`494.272.7822
`
`
`Paper 54
`Entered: February 2, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioner,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00479
`Patent 5,832,494
`____________
`
`
`
`Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I.
`
`BACKGROUND
`
`A.
`
`Introduction
`
`On July 30, 2013, Facebook, Inc., LinkedIn Corp., and Twitter, Inc.
`
`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
`
`of claims 18–20, 45, 48, 49, 51 and 54 of U.S. Patent No. 5,832,494 (Ex.
`
`1201, “the ’494 patent”). Paper 2 (“Pet.”). On February 3, 2014, we
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`IPR2013-00479
`Patent 5,832,494
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`instituted trial on all challenged claims, on certain of the grounds of
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`unpatentability alleged in the Petition. Paper 18 (“Decision to Institute” or
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`“Inst. Dec.”).
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`After institution of trial, Software Rights Archive, LLC (“Patent
`
`Owner”), filed a Patent Owner Response (“PO Resp.”). Paper 31. Petitioner
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`also filed a Reply. Paper 40 (“Reply”).
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`A consolidated oral hearing for IPR2013-00478, IPR2013-00479,
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`IPR2013-00480, and IPR2013-00481, each involving the same Petitioner
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`and the same Patent Owner, was held on October 30, 2014. The transcript of
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`the consolidated hearing has been entered into the record. Paper 53, “Tr.”
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`Petitioner has shown by a preponderance of the evidence that claims
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`18–20, 45, 48, 49, 51 and 54 of the ’494 patent are unpatentable.
`
`B.
`
`Related Proceedings
`
`Petitioner and Patent Owner both indicate that the ’494 patent is
`
`involved in the following co-pending district court proceedings: Software
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`Rights Archive, LLC v. Facebook, Inc., Case No. 12-cv-3970; Software
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`Rights Archive, LLC v. LinkedIn Corp., Case No. 12-cv-3971; and Software
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`Rights Archive, LLC v. Twitter, Inc., Case No. 12-cv-3972, each pending in
`
`the United States District Court for the Northern District of California. Pet.
`
`1; Paper 9, Patent Owner’s Mandatory Notice, 2.
`
`Petitioner filed another Petition seeking, and we instituted, inter
`
`partes review of other claims of the ’494 patent in Case IPR2013-00480. In
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`addition, we instituted trial on Petitioner’s petitions on related patents
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`including: (1) IPR2013-00478, which seeks inter partes review of U.S.
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`2
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`Patent 5,832,494
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`Patent No. 5,544,352 (the “’352 patent”) and (2) IPR2013-00481, which
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`seeks inter partes review of U.S. Patent No. 6,233,571 (the “’571
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`patent”). The ’352 patent issued from the parent of the application that
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`issued as the ’494 patent. The ’571 patent issued from an application that
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`was a divisional of the application that issued as the ’494 patent. The ’494
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`patent was the subject of Reexamination No. 90/011,014.
`
`C.
`
`The ’494 patent
`
`The ’494 patent relates to computerized research on databases. Ex.
`
`1201, 1:11–13. The ’494 patent discloses that it improves search methods
`
`by indexing data using proximity indexing techniques. Id. at 3:20–31.
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`According to the ’494 patent, proximity indexing techniques generate a
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`quick-reference of the relations, patterns, and similarity found among the
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`data in the database. Id. at 3:28–31.
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`Figure 2 of the ’494 patent illustrates the high-level processing of
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`software for computerized searching (Id. at 8:7–8) and is reproduced below:
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`3
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`Patent 5,832,494
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`Figure 2 depicts software system 60 comprising Proximity Indexing
`Application Program 62, Computer Search Program for Data Represented by
`Matrices (“CSPDM”) 66, and Graphical User Interface (“GUI”) program 70.
`
`
`Ex. 1201, 11:29–36.
`
`Processing of software system 60 begins with Proximity Indexing
`
`Application Program 62 indexing a database. Id. at 11:46–47. Then,
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`CSPDM 66 searches the indexed database and retrieves requested objects.
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`Id. at 11:49–53. CSPDM 66 relays the retrieved objects to GUI program 70
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`to display on a display. Id. at 11:53–55.
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`Software system 60 runs on a computer system comprising, for
`
`example, a processor of a personal computer. Id. at 10:11–15. The system
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`comprises a display, which displays information to the user. Id. at 10:43–44.
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`Exemplary displays include: computer monitors, televisions, LCDs, or
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`LEDs. Id. at 10:44–46.
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`The processor is connected to a database to be searched. Id. at 10:18–
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`20. Data in the database may be represented as a node. Id. at 12:29–33.
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`Exemplary nodes include an object or a portion of an object, a document or
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`section of a document, and a World Wide Web page. Id. at 12:35–38.
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`A cluster link generation algorithm may be used alone or in
`
`conjunction with other proximity indexing subroutines, and prior to
`
`searching. Id. at 21:30–33. The cluster link generation algorithm may
`
`generate candidate cluster links (Id. at 21:64–66) and then derive actual
`
`cluster links, which are used to locate nodes for display (Id. at 22:1–4).
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`Actual cluster links are: “a subset of the candidate cluster links . . . which
`
`meet a certain criteria.” Id. at 22:1–4.
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`4
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`D.
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`Illustrative Claim
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`Of the challenged claims, only claim 18 is independent, whereas
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`claims 19–20, 45, 48, 49, 51 and 54 depend directly or indirectly from claim
`
`18. Claim 18 is illustrative of the claimed subject matter and is reproduced
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`below:
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`18. A method of analyzing a database having objects
`and a first numerical representation of direct relationships in the
`database, comprising the steps of:
`
`generating a second numerical representation using the
`first numerical representation, wherein the second numerical
`representation accounts for indirect relationships in the
`database;
`
`storing the second numerical representation;
`
`identifying at least one object in the database, wherein
`the stored numerical representation is used to identify objects;
`and
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`displaying one or more identified objects from the
`database.
`
`Ex. 1201, 53:27–39.
`
`
`
`E.
`
`The Prior Art References Upon Which Trial Was Instituted
`
`Colin F.H. Tapper, Citation Patterns in Legal Information Retrieval, 3
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`DATENVERARBEITUNG IM RECHT 249–75 (1976) (“Tapper 1976”) (Ex.
`
`1204).
`
`Colin Tapper, The Use of Citation Vectors for Legal Information
`
`Retrieval, 1 J. OF LAW AND INFO. SCI. 131–61 (1982) (“Tapper 1982”) (Ex.
`
`1205).
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`Edward A. Fox, Characterization of Two New Experimental
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`Collections in Computer and Information Science Containing Textual and
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`
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`5
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`Patent 5,832,494
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`Bibliographic Concepts (Sept. 1983) (Ph.D. dissertation, Cornell Univ.
`
`Dep’t of Comp. Sci.) (“Fox Collection”) (Ex. 1206).
`
`Edward A. Fox, Some Considerations for Implementing the SMART
`
`Information Retrieval System under UNIX (Sept. 1983) (Ph.D. dissertation,
`
`Cornell Univ. Dep’t of Comp. Sci.) (“Fox SMART”) (Ex. 1208).
`
`Edward A. Fox, Extending the Boolean and Vector Space Models of
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`Information Retrieval with P-Norm Queries and Multiple Concept Types
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`(Aug. 1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox
`
`Thesis”) (Ex. 1209).
`
`Edward A. Fox, et al., Users, User Interfaces, and Objects: Envision,
`
`a Digital Library, 44 J. AM. SOC. INF. SCI. 480–91 (Sept. 1993) (“Fox
`
`Envision”) (Ex. 1210).
`
`Tatsuki Saito, A Clustering method using the strength of citation, 16 J.
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`INF. SCI. 175–81 (Jan. 1990) (“Saito Clustering”) (Ex. 1212).
`
`Thomas D.C. Little, Commerce on the Internet, IEEE Multimedia at
`
`Work 74–78 (1994) (“Little”) (Ex. 1216).
`
`The parties do not dispute the prior art status of the references.
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`6
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`F.
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`The Pending Grounds of Unpatentability
`
`References
`
`Basis
`
`Claims instituted
`
`Fox Thesis, Fox SMART, and
`Fox Collection
`Tapper 1976 and Tapper 1982
`
`Fox Thesis, Fox SMART, Fox
`Collection, Saito Clustering, and
`Fox Envision
`Fox Thesis, Fox SMART, Fox
`Collection, Saito Clustering, Fox
`Envision, and Little
`
`
`§ 103
`
`18–20, 48, and 49
`
`§ 103
`
`§ 103
`
`18–20, 48, and 49
`
`45 and 51
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`§ 103
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`54
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`II. ANALYSIS
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`A.
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`Claim Construction
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`1. Principles of Law
`
`Petitioner asserts, and Patent Owner does not dispute, that the ’494
`
`patent expired on June 14, 2013. Pet. 6. The Board’s interpretation of the
`
`claims of an expired patent is similar to that of a district court’s review. See
`
`In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We, therefore, are
`
`guided by the principle that the words of a claim “are generally given their
`
`ordinary and customary meaning,” as understood by a person of ordinary
`
`skill in the art in question at the time of the invention. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`“In determining the meaning of the disputed claim limitation, we look
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`principally to the intrinsic evidence of record, examining the claim language
`
`itself, the written description, and the prosecution history, if in evidence.”
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
`
`presumption,” however, that a claim term carries its ordinary and customary
`
`
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`7
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`Patent 5,832,494
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`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002) (citation omitted).
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`2. Overview of the Parties’ Positions
`
`In the Decision to Institute, we found it instructive to construe the
`
`claim terms direct relationships and indirect relationships. Inst. Dec. 10–
`
`11. Our constructions are set forth in the table below.
`
`Claim Term or Phrase
`
`Construction
`
`direct relationships
`
`indirect relationships
`
`
`
`“relationships where one object cites to
`another object” Inst. Dec. 11.
`“relationships where at least one
`intermediate object exists between two
`objects and where the intermediate
`object(s) connect the two objects through
`a chain of citations” Inst. Dec. 11.
`
`Petitioner does not challenge any of our constructions. Reply 1–2.
`
`Patent Owner appears to agree with many of our constructions, and states
`
`that it uses our constructions for the purpose of evaluating patentability of
`
`the challenged claims of the ’494 patent. PO Resp. 8–11. Based on the
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`complete record now before us, we discern no reason to change our prior
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`constructions.
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` Additionally, Patent Owner addresses the terms computerized
`
`database and numerical representation of direct relationships which are
`
`evaluated below. PO Resp. 8–11. Petitioner’s Reply further addresses
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`database and numerical representation. Reply 1–2.
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`3. computerized database
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`Patent Owner asks that we construe computerized database, and
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`asserts that “the claims of the ‘494 patent are methods that are directed to
`
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`8
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`representing, analyzing, and searching objects in a computer database
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`having direct and indirect relationships between objects in the database.”
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`PO Resp. 8 (emphasis in original). The phrases computerized database or
`
`computer database, however, appear nowhere in the claims of the ’494
`
`patent that are subject to this trial.
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`To the extent that the Patent Owner wishes for us to construe
`
`database, which does appear in the claims, Petitioner correctly notes that the
`
`specification of the ’494 patent states that the database “can be any device
`
`which will hold data” such as “any type of magnetic or optical storing
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`device.” Ex. 1201, 10:18–21. We do not consider the term to need any
`
`additional construction.
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`4. numerical representation
`
`Patent Owner asks for a construction of numerical representation of
`
`direct relationships, proffering the interpretation “a numerical value or set of
`
`values that represent direct relationships in a computer database.” PO Resp.
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`11. Patent Owner distinguishes these numerical representations from
`
`“strings,” which may include letters. Id. at 7. At oral argument, Patent
`
`Owner confirmed that its construction of numerical representation is
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`something “represented only by digits,” or in other words “expressed by
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`numbers, not by letters.” Tr. 85.
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`Petitioner responds that numerical includes “any representation of
`
`binary or digital data that can be processed and analyzed by a computer,”
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`and means simply “of or relating to numbers.” Reply 1; Tr. 13. Petitioner’s
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`construction is, therefore, not limited to representations consisting only of
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`numbers. At oral argument, Petitioner argued that the inclusion of a single
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`number into a string is sufficient to make that string a numerical
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`representation. Tr. 25.
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`Petitioner’s proffered construction is overly broad and unsupported by
`
`the specification. While one dictionary definition of numerical is “of or
`
`relating to a number or series of numbers,” it may also refer to “expressed in
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`or counted by numbers.” THE AMERICAN HERITAGE DICTIONARY OF THE
`
`ENGLISH LANGUAGE (2000) (Ex. 3001); see also COLLINS ENGLISH
`
`DICTIONARY (2000) (Ex. 3002) (“measured or expressed in numbers”).
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`The specification of the ’494 patent uses numerical consistent with
`
`this latter interpretation. In the Initial Extractor Subroutine, the “full textual
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`objects” of the database are numbered “with Arabic numbers from 1 through
`
`n.” Ex. 1201, 16:64–65. These numbers are used to create vectors and
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`matrices, which are then run through various algorithms such as the Opinion
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`Patterner Subroutine. Id. at 17:3–37. “Numerical factors” are then
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`“calculated” to determine “values.” Id. at 17:34–37; 21:10–14. This
`
`emphasis on calculation, values, and on processing by computer algorithms,
`
`leads us to conclude that numerical representation, as used in the ’494
`
`patent specification, must refer to solely numbers, so that a computer can
`
`process the representations using mathematical algorithms.
`
`Petitioner’s attempt to link the numerical representation of the
`
`specification to the West “key number” system is unpersuasive. Reply 2.
`
`While the specification of the ’494 patent does discuss the key number
`
`system, and such “key numbers” include letters, there is no indication that
`
`the patentee intended to link the numerical representation of the claims to
`
`the West key number system discussed—and distinguished—in the
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`background portion of the specification. Ex. 1201, 2:25–29 (“such a
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`numbering process is subjective and is prone to error”).
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`Nor do we find persuasive Petitioner’s argument that numerical is
`
`somehow distinct from “numeric,” in that the latter term means only
`
`numbers but the former may encompass letters. Tr. 13. Not only was this
`
`argument advanced for the first time at oral hearing,1 but it is unsupported
`
`by any evidence of record. Indeed, the two terms are used interchangeably
`
`in dictionary definitions. See Ex. 3001 (entry for “numerical also numeric”);
`
`Ex. 3002 (entry for “numerical or numeric”).
`
`For these reasons, we construe numerical representation as
`
`“representation consisting exclusively of numbers or a set of numbers.”
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`B. Obviousness of Claims 18–20, 48, and 49 Over the Fox Papers
`
`We instituted trial to determine whether claims 18–20, 48, and 49 are
`
`unpatentable under 35 U.S.C. § 103 as having been obvious over the
`
`combined disclosures of Fox Thesis, Fox SMART, and Fox Collection
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`(collectively, “the Fox Papers”). Inst. Dec. 12–16. In support of the
`
`asserted ground of unpatentability, Petitioner sets forth the teachings of the
`
`cited prior art, provides detailed claim charts, and cites to the declaration of
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`Dr. Fox (Ex. 1218 ¶¶ 182–210), explaining how each limitation is taught in
`
`the cited prior art combination. Pet. 8–18.
`
`We have considered Petitioner’s arguments and evidence, as well as
`
`the counterarguments in Patent Owner’s Response, and the evidence cited
`
`therein, and conclude that Petitioner has shown by a preponderance of the
`
`
`1 Our Rules do not permit arguments to be raised for the first time at oral
`hearing. 37 C.F.R. § 42.70(a) (permitting oral argument only on “an issue
`raised in a paper.”).
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`11
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`evidence that each of claims 18–20, 48, and 49 of the ’494 patent is
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`unpatentable, under 35 U.S.C. § 103, as having been obvious over the Fox
`
`Papers.
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`1. Fox Thesis
`
`Fox Thesis describes improving query and document representation
`
`schemes for information retrieval. Ex. 1209, 261. In particular, useful types
`
`of bibliographic data are incorporated into a model to test clustering and
`
`retrieval functions. Id. at 164. Bibliographic connections between articles
`
`are illustrated for an exemplary set “O” of documents, which are represented
`
`by letters A through G. Id. at 165–66, Fig. 6.2. This exemplary set “O”
`
`includes direct and indirect citation references. Id. at 166–67, Table 6.2.
`
`Based on the reference pattern for a set of documents, Fox Thesis
`
`describes deriving various measures of the interconnection between the
`
`documents. Id. at 166. For example, weights are assigned “based upon
`
`integer counts” for bibliographically coupled documents. Id. at 167.
`
`Citation submatrices represent reference or citation information. Id. at 169–
`
`70. For example, submatrix bc represents bibliographically coupled
`
`reference information and submatrix cc represents co-citation reference
`
`information. Id. at 169–72, Figs. 6.3–6.5.
`
`2. Fox SMART
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`Fox SMART describes the System for Mechanical Analysis and
`
`Retrieval of Text (SMART) as a project for designing a fully automatic
`
`document retrieval system and for testing new ideas in information science.
`
`Ex. 1208, 3. Fox SMART describes the computer system used to implement
`
`the experiments described in the Fox Thesis. Ex. 1218 ¶ 27. The software
`
`components of SMART are implemented in the C Programming Language
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`and run under the UNIX™ operating system on a VAX™ 11/780 computer.
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`Ex. 1208, 1, 4.
`
`In SMART, an automatic indexing component constructs stored
`
`representations of documents. Id. at 3. Bibliographic information is used to
`
`enhance document representations. Id. at 29. The SMART system may
`
`process basic raw data, such as an exemplary “N” collection of articles and
`
`citation data describing which articles are cited by others. Id.at 29–30. Data
`
`is entered into the SMART system as a set of tuples {(di, dj)|di→dj} which
`
`describe the cited and citing documents, as well as the direction of citation.
`
`Id. at 29. The exemplary input data also includes indirect citation
`
`relationships, such as bibliographic coupled and co-citation relationships.
`
`Id. at 30–32. These relationships are used to create extended vectors which
`
`can then be clustered and searched to aid document retrieval. Id. at 29.
`
`3. Fox Collection
`
`Fox Collection describes collections of data which are said to be
`
`useful for investigating the interaction of textual and bibliographic data in
`
`retrieval of documents. Ex. 1206, 1. According to the testimony of Dr. Fox,
`
`Fox Collection was originally part of the same work as Fox Thesis and Fox
`
`SMART, and describes the manner in which the data sets were obtained and
`
`processed prior to their use in the Fox SMART experiments. Ex. 1218 ¶ 27.
`
`According to Fox Collection, the experiments were performed on a
`
`collection of bibliographic records (title, abstract, author, keywords, etc.)
`
`from the Communications of the ACM, termed the “CACM collection.” Ex.
`
`1206, 14.2 Two individuals then examined printed copies of the articles
`
`
`2 The Fox Collection also discusses an ISI Collection, but in his Reply
`Declaration Dr. Fox explains that he cites the ISI collection to “emphasize
`
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`referenced by the CACM bibliographic records, and citation data was
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`obtained from the articles and entered into a set Raw_data. Id. The citation
`
`data contained pairs of identifiers (citing, cited) which were the document id
`
`numbers (“dids”) of the citing record and record it cites. Id. From this
`
`Raw_data matrix, secondary matrices such as bc (bibliographic coupling)
`
`and cc (co-citation) were derived computationally. Id. at 14–16.
`
`4. Claim 18
`
`Petitioner’s claim chart persuasively reads all elements of claim 18
`
`onto the combined teachings of Fox Thesis, Fox SMART, and Fox
`
`Collection. Pet. 9–14 (citing Ex. 1206, 14–15, 45–46; Ex. 1208, 3, 11–13,
`
`23–24, 26–27, 29–32, 38, 41–54, 58–59; Ex. 1209, 17, 19, 173, 179, 181–
`
`83, 194, 201, 207, 211, 213; 1218 ¶¶ 71–108, 122–131, 182–184, 194–196).
`
`For instance, the combination of Fox Thesis, Fox SMART, and Fox
`
`Collection teaches a database having objects, and a first numerical
`
`representation of direct relationships in the database, as recited in claim 26.
`
`In particular, Fox Collection teaches a database containing the CACM
`
`collection of bibliographic entries. Ex. 1206, 14. Printed copies of each
`
`article with a bibliographic entry in the CACM collection are then manually
`
`reviewed, to obtain bibliographic subvectors in the form “Raw_data (cited,
`
`citing),” and the results entered into the database Id. This is a first
`
`numerical representation of the direct relationship between the “cited,
`
`citing” pair.
`
`
`findings in the prior art about the value of using co-citation data (a non-
`semantic indirect relationship) in information retrieval, not to fully address
`all the elements of claims. . . . For the sake of simplicity, the Board should
`focus on the methodology given in Fox Papers, and the examples of their use
`with the CACM Collection.” Ex. 1233 ¶ 6.
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`The combination of Fox Thesis, Fox SMART, and Fox Collection
`
`also teaches generating a second numerical representation using the first
`
`numerical representation, wherein the second numerical representation
`
`accounts for indirect relationships in the database, as recited in claim 18.
`
`Fox SMART teaches that direct relationships may be represented by tuples
`
`called “CITED,” which contain a citing document, a cited document, and the
`
`direction of the citation. Ex. 1208, 29. These tuples are then processed to
`
`construct submatrices such as bc and cc, which contain numbers
`
`representing indirect relationships. Id. at 30–32 (“construct BC by counting
`
`the number of identical tuples of C”). Dr. Fox testifies that the CITED
`
`tuples of Fox SMART refer to the Raw_data derived from the CACM
`
`collection. Ex. 1218 ¶ 124. Because these bc and cc submatrices are
`
`numerical representations, are generated from the first numerical
`
`representations CITED which are based on direct relationships, and account
`
`for indirect relationships, we find that the Fox Papers together teach
`
`generating a second numerical representation.
`
`a. Combination of References
`
`As to whether Petitioner has satisfied the requirements for combining
`
`the teachings of Fox Thesis, Fox SMART, and Fox Collection, we determine
`
`that Petitioner has articulated sufficient reasoning with a rational
`
`underpinning as to why one of ordinary skill in the art would have combined
`
`the retrieval systems taught in Fox Thesis, Fox SMART, and Fox Collection.
`
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Dr. Fox states that the three
`
`publications arose from the same thesis project, and were originally one
`
`document. Ex. 1218 ¶ 70. Furthermore, Dr. Fox notes that Fox Thesis
`
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`Patent 5,832,494
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`“explain[s] the method and experimental results of [his] information
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`retrieval work,” Fox SMART “detail[s] the updated SMART computer
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`system used to execute the experiments,” and Fox Collection “describes how
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`the data sets were obtained and processed prior to being used in the
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`experiments.” Id. We give Dr. Fox’s statement that one of skill in the art
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`would have been motivated to combine the references because they
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`“describe a complete project with its underlying system and data” (id.)
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`substantial weight, because it is consistent with the considerable overlap in
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`the disclosures of the Fox Papers and their internal references to one another.
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`See, e.g., Ex. 1209, 343 (Fox Thesis cites to Fox SMART); Ex. 1208, 84
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`(Fox SMART cites to Fox Thesis).
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`b. Patent Owner’s Counterarguments
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`We have considered Patent Owner’s counterarguments and do not
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`find them persuasive. Patent Owner contends that various elements of claim
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`18 are not taught or suggested by the Fox Papers in combination. First,
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`Patent Owner argues that the Fox Papers do not teach analyzing a database
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`having objects and a first numerical representation of direct relationships in
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`the database. PO Resp. 21. In particular, Patent Owner focuses on the fact
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`that the first numerical representation of Raw_data was not derived from
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`objects in the database, but rather from manually reviewing the full articles
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`to which the objects pertain. Id. at 22. Patent Owner concludes that “there
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`is simply no database disclosed with objects citing to other objects, and
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`Raw_data cannot be based upon ‘an object’s direct relationships with other
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`objects in the database.’” Id. at 23.
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`There is no requirement in claim 18, however, that the first numerical
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`representation be “based on” objects in the database. The preamble of claim
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`18 assumes a pre-existing database that contains two things: objects, and a
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`first numerical representation of direct relationships. Once the Raw_data
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`pairs were compiled and entered into the CACM database, as disclosed in
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`Fox Collection (Ex. 1208, 14), these requirements were met.
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`Even if claim 18 did require the objects of the database to have direct
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`and indirect relationships, Petitioner persuasively argues this feature is
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`suggested by the Fox Papers in combination. For example, Petitioner shows
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`persuasively that that it would have been obvious to modify the databases of
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`the Fox Papers to contain full text documents. Reply 4. Dr. Fox’s testimony
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`supports this argument, noting that if storage resources allowed storage of
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`the full text of documents, this would have been understood as preferable.
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`Ex. 1218 ¶¶ 76, 89. We credit Dr. Fox’s testimony on this point, as it is
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`consistent with the disclosure of Fox Thesis that “some [information
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`retrieval] systems store the full text of the various documents.” Ex. 1209, 6.
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`Fox Thesis adds that full text permits users to “locate documents of interest,”
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`as well as “retrieve and/or examine paragraphs, passages, sentences, or
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`single word occurrences (in context).” Id. These extra capabilities are
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`described as “straightforward generalizations of document retrieval
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`methods.” Id.
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`Furthermore, if modified to include full text documents, Fox SMART
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`teaches that it would be of “particular value” in such applications to compute
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`vectors (a first numerical representation) for smaller items than just
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`documents. Ex. 1208, 80. As an example, Fox SMART discusses
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`computing vectors for verses and chapters of the Bible, subsets of the entire
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`document. Id.
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`We, therefore, conclude that the Fox Papers suggested to one of
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`ordinary skill in the art at the time of the invention the modification of the
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`Fox databases to include full text documents. With such a modification, the
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`databases would contain, as objects, the full text documents—or even
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`subsets of the full text documents—and these objects would have direct and
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`indirect relationships due to their citation of one another. Patent Owner’s
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`argument to the contrary is unpersuasive.
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`Patent Owner also argues that the Fox Papers do not teach or suggest
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`displaying one or more identified objects from the database, as claim 18
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`requires. PO Resp. 25. Patent Owner emphasizes that the identifying and
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`displaying steps of claim 18 must apply to objects in the same database. Id.
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`Because, Patent Owner alleges, the identified objects of Fox SMART are the
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`full articles which are not present in the database, the objects cannot be
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`displayed. Id.
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`Fox SMART, however, discloses an operation in which documents
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`are retrieved, and then desired portions of the text of the retrieved documents
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`are displayed to the user. Ex. 1208, 24, Fig. 6; see also id. at 11 (“display of
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`portions of text from selected top-ranked documents”). Because, as noted
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`above, we find that the Fox Papers suggest that the objects in the database
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`can be both full text documents, as well as portions of those documents,3 we
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`conclude that the displaying one or more identified objects requirement of
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`claim 18 is met.
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`Patent Owner’s remaining contentions relate to whether Petitioner has
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`satisfied the requirements for combining the teachings of Fox Thesis, Fox
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`3 “For example, a section, page, or paragraph of text taken from a longer text
`may be treated as a textual object.” Ex. 1201, 14:2–4.
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`SMART, and Fox Collection. For example, Patent Owner contends that the
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`systems disclosed in the individual Fox Papers are “narrowly tailored” and
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`would not have been combined merely because of their common authorship.
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`PO Resp. 16–21.
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`As indicated above, we determine that Petitioner has articulated
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`sufficient reasoning with a rational underpinning as to why one of ordinary
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`skill in the art would have combined the retrieval systems taught in Fox
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`Thesis, Fox SMART, and Fox Collection. See KSR, 550 U.S. at 398. For
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`example, Dr. Fox wrote each of Fox Thesis, Fox SMART, and Fox
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`Collection. See Ex. 1209, i; Ex. 1208, 1; Ex. 1206, 1.
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`Patent Owner also contends that the Raw_data relation of Fox
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`Collection could not be combined with the CITED tuples of Fox SMART,
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`because they are “fundamentally incompatible.” PO Resp. 17. In support of
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`this argument, Dr. Jacobs testifies, for example, that CITED does not
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`describe using document ids (“dids”) while Raw_data does. Ex. 2113
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`¶¶ 124–125. Dr. Fox testifies to the contrary, stating that the CITED tuples
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`of Fox SMART specifically refer to the “Raw_data” derived from the
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`CACM collection. Ex. 1218 ¶ 124. We give Dr. Fox’s testimony on this
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`point substantial weight, and do not credit Dr. Jacobs’ testimony. Our
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`determination is not only due to Dr. Fox’s personal knowledge of the Fox
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`Papers, but also supported by the descriptions of Raw_data and CITED in
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`the references. The references indicate that both Raw_data and CITED
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`contain pairs of document identifiers, with the sole difference being that
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`CITED also contains a third data element that signifies the direction of the
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`citation. Furthermore, while the description of CITED in Fox SMART is
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`silent as to document ids, other portions of the document discuss dids which
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`are an “index in range 1 . . . N.” Ex. 1208, 36. We do not consider the
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`combination of Raw_data with CITED, or the combination of the systems of
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`Fox Collection, Fox SMART, and Fox Thesis, to be beyond the level of
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`ordinary skill in the art.
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`Patent Owner further contends that using indirect relationships in a
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`computerized search system would not have been predictable at the time of
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`the invention of the ’494 patent. PO Resp. 48–50. In particular, Patent
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`Owner contends that Google’s introduction of its algorithms took experts in
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`the field by surprise and was considered a major breakthrough. PO Resp. 49
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`(citing Ex. 2113 ¶ 431; Ex. 2114 ¶¶ 43–65). Patent Owner’s contention is
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`based on its view that the combined teachings of Fox Thesis, Fox SMART,
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`and Fox Collection are not sufficient because they do