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Google Street View v. Vederi, LLC: A Lesson on Provisional Patent Applications

By Alayna R. Ness *


Google Street View is an incredible tool.  It’s so useful!  When I was helping my clinic partner prepare for oral argument, we looked up the neighborhood on Google Street View to get an idea of the layout.  We were able to see that the street was really narrow and the houses were close together.  This helped with our argument that, in an area where everything is so close together, it should have been easy to find a witness to the crime.  But I’m not the only one who has put Google Street View to good use – it even led one British man to lose 100 pounds after seeing a picture of his overweight self on Google Street View. 

From the Pennsylvania couple who won $1.00 (yes, that’s one dollar) in a privacy claim, to the Japanese woman who sued because Google caught a picture of her unmentionables drying on the clothesline, Google Street View has already been the subject of a number of lawsuits.  But now Google faces a lawsuit by Vederi, LLC, a company based in Pasadena, California.  Vederi holds three U.S. patents (7,239,760; 7,805,025; 7,813, 596) entitled “System and Method for Creating, Storing and Utilizing Images of a Geographic Location.”  In a complaint filed October 15, 2010 in the Central District of California, Vederi alleges that Google’s Street View product infringes these patents.  Interestingly, Vederi is not seeking monetary damages in a specific amount.  Instead, the complaint asks for an injunction, attorneys’ fees and other reasonable costs, and “further relief as [the] court deems appropriate.”

Vederi founders Enrico Di Bernardo and Luis Goncalves dreamed up their “StreetBrowser” system as a way to let people look at street-level views of neighborhoods.  Back in 2000, the two men drove around Pasadena with a camera mounted on top of a car in order to take the panoramic pictures shown on the StreetBrowser tool.  StreetBrowser was hosted on the City of Pasadena website for several years.  David Dillard, attorney for Vederi, said “[i]t’s stunning how closely Google’s Street View tracks the Vederi patented technology, down to the integration of advertising directly within the Street View product through branded icons.”

Vederi’s lawsuit alleges that it filed for a provisional patent on the StreetBrowser technology back in 2000.  However, the formal patent was filed in June 2007 and the patent was issued in August 2009.  According to the United States Patent and Trademark Office website, “[a]pplicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date.”  So what are these benefits?  Under 35 U.S.C. § 102(e), the corresponding non-provisional application benefits by:

(1) patentability would be evaluated as though filed on the earlier provisional application filing date,

(2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and

(3) the twenty-year patent term would be measured from the later non-provisional application filing date.

So what does this mean for Vederi?  There’s a warning on the USPTO website, in bold font so you don’t miss it, that says the provisional application becomes abandoned as a matter of law twelve months after the filing date.  So Vederi may not get the benefit of having filed a provisional patent application back in 2000.  And Google Street View launched in May 2007, one month before Vederi’s patent application was filed.  So things don’t look very promising for Vederi, but we’ll see.  Whatever the result, I hope it doesn’t change the availability of Google Street View.  Besides, I’m still waiting for my chance to see the Google Street View car in action.

* Alayna Ness is a third year law student at Wake Forest University School of Law, graduating in May 2011.  She holds a Bachelor of Science in Business from Indiana University.  In the summer of 2010, she worked at the Securities and Exchange Commission in Los Angeles, California.  Ms. Ness will be taking the bar examination in Virginia and plans to practice corporate and securities law.