altman ¶¶0043,
`
`0049; CaveLie ¶¶0005, 0027, 0042, Fig. 3) (explaining motivation and rationale to
`
`combine Altman and CaveLie).)
`
`B.
`
`the Law and Overlooked and
`The Decision Misapplied
`Misapprehended Altman’s Disclosure of Tessellated Tiles
`The Decision correctly recognized that Altman discloses “map tiles.” (DI at
`
`22.) But the Decision mistakenly required an express disclosure of tessellated tiles,
`
`5
`
`
`
`
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`finding that Altman “does not provide any description of how the tiles are arranged.”
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`(DI at 22.) In so doing, the Decision seems to imply that because Altman’s
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`disclosures can support use of a single map tile (at least in some circumstances), then
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`Altman neither discloses nor fairly suggests the use of tessellated tiles. This is
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`contradictory to the case law.
`
`The standard for assessing a reference in the context of obviousness is not
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`based solely on what it expressly discloses, “but also for what it fairly suggests.”
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`Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re
`
`Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)); see also In re Applied Materials, Inc., 692
`
`F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything
`
`that it teaches, not simply the described invention or a preferred embodiment.”); In
`
`re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art
`
`reference is relevant for all that it teaches to those of ordinary skill in the art.”). This
`
`includes “not only specific teachings of the reference but also the inferences which
`
`one skilled in the art would reasonably be expected to draw therefrom.” In re Preda,
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`401 F.2d 825, 826 (C.C.P.A. 1968) (emphasis added); M.P.E.P. § 2144.01 (quoting
`
`In re Preda, 401 F.2d at 826). Thus, “[a] claimed invention may be obvious even
`
`when the prior art does not teach each claim limitation, so long as the record contains
`
`some reason why one of skill in the art would modify the prior art to obtain the
`
`claimed invention.” CRFD Rsch., Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir.
`
`6
`
`
`
`
`
`2017) (quoting Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016)); see
`
`also Merck & Co. v. Biocraft Laby’s, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the
`
`mere absence from the prior art of a teaching or a limitation recited in the patent at
`
`issue is insufficient for a conclusion of nonobviousness.”).
`
`A reference can disclose features that are not necessarily explicitly discussed
`
`within the reference, and indeed, that is the case with Altman’s implicit disclosure
`
`of “tessellated tiles.” “The test for an implicit showing is what the combined
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`teachings, knowledge of one of ordinary skill in the art, and the nature of the problem
`
`to be solved as a whole would have suggested to those of ordinary skill in the art.”
`
`In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (citing In re Keller, 642 F.2d
`
`413, 425 (1981)). Petitioner respectfully submits that because the Decision
`
`mistakenly required an explicit disclosure of tessellated tiles in Altman, it
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`misapprehended the necessary showing for implicit disclosure that the Petition and
`
`accompanying expert discussion provided.
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`The Decision incorrectly found that Altman does not disclose tessellated tiles
`
`because “individual map tiles can be used to display certain areas of a map without
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`being sets of tessellated tiles.” (DI at 22 (citing POPR at 18).)2 The Decision thus
`
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`2 As a threshold matter, the claims at issue do not require that all aspects of the map
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`be exclusively made up of tessellated tiles, but rather that the “area tile map [be]
`
`7
`
`
`
`
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`held that Altman does not disclose “tessellated tiles.” (DI at 24.) It reasoned that,
`
`because the cited portions of Altman do not describe how the map tiles are arranged,
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`they do not disclose that the map is made of tessellated tiles. (Id. at 22.) With this,
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`the Decision seemingly—and erroneously—adopted the Patent Owner’s position
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`that “Altman teaches the use of a voluminous, highly detailed map that can be
`
`expanded[.]” (POPR at 18.) To the contrary, a POSA would have found Altman’s
`
`use of tessellated tiles obvious at least because they are implicitly disclosed and
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`fairly suggested by the example in Altman’s paragraph 43, particularly given the
`
`state of the art at the time and the impracticability of Patent Owner’s hypothetical
`
`alternative. (See, e.g., Zyda, ¶161.)
`
`While Patent Owner speculates that Altman might use a single, highly detailed
`
`map tile in some applications, a POSA would have recognized that Altman’s
`
`
`represented by a set of tile subareas that includes one or more tessellated tiles . . . .”
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`’518 Patent, claim 1 (emphasis added). That is, the “set of tile subareas” needs to
`
`include tessellated tiles, but need not wholly consist of them. Accordingly, that
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`some portions of the map of Altman potentially could be displayed without
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`tessellated tiles—as Patent Owner and the Decision speculate—does not mean that
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`Altman does not disclose tessellated tiles in a manner that reads on the challenged
`
`claims.
`
`8
`
`
`
`
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`examples fairly suggest the use of multiple, tessellated tiles, including in the example
`
`from Altman paragraph 43 discussed in the Petition. (See Pet. at 22-24; Zyda, ¶¶155-
`
`162.) Altman paragraph 43 gives an example of a map tile showing the continental
`
`U.S. “that can be zoomed to display a regional street level map for any area in the
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`U.S.” (Altman, Ex. 1003, ¶0043 (emphasis added).) In the immediately preceding
`
`sentence, Altman describes an embodiment wherein “map images comprise map
`
`tiles that are image files of maps with varying degrees of granularity.” (Id.
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`(emphasis added).) As the Petition and Dr. Zyda explained, these two sentences
`
`taken together clearly convey that the map of the continental U.S. and a regional
`
`street level map are intended to illustrate navigation between map tiles of different
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`“degrees of granularity” present in this embodiment—not just expanding a single
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`“voluminous, highly detailed map,” as Patent Owner asserts. (Pet. at 22-23 (citing
`
`Zyda, ¶¶155-159; Altman, ¶0043).) And because, as explained, the map discussed
`
`in Altman paragraph 43 is itself composed of “map tiles” and can be zoomed in on
`
`“any area in the U.S.[,]” a POSA would have understood that there would be no gaps
`
`between the regional street level map tiles for any location within the continental
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`U.S. (See Pet. at 22-23 (citing Zyda ¶¶158-159).) The Petition thus explained that
`
`Altman implicitly discloses that the zoomed-in regional street level maps are a
`
`tessellated tile map of the continental U.S. (Pet. at 23-24 (citing Zyda, ¶¶160-162).)
`
`9
`
`
`
`
`
`The Decision’s finding that Altman could be implemented using a single,
`
`highly detailed map tile neither contradicts nor undermines that Altman also
`
`implicitly discloses the use of tessellated tiles. A prior art reference that is broad,
`
`ambiguous, or susceptible to multiple reasonable interpretations on a disclosed
`
`feature can simultaneously suggest to a POSA multiple—even potentially opposite
`
`or contradictory—specific implementations of that feature. See, e.g., In re Lamberti,
`
`545 F.2d 747, 750 (C.C.P.A. 1976) (rejecting argument that neither of the prior art
`
`references taught the use of asymmetric dialkyl moieties simply because the
`
`disclosure of both references were broad, these compounds were not expressly
`
`disclosed or exemplified, and the preferred embodiment used the opposite—a
`
`symmetric dialkyl compound); see also Merck, 874 F.2d at 807 (explaining that the
`
`fact that the prior art discloses a “multitude of effective combinations” does not mean
`
`that any particular combination is not obvious); In re Bozek, 416 F.2d 1385, 1390
`
`(C.C.P.A. 1969) (explaining that what a prior art reference fairly suggests is not
`
`limited to only preferred or expressly disclosed embodiments).
`
`The Petition also pointed to the state of the art and other disclosures within
`
`Altman that show this implicit disclosure of tessellated tiles. First, storing map data
`
`of different granularity levels as multiple layers of map tiles was a well-established
`
`method of organizing map data that would have been well-known to and easily
`
`recognized by a POSA. (Pet. at 22-23 (citing Zyda, ¶¶155, 159).) Second, Altman’s
`
`10
`
`
`
`
`
`system presents maps on mobile communication devices that are coupled to a server
`
`via a wireless network. (See, e.g., Pet. at 23 (citing Altman, ¶¶0043, 0119).) Mobile
`
`devices have limited storage capabilities, and it would have been extremely difficult
`
`for as highly detailed of a map as proposed by Patent Owner to be stored locally on
`
`the mobile device. Therefore, the well-established practice in the art of using
`
`multiple layers of map tiles to organize map data, combined with the sheer
`
`impracticability of Patent Owner’s suggestion of a single, highly detailed map tile
`
`representing the entire continental U.S. with enough detail to allow users to magnify
`
`the image and view street level details, further supports the implicit disclosure of
`
`using tessellated map tiles. (See Pet. at 22-23 (citing Zyda, ¶¶155-156, 158-159).)
`
`In fact, as explained, this is exactly consistent with Altman’s teachings—the mobile
`
`device fetches information, including map tiles, only for the area in the proximity
`
`of the mobile device. (See, e.g., Pet. at 18-21; Altman, ¶¶0037, 0043, 0049; Zyda,
`
`¶¶140-146, 271.)
`
`In other words, contrary to Patent Owner’s argument, Altman paragraph 43
`
`does not teach, and a POSA would not have understood, that the entire continental
`
`U.S. should be represented by a single, highly detailed map tile. Instead, Altman
`
`teaches that the detailed, street-level map tiles are smaller units that “correspond to
`
`an area or region around the user” and that can be selected to cover “any area in the
`
`U.S.” (Altman, ¶0043; see Pet. at 20, 22 (citing Zyda, ¶¶141-144, 158-59; Altman,
`
`11
`
`
`
`
`
`¶¶0043, 0037, 0049).) A POSA would have readily recognized this as describing a
`
`tessellated tile map of the continental U.S., as the Petition and Dr. Zyda explain.
`
`(See Pet. at 22-24 (citing Zyda, ¶¶151-162).)
`
`The Decision also erroneously states that “even if individual tiles were used
`
`in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps
`
`between the tiles.” (DI at 22.) But the Petition explained how gaps between the tiles
`
`would be contrary to the nature of the problem to be solved in Altman. In re Kotzab,
`
`217 F.3d at 1370. As explained, Altman discloses that “a regional street level map”
`
`can be displayed for “any area in the U.S.” (Altman, ¶0043 (emphasis added);
`
`Zyda, ¶160; Pet. at 23-24.) For this to be possible, the layer of map tiles that show
`
`the regional street level view would need to be gapless, that is, tessellated.
`
`Otherwise, some area of the U.S. would not have a regional street level map. (See
`
`Pet. at 23-24.) This disclosure is further supported by Altman’s Figure 2A, which
`
`does not show any gap in coverage. (See Pet. at 24; Zyda, ¶160.)3 Thus, a POSA
`
`would have understood that Altman implicitly discloses tessellated map tiles.
`
`
`3 Furthermore, Altman discloses that the user may be “on the move,” and if the layer
`
`of map tiles displayed to the user had gaps, a user would inevitably encounter that
`
`gap between the tiles and move off of the edge of an individual tile at some point.
`
`(Altman, ¶0091.)
`
`12
`
`
`
`
`
`The Decision’s reasoning further misapprehends Dr. Zyda’s discussion
`
`related to tessellated tiles in Altman. The Decision deemed Dr. Zyda’s analysis an
`
`impermissible substitute for express disclosure of this claim limitation, rather than
`
`properly recognizing it as an explanation of Altman’s implicit disclosure of
`
`tessellated tiles and why that disclosure would have been apparent to a POSA.
`
`The Petition explained that a POSA would have understood that tessellated
`
`tiles are the natural result of the relied-upon features of Altman’s map, including its
`
`multiple layers of granularity and its ability to zoom between them, due to well-
`
`established practices of organizing map data to facilitate those functionalities. (See,
`
`e.g., Pet. at 22-24 (citing Zyda, ¶¶155-162).) Additionally, as explained, Altman’s
`
`map is taught as being used on a mobile device, which has constraints that make
`
`Patent Owner’s proposed alternative
`
`to
`
`tessellated
`
`tiles overwhelmingly
`
`impracticable. (See, e.g., id.; Zyda, ¶162.)
`
`As a result, Dr. Zyda’s conclusion that a POSA would have understood these
`
`tiles to be tessellated cannot be viewed as a standalone statement and must instead
`
`be viewed in the context of Altman’s disclosures and the preceding portions of
`
`Dr. Zyda’s declaration, in particular Dr. Zyda’s discussion of the well-known
`
`practice of using layers of map tiles to depict varying levels of detail. (See Zyda,
`
`¶¶154-161.)
`
`13
`
`
`
`
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`Accordingly, the Board should grant this request for rehearing to correct its
`
`misapprehension of Altman’s disclosure of tessellated tiles.
`
`IV. CONCLUSION
`
`Petitioner respectfully requests that the Board grant this request for rehearing,
`
`reconsider its Decision, and review the challenged claims in light of the combination
`
`of CaveLie with Altman (and Langseth) under Ground 2 and Altman’s implicit
`
`disclosure of “tessellated tiles.”
`
`Dated: January 10, 2022
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`Respectfully submitted,
`
`
`
`/Heidi L. Keefe/
`
`Heidi L. Keefe (Reg No. 40,673)
`Attorneys for Petitioner NIANTIC, INC.
`
`
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue, NW Suite 700
`Washington, D.C. 20004
`Tel: (650)843 - 5000
`Fax: (650)849 - 7400
`
`
`
`
`
`
`14
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on January 10,
`
`2022, a complete and entire copy of PETITIONER’S REQUEST FOR
`REHEARING OF FINAL WRITTEN DECISION was served via electronic mail
`on Patent Owner’s counsel below:
`
`
`Matthew K. Blackburn
`Evan Boetticher
`Diamond McCarthy LLP
`mblackburn@diamondmccarthy.com
`evan.boetticher@diamondmccarthy.com
`
`
`Dated: January 10, 2022
`
`
`
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`
`
`
`
`
`
`/Heidi L. Keefe/
`
`Heidi L. Keefe (Reg No. 40,673)
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue, NW Suite 700
`Washington, D.C. 20004
`Tel: (650)843 - 5000
`Fax: (650)849 - 7400
`
`
`
`
`15
`
`
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