Trials@uspto.gov
`571-272-7822
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`Paper 8
`Entered: September 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`EVERNOTE CORPORATION,
`Petitioner,
`
`v.
`
`TALSK RESEARCH, INC.,
`Patent Owner.
`
`——————
`Case IPR2017-01154
`Patent 7,178,097 B1
`
`——————
`
`Before SALLY C. MEDLEY, GARTH D. BAER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
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`
`Paper 8
`Entered: September 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`EVERNOTE CORPORATION,
`Petitioner,
`
`v.
`
`TALSK RESEARCH, INC.,
`Patent Owner.
`
`——————
`Case IPR2017-01154
`Patent 7,178,097 B1
`
`——————
`
`Before SALLY C. MEDLEY, GARTH D. BAER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2017-01154
`Patent 7,178,097 B1
`
`
`Petitioner Evernote Corporation filed a Petition (“Pet.”) to institute an
`inter partes review of claims 1–28 of U.S. Patent No. 7,178,097 (Ex. 1001,
`“the ’097 patent”) pursuant to 35 U.S.C. § 311 et seq. Patent Owner Talsk
`Research, Inc. filed a preliminary response (“Prelim. Resp.”) to the Petition.
`We have authority under 35 U.S.C. § 314.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see also 37 C.F.R. § 42.108.
`Upon consideration of the Petition, we conclude that the information
`presented shows there is a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of claims 1–28 of the ’097 patent.
`
`I.
`
`BACKGROUND
`THE ’097 PATENT (EX. 1001)
`A.
`
`The ’097 patent issued on February 13, 2007, based on U.S. Patent
`Application No. 09/711,791, filed Nov. 13, 2000. See Ex. 1001, front page.
`The patent is directed to “a method and system for using a communications
`network such as the Internet to archive and retrieve bibliography information
`and reference material cited in a manuscript.” Id. at 1:10–13.
`The ’097 patent states that “[a]uthors of manuscripts and documents
`such as books and research papers frequently cite material such as articles
`and other books in a bibliography section,” id. at 1:17–19, and that
`“[a]uthors and researchers are now starting to cite information from websites
`in their manuscripts,” id. at 1:48–49. However, according to the ’097 patent,
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`“[t]he problem with citing a website is that the fluid, ever modifiable
`potential of the content of the website does not guarantee availability and
`true verification of the material actually used by the author.” Id. at 2:16–19;
`see also Prelim. Resp. 3. Sources may, for example, be modified, moved,
`removed from the Internet, or made inaccessible, often without notice. See
`Ex. 1001, 1:58–63; see also Prelim Resp. 3.
`The ’097 patent states that “in light of the [e]ffect the cited web based
`material might have had on a given manuscript, it becomes important for
`referees, editors, other researchers, and the audience of the manuscript to
`ascertain the credibility of the cited information available on those Internet
`websites (sources).” Id. at 2:41–45. Therefore, the ’097 patent describes a
`method and system to “protect the cited information from continuous
`modification and removal of the reference material by providing an avenue
`for the audience to gain access to an exact copy of the reference material
`cited by the author of the manuscript,” and to “provide a means of
`verification of the reference material.” Id. at 4:57–62. The system includes
`a database that acts as the bibliography of the manuscript, and that stores a
`verbatim copy of the website as it existed as of the date of access by the
`author. See id. at 5:46–56.
`An embodiment is depicted in Figure 1 of the ’097 patent, reproduced
`below:
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`Figure 1 is a block diagram depicting a system 10, which includes a
`communications network such as Internet 12, author 14 of a manuscript,
`audience 16 of the manuscript, and database 18. See id. at 5:64–6:4. As the
`patent describes, author 14 cites reference material from a source on Internet
`12 in a bibliography that contains an identification of the cited reference
`material, while audience 16 may use the identification to obtain, review, and
`verify a copy of the material from database 18. See id. at 6:4–12. The
`system assigns a “distinctive key” to the website identification and to the
`copy of the website on database 18. See id. at 6:34–50.
`
`B.
`
`EXEMPLARY CLAIMS
`
`Claims 8 and 17 of the ’097 patent illustrate the subject matter at issue
`in the Petition:
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`8. A method for archiving reference material cited in a
`bibliography of a manuscript by an author of the manuscript,
`the method comprising:
`(a) an author of a manuscript using a web site on the Internet as
`a reference for the manuscript;
`(b) the author transmitting the address of the webs site to a
`database connected to the Internet using a first
`communications device connected to the Internet;
`(c) the database obtaining a copy of the web site from the
`Internet upon receiving the web site address from the
`author such that the copy of the web site obtained by the
`database is verbatim to the web site as on the Internet at
`the time the author transmitted the web site address to
`the database;
`(d) associating a distinctive key to the copy of the web site;
`(e) storing at the database the copy of the web site with the
`distinctive key;
`(f) the author citing the web site as being a reference for the
`manuscript by listing identification of the web site along
`with the distinctive key in the bibliography of the
`manuscript;
`(g) an audience of the manuscript obtaining the distinctive key
`from the bibliography of the manuscript;
`(h) the audience transmitting the distinctive key to the database
`using a second communications device connected to the
`Internet in order to request the database for the copy of
`the web site; and
`(i) the database transmitting a copy of the stored copy of the
`web site to the audience via the Internet and the second
`communications device in response to the database
`receiving the distinctive key from the audience such that
`the copy of the web site transmitted from the database to
`the audience is verbatim to the web site as on the
`Internet at the time the author transmitted the web site
`address to the database.
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`17. A system for storing a reference material using a
`communications network, the system comprising:
`(a) a first communications device connected to the
`communications network for an author of a manuscript
`to use, wherein the author uses the first communications
`device to transfer a copy of the reference material and
`reference material availability information to the
`communications network, wherein the author lists in the
`manuscript a distinctive key associated with both the
`copy of the reference material and the reference material
`availability information;
`(b) a second communications device connected to the
`communications network for an audience of the
`manuscript to use, wherein the audience uses the second
`communications device to request and receive a copy of
`the reference material and the reference material
`availability information from the communications
`network; and
`(c) a database connected to the communications network to
`communicate with the author and the audience via the
`communications network, wherein the database receives
`a copy of the reference material and the reference
`material availability information from the author,
`wherein the database stores an immutable copy of the
`reference material and the reference material availability
`information and the distinctive key associated with the
`copy of the reference material and the reference material
`availability information;
`(d) wherein, if the reference material is available, the database
`transmits a copy of the reference material to the
`audience in response to receiving a request having the
`distinctive key from the audience for a copy of the
`reference material;
`(e) wherein, if the reference material is not available, the
`database transmits a copy of the reference material
`availability information to the audience in response to
`receiving a request having the distinctive key from the
`audience for a copy of the reference material.
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`Ex. 1001, 10:47–11:14, 12:7–43 (Petitioner’s reference letters added to
`identify claim limitations).
`
`C. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges claims 1–28 of the ’097 patent on the following
`grounds:
`Reference(s)
`Caplan1 and Kahn2
`APA,3 Gemteq,4 and Kahn
`Pet. 3.
`
`Challenged Claims
`1–28
`1–16 and 18–28
`
`Basis
`§ 103
`§ 103
`
`D. CLAIM CONSTRUCTION
`
`The Board interprets a challenged claim using the “broadest
`reasonable construction in light of the specification of the patent in which it
`appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Consistent with the broadest
`reasonable construction, there is a “heavy presumption” that a claim term
`carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). While an inventor may give a
`term a meaning other than its ordinary and customary one, “this must be
`
`1 Priscilla Caplan & Willian Y. Arms, Reference Linking for Journal Articles,
`5 D-LIB MAGAZINE, July–August 1999, http://www.dlib.org/dlib/july99/
`caplan/07caplan.html [hereinafter Caplan] (Ex. 1004).
`2 Kahn et al., U.S. Patent No. 6,135,646 (issued Oct. 24, 2000) [hereinafter
`Kahn] (Ex. 1005).
`3 “Admitted Prior Art” including Ex. 1001, 1:17–20, 1:32–41, 1:48–57, 2:2–
`15, 2:20–29 [hereinafter APA]. See Pet. 10–11; Declaration of Stephen Gray
`¶¶ 47–49, Mar. 24, 2017, Ex. 1002.
`4 Gulati et al., WO 00/39713 (published July 6, 2000) [hereinafter Gemteq]
`(Ex. 1006).
`
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`done with reasonably clarity, deliberateness, and precision.” In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`For purposes of this decision, we construe certain claim limitations as
`follows:
`
`1.
`
`“A Database”
`
`The challenged claims, including independent claim 8, recite
`operations involving “a database.” See, e.g., Ex. 1001, 10:53, 55, 58, 60, 62,
`11:3–5, 7, 9, 12, 14. Petitioner argues that the term “a database” may
`include either a single database or network element, or a combination of
`databases or network elements. Pet. 22–23, 25. Petitioner’s expert Stephen
`Gray also points to a statement in Caplan that “[t]he act of reference lookup
`does not necessarily have to be implemented as a separate step, with a
`separate database, from the resolution of the identifier, as shown in the
`model.” Ex. 1002 ¶ 86 (quoting Ex. 1004, 8–9). Thus, Mr. Gray argues that
`a person of ordinary skill in the art would have recognized that a single
`database could perform the same functionality as a database with multiple
`network elements such as in Caplan. See id.
`Petitioner also cites as supporting evidence the Second Complaint in
`the related co-pending district court litigation.5 Pet. 22–23. In the Second
`Complaint, Patent Owner alleged that the “Evernote Reference Preservation
`System,” which according to Petitioner “includes end-user software
`applications, various network elements, servers, and databases, and various
`different end-users, performs the various steps of the challenged claims.” Id.
`
`
`5 Talsk Research Inc. v. Evernote Corp., Case No. 1:16-cv-02167 (TMD)
`(N.D. Ill.).
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`(citing Ex. 1011 ¶ 24, Sept. 16, 2016); see also Ex. 1002 ¶ 87 (“[I]n my
`opinion the challenged claims are not limited to a single network element
`(the ‘database’) performing all the claimed method steps.”). Mr. Gray
`testifies, citing to supporting evidence, that a database is “an organized
`collection of logically related data. A database may be of any size and
`complexity.” Ex. 1002 ¶ 16 (citing Ex. 1019, 4).
`Patent Owner argues that Petitioner has not met its burden to clearly
`set forth its position as to the meaning of “a database.” Prelim. Resp. 25–26
`n.1 (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
`2016)).
`We determine that Petitioner has clearly articulated its position that “a
`database” may include more than a single network element, and has
`submitted supporting evidence to that effect. Moreover, we note that the
`’097 patent describes database 18 by its function, rather than by its internal
`structure. See, e.g., Ex. 1001, 6:2–9:6. We find nothing in the Specification
`that is inconsistent with interpreting “a database” as including a structure
`with multiple network elements.
`Based on the above evidence, including the text of the ’097 patent, we
`interpret “a database” for the purpose of this Decision as meaning any
`structure that organizes logically related data, which may include multiple
`network elements.
`
`2.
`
`Other Terms
`
`All other terms in each of the challenged claims need not be construed
`further at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
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`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`Patent Owner’s arguments in its Preliminary Response to determine whether
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`A. ASSERTED OBVIOUSNESS OF CLAIMS 1–28 OVER CAPLAN IN
`VIEW OF KAHN
`
`Petitioner first argues that claims 1–28 of the ’097 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Caplan in view of Kahn.
`Petitioner contends that Caplan was published in the July/August 1999
`edition of the online D-Lib Magazine, and was publically available more
`than a year before the earliest filing date of the ’097 patent. See Pet. 11–12;
`Ex. 1002 ¶¶ 51–54; Ex. 1008, 1; Ex. 1009, 1; Ex. 1013). Patent Owner does
`not dispute this contention.
`Caplan (Exhibit 1004) is directed in general to static reference linking
`for links to journal articles, “and to the selective resolution of identifiers,
`methods by which a client can specify which of several copies of an item is
`accessed.” Ex. 1004, 1. In particular, it discloses a typical model for
`reference linking as shown in Figure 1, reproduced below:
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`Figure 1 of Caplan is a schematic diagram depicting interactions between a
`publisher (the information provider) and a client (accessor of the
`information), and depicts a reference database and a location database, as
`well as a content store. Ex. 1004, 4–5. According to Caplan, “[e]ach work
`has a unique identifier and one or more copies.” Id. at 4 (emphasis added).
`The reference database contains metadata about the stored information. See
`id. “A client that wishes to find the content associated with a reference
`sends a query to the reference database. This database returns a list of
`identifiers for works that match the query.” Id. The location database stores
`specific uniform resource locators (URLs) for each stored copy of the stored
`object. See id. “A client sends an identifier to the location database, which
`returns one or more URLs. The client selects the URL to retrieve the
`object.” Id.
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`Kahn (Exhibit 1005) is a U.S. patent filed Feb. 28, 1997, and
`Petitioner contends that the reference qualifies as prior art under 35 U.S.C.
`§§ 102(a) and (e). See Pet. 13. Kahn describes a system for storing digital
`objects in a repository. See Ex. 1005, 5:61–63. “Digital objects” are defined
`very broadly as “any set of sequences of bits or digits,” including
`“conventional digital representations of works (books, papers, images,
`sounds, software), and more broadly any digital material which is capable of
`producing desired manifestations for a computer user.” Id. at 1:11–12, 17–
`21. Each digital object has a handle: “a concise unique identifier for a
`digital object used for storage and retrieval operations.” Id. at 6:22–24.
`Digital objects may also have associated with them a set of access rights
`(e.g., copyrights, trade secrets, or contractual rights). See id. at 1:14–15, 25–
`29.
`
`Petitioner argues that Caplan teaches each of the limitations of claim 8
`except for limitation 8(c):
`the database obtaining a copy of the website from the Internet
`upon receiving the web site address from the author such that
`the copy of the web site obtained by the database is verbatim
`to the web site as on the Internet at the time the author trans-
`mitted the web site address to the database . . . .
`See Pet. 21–29. However, Petitioner argues that Kahn teaches
`limitation 8(c), specifically that the database obtains a copy of a digital
`object (e.g., a website) based on information (e.g., a URL) transmitted from
`the user. Pet. 23 (citing Ex. 1005, 7:67–8:3 (“The [user agent device] may
`be used to initiate storage of an object within a repository . . . by transmitting
`information which the repository can use to retrieve the document.”)); see
`also Ex. 1002 ¶ 91. Petitioner argues that this interaction between the author
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`and the database occurs over the Internet, Pet. 24 (citing Ex. 1005, 7:24–27),
`and that “Kahn teaches that the copy of the digital object obtained (in this
`case a website) must be ‘unaltered’ (i.e., verbatim to the original[]),” id.
`(citing Ex. 1005, 3:42–46, 4:46–49, 9:26–40, 10:10–13). See also Ex. 1002
`¶¶ 91–92. Petitioner also argues that Kahn teaches other limitations of claim
`8, and that it would have been obvious at the time of invention to combine
`the teachings of Kahn with the reference linking system of Caplan. See Pet.
`32–56; Ex. 1002 ¶¶ 70–106.
`The issues regarding claim 8 are common to the other challenged
`claims, and we discuss these issues in more detail as follows:
`
`“The Audience Transmitting the Distinctive Key to the
`1.
`Database . . . in Order to Request the Database for the Copy of
`the Web Site; and the Database Transmitting a Copy of the
`Stored Copy of the Website to the Audience . . . in Response to
`the Database Receiving the Distinctive Key from the Audience”
`
`Limitation 8(h) recites “the audience transmitting the distinctive key
`to the database . . . in order to request the database for the copy of the web
`site,” and limitation 8(i) recites “the database transmitting a copy of the
`stored copy of the web site to the audience . . . in response to the database
`receiving the distinctive key from the audience.” Ex. 1001, 11:3–10.
`Petitioner argues that “Caplan proposes the use of identifiers that a
`reader (or an audience) can obtain directly from an embedded citation.”
`Pet. 27; see also id. at 28–29. According to Petitioner’s expert Mr. Gray,
`“Caplan discloses that a reader can use the identifier to get a copy of the
`cited website.” Ex. 1002 ¶ 103 (citing Ex. 1004, 4 (“A client sends an
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`identifier to the location database, which returns one or more URLs. The
`client selects the URL to retrieve the object.”), Fig. 1).
`Petitioner argues that Kahn also discloses these limitations, in which
`the user can transmit a unique “handle” to the database requesting a copy of
`the digital object and/or “reference information.” See Pet. 28. According to
`Mr. Gray, Kahn discloses the transmission of a stored copy of an object
`directly in response to a “retrieve-object message” that includes the object’s
`distinctive handle 798. Ex. 1002 ¶ 104 (citing Ex. 1005, 25:31–35).
`Patent Owner argues that “Petitioner does not show that Caplan, in
`view of Kahn, discloses or suggests ‘the database transmitting a copy of the
`stored copy of the web site to the audience.’” Prelim. Resp. 23. In
`particular, Patent Owner argues that “Caplan’s database functions by
`transmitting URLs that link to an object in response to receiving an identifier
`from an audience. The object itself is not provided in response to the
`identifier, as claimed in the ’097 patent.” Prelim. Resp. 24; see also Ex.
`20016 ¶¶ 9–11. According to Patent Owner’s expert Jon Scarbrough, “it is
`clear that the identifier is not used to directly retrieve or return the cited
`work. Two additional steps are required where a) the identifier is used to get
`a list of URLs and b) one must pick a URL before retrieving the cited
`content.” Ex. 2001 ¶ 11. Patent Owner argues that this indirection is a
`mandatory feature of Caplan’s disclosure, to allow “resolution to multiple
`items” stored in the databases. See Prelim. Resp. 24. Moreover, Patent
`Owner argues that “[b]ecause multiple-resolution is a necessary principle by
`which Caplan’s system operates, it would be a change in operating principle
`
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`6 Declaration of Jon Scarbrough, July 6, 2017, Ex. 2001.
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`to modify Caplan’s location database to also store objects/content/websites
`and then transmit a particular stored object in response to receiving an
`identifier.” Id. at 25; see also Ex. 2001 ¶¶ 12–13.
`Patent Owner also argues that Kahn does not disclose the direct
`transmission of a copy in response to a user handle, but merely the
`transmission of “reference information,” which “is merely metadata,
`reference information about an object.” Prelim. Resp. 27 (citing Ex. 1005,
`2:40–46); see also Ex. 2001 ¶ 14.
`On this record and for purposes of this Decision, we determine the
`Petition persuasive as to limitations 8(h) and 8(i) of the ’097 patent. The
`language of claim 8 requires that the copy be sent to the audience “in
`response to the database receiving the distinctive key from the audience,”
`but does not explicitly require that the transmission be “directly” in response
`to receiving the key. We also note that the preamble of claim 8 recites a
`method “comprising” a set of steps, which does not exclude additional steps.
`See Solvay S.A. v. Honeywell Int’l Inc., 742 F.3d 998, 1005 (Fed. Cir. 2014)
`(“The well-established meaning of ‘“comprising” in a method claim
`indicates that the claim is open-ended and allows for additional steps.’”)
`(quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed.
`Cir. 2003)). Thus, under the broadest reasonable interpretation of claim 8
`and according to its plain meaning, there could be intermediate steps
`between receipt of the distinctive key from the audience and transmission of
`the copy of the stored object. We find nothing in the Specification
`inconsistent with this interpretation.
`Second, based on the evidence on this record, we find persuasive the
`testimony of Petitioner’s expert Mr. Gray that Kahn discloses the
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`transmission of a stored copy of an object directly in response to a message
`that includes the object’s distinctive handle. Ex. 1002 ¶ 104. Kahn teaches
`that after the database sends a pointer or list of pointers to stored digital
`objects, the user sends back a “retrieve object message” that includes “the
`object’s handle 798.” Ex. 1005, 25:32–35. Directly in response to receiving
`this message including the handle, the repository transmits data including
`“the object, signed by the repository.” Id. at 26:31–38. Thus, at this stage
`and based on this record, Petitioner has established sufficiently that either
`Caplan discloses limitations 8(h) and (i), or that these limitations would have
`been obvious in light of Kahn’s teaching to include the distinctive key in the
`message to which the database directly responds in sending a copy of the
`stored object.
`Finally, while Caplan teaches that the ability to perform “selective
`resolution” among multiple copies of the same work is an important and
`necessary feature of the disclosed system, see, e.g., Ex. 1004, 2, 6, Patent
`Owner’s arguments do not persuade us, on the basis of this record, that
`selective resolution would rule out either (1) sending a copy indirectly in
`response to receiving the distinctive key, or (2) sending the copy directly in
`response to receiving the key as taught by Kahn. Moreover, the evidence on
`this record does not show that Caplan rules out the omission of selective
`resolution when there is just one copy of a stored work. See id. at 4 (“Each
`work has . . . one or more copies . . . .” (emphasis added)); id. at 6 (“In the
`model, it is assumed that multiple copies of a creation may exist . . . .”
`(emphasis added)). Thus, based on this record we do not find Caplan’s
`description of a selective resolution feature to “criticize, discredit or
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`otherwise discourage the solution” in limitations 8(h) and 8(i). In re Fulton,
`391 F.3d 1195, 1201 (Fed. Cir. 2004).
`
`2.
`
`“A Database”
`
`Limitations 8(b), (e), (h), and (i) refer to “a database” that
`communicates with the author and audience. See Ex. 1001, 10:52–11:12.
`Petitioner claims that Caplan discloses such a database. See Pet. 22–23.
`According to Petitioner, “[a]lthough Caplan Figure 1 illustrates three
`separate databases, a [person of ordinary skill in the art] would have
`recognized that a single database could perform the functions described in
`Caplan.” Id. at 22 (citing Ex. 1002 ¶ 86). Petitioner also argues that the
`term “a database” is broader than “a single database or network element.”
`Id. at 23 (citing Ex. 1002 ¶ 87). Petitioner’s expert Mr. Gray also opines that
`“Caplan recognizes that separate databases are not necessary for the
`system.” Ex. 1002 ¶¶ 86, 96. As evidence, Mr. Gray points to a passage in
`Caplan, see id. ¶ 86 (quoting Ex. 1004, 8–9), which we reproduce here with
`additional context:
`The act of reference lookup does not necessarily have to be im-
`plemented as a separate step, with a separate database, from the
`resolution of the identifier, as shown in the model. However,
`lookup and resolution are conceptually distinct steps, and they
`are likely to be implemented as separate systems. Different agen-
`cies may want to provide the different services. Also, citation
`lookup may require more processing power than resolution, ar-
`guing for technical separation. Further, it cannot be expected that
`every lookup of citation information will yield unique, unambig-
`uous results. Lookups resulting in more than one hit may require
`some negotiation with the party initiating the lookup, or may re-
`turn multiple identifiers, leaving it up to the user to select which
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`to resolve. Functionally, this complexity is best dealt with by sep-
`arating resolution from lookup.
`Ex. 1004, 8–9.
`Petitioner further argues that Kahn discloses a database in which the
`distinctive key is stored in the same repository as the digital object. See
`Pet. 22, 25–26; Ex. 1002 ¶ 97.
`Patent Owner argues that Petitioner has not met its burden to show
`that Caplan discloses “a database.” Prelim. Resp. 25–26 n.1. While Patent
`Owner does not appear to dispute that a person of ordinary skill in the art
`would have had reason to combine reference and location databases, Patent
`Owner argues that “there is absolutely no evidence offered for Petitioner’s
`argument that Caplan’s reference and location databases could or would be
`combined with the content servers. Caplan only discusses combining the
`functionality of the reference and location databases.” Id. (citing Ex. 1004,
`8–9).
`
`Patent Owner also argues that “Petitioner’s bare assertion that
`Caplan’s system could be reduced to a single database goes directly against
`Caplan’s requirement for each identifier to resolve to multiple content
`locations.” Prelim. Resp. 25 n.1.
`On this record, Petitioner persuasively argues that Caplan teaches “a
`database” as recited in claim 8. For the reasons discussed above in the
`“Claim Interpretation” section, we interpret “a database” for the purpose of
`this Decision as meaning any structure that organizes logically related data,
`which may include multiple network elements. Thus, whether or not
`Caplan’s content server is combined with the reference and location servers,
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`the combined server structure is a database because it functions to organize
`logically related data about the stored websites.
`In addition, Petitioner’s argument that Kahn teaches storing the
`distinctive key in the same repository as the digital object is persuasive.
`Kahn teaches that “[c]opies of the digital object are stored in a repository,”
`Ex. 1005, 3:42, that “[t]here may be multiple repositories,” id. at 3:54–55,
`that “[t]he repository may contain other related information . . . as well as
`management systems,” id. at 5:63–64, and that the repository may include a
`“property record” that includes the unique handle, see id. at 6:21–28, 32–35.
`Thus, Petitioner has established a reasonable likelihood that it would have
`been obvious in light of Caplan and Kahn to use a single database for storing
`both stored copies of websites and related information including the
`distinctive key.
`
`3.
`
`Reason to Combine Caplan with Kahn
`
`Petitioner argues that Caplan and Kahn are analogous references
`because “both disclosures relate to the same field of archiving content cited
`in reference materials.” Pet. 20 (citing In re Johnston, 435 F.3d 1381, 1386
`(Fed. Cir. 2006)). According to Petitioner, it would have been obvious to
`combine the teachings of Kahn with the system of Caplan because such a
`combination “would have involved no more than the predictable use of prior
`art techniques according to the functions established in the respective prior
`art disclosures.” Id. (citing Ex. 1002 ¶ 75). Moreover, Petitioner argues that
`a skilled artisan would have expected Kahn’s system for managing and
`archiving digital objects to work successfully in the context of Caplan’s
`system because “both systems call for the use of conventional database and
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`networking technology to operate in accordance with functions established
`in the respective prior art disclosures.” Id. (citing Ex. 1002 ¶ 77).
`Petitioner’s expert Mr. Gray further testifies that
`a person of ordinary skill in the art would have been motivated
`to modify the “reference linking” approach disclosed by Caplan
`to use the system for creating, storing and sharing “digital ob-
`jects” taught by Kahn because doing so would have resulted in
`creating an immutable database of cited reference material that
`could be accessed later by readers of an original work.
`Ex. 1002 ¶ 75. Mr. Gray also cites, as a factor, “the well-developed nature
`of the field of art by 2000,” and opines that “the method and system of
`archiving and managing digital objects disclosed by Kahn is well-suited to
`be employed in the context contemplated by Caplan.” Id. ¶ 71.
`Patent Owner argues that Petitioner does not adequately articulate a
`basis for unpatentability of claim 8 or the other challenged claims.
`According to Patent Owner, Petitioner cites Caplan and Kahn for many of
`the same limitations, “leaving Patent Owner guessing as to which references
`are being combined with which and how this presentation in any way
`comports with the Graham factors.” Prelim. Resp. 7 (citing Graham v. John
`Deere Co., 383 U.S. 1, 17 (1966)). Patent Owner argues that, “for each
`element of each of the claims, Petitioner explains how every one of the
`references allegedly describes such elements.” Id. at 2. Thus, Patent Owner
`accuses Petitioner of seeking “to frustrate Patentee’s ability to address the
`petition, or to goad it into addressing the universe of art cited in the
`petition.” Id.
`As examples, Patent Owner refers to Petitioner’s discussion regarding
`claim limitation 8(a), in which Petitioner “first asserts that Caplan authors
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`[are] including citations to URLs for websi
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