Paper No. 16
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`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. IPR2016-00020
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`
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`Title:
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`
`PETITIONER’S REPLY
`________________________
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`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. IPR2016-00020
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`
`
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`
`Title:
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`PETITIONER’S REPLY
`________________________
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`IPR2016-00020
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`Petitioners’ Reply
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`Table of Contents
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`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIMS 7, 8, 12 AND 14 ARE UNPATENTABLE ..................................... 3
`
`A.
`
`B.
`
`C.
`
`The Claims Do Not Require An Index Including Metafiles ................. 3
`
`Okamoto Discloses Creating An Index And A Metafile .................... 10
`
`Okamoto Discloses The “Determining” Element Of Claim 14 .......... 11
`
`D. Okamoto Discloses The Determining Step Of Claim 7 ...................... 15
`
`E.
`
`F.
`
`Okamoto Discloses The If/Then Step Of Claim 7 .............................. 17
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`Dr. Naughton’s Testimony Is Entitled To Dispositive Weight ........... 20
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`III. CONCLUSION .............................................................................................. 21
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`i
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`IPR2016-00020
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`TABLE OF AUTHORITIES
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`Petitioners’ Reply
`
` Page(s)
`
`Cases
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011) ........................................................................ 3, 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) ........................................................................................ 20
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) .......................................................................... 10
`
`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, 4
`
`Voda v. Cordis Corp.,
`536 F.3d 1311 (Fed. Cir. 2008) ............................................................................ 3
`
`
`
`
`
`ii
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`IPR2016-00020
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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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`IPR2016-00020
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`Petitioners’ Reply
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`1025
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`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]
`
`RESERVED
`
`RESERVED
`
`International Business Machines v. Intellectual Ventures I LLC,
`IPR2015-01481, Paper 24, Petitioner’s Reply (June 20, 2016)
`
`iv
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`IPR2016-00020
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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
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`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. Resp7-16. 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 25
`
`of its Response, it argues that “the ’434 patent makes clear that an index and a
`
`metafile are different data structures.” Resp25 (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.
`
`2
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`IPR2016-00020
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`Petitioners’ Reply
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`II. CLAIMS 7, 8, 12 AND 14 ARE UNPATENTABLE
`
`A. The Claims Do Not Require An Index Including Metafiles
`
`Patent Owner’s principle argument is that the Board must construe “index”
`
`and “metafile” narrowly based on isolated passages in the specification that refer to
`
`“the present invention.” Resp12-13. 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. Resp12 (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
`
`3
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`IPR2016-00020
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`Petitioners’ Reply
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`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
`
`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.”)
`
`
`
`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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`IPR2016-00020
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`Petitioners’ Reply
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`The inventors’ lexicography confirms that the invention does not require the
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`metafile to be in the index and that the specification does not support such a
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`limitation.
`
`Given these other portions of the intrinsic record, the specification passages
`
`Patent Owner cites (see Resp10-12) do not require that limitation be read into the
`
`claims. Moreover, those passages do not say what Patent Owner thinks they say.
`
`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
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`index includes both tags and metafiles, which is Patent Owner’s position in this
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`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
`
`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
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`5
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`Petitioners’ Reply
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`“an exemplary embodiment of the present invention.” Ex. 1001 at 3:50-51. Thus,
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`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.
`
`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.
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`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.
`6
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`IPR2016-00020
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`Petitioners’ Reply
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`Ex. 1029 at 66:4-9 (emphasis added).
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`The expert also confirmed that the specification of the 434 Patent does not
`
`support the narrow interpretation Patent Owner requests here, testifying that his
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`conclusion that they must be “separate and distinct” is based not only on the
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`language of the claims “but also the whole specification is, pages after pages, very
`
`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.
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`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
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`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.
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`7
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`IPR2016-00020
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`Petitioners’ Reply
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`Patent Owner argues, for example, that the Board’s interpretation “construes index
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`(a type of data structure) based solely on an intended function ‘to locate
`
`information in a database’”. Resp9-10. But the Board’s construction requires a
`
`“data structure,” which is obviously structural, not functional. See, e.g., Ex. 1030
`
`at 126 (Microsoft Computer Dictionary, definition of “data structure”). And Patent
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`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. Resp9-10. But that argument
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`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
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`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
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`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
`
`
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`2 IBM’s position in IPR2015-01481 is not to the contrary. Resp11. 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 –
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`8
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`IPR2016-00020
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`Petitioners’ Reply
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`Patent Owner also asserts, relying on cases decided under the Phillips
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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 no require that one be included in the other. Indeed,
`
`the definitional statements in the specification render the broader interpretation at
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`least reasonable, so the Board must choose it over Patent Owner’s narrow
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`interpretation under the broadest reasonable interpretation standard.
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`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. Resp13-15. 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”.
`
`
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`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
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`other.
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`9
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`IPR2016-00020
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`Petitioners’ Reply
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`Ex. 1001 at 2:22. It is only “[w]here the specification makes clear that the
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`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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`structure.
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`B. Okamoto Discloses Creating An Index And A Metafile
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`Patent Owner argues that Okamoto does not satisfy Patent Owner’s narrow
`
`interpretations of “index” and “metafile,” Resp23-25, but since those claim
`
`interpretations are legally erroneous, as demonstrated above, its argument for
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`patentability is as well.
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`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
`
`patent that would support a finding that a metafile is created from an index that has
`
`additional information added to it.” Resp25-27.
`
`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
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`creation of those structures, see Ex. 1001 at 15:40-44, which the Petition
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`demonstrated was disclosed by Okamoto, Pet28-29, and Patent Owner does not
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`10
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`IPR2016-00020
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`Petitioners’ Reply
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`even attempt to show a special definition or disclaimer that would narrow them in
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`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
`
`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 The “Determining” Element Of Claim 14
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`Patent Owner also asserts that Okamoto does not disclose “determining that
`
`the second tag is included in a metafile associated with the first tag” as required by
`
`claim 14 because the Petition cites to the analysis for a similar, though slightly
`
`different, element of claim 7.3 According to Patent Owner, “claim 7 does not
`
`recite any equivalent limitation to ‘determining that the second tag is included in a
`
`metafile associated with the first tag.’” Resp21. This same argument was rejected
`
`by the Board in the Institution Decision, which explained that it was “persuaded
`
`
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`3 The actual language of claim 14 is “identifying a second tag that is associated
`
`with the request by determining that the second tag is included in a metafile
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`associated with the first tag”. Ex. 1001 at 17:1-3.
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`11
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`IPR2016-00020
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`Petitioners’ Reply
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`that the mapping of the elements to Okamoto presented under claim 7 allows
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`assessment of claim 14 without requiring undue searching of the record.”
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`InstDec17.
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`The relevant analysis in the Petition explained that the Okamoto system
`
`makes a determination of whether a search request includes an “alias” signal. The
`
`presence of an “alias” signal in the request indicates the Alias Structure Index
`
`should be searched, while the absence of an “alias” signal in the request indicates
`
`the Meta Structure Index should be searched. See Pet28-29.
`
`The analysis in the Petition further pointed out that in the situation where the
`
`Meta Structure Index will be searched, the search request will be converted via the
`
`Type Definition Table. See, e.g. Pet29, citing Ex. 1003¶219 and Ex. 1005 at
`
`42:58–43:6 (“. . . In the case where it is specified by element type name, on the
`
`other hand, it is converted into the type with reference to the type definition table
`
`4803, . . .”). As both the Petition and Okamoto explain, conversion of a search
`
`request using the Type Definition Table identifies additional, related tags that are
`
`stored in the Meta Structure Index and that will be used to execute the search
`
`request. See Pet16-18; Ex. 1005 at 3:66-4:22, 5:47-52; 39:34-40:6; 40:26-41:15;
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`44:45-45:29; Figs. 50 & 59.
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`The cited functionality of Okamoto therefore satisfies the “determining
`
`whether a first metafile comprising a second tag corresponds to the first tag”
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`12
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`IPR2016-00020
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`Petitioners’ Reply
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`language of claim 7 because the determination that no “alias” signal is included in
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`the search request indicates the Meta Structure Index (“a first metafile”) containing
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`additional, related tags should be searched, and therefore “corresponds to the first
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`tag”.
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`The cited functionality also satisfies the language of claim 14 requiring
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`“identifying a second tag that is associated with the request by determining that the
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`second tag is included in a metafile associated with the first tag” because resort to
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`the Type Definition Table identifies those related tags that are included in the Meta
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`Structure Index (“determining that the second tag is included in a metafile
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`associated with the first tag”) and which should be used when executing the search
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`request (“identifying a second tag that is associated with the request”).
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`Thus, while the “determining” language of claims 7 and 14 are not identical,
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`they are extremely similar and the Petition demonstrated that the cited functionality
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`of Okamoto satisfies both.
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`Patent Owner also contends, without explaining how, that Petitioner’s expert
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`“conceded” that Okamoto does not disclose this limitation of claim 14, quoting
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`testimony concerning paragraph 224 of the expert’s declaration and the example of
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`a “journal tag”. Resp21. However, the cited testimony did not concern claim 14
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`or any of the evidence cited to show that Okamoto discloses the “determining”
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`language of claim 14. Specifically, for that portion of claim 14 the Petition cited
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`its prior analysis of claim element 7(d) (Pet28-29) and Dr. Naughton’s testimony
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`about that element (Ex. 1003¶¶216-220), see Pet35-36, and none of that analysis
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`ever mentions the “journal tag”.4
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`Paragraph 224 of Dr. Naughton’s declaration, on the other hand, was never
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`cited or relied on in any way as satisfying the “determining” language of claim 14.
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`In fact, Dr. Naughton was never asked whether any portion of Okamoto actually
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`cited in the Petition as disclosing the “determining” language of claim 14 satisfied
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`that claim element, so the testimony cited by Patent Owner is irrelevant.
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`Patent Owner also argues that “any suggestion Okamoto ‘determines’ a
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`second tag is included in a metafile wouldn’t make technical sense” because the
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`Meta Structure Index “include[s] all tags identified by any document stored in
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`Okamoto’s database.” Resp22. Patent Owner is confused. The Meta Structure
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`Index does indeed include all tags found in documents registered in the database,
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`but that does not mean that every tag included in every search request can be found
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`in the Meta Structure Index. Thus, while locating a tag in the Type Definition
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`
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`4 The relevant portions of that analysis, see Pet29; Ex. 1003¶¶217-219, also cited
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`various passages of Okamoto, none of which mention the “journal tag.” See Ex.
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`1005 at 40:60–41:2; 42:58–43:6; 47:58–64; 49:31-58; Figures 52, 65 and 71 (steps
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`5701, 5702, 7101, 7102 and 7103).
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`14
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`Table confirms that such a tag is also included in the Meta Structure Index,
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`Okamoto provides no guarantee that one can locate such additional tags for every
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`search request. Locating a second tag in the Type Definition Table does therefore
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`make “technical sense” because, as the Petition and Dr. Naughton explained, it
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`permits a search request to be expanded to capture closely related documents that
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`would not otherwise be captured by the search, see Pet17-18; Ex. 1003¶¶105-106,
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`at least for those structural elements (“tags”) previously processed by the Okamoto
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`system.
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`D. Okamoto Discloses The Determining Step Of Claim 7
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`Patent Owner next asserts that Okamoto does not disclose the element of
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`claim 7 requiring “determining whether a first metafile … corresponds to the first
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`tag” because “Petitioners do not even allege the determination of what metafile is
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`searched depends at all on what nodes are actually included in a metafile”.
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`Resp27-29.
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`But claim 7 does not require a determination that “depends [] on what nodes
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`are actually included in a metafile”. It merely requires “determining” that a
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`metafile “corresponds to” a tag associated with the search request. See Ex. 1001 at
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`16:12-15 (“… receiving a request for information; identifying a first tag that is
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`associated with the request; determining whether a first metafile comprising a
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`second tag corresponds to the first tag …”) (emphasis added).
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`The claim words “determining” and “corresponds to” are ordinary, English
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`words that Patent Owner does not even attempt to show must be given a special
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`interpretation based on the intrinsic record. Indeed, the specification never
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`explains how the claimed “determining” occurs, it merely states that “the metafiles
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`that correspond to the identified XML tags are identified.” Ex. 1001 at 12:57-58
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`(emphasis added); see also id. at 13:52-53 (stating that “then metafiles for the
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`identified XML tags are located,” but without explaining how they are “located”).
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`Thus, there is no basis in the record to adopt the strikingly narrow interpretation of
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`this claim language Patent Owner implicitly demands.
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`As summarized above, the Petition demonstrated that Okamoto disclosed
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`this element of claim 7 because the determination that no “alias” signal is included
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`in the search request indicates the Meta Structure Index (“a first metafile”)
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`containing additional, related tags should be searched, and therefore “corresponds
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`to the first tag,” i.e., the tag included in the search request. At least under the
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`broadest reasonable interpretation of “determining” and “corresponds to,” that
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`functionality satisfies the claim.
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`Patent Owner further argues that the metafile of Okamoto cannot correspond
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`to the tag, asserting that “merely because a meta structure index includes a node
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`relating to a tag, does not show the metafile corresponds to the included tag.” Id.
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`at 29-30. But Patent Owner provides no evidence or argument supporting this ipse
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`dixit assertion, which is again just an implicit demand that the Board adopt an
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`unnaturally narrow interpretation of the claim phrase “corresponds to”. Indeed,
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`Patent Owner asks that “corresponds to” be construed by defining what it does not
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`mean (including the tag in the metafile) rather than what it does mean. But there is
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`no basis in the intrinsic record for such an interpretation, and Patent Owner points
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`to none.
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`In any event, the Petition never argued that the claimed “determining” was
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`satisfied by Okamoto because “a meta structure index includes a node”.5 Rather,
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`the Petition demonstrated that the claimed “determining” is accomplished in the
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`system of Okamoto by a determination of whether the search request contains the
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`“alias” signal or not, which instructs the system which metafile is to be searched.
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`Thus, in the system of Okamoto the “metafile” corresponds to the “first tag” of the
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`search request because the user who submitted the search request commanded the
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`system to use that metafile in the search. Under the broadest reasonable
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`interpretation, that is clearly a form of correspondence.
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`E. Okamoto Discloses The If/Then Step Of Claim 7
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`Patent Owner also argues that Okamoto does not satisfy the language of
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`5 However, that is another form of correspondence satisfying the claim under the
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`broadest reasonable interpretation of “corresponds to”.
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`claim element 7(e) requiring “if the first metafile corresponds to the first tag, then
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`determining whether the second tag is relevant to the request”. According to
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`Patent Owner, this “claim is written as ‘if…then…’ meaning that the second clause
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`occurs in response to the first clause being true,” Resp30, and that Okamoto
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`supposedly does not disclose such a requirement because “any determination in
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`Okamoto that ‘Journal’ is related to the search request is not performed in response
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`to a determination that the search request does not include an “Alias:” structural
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`condition but rather is performed in response to a determination that the search
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`request includes a ‘Type:’ structural condition,” id. at 31 (emphasis added).
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`Patent Owner misunderstands Okamoto. As summarized above, with
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`respect to claim 7, Okamoto discloses an Alias Structure Index and a Meta
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`Structure Index, and also discloses a determination of which to use for a particular
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`search request depending on whether the “alias” signal is included in the request.
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`Pet28-29. For the specific analysis of claim element 7(e), the Petition cited
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`Okamoto’s explanation of how the Meta Structure Index is searched in the context
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`of a search request that included a “Type” signal, noting that such a search request
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`would be expanded in a particular way by the system of Okamoto using the Type
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`Definition Table. Pet29-31. Thus, with respect to claim 7, the Petition relied on
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`the disclosure of Okamoto in which, first, a determination is made, based on the
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`absence of the “alias” signal, to use th
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