Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 40
`Entered: January 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2015-01481
`Patent 6,510,434 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 40
`Entered: January 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2015-01481
`Patent 6,510,434 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
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`IPR2015-01481
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`
`I. INTRODUCTION
`International Business Machine Corp. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–3, 5–8, 12, 14, and 16 of U.S.
`Patent No. 6,510,434 B1 (Ex. 1004, “the ’434 patent”). Paper 2 (“Pet.”).
`Petitioner proffered a Declaration of H. V. Jagadish to support its analysis
`regarding patentability in the Petition. Ex. 1001.
`We instituted inter partes review of claim 1–3, 5, and 6 as being
`obvious over Wical1 and Lassila2 and as being obvious over Morita3 and
`Lassila. Paper 12, 25. We denied institution of inter partes review of claims
`7, 8, 12, 14, and 16 as being anticipated by Wical and as being anticipated
`by Morita. Id. at 8–17.
`
`Intellectual Ventures I LLC (“Patent Owner”) filed a Patent Owner’s
`Response to the Petition. Paper 17 (“PO Resp.”). Patent Owner proffered a
`Declaration of Dr. Yannis Papakonstantinou to support its argument in the
`Patent Owner’s Response. Ex. 2001.
`
`Petitioner filed a Corrected Reply to the Patent Owner’s Response
`(Paper 24) and proffered a Responsive Declaration of H. V. Jagadish for
`support (Ex. 1022).4
`
`
`1 U.S. Patent No. 6,038,560 (issued Mar. 14, 2000) (Ex. 1006).
`2 Ora Lassila, Web Metadata: A Matter of Semantics, IEEE Internet
`Computing, Vol. 2, Number 4 (allegedly published July/Aug. 1998) (Ex.
`1008).
`3 U. S. Patent No. 5,168,565 (issued Dec. 1, 1992) (Ex. 1007).
`4 On August 16, 2016, Patent Owner objected to the Corrected Reply to the
`Patent Owner’s Response and the Responsive Declaration of H.W. Jagadish
`as containing new argument not raised in the Petition. See Paper 36. After
`reviewing the record, we determine that the Reply and Responsive
`Declaration did not contain new arguments. Id. Patent Owner raised the
`objection again during oral argument. See Tr. 21–22. In any event, Patent
`
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`Patent Owner filed a Motion for Observations on Cross-Examination
`
`of Dr. H.V. Jagadish (Paper 29) and Petitioner filed an opposition to the
`motion (Paper 35).
`
`An oral hearing in this proceeding was held on September 14, 2016.
`A transcript of the hearing is included in the record (Paper 39, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6 This Final Written Decision
`is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–3, 5, and 6 of the ’434 patent
`are unpatentable.
`
`
`A. Related Proceedings
`The parties indicate that the ’434 patent is at issue in Intellectual
`Ventures I LLC et al. v. Erie Indemnity Co., et al., Case No. 1:14-cv-000220,
`Intellectual Ventures I LLC et al. v. Old Republic Gen. Ins. Grp., Inc., et al.,
`Case No 2:14-cv-01130, and Intellectual Ventures I LLC et al. v. Highmark,
`Inc. et al., Case No. 2:14-cv-01131, all in the U.S. District Court for the
`Western District of Pennsylvania. Pet. 1; Paper 5, 2.
`Patent Owner indicated that, on September 25, 2015, in each of the
`above proceedings, the District Court in the Western District of
`Pennsylvania dismissed the claims for infringement of the ’434 patent
`because the court found the asserted claims patent ineligible under 35 U.S.C.
`§ 101. Paper 8, 2; Exs. 2010, 2011. Patent Owner appealed the dismissal to
`
`
`Owner’s objection is now moot as we do not rely upon the Corrected Reply
`to the Patent Owner’s Response and the Responsive Declaration of H.W.
`Jagadish in our analysis below.
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`the Court of Appeals for the Federal Circuit. Intellectual Ventures I LLC et
`al. v. Erie Indemnity Co., et al., Case No. 12-1128 (Fed. Cir. filed Oct. 27,
`2015). The Court of Appeals for the Federal Circuit has not yet issued a
`decision.
`The ’434 patent is the subject of two additional inter partes reviews,
`Old Republic Gen. Ins. Grp., Inc. v. Intellectual Ventures I LLC, Case
`IPR2016-00019 (PTAB filed Oct. 6, 2015) and Old Republic Gen. Ins. Grp.,
`Inc. v. Intellectual Ventures I LLC, Case IPR2016-00020 (PTAB filed Oct.
`6, 2015) (together, “the Old Republic IPRs”). The Board has not yet issued
`a final written decision in either inter partes review.
`
`B. The ’434 Patent
`The ’434 patent is titled “System and Method for Retrieving
`
`Information From a Database Using an Index of XML Tags and Metafiles”
`and issued on January 21, 2003, from an application filed on December 29,
`1999. Ex. 1004, (22), (45), (54). One embodiment of the ’434 patent
`discloses a method of “[r]etrieving information from a database using
`[eXtensible Markup Language (“XML”)] tags and metafiles.” Id. at
`Abstract. The method of retrieving information uses “an index that includes
`tags and metafiles to locate the desired information.” Id. at 4:11–13; see
`also id. at 7:19–20 (“The index includes a number of tags and metafiles
`associated with the tags.”)
`
`The ’434 patent also discloses an embodiment of a method of creating
`a database and an index for searching the database. All the challenged
`claims, 1–3, 5, and 6, are directed to the method of creating the database and
`index.
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`Figure 5 of the ’434 patent is reproduced below.
`
`
`Figure 5 “illustrates the steps for creating an index, including XML tags and
`metafiles, that can be used to search a database.” Id. at 11:5–8. In step 500,
`the index is defined by defining the XML tags for the index. Id. at 5:8–9.
`The XML tags include domain tags and category tags. For example, a
`domain may be “Restaurants” and a category may be “Cuisine,” which
`includes the terms “Mexican” and “American.” Id. at 4:18–33.
`
`In step 504, “metafiles are created for selected domain tags and
`category tags that were defined in step 500.” Id. at 11:45–46. The metafile
`can be created manually by using data gathered from observing the types of
`information that a user typically considers. Id. at 11:50–52. The metafile
`
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`provides additional information about the tag and includes related tags and
`the relationship between related tags. Id. at 9:18–58. Figure 3B of the ’434
`patent is reproduced below.
`
`
`Figure 3B depicts metafile 322 for XML Tag 320. Id. at 9:34–35. Metafile
`322 includes relationship information 326 and related XML Tags 328, 330,
`332, 334, 336, 338, and 340, arranged in a hierarchy. Id. at 9:35–41. For
`example, XML Tag 320 may be a Restaurant domain tag and related XML
`Tag 328 may be an American Cuisine category tag. Id. at 9:48–54. The
`hierarchy of the tags in the metafile can be used to prioritize search criteria.
`Id. at 9:54–58; see also Fig. 3B (depicting related tags in a hierarchy).
`
`In step 506, “the individual records for the database are created.”
`Each record in the database contains an alpha component and an index
`component. Id. at 10:9–14. The alpha component contains identifying
`information for the record, and the index component contains XML domain
`tags and XML category tags. Id. Figure 4B of the ’434 patent is reproduced
`below.
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`Figure 4B depicts an example of a database record. Id. at 10:9–16. In the
`example depicted in Figure 4B, alpha component 408 contains the name and
`address of the Terrace Restaurant and index component 410 includes, among
`others, Restaurant domain tag 412 and American Cuisine category tag 418.
`Id. at 10:16–51. Restaurant domain tag 412 identifies the Terrace Restaurant
`as a restaurant, and American Cuisine category tag 418 indicates that it
`serves American Cuisine. Id. at 10:36–42.
`
`When a search request is received, a set of tags that correspond to the
`search terms is identified, and metafiles that correspond to the identified tags
`are also identified. Id. at 12:53–58; Fig. 6A, steps 602, 604. From the
`metafiles, related tags that are appropriate for the request are identified. Id.
`at 13:62–14:11; Fig. 6A, step 608. The tags corresponding to the search
`terms and the appropriate tags are combined to create a key, and the
`database is searched to identify records that include the tags of the key. Id.
`at 13:17–24; Fig. 6A, steps 610, 612.
`
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`
`C. Illustrative Claim
`Claim 1 is independent and claims 2, 3, 5, and 6 depend, directly or
`indirectly, from claim 1. Claim 1 is illustrative of the subject matter of ’434
`patent at issue and is reproduced below.
`1. A method for creating a database and an index to search the
`database, comprising the steps of:
`creating the index by defining a plurality of XML tags
`including domain tags and category tags;
`
`creating a first metafile that corresponds to a first domain
`tag; and
`
`creating the database by providing a plurality of records,
`each record having an XML index component.
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`approach). Under that standard, and absent any special definitions, we
`generally give claim terms their ordinary and customary meaning, as they
`would be understood by one of ordinary skill in the art at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In absence of such a definition, limitations are
`not to be read from the specification into the claims. In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`
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`Petitioner proposes constructions for a number of claim terms —
`“tag,” “category,” “domain,” “index,” “metafile,” and “index component.”
`Pet. 3–6. “Patent Owner asserts that the prior art would not render the
`claims obvious under any reasonable construction consistent with the
`specification and thus the Board should decline to provide express
`constructions for the terms proposed by the Petitioner.” PO Resp. 6.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999). To resolve the issues
`before us we need only address the terms discussed below.
`“creating the index” and “creating a first metafile”
`Claim 1 recites a method that includes a step of “creating the index by
`defining a plurality of XML tags including domain tags and category tags”
`and a step of “creating a first metafile that corresponds to a first domain
`tag.” Ex. 1004, claim 1.
`Petitioner proposes that “index” be construed to mean “data structure
`used to locate information in a database” and “metafile” be construed to
`mean “data structure comprising additional information about a tag,
`including related tags.” Pet. 5–6.
`Patent Owner does not propose an explicit construction of the terms
`“index” and “metafile” but argues that the index and the metafile must be
`construed to be separate and distinct data structures because the “index” and
`“metafile” are listed separately in the claim. See, e.g., PO Resp. 9–10 (citing
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249,
`1254 (Fed. Cir. 2010) (“Becton”)).
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`Patent Owner’s argument is not persuasive. In Becton, the claim at
`issue was directed to a mechanical device — a shieldable needle assembly
`having a hinged arm element and spring means element. Becton, 616 F.3d
`1254. The Court determined that the unequivocal language of the claim
`required a separate hinged arm and spring means and that the specification
`of the patent at issue confirmed that the hinged arm and spring means were
`separate elements. Id. at 1254–55. The Court stated “[i]n the absence of any
`evidence to the contrary, we must presume that the use of . . . different
`terms in the claims connotes different meanings.” Id. at 1254 (quoting CAE
`Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F. 3d 1308, 1317
`(Fed. Cir. 2000)).
`Unlike the claim at issue in Becton, which was directed to a
`mechanical apparatus, claim 1 of the ’434 patent is directed to “a method of
`creating a database and an index” setting forth steps for creating the database
`and index. Ex. 1004, claim 1. The first step of the method is “creating the
`index by defining a plurality of XML tags including domain tags and
`category tags,” the second step is “creating a first metafile that corresponds
`to a first domain tag,” and the third step is “creating the database.” Id.
`Claim 1 does not recite any language that defines how and where the first
`metafile is created (e.g., as part of the index, database, or elsewhere). Claim
`1 does not recite any language that precludes the first metafile from being
`created as part of the index, such that the index would include the domain
`tags, category tags, and the first metafile.
`Also, unlike Becton, construing claim 1 such that the index and the
`first metafile are required to be separate and distinct data structures would be
`inconsistent with the ’434 patent. The ’434 patent discloses an embodiment
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`of a method of creating the index. The method of creating the index
`includes not only a first step of defining domain and category tags, but also a
`subsequent step of creating the a metafile. Ex. 1004, 11:6–7 (“creating an
`index, including XML tags and metafiles”); Fig. 5, steps 500, 504. The ’434
`patent discloses that the metafile is part of the index. Id. at 4:13–14 (“an
`index that includes tags and metafiles to locate the desired information”).
`In the Old Republic IPRs, Patent Owner proffers a construction of
`“index” that is in direct contradiction to its argument here. There, Patent
`Owner contends that “the broadest reasonable interpretation of ‘index’ in
`light of the specification is ‘a data structure that includes tags and metafiles
`to locate the information in a database.’” Old Republic, IPR2016-00019,
`Paper 12, 8; see also Old Republic, IPR2016-00020, Paper 12, 9; see also
`Ex. 2001 ¶¶ 31–34. Likewise, the testimony of Patent Owner’s declarant Dr.
`Papakonstantinou in this case is in direct contradiction to his testimony in
`the Old Republic IPRs. Here, Dr. Papakonstantinou testifies:
`Q. Okay. Does the ’434 patent require an index and a metafile
`to be separate and distinction data structures?
`[Dr. Papakonstantinou]. The -- yes. The Claim 1 is talking
`about an index and a metafile. And they are two distinct
`structures.
`Q. So you're basing your conclusion that they need to be
`separate and distinct based on the language of Claim 1?
`[Dr. Papakonstantinou]. And not only the -- the -- not only the
`language of Claim 1 but -- definitely the language of Claim 1,
`but also the whole specification is, pages after pages, very clear
`on it.
`Ex. 2012, 66:4–16.
`In the Old Republic IPRs, Dr. Papakonstantinou, however, testifies
`“one of ordinary skill in the art would understand that the invention in the
`
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`‘434 patent requires the index [to] include tags and metafiles.” Old
`Republic, IPR2016-00019, Ex. 2001 ¶ 34. Dr. Papakonstantinou’s testimony
`in the Old Republic IPRs is in direct contradiction to Patent Owner’s
`argument here. In light of this, we give little weight to Dr.
`Papakonstantinou’s testimony concerning claim construction or any other
`matter in the record.
`Patent Owner also argues that “index” and “metafile” must be
`construed to have different or distinct structures because otherwise a prior
`art element may unreasonably read on both the claimed index and metafile.
`PO Resp. 13–14, 25–27. For example, Patent Owner argues that it is
`unreasonable to construe index and metafile, such that Wical’s knowledge
`base could read on both claim limitations. Id. at 13–14.
`As explained above, the plain language of claim 1 does not require the
`index or the metafile to have different or distinct structures. The language of
`claim 1 does not require any of the structure of the index other than it
`includes defined domain and category tags. The language of claim 1 does
`not require the structure of the index to be distinct or different from the
`structure of the first metafile. Further, such a requirement would be
`inconsistent with the specification of the ’434 patent. The ’434 patent
`discloses that the metafile is included in the index. Ex. 1004, 4:13–14. The
`’434 patent describes that the index and metafile perform similar functions
`and have similar structures. See, e.g., id. at 2:38–40 (“[A]n index includes
`tags and metafiles to locate the desired information. In general, an index is
`essentially a guide that is used to locate information stored in a database”),
`2:61–64 (“A metafile provides additional information about the tag. A
`metafile typically includes a list of related tags.”).
`
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`Given the above, we are not persuaded that the broadest reasonable
`construction in light of the specification of the ’434 patent that the steps of
`“creating an index” and “creating a first metafile” require the index and
`metafile be separate and distinct data structures. Any further construction of
`the term index or metafile is not necessary to resolve the issues before us.
` “creating a hierarchy between the tags”
`Claim 5 depends from claim 3 and recites an additional step of
`
`“creating a hierarchy between the tags in the metafile.” Similarly, claim 6
`depends from claim 1 and recites “wherein the step of creating a first
`metafile comprises the steps of: . . . creating a hierarchy between the tags in
`the first set of XML tags.” The first set of XML tags are related to the first
`domain tag. See Ex. 1004, claim 6.
`
`Neither Petitioner nor Patent Owner provide an explicit construction
`of “creating a hierarchy between the tags.” See Pet. 3–6, PO Resp. 6–7.
`Patent Owner, however, argues that “creating a hierarchy between the tags”
`is “not claiming a tree structure where domains are above categories but
`rather is claiming a priority between the tags in a metafile that are related to
`the first domain tag.” PO Resp. 19; see also id. at 23 (“[c]laim 6 of the ‘434
`is not claiming any hierarchy where domains are above categories but rather
`is claiming a priority hierarchy of the tags related to the first domain tag in a
`metafile”). According to Patent Owner, the limitation must be construed to
`be something other than a category-subcategory relation because the
`specification of the ’434 patent “consistently uses the term ‘hierarchy’ of
`tags in a metafile to refer only to a priority among tags.” Id. at 19 (citing Ex.
`1004, 8:1–7, 8:55–57, 9:43–47).
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` We are not persuaded that the claimed “hierarchy” should be
`construed to preclude category-subcategory relation and to require a priority
`between the tags. Nothing in the plain language of claims 5 and 6 requires
`such, and, contrary to Patent Owner’s argument, the specification of the ’434
`patent explicitly states that other hierarchies can be used — “[a]s will be
`apparent to those skilled in the art, other tags and hierarchies can be included
`in the metafile.” Ex. 1004, 9:56–58.
`
`We, thus, are not persuaded that the broadest reasonable construction
`in light of the specification of the ’434 patent of “hierarchy” precludes a
`category-subcategory relation and requires a priority between the tags. Any
`further construction of the term “hierarchy” is not necessary to resolve the
`issues before us.
`
`
`B. Unpatentability
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The ultimate
`determination of obviousness under § 103 is a question of law based on
`underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
`(Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1969)). These underlying factual considerations consist of: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`
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`success, long-felt but unsolved needs, failure of others, etc.”5 KSR, 550 U.S.
`at 406 (2007) (quoting Graham, 338 U.S. at 17–18).
`a. Wical and Lassila
`
`Petitioner contends that claims 1–3, 5, and 6 are unpatentable over
`Wical and Lassila. Pet. 28–33. Petitioner supports its contention with a
`declaration of Dr. Jagadish. Ex. 1001 ¶¶ 107–164.
`
`
`1. Wical
`
`Wical is titled “Concept Knowledge Base Search and Retrieval
`System.” Ex. 1006, [54]. Wical discloses a search and retrieval system that
`receives a search query from a user and, in one mode of operation, identifies
`documents relevant to the query. Id. at Abstract, 5:29–33. Each document
`has a document theme vector, which includes a list of document themes,
`theme strengths, and corresponding categories. See id. at 7:41–8:9, Table 1.
`
`A knowledge base 155 contains classification categories or topics,
`such as the knowledge catalog 150, which identifies categories and sub-
`categories for the document themes. Id. at 5:60–61, 6:7–11, 11:14–35. The
`knowledge base is “augmented with additional terminology including cross
`references and links among terminology/categories,” (i.e., a directed graph).
`Id. at 6:11–22, 11:15–17, 11:36–12:45.
`
`
`5 The record contains no evidence of secondary considerations.
`
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`Figure 4 of Wical is reproduced below.
`
`
`“Figure 4 illustrates an example portion of the knowledge base that include a
`directed graph.” Id. at 3:27–28; see also 11:17–20. Figure 4 depicts
`classification categories and sub-categories, such as “geography” and
`“France.” The categories and sub-categories are arranged hierarchically.
`Id. at 11: 20–35. The direct graph cross references or links the term, for
`example the term “Eiffel Tower” is linked with the category “France.” Id. at
`11:62–12:7. The cross referencing and links are indicated by the circles,
`lines, and arrows in Fig. 4. Id. at 11:41–43.
`
`The knowledge base and directed graph are used to expand the query
`terms by mapping the query terms to categories and to identify related
`categories/terms. Id. at 13:45–51; Fig. 5, steps 405, 410. Each category or
`term of the expanded query terms is used to select documents classified for
`those categories. Id. at 14:56–58; Fig. 5, step 420.
`
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`2. Claim 1
`
`Petitioner contends that Wical teaches all of the limitations of claim 1,
`except for the tags being XML tags. Pet. 28–31. In particular, Petitioner
`contends that
`
`Wical discloses creating a Knowledge Base containing
`categories (i.e., tags) arranged hierarchically. The Knowledge
`Base is an index used to search the database.
`. . .
`Wical discloses creating a Knowledge Base containing category
`tags and domain tags. When the Knowledge Base is created, it
`also contain information about relationships among categories.
`(Ex. 1006 at 6:7-22, 11:14-45, 11:56-65; Ex. 1001 ¶ 118.) This
`information is stored using a directed graph structure. (Id.)
`The directed graph for a particular category (i.e., metafile)
`includes related categories and related information about the
`categories. (Id.)
`Pet. 28–29. Petitioner argues that Wical is silent as to the syntax used to
`create Wical’s knowledge base, and that Lassila teaches using XML as a
`syntax for implementing metadata. Id. at 28–29. Petitioner contends that
`“[i]t would have been a predictable use of prior art elements and known
`techniques for a [person of ordinary skill in the art] to use XML to
`implement Wical’s teachings.” Id. at 11–13 (citing Ex. 1001 ¶¶ 28, 163).
`
`Patent Owner does not dispute Petitioner’s assertion that it would
`have been obvious to implement Wical’s teachings using XML (see Tr.
`21:12–14 (“Lassila was used for the same premise in both [instituted
`grounds] namely that XML tags would have been obvious, and we're not
`disputing that.”)). See In re: NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir.
`2016) (The Board need only make factual findings as to the limitations that
`
`
`
`
`
`17
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`IPR2015-01481
`Patent 6,510,434 B1
`
`the Patent Owner challenges.). Patent Owner, however, disputes that Wical
`teaches the claimed steps of creating the index and creating a first metafile.
`According to Patent Owner, Wical fails to meet the claimed steps because
`Wical does not teach that its knowledge base (i.e., index) is a separate and
`distinct data structure from its directed graph (i.e., metafile). PO Resp. 1–
`11. Patent Owner asserts that Wical’s knowledge base and directed graph
`are one in the same. Id.
`
`Patent Owner’s argument is unpersuasive because it is not
`commensurate with the scope of the claim. As discussed above, the broadest
`reasonable construction in light of the specification of the ’434 patent of the
`claimed steps does not require that the index and the first metafile be
`separate and distinct data structures. When given the broadest reasonable
`interpretation in light of the Specification of the ’434 patent, Wical meets the
`claimed steps of creating an index and creating a first metafile. As the
`Petition points out (Pet. 28–30), Wical discloses creating a knowledge base,
`which contains classification categories (i.e., tag) and discloses augmenting
`the knowledge base with additional terminology, cross references, and links
`of the directed graph. See Ex. 1006, 6:7–22, 11:14–45, 11:56–65.
`
` Patent Owner also disputes that Wical teaches a metafile that
`corresponds to a first domain tag because, according to Patent Owner,
`Wical’s directed graph corresponds to every category or tag in the index.
`PO Resp. 12–14. Patent Owner’s argument is unpersuasive because it is not
`commensurate with the scope of the claim. Patent Owner’s argument
`implies that the first metafile must correspond only to the first domain tag.
`Claim 1, however, contains no such requirement.
`
`
`
`18
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`IPR2015-01481
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`
`Upon review of the analysis in the Petition and the supporting
`
`evidence, and taking into account Patent Owner’s arguments and evidence,
`we determine that Petitioner has shown by a preponderance of the evidence
`that claim 1 is unpatentable under 35 U.S.C. § 103 over Wical and Lassila.
`
`3. Claim 2
`
`Claim 2 depends from claim 1 and requires additional limitations
`concerning the creation of an alpha portion and an index component for each
`record in the database. Ex. 1004, claim 2. Petitioner contends that Wical
`meets these additional limitations because Wical discloses a document
`theme vector. Pet. 31–33 (citing Ex. 1006, 2:63–67, 4:44–58, 33:37–42; Ex.
`1001 ¶¶ 126–127). Upon review of the analysis in the Petition and the
`supporting evidence, we determine that Petitioner has shown by a
`preponderance of the evidence that claim 2 is unpatentable over Wical and
`Lassila. Patent Owner makes no arguments directed specifically to the
`additional limitations of claim 2.
`
`
`4. Claim 3
`
`Claim 3 depends from claim 1 and additionally requires that “the step
`of creating a first metafile, comprises the step[] of: selecting a first set of
`domain tags from the defined XML tags that are related to the first domain
`tag.” Petitioner contends that Wical teaches this limitation because the
`directed graph includes information about how domain tags, such as
`“Leisure and Recreation” in Figure 4, are related to other domain tags, such
`as “Geography” in Figure 4. Pet. 33–34 (citing Ex. 1001 ¶ 136).
`
`
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`IPR2015-01481
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`Patent Owner disputes that Wical’s discloses this limitation. PO
`
`Resp. 14–18. According to Patent Owner, “Wical discloses that the domains
`relied on by the Petition are independent rather than related.” Id. at 14
`(citing Ex. 1006, 11:24–28). Further, Patent Owner argues that the
`connection between “Leisure and Recreation” and “Geography,” depicted in
`Fig. 4 “is too remote to reasonably consider the two categories as related.”
`PO Resp. 15 (citing Ex. 2001 ¶ 32; Ex. 2003, 95:14–96:13).
`
`We are persuaded by Petitioner that Wical teaches selecting a first set
`of domain tags that are related to the first domain tag. Although Wical
`describes the ontologies for “Leisure and Recreation” and “Geography”
`depicted in Figure 4 as independent, Wical discloses linking and cross
`referencing categories and terms between the ontologies. Id. at 11:24–28,
`11:36–55. Wical discloses that associations between categories, which may
`include high-level categories in the hierarchy of the directed graph, are
`manually made by linguists or by extracting information from documents.
`See Ex. 1006, 4:39–44, 6:8–20. Dr. Jagadish testifies that even high level
`categories may be related, though remotely, through cross references and
`links. Ex. 2003,6 91:12–93:3, 95:14–24. Claim 3 does not require any
`particular degree or strength of relationship between related tags, for
`instance, it does not preclude the relationship from being remote.
`
`Dr. Papakonstantinou testifies that it would be unreasonable to create
`relationships between top level categories in Wical’s different ontologies
`because it would contradict Wical’s purpose of establishing separate
`ontologies and would create relationships that would be multiple traversal
`
`
`6 The record contains two Exhibits number 2003. We reference the one
`labeled “Replacement Exhibit 2003.”
`
`
`
`20
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`IPR2015-01481
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`
`loops. Ex. 2001 ¶¶ 33–34. Dr. Papakonstantinou, however, fails to account
`for Wical’s disclosure of the separate ontologies having cross references and
`links, including links that create loops between terms. See Ex. 1004, Fig. 4
`(depicting links between the ontologies for “Leisure and Recreation” and
`“Geography,” including links forming a loop between “France” and “Places
`of Interest”).
`
`
`Upon review of the analysis in the Petition and the supporting
`evidence and taking into account Patent Owner’s arguments and evidence,
`we determine that Petitioner has shown by a preponderance of the evidence
`that claim 3 is unpatentable under 35 U.S.C. § 103 over Wical and Lassila.
`
`5. Claims 5 and 6
`
`Claim 5 depends from claim 3 and additionally requires “creating a
`hierarchy between the tags in the metafile.” Claim 6 depends from claim 1
`and additionally requires “creating a hierarchy between the tags in the first
`set of XML tags,” which are related to the first domain tag.
`
`Petitioner contends that Wical meets the additional limitations
`because Wical discloses creating a hierarchy
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