PTAB

IPR2013-00078

IBM Corp v. Financial Systems Technology InTellectual PRoperty Pty Ltd

Title: Data Processing System and Method for Retrieving and Entity Specified in a Search Path Record from a Relational Database
Brief Description: The ’526 patent describes a method for retrieving data from a relational database using compound queries. The method involves forming a first search path record (query) and a second search path record, where the results of the first query are used as input for the second. The patentability of the challenged claims hinges on the final step: storing either the queries themselves in an "inquiry definition table means" (claim 11) or the retrieved results in an "abbreviated results gathering means" (claim 15).

Prior Art Relied Upon: IBM Database 2 SQL Reference (4th ed., May 1987) (“IBM DB2 SQL Reference”) and the knowledge of a Person of Ordinary Skill in the Art (POSITA).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the IBM DB2 SQL Reference teaches all elements of claim 11. The reference describes defining database views using the CREATE VIEW statement and nesting queries using subselects, which directly maps to the claimed method steps of forming and retrieving from first and second search path records. For the critical "storing" limitation, Petitioner contended that the reference's disclosure of the SYSIBM.SYSVIEWS catalog table—which stores the text of CREATE VIEW statements (i.e., query definitions)—satisfies the "inquiry definition table means."
- Motivation to Combine: The motivation was inherent, as the reference teaches these features as part of a single, integrated database system designed for such operations. A POSITA would have been motivated to use these standard, documented features for their intended purposes.
- Expectation of Success: A POSITA would have had a high expectation of success in combining the teachings because they are standard, well-documented, and fundamental features of the IBM DB2 system designed to work together to perform complex data retrieval.

Prior Art Relied Upon: Shan (Patent 5,276,870).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Shan discloses every element of claim 11 within a single, integrated technique. Shan teaches a method for efficiently processing SQL queries by defining views (a first search path record). It further discloses referencing these views in subsequent, more complex SQL queries (a second search path record) and retrieving the corresponding data. For the "storing" element, Petitioner pointed to Shan's explicit disclosure of storing "view defn 20" (a view definition) in a "permanent memory unit 12," which it argued directly reads on the "inquiry definition table means" limitation of claim 11.

Prior Art Relied Upon: Shan (Patent 5,276,870).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner incorporated its arguments from the anticipation of claim 11 for the common method steps [a]-[d]. For the distinct final step [e] of claim 15—"storing said first entity in an abbreviated results gathering means"—Petitioner argued that Shan discloses this by teaching the materialization of an entire view into a "temporary table 24" in memory. This temporary table stores the results of the first query (the first entity). Petitioner further argued that Shan's additional teaching of generating a temporary index for the materialized view, which contains an abbreviation of the view's records, constitutes an "abbreviated results gathering means."
Additional Grounds: Petitioner asserted additional obviousness challenges against claims 11 and 15 based on combinations of Maki (Patent 5,201,047) with the IBM DB2 SQL Reference and general POSITA knowledge. These grounds argued that Maki taught the core compound query steps, and the IBM reference or general knowledge supplied any allegedly missing "storing" element, making the claimed combination obvious.

"inquiry definition table means" (claim 11): Petitioner argued, for the purposes of the IPR, for adopting the Patent Owner's own construction from related district court litigation: "a relational database table that stores query definitions." This construction was central to Petitioner's argument that prior art, such as the SYSIBM.SYSVIEWS catalog table in the IBM DB2 SQL Reference, which stores the text of SQL view definitions, met this critical limitation.
"abbreviated results gathering means" (claim 15): Petitioner argued this term should be construed as "a structure that stores abbreviated or intermediate results of executed search path records," again leveraging the Patent Owner's litigation positions. This construction was essential for arguing that prior art teaching the storage of query results in materialized views or temporary indexes (which are inherently abbreviations of full result sets) met the key limitation of claim 15.

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