IP Law Daily Database computerized research patent claims properly found obvious by PTAB
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Friday, September 9, 2016

Database computerized research patent claims properly found obvious by PTAB

By Linda O’Brien, J.D., LL.M.

The Patent Trial and Appeal Board properly determined that certain claims of Software Rights Archive’s patents relating to computerized research on databases were unpatentable on the grounds of obviousness, the U.S. Court of Appeals for the Federal Circuit has decided. However, the court reversed findings that other claims were patentable over the prior art (Software Rights Archive, LLC v. Facebook, Inc., September 9, 2016, per curiam).

Software Rights Archive holds U. S. Patent Nos. 5,832,494 ("the '494 patent") and 6,233,571 ("the '571 patent") which are continuations-in-part of U.S. Patent No. 5,544,352. The '494 and '571 patents relate to computerized research on a database and are both entitled "Method and Apparatus for Indexing, Searching and Displaying Data." The patents purport to improve upon traditional Boolean search methods by analyzing non-semantic relationships between documents and describe a process for organizing and searching for data using a technique called "proximity indexing." The '494 patent describes using non-semantic relationships to search for objects in a database. The '571 patent focuses on search techniques for use in hypertext networks.

Facebook, LinkedIn, and Twitter filed for inter partes review of Software’s '494 and '571 patents. The Board held that claims 18 and 45 of the '494 patent and claims 12 and 22 of the '571 patent were unpatentable over prior art. The Board also determined that claims 1, 5, 15, and 16 of the '494 patent were not anticipated, and claim 21 of the '571 patent was not obvious over the prior art. The petitioners and Software appealed.

The '494 patent. The Board had ample support for its determination that claims 18 and 45 of the '494 patent were unpatentable over three prior art publications by Dr. Edward Fox, the court found. Software’s argument that claim 18 operated on a full-text database whereas the test collections used by Fox contained only limited information such as abstracts, authors, titles of articles, and bibliographic records, was rejected. The court noted that Fox’s thesis explicitly suggested the use of such a database and explained that storing the full text of documents was both beneficial and "straightforward." Thus, the Board correctly concluded that "the Fox Papers suggested to one of ordinary skill in the art at the time of the invention the modification of the Fox databases to include full text documents."

Claim 45 recites that "the direct relationships are hyperlink relationships between objects on the world wide web." Software’s argument the Fox thesis did not teach the idea that "one should analyze hyperlinks as opposed to bibliographic citations to enhance search" also was rejected. The Board properly concluded that Fox explicitly "teaches the application of citation analysis in hypertext systems."

However, the Board erred in determining that Facebook failed to establish that claims 1 and 5 were unpatentable over the Fox publications, according to the court. It failed to fully consider Fox’s procedure for splitting overly large clusters when the Board determined that Fox did not teach deriving actual cluster links from the set of candidate cluster links. Fox cluster-splitting procedure for splitting overly large clusters teaches deriving a subset of actual cluster links from the set of candidate links. Software pointed to nothing in the claims that additionally required deriving a subset of documents for display, in the court’s view. Similarly, the Board erred in confirming the patentability of claims 15 and 16. The Fox publications are replete with statements encouraging the use of indirect relationships to cluster documents and search databases.

The '571 patent. Additionally, the Board erred in determining that Facebook failed to establish that claim 21 of the '571 patent was obvious over the prior art. The Fox publications teach deriving actual cluster links from a set of candidate cluster links. Software’s argument—the Fox publications do not teach "determining . . . hyperjump data that has an indirect reference to the chosen node"—failed. Because the prior art discloses a multitude of effective combinations, did not mean that any particular combination was not obvious, the court concluded.

The cases are Nos. 2015-1649, 2015-1650, 2015-1651, 2015-1652, 2015-1653.

Attorneys: Victor G. Hardy (DiNovo, Price, Ellwanger & Hardy, LLP) for Software Rights Archive, LLC. Heidi Lyn Keefe (Cooley LLP) for Facebook, Inc. David Silbert (Keker & Van Nest, LLP) for LinkedIn Corp. and Twitter, Inc.

Companies: Software Rights Archive, LLC; Facebook, Inc.; LinkedIn Corp.; Twitter, Inc.

MainStory: TopStory Patent FedCirNews

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