IP Law Daily PTAB: IBM shows data retrieval patent claims obvious over prior art
Tuesday, January 10, 2017

PTAB: IBM shows data retrieval patent claims obvious over prior art

By Jody Coultas, J.D.

In an inter partes review initiated by International Business Machines Corp. (IBM) of certain claims of Intellectual Ventures I LLC’s information retrieval patent, the Patent Trial and Appeal Board has decided that the claims were unpatentable as obvious in light of prior art (International Business Machines Corp. v. Intellectual Ventures I LLC, January 9, 2017, Petravick, M.).

U.S. Patent No. 6,510,434 B1 (the ’434 patent), entitled "System and Method for Retrieving Information From a Database Using an Index of XML Tags and Metafiles," discloses a method of "[r]etrieving information from a database using [eXtensible Markup Language ("XML")] tags and metafiles" and an embodiment of a method of creating a database and an index for searching the database. IBM filed a petition requesting inter partes review of claims 1–3, 5–8, 12, 14, and 16.

Claim construction. Claim 1 recites a method that includes a step of "creating the index by defining a plurality of XML tags including domain tags and category tags" and a step of "creating a first metafile that corresponds to a first domain tag." The plain language did not require (1) the index or the metafile to have different or distinct structures, (2) any of the structure of the index other than it includes defined domain and category tags, or (3) the structure of the index to be distinct or different from the structure of the first metafile. Thus, "creating an index" and "creating a first metafile" did not require the index and metafile be separate and distinct data structures as argued by IBM. No other construction was necessary, according to the court.

The court was also not persuaded that the broadest reasonable construction in light of the specification of the ’434 patent of "hierarchy" precluded a category-subcategory relation and requires a priority between the tags as argued by IV.

Unpatentability. IBM presented sufficient evidence that claims 1 and 2 were unpatentable as obvious over prior art, according to the court. U.S. Patent No. 6,038,560 (Wical), entitled "Concept Knowledge Base Search and Retrieval System," discloses a search and retrieval system that receives a search query from a user and, in one mode of operation, identifies documents relevant to the query. IBM alleged that Wical taught all of the limitations of claim 1, except for the tags being XML tags. IV did not dispute that it would have been obvious to implement Wical’s teachings using XML, but did dispute that Wical taught the claimed steps of creating the index and creating a first metafile. However, when given the broadest reasonable interpretation in light of the specification of the ’434 patent, Wical met the claimed steps of creating an index and creating a first metafile. IV’s argument was unpersuasive and not commensurate with the scope of the claim.

Claim 3 depends from claim 1 and additionally requires that "the step of creating a first metafile, comprises the step[] of: selecting a first set of domain tags from the defined XML tags that are related to the first domain tag." Wical teaches this limitation because the directed graph includes information about how domain tags, such as "Leisure and Recreation" in Figure 4, are related to other domain tags, such as "Geography" in Figure 4, according to the court. Therefore, claim 3 was also invalid as obvious over Wical and Lassila (Ora Lassila, Web Metadata: A Matter of Semantics, IEEE Internet Computing, Vol. 2, Number 4 (allegedly published July/Aug. 1998)).

The court also found that claims 5 and 6 were unpatentable over Wical and Lassila.

According to the court, claims 1-3 and 5 and 6 were unpatentable over U. S. Patent No. 5,168,565 (Morita) and Lassila. Morita, entitled "Document Retrieval System," discloses a document retrieval system that uses a keyword connection table to retrieve relevant documents. The keyword connection table includes relationship information that connects two keywords. When given the broadest reasonable interpretation in light of the specification of the ’434 patent, Morita met the claimed steps of creating an index and creating a first metafile. Morita disclosed creating an invert file (i.e., an index) and creating a keyword connection table (i.e., a first metafile).

The case is No. IPR2015-01481.

Attorneys: Kenneth R. Adamo, Brent P. Ray, Joel Merkin, and Eugene Goryunov (Kirkland & Ellis LLP) for International Business Machine Corp. James P. Murphy, Henry A. Petri, Jr., and Todd Dickinson (Polsinelli PC) and Tim R. Seeley and James R. Hietala (Intellectural Ventures) for Intellectual Ventures I, LLC.

Companies: International Business Machines Corp.; Intellectual Ventures I LLC

MainStory: TopStory Patent USPTO

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