Paper: 12
`Trials@uspto.gov
`571-272-7822 Entered: February 13, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`Petitioner,
`
`v.
`
`E-NUMERATE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01392
`Patent 8,185,816 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KEN B. BARRETT, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 13, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`Petitioner,
`
`v.
`
`E-NUMERATE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01392
`Patent 8,185,816 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KEN B. BARRETT, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2018-01392
`Patent 8,185,816 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Merrill Communications LLC d/b/a Merrill Corporation
`
`(“Petitioner”)1 filed a corrected Petition requesting inter partes review of
`U.S. Patent No. 8,185,816 B2 (“the ’816 patent,” Ex. 1001). Paper 11
`(“Pet.”)2. The Petition challenges the patentability of claims 1, 10, 17, 26,
`and 27 of the ’816 patent. e-Numerate Solutions, Inc. (“Patent Owner”)3
`filed a Waiver of Patent Owner’s Preliminary Response. Paper 9.
`
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered
`the arguments and evidence presented by Petitioner, we determine that
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`establishing the unpatentability of the challenged claims of the ’816 patent.
`We institute an inter partes review as to all the challenged claims of the ’816
`patent on all the grounds of unpatentability set forth in the Petition.
`
`
`1 Petitioner identifies Merrill Communications LLC, Merrill Corporation,
`and Mattress Firm Holding Corp. as real parties-in-interest. Pet. 1–2.
`2 References herein are to the Corrected Petition filed December 17, 2018
`(Paper 11). That paper was filed in response to a requirement to submit a
`corrected petition containing pinpoint citations to parts of certain large
`exhibits. See Paper 10.
`3 Patent Owner identifies e-Numerate Solutions, Inc. and e-Numerate, LLC
`as real parties-in-interest. Paper 5, 1.
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`B. Related Proceedings
`One or both parties identify, as matters involving or related to
`
`the ’816 patent, e-Numerate Solutions, Inc., and e-Numerate, LLC, v.
`Mattress Firm Holding Corp., Merrill Communications LLC, and Merrill
`Corp., No. 1:17-cv-00933 (D. Del.), and Patent Trial and Appeal Board
`cases IPR2018-01389 (Patent No. 9,268,748), IPR2018-01391 (Patent
`No. 9,262,383) and IPR2018-01394 (Patent No. 7,650,355). See Pet. 2;
`Paper 5, 2.
`
`C. The ’816 Patent
`The ’816 patent relates to a computer markup language for use in a
`
`data browser and manipulator. Ex. 1001, Abstract, 1:29–31. The ’816
`patent discloses a system and method for processing markup documents. Id.
`In particular, the ’816 patent describes receiving two markup documents that
`include numerical values and tags reflecting characteristics of the numerical
`values. Id. at 3:65–4:3. The first markup document and the second markup
`document are combined into a single data set, which is displayed. Id. at 4:3–
`6.
`
`
`Figure 2 of the ’816 patent is reproduced below.
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`Figure 2 of the ’816 patent depicts data processing system 200 that
`comprises computer 201 and server computer 203 interconnected via
`network 214, such as the Internet. Id. at 13:48–52. Computer 201 includes
`central processing unit 202, main memory 204, secondary storage device
`206, display 210, and input device 212. Id. at 13:53–56. Server computer
`203 may provide Reusable Data Markup Language (“RDML”)
`documents 102 to computer 201. Id. at 13:52–53.
`
`D. Illustrative Claim
`All of the challenged claims of the ’816 patent, claims 1, 10, 17, 26,
`
`and 27, are independent claims. Claim 1, reproduced below, is illustrative:
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`1. [1a] A method in a data processing system, comprising
`
`the steps of:
`
`[1b] receiving a first markup document and a second
`markup document, both the first markup document and the
`second markup document including numerical values and tags
`reflecting characteristics of the numerical values, [1c] wherein
`the characteristics indicate that the numerical values of the first
`markup document differ in format from the numerical values of
`the second markup document;
`
`[1d] automatically transforming the numerical values of at
`least one of the first markup document and the second markup
`document, so that the numerical values of the first markup
`document and the second markup document have a common
`format;
`
`[1e] combining the first markup document and the second
`markup document into a single data set; and
`
`[1f] displaying the single data set.
`Ex. 1001, 55:6–24 (bracketed matter added4).
`
`
`
`E. Evidence
`Petitioner relies on the following references:
`Reference
`
`Alan Simpson & Elizabeth Olson, Mastering Access 97® (4th
`ed. 1997) (“Simpson”)
`Charles F. Goldfarb & Paul Prescod, The XML Handbook
`(1998) (“Goldfarb”)
`Lyons, US Patent No. 5,189,608, issued Feb. 23, 1993
`
`Exhibit
`No.
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Petitioner also relies on the Declaration of Andrew David Hospodor,
`
`dated July 13, 2018, (Ex. 1003) in support of its arguments.
`
`
`4 We utilize Petitioner’s bracketed annotations for claim 1 and have retained
`the paragraphing from the issued patent.
`5
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`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis
`Claims
`Simpson
`§ 103(a) 1, 10, 17, 26, 27
`Simpson and Goldfarb
`§ 103(a) 1, 10, 17, 26, 27
`Lyons
`§ 103(a) 1, 10, 17, 26
`Lyons and Goldfarb
`§ 103(a) 1, 10, 17, 26, 27
`
`II. ANALYSIS
`A. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) any objective evidence of
`non-obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`
`B. The Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Hospodor, opines that:
`[A] person of ordinary skill in the art pertaining to the ʼ816 patent
`in the 1999 time frame would have been someone with at least a
`bachelor’s or graduate degree in computer science, computer
`
`5 The parties have not directed our attention to any objective evidence of
`non-obviousness.
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`engineering, or a related field, and at least 3 to 5 years of work
`experience in developing software for data communication,
`manipulation, and reporting.
`Ex. 1003 ¶ 15; see Pet. 10. Dr. Hospodor’s definition is consistent with the
`level of ordinary skill reflected in the prior art references of record. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art
`itself may reflect an appropriate level of skill in the art). For purposes of
`this decision, we apply Dr. Hospodor’s definition of the person of ordinary
`skill in the art.
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2018)6; see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this
`Decision, we address the claim terms identified below to clearly inform the
`parties as to our preliminary understanding of these terms.
`
`
`6 A recent amendment to this rule does not apply here because the original
`Petition was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51340, 51340 (Oct. 11,
`2018).
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`
`1. “markup document”
`Each of the challenged claims recites the term “markup document.”
`
`For example, claim 1 recites “receiving a first markup document and a
`second markup document, both the first markup document and the second
`markup document including numerical values and tags reflecting
`characteristics of the numerical values.” Ex. 1001, 55:8–11. Petitioner
`argues that the term “markup document” should be interpreted as “a
`document including sequences of characters providing information about the
`data it contains.” Pet. 12. As support, Petitioner (Pet. 12) directs our
`attention to the Microsoft Computer Dictionary (4th ed. 1999), which
`defines the term “markup language” as:
`A set of codes in a text file that instruct a computer how to format
`it on a printer or video display or how to index and link its
`contents. Examples of markup languages are Hypertext Markup
`Language (HTML) and Extensible Markup Language (XML),
`which are used in Web pages, and Standard Generalized Markup
`Language (SGML), which is used for typesetting and desktop
`publishing purposes and in electronic documents. Markup
`languages of this sort are designed to enable documents and other
`files to be platform-independent and highly portable between
`applications. See also HTML, SGML, [and] XML.
`Ex. 1010, 282.
`
`Petitioner also submits that the “Background” section of the ’816
`patent’s specification states that “[a] markup language is a way of
`embedding markup ‘tags,’ special sequences of characters, that describe the
`structure as well as the behavior of a document and instruct a web browser
`or other program on how to display the document.” Pet. 11–12 (citing
`Ex. 1001, 1:37–41).
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`Because Petitioner’s proposed claim construction is consistent with
`
`the Specification of the ’816 patent and the general knowledge of an
`ordinarily skilled artisan, we adopt Petitioner’s claim construction,
`interpreting “markup document” as “a document including sequences of
`characters providing information about the data it contains,” for purposes of
`this Decision.
`2. “tags”
`Each of the challenged claims recites the term “tags.” For example,
`
`claim 1 recites “receiving a first markup document and a second markup
`document, both the first markup document and the second markup document
`including numerical values and tags reflecting characteristics of the
`numerical values.” Ex. 1001, 55:8–11 (emphasis added).
`
`Petitioner proposes to construe “tags” as “a sequence of characters
`that adds data about data.” Pet. 13. We adopt this proposed construction, as
`it is consistent with the Specification of the ’816 patent. As Petitioner points
`out, the Specification defines “tagging” as “adding metadata” (Ex. 1001,
`17:54–56) and the Microsoft Computer Dictionary (4th ed. 1999) defines
`“metadata” as “[d]ata about data” (Ex. 1010, 288). Pet. 12–13. The
`Specification uses “metadata” in a manner consistent with this definition.
`Ex. 1001, 18:37–48. Also the Specification states that “[a] markup language
`is a way of embedding markup ‘tags,’ special sequences of characters, that
`describe the structure as well as the behavior of a document and instruct a
`web browser or other program on how to display the document.” Id. at
`1:37–41; see Pet. 13 (citing the same). In sum, for purposes of this
`Decision, we interpret “tags” as “a sequence of characters that adds data
`about data.”
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`D. Obviousness over Simpson Alone or in Combination with Goldfarb
`Petitioner alleges that claims 1, 10, 17, 26, and 27 of the ’816 patent
`
`would have been obvious over Simpson alone or over the combination of
`Simpson and Goldfarb. See Pet. 17–51. Petitioner provides detailed
`explanations as to how each claim limitation is met by Simpson alone and in
`view of Goldfarb, citing Dr. Hospodor’s declaration for support. Id. (citing
`Ex. 1003).
`1. Simpson (Ex. 1005)
`Simpson is a user guide that describes the structure and operation of
`
`the Microsoft Access 97 database management system software. Ex. 1005.
`Simpson teaches that the Access database software could import or link data
`into the database from a wide variety of file formats, including hypertext
`markup language (“HTML”) tables. Id. at Part 5, 209−40. It also 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. Id. at Part 3, 126; Part 5, 247−50; Part 9, 445−72.
`Simpson further 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 and calculations. Id.
`at Part 2, 74; Part 8, 359−414; Part 9, 419−33; Part 11, 742−44.
`2. Goldfarb (Ex. 1006)
`Goldfarb discloses how XML works and the improvements XML
`
`brings to computing systems and the World Wide Web, including the
`structure and function of XML. See, e.g., Ex. 1006, Part 1, 33−47; Part 2,
`153−62. According to Goldfarb, the structure and function of XML “allows
`us to do more precise searches, deliver software components, describe such
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`things as collections of Web pages and electronic commerce transactions,
`and much more.” Id. at Part 1, xxxv. At the time the book was published,
`XML already had impacted “all types of applications from work processors
`and spreadsheets to database managers and email. More and more, such
`applications are reaching out to the Web, tapping into the power of the Web,
`and it is XML that is enabling them to do so.” Id. at Part 1, xxxvi.
`
`In addition, Goldfarb discloses several examples of how XML has
`been implemented to improve computing systems. For instance, Goldfarb
`discloses an XML visual editing and publishing tool for a government filing
`application, including the Securities Exchange Commission (“SEC”)
`EDGAR reporting system. Id. at Part 2, 153−62. Goldfarb describes the use
`of Document Type Definitions (“DTDs”) associated with EDGAR to
`facilitate the reporting of financial data in SEC 10-K filings. Id. at Part 1,
`41; Part 2, 154−58.
`3. Analysis
`Petitioner asserts that Simpson alone or in view of Goldfarb renders
`
`claims 1, 10, 17, 26, and 27 obvious. Pet. 17–51. Petitioner provides
`detailed explanations as to how Simpson alone and in view of Goldfarb
`teaches or suggests every limitation of the challenged claims, and provides
`reasoning to combine the teachings of Simpson and Goldfarb, citing
`Dr. Hospodor’s testimony for support. Id.; see Ex. 1003.
`
`Upon review of Petitioner’s explanations and supporting evidence, we
`are persuaded that Petitioner has demonstrated sufficiently for purposes of
`this Decision that Simpson alone and in combination with Goldfarb renders
`the claimed subject matter obvious. Notably, Petitioner provides claim
`charts, mapping each limitation of claims 1, 10, 17, 26, and 27 to the prior
`
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`art teachings. Pet. 17–51. We discuss below Petitioner’s contentions
`regarding independent claim 1, which recites a method in a data processing
`system and is illustrative of the claimed subject matter. Independent system
`claim 10, independent computer readable medium claim 17, independent
`system claim 26, and independent method claim 27 contain recitations
`similar to those of claim 1.
`
`Petitioner explains that Simpson teaches “[a] method in a data
`processing system,” as required by claim 1, because Simpson describes the
`use of a database management system (“DBMS”) to process data. Id. at 19
`(citing Ex. 1005, Part 1, 5).
`
`With respect to limitation [1b] recited in claim 1 (reproduced above),
`Petitioner explains that Simpson teaches the use of Microsoft Access 97
`software to import tables of numerical data from a variety of sources,
`including spreadsheets, text files, HTML files, Internet sources, and other
`databases. Id. at 19−22 (citing Ex. 1005, Part 5, 209−40; Figs. 7.17, 7.18).
`Petitioner notes that, during the import process, the user identifies which text
`character acts as the delimiter separating the different data fields, and also
`chooses whether to use the contents of the first row in the imported file as
`field names for the data. Id. at 20–21 (citing Ex. 1005, Part 5, 231−32).
`Also, Microsoft Access 97 will attempt to identify the correct data type for a
`field based on the contents of the imported data. Id. at 21 (citing Ex. 1005,
`Part 5, 225). But the user can create an “import specification” that assigns
`particular data types to each imported field, identified by the field name. Id.
`at 21 (citing Ex. 1005, Part 5, 231−37).
`
`Petitioner further explains that the field names located in the first line
`of the imported text file act as tags identifying the data type (such as
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`“currency”) for the imported data fields. Id. at 21 (citing Ex. 1003 ¶¶ 35,
`38–39). And HTML is a well-known markup language. Id. at 22 (citing
`Ex. 1001, 1:33–43). Petitioner notes that Simpson teaches that “a database
`can contain many tables,” and storing information in multiple tables within
`the database is often advantageous because “it’s easier to manage data if all
`the information about a particular subject is in its own table.” Id. at 22
`(quoting Ex. 1005, Part 2, 43). Dr. Hospodor testifies that a person of
`ordinary skill in the art would have understood that Simpson teaches the
`creation of a database by importing and/or linking data from multiple data
`sources, including multiple HTML tables. Ex. 1003 ¶¶ 35–39; see Pet. 22.
`
`As to limitation [1c] recited in claim 1, Petitioner asserts that Simpson
`teaches that numerical values imported or linked from different source
`documents may have different formats. Pet. 22. Petitioner notes, as
`examples, that Simpson teaches an “import specification” or “link
`specification” to address differences and indicates that some countries use a
`date order and a date delimiter that are different than in United States
`(e.g., 09.11.53 in France as opposed to 11/9/53 in the United States). Id.
`at 23 (citing Ex. 1005, Part 5, 231–37). Petitioner, referring to its
`contentions for limitation [1b], asserts that the import or link specification
`identifies the file being formatted by its field name, which may be imported
`from the first line of the source data file, and that those column headings act
`as tags associating the imported data fields with the corresponding data type
`and format. Id. at 23–24 (citing Ex. 1003 ¶¶ 35–39). Dr. Hospodor testifies
`that a person of ordinary skill in the art “would understand this approach as
`being useful in populating a database by importing and/or linking data from
`multiple data sources, including multiple HTML tables and spreadsheets”
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`and that “[f]ield names (tags) could be used by Access 97 to associate a
`particular value, such as currency or sale tax rate, with a corresponding
`object, such as a product, country or state.” Ex. 1003 ¶ 39. Dr. Hospodor
`also testifies that a person of ordinary skill in the art “would have found it
`obvious that records imported from multiple different sources might have
`different formats.” Id. ¶ 47.
`
`Regarding limitation [1d] recited in claim 1, Petitioner submits that
`Simpson discloses the use of macros and Visual Basic code to automatically
`perform a wide variety of operations on the data contained in a database,
`including imported numerical data. Id. at 24 (citing Ex. 1003 ¶ 45;
`Ex. 1005, Part 11, 733−63; Part 12, 856−66). Petitioner notes that Simpson
`provides an example of the use of a macro to automatically reformat
`percentages entered as whole numbers (e.g., “30”) rather than decimals (e.g.,
`“0.30”). Id. at 24 (citing Ex. 1005, Part 11, 755−58). Citing to
`Dr. Hospodor’s testimony as support, Petitioner contends that a person of
`ordinary skill would have understood that the a likely cause of two sets of
`data having different formats is importing the sets from different sources,
`and contends that, based on the teachings of Simpson, it would have been
`obvious to use macros or Visual Basic code to automatically transform one
`series of numerical values to match the format of a second series of
`numerical data from a different source document. Id. (citing Ex. 1003
`¶¶ 35–40, 43, 45–47).
`
`For limitation [1e] recited in claim 1, Petitioner maintains that
`Simpson discloses appending data imported from an HTML document to an
`existing table, rather than imported as a new table, and using macros to copy
`data within a database or between databases. Id. at 24–25 (citing Ex. 1005,
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`Part 5, 228, 229, 232 (“To add the imported data [from a text file] to the end
`of an existing table, choose In An Existing Table, use the drop-down list to
`select the existing table, and then click on Next”); 238, Part 11, 740,
`750−55). Citing to Dr. Hospodor’s testimony as support, Petitioner
`contends that a person of ordinary skill in the art would have understood that
`Simpson describes multiple techniques for merging data imported from two
`source documents into a single data set and that it would have been obvious
`to do so. Id. at 25 (citing Ex. 1003 ¶¶ 37–43).
`
`Lastly, in connection with limitation [1f] recited in claim 1, Petitioner
`asserts that Simpson discloses displaying data sets, including data sets
`imported from HTML documents. Id. (citing Ex. 1005, Part 5, 238;
`Fig. 7.18).
`
`As to the reason to combine the teachings of Simpson and Goldfarb,
`Petitioner notes that Simpson teaches that the Microsoft Access 97 database
`software has the capability to import and output data in HTML format. Id.
`at 34 (citing Ex. 1005, Part 3, 125−26; Part 5, 237−40). Petitioner also notes
`that, as taught by Goldfarb, XML was designed to expand the capabilities of
`HTML and to provide an application-independent file format to make it
`easier to share information between different applications. Id. at 34–35
`(citing Ex. 1006, Part 1, xxxv−xl).
`
`Dr. Hospodor testifies that this advantage of using XML was one of
`the motivations for one of ordinary skill in the art to translate all manner of
`file formats into XML. Ex. 1003 ¶¶ 17, 76, 77, 80, 81; see Pet. 35.
`Dr. Hospodor also testifies that “from its inception, XML was used to store
`all manner of data files, and has been incorporated into a wide variety of
`data formats” and doing so would have been easy for a software program
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`like Microsoft Access that already had the ability to import and export data
`in HTML format. Ex. 1003 ¶¶ 77, 80.
`
`In addition, Petitioner asserts that, at the time of the invention, an
`ordinarily skilled artisan could use free, publicly-available software (e.g., the
`Microsoft XSL processor or “docproc”) to convert between XML and
`HTML. Pet. 34 (citing Ex. 1006, Part 5, 397−98). Citing to Dr. Hospodor’s
`testimony as support (Ex. 1003 ¶¶ 76–80), Petitioner avers that such an
`artisan would have used these tools to import XML data into the Access 97
`database, and would have understood that these tools could be used as stand-
`alone applications or incorporated into a database program using standard
`coding, database query, or macro techniques. Pet. 34 (citing Ex. 1005, Part
`8, 359−415 (queries); Part 11, 733−64 (macros); Part 12, 853−68 (coding in
`Visual Basic for Applications)). Petitioner further explains that an ordinarily
`skilled artisan would have been motivated to add the XML features and
`functionality taught by Goldfarb to expand the set of file types compatible
`with the Access 97 software described in Simpson. Id. at 35 (citing Ex.
`1003 ¶ 78).
`
`In view of the foregoing reasons, we are persuaded that Petitioner has
`articulated a sufficient reason for purposes of this Decision why one of
`ordinary skill in the art would have combined the teachings of Simpson and
`Goldfarb. We determine that Petitioner has demonstrated sufficiently, for
`purposes of this Decision, that Simpson alone and in view of Goldfarb
`teaches or suggests each limitation of at least challenged claim 1. As
`mentioned, challenged claims 10, 17, 26, and 27 contain similar recitations.
`At this junction, Patent Owner does not dispute Petitioner’s showing, as
`Patent Owner waived the filing of a preliminary response. Consequently, we
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`conclude that Petitioner has established that there is a reasonable likelihood
`of prevailing with respect to at least one claim challenged as being
`unpatentable under § 103 as obvious over Simpson alone and in view of
`Goldfarb.
`
`E. Obviousness over Lyons Alone or in Combination with Goldfarb
`Petitioner alleges that claims 1, 10, 17, and 26 of the ’816 patent
`
`would have been obvious over Lyons alone, and that claims 1, 10, 17, 26,
`and 27 would have been obvious over the combination of Lyons and
`Goldfarb. See Pet. 51–68. Petitioner provides detailed explanations as to
`how each claim limitation is met by Simpson alone and in view of Goldfarb,
`citing Dr. Hospodor’s declaration for support. Id. (citing Ex. 1003).
`1. Lyons (Ex. 1007)
`Lyons discloses a financial reporting analysis software package that
`
`collects, organizes, manages, and consolidates financial data and provides
`user-defined capabilities for creating financial and corporate reports.
`Ex. 1007, 2:16−20. Lyons discloses a data processing system that allows the
`user to specify characteristics of numerical data, including the currency type
`(e.g., U.S. dollars) and the denomination/data precision (e.g., whether the
`input amount is in thousands, millions, etc.). Id. at 11:38−64. Lyons also
`describes transforming financial data in multiple formats into a common
`format and outputting information in a common format. Id. at
`Abstract, 3:3−9. A user can automatically generate reports from the data in
`the database, including combining data from two separate schedules to
`generate a single report. Id. at 15:42−44, 24:8−13, Table XV. The user also
`can specify the data precision and currency to be displayed in the reports.
`Id. at 17:39−18:1, 21:60−63. Furthermore, Lyons teaches that numerical
`
`17
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`IPR2018-01392
`Patent 8,185,816 B2
`
`values, such as currency, can be converted using a currency conversion
`function. Id. at 3:23−25.
`2. Analysis
`Petitioner asserts that Lyons alone renders claims 1, 10, 17, and 26
`
`obvious and that Lyons in view of Goldfarb renders claims 1, 10, 17, 26,
`and 27 obvious. Pet. 51−68. Petitioner provides detailed explanations as to
`how Lyons alone and in view of Goldfarb teaches or suggests every
`limitation of the challenged claims, and provides reasoning to combine the
`teachings of Lyons and Goldfarb, citing Dr. Hospodor’s testimony for
`support. Id.; see Ex. 1003.
`
`Upon review of Petitioner’s explanations and supporting evidence, we
`are persuaded that Petitioner has demonstrated sufficiently for purposes of
`this Decision that Lyons alone and in combination with Goldfarb renders the
`claimed subject matter obvious. Notably, Petitioner provides claim charts,
`mapping each limitation of claims 1, 10, 17, 26, and 27 to the prior art
`teachings. Pet. 51–68. We discuss below Petitioner’s contentions regarding
`independent claim 1, which recites a method in a data processing system and
`is illustrative of the claimed subject matter. As mentioned, independent
`claims 10, 17, 26, and 27 contain recitations similar to those of claim 1.
`
`Petitioner explains that Lyons teaches “[a] method in a data
`processing system,” as required by claim 1, because Lyons describes a
`computer system comprising a plurality of personal computers that include a
`database management program stored in the memory of one of the
`computers. Id. at 52 (citing Ex. 1007, 3:64−4:4, Fig. 1).
`
`For limitation [1b] recited in claim 1 (reproduced above), Petitioner
`asserts that one of ordinary skill in the art would have understood that Lyons
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`IPR2018-01392
`Patent 8,185,816 B2
`
`teaches receiving markup documents including numerical values with tags
`reflecting characteristics of the numerical values. Id. at 52–54. As support,
`Petitioner notes that, in Lyons, “[d]ata is stored in the system in such a way
`that all data associated with a particular Schedule, Entity, Period, and Type
`(SEPT) is identified by that particular SEPT value,” and “[t]he data from the
`input file will then be stored in the system’s database in association with the
`SEPT value read from the input file.” Id. at 53 (quoting Ex. 1007, 2:50−54,
`14:38−41). Petitioner also submits that Lyons’ system allows the user to tag
`the numerical data being passed through an input template with
`characteristics of that data because “[t]he CURRENCY selection allows the
`user to specify whether to use the Parent Currency (e.g., U.S. dollars) or to
`use local currency (e.g., Pesos)” and “[t]he DENOMINATION selection
`allows the user to specify whether the input amounts are in thousands,
`million, etc.” Id. at 53–54 (quoting Ex. 1007, 11:38−64).
`
`Regarding limitation [1c] recited in claim 1, Petitioner avers that a
`person of ordinary skill in the art would have understood that the SEPT tags
`and the CURRENCY and DENOMINATION specifications of the markup
`documents could indicate that the numerical values of two markup
`documents differ in format, such as U.S. dollars versus pesos. Id. at 54
`(citing Ex. 1003 ¶¶ 70–72).
`
`For limitation [1d] recited in claim 1, Petitioner explains that Lyons
`discloses transforming information in multiple formats into a common
`format, generating reports automatically, and converting numerical values
`(e.g., currency conversion). Id. at 54–55 (citing Ex. 1007, Abstract, 3:3−9,
`3:23−25, 15:42−44, 17:39−18:1, 21:60−63). Citing to Dr. Hospodor’s
`testimony, Petitioner avers that one of ordinary skill in the art would have
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`IPR2018-01392
`Patent 8,185,816 B2
`
`understood that Lyons’ reporting software could be used to transform
`numerical data from two markup documents so that the numerical values of
`the documents have a common format, and contends that it would have been
`obvious to do so. Id. at 55 (citing Ex. 1003 ¶¶ 72−75).
`
`As to limitation [1e] recited in claim 1, Petitioner maintains that
`Lyons discloses combining data from two separate schedules (markup
`documents) from the database into a single data set in a reference file to
`generate a report. Id. at 55–56 (citing Ex. 1007, 24:8−13, Table XV).
`
`Lastly, regarding limitation [1f] recited in claim 1, Petitioner argues
`that each computer of the data processing system shown in Figure 1 of
`Lyons “includes a video display 32, a printer 34, and a keyboard 36 that
`provides for alphanumeric input, function keys and cursor control,” and
`“[d]ata can be input from the keyboard or from computer files such as
`electronic worksheets [and] output to printed reports and to electronic
`worksheets.” Id. at 56 (quoting Ex. 1007, 4:14−20, Fig. 1).
`
`As to the reason to combine the teachings of Lyons and Goldfarb,
`Petitioner argues that Goldfarb provides an express motivation to combine
`
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