NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

GOOGLE LLC,

Appellant

v.

JI-SOO LEE,

Cross-Appellant

______________________

2017-2227, 2017-2272

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2016-

00022.

______________________

Decided: March 28, 2019

______________________

GREGORY A. CASTANIAS, Jones Day, Washington, DC, 

argued for appellant. Also represented by ISRAEL SASHA 

MAYERGOYZ, Chicago, IL; DAVID B. COCHRAN, Cleveland, 

OH; JOSHUA R. NIGHTINGALE, Pittsburgh, PA. 

 JAMES E. HOPENFELD, Singer Bea LLP, San Francisco, 

CA, argued for cross-appellant. 

______________________
2 GOOGLE LLC v. LEE

Before PROST, Chief Judge, MAYER and LOURIE,

Circuit Judges.

PROST, Chief Judge.

Google LLC (“Google”) petitioned for inter partes review (“IPR”) of claims 64, 77, and 79 of U.S. Patent No. 

6,532,413 (“the ’413 patent”). The Patent Trial and Appeal 

Board (“Board”) held claims 64 and 77 unpatentable and 

upheld claim 79. Google appeals the Board’s decision upholding claim 79, and Ji-Soo Lee (“Lee”) cross-appeals the 

Board’s decision holding claims 64 and 77 unpatentable. 

Having considered the parties’ arguments, we reverse as to 

Google’s appeal and we affirm as to Lee’s cross-appeal. 

I

The ’413 patent is purportedly assigned to Lee.1 The 

’413 patent relates to “a method and an apparatus for 

providing time-invariant geographical information such as 

traffic information, and more particularly to a method and 

apparatus for efficiently transmitting image-based timevariant geographical information.” ’413 patent col. 1 ll. 8–

12. Claim 64 of the ’413 patent is representative of claim

77 and states:

64. Time-variant geographical information device 

capable of being coupled to a display panel, comprising:

a receiver for receiving a RII(route indication information) including a map identification and a plurality of graphic vectors, each of said graphic 

vectors for RII including an attribute designating 

statement, a shape designating statement and a 

position designating statement, said attribute designating statement being composed of an attribute 

 

1 The assignment is disputed in the related district 

court litigation. 
GOOGLE LLC v. LEE 3

designating command and at least one attribute 

value;

a memory for storing at least one BM(=basic map), 

said BM including an image data for representing 

time-invariant components in a region;

means for selecting a basic map in accordance with 

said map identification of the RII; and

means for producing a route-information containing image in accordance with said BM and said RII, 

said route information-containing image representing at least one path to a specific location.

Id. at claim 64. 

Claim 79 of the ’413 patent recites:

79. A computer-readable medium containing a program of instructions to perform a method for a 

time-variant geographical traffic information, said

method comprising the steps of:

receiving a TVI(=time-variant information), said 

TVI including a map identifier and at least one 

time-variant data in section-wise;

selecting at least one section map based on the map 

identifier of said TVI, wherein said section map includes a plurality of sections, each section of said 

section map including at least one component;

designating an attribute of said component based 

on the time-variant data of said TVI in sectionwise, so as to produce a graphic file for a region; 

and

producing an information-containing image data in 

accordance with said graphic file, which is to be applied to a display panel.

Id. at claim 79.
4 GOOGLE LLC v. LEE

Google filed a petition for inter partes review challenging claims 64, 77, and 79 of the ’413 patent. The Board 

instituted review of claims 64 and 77 on two grounds: 

(1) obviousness based on U.S. Patent No. 5,848,373 (“DeLorme”) alone or in combination with U.S. Patent No. 

5,243,528 (“Lefebvre”); and (2) obviousness based on “U.S. 

Patent No. 5,968,109 (“Israni”) alone or in combination 

with U.S. Patent No. 5,274,387 (“Kakihara”). Google Inc. 

v. Lee, No. IPR2016-00022, 2016 WL 2848912, at *18 

(PTAB Apr. 25, 2016) (“Institution Decision”). The Board 

instituted review of claim 79 on one ground: obviousness 

based on Japanese Patent No. JPH 08-7197 (“Degawa”) 

alone or in combination with Japanese Patent No. JPH 09-

16892 (“Maruoka”). Id.

In its final written decision, the Board held that Google 

had shown by a preponderance of the evidence that claims 

64 and 77 were unpatentable as obvious over the combination of Israni and Kakihara but that Google had not shown 

by a preponderance of the evidence that claim 79 was unpatentable as obvious. Google Inc. v. Lee, No. IPR2016-

00022, Paper No. 30, at 39 (PTAB Apr. 21, 2017) (“Final 

Written Decision”). 

Google timely appealed the Board’s determination that 

claim 79 was not obvious, and Lee timely cross-appealed

the Board’s determination that claims 64 and 77 were obvious. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(4)(A). 

II

Obviousness is a question of law based on underlying 

factual determinations. Belden Inc. v. Berk-Tek LLC, 805 

F.3d 1064, 1073 (Fed. Cir. 2015). We review the Board’s 

ultimate obviousness determination de novo and underlying factual findings for substantial evidence. Harmonic 

Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 

2016). Substantial evidence is “such relevant evidence as 

a reasonable mind might accept as adequate to support a 
GOOGLE LLC v. LEE 5

conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 

(1938). 

We review the Board’s determination of the broadest 

reasonable interpretation of the claim language de novo. 

Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 

1356, 1360 (Fed. Cir. 2015). 

III

We first address Google’s appeal of the Board’s determination that claim 79 was not invalid as obvious in view 

of the prior art of record. 

A

Google first argues that the Board departed from or 

misapplied the claim’s plain meaning when evaluating obviousness in light of the prior art. Specifically, Google contends that the Board committed legal error by “importing 

an unrecited limitation into the claim language when evaluating [the] patentability” of the “selecting at least one section map based on the map identifier” limitation.

Appellant’s Br. 14; see also id. at 18–22. Google argues that 

in doing so, the Board failed to give claim 79 its broadest

reasonable interpretation.2 Id. at 20. We agree.

 

2 We note that the U.S. Patent and Trademark Office 

has since changed the claim construction standard used in 

IPR proceedings. See 37 C.F.R. § 42.100(b); Changes to the 

Claim Construction Standard for Interpreting Claims in 

Trial Proceedings Before the Patent Trial and Appeal 

Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018). The 

new standard applies only to petitions filed on or after November 13, 2018, and therefore does not impact this case. 

In this IPR, the claims were to be construed using the 

broadest reasonable interpretation in light of the specification. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 

2146 (2016). 
6 GOOGLE LLC v. LEE

When evaluating Google’s arguments that Degawa

teaches the “selecting at least one section map based on the 

map identifier” limitation, the Board’s analysis indicates 

that it understood the claim to require using a map identifier to select a section map that “is displayed.” See Final 

Written Decision, at 37–38 (emphasis added). This is evident from the Board’s numerous statements faulting Degawa for failing to disclose a map identifier that selects a 

road map “for display” or “that is displayed.” See id.

Google argues that nothing in claim 79 requires that 

the claimed map identifier be used to select a map “for display.” Appellant’s Br. 19. Lee responds that “[t]he only 

reasonable reading of that language is that the ‘section 

map is displayed’” and that “[t]he section map must, therefore, be displayed because otherwise a graphic file of a region could not be displayed.” Cross-Appellant’s Br. 21–22. 

But Lee does not identify any specific language in the 

claim, or support in the specification or prosecution history,

showing that the “selecting” step requires selecting a section map for display. We agree with Google that claim 79 

does not require that the claimed map identifier be used to 

select a section map “for display.” Instead, claim 79 is clear 

that what is displayed is the “information-containing image data” that is recited two steps later. ’413 patent col. 46 

ll. 48–50 (listing fourth step as “producing an informationcontaining image data in accordance with said graphic file, 

which is to be applied to a display panel” (emphases 

added)). The “at least one section map” that is selected in 

the second step of the method has individual sections, each 

of which “include[] at least one component.” Id. at col. 46

ll. 41–44. The third step of the method, “designat[es] an 

attribute” of said component and “produce[s] a graphic file 

for a region.” Id. at col. 46 ll. 45–47. The fourth step of the 

method includes “producing an information-containing image data in accordance with said graphic file.” Id. at col. 

46 ll. 48–50. Then, and only then, is the “information-containing image data” applied to a display. Id.
GOOGLE LLC v. LEE 7

The broadest reasonable interpretation of “selecting at 

least one section map based on the map identifier” would 

not require using a map identifier to select a section map 

that is displayed or is for display.

We have reversed or vacated and remanded final written decisions of the Board when the Board departs from the 

proper construction when assessing patentability in view 

of the prior art. See, e.g., D’Agostino v. MasterCard Int’l 

Inc., 844 F.3d 945, 950 (Fed. Cir. 2016) (finding that the 

Board erred in “depart[ing] from or misappl[ying]” the 

clear meaning of a claim “whether as a matter of claim construction or as a matter of application to [the prior art]”); 

Corning v. Fast Felt Corp., 873 F.3d 896, 900–01 (Fed. Cir. 

2017) (finding that the Board erred by deviating from the 

broadest reasonable construction of the claim when evaluating obviousness in light of the prior art), cert. denied, 

Fast Felt Corp. v. Owens Corning, 138 S. Ct. 2633 (2018). 

Here, we conclude that the Board erred in effectively importing the additional limitation “for display” into the “selecting” step. 

B

In this case, it is not necessary to remand for the Board 

to reassess the evidence under the correct construction. We 

have held that reversal, rather than remand, is appropriate where, “[o]n the evidence and arguments presented to 

the Board, there is only one possible evidence-supported 

finding: [that] the Board’s determination . . . when the correct construction is employed, is not supported by substantial evidence.” Corning, 873 F.3d at 901–02 (reversing, 

rather than remanding, when “only one answer is supported by substantial evidence”); see also Belden, 805 F.3d

at 1077 (reversing, rather than remanding, when “the record is one-sided”).

Here, the only evidence-supported finding is that Degawa teaches the disputed “selecting at least one section 

map based on the map identifier” limitation. Google argues 
8 GOOGLE LLC v. LEE

that “a straightforward reading of Degawa demonstrates 

that the reference discloses exactly what claim 79 recites: 

‘selecting at least one section map’ (Degawa’s mesh map) 

‘based on the map identifier of said [time-variant information]’ (Degawa’s mesh number J3 that identifies a specific mesh map where traffic congestion exists).”

Appellant’s Br. 23 (alternation in original). Before the 

Board, Google argued, and its expert explained, that Degawa satisfied this limitation. J.A. 174–75 (Pet.), J.A. 893–

94 ¶¶ 111–12 (Dr. Michalson Decl.); J.A. 1736–37 ¶ 105

(Dr. Michalson 2nd Decl.); J.A. 1106 ¶ 19 (Degawa). Lee 

did not dispute that Degawa discloses using a map identifier to select a section map, J.A. 1429–32 (Patent Owner 

Response), and offered no rebuttal expert testimony on

claim 79, J.A. 1435–37 (Mr. Cole Decl.). On claim 79, Lee 

challenged only whether Degawa disclosed the terms 

“time-variant information in section-wise” and a “section 

map” under its proposed constructions, which the Board 

declined to adopt. See J.A. 1391–96, 1429–32; Final Written Decision, at 18. 

Other than Lee’s argument under its rejected construction of “section map,” Lee does not point to any evidence in 

the record before the Board to rebut Google’s showing that 

Degawa teaches the “selecting” limitation. Instead, Lee argues that it “need not have provided rebuttal evidence on 

this point because Petitioner did not meet its burden to 

make a threshold showing that the ‘selection’ element is 

present in Degawa.” Cross-Appellant’s Br. 24. But, as explained above, Google showed, including with unrebutted

expert testimony, that Degawa taught the disputed limitation as properly construed. Based on Google’s showing, and 

the absence of any rebuttal evidence from Lee, the only conclusion supported by the evidence is that Degawa teaches 
GOOGLE LLC v. LEE 9

the disputed limitation.3 We therefore reverse, rather than 

remand, the Board’s decision. 

IV

We now turn to Lee’s cross-appeal of the Board’s determination that claims 64 and 77 were invalid as obvious. 

Lee argues that the Board conducted a legally improper “inference on inference” obviousness analysis. See 

Cross-Appellant’s Br. 25–31 (“[T]he PTAB first drew an inference to find that Kakihara ‘suggests’ the missing claim

limitation, then the PTAB combined the modified Kakihara with Israni based on a second inferred ‘motivation’ 

in order to achieve the claimed invention.”). Our obviousness framework permits modifying one reference and combining it with a second reference. See Smith & Nephew, 

Inc. v. Rea, 721 F.3d 1371, 1380–81 (Fed. Cir. 2013). Moreover, the obviousness analysis “need not seek out precise 

teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences

and creative steps that a person of ordinary skill in the art 

would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 

418 (2007) (emphasis added); see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person 

of ordinary skill can only perform combinations of a puzzle 

element A with a perfectly fitting puzzle element B.”). We 

 

3 Moreover, after Google requested outright reversal 

in its opening brief, Lee did not ask for a remand if we rejected the Board’s claim interpretation requiring “for display.” In Corning, we held that “where only one answer is 

supported by substantial evidence and there is neither a 

request nor an apparent reason to grant a second recordmaking opportunity, reversal is warranted.” 873 F.3d at 

901–02. 
10 GOOGLE LLC v. LEE

find no legal error in this aspect of the Board’s obviousness 

analysis. 

The only remaining issue is whether the Board’s factual findings underpinning its determination are supported by substantial evidence. We hold that they are. 

There is substantial evidence of record supporting the 

Board’s finding that the disputed “attribute designating 

statement” limitation was satisfied by Kakihara. In reaching this determination, the Board evaluated the disclosure 

of Kakihara, cited Google’s expert testimony, rejected Lee’s 

arguments, and discredited Lee’s expert’s testimony. Final 

Written Decision, at 28–29. The Board’s finding that a person of ordinary skill in the art would have been motivated

to combine Kakihara with Israni is also supported by substantial evidence. Id. at 33–35. For example, the Board 

found that a person of ordinary skill in the art would have 

realized that “incorporating Kakihara’s feature of designating a selected route of travel in a different color than 

other roads . . . into Israni’s navigation system, would advantageously have allowed a driver to better recognize the 

selected route on the display.” Id. at 34 (citing J.A. 155–56 

(Pet.); J.A. 1084 at col. 2 ll. 25–34 (Kakihara); J.A. 869 ¶ 77

(Dr. Michalson Decl.)). 

We have considered Lee’s remaining arguments and 

find them unpersuasive. We affirm the Board’s final written decision that claims 64 and 77 of the ’413 patent are 

invalid as obvious over the combination of Israni and Kakihara. 

V

On Google’s appeal, because the only conclusion supported by the evidence is that Degawa teaches the disputed 

limitation as properly construed, we reverse the Board’s final written decision upholding claim 79. On Lee’s crossappeal, because substantial evidence supports the Board’s

findings, we affirm the Board’s determination that claims 

64 and 77 are unpatentable as obvious over the 
GOOGLE LLC v. LEE 11

combination of Israni and Kakihara. Because all of the 

challenged claims are unpatentable, we do not remand for 

the Board to consider the non-instituted grounds. 

AFFIRMED-IN-PART, REVERSED-IN-PART

COSTS

Costs to Google.