PTAB

IPR2018-01391

Merrill Communications LLC d/b/a Merrill Corporation v. e-Numerate Solutions, Inc.

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1. Case Identification

2. Patent Overview

  • Title: System, Method, and Computer Program Product for Processing a Markup Document
  • Brief Description: The ’383 patent is directed to systems and methods for using a computer markup language to organize and manipulate data. The technology involves identifying multiple markup documents containing numerical values and associated tags with different units of measure, automatically transforming the values to a common unit of measure, and processing the documents into a single, combined markup document for display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mastering Access 97 - Claims 1, 17, and 18 are obvious over Mastering Access 97.

  • Prior Art Relied Upon: Mastering Access 97 (a 1997 textbook by Simpson & Olson).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mastering Access 97 teaches all elements of the challenged claims. It describes the Microsoft Access 97 database software, which can import and link data from multiple external sources, including HTML markup documents. Petitioner asserted that this system identifies numerical values and uses field names (e.g., "State," "Currency") as semantic tags. The reference also teaches using macros and Visual Basic code to automatically perform operations, such as reformatting numerical data (e.g., converting whole numbers to percentages) and merging data from two source documents into a single data set for display.
    • Motivation to Combine (for obviousness): While this is a single-reference ground, Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious to apply the taught macro functionalities to convert numerical values between different units of measure (e.g., converting sales figures from Yen to Dollars) to create a harmonized data set from international sales records, a common business need.

Ground 2: Obviousness over Mastering Access 97 and The XML Handbook - Claims 1, 17, and 18 are obvious 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 by Goldfarb & Prescod).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the disclosures of Mastering Access 97. Petitioner argued The XML Handbook supplies any alleged gaps by explicitly teaching the use of XML, a more advanced markup language, for data representation and interchange. The XML Handbook describes using attributes as semantic tags indicating a unit of measure (e.g., an attribute for "height" representing "centimeters"). It further teaches using procedural scripts to automatically convert numerical content between units (e.g., "convert the content of the DIMENSIONS element from inches to centimeters") and using a middle-tier application to aggregate data from diverse sources into a single XML document.
    • Motivation to Combine: A POSITA would combine these references to improve the data-handling capabilities of the Access 97 system. The XML Handbook expressly promotes XML as an application-independent format for easier data sharing. Given that the Access 97 system already supported HTML, a POSITA would be motivated to add support for the related and more powerful XML format. The references also provide an express motivation to combine by teaching the embedding of SQL queries (used by Access) within XML documents.
    • Expectation of Success: A POSITA would have a high expectation of success, as The XML Handbook describes publicly available tools for converting between XML and HTML, a format already natively supported by the system in Mastering Access 97.

Ground 3: Obviousness over Lyons and The XML Handbook - Claims 1, 17, and 18 are obvious 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 teaches a database system for tagged financial data. The system allows users to tag numerical data with characteristics like currency type (e.g., U.S. dollars vs. Pesos) and denomination. It transforms financial data from multiple formats into a common format, combines data from separate "schedules" (markup documents) into a single report, and applies a currency conversion function. Petitioner argued that The XML Handbook supplements these teachings by describing a specific, well-known markup language (XML) and middle-tier architecture to implement these functions, including data aggregation and script-based unit conversion.
    • Motivation to Combine: A POSITA seeking to modernize the financial database of Lyons would be motivated to use the structured, universal data format of XML taught in The XML Handbook. This would add more detailed metadata and improve consistency and predictability when importing source files, directly addressing the data consolidation problem solved by Lyons.
    • Expectation of Success: The combination would have been a predictable improvement. Since Lyons teaches the core concepts of data tagging, transformation, and combination, incorporating the specific and well-documented XML implementation from The XML Handbook would have been straightforward.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1, 17, and 18 based on Lyons alone.

4. Key Claim Construction Positions

Petitioner argued for the broadest reasonable interpretation for several key terms, asserting these constructions were critical to its obviousness arguments.

  • "Markup Document": Petitioner proposed the construction "a document including sequences of characters providing information about the data it contains." This broad construction, based on dictionary definitions and incorporated patent references, would encompass the HTML files in Mastering Access 97 and the financial schedules in Lyons.
  • "Semantic Tags": Petitioner proposed the construction "a sequence of characters that adds data describing the meaning of the data." This was based on the patent's glossary defining "tagging" as "adding metadata" and the ordinary meaning of "semantic." This construction allows field names and attributes in the prior art to meet the limitation.
  • Means-Plus-Function Terms (Claim 18): For the means-plus-function limitations in claim 18, Petitioner identified corresponding algorithms from the specification. For "means for automatically transforming," the proposed structure was "software that multiplies numerical values associated with one unit of measure by a conversion factor." For "means for processing," the structure was "software that converts parsed text into a structured record." These constructions were essential for mapping functions taught in the prior art (e.g., macros in Mastering Access 97 and conversion functions in Lyons) to the elements of claim 18.

5. Relief Requested

  • Petitioner requests that the Board institute an inter partes review and cancel claims 1, 17, and 18 of the ’383 patent as unpatentable.