PTAB

IPR2013-00078

IBM Corp v. Financial Systems Technology Intellectual Property Pty Ltd

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1. Case Identification

2. Patent Overview

  • Title: Data Processing System and Method for Retrieving an Entity Specified in a Search Path Record from a Relational Database
  • Brief Description: The ’526 patent discloses a data processing method for performing a compound query in a relational database where the results of a first query are used as input for a second, subsequent query. Claim 11 requires storing the first and second queries (search path records) in an "inquiry definition table means," while claim 15 requires storing the retrieved results of the first query in an "abbreviated results gathering means."

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 11 over IBM DB2 SQL Reference

  • Prior Art Relied Upon: IBM Database 2 SQL Reference (4th ed., May 1987) (“IBM DB2 SQL Reference”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the IBM DB2 SQL Reference, a 1987 publication, teaches all elements of claim 11. The reference describes forming and executing nested SQL queries using subselects, where the results of an inner query are used as input for an outer query, directly mapping to the method steps of forming search path records and retrieving related entities. Critically, Petitioner asserted the reference teaches storing view definitions (the underlying SQL queries) in a system catalog table named “SYSIBM.SYSVIEWS.” This table, Petitioner contended, is an "inquiry definition table means" as required by the final limitation of claim 11, pointing to the Patent Owner's own litigation position that this exact table in IBM's accused products meets the claim limitation.
    • Motivation to Combine: The argument was primarily one of inherent obviousness, as the IBM DB2 SQL Reference allegedly discloses a complete, integrated system. A POSITA would have been motivated to use the standard, documented features of the DB2 system, including storing query definitions in the SYSVIEWS table, to achieve the claimed method of performing nested queries.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the reference provides a detailed manual for implementing the exact functionality claimed.

Ground 2: Anticipation and Obviousness of Claims 11 & 15 by Shan

  • Prior Art Relied Upon: Shan (Patent 5,276,870).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted Shan anticipates or, at a minimum, renders obvious both challenged claims. Shan discloses a method for efficiently processing SQL queries by using views. Petitioner argued Shan teaches forming a first search path record by defining a view with a "CREATE VIEW" statement, which retrieves a first entity related to a second entity. Shan then teaches forming a second search path record by referencing that view in a subsequent, nested SQL statement, which retrieves a selected entity based on the results of the first query.
    • For claim 11, Petitioner mapped the "inquiry definition table means" limitation to Shan's disclosure of permanently storing the "view defn" in a memory unit.
    • For claim 15, Petitioner mapped the "abbreviated results gathering means" limitation to Shan's teaching of materializing the view's results into a temporary table and generating an index for that table, which stores an abbreviation of the results for efficient subsequent access.
    • Motivation to Combine (for §103): To the extent any element was found to be missing, Petitioner argued a POSITA would have been motivated to adapt the disclosed SQL queries in Shan using well-known techniques, such as converting a standard query into a view definition, to achieve the full claimed method.

Ground 3: Obviousness of Claim 11 over Maki in view of IBM DB2 SQL Reference

  • Prior Art Relied Upon: Maki (Patent 5,201,047), IBM DB2 SQL Reference.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maki discloses the core method steps of claims 11 and 15. Maki teaches a system for performing a series of interrelated queries, where a first query is executed and its results are stored in a "first query results file." A second query is then performed, with its scope limited to the item identifiers stored in that results file. This process of forming and executing successive, dependent queries was argued to teach the method steps [a]-[d] of the challenged claims.
    • Motivation to Combine: Petitioner contended that to the extent Maki does not explicitly teach the "inquiry definition table means" of claim 11, a POSITA would have been motivated to combine Maki's method with the IBM DB2 SQL Reference. Maki itself identifies IBM DB2 as a preferred database management system for its invention. A POSITA implementing Maki's method on a DB2 system would naturally and obviously use the standard, documented feature of storing queries (view definitions) in the "SYSIBM.SYSVIEWS" table taught by the IBM reference for persistence and management.
    • Expectation of Success: There would have been a high expectation of success in storing Maki's queries in the IBM DB2 system's catalog table, as this was a conventional and predictable integration of two compatible technologies.
  • Additional Grounds: Petitioner asserted additional challenges, including that claim 15 is anticipated by Maki and that both claims are obvious over combinations of Shan and the IBM DB2 SQL Reference, relying on similar arguments and mappings.

4. Key Claim Construction Positions

  • Petitioner argued, for the purposes of the IPR, that the Board should adopt the broadest reasonable construction consistent with the Patent Owner's own positions asserted in co-pending district court litigation.
  • "inquiry definition table means" (claim 11): Construed as "a relational database table that stores query definitions." Petitioner emphasized this construction is broad enough to encompass the prior art "SYSIBM.SYSVIEWS" table disclosed in the IBM DB2 SQL Reference.
  • "abbreviated results gathering means" (claim 15): Construed as "a structure that stores abbreviated or intermediate results of executed search path records." Petitioner contended this would include structures like materialized query tables or the query results files taught by Maki.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11 and 15 of Patent RE40,526 as unpatentable.