PTAB

IPR2015-01481

IBM Corp v. Intellectual Ventures I LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Retrieving Information from a Database Using an Index of XML Tags and Metafiles
  • Brief Description: The ’434 patent describes a system for locating information in a database using an index composed of metadata. The index includes a hierarchy of tags (e.g., domain and category tags) and associated metafiles that define relationships between tags, with XML disclosed as an exemplary language for creating the tags.

3. Grounds for Unpatentability

Ground 1: Unpatentability over Wical and Lassila - Claims 7, 8, 12, 14, and 16 are anticipated by Wical; claims 1-3, 5, and 6 are obvious over Wical in view of Lassila.

  • Prior Art Relied Upon: Wical (Patent 6,038,560) and Lassila (an IEEE article published July-Aug. 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wical discloses a search and retrieval system that meets every limitation of the challenged claims not requiring XML. Wical’s system uses a “Knowledge Base” (the claimed "index") with hierarchically arranged “categories” (the claimed "tags") to classify documents. Relationships between categories are stored in a directed graph structure, which Petitioner asserted is the claimed "metafile." For the claims requiring XML (1-3, 5, 6), Petitioner contended that Wical teaches all elements except for the specific use of XML syntax. Lassila, which describes metadata for the web, explicitly discloses using XML to implement the Resource Descriptor Framework (RDF), a metadata model functionally similar to Wical’s.
    • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) implementing Wical’s syntax-agnostic system would have naturally looked to known metadata syntaxes. Lassila teaches that XML is a "natural choice for metadata syntax" because of its ability to define custom vocabularies and represent complex, hierarchical relationships, which are the exact requirements of Wical's system. Both Wical and Lassila address the same problem of improving upon simple keyword searching. Therefore, a POSITA would combine Lassila’s teaching of XML with Wical’s system to gain the known benefits of a popular, flexible, and powerful syntax.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because applying the well-understood XML syntax from Lassila to implement the structurally similar metadata model of Wical would have yielded predictable results.

Ground 2: Unpatentability over Morita and Lassila - Claims 7, 8, 12, 14, and 16 are anticipated by Morita; claims 1-3, 5, and 6 are obvious over Morita in view of Lassila.

  • Prior Art Relied Upon: Morita (Patent 5,168,565) and Lassila (an IEEE article published July-Aug. 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Morita discloses a document retrieval system that anticipates the non-XML claims. Morita’s system uses an “inverted file” (the claimed "index") containing keywords (the claimed "tags") to retrieve documents. It further employs "keyword connection tables" stored as a graph structure to define relationships between keywords, which Petitioner mapped to the claimed "metafiles." For claims 1-3, 5, and 6, Petitioner argued that Morita discloses every element except for specifying XML as the syntax. Lassila supplies this missing element by teaching the use of XML for a metadata model.
    • Motivation to Combine (for §103 grounds): The motivation argument mirrored that of Ground 1. Morita’s system is syntax-agnostic, and a POSITA would have been motivated to implement it using a known, suitable syntax. Lassila and Morita both propose metadata models that represent relationships as graph structures and allow for custom vocabularies. Lassila’s express teaching of XML for its similar RDF model, combined with XML’s growing popularity and technical suitability at the time, would have motivated a POSITA to apply XML to Morita’s system.
    • Expectation of Success (for §103 grounds): The combination would have been a predictable implementation, as it involved applying a known syntax (XML) to a compatible, existing metadata framework (Morita's), which would be expected to work as intended.

4. Key Claim Construction Positions

  • tag: Petitioner proposed the construction "label associated with and conveying information about data or text." This construction was argued to be consistent with the specification’s description and was broad enough to encompass the "categories" in Wical and the "keywords" in Morita.
  • metafile: Petitioner proposed the construction "data structure comprising additional information about a tag, including related tags." This was crucial for mapping onto Wical’s directed graph structure and Morita’s keyword connection tables, which both store relationship information between metadata elements.
  • index: Petitioner proposed the construction "data structure used to locate information in a database." This general construction allowed mapping to Wical’s "Knowledge Base" and Morita’s "inverted file," both of which serve this function.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-8, 12, 14, and 16 of the ’434 patent as unpatentable.