PTAB

IPR2018-01391

Merrill Communications LLC v. E Numerate Solutions Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System, Method, and Computer Program Product for Processing a Markup Document
  • Brief Description: The ’383 patent describes a system for processing data from at least two different markup documents. The system identifies numerical values and associated tags in each document, where the values have different units of measure, automatically transforms them to a common unit, processes the documents into a single markup document, and causes a display of the result.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mastering Access 97 in view of The XML Handbook

  • Prior Art Relied Upon: Mastering Access 97 (a 1997 textbook) and The XML Handbook (a 1998 textbook).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mastering Access 97 teaches a database system (Microsoft Access 97) capable of importing and linking data from multiple external sources, including HTML markup documents. It discloses using field names (e.g., "State," "SubTotal") as "tags" that provide semantic meaning to numerical data. The system further uses macros and Visual Basic code to automatically perform operations on this data, such as reformatting percentages, which Petitioner contended is analogous to unit conversion. Petitioner asserted The XML Handbook supplements these teachings by describing XML as a superior, application-independent format for data interchange. The handbook explicitly teaches using scripts to manipulate XML data, providing a clear example of converting dimensions from inches to centimeters, which directly maps to the ’383 patent’s transformation limitation. The handbook also describes middle-tier applications that gather data from diverse sources and merge them into a single XML document for display.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to enhance the capabilities of a database like Microsoft Access. Since Access 97 already supported importing HTML, a derivative of SGML, it would have been a natural and obvious step to add support for XML, a more powerful SGML derivative designed specifically for data interchange. The XML Handbook itself explained that XML was impacting all application types, including database managers, motivating a POSITA to integrate its features.
    • Expectation of Success: A POSITA would have had a high expectation of success because publicly available tools existed to convert between XML and HTML. The combination represented the integration of a known database platform with a well-documented, standardized data format to achieve the predictable result of improved data processing and interoperability.

Ground 2: Obviousness over Lyons in view of The XML Handbook

  • Prior Art Relied Upon: Lyons (Patent 5,189,608) and The XML Handbook (a 1998 textbook).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Lyons discloses a data processing system for financial data that performs the core functions of the ’383 patent. Lyons teaches importing data from multiple external documents ("schedules") into a database. The system uses tags to identify data characteristics, including currency type (e.g., U.S. dollars vs. pesos) and denomination, which are different units of measure. Lyons explicitly teaches consolidating information from multiple formats into a common format and includes a "currency conversion" function. It also describes combining data from two separate schedules to generate a single report. Petitioner argued The XML Handbook provides a modern, structured data format (XML) that a POSITA would have used to implement or improve upon the system described in Lyons.
    • Motivation to Combine: Petitioner asserted that a POSITA seeking to modernize the database system of Lyons would have been motivated to utilize the structured data format of XML. Using XML would add more detailed metadata, improve consistency, and increase the predictability of importing data from various source files. The XML Handbook provides an express motivation by teaching the embedding of database queries within XML documents to pull data, making its combination with a database system like that in Lyons a logical step.
    • Expectation of Success: The combination was argued to be a predictable integration of a known data processing architecture (Lyons) with a standardized and superior data interchange technology (XML) to achieve the known benefits of improved data management and interoperability.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Mastering Access 97 alone (Ground 1) and Lyons alone (Ground 3), arguing each reference individually taught the key limitations of the challenged claims.

4. Key Claim Construction Positions

  • "Semantic Tags": Petitioner argued for a construction of "a sequence of characters that adds data describing the meaning of the data." This broad construction was critical to their argument, as it allowed them to assert that conventional database field names (e.g., "Country," "Salary") and data values (e.g., "CA" in a "State" field) in the prior art qualify as the claimed "semantic tags."
  • "Means for Automatically Transforming": For this means-plus-function term, Petitioner identified the corresponding structure as "software that multiplies numerical values associated with one unit of measure by a conversion factor to express them in a different unit of measure." This construction enabled Petitioner to map prior art teachings of macros for reformatting percentages (Mastering Access 97) and currency conversion functions (Lyons) to this limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1, 17, and 18 as unpatentable.