       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                   GOOGLE LLC,
                     Appellant

                           v.

                    JI-SOO LEE,
                       Appellee
                ______________________

                      2017-2228
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00045.
                 ______________________

               Decided: March 28, 2019
               ______________________

    ISRAEL SASHA MAYERGOYZ, Jones Day, Chicago, IL, ar-
gued for appellant. Also represented by GREGORY A.
CASTANIAS, Washington, DC; DAVID B. COCHRAN, Cleve-
land, OH.

   JAMES E. HOPENFELD, Singer Bea LLP, San Francisco,
CA, argued for appellee.
                 ______________________
2                                          GOOGLE LLC v. LEE




        Before PROST, Chief Judge, MAYER and LOURIE,
                       Circuit Judges.
PROST, Chief Judge.
     Google LLC (“Google”) petitioned for inter partes re-
view challenging the validity of claims 45 and 46 of U.S.
Patent No. 6,233,518 (“the ’518 patent”). The Patent Trial
and Appeal Board (“Board”) instituted review of both
claims but on only one of the five grounds raised in the pe-
tition. In its final written decision, the Board held that
Google failed to establish that claims 45 and 46 are un-
patentable.
    We affirm the Board’s determination that claims 45
and 46 are not unpatentable over the instituted ground.
We remand, however, for the Board to consider whether
claims 45 and 46 are unpatentable based on the four non-
instituted grounds.
                              I
    The ’518 patent is purportedly assigned to Ji-Soo Lee
(“Lee”). 1 The ’518 patent relates to “a traffic information
providing service method and system, and in particular, to
a method and a system for providing an image vector-based
traffic information.” ’518 patent col. 1 ll. 7–10. Claim 45 is
representative and states:
    45. A method for displaying an image-based traffic
    information comprising the steps of:
    receiving a traffic information map which includes
    at least a traffic state map, said traffic state map
    includes a plurality of time-variant image vector
    entities in a specified region and each of the time-
    variant image vector entity includes an attribute-



    1    The assignment is disputed in the related district
court litigation.
GOOGLE LLC v. LEE                                          3



    designating statement, a[] shape-designating
    statement and a position-designating statement;
    displaying a first image in accordance with a basic
    map on a screen, said basic map including a plural-
    ity of time-invariant image vector entities in the
    specified region; and
    displaying a second image in accordance with said
    traffic state map such that said second image is cu-
    mulatively displayed on the first image.
Id. at claim 45.
    Google filed an IPR petition challenging claims 45 and
46 of the ’518 patent based on five grounds. The Board in-
stituted review of claims 45 and 46 on obviousness based
on U.S. Patent No. 5,313,200 (“Sone”) alone or in combina-
tion with U.S. Patent No. 5,966,135 (“Roy”). Google Inc. v.
Lee, No. IPR2016-00045, 2016 WL 2866242, at *12 (PTAB
Apr. 25, 2016) (“Institution Decision”). The Board did not
institute review of claims 45 and 46 on the following
grounds: (1) anticipation by Sone; (2) obviousness in view
of the combination of Japanese Patent No. JPH 09-252260
(“Yamada”) and PCT Publication No. WO 95/24029
(“Rosenquist”); (3) anticipation by U.S. Patent No.
5,293,163 (“Kakihara”); and (4) anticipation by Japanese
Patent No. JPH 08-7197 (“Degawa”). Id.
     In its institution decision, the Board construed the
claim term “image vector entity” as “a format of infor-
mation representing an image to be displayed which in-
cludes a shape designating statement and a position
designating statement used to draw the shape of a real en-
tity at the specified position.” Id. at *3–4. The Board main-
tained the same construction in its final written decision.
Google Inc. v. Lee, No. IPR2016-00045, Paper No. 28, at 9–
11 (PTAB Apr. 21, 2017) (“Final Written Decision”).
   In its final written decision, the Board held that Google
had not shown by a preponderance of the evidence that
4                                          GOOGLE LLC v. LEE




claims 45 and 46 of the ’518 patent were unpatentable as
obvious based on Sone alone or in combination with Roy.
Id. at 20.
    Google timely appealed. 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 underly-
ing 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
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938).
    Google seeks to overturn the Board’s decision uphold-
ing the validity of claims 45 and 46. Specifically, Google
argues that the Board’s analysis deviated from its con-
struction of “image vector entities”—“a format of infor-
mation representing an image to be displayed which
includes a shape designating statement and a position des-
ignating statement used to draw the shape of a real entity
at the specified position”—and instead required that “Sone
transmit the precise shape of the congestion marks” to sat-
isfy the limitation. Appellant’s Br. 21–22. Although
Google attempts to frame its patentability arguments as an
issue of claim construction or application, the arguments
are directed to the Board’s factual analysis of the prior art,
which we review for substantial evidence.
    The Board determined that “Sone does not teach or
suggest that the data received from the beacon transmit-
ters contains information that represents the shape or ap-
pearance of the specific congestion marks or arrows that
are displayed by Sone’s vehicle-mounted display system”
GOOGLE LLC v. LEE                                            5



because “the directional congestion marks or arrows that
are depicted on Sone’s display are generated locally” by the
processor of Sone’s vehicle-mounted display system. Final
Written Decision, at 14–15 (emphases added). The Board
therefore concluded that “the Petition does not sufficiently
persuade us that the type of congestion data sets received
by Sone’s display system would contain ‘image vector enti-
ties’ (i.e., ‘information representing an image to be dis-
played which includes a shape designating statement and
a position designating statement used to draw the shape of
a real entity at the specified position’).” Id. at 15 (emphasis
added). We hold that substantial evidence supports the
Board’s finding that Sone does not disclose “receiving a
traffic information map which includes at least a traffic
state map,” wherein the traffic state map includes “a plu-
rality of time-variant image vector entities” because the
congestion marks or arrows that are displayed in Sone are
generated locally. Id. (citing Sone at col. 3 ll. 12–21, col. 4
ll. 61–67).
    Google also argues that the Board erred in finding that
a person of ordinary skill in art would not have been moti-
vated to combine Sone and Roy. Appellant’s Br. 36–45. Be-
fore the Board, Google presented five rationales for
combining Sone and Roy. See Final Written Decision, at
18–20. Google reargues many of these rationales on ap-
peal. See Appellant’s Br. 36–45. However, the Board con-
sidered and rejected each of these rationales, all for a
similar reason—that they do not adequately explain why
one of ordinary skill in the art would have had reason to
convert congestion data sets into image vector entities be-
fore they are received by Sone’s vehicle-mounted display
system. See Final Written Decision, at 18–20. We hold that
substantial evidence supports the Board’s finding that a
person of ordinary skill in the art would not have been mo-
tivated to combine Sone and Roy.
    We have considered Google’s remaining arguments and
find them unpersuasive. We affirm the Board’s final
6                                          GOOGLE LLC v. LEE




written decision that claims 45 and 46 of the ’518 patent
are not unpatentable as obvious based on Sone alone or in
combination with Roy.
                             III
     In light of the Supreme Court’s decision in SAS Insti-
tute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), Google challenges
the Board’s decision to institute review of claims 45 and 46
of the ’518 patent on only one of the five grounds raised in
its petition. Google requests that we “remand to the Board
so that it may consider these additional, uninstituted
grounds.” Appellant’s Br. 46. Lee contends that we should
not remand for the Board to consider the non-instituted
grounds because in declining to institute them, the Board
already substantively considered and rejected each of the
non-instituted grounds. Appellee’s Br. 35–39. 2 We agree
with Google that remand is appropriate for the Board to
address the non-instituted grounds.
    The Supreme Court explained in SAS “that the peti-
tioner’s petition, not the Director’s discretion, is supposed
to guide the life of” an IPR. 138 S. Ct. at 1356. The Court
thus held that the Board cannot institute review of fewer
than all claims challenged by a petitioner. Id. at 1359–60.
Since SAS, we have recognized that the Court’s reasoning



    2   At oral argument, Lee also argued that the only
proper mechanism for Google to request a remand pursu-
ant to SAS was to file a motion to remand before the appeal
was heard. Oral Argument at 10:42–12:01, Google LLC, v.
Ji-Soo Lee (No. 2017-2228), http://www.cafc.uscourts.gov/
oral-argument-recordings. While we have remanded non-
instituted grounds pursuant to SAS based on requests
made in motions, we have not stated that this is the only
mechanism to request SAS-based remand. Google properly
preserved this argument by requesting remand pursuant
to SAS in its opening brief. See Appellant’s Br. 45–46.
GOOGLE LLC v. LEE                                          7



also prohibits the Board from instituting review of fewer
than all grounds raised by a petitioner in its petition. See
PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359 (Fed.
Cir. 2018) (“We will treat claims and grounds the same in
considering the SAS issues currently before us.”). Follow-
ing SAS, we have remanded to the Board to consider non-
instituted claims and grounds. See, e.g., Adidas AG v.
Nike, Inc., 894 F.3d 1256, 1257 (Fed. Cir. 2018) (remanding
non-instituted grounds for consideration by the Board); see
also BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics,
Inc., 898 F.3d 1205, 1208 (Fed. Cir. 2018) (“Post-SAS cases
have held that it is appropriate to remand to the PTAB to
consider non-instituted claims as well as non-instituted
grounds.”) (collecting cases).
    Here, the Board instituted review on one ground of
Google’s petition, but declined to institute review on addi-
tional grounds. Remand is appropriate for the Board to ad-
dress the non-instituted grounds in Google’s petition.
                             IV
     Because substantial evidence supports the Board’s
findings, we affirm the Board’s determination that claims
45 and 46 of the ’518 patent are not unpatentable over Sone
alone or in combination with Roy. We remand, however,
for the Board to consider whether claims 45 and 46 are un-
patentable over the non-instituted grounds.
            AFFIRMED AND REMANDED
                           COSTS
    Costs to Lee.
