Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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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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`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
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`Petitioner,
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`v.
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`E-NUMERATE SOLUTIONS, INC.,
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`Patent Owner.
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`Patent No. 9,268,748
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`Issue Date: February 23, 2016
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`Title:
`SYSTEM, METHOD, AND COMPUTER PROGRAM PRODUCT FOR
`OUTPUTTING MARKUP LANGUAGE DOCUMENTS
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,268,748
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`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1-.80 & 42.100-.123
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`TABLE OF CONTENTS
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................... 1
`A. Grounds for Standing (37 CFR § 42.104 (a)) ....................................... 1
`Fee for Inter Partes Review (37 CFR § 42.15(a)) ................................ 2
`B.
`C. Mandatory Notices (37 CFR § 42.8(b)) ................................................ 2
`i.
`Real Party in Interest (37 CFR § 42.8(b)(1)) .............................. 2
`ii.
`Related Matters (37 CFR § 42.8(b)(2)) ...................................... 2
`iii. Designation of Counsel and Service Information (37 CFR
`§§ 42.8(b)(3)-(4)) ........................................................................ 3
`Proof of Service (37 CFR §§ 42.6(e) and 42.105(a)) ............................ 3
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`D.
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`II.
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`Introduction and Identification of the Claims Being Challenged (37
`CFR § 42.104(b)(1)) ........................................................................................ 3
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`III. Background of the ʼ748 Patent ......................................................................11
`A.
`Effective Filing and Priority Dates of the ʼ748 Patent ........................11
`B.
`Relevant Prosecution History of the ʼ748 Patent ................................11
`C.
`Person of Ordinary Skill in the Art .....................................................13
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`IV. Claim Construction (37 CFR § 42.104(b)(3)) ...............................................13
`A.
`“Semantic Tags” ..................................................................................14
`B.
`“Mapping” ...........................................................................................16
`C.
`“Validation” .........................................................................................16
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`V.
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`Identification of Specific Statutory Grounds for Challenge (37 CFR §
`42.104(b)(2)) ..................................................................................................17
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`VI. Detailed Explanation and Evidence Supporting Grounds for Challenge
`(37 CFR §§ 42.104(b)(4)-(5)) ........................................................................17
`A. Disclosure of Mastering Access 97 .....................................................17
`B. Disclosure of The XML Handbook ......................................................19
`Rationale for Combining the Teachings of Mastering Access 97
`C.
`and The XML Handbook .....................................................................21
`Comparison of Claims 1, 11, and 19 to Mastering Access 97
`and The XML Handbook .....................................................................23
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`D.
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`VII. CONCLUSION ..............................................................................................54
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`Attachment A. Proof of Service of the Petition
`-i-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`Attachment C. Word Count Compliance Certificate
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`-ii-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`Petitioner Merrill Communications LLC d/b/a Merrill Corporation
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`(hereinafter “Merrill” or “Petitioner”) respectfully petitions for inter partes review
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`of claims 1, 11, and 19 of U.S. Patent No. 9,268,748 (“the ʼ748 patent”) (Ex. 1001)
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`in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
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`I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
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`A. Grounds for Standing (37 CFR § 42.104 (a))
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`Petitioner certifies it is not barred or estopped from requesting inter partes
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`review of the ʼ748 patent. Neither Petitioner, nor any party in privity with
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`Petitioner, has filed a civil action challenging the validity of any claim of the ʼ748
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`patent. The ʼ748 patent has not been the subject of a prior inter partes review by
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`Petitioner or a privy of Petitioner.
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`Petitioner also certifies this petition for inter partes review is filed within
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`one year of the date of service of a complaint alleging infringement of a patent.
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`Petitioner’s customer, Mattress Firm Holding Corp. (“Mattress Firm”), was served
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`with a complaint alleging infringement of the ʼ748 patent on July 13, 2017,
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`captioned No. 1:17-cv-00933 in the U.S. District Court for the District of
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`Delaware. (See Ex. 1011, Affidavit of Service.) A copy of e-Numerate Solutions,
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`Inc.’s (“e-Numerate”) Complaint is attached as Exhibit 1010. In the same suit,
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`Petitioner and its parent, Merrill Corporation, were joined as defendants and served
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`with an amended complaint alleging infringement of the ʼ748 patent on September
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`-1-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`19, 2017. (See Ex. 1013, Affidavit of Service.) A copy of e-Numerate’s Amended
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`Complaint is attached as Exhibit 1012.
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`Because this petition is filed within one year of July 13, 2017, this petition
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`complies with 35 U.S.C. § 315(b).
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`B.
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`Fee for Inter Partes Review (37 CFR § 42.15(a))
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`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 06-1910.
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`C. Mandatory Notices (37 CFR § 42.8(b))
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`i. Real Party in Interest (37 CFR § 42.8(b)(1))
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`The real parties in interest for this petition are Petitioner Merrill
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`Communications LLC, Petitioner’s parent Merrill Corporation, and Mattress Firm.
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`Petitioner and its parent are located at One Merrill Circle, St. Paul, MN 55108.
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`Mattress Firm is located at 5815 Gulf Freeway, Houston, TX 77023.
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`ii. Related Matters (37 CFR § 42.8(b)(2))
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`The ʼ748 patent is the subject of a civil action in the U.S. District Court for
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`the District of Delaware, captioned e-Numerate Solutions, Inc., and e-Numerate,
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`LLC, v. Mattress Firm Holding Corp., Merrill Communications LLC, and Merrill
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`Corp., No. 1:17-cv-00933 (“the district court lawsuit”). Petitioner is
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`contemporaneously filing three additional inter partes review petitions for U.S.
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`-2-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`Patent Nos. 7,650,355; 8,185,816; and 9,262,383, which are asserted in the district
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`court lawsuit in addition to the ’748 patent.
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`iii. Designation of Counsel and Service Information (37 CFR
`§§ 42.8(b)(3)-(4))
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`Petitioner identifies the following counsel (a power of attorney accompanies
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`this Petition):
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`Lead Counsel
`Katherine J. Rahlin
`Reg. No. 75,181
`krahlin@fredlaw.com
`(612) 492-7370
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`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
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`
`Backup Counsel
`Adam R. Steinert
`pro hac vice to be filed
`asteinert@fredlaw.com
`(612) 492-7436
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`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
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`Service information for counsel is provided above. Counsel may also be
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`served by fax at (612) 492-7077.
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`D.
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`Proof of Service (37 CFR §§ 42.6(e) and 42.105(a))
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`Proof of service of this Petition is provided in Attachment A.
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`II.
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`INTRODUCTION AND IDENTIFICATION OF THE CLAIMS
`BEING CHALLENGED (37 CFR § 42.104(B)(1))
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`This is a petition for inter partes review of claims 1, 11, and 19 of U.S.
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`Patent No. 9,268,748 (“the ʼ748 patent”), titled “System, Method, and Computer
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`Program Product for Outputting Markup Language Documents,” issued on
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`February 23, 2016, to Davis and assigned to e-Numerate. The ʼ748 patent is
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`-3-
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`attached as Exhibit 1001. The ʼ748 patent is generally directed to using a
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`computer markup language to organize and manipulate data through the use of
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`“tags” and “macros.” (See Ex. 1001 at 2:59-3:2.)
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`Claims 1, 11, and 19 of the ʼ748 patent are each independent claims. Claims
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`1 and 11 are apparatus claims, and claim 19 is a method claim. Claims 1 and 11
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`are representative of the alleged invention:
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`1. An apparatus, comprising:
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`a device; and
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`an application including a network browser on the device for
`accessing a system configured for:
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`identification of at least one computer-readable Extensible
`Markup Language (XML)-compliant data document
`including:
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`a plurality of line items with a plurality of data values, and
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`a plurality of computer-readable semantic tags that describe
`a semantic meaning of the data values and are each
`computer-readably coupled to at least one of the data
`values, where the at least one computer-readable XML-
`compliant data document is capable of including multiple
`hierarchical relationships between two line items;
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`parsing of the at least one computer-readable XML-compliant
`data document;
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`accessing a plurality of computer-readable rules including:
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`-4-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`a computer-readable datatype rule for validation of a type of
`data values,
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`a computer-readable calculation rule for validation of a
`calculation involving data values, and
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`a computer-readable unit rule for validation of a unit of data
`values;
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`validation of the at least one computer-readable XML-
`compliant data document by:
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`identifying at least a subset of the computer-readable rules
`including at least one of:
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`the computer-readable datatype rule for validation of the
`type of data values,
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`the computer-readable calculation rule for validation of
`the calculation involving data values, or
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`the computer-readable unit rule for validation of the unit
`of data values;
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`processing at least a portion of the data values of at least a
`portion of the line items of the at least one computer-
`readable XML-compliant data document, utilizing the at
`least subset of the computer-readable rules and at least a
`portion of the computer-readable sematic tags of the at
`least one computer-readable XML-compliant data
`document;
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`said apparatus configured for:
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`-5-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`accessing at least a portion of the at least one computer-
`readable XML-compliant data document utilizing the
`application including the network browser.
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`(Ex. 1001 at Cl. 1.)
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`11. A computer program product embodied on a non-transitory computer
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`readable medium, comprising:
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`code for storing a plurality of original documents including a plurality of
`original values, including a first document including first values and a
`second document including second values;
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`code for processing at least a part of the first document and at least a part of
`the second document, resulting in at least one object including at least
`one reference to at least one of the plurality of original values of at least
`one of the plurality of original documents;
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`code for receiving a user selection of one or more computer-readable
`semantic tags;
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`code for receiving a user selection of one or more of the original values;
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`code for mapping the one or more of the computer-readable semantic tags to
`the one or more of the original values;
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`code for outputting a presentation that is based on at least a portion of the at
`least one object, the presentation capable of including at least a portion of
`the original values including the at least one original value, where the
`computer program product is configured such that, based on the at least
`one reference of the at least one object to the at least one original value of
`the at least one original document, a change to the at least one original
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`value of the at least one original document results in a corresponding
`change in an instance of the presentation;
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`code for outputting a report that is based on at least a portion of the at least
`one object, the report capable of including at least a portion of the
`original values including the at least one original value, where the
`computer program product is configured such that, based on the at least
`one reference of the at least one object to the at least one original value of
`the at least one original document, a change to the at least one original
`value of the at least one original document results in a corresponding
`change in an instance of the report; and
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`code for outputting at least one computer-readable Extensible Markup
`Language (XML)-compliant data document that is based on at least a
`portion of the at least one object and at least a portion of the mapping, the
`at least one computer-readable XML-compliant data document capable of
`including a plurality of line items with at least a portion of the original
`values including the at least one original value and at least some of the
`computer-readable semantic tags, where the computer program product is
`configured such that, based on the at least one reference of the at least
`one object to the at least one original value of the at least one original
`document, a change to the at least one original value of the at least one
`original document results in a corresponding change in an instance of the
`at least one computer-readable XML-compliant data document:,
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`said computer program product configured such that the at least some of the
`computer-readable semantic tags are each computer-readably coupled to
`the at least portion of the original values of at least one computer-
`readable XML-compliant data document.
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`-7-
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`(Ex. 1001 at Cl. 11.)
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`The prior art references cited and discussed in this petition are Mastering
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`Access 97 and The XML Handbook. Mastering Access 97 by Alan Simpson and
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`Elizabeth Olson is a textbook published ©1997 by SYBEX Inc. (Ex. 1005.) The
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`book bears Library of Congress Card No. 96-71646 and ISBN 0-7821-1924-7.
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`(See id.) The XML Handbook by Charles Goldfarb and Paul Prescod is a textbook
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`published ©1998 by Prentice Hall PTR. (Ex. 1006.) The book bears Library of
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`Congress Card No. 98-16708 and ISBN 0-13-081152-1. (See id.) Both references
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`are prior art printed publications, because they were made sufficiently available to
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`the public before May 21, 1999, the earliest possible priority date of the ’748
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`patent (discussed in Section III(A) below).
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`“When considering whether a given reference qualifies as a prior art printed
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`publication, the key inquiry is whether the reference was made ‘sufficiently
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`accessible to the public interested in the art’” before the priority date. Voter
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`Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012)
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`(quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). Availability in a
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`public library has long been considered sufficient to satisfy the public accessibility
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`inquiry. See, e.g., In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (holding that a
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`single reference indexed in one university library catalog was a publicly accessible
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`printed publication). For library-housed references to be publicly accessible, an
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`interested researcher must have been able to “locate and examine the reference.”
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`In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). The Federal Circuit has held
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`that “competent evidence of general library practice may be relied upon to
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`establish an approximate time when a [publication] became available.” Id.
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`(quoting Hall, 781 F.2d at 899); see also Constant v. Advanced Micro-Devices,
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`Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (“Evidence of routine business practice
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`can be sufficient to prove that a reference was made accessible before a critical
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`date.”).
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`Mastering Access 97 is a third-party guide describing the structure and
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`functionality of Microsoft’s commercially-available Access 97 database software
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`product. The MARC record for Mastering Access 97 confirms that the book was
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`publicly accessible in the Library of Congress as of March 1997. (See Declaration
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`of Anne Rondoni Tavernier, Ex. 1007, ¶¶ 3-10.) The Library of Congress uses
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`MARC records, standardized cataloguing records widely used by libraries, to
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`record the bibliographic data of a library item. (Id., ¶ 6.) The 955 line of the
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`MARC record – used to track the location of a reference – indicates that the
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`publisher sent the book to the Library of Congress on March 6, 1997. (Id., ¶¶ 11-
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`14.) The final date listed in the 955 field is March 19, 1997, indicating that
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`Mastering Access 97 was available to be checked out by members of the public no
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`later than that date. (See id., ¶ 15.)
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`-9-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`Moreover, the MARC record for Mastering Access 97 contains two subject
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`denotations under line 630: “Microsoft Access,” and “Microsoft Windows
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`(Computer file).” (Id., ¶¶ 16-17.) The MARC record also contains a subject
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`“topical term” codified in field 650, which lists Mastering Access 97 as a
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`“Database management” subject reference. (Id.) Thus, a researcher would have
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`been able to locate Mastering Access 97 in the Library of Congress as of March
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`1997 by searching the subject index fields. Mastering Access 97 is a prior art
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`printed publication under at least 35 U.S.C. §§ 102(a) and (b).
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`The XML Handbook is a textbook describing the structure, functionality,
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`history, and potential uses of XML. It was publicly accessible in the University of
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`California - San Diego Library (“UCSD Library”) as of September 1998. (See Ex.
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`1008, ¶¶ 6-9.) The XML Handbook was catalogued and made available to the
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`public according to the UCSD Library’s regular business practices in September
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`1998. (Id., ¶¶ 7-11.) Specifically, the bibliographic record for The XML
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`Handbook displays a Cataloging Date of September 10, 1998. (Id., ¶ 8.) Based on
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`that Cataloging Date and the regular practices of the UCSD Library, The XML
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`Handbook was publicly accessible within approximately one week of September
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`10, 1998. (Id., ¶ 11.)
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`
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`Furthermore, the UCSD Library bibliographic record indicates that The XML
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`Handbook was assigned a MARC record subject of “XML (Document markup
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`language)” codified in field 650. (Id., ¶ 8.) Therefore, a researcher would have
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`been able to locate The XML Handbook as of mid-September 1998 by using the
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`cataloging data assigned by the UCSD Library. The XML Handbook is a prior art
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`printed publication under at least 35 U.S.C. § 102(a).
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`Thus, the references relied on herein raise a reasonable likelihood that
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`Merrill will prevail with respect to at least one challenged claim, and Merrill’s
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`petition for inter partes review of the ʼ748 patent should be granted.
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`III. BACKGROUND OF THE ʼ748 PATENT
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`A. Effective Filing and Priority Dates of the ʼ748 Patent
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`
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`The ʼ748 patent issued from U.S. Application No. 14/724,801 (“the ʼ801
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`application”), with a filing date of May 28, 2015. The ʼ748 patent is a
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`continuation-in-part of U.S. Application No. 11/819,125, filed on June 25, 2007,
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`which is a division of application No. 09/573,419, which was filed on May 18,
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`2000, is now U.S. Patent No. 7,249,328, and claims priority to two provisional
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`applications: U.S. Provisional Application No. 60/135,525, filed on May 21, 1999,
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`and U.S. Provisional Application No. 60/183,152, filed on February 17, 2000.
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`Accordingly, the earliest possible priority date for the ʼ748 patent is May 21, 1999.
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`B. Relevant Prosecution History of the ʼ748 Patent
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`The file history for the ʼ748 patent is particularly helpful in understanding
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`what e-Numerate claims it invented. The file history is attached as Exhibit 1002.
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`-11-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`The examiner initially rejected e-Numerate’s ’801 application as obvious
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`over U.S. Patent. No. 6,199,046 (“Heinzle”) in view of U.S. Patent No. 6,510,468
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`(“Hayne”) and U.S. Patent No. 5,548,749 (“Kroenke”). (Ex. 1002 at 0304-305.)
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`With respect to the independent claims, the examiner relied on Heinzle for the
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`majority of the elements, cited Hayne for its teaching of processing portions of two
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`separate markup documents, resulting in a single markup document, and cited
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`Kroenke for its disclosure of validation of a value type, a value calculation, and/or
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`a value unit. (Id.) The examiner also noted that XML-compliant markup
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`documents capable of including hierarchical relationships were “notoriously well
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`known” in the art at the time of the invention. (Id.)
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`In response, e-Numerate argued that Heinzle fails to disclose “receiving a
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`user selection of one or more computer-readable semantic tags… receiving a user
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`selection of one or more of the original values… mapping the one or more of the
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`computer-readable semantic tags to the one or more of the original values,” with
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`respect to all three independent claims. (Ex. 1002 at 0199-200.) With respect to
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`claims 21 and 30 (issued claims 11 and 19), e-Numerate argued that none of
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`references disclose changing a value in an output document when the original
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`value is changed in the original document. (Id. at 0201.) Finally, with respect to
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`claim 11 (issued claim 1), e-Numerate argued that none of the references disclose
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`XML-compliant markup documents capable of including hierarchical
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`relationships, and that Kroenke does not disclose a computer-readable rule for
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`validation of a unit of data values or processing the data values using validation
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`rules and semantic tags. (Id. at 0202-05.)
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`
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`Before the examiner responded to e-Numerate’s arguments, e-Numerate
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`filed a supplemental amendment, specifying that the claimed semantic tags that
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`describe semantic meaning of the data values are computer-readably coupled to the
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`data values. (Ex. 1002 at 0145.) The examiner subsequently allowed the ’748
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`patent to issue, but did not provide an explanation as to why the claims were
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`allowable over the prior art. (See Ex. 1002 at 0047-48.)
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`C.
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`Person of Ordinary Skill in the Art (POSITA)
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`
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`A POSITA in the 1999 time frame would have been someone with at least a
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`bachelor’s or graduate degree in computer science, computer engineering, or a
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`related field, and at least 3 to 5 years of work experience in developing software
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`for data communication, manipulation, and reporting. (See Declaration of Andrew
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`D. Hospodor, Exhibit 1003, ¶ 14.)
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`IV. CLAIM CONSTRUCTION (37 CFR § 42.104(B)(3))
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`
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`In this proceeding, claims must be given their broadest reasonable
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`construction in light of the specification. 37 CFR § 42.100(b); Cuozzo Speed
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`Techs. v. Lee, 136 S. Ct. 2131, 2142 (2016).1 If e-Numerate contends terms in the
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`claims should be read to have a special meaning, those contentions should be
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`disregarded unless e-Numerate also amends the claims consistent with 35 U.S.C.
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`§ 112 to make them expressly correspond to those contentions. See 77 Fed. Reg.
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`48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed.
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`Cir. 2012).
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`A.
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`“Semantic Tags”
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`Claim 1 recites the limitation “a plurality of computer-readable semantic
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`tags that describe a semantic meaning of the data values.” Claims 11 and 19 recite
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`the term “semantic tags” throughout, including in the limitation “receiving a user
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`selection of one or more computer-readable semantic tags.”
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`The specification of the ’748 patent includes a Glossary, which defines
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`“[t]agging” as “adding metadata.” (Ex. 1001 at 2:56; see also id. at 15:55-56.)
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`The plain and ordinary meaning of “metadata” was well-known to a POSITA in
`
`1999. The Microsoft Computer Dictionary (4th ed. 1999) defines “metadata” as
`
`
`1 Merrill notes that the broadest reasonable construction is not the appropriate
`
`standard for claim construction in litigation. See generally Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also, e.g., Cuozzo Speed, 136 S. Ct.
`
`at 2144.
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`-14-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`“[d]ata about data.” (Ex. 1009 at 288.) The specification of the ’748 patent uses
`
`the term “metadata” consistently with this definition:
`
`The image database 226 contains document metadata that references
`the original document table or flat file in the original database 230.
`Documentation information contained in the image database 226 is
`added to this data. It further includes line item set metadata for the set
`of line items, documentation that is typically of a more technical
`nature and applies to the line item set as a whole. Examples of such
`information is table types, field definitions (“x values”) and
`hyperlinks that apply to the line item set as a whole. (A line item set
`may be generally analogous to a table; it is a collection of line items,
`which are analogous to records in the database world.)
`
`(Ex. 1001 at 16:34-48 (emphasis added).)
`
`The plain and ordinary meaning of “semantic” was likewise well-known to a
`
`POSITA in 1999. “Semantics” is defined by Microsoft Computer Dictionary (4th
`
`ed. 1999) to mean “1. In programming, the relationship between words or symbols
`
`and their intended meanings.” (Ex. 1009 at 402.) The specification of the ’748
`
`patent uses the term “semantics” consistently with this definition:
`
`Semantics refers to the fact that RDML provides generic tags in which
`indicators of the “meaning” of the numbers, including the
`vocabularies of other SGML and XML markup languages, can be
`placed. This allows RDML to act as a “wrapper” for data from other
`markup language documents. Semantic meaning is also conveyed in
`text-based attributes: legends, titles, labels, footnotes, etc.
`-15-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
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`(Ex. 1001 at 46:11-18.)
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`Accordingly, the broadest reasonable interpretation of “semantic tag” is “a
`
`reference that adds data describing the meaning of the data.”
`
`B.
`
`“Mapping”
`
`Claims 11 and 19 recite the limitation “mapping the one or more of the
`
`computer-readable semantic tags to the one or more of the original values.”
`
`
`
`The plain and ordinary meaning of “mapping” was well-known to a POSITA
`
`in 1999. The Microsoft Computer Dictionary (4th ed. 1999) defines “map” as “[t]o
`
`translate one value into another.” (Ex.1009 at 281.) Nothing in the specification
`
`or prosecution history of the ’748 patent narrows this definition. Accordingly, the
`
`broadest reasonable interpretation of “mapping” is “translating one value into
`
`another.”
`
`C.
`
`“Validation”
`
`Claim 1 recites the limitations “validation of the at least one computer-
`
`readable XML-compliant data document,” “datatype rule for validation of a type of
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`data values,” “calculation rule for validation of a calculation involving data
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`values,” and “unit rule for validation of a unit of data values.”
`
`The plain and ordinary meaning of “validation” was well-known to a
`
`POSITA in 1999. The Microsoft Computer Dictionary (4th ed. 1999) defines
`
`“validity check” as “[t]he process of analyzing data to determine whether it
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`-16-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
`
`conforms to predetermined completeness and consistency parameters.” (Ex. 1009
`
`at 464.) Nothing in the specification or prosecution history of the ’748 patent
`
`narrows this definition. Accordingly, the broadest reasonable interpretation of
`
`“validation” is “analyzing data to determine whether it conforms to predetermined
`
`completeness and/or consistency parameters.”
`
`V.
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`IDENTIFICATION OF SPECIFIC STATUTORY GROUNDS FOR
`CHALLENGE (37 CFR § 42.104(B)(2))
`
`Merrill respectfully requests the cancellation of claims 1, 11, and 19 of the
`
`ʼ748 patent. The statutory grounds for the challenge are set forth below (all
`
`citations are to pre-AIA statues):
`
`Ground 35 USC § Claims
`1
`103(a)
`1, 11, 19
`
`
`
`References
`Mastering Access 97 (Ex. 1005) in view of
`The XML Handbook (Ex. 1006)
`
`VI. DETAILED EXPLANATION AND EVIDENCE SUPPORTING
`GROUNDS FOR CHALLENGE (37 CFR §§ 42.104(B)(4)-(5))
`
`Claims 1, 11, and 19 would have been obvious to a person of ordinary skill
`
`in the art under 35 U.S.C. § 103(a) in view of Mastering Access 97 and The XML
`
`Handbook as set forth below.
`
`A. Disclosure of Mastering Access 97
`
`Mastering Access 97 is a published third-party user guide that describes the
`
`structure and operation of the commercially-available Microsoft Access 97
`
`database software application product. Mastering Access 97 teaches that the
`
`-17-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
`
`Access software could import or link data into the database from a wide variety of
`
`file formats, including HTML tables. (See, e.g., Ex. 1005 at 209-240.) When
`
`Access imports or links a table, each row in the table corresponds to an individual
`
`record (except the first row, which may be used to specify the field names), and the
`
`columns correspond to the individual data fields within each record. (See id.) If
`
`data from an external source is “linked” rather than imported, changes to the data
`
`in the source document will automatically be reflected in the Access database.
`
`(See id.)
`
`Mastering Access 97 likewise teaches that the Access database software
`
`could create dynamic links to the database in output documents, such as reports or
`
`in HTML tables published to the World Wide Web. (See id. at 126, 247-50, 445-
`
`72.) Those dynamic output documents would refresh themselves by querying back
`
`to Access, so that changes to the data in the database were reflected in the output
`
`documents. (See id.)
`
`Mastering Access 97 also teaches that field names and metadata fields within
`
`the database can be used to tag data in the database records with semantic meaning
`
`that can be utilized by the software in queries, calculations, etc. (See, e.g., id. at
`
`74, 357-442, 742-44.) For example, a database field can be tagged with the field
`
`name “State,” and the contents of that field can be used to tag the corresponding
`
`records with the state in which a particular transaction took place. (See, e.g., id. at
`
`-18-
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`Petition for Inter Partes Review of U.S. Patent No. 9,268,748
`
`74, 742-44.) The database software can then use that semantic information to
`
`collect all of the transactions from a particular state, apply that state’s local sales
`
`tax rate to the transactions, etc. (Id.)
`
`B. Disclosure of The XML Handbook
`
`The XML Handbook (attached as Ex. 1006) was written by Charles Goldfarb
`
`– the inventor of XML’s parent language SGML – and Paul Prescod – a member of
`
`the of the World Wide Web Consortium XML team. It describes what a markup
`
`language is, what XML is, how XML works, and the improvements XML brings to
`
`the World Wide Web. (See generally Ex. 1006; see also id. “About the Authors”
`
`(back cover).) The XML Handbook teaches the structure and function of XML.
`
`(See, e.g., id. at 33-47.) For example, The XML Handbook explains that XML is
`
`used for digital representation of documents, using “elements” to represent the
`
`logical components of a document, “attributes” to describe properties of the
`
`elements. (Id. at 34-35.)
`
`The structure and function of XML “allows us to do more precise searches,
`
`deliver software components, describe such things as collections of Web pages and
`
`electronic commerce transactions, and much more.” (Id. at xxxv.) The XML
`
`Handbook explains that at the time the book was published, XML had already
`
`impacted “all types of applications from word processors and spreadsheets to
`
`database managers and email. More and more, such applications are reaching out
`
`-19