Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 28
`Entered: 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.
`____________
`
`IPR2016-00020
`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
`
`
`
`
`
`

`

`IPR2016-00020
`Patent 6,510,434 B1
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`
`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 requesting inter partes review of claims 7, 8,
`12, 14, 27, and 28 (“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 7, 8, 12, and 14 of the ’434 patent on April 18, 2016. Paper 8 (“Dec.
`on Inst.” or “Institution Decision”).
`During the course of trial, Intellectual Ventures (“IV”) filed a
`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 IPR2016-00019, 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).
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`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 7, 8, 12, and 14 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 is 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 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
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`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 IPR2016-00019 at the
`same time as this decision, determining that claims 1–6 of the ’434 patent
`are unpatentable.
`The Instituted Grounds of Unpatentability
`C.
`We instituted the instant inter partes review of claims 7, 8, 12, and 14
`
`of the ’434 patent based on the following ground of unpatentability (Dec. on
`Inst. 22):
`Reference(s)
`Okamoto1,2
`
`
`Claims
`7, 8, 12, and 14
`
`Basis
`§ 103(a)
`
`C. 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].
`
`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
`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.
`
`
`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.
`
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`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.
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`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
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`database is search to identify records that include the tags of the key. Id. at
`13:17–24; Fig. 6A, steps 610, 612.
`
`E. Illustrative Claim
`Claim 7, reproduced below, and with brackets added on claim
`elements, is illustrative of the claims at issue in this proceeding.
`7. A method for searching a database of records using an index
`including a plurality of tags, comprising the steps of:
`[a] receiving a request for information;
`[b] identifying a first tag that is associated with the request;
`[c] determining whether a first metafile comprising a second tag
`corresponds to the first tag;
`[d] if the first metafile corresponds to the first tag, then
`determining whether the second tag is relevant to the request;
`[e] if the second tag is relevant to the request, then combining
`the first tag and the second tag to create a key; and
`[f] using the key to search the database to locate at least one
`record that includes the first tag and the second tag.
`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.
`
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`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).
`
`Old Republic proposed constructions for a number of claim terms in
`the Petition. Pet. 7–11.3 IV contends that the only claim terms that require
`construction to resolve this proceeding are “index” and “metafile.” PO
`Resp. 9. Old Republic disputes IV’s construction of these terms. Pet. Reply
`3–9.
`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”
`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. 9. 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 15–16.
`
`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,
`
`3 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.
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`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.
`9–10 (citing Ex. 2001 ¶ 30). 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 ¶¶ 31–33). 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.4
`Id. (citing Int’l Bus. Machines Corp., v. Intellectual Ventures I LLC, Case
`IPR2015-01481, Paper No. 24). IV additionally 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
`
`
`4 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.
`
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`intent to limit the invention” by the proposed claim construction. See id. at
`11–15 (citing, e.g., Ex. 1001, 3:8–37; 4:34–50; 7:18–31; 15:5–24).
`
`In construing claim terms in light of their broadest reasonable
`interpretation, the Federal Circuit has stated that “[t]he protocol of giving
`claims their broadest reasonable interpretation . . . does not include giving
`claims a legally incorrect interpretation.” In re Skvorecz, 580 F.3d 1262,
`1267 (Fed. Cir. 2009). “[A] claim term should be construed consistently
`with its appearance in other places in the same claim or in other claims of
`the same patent.” Rexnord Corp. v. Laitram Corp., 227 F. 3d 1336, 1342
`(Fed. Cir. 2001).
`
`Here we look to all the claims of the ’434 patent to inform our
`construction of the term “index.” Claim 1, in particular, 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 claim 1, 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 Specification 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:
`
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`“[p]referably, the index includes tags that correspond to categories and
`domains,” indicating that the inclusion of a tag in an index is to 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.
`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 to be
`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
`maintain the construction of the term “metafile” as a “data structure
`comprising additional information about a tag, including related tags.”
`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
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`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
`note that the prior art of record in this proceeding—namely, Okamoto—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.
`B. Obviousness of Claims 7, 8, 12, and 14 over Okamoto
`In support of its asserted ground of unpatentability, Old Republic
`
`explains how Okamoto teaches the subject matter of claims 7, 8, 12, and 14.
`Pet. 26–37, 51–53. Old Republic also relies upon the Naughton Declaration
`(Ex. 1003), to support its positions. In its Response, IV contends that Old
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`Republic fails to demonstrate that Okamoto renders claims 7, 8, 12, and 14
`obvious because the references fail to teach several limitations of the claims
`at issue and Old Republic employs impermissible hindsight. PO Resp. 16–
`35. 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 the limitations at issue are taught by Okamoto under legally
`correct claim constructions, that IV attempts to impermissibly import
`limitations not in the claims, and that IV misapplies and misinterprets the
`rationale of Old Republic’s challenges to the claims. Pet. Reply 10–19.
`
`We begin our analysis with the principles of law that generally apply
`to an obviousness ground, followed by a brief summary of Okamoto, and
`then we address the arguments presented by the parties.
`1. Principles of Law
`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).5 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
`
`
`5 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.
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`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 documents” 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, 13:7–10. When a document is to be
`registered, its DTD file is analyzed to create a document structure table. Id.
`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 and used, 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:
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`Figure 49 is a diagram showing an example of generating
`a meta structure index. Ex. 1005 at 8:40–42.
`
`Okamoto also discloses the creation of an Alias Structure Index by the
`generation of an “alias definition table,” from user input or by extraction of
`the structure of a structure index, which identifies and associates a subset of
`the nodes found in the registered documents. Ex. 1005 at 48:37–45. The
`Alias Structure Index, “unlike the structure index, is not always generated
`for tracing the elements of the whole document, but is generated by cutting
`out the subelements of the document structure from the structure index and
`superposing them one on another.” Id. at 47:30–34. A user can search the
`database using the Alias Structure Index, rather than the Meta Structure
`
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`Index, by indicating this manner of searching in the search request. Id. at
`49:44–46. Figure 65 of Okamoto is reproduced below.
`
`
`
`Figure 65 is a diagram depicting an Alias Structure Index. Ex. 1005 at
`9:23–24.
`
`
`
`3. Analysis
`a. Claims 7 and 14
`IV asserts that Old Republic fails to demonstrate that independent
`
`claims 7 and 14 are obvious over Okamoto. PO Resp. 16–35. We will
`present a summary of Old Republic’s obviousness challenge, then address
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`IV’s arguments.
`i. Basis of Old Republic’s obviousness challenge
`Old Republic contends that Okamoto teaches all the elements of
`
`independent claims 7 and 14. Pet. 26–32, 35–36, 51–52.6 The Petition
`alleges that Okamoto discloses searching a database of records using an
`index including a plurality of tags by its teaching of a structure index that
`includes meta-nodes that correspond to the tags of structured documents. Id.
`at 26. The Petition further contends that Okamoto discloses receiving a
`request for information such as a search request. Id. at 27. The Petition
`asserts that Okamoto determines whether the request includes a structural
`condition (id.), which is shown as “Type: Attribute/Type: Subject” depicted
`in Figure 59 reproduced below. Id. at 28, 30 (citing, e.g., Ex. 1005, 4:29–34,
`44:46–45:11, Fig. 59; Ex. 1003 ¶¶ 213, 222).
`
`
`6 The Petition includes an asserted ground of anticipation of claims 7, 8, 12,
`and 14 by Okamoto, as well as a ground of obviousness over Okamoto for
`these claims. Pet. 26–37, 51–52. We declined to institute on the
`anticipation ground. For the instituted obviousness ground, Old Republic
`relies upon Okamoto’s disclosures for individual claim elements limitations
`as discussed in the Petition in the anticipation section, and we will similarly
`refer to that section of the Petition herein. See Pet. 26–37.
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`Figure 59 is a diagram of an embodiment showing a structure condition
`conversion. Ex. 1005, 9:4–6, 44:46–45:4.
`Old Republic further asserts that Okamoto determines whether a
`
`search request includes an alias. Pet. 29 (citing Ex. 1005, 49:31–51 (“in the
`case where an alias is used for the structural condition, the string “Alias:”,
`for example, is added to the head of the structural condition.”)). It contends
`that Okamoto “equates a ‘structural condition’ of a search with one or more
`tags associated with an element to be searched.” Id. at 27–28. Old Republic
`identifies a search request including a <THESIS> tag or a <SUBJECT> tag
`in the structural condition as examples of this association. Id. at 28 (citing
`Ex. 1005, 43:16–25, 22:44–55; 42:50–58, 45:12–16, Figs. 19, 57). With
`this, the Petition argues that these tags teach “‘a first tag that associated with
`the request’ because it is included in the request” and the “determination of
`whether the search request includes a ‘structural condition,’ is ‘identifying a
`first tag that is associated with the request.’” Id.
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`The Petition identifies the Alias Structure Index of Okamoto as
`
`disclosing a “metafile” based on the view that “it is a list of related tags that
`implements a hierarchy between the tags.” Pet. 28. Okamoto’s Meta
`Structure Index is also identified as teaching a metafile for similar reasons.
`Id. at 28–29. Old Republic asserts that “[t]he presence of an alias in the
`search request indicates the Alias Structure Index should searched . . . while
`the absence of an alias in the search request indicates the Meta Structure
`Index should be searched.” Id. at 29. Old Republic contends that “[t]he
`determination of whether the search request includes an alias is a
`determination of ‘whether a first metafile … corresponds to the first tag’
`because it determines which ‘metafile’ will be searched with ‘the first tag’ of
`the search request.” Id. at 29 (citing Ex. 1003 ¶ 217).
`
`Turning to the limitation, “if the first metafile corresponds to the first
`tag, then determining whether the second tag is relevant to the request,” the
`Petition asserts that if a search request is received that includes a structural
`condition of “Type: Attribute/Type: Subject, ” the tag <SUBJECT> is an
`example of a “first tag that is associated with the request,” and further that
`the “search request is converted to one with the structural condition of:
`‘Journal/ {Title:Subject}’.” Pet. 30 (citing, Ex. 1005, 44:56–45:31, Fig. 59).
`Old Republic argues that
`the converted search request includes three tags:
`‘<JOURNAL>,’ ‘<TITLE>’ and ‘<SUBJECT>’.
`The identification of the tag “<JOURNAL>” using
`the Type Definition Table is “determining whether
`the second tag is relevant to the request” because it
`is a determination
`that ‘<JOURNAL>’ (“the
`second tag”) should be added to the converted
`search request.
`
`Pet. 30.
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`Old Republic then concludes that “Okamoto discloses ‘if the first
`
`metafile corresponds to the first tag [by the absence of an alias in the search
`request], then determining whether the second tag [<JOURNAL>] is
`relevant to the request [by locating it in the Type Definition Table and
`thereby determining that it should be added to the converted search
`request].’” Pet. 30–31.
`
`As to the motivation to combine embodiments, Old Republic contends
`that “[t]he Average Artisan would have understood the functionality of the
`different embodiments could have been combined in different ways and
`would have been motivated to do so in order to achieve the most efficient
`result in a particular circumstance,” (Pet. 52), where
`[i]ndeed, there would have been a motivation to
`combine each as set forth above in order to create a
`system that accurately and efficiently searches a
`set of structured documents having different
`document structures by disambiguating structure
`terms in a search request and identifying synonyms
`in order to focus the search on those elements of
`the structured documents likely to include the
`search term strings.
`Pet. 53 (citing Ex. 1005, 4:23–17; Ex. 1003 ¶ 207).
`ii. Okamoto’s teaching of “using an index” and
`“metafile” (claim 7 and claim 14)
`IV argues that Okamoto’s structured index does not read on the
`
`“index” of claims 7 and 14. PO Resp. 23–24. The contention is based upon
`IV’s proposed claim construction of “index” and “metafile,” alleged to
`impermissibly result in an index being included in a metafile under Old
`Republic’s mapping of the claim elements to Okamoto. Id. We are not
`persuaded by IV’s argument because under the claim construction adopted
`
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`for “index” and “metafile,” supra Section II.A, the scenario that IV alleges
`does 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. 25–27. 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 26 (citing Ex. 1004, 39:7–13; Fig. 53;
`Ex. 2001 ¶ 41). 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.
`
`IV’s arguments are misplaced. The Petition addresses the issues of
`the creation of the “index” and the “metafile” (Pet. 26–31), 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 14–15). The
`claims require “using an index” and a “metafile,” but there is no requirement
`in the claims that the index and metafile have to be distinct, separate
`structures under the claim construction adopted, which is consistent with the
`use of these terms in the ’434 patent.
`
`We have reviewed Old Republic’s explanations and the supporting
`evidence and are persuaded that the claim limitations at issue are disclosed
`in Okamoto in the view of a person of skill in the art.
`iii. Okamoto’s teaching of “determining whether a first metafile
`comprising a second tag corresponds to the first tag” (cl