Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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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. 8,185,816
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`Issue Date: May 22, 2012
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`Title:
`COMBINING REUSABLE DATA MARKUP LANGUAGE DOCUMENTS
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,185,816
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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. 8,185,816
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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 ʼ816 Patent ........................................................................ 8
`A.
`Effective Filing and Priority Dates of the ʼ816 Patent .......................... 8
`B.
`Relevant Prosecution History of the ʼ816 Patent .................................. 9
`C.
`Person of Ordinary Skill in the Art (POSITA)....................................10
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`IV. Claim Construction (37 CFR § 42.104(b)(3)) ...............................................10
`A.
`“Markup Document” ...........................................................................11
`B.
`“Tags” ..................................................................................................12
`C.
`“Means for Receiving” ........................................................................13
`D.
`“Means for Automatically Transforming” ..........................................14
`E.
`“Means for Combining” ......................................................................15
`F.
`“Means for Displaying” ......................................................................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. Ground 1: Obviousness of Claims of 1, 10, 17, 26, and 27
`Based on Mastering Access 97 ............................................................17
`Disclosure of Mastering Access 97 ...........................................17
`i.
`Comparison of Claims 1, 10, 17, 26, and 27 to Mastering
`ii.
`Access 97 ...................................................................................18
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`-i-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`B. Ground 2: Obviousness of Claims 1, 10, 17, 26, and 27 Based
`on Mastering Access 97 in Combination with The XML
`Handbook ............................................................................................32
`Disclosure of Mastering Access 97 ...........................................32
`i.
`Disclosure of The XML Handbook ...........................................32
`ii.
`iii. Rationale for Combining the Teachings of Mastering
`Access 97 and The XML Handbook ..........................................34
`iv. Comparison of Claims 1, 10, 17, 26, and 27 to Mastering
`Access 97 and The XML Handbook ..........................................36
`C. Ground 3: Obviousness of Claims of 1, 10, 17, and 26 Based on
`Lyons ...................................................................................................51
`i.
`Disclosure of Lyons ..................................................................51
`ii.
`Comparison of Claims 1, 10, 17, and 26 to Lyons ...................52
`D. Ground 4: Obviousness of Claims 1, 10, 17, 26, and 27 Based
`on Lyons in Combination with The XML Handbook ..........................61
`i.
`Disclosure of Lyons ..................................................................61
`Disclosure of The XML Handbook ...........................................61
`ii.
`iii. Rationale for Combining the Teachings of Lyons and The
`XML Handbook .........................................................................61
`iv. Comparison of Claims 1, 10, 17, 26, and 27 to Lyons and
`The XML Handbook ..................................................................62
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`VII. CONCLUSION ..............................................................................................68
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`Attachment A. Proof of Service of the Petition
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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. 8,185,816
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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, 10, 17, 26, and 27 of U.S. Patent No. 8,185,816 (“the ʼ816 patent”)
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`(Ex. 1001) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et
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`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 ʼ816 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 ʼ816
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`patent. The ʼ816 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 ʼ816 patent on or about July 13,
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`2017, captioned No. 1:17-cv-00933 in the U.S. District Court for the District of
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`Delaware. (See Ex. 1012, Affidavit of Service.) A copy of e-Numerate Solutions,
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`Inc.’s (“e-Numerate”) Complaint is attached as Exhibit 1011. In the same suit,
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`Petitioner and its parent, Merrill Corporation, were joined as defendants and
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`-1-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`served with an amended complaint alleging infringement of the ʼ816 patent on or
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`about September 19, 2017. (See Ex. 1014, Affidavit of Service.) A copy of e-
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`Numerate’s Amended Complaint is attached as Exhibit 1013.
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`Because the date of this petition is less than one year from July 13, 2017,
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`this petition 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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`and 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 ʼ816 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. 8,185,816
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`Patent Nos. 7,650,355; 9,262,383; and 9,268,748, which are asserted in the district
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`court lawsuit in addition to the ’816 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
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`accompanies 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
`
`
`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, 10, 17, 26, and 27 of
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`U.S. Patent No. 8,185,816 (“the ʼ816 patent”), titled “Combining Reusable Data
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`Markup Language Documents,” issued on May 22, 2012, to Davis and assigned to
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`e-Numerate. The ʼ816 patent is attached as Exhibit 1001. The ʼ816 patent is
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`-3-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`generally directed to using a computer markup language to organize and
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`manipulate data through the use of “tags” and “macros.” (See Ex. 1001 at 3:54-
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`64.)
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`Claims 1, 10, 17, 26, and 27 of the ʼ816 patent are each independent claims.
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`Claims 1 and 27 are method claims, claims 10 and 26 are system claims, and
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`claim 17 is an apparatus claim. Claim 1 is representative of the alleged invention:
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`1. A method in a data processing system, comprising the steps of:
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`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, 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;
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`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;
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`combining the first markup document and the second markup
`document into a single data set; and
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`displaying the single data set.
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`(Ex. 1001, Cl. 1.)
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`-4-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`The prior art references cited and discussed in this petition for inter partes
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`review are Mastering Access 97 1997, The XML Handbook, and U.S. Patent No.
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`5,189,608 to Lyons et al. (“Lyons”).
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`Mastering Access 97 by Alan Simpson & Elizabeth Olson is a textbook
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`published ©1997 by SYBEX Inc. (Ex. 1005.) The book bears Library of
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`Congress Card No. 96-71646 and ISBN 0-7821-1924-7. (See id.) The XML
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`Handbook by Charles Goldfarb and Paul Prescod is a textbook published ©1998
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`by Prentice Hall PTR. (Ex. 1006.) The book bears Library of Congress Card No.
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`98-16708 and ISBN 0-13-081152-1. (See id.) Both references are prior art
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`printed publications, because they were made sufficiently available to the public
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`before May 21, 1999, the earliest possible priority date of the ’748 patent
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`(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. See Voter
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`Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir.
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`2012). Availability in a public library has long been considered sufficient to
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`satisfy the public accessibility inquiry. See, e.g., In re Hall, 781 F.2d 897, 899
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`(Fed. Cir. 1986) (holding that a single reference indexed in one university library
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`catalog was a publicly accessible printed publication). For library-housed
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`references to be publicly accessible, an interested researcher must have been able
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`to “locate and examine the reference.” In re Lister, 583 F.3d 1307, 1311 (Fed.
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`Cir. 2009). The Federal Circuit has held that “competent evidence of general
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`library practice may be relied upon to establish an approximate time when a
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`[publication] became available.” Id. (quoting Hall, 781 F.2d at 899); see also
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`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)
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`(“Evidence of routine business practice can be sufficient to prove that a reference
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`was made accessible before a critical 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. 1008, ¶¶ 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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`-6-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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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
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`Declaration of Peter Rolla, Ex. 1009, ¶¶ 6-9.) The XML Handbook was
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`catalogued and made available to the public according to the UCSD Library’s
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`regular business practices in September 1998. (Id., ¶¶ 7-11.) Specifically, the
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`bibliographic record for The XML Handbook displays a Cataloging Date of
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`September 10, 1998. (Id., ¶ 8.) Based on that Cataloging Date and the regular
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`practices of the UCSD Library, The XML Handbook was publicly accessible
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`within approximately one week of September 10, 1998. (Id., ¶ 11.)
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`Furthermore, the UCSD Library bibliographic record indicates that The
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`XML Handbook was assigned a MARC record subject of “XML (Document
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`-7-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`markup language)” codified in field 650. (Id., ¶ 8.) Therefore, a researcher would
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`have been able to locate The XML Handbook as of mid-September 1998 by using
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`the cataloging data assigned by the UCSD Library. The XML Handbook is a prior
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`art printed publication under at least 35 U.S.C. § 102(a).
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`Lyons is a U.S. patent directed to a database system that tagged financial
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`records “with a particular Schedule, Entity, Period and Type” (SEPT) value for
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`easier retrieval and manipulation. It was issued on February 23, 1993.
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`Accordingly, Lyons is prior art under at least 35 U.S.C. §§ 102(a) and (b).
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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 ʼ816 patent should be granted.
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`III. BACKGROUND OF THE ʼ816 PATENT
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`A. Effective Filing and Priority Dates of the ʼ816 Patent
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`
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`The ʼ816 patent issued from U.S. Application No. 12/222,752 (“the ʼ752
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`application”), with a filing date of August 15, 2008. The ʼ816 patent is a division
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`of U.S. Application No. 09/573,778, which was filed on May 18, 2000, is now
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`U.S. Patent No. 7,421,648, and claims priority to two provisional applications:
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`U.S. Provisional Application No. 60/135,525, filed on May 21, 1999, and U.S.
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`Provisional Application No. 60/183,152, filed on February 17, 2000.
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`-8-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`Accordingly, the earliest possible priority date for the ʼ816 patent is May 21,
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`1999.
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`B. Relevant Prosecution History of the ʼ816 Patent
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`The file history for the ʼ816 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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`The examiner initially rejected e-Numerate’s ’752 application as obvious
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`over U.S. Patent No. 6,507,856 (“Chen”). (Ex. 1002 at 0598.) With respect to the
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`independent claims as filed, the examiner noted that while Chen does not
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`explicitly teach that a second markup document (an xml template document)
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`includes numerical values, it would have been obvious, as “it is commonly known
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`in that xml template document may include any type of data (i.e. including
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`numerical values).” (See, e.g., id. at 0599-600.)
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`In response, e-Numerate did not dispute that Chen rendered the claims
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`obvious as filed. Instead, e-Numerate amended the independent claims to include
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`limitations specifying that “the numerical values of the first markup document
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`differ in format from the numerical values of the second markup document” and
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`“automatically transforming the numerical values of at least one of the first
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`markup document and the second markup document, so that the numerical
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`values… have a common format.” (Id. at 0655-63.)
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`-9-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`Based on e-Numerate’s amendment, the examiner allowed the ’816 patent
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`to issue. (Id. at 0698-700.) In the Reasons for Allowance, the examiner noted
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`that the prior art fails to disclose the amended limitations, specifically that the
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`numerical values of the first and second markup documents differ in format and
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`that the numerical values of at least one of the documents are automatically
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`transformed so that the numerical values of the two documents have a common
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`format. (Id.)
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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 field of the ʼ816 patent in the 1999 time frame would
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`have been someone with at least a bachelor’s or graduate degree in computer
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`science, computer engineering, or a related field, and at least 3 to 5 years of work
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`experience in developing software for data communication, manipulation, and
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`reporting. (See Declaration of Andrew D. Hospodor, Exhibit 1003, ¶ 15.)
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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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`Techs. v. Lee, 136 S. Ct. 2131, 2142 (2016).1 Also, if e-Numerate contends terms
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`1 Merrill notes that the broadest reasonable construction is not the appropriate
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`standard for claim construction in litigation. See generally Phillips v. AWH Corp.,
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`
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`-10-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`in the claims should be read to have a special meaning, those contentions should
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`be disregarded unless e-Numerate also amends the claims consistent with 35
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`U.S.C. § 112 to make them expressly correspond to those contentions. See 77
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`Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335,
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`1343 (Fed. Cir. 2012).
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`A.
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`“Markup Document”
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`Claims 1, 10, 17, 26, and 27 recite the limitations “a first markup
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`document” and “a second markup document” throughout.
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`The plain and ordinary meaning of “markup document” was well-known to
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`a POSITA in 1999. The Microsoft Computer Dictionary (4th ed. 1999) defines
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`“markup language” as “A set of codes in a text file that instruct a computer how to
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`format it on a printer or video display or how to index and link its contents.
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`Examples of markup languages are Hypertext Markup Language (HTML) and
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`Extensible Markup Language (XML)….” (Ex. 1010 at 282.) The background of
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`the ’816 patent states that “[a] markup language is a way of embedding markup
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`‘tags,’ special sequences of characters, that describe the structure as well as the
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also, e.g., Cuozzo Speed, 136 S. Ct.
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`at 2144.
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`behavior of a document and instruct a web browser or other program on how to
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`display the document.” (Ex. 1001 at 1:37-41.)
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`Accordingly, the broadest reasonable interpretation of “markup document”
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`is “a document including sequences of characters providing information about the
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`data it contains.”
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`B.
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`“Tags”
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`Claims 1, 10, 17, 26, and 27 include the term “tag,” including in the
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`limitation “the first markup document and the second markup document
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`containing numerical values and tags reflecting characteristics of the numerical
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`values.”
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`The specification of the ’816 patent defines “tagging” as “adding
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`metadata.” (Ex. 1001 at 17:54-56.) The plain and ordinary meaning of
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`“metadata” was well-known to a POSITA in 1999. The Microsoft Computer
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`Dictionary (4th ed. 1999) defines “metadata” as “[d]ata about data.” (Ex. 1010 at
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`288.) The specification of the ’816 patent uses the term “metadata” consistently
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`with this definition:
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`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
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`-12-
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`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.)
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`(Ex. 1001 at 18:37-48 (emphasis added).) As discussed, the ’816 patent also
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`states that “[a] markup language is a way of embedding markup ‘tags,’ special
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`sequences of characters, that describe the structure as well as the behavior of a
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`document and instruct a web browser or other program on how to display the
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`document.” (Ex. 1001 at 1:37-41.)
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`Accordingly, the broadest reasonable interpretation of “tag” is “a sequence
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`of characters that adds data about data.”
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`C.
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` “Means for Receiving”
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`Claim 26 recites the limitation “means for receiving a first markup
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`document and a second markup document, both the first markup document and
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`the second markup document containing numerical values and tags reflecting
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`characteristics of the numerical values[.]”
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`This element is a means-plus-function term governed by pre-AIA 35 U.S.C.
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`§ 112 ¶ 6. The Federal Circuit has made clear that “[w]hen dealing with a ‘special
`
`purpose computer-implemented means-plus-function limitation,’ we require the
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`specification to disclose the algorithm for performing the function.” Function
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`Media, L.L.C., v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013).
`
`The ʼ816 specification repeatedly refers to software “receiving” documents
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`and data, but it does not provide any details regarding the process used by the
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`computer to receive information. (See, e.g., Ex. 1001 at 14:38-40 (“disk array 234
`
`may receive data documents 102 from the database server 236 which may receive
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`data from database storage 238”), 19:38-40 (“the RDML reader 704 finds and
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`receives an RDML document 102 in text form formatted according to the structure
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`of the RDML DTD 702 (step 802)”), 31:12-13 (“[T]he X-value transformer 710
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`receives a new document 102 (step 1102).”).) Accordingly, to the extent that this
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`limitation is not indefinite, the broadest reasonable interpretation of the
`
`corresponding structure is “software that acquires a document.”
`
`D.
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`“Means for Automatically Transforming”
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`Claim 26 recites the limitation “means for automatically transforming the
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`numerical values of at least one of the first markup document and the second
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`markup document, so that the numerical values of the first markup document and
`
`the second markup document have a common format.” This is a software means-
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`plus-function term, and the corresponding structure is the algorithm that performs
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`the recited function. See Function Media, 708 F.3d at 1318.
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`The ʼ816 specification teaches that “transformation” of numerical data
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`synonymous with multiplying the data by a conversion factor. (See Ex. 1001 at
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`26:17-20 (“The data viewer 100 then multiplies the conversion factors to
`
`transform the numerical data into the desired display (step 1014) and displays the
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`transformed line item or document (step 1016).” (emphasis added)).)
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`Accordingly, the broadest reasonable interpretation of the corresponding structure
`
`is “software that multiplies numerical values expressed in one format by a
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`conversion factor to express them in a different format.”
`
`E.
`
`“Means for Combining”
`
`Claim 26 recites the limitation “means for combining the first markup
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`document and the second markup document into a single data [sic].” This is a
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`software means-plus-function term, and the corresponding structure is the
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`algorithm that performs the recited function. See Function Media, 708 F.3d at
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`1318.
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`The ʼ816 specification states that “[t]he method automatically combines the
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`first markup document and the second markup document into a single data set and
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`displays the single data set.” (Ex. 1001 at 4:3-5 (emphasis added).) It also states
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`that “[t]he class designations permit validation and conforming of different data
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`sets, thereby allowing the data viewer 100 to combine documents from unrelated
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`sources into a single unified source.” (Id. at 27:59-62.) The specification does
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`not, however, provide further details regarding the steps taken by the computer to
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`combine the documents. Accordingly, to the extent that this element is not
`
`indefinite, the broadest reasonable interpretation of the corresponding structure is
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`“software that conforms data from two documents from unrelated sources and
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`combines the data into a single data set.”
`
`F.
`
`“Means for Displaying”
`
`Claim 26 recites the limitation “means for displaying the single data set.”
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`This is a software means-plus-function term, and the corresponding structure is
`
`the algorithm that performs the recited function. See Function Media, 708 F.3d at
`
`1318.
`
`The ʼ816 specification states that “[t]he method automatically combines the
`
`first markup document and the second markup document into a single data set and
`
`displays the single data set” and “[t]he data viewer 100 then multiplies the
`
`conversion factors to transform the numerical data into the desired display (step
`
`1014) and displays the transformed line item or document (step 1016).” (Ex. 1001
`
`at 4:3-5, 26:17-20.) The specification does not, however, provide any details
`
`regarding the steps taken by the computer to cause the display to be generated.
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`Accordingly, to the extent that this element is not indefinite, the broadest
`
`reasonable interpretation of the corresponding structure is “software that causes a
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`dataset to be displayed on a screen.”
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`
`V.
`
`IDENTIFICATION OF SPECIFIC STATUTORY GROUNDS FOR
`CHALLENGE (37 CFR § 42.104(B)(2))
`
`Merrill respectfully requests the cancellation of claims 1, 10, 17, 26, and 27
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`of the ʼ816 patent. The statutory grounds for the challenge are set forth below (all
`
`citations are to pre-AIA statues):
`
`References
`Ground 35 USC § Claims
`1, 10, 17, 26, 27 Mastering Access 97 (Ex. 1005)
`1
`103(a)
`1, 10, 17, 26, 27 Mastering Access 97 (Ex. 1005) in view
`2
`103(a)
`of The XML Handbook (Ex. 1006)
`Lyons (Ex. 1007, U.S. 5,189,608)
`1, 10, 17, 26
`1, 10, 17, 26, 27 Lyons (Ex. 1007, U.S. 5,189,608) in view
`of The XML Handbook (Ex. 1006)
`
`103(a)
`103(a)
`
`3
`4
`
`
`
`VI. DETAILED EXPLANATION AND EVIDENCE SUPPORTING
`GROUNDS FOR CHALLENGE (37 CFR §§ 42.104(B)(4)-(5))
`
`A. Ground 1: Obviousness of Claims of 1, 10, 17, 26, and 27
`Based on Mastering Access 97
`
`Claims 1, 10, 17, 26, and 27 would have been obvious to a POSITA under
`
`35 U.S.C. § 103(a) in view of Mastering Access 97.
`
`i. 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
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`database software application product. Mastering Access 97 teaches that the
`
`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 209-40.) When
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`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
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`data in the source document will automatically be reflected in the Access
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`database. (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 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.)
`
`ii. Comparison of Claims 1, 10, 17, 26, and 27 to Mastering
`Access 97
`
`The claim chart below specifies where each element of claims 1, 10, 17, 26,
`
`and 27 is found in Mastering Access 97.
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`Petition for Inter Partes Review of U.S. Patent No. 8,185,816
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`ʼ816 Claim Language Citations to Mastering Access 97
`Mastering Access 97 describes the use of commercially-
`1[a]. A method in a
`data processing system,
`available database software – namely Microsoft Access
`97 – to process data.