Imprecise Claim Charts And Improper Incorporation By Reference Result In Institution Denial

On March 23, 2024, Nearmap US, Inc. ("Nearmap") filed a petition for inter partes review ("IPR") of U.S. Patent No. 10,671,648 ("the '648 Patent") ("IPR716"), assigned to Eagle View Technologies, Inc. ("Eagle View"). The '648 Patent relates to integrating information associated with particular geographic locations in a centralized database that may be queried for a time history of any of the locations. Nearmap asserted four grounds of unpatentability, consisting of an anticipation ground and three obviousness gounds. Each ground relied at least in part on U.S. Patent No. 9,501,507 to Harris et al. ("Harris").

In support of its unpatentability challenges, Nearmap constructed a single 64-page claim chart. The claim chart included a left column listing the specific claim language of each challenged claim, and a right column restating specific limitations from the claim language followed by parentheticals reciting portions of the asserted prior art that allegedly