PTAB

IPR2014-00576

Microsoft Corp v. Enfish LLC

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Self-Referential Database System and Method
  • Brief Description: The ’775 patent discloses a database system featuring a "flexible, self-referential" logical table that stores both data and schema information in the same table. The invention centers on using variable-length object identification numbers (OIDs) to identify rows and columns, and a method of bi-directional indexing to allow for contextual searching.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang and Smith - Claims 1-2, 31-32, and 41 are obvious over Chang in view of Smith '510.

  • Prior Art Relied Upon: Chang (European Patent Application 03 36580 A2) and Smith ’510 (Patent 5,404,510).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Chang, a relational database system, discloses the fundamental limitations of the independent claims, including a logical table with rows (records) and columns (attribute sets). The core of this ground is the addition of Smith ’510 to explicitly teach the use of "object identification numbers" (OIDs) for both records and attribute sets. This combination was presented to preemptively counter the Patent Owner's new, narrower construction of "OID" adopted in parallel litigation, under which the identifiers in Chang might allegedly not qualify. Smith ’510 explicitly discloses "column object ids" and record identifiers (e.g., employee ID) that satisfy even this narrower interpretation.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because both references are directed at improving the efficiency of standard SQL-based relational databases. A POSITA would have been motivated to incorporate the explicit OID structures from Smith ’510 into Chang’s system, which uses "packed descriptors" to reduce I/O operations, thereby achieving the benefits of both improved data object identification and query efficiency.
    • Expectation of Success: The combination involved applying known database principles from one relational system to another. As both references address compatible aspects of database management, a POSITA would have had a high expectation of success.

Ground 2: Obviousness over Chang, Smith, and Goldberg - Claims 6 and 36 are obvious over Chang in view of Smith '510 and Goldberg.

  • Prior Art Relied Upon: Chang, Smith ’510, and Goldberg (Patent 5,201,046).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Chang and Smith ’510 combination to address dependent claims 6 and 36, which require a record to contain a pointer to a different record and information defining that other record’s type. Petitioner argued that Chang’s packed descriptors contain information defining the type of other records (i.e., other rows in system tables). Goldberg was added to explicitly teach storing records organized in a directed graph structure within a relational table, where records are coupled by pointers to other records. Goldberg’s example of an "AUTOMOBILE" record pointing to a "POWER TRAIN" record directly teaches the claimed pointer and record-type functionality.
    • Motivation to Combine: A POSITA would combine Goldberg’s well-known method for handling hierarchical data into the efficient database architecture of Chang and Smith ’510. This would allow the system to manage complex, graph-like data relationships while retaining the performance benefits of the primary references.

Ground 3: Obviousness over Chang, Smith, and Webb - Claims 15 and 45 are obvious over Chang in view of Smith '510 and Webb.

  • Prior Art Relied Upon: Chang, Smith ’510, and Webb (Oracle Distributed Systems A C Programmer's Development Guide).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targets independent claims 15 and 45, which, like the claims in Ground 2, require pointers between records and the definition of record types. The base combination of Chang and Smith ’510 provides the database framework and OIDs. Webb, an Oracle programming guide, was introduced to show these features in a commercial context. Webb discloses tables where records point to a parent record via a PARENT_PRODUCT_ID and other tables that use a TYPE_CODE column to define the category or type of products in a different table.
    • Motivation to Combine: Webb described a specific, widely-used database implementation (Oracle) that would directly benefit from the general database efficiency improvements taught by Chang and Smith ’510. A POSITA would have found it obvious to apply Chang's technique for consolidating system catalog information and Smith's OID structures to the type of system described in Webb to enhance its performance and data modeling capabilities.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Horn (Patent 5,226,158) for its disclosure of record-to-record pointers in employee databases and Anderson (Patent 5,463,724) for its disclosure of spreadsheet-style cell pointers.

4. Key Claim Construction Positions

  • object identification number (OID): This term was central to the petition. Petitioner noted the Board’s construction was "an array of bits that define an object." However, the entire justification for this "Second Petition" was the Patent Owner’s recent advocacy in parallel litigation for a narrower construction where OIDs must be "immutable and completely independent of changes in data value or physical location." Petitioner argued that Smith ’510 explicitly discloses OIDs that meet even this new, narrower standard, making its addition non-redundant.
  • means for configuring memory: Petitioner adopted the Board's prior construction of the function as "configuring memory according to a logical table" and the corresponding structure as a "general purpose computer." Petitioner highlighted its view that the patent fails to disclose a corresponding algorithm, which raises an issue under 35 U.S.C. §112.

5. Arguments Regarding Discretionary Denial

  • This petition was filed as a "Second Petition" with a motion for joinder to an already instituted trial (IPR2013-00559). Petitioner argued that the new grounds were not redundant and that the petition should be permitted because it was narrowly tailored to address new information and circumstances that arose after the first petition was filed. Specifically, the Patent Owner's preliminary response and changed claim construction positions in parallel litigation necessitated the inclusion of the Smith ’510 reference to fully address the unpatentability of the common OID limitations.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 6-7, 11-12, 15, 31-32, 36-37, 41-42, and 45 of the ’775 patent as unpatentable under 35 U.S.C. §103.