Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 28
`Date: March 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2016-00019
`Patent 6,510,434 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`I. INTRODUCTION
`A. Background
`Old Republic General Insurance Group, Inc., Old Republic Insurance
`Company, Old Republic Title Insurance Group, Inc., and Old Republic
`National Title Insurance Company, (collectively, “Old Republic” or
`“Petitioners”) filed a Petition (“Pet.”) requesting inter partes review of
`claims 1–6 (“the challenged claims”) of U.S. Patent No. 6,510,434 B1 (Ex.
`1001, “the ’434 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1
`(“Pet.”).
`Pursuant to 35 U.S.C. § 314, we instituted an inter partes review as to
`claims 1–6 of the ’434 patent on April 18, 2016. Paper 8 (“Dec. on Inst.” or
`“Institution Decision”).
`During the course of trial, Intellectual Ventures I (“IV”) filed a Patent
`Owner Response (Paper 12, “PO Resp.”), and Old Republic filed a Reply to
`the Patent Owner Response (Paper 16, “Pet. Reply”). IV filed a Motion to
`Exclude (Paper 20, “Mot. to Exclude”); with Old Republic filing an
`Opposition to the Motion to Exclude (Paper 21, “Opp. to Mot. to Exclude”);
`and IV filing a Reply to Old Republic’s Opposition to the Motion to Exclude
`(Paper 23, “Reply to Opp. to Mot. to Exclude”).
`We held a consolidated oral hearing on January 10, 2017, in relation
`to this proceeding as well as Case IPR2016-00020, which is a proceeding
`also related to the ’434 patent. A transcript (Paper 26, “Tr.”) of the oral
`hearing has been entered into the record, as well as copies of the
`demonstratives the parties referred to at the oral hearing (Ex. 1037; Ex.
`2004).
`
`
`
`2
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`addresses issues and arguments raised during trial.
`
`For the reasons discussed below, we determine that Old Republic has
`shown by a preponderance of the evidence that claims 1–6 of the ’434 patent
`are unpatentable under 35 U.S.C. § 103(a). We dismiss the Motion to
`Exclude Exhibits 1028 and 1029 as moot.
`B. Related Proceedings
`The parties indicate that the ’434 patent was at issue in Intellectual
`Ventures I LLC v. Erie Indemnity Co., Case No. 1:14-cv-000220, Intellectual
`Ventures I LLC v. Old Republic Gen. Ins. Grp., Inc., Case No 2:14-cv-
`01130, and Intellectual Ventures I LLC et al. v. Highmark, Inc., Case No.
`2:14-cv-01131, all in the U.S. District Court for the Western District of
`Pennsylvania. Pet. 1; Paper 4, 2.
`IV indicates that in September 2015, the District Court in the Western
`District of Pennsylvania found the asserted claims patent ineligible under 35
`U.S.C. § 101. Paper 4, 2. IV appealed the dismissal to the Court of Appeals
`for the Federal Circuit, and the Federal Circuit affirmed that the asserted
`claims are patent ineligible under 35 U.S.C. § 101. See Paper 27;
`Intellectual Ventures I LLC. v. Erie Indemnity Co., No. 12-1128, 2017 WL
`900018 (Fed. Cir. March 7, 2017).
`Old Republic indicates that the ’434 patent was the subject of an inter
`
`partes review petition filed by International Business Machines Corporation
`in June 2015 (IPR2015-01481) (“the IBM case”), and another inter partes
`review petition filed by Old Republic (IPR2016-00020). Pet. 2. The Board
`issued a final written decision in Case IPR2015-01481, finding that claims
`
`
`
`3
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`1–3, 5, and 6 of the ’434 patent are unpatentable. Int’l Bus. Machines Corp.,
`v. Intellectual Ventures I LLC, Case IPR2015-01481 (PTAB Jan. 9, 2017)
`(Paper 40). We issue a final written decision in Case IPR2016-00020 at the
`same time as this decision, determining that claims 7, 8, 12, and 14 of the
`’434 patent are unpatentable.
`The Instituted Grounds of Unpatentability
`C.
`We instituted the instant inter partes review of claims 1–6 of the ’434
`
`patent on the following grounds of unpatentability (Dec. on Inst. 24):
`Reference(s)
`Basis
`Claims
`Okamoto1,2
`§ 103(a)
`1–3, 5, and 6
`Okamoto and XML
`§ 103(a)
`1–3, 5, and 6
`Specification3
`Okamoto and Payne4
`
`
`§ 103(a)
`
`4
`
`D. 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. 1001, [22], [45], [54].
`
`The ’434 patent discloses a method of “[r]etrieving information from
`a database using XML (eXtensible Markup Language) tags and metafiles.”
`Ex. 1001, Abstract. Each record in the database contains an alpha
`
`
`1 U.S. Patent No. 6,377,946 B1 (issued April 23, 2002) (Ex. 1005).
`2 For clarity and ease of reference, we only list the first named inventor.
`3 W3C XML Specification, Version 1 (allegedly published February 10,
`1998, and allegedly captured by the Internet Wayback Machine on February
`13, 1998) (Ex. 1006; Ex. 1015).
`4 U.S. Patent No. 5,715,314 (issued February 3, 1998) (Ex. 1010).
`
`
`
`4
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`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.
`
`
`Figure 4B depicts an example of a database record. Ex. 1001, 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.
`
`An index defines the tags and associates metafiles with many of the
`tags. See Ex. 1001, 4:11–40, 10:7, 10:18–22. The metafile 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.
`
`
`
`5
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`
`
`Figure 3B depicts metafile 322 for XML Tag 320. Ex. 1001, 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. As an 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).
`
`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. Ex. 1001, 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
`
`
`
`6
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`database is searched to identify records that include the tags of the key. Id.
`at 13:17–24; Fig. 6A, steps 610, 612.
`E. Illustrative Claim
`
`
`Claim 1, reproduced below, is illustrative of the ’434 patent.
`
`
`
`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.
`Ex. 1001, 15:39–46.
`
`II. ANALYSIS
`A. Claim Construction
`Consistent with the statute and legislative history of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011), the
`Patent Trial and Appeal Board (“Board”) construes claims by applying the
`broadest reasonable interpretation in light of the specification. 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 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).
`
`
`
`7
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`Old Republic proposed constructions for a number of claim terms in
`the Petition. Pet. 7–11.5 IV contends that the only claim terms that require
`construction to resolve this proceeding are “index” and “metafile.” PO
`Resp. 8. Old Republic disputes IV’s construction of these terms, and also
`raises an issue related to the construction of the term “hierarchy of tags.”
`Pet. Reply 1–12, 16–18.
`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.
`“index” and “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. 1001, 15:41–46.
`IV proposes that the broadest reasonable construction of the term
`“index” is “a data structure that includes tags and metafiles to locate the
`information in a database.” PO Resp. 8. IV also proposes, in the alternative,
`that if the term “index” is not construed as it advocates, then the modified
`construction of the term “metafile” should be a “data structure included in
`the index comprising additional information about a tag, including related
`tags.” Id. at 14–15.
`
`
`5 For the purposes of the Decision to Institute in this proceeding, the claim
`constructions used in the Decision to Institute in Case IPR2015-01481 were
`used for consistency reasons, and those constructions were not substantially
`different from those proposed by Old Republic. Dec. on Inst. 7–8.
`
`
`
`8
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`IV’s position on the term “index” is based on the allegation that the
`construction we adopted for the purposes of the Decision to Institute, that is,
`a “data structure used to locate information in a database,” is too broad
`because the scope would extend to any structure meeting this function,
`rather than to a data structure with certain structural limitations. PO Resp.
`8–9 (citing Ex. 2001 ¶ 31). In further support, IV points to testimony from
`Old Republic’s expert, and also alleges that the ’434 patent consistently
`refers to tags and metafiles as separate data structures included in the index.
`Id. at 10–11 (citing Ex. 1001, Abstract, 1:25–27, 2:36–39, 4:10–13, 7:18–32,
`15:4–6; Ex. 1003 ¶ 52; Ex. 2001 ¶¶ 30, 32–34). IV also refers to its
`adversary’s position in the related IBM case, where the Petitioner in that
`case agreed with IV’s position on the claim construction advocated in the
`instant action.6 Id. (citing Int’l Bus. Machines Corp., v. Intellectual
`Ventures I LLC, Case IPR2015-01481, Paper No. 24). IV additionally
`
`
`6 Old Republic alleges that IV itself has taken a directly opposing position
`on the construction of the terms “index” and “metafile” in the instant case
`from the position it took in the IBM case, and the same IV expert used in
`both cases provided directly conflicting testimony on the terms at issue. Pet.
`Reply 1–2, 6–7. At oral hearing, IV attempted to distinguish its positions
`taken on claim construction in the two proceedings. See Tr. 31–46, 62–65.
`Although it appears that IV admitted that it has taken a different position
`here compared to that reflected in the testimony of its expert in the IBM
`case, in light of our claim construction determinations for the terms, infra,
`we need not reach the issue of IV’s potentially disparate positions in the
`different proceedings. See Reply to Opp. to Mot. to Exclude 4 (“There is no
`credible basis to assert that Patent Owner has adopted this alleged testimony
`[Ex. 1029, Dr. Yanni Papakonstantinou’s testimony in the IBM case
`concerning the index and metafile being separate structures] given Patent
`Owner has taken the exact opposite position in this proceeding.”) We
`therefore need not address or rely upon the associated exhibits that are the
`subject of the Motion to Exclude. See Mot. to Exclude 1–15.
`
`
`
`9
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`asserts that “[e]very description in the specification of the ’434 patent
`describes the index as including tags and metafiles,” and therefore shows a
`“clear and consistent intent to limit the invention” by the proposed claim
`construction. See id. at 11–14 (citing, e.g., Ex. 1001, 3:8–37; 4:34–50;
`7:18–31; 15:5–24).
`Claim 1 is directed to “[a] method for creating a database and an
`index to search the database,” that includes “creating the index by defining a
`plurality of XML tags,” and “creating a first metafile that corresponds to a
`first domain tag.” Ex. 1001, 15:39–44. Although IV advocates that the term
`“index” should be construed to include tags and metafiles, we see no reason
`to include these elements because they are expressly recited in the claims, as
`is their respective interrelationships. As the Federal Circuit has stated,
`“[c]onstruing a claim term to include features of that term already recited in
`the claims would make those expressly recited features redundant.” Apple,
`Inc., v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016). Moreover, we
`do not agree with IV’s allegation that every description in the ’434 patent
`refers to the index as always including tags and metafiles. The Specification
`states that, for instance, “[i]n general, an index is essentially a guide that is
`used to locate information stored in a database.” Ex. 1001, 2:39–42. It
`further states that: “[p]referably, the index includes tags that correspond to
`categories and domains,” indicating that the inclusion of a tag in an index is
`an embodiment of the invention. Id. at 2:42–43. We are therefore not
`persuaded by IV’s arguments on this issue, and maintain the construction of
`“index” as a “data structure used to locate information in a database.” We
`note that this construction does not preclude interrelationships of index[es]
`with tags and metafiles.
`
`
`
`10
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`The construction we used in the Decision to Institute for “metafile”
`was “data structure comprising additional information about a tag, including
`related tags.” Dec. on Inst. 7. IV proposes, as an alternative to adoption of
`its proposed construction of “index,”—which we have above declined to
`adopt—that the modified construction of the term “metafile” should be a
`“data structure included in the index comprising additional information
`about a tag, including related tags.” PO Resp. 14–15. We do not find the
`construction of the term “metafile” used in the Decision to Institute is
`overbroad in light of the Specification because the ’434 patent states that
`“[a] metafile provides additional information about the tag,” which is
`consistent with our previous construction. Ex. 1001, 2:61–62. We also
`decline to adopt IV’s proposed construction of “metafile” to add the
`limitation “included in the index” because, as discussed above, claim 1
`recites the respective interrelationship of “index” and “metafile.” We
`therefore maintain our construction of “metafile” as a “data structure
`comprising additional information about a tag, including related tags.”
`“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.” Ex. 1001, 16:1–2.
`Claim 6 similarly 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.” Id. at 16:7–8.
`The issue of construction of the term “hierarchy between the tags in
`the metafile” is implicated in IV’s arguments alleging that the prior art fails
`to teach this limitation of claims 5 and 6. See PO Resp. 33–36. IV contends
`that the Specification evidences that a “hierarchy” of tags refers to a priority
`
`
`
`11
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`among tags in the view of one of ordinary skill. Id. at 33–34 (citing Ex.
`1001, 8:1–7, 8:55–57, 9:43–47; Ex. 2001 ¶¶ 27–29, 51, 52). IV also
`contends that the ’434 patent never uses the term “hierarchy” to describe the
`relationship structure between domains and categories, and there would be
`“no purpose to claim a hierarchy of category above subcategory for tags in a
`metafile since the index already defines whether a tag is a domain tag or a
`category tag.” Id. at 34 (citing Ex. 2001 ¶ 27).
`We are not persuaded that the claimed “hierarchy” should be
`construed to require a priority between the tags. Nothing in the plain
`language of claims 5 and 6 requires such, and, contrary to IV’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. 1001, 9:56–58.
`We, thus, are not persuaded that the broadest reasonable construction
`in light of the specification of the ’434 patent of “hierarchy” requires a
`priority between the tags. Any further construction of the term “hierarchy”
`is not necessary to resolve the issues before us.
`“category tag” and “domain tag”
`We address the terms “category tag” and “domain tag” because the
`construction of these terms is relevant to obviousness issues addressed
`below. See, infra Section III.C.4. In the Petition, Old Republic proposes
`that the term “category tag” should be construed as “a tag associated with a
`group of terms,” and the term “domain tag” should be construed as “a tag
`associated with a grouping of categories.” Pet. 8–9 (citing Ex. 1001, 2:42–
`43, 2:53–55); see also Ex. 1001, 2:48–49 (“A domain is generally described
`
`
`
`12
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`as a grouping of categories.”). IV does not present any alternative
`construction or dispute the proposed constructions. See PO Resp. 6–16.
`Upon a review of the analysis in the Petition and the supporting
`evidence, we agree with Old Republic’s proposed constructions of these
`terms and adopt the same.
`B. The Level of Skill in the Art
`In determining the level of skill in the art, various factors may be
`
`considered, including “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63
`(Fed. Cir. 1986)). Old Republic proposes that a person with ordinary skill in
`the art as of the priority date of the ’434 patent would be an individual who
`possesses a bachelor’s degree in computer science with at least one year of
`experience designing database systems. Pet. 3. With that education and
`experience, IV’s expert, Dr. Jeffrey F. Naughton, testifies in his Declaration
`(“Naughton Declaration”), that “[s]uch a person would therefore have a
`good working knowledge of various database indexing techniques and
`would have also been familiar with Web technologies such as structured
`documents and markup languages, including HyperText Markup Language
`(‘HTML’), Standard Generalized Markup Language (‘SGML’), and
`eXtensible Markup Language (‘XML’).” Ex. 1003 ¶ 85. IV does not
`present any position on this issue.
`
`We adopt and apply the level of ordinary skill in the art articulated by
`Old Republic to our obviousness analysis in this proceeding. In addition, we
`
`
`
`13
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`note that the prior art of record in this proceeding—namely, Okamoto, XML
`Specification, and Payne—is indicative of the level of ordinary skill in the
`art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 1471);
`GPAC, 57 F.3d at 1579.
`C. Obviousness of Claims 1–3, 5, and 6 over Okamoto and
`Claim 4 Over Okamoto and Payne
`In support of its asserted ground of unpatentability, Old Republic
`
`explains how Okamoto teaches the subject matter of claims 1–3, 5, and 6,
`and the combination of Okamoto and Payne teaches the subject matter of
`claim 4. Pet. 26–51. Old Republic also relies upon the Naughton
`Declaration (Ex. 1003), to support its positions. In its Response, IV
`contends that Old Republic fails to demonstrate that (1) Okamoto renders
`claims 1–3, 5, and 6 obvious; (2) Okamoto and Payne renders claim 4
`obvious because the references fail to teach several limitations of the claims
`at issue; and (3) Old Republic employs impermissible hindsight. PO Resp.
`16–42. IV relies upon the Declaration of Dr. Yannis Papakonstantinou (“the
`Papakonstantinou Declaration”) to support its positions. Ex. 2001.
`
`In its Reply, Old Republic counters IV’s arguments with the
`assertions that (1) the limitations at issue are taught by Okamoto and/or
`Payne under legally correct claim construction; (2) that IV attempts to
`impermissibly import limitations into the claims; and (3) that IV misapplies
`and misinterprets the rationale of Old Republic’s challenges to the claims.
`Pet. Reply 10–23.
`
`We begin our analysis with the principles of law that generally apply
`to an obviousness ground, followed by brief summaries of Okamoto and
`Payne, and then we address the arguments presented by the parties.
`Principles of Law
`1.
`
`
`
`14
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`In assessing obviousness, “the scope and content of the prior art are to
`
`be determined; differences between the prior art and the claims at issue are
`to be ascertained; and the level of ordinary skill in the pertinent art
`resolved.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).7 A party who
`petitions the Board for a determination of obviousness must show that “a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.”
`Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed.
`Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
`Cir. 2007)).
`
`2. Okamoto (Ex. 1005)
`Okamoto generally discloses “a method of document registration and
`a method of document search for a document search system or a document
`management system using a computer system.” Ex. 1005, 1:6–9. Okamoto
`uses “structure-specific search[es]” for “structured document[s]” that are
`described in Standard Generalized Markup Language (“SGML”) in the
`embodiments. Id. at 1:31–35. The document content format is specified in
`the document type definition (“DTD”) that is associated with the structured
`document. Id. at 12:65–67, 13:1–4, 13:7–11. When a document is to be
`registered, its DTD file is analyzed to create a document structure table. Id.
`
`
`7 Additionally, secondary considerations such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Here, IV has not
`presented any such evidence.
`
`
`
`15
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`at 14:56–15:15. The DTD includes tags that are used to define the document
`elements. Id. at 14:33–43. The content of the document is compared to the
`document structure table, and the data structure of the analyzed document
`data, which can be graphically depicted. Id. at 15:16–65, Fig. 6.
`For each “node” in the analyzed document data, which is each
`element defined by tags in the structured document, the program determines
`whether a corresponding “meta-node” exists in a structured index. Ex. 1005
`at 16:25–28. A “Meta Structure Index” is created that combines the
`structure indexes for different, but related, tags into an index, where the
`document elements of the structure indexes are connected by a root meta-
`node. Id. at 39:7–33, 41:15–58, Figs. 49, 53, 54. Figure 49 of Okamoto is
`reproduced below:
`
`
`
`16
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`
`
`
`
`Figure 49 is a diagram showing an example of generating
`a meta structure index. Ex. 1005 at 8:40–41.
`
`3. Payne (Ex. 1010)
`Payne describes a “user-interactive network sales systems for
`
`implementing an open marketplace for goods or services.” Ex. 1010, 1:14–
`18. Payne’s network sales system includes several interconnected
`computers, including those for a buyer and merchant, as well as those
`identified as a “creation computer” and a “payment computer.” Id. at 4:35–
`43. Payne also discloses a merchant database connected to the merchant
`computer that has advertisements stored on it. Id. at 2:66–3:6. Payne’s
`creation computer is programmed to create a “store” of products. Id. at
`
`
`
`17
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`4:46–49. Products sold by merchant’s store can include newspaper or
`newsletter articles that are then transmitted over the network, and the
`merchant computer can store the products and advertisements for
`transmission to the buyer computer. Id. at 4:50–63. Products are organized
`into various domains. Id. at 5:7–8. A user can select a product after
`browsing the advertisement and add it to a shopping cart. Id. at 5:11–15,
`5:26–27. After addition, the user “requests more advertisements (step 24 in
`FIG. 2) and possibly adds another product to the shopping cart, or requests
`display of the shopping cart (step 116).” Id. at 8:14–18.
`4. Analysis
`a. Claim 1
`Old Republic contends that Okamoto teaches all the elements of claim
`
`1, and, in particular, it teaches the creation of a database of structured
`documents and several indexes to search the database, including a “structure
`index.” Pet. 26 (citing Ex. 1005 at 16:26–37). For undisputed issues, we
`have reviewed Old Republic’s explanations and supporting evidence, and we
`agree with and adopt Old Republic’s analysis.
`
`IV argues that Okamoto fails to teach several limitations of claim 1
`and that Old Republic employs impermissible hindsight in its analysis of all
`the claims. PO Resp. 16–29, 39–42. We will address these issues in turn.
`i. Okamoto’s teaching of “creating the index” and “creating a first
` metafile that corresponds to a first domain tag”
`IV argues that Okamoto’s structured index does not read on the
`
`“index” of claim 1. PO Resp. 18–19. The contention is based upon IV’s
`proposed claim construction of “index” and “metafile,” alleged to result,
`impermissibly, in an index being included in a metafile under Old
`Republic’s mapping of the claim elements to Okamoto. Id. at 19–20. We
`
`
`
`18
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`are not persuaded by IV’s argument because under the claim constructions
`adopted for the terms “index” and “metafile,” supra Section II.A, the
`scenario that IV alleges would not occur.
`
`IV also contends that Okamoto’s Meta Structure Index is an “index,”
`under the definition proposed by Old Republic and adopted in the Decision
`to Institute, but it cannot also be a “metafile.” PO Resp. 21–22. IV argues
`that the only structural differences between Okamoto’s Meta Structure
`Index, which Old Republic alleges is the “metafile” of claim 1, and the
`Structure Index, which Old Republic alleges is the “index” of claim 1, is the
`addition of the “root meta-node.” Id. at 21–22 (citing Ex. 1004, 39:7–13;
`Fig. 53; Ex. 2001 ¶ 42). As such, IV alleges that there is no explanation of
`how there is a transformation of an “index” into a “metafile,” and
`Okamoto’s meta structure index remains an index only. Id. at 22.
`IV’s argument is misplaced. The Petition addresses the issues of the
`creation of the “index” and the “metafile” (Pet. 27–36), acknowledging that
`Okamoto’s Meta Structure Index is formed from a combination of structure
`indexes with the addition of the root meta-node (id. at 35), and we agree
`with that view of the reference. Claim 1 requires “creating the index” and
`“creating a first metafile” tag, and there is no requirement in claim 1 that the
`index and metafile have to be distinct, separate structures.
`
`Additionally, IV alleges that even if Okamoto’s meta structure index
`can be considered a metafile, the meta structure index does not correspond to
`a first domain tag. PO Resp. 23. This allegation is based upon IV’s
`contention that, even if a meta structure index includes a node relating to a
`tag (citing Pet. 36), Old Republic fails to demonstrate that the metafile
`corresponds to the included tag because under IV’s proposed construction a
`
`
`
`19
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`metafile corresponds to an index, and not a tag. Id. This argument also
`fails, however, in light of the construction adopted here.
`ii. Okamoto’s teaching of “creating the index by defining a plurality of
`
`XML tags including domain tags and category tags”
`In the Petition, Old Republic asserts that Okamoto creates an index by
`
`analyzing document elements containing SGML tags, but does not explicitly
`disclose the use of the “XML tags” of claim 1 of the ’434 patent. Pet. 29.
`Old Republic refers to this portion of Okamoto:
`On the other hand, standardization of a structured document not
`necessarily requiring a specific structure like XML (Extended
`Markup Language) is going one [sic] at W3C (World Wide Web
`Consortium). The probable trend is toward the situation in which
`the document having a document structure meeting a specific
`DTD like SGML is not the only object of search.
`Ex. 1005, 3:59–62 (as cited in Pet. 30).
`
`Based upon this, Old Republic asserts that “Okamoto suggests and
`provides a motivation to use his structured document-indexing system with
`XML documents and their XML tags by his statement that such documents
`would likely need to be processed in the future.” Pet. 30 (citing Ex. 1003,
`¶ 143). Old Republic also alleges that “[a] person of ordinary skill in the art
`at the time would have understood that an XML document was one type of
`structured document.” Id. at 29 (citing Ex. 1003 ¶ 141; see, e.g., Ex. 1008,
`1:14–22; Ex. 1009 at Title, 1:6–10, 2:20–21). Old Republic contends that,
`based upon Okamoto’s reference to XML, it “discloses that XML creates
`another type of structured document known to the art and likely to be the
`object of database searches in the future,” thereby providing motivation to
`use a structured indexing system with XML documents and their XML tags.
`Id. at 29–30 (citing to Ex. 1003 ¶¶ 142–143; Ex. 1005, 1:32–35, 3:59–62).
`The Petition refers to Okamoto’s disclosure that it is directed to a method of
`
`
`
`20
`
`

`

`IPR2016-00019
`Patent 6,510,434 B1
`
`creating and searching structured documents, and that other forms of