Paper No. 16
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`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
`
`Patent No. 6,510,434
`Issued: January 21, 2003
`Filed: December 29, 1999
`Inventors: Dewey C. Anderson, David J. Anderson
`SYSTEM AND METHOD FOR RETRIEVING INFORMATION
`FROM A DATABASE USING AN INDEX OF XML TAGS AND
`METAFILES
`____________________
`Inter Partes Review No. IPR2016-00019
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`
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`Title:
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`
`PETITIONER’S REPLY
`________________________
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`
`
`
`
`
`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
`
`Patent No. 6,510,434
`Issued: January 21, 2003
`Filed: December 29, 1999
`Inventors: Dewey C. Anderson, David J. Anderson
`SYSTEM AND METHOD FOR RETRIEVING INFORMATION
`FROM A DATABASE USING AN INDEX OF XML TAGS AND
`METAFILES
`____________________
`Inter Partes Review No. IPR2016-00019
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`
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`Title:
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`PETITIONER’S REPLY
`________________________
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`IPR2016-00019
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`Petitioners’ Reply
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`Table of Contents
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`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIMS 1-6 ARE UNPATENTABLE .......................................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`The Claims Do Not Require An Index Including Metafiles ................. 2
`
`Okamoto Discloses Creating An Index And A Metafile .................... 10
`
`Okamoto Discloses A Metafile Corresponding To A First Domain
`Tag ....................................................................................................... 11
`
`The Combination of Okamoto And XML Creating The Index By
`Defining A Plurality Of XML Tags .................................................... 12
`
`Okamoto Discloses Creating An Alpha Portion And An XML Index
`Component .......................................................................................... 13
`
`Okamoto Discloses The Domain Tag Requirements Of Claims 3
`And 6 ................................................................................................... 15
`
`G. Okamoto Discloses The Hierarchy Of Claim 5 .................................. 16
`
`H. Okamoto In View Of XML Renders Claims 1-6 Obvious ................. 18
`
`I.
`
`J.
`
`Okamoto In View Of Payne Renders Claim 4 Obvious ..................... 20
`
`Dr. Naughton’s Testimony Is Entitled To Dispositive Weight ........... 24
`
`III. CONCLUSION .............................................................................................. 25
`
`
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`i
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`IPR2016-00019
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`Petitioners’ Reply
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011) ........................................................................ 3, 4
`
`Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007) .......................................................................... 23
`
`Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361 (Fed. Circ. 2012) ......................................................................... 16
`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) ........................................................................................ 24
`
`Laitram Corp. v. Cambridge Wire Cloth Co.,
`863 F.2d 855 (Fed. Cir. 1988) ............................................................................ 17
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ............................................................................ 9
`
`Silergy Corp., v. Monolithic Power Sys., Inc.,
`IPR2015-00803, Paper 9 (Sept. 11, 2015) .......................................................... 12
`
`In re Swinehart,
`439 F.2d 210 (C.C.P.A. 1971) .............................................................................. 8
`
`Veritas Techs. v. Veeam Software Corp.,
`No. 2015-1894, 2016 WL 4525278 (Fed. Cir., Aug. 30, 2016) ....................... 1, 3
`
`Voda v. Cordis Corp.,
`536 F.3d 1311 (Fed. Cir. 2008) ............................................................................ 3
`
`
`
`ii
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`IPR2016-00019
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`Petitioners’ Reply
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`Exhibit List
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`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`Exhibit # Reference Name
`U.S. Patent No. 6,510,434 to Anderson
`1001
`U.S. Patent No. 6,510,434 to Anderson – File History
`1002
`Declaration of Jeffrey F. Naughton
`1003
`Curriculum Vitae of Jeffrey F. Naughton
`1004
`U.S. Patent No. 6,377,946 to Okamoto
`1005
`Extensible Markup Language (XML) 1.0, W3C Recommendation
`1006
`(February 10, 1998)
`Comparison of SGML and XML, World Wide Web Consortium Note
`(December 15, 1997)
`U.S. Patent No. 6,959,415 to Soderberg
`U.S. Patent No. 6,263,332 to Nasr
`U.S. Patent No. 5,715,314 to Payne
`U.S. Patent No. 5,721,902 to Schultz
`U.S. Patent No. 5,878,423 to Anderson
`U.S. Patent No. 7,113,917 to Jacobi
`U.S. Patent No. 8,234,164 to Walker
`Extensible Markup Language (XML) 1.0, W3C Recommendation
`(February 10, 1998), Archive.org
`U.S. Patent No. 6,519,617 to Wanderski
`U.S. Patent No. 6,549,933 to Barrett
`Tauber, J., XML After 1.0: You Ain’t Seen Nothin’ Yet, IEEE Internet
`Computing (May/June 1999)
`U.S. Patent No. 5,644,711 to Murphy
`U.S. Patent No. 5,953,716 to Madnick
`U.S. Patent No. 6,321,209 to Pasquali
`U.S. Patent No. 7,107,226 to Cassidy
`U.S. Patent No. 6,304,872 to Chao
`
`1016
`1017
`1018
`
`1019
`1020
`1021
`1022
`1023
`
`iii
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`Petitioners’ Reply
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`1025
`
`1026
`
`Exhibit # Reference Name
`Email, dated October 8, 2014, from Derek Gilliland to Vernon
`1024
`Winters regarding service
`Walsh, J., Platinum’s software to help end-users help themselves,
`InfoWorld (January 26, 2998)
`Gardner et al., W3C OKs XML standard for organizing Web
`information, InfoWorld (February 16, 1998)
`Declaration of Vernon M. Winters
`International Business Machines v. Intellectual Ventures I LLC,
`IPR2015-01481, Paper 17, Patent Owner’s Response (Mar. 28, 2016)
`International Business Machines v. Intellectual Ventures I LLC,
`IPR2015-01481, Ex. 2012, Tr. of May 5, 2016 Deposition of Y.
`Papakonstantinou
`Microsoft Computer Dictionary (Microsoft Press 4th ed. 1999)
`
`1027
`1028
`[New]
`1029
`[New]
`
`1030
`[New]
`1031
`[New]
`1032
`[New]
`1033
`[New]
`
`Webster’s Third New International Dictionary of the English
`Language Unabridged (Merriam-Webster Inc. 1993)
`U.S. Pat. No. 5,710,922 to Alley
`
`International Business Machines v. Intellectual Ventures I LLC,
`IPR2015-01481, Paper 24, Petitioner’s Reply (June 20, 2016)
`
`iv
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`IPR2016-00019
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`Petitioners’ Reply
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`I.
`
`INTRODUCTION
`
`Patent Owner’s response treats its patent claims as the proverbial ‘nose of
`
`wax,’ trying to twist them into something they are not, in the hopes of avoiding the
`
`spot-on prior art Okamoto patent. Patent Owner’s primary argument seeks an
`
`unnaturally narrow interpretation, based on isolated passages from the
`
`specification, under which the claimed “index” would include metafiles and the
`
`claimed “metafile” would be included in an index. Resp6-16. But the plain
`
`language of the claims does not include any limitation requiring a combined index
`
`and metafile, and is inconsistent with such an interpretation, as Patent Owner itself
`
`has argued to the Board in IPR2015-01481. Ex. 1028 at 9-12. And even leaving
`
`that dispositive fact aside, Patent Owner impeaches its own argument: on page 21
`
`of its Response, it argues that “the ’434 patent makes clear that an index and a
`
`metafile are different data structures.” Resp21 (emphasis added).
`
`Nor has Patent Owner shown any other portion of the intrinsic record that
`
`supports the narrow interpretation it seeks. The specification defines both “index”
`
`and “metafile,” and neither definition says anything about one being included in
`
`the other. The specification passages Patent Owner cites do not contradict those
`
`definitions, and nothing in the patent even suggests including the metafile in the
`
`index makes any difference, material or otherwise, to the invention. See Veritas
`
`Techs. v. Veeam Software Corp., No. 2015-1894, 2016 WL 4525278, at *5 (Fed.
`
`1
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`Petitioners’ Reply
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`Cir., Aug. 30, 2016) (rejecting narrow interpretation in part because “[i]mportantly,
`
`nothing in the claims or the specification explains why it makes a material
`
`difference”).
`
`Patent Owner’s argument here is also inconsistent with Patent Owner’s
`
`arguments in IPR2015-01481 and the testimony of Patent Owner’s expert. In that
`
`proceeding, Patent Owner argued that the claimed “index” and “metafile” of the
`
`434 Patent were necessarily “separate component[s],” Ex. 1028 at 12, and its
`
`expert testified they are “separate and distinct” data structures, Ex. 1029 at 66:4-9;
`
`69:7-11; 70:17-24; 74:15-22. Indeed, the expert asserted under oath that it was his
`
`opinion that “the index cannot include the metafile”. Id. at 74:15-22 (emphasis
`
`added).
`
`The other arguments in Patent Owner’s Response are just as erroneous,
`
`based as they are on claim interpretations that narrow the ordinary meaning of the
`
`claim language without even an attempt to show a definition or disclaimer in the
`
`patent. The Board should reject them, apply the same interpretations it applied in
`
`the Institution Decision and find the claims unpatentable under those
`
`interpretations, a conclusion Patent Owner does not contest in its Response.
`
`II. CLAIMS 1-6 ARE UNPATENTABLE
`
`A. The Claims Do Not Require An Index Including Metafiles
`
`Patent Owner’s principle argument is that the Board must construe ”index”
`
`2
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`IPR2016-00019
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`Petitioners’ Reply
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`and “metafile” narrowly based on isolated passages in the specification that refer to
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`“the present invention.” Resp11-12. The use of the phrase “the present
`
`invention,” however, does not automatically read limitations from the specification
`
`into the claims, particularly “where other portions of the intrinsic evidence do not
`
`support applying the limitation to the entire patent.” Absolute Software, Inc. v.
`
`Stealth Signal, Inc., 659 F.3d 1121, 1136-37 (Fed. Cir. 2011); see also Voda v.
`
`Cordis Corp., 536 F.3d 1311, 1320-22 (Fed. Cir. 2008). As Patent Owner
`
`concedes, an extraneous feature described in the specification will only be read
`
`into the claims where “the specification makes clear that the invention requires”
`
`that feature. Resp11 (emphasis added), citing Howmedica Osteonics Corp. v.
`
`Wright Med. Tech., 540 F.3d 1337, 1345 (Fed. Cir. 2008).
`
`Patent Owner points to nothing in the specification making clear that the
`
`invention requires the metafile(s) to be in the index. There is no evidence, or even
`
`a suggestion, that the disclosed system would not work with the index and metafile
`
`as separate structures, and Patent Owner points to no advantage or efficiency,
`
`material or otherwise, that would result from the index including the metafile. See
`
`Veritas Techs., 2016 WL 4525278, at *5. There is simply no reason to conclude
`
`that placing the metafile in the index has any importance to the invention at all.
`
`Moreover, such a requirement would be glaringly inconsistent with the claim
`
`language. Claim 1, for example, requires “creating the index” and separately
`
`3
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`IPR2016-00019
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`Petitioners’ Reply
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`requires “creating a first metafile”. Ex. 1001 at 15:40-44. However, if the claimed
`
`index necessarily required an embedded metafile, that index could not be created
`
`until the metafile was also created. In other words, creating the claimed index
`
`would necessarily also create the metafile, so the claim phrase “creating a first
`
`metafile” would be surplusage.1 The plain language of the claims therefore “do[es]
`
`not support applying the limitation to the entire patent,” Absolute Software, 659
`
`F.3d at 1136, and in fact precludes it.
`
`The limitation Patent Owner seeks to import is also inconsistent with the
`
`specification. The inventors of the 434 Patent clearly defined both terms in a
`
`manner that does not require their combination. See Ex. 1001 at 2:39-41 (“In
`
`general, an index is essentially a guide that is used to locate information stored in a
`
`database.”); 2:61-62 (“A metafile provides additional information about the tag.”)
`
`The inventors’ lexicography confirms that the invention does not require the
`
`metafile to be in the index and that the specification does not support such a
`
`limitation.
`
`Given these other portions of the intrinsic record, the specification passages
`
`
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`1 Claims 25-28, moreover, recite a metafile but never mention an index. Ex. 1001
`
`at 18:41-20:13. Adopting Patent Owner’s theory would therefore read an entirely
`
`new data structure (an index) into several claims that never mention it.
`
`4
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`Petitioners’ Reply
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`Patent Owner cites (see Resp10-11) do not require that limitation be read into the
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`claims. Moreover, those passages do not say what Patent Owner thinks they say.
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`All but one of them are in the form of: “This invention relates in general to
`
`locating information in a database, and more particularly to using an index that
`
`includes tags and metafiles to locate the desired information.” Ex. 1001 at 1:25-27
`
`(emphasis added); See also id. at 2:36-39; 4:10-13; 15:4-6; and Abstract. But that
`
`phraseology is ambiguous as to what the index includes. It might mean that an
`
`index includes both tags and metafiles, which is Patent Owner’s position in this
`
`proceeding. But it is at least equally plausible that the passage means that the
`
`invention uses an index that includes tags to locate the desired information, and
`
`also uses metafiles to locate the desired information. Patent Owner’s interpretation
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`is not compelled, even within the four corners of these passages, and it is certainly
`
`not compelled by—indeed, it is inconsistent with—the claim language and other
`
`portions of the specification.
`
`The one passage Patent Owner cites that does not include this ambiguity,
`
`col. 7:18-32, is in a description of Figure 1B, which the patent describes merely as
`
`“an exemplary embodiment of the present invention.” Ex. 1001 at 3:50-51. Thus,
`
`far from requiring that the index include the metafile, the “studied ambiguity” of
`
`the specification confirms that such a limitation was never intended to apply to the
`
`entire patent.
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`5
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`Petitioners’ Reply
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`Finally, the patent’s final paragraph begins by declaring that “[a]lternative
`
`embodiments will be apparent to those skilled in the art to which the present
`
`invention pertains without departing from its spirit and scope,” which points firmly
`
`away from Patent Owner’s present position that the details of the exemplary
`
`embodiment are required to be read into all embodiments. Ex. 1001 at 15:32-34.
`
`Patent Owner’s positions in IPR2015-01481 further confirm this conclusion.
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`In that proceeding Patent Owner argued that the claimed “index” and “metafile”
`
`were not satisfied by the accused prior art structures because those structures were
`
`separate components. Ex. 1028 at 12 (“Even if the knowledge base has a directed
`
`graph structure, there is no ‘creating a first metafile’ because the directed graph is
`
`not created as a separate component . . . .”) (emphasis added).
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`Patent Owner’s expert echoed that position, testifying that the claimed index
`
`and metafile must be “separate and distinct” data structures:
`
`Q. Okay. Does the '434 patent require an index and a metafile to be
`separate and distinction [sic] data structures?
`
`A. The -- yes. The Claim 1 is talking about an index and a metafile.
`And they are two distinct structures.
`
`Ex. 1029 at 66:4-9 (emphasis added).
`
`The expert also confirmed that the specification of the 434 Patent does not
`
`support the narrow interpretation Patent Owner requests here, testifying that his
`
`conclusion that they must be “separate and distinct” is based not only on the
`6
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`IPR2016-00019
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`Petitioners’ Reply
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`language of the claims “but also the whole specification is, pages after pages, very
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`clear on it.” Id. at 66:10-16 (emphasis added).
`
`Indeed, the expert testified that the claimed index “cannot” include the
`
`metafile:
`
`Q. Okay. Is your opinion that the index and metafile as described in
`the '434 patent must be separate and distinct data structures, is that
`predicated on an understanding that the -- the index cannot include
`the metafile?
`
`A. Yes. So it is my understanding that these are two separate -- they
`are described as two separate data structures. Yes.
`
`Id. at 74:15-22 (emphasis added). Thus, Patent Owner’s arguments to this same
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`panel of the Board, and the sworn testimony of its expert, confirm that the broadest
`
`reasonable interpretations of “index” and “metafile,” consistent with the
`
`specification, do not include any requirement that one must be included in the
`
`other.
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`Patent Owner asserts several additional arguments in support of its
`
`construction of “index” and “metafile,” but each is legally or logically erroneous.
`
`Patent Owner argues, for example, that the Board’s interpretation “construes index
`
`(a type of data structure) based solely on an intended function ‘to locate
`
`information in a database’”. Resp8-9. But the Board’s construction requires a
`
`“data structure,” which is obviously structural, not functional. See, e.g., Ex. 1030
`
`7
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`IPR2016-00019
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`Petitioners’ Reply
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`at 126 (Microsoft Computer Dictionary, definition of “data structure”). And Patent
`
`Owner never explains why defining a structure in terms of its function (e.g., screw
`
`driver, water pump) is improper. Compare In re Swinehart, 439 F.2d 210, 212
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`(C.C.P.A. 1971).
`
`Patent Owner also argues that the Board’s construction would supposedly
`
`cover things that are not indexes, such as a metafile. Resp8-9. But that argument
`
`simply assumes its conclusion (i.e., that a metafile cannot be an index) as its
`
`premise, without offering any evidence to support such a factual proposition. As
`
`Petitioner’s expert explained, an index would be understood by a person of
`
`ordinary skill to be a type of metafile. Ex. 2003 at 109:17-114:23. Nor is there
`
`any reason in law that one claim term could not be a subset or superset of another,
`
`or that two claim terms could not have overlapping claim scope.2
`
`Patent Owner also asserts, relying on cases decided under the Phillips
`
`
`
`2 IBM’s position in IPR2015-01481 is not to the contrary. Resp10-11. It merely
`
`argued that the claims do not require complete separation of the two data
`
`structures. Ex. 1033 at 4. That is consistent with Petitioner’s interpretation here –
`
`the claims require both an index and a metafile; they do not require complete
`
`separation of those structures, but nor do they require that one be included in the
`
`other.
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`8
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`IPR2016-00019
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`Petitioners’ Reply
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`standard, that “‘[n]owhere does the specification [of the ’434 patent] suggest’ a
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`broader interpretation of “index” than one that includes tags and metafiles.”
`
`Resp11, quoting Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313 (Fed. Cir.
`
`2007). But that is not the standard the Board is required to apply, and the
`
`specification does explicitly suggest a broader interpretation be defining both of
`
`these terms in ways that do not require that one be included in the other. Indeed,
`
`the definitional statements in the specification render the broader interpretation at
`
`least reasonable, so the Board must choose it over Patent Owner’s narrow
`
`interpretation under the broadest reasonable interpretation standard.
`
`Patent Owner also contends that the 434 Patent must be interpreted narrowly
`
`because it distinguishes existing “information retrieval systems” supposedly on the
`
`basis of the index/metafile combined structure. Resp12-14. The 434 Patent says
`
`nothing even remotely like that, and certainly never distinguishes the prior art on
`
`the basis of a metafile included in an index. See Ex. 1001 at 1:28-3:42. Rather, the
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`patent denigrates the prior art as not including “a universal search vocabulary”.
`
`Ex. 1001 at 2:22. It is only “[w]here the specification makes clear that the
`
`invention does not include a particular feature, that [the] feature is deemed to be
`
`outside the reach of the claims . . . .” SciMed Life Sys., Inc. v. Advanced
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`Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). That is simply
`
`not the situation here, at least with respect to a combined index and metafile data
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`9
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`structure.
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`Petitioners’ Reply
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`B. Okamoto Discloses Creating An Index And A Metafile
`
`Patent Owner argues that Okamoto does not satisfy Patent Owner’s narrow
`
`interpretations of “index” and “metafile,” Resp18-20, but since those claim
`
`interpretations are legally erroneous, as demonstrated above, its argument for
`
`patentability is as well.
`
`Patent Owner also argues that the “meta structure index” of Okamoto is not
`
`a “metafile” as claimed “because the ’434 patent makes clear that an index and a
`
`metafile are different data structures” and because “[t]here is nothing in the ’434
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`patent that would support a finding that a metafile is created from an index that has
`
`additional information added to it.” Resp21-22.
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`The claims, however, do not require that the index and metafile be wholly
`
`separate data structures or limit how they are to be created. They just require the
`
`creation of those structures, see Ex. 1001 at 15:40-44, which the Petition
`
`demonstrated was disclosed by Okamoto, Pet27-36, and Patent Owner does not
`
`even attempt to show a special definition or disclaimer that would narrow them in
`
`the manner it now argues.
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`Moreover, Patent Owner misunderstands Okamoto. Nothing in Okamoto
`
`suggests the structure index and the meta structure index are the same data
`
`structure. Okamoto discloses only that structure indexes are used to build the meta
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`10
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`Petitioners’ Reply
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`structure index. Ex. 1005 at 39:14-21. Each is a different data structure, although
`
`they may have much of the same content, and each is created separately. Id.; see
`
`also id. at 39:7-13, Fig. 49.
`
`C. Okamoto Discloses A Metafile Corresponding To A First Domain
`Tag
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`Patent Owner also argues that the claim 1 requirement of a metafile that
`
`“correspond[s] to a first domain tag” must be construed to mean a metafile
`
`“associated with a particular tag rather than being associated with an entire
`
`index.” Resp23 (emphasis added). It also contends that “merely because a meta
`
`structure index includes a node relating to a tag, does not show the metafile
`
`corresponds to the included tag.” Resp23-24.
`
`But nothing in the ordinary meaning of the simple English phrase
`
`“corresponds to” requires the limitations Patent Owner demands, and Patent
`
`Owner does not even attempt to show that the 434 Patent requires a special
`
`meaning be given to that phrase. Thus, any correspondence between metafile and
`
`domain tag satisfies that requirement of the claims.
`
`As the Petition demonstrated, Okamoto discloses a <THESIS> tag that is a
`
`domain tag which is added to the meta structure index because it is related to the
`
`content of the meta structure index via the Type Definition Table. Pet35. The
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`inclusion of that tag in the metafile is a “correspondence” between the two due to
`
`that relationship, and since it is a point of agreement or relation between metafile
`11
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`IPR2016-00019
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`Petitioners’ Reply
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`and tag. See Ex. 1031 at 512 (Webster’s Third New International Dictionary of the
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`English Language Unabridged, definition of “corresponding”). Moreover, that the
`
`tag in some sense is “associated” with the structure index from which it came is of
`
`no moment; the correspondence between the <THESIS> tag and the metafile of
`
`related tags that includes it remains regardless of whether the tag corresponds to
`
`other structures as well.
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`D. The Combination of Okamoto And XML Creating The Index By
`Defining A Plurality Of XML Tags
`
`Patent Owner also asserts the cited combination of Okamoto and XML does
`
`not satisfy the claim language of “creating the index by defining a plurality of
`
`XML tags including domain tags and category tags”. Resp24-29. According to
`
`Patent Owner, the use of XML documents with Okamoto would be inoperable
`
`because Okamoto’s system requires the use of a DTD file and XML documents
`
`“do not require ‘a specific DTD’”. Resp26.
`
`Patent Owner cites no evidence for the conclusion that Okamoto’s system
`
`would be inoperable with XML documents, see Resp26-27, so its unsupported
`
`lawyer argument should be ignored. Silergy Corp., v. Monolithic Power Sys., Inc.,
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`IPR2015-00803, Paper 9 at 20 (Sept. 11, 2015).
`
`Moreover, that XML documents “do not require ‘a specific DTD’” does not
`
`mean they cannot be used with a DTD. To the contrary, the XML specification
`
`expressly confirms that they can. Ex. 1006 XML Spec. 1.0 at 6 (“The XML
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`Petitioners’ Reply
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`document type declaration contains or points to markup declarations that provide a
`
`grammar for a class of documents. This grammar is known as a document type
`
`definition, or DTD.”) (emphasis in original). Furthermore, the Petition pointed out
`
`that the XML specification itself confirmed that XML was a subset of SGML and
`
`therefore XML has been designed for “interoperability” with SGML, Pet31; Ex. 1006
`
`at 1 (Abstract), which is the markup language used in Okamoto. Thus, the undisputed
`
`evidence of record confirms that the combination of Okamoto and XML would have
`
`been operable.
`
`E. Okamoto Discloses Creating An Alpha Portion And An XML
`Index Component
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`Patent Owner also asserts that Okamoto does not disclose the steps of claim
`
`2 requiring “for each record, creating” an “alpha portion” and an “XML index
`
`component.” Resp29-32.
`
`As the Petition demonstrated, Okamoto discloses creating a database by
`
`storing certain information in a document storage area. Pet37-40. This process of
`
`storing information into the database includes storing document data (an “alpha
`
`portion”), Pet37-39, and storing document tags (an “XML index portion”), Pet39-
`
`40. Thus, as part of the creation of the database, Okamoto discloses creating
`
`records with both an “alpha portion” and an “XML index component” by storing
`
`that information in an appropriate form to a storage area.
`
`Patent Owner asserts such functionality does not satisfy the claimed
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`“creating” because the information contained in those portions/components existed
`
`before the records were stored to the database, asserting that the
`
`portions/components are not “transformed” when stored and that “[o]ne of
`
`ordinary skill in the art does not understand storing the content of a document to a
`
`database to be same as creating the content.” Resp30 (emphasis added).
`
`But the claim does not require “creating the content” of the record or any
`
`type of “transformation”. It requires creating the portion/component of the record,
`
`and the only functionality disclosed in the specification of the 434 Patent that can
`
`arguably support this claim language is the storage of records to the database. See
`
`Ex. 1001 at 10:52-64; 12:32-34. Okamoto therefore discloses the functionality of
`
`claim 2 in exactly the same manner the 434 Patent does.
`
`Moreover, Patent Owner is again implicitly arguing for a construction of
`
`“creating” far narrower than its ordinary meaning but without attempting to justify
`
`it under the law. Like the 434 Patent, the prior art often characterized the storage
`
`of a record to a database as “creating” that record, even when it was simply
`
`copying the record wholesale from another database. See, e.g., Ex. 1032, U.S. Pat.
`
`No. 5,710,922 at 2:19-23. The ordinary meaning of “creating” must therefore
`
`embrace that functionality.
`
`Patent Owner also argues that claim 1 requires creating the index by
`
`defining a plurality of tags and claim 2, which depends from claim 1, separately
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`requires creating an XML index component for each record. Resp31. According
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`to Patent Owner, “the claims recite each of these limitations separately and the
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`prior art must teach each limitation separately”. Resp32.
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`However, the Petition demonstrated that Okamoto creates the index by
`
`defining a plurality of tags through the analysis of document elements and the
`
`creation of a structure index. Pet27-29. The Petition also demonstrated that an
`
`XML index component is created for each record when the record is stored to the
`
`database. Pet39-40. Thus, the Petition did identify two separate processes in
`
`Okamoto that satisfy these claim requirements.
`
`F. Okamoto Discloses The Domain Tag Requirements Of Claims 3
`And 6
`
`Patent Owner next argues that the <JOURNAL> and <TEXT> tags of
`
`Okamoto cannot be both domain tags and category tags. Resp32-33. It contends
`
`that “it is improper to rely on an argument that uses these terms interchangeably to
`
`show unpatentability,” citing Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch.,
`
`LLC, 677 F.3d 1361, 1369 (Fed. Circ. 2012) and its expert’s unsupported statement
`
`that somehow one of skill would not read the claims in this manner, Ex. 2001 at
`
`¶¶49–50; Resp32-33.
`
`Patent Owner mischaracterizes the Petition, which never used the
`
`<JOURNAL> and <TEXT> tags “interchangeably.” Rather, the Petition
`
`demonstrated how the “domain tag” and “category tag” claim requirements were
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`satisfied by Okamoto in two different ways. First, <THESIS> satisfied the
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`interpretation of “domain tag” because it was associated with <JOURNAL> and
`
`<TEXT>, both of which satisfied the interpretation of “category tags”. Pet41.
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`That was enough for the claim to be satisfied.
`
`Nevertheless, the Petition also showed that <JOURNAL> and <TEXT>
`
`satisfied the interpretation of “domain tag” because they were associated with
`
`<TITLE> and <CHAPTER>, both of which satisfied the interpretation of
`
`“category tags”. Pet41.
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`Thus, just as a person may be both a parent and a child, certain tags
`
`disclosed in Okamoto are both domain tags and category tags. That does not mean
`
`that they are being used “interchangeably,” but rather that Okamoto satisfies the
`
`claims in alternative ways. Chicago Bd. Options Exch., is simply irrelevant.
`
`What Patent Owner is really arguing is that the Board’s claim constructions
`
`for “domain tag” and “category tag” should be narrowed to be mutually exclusive
`
`such that no single tag could satisfy both. But neither Patent Owner nor its expert
`
`attempt to justify such a narrow interpretation based on the intrinsic record,
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`Resp32-33; Ex. 2001 at ¶¶49–50, so its proposed reading of these claim terms
`
`should be rejected.
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`G. Okamoto Discloses The Hierarchy Of Claim 5
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`Patent Owner next argues Okamoto does not disclose “a hierarchy of tags”
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`as required by claim 5, asserting that this claim language “is claiming a priority
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`between the tags in a metafile that are related to the first domain tag,” Resp33-34,
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`though it never explains what it means by “a priority”.
`
`Like the other arguments in the Response, this one requires an implicit claim
`
`construction that departs from the ordinary meaning of the claim language without
`
`any basis for doing so. Patent Owner’s primary justification for its attempt to read
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`the extraneous “priority” language into the claims is a single sentence in the
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`specification describing a preferred embodiment. Ex. 1001 at 8:1–7. And even
`
`that sentence is prefaced with the qualifier: “for example.” Patent Owner’s other
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`citations similarly describe optional aspects of a preferred embodiment. Ex. 1001
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`at 8:55–57(“The metafile can also establish a hierarchy by prioritizing ...”); 9:43–
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`47 (“The XML tags can be used to establish a hierarchy ...”) (all emphasis added).
`
`Optional aspects of a preferred embodiment do not limit the claims. Laitram Corp.
`
`v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988).
`
`The claim only recites creating a “hierarchy”—no special hierarchy is
`
`required. The notion of a “hierarchy,” moreover, was well-known in this particular
`
`field and did not require the concept of a priority. See Ex. 1030 at 218 (Microsoft
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`Computer Dictionary, definition of “hierarchy”). The Board should apply the
`
`ordinary meaning of “hierarchy,” which is satisfied by Okamoto, as the Petition
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`demonstrated (Pet43) and Patent Owner does not
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