PTAB

IPR2018-01394

Merrill Communications v. E Numerate Solutions Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Reusable Macro Markup Language
  • Brief Description: The ’355 patent discloses a computer-implemented method and system for processing tagged numerical data. The invention uses "tags" to indicate data characteristics and "macros" (short programs) to perform operations on the data, transforming it into a new representation for display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mastering Access 97 and The XML Handbook

  • Legal Basis: Claims 1, 27, 28, and 54 are obvious under 35 U.S.C. §103.
  • Prior Art Relied Upon: Mastering Access 97 (a 1997 textbook by Simpson & Olson) and The XML Handbook (a 1998 textbook by Goldfarb & Prescod).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mastering Access 97 teaches all key elements of the challenged claims through its description of the Microsoft Access 97 database software. This includes receiving numerical data, using field names as "tags" to indicate characteristics (e.g., "Currency"), using macros to perform arithmetic operations based on those tags (e.g., calculating sales tax for records tagged with a specific state), and displaying the results with corresponding titles. The reference also discloses that macros run from interpreted code, can reference variables in remote documents, and include error-handling instructions. Petitioner contended that The XML Handbook supplements these teachings by describing the use of procedural scripts (macros) to manipulate tagged data, such as converting the units of numerical values in a data table (e.g., inches to centimeters), which directly corresponds to the claimed step of transforming data into a new representation.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Mastering Access 97 already described importing and exporting data in HTML format. The XML Handbook taught that XML was a more structured, application-independent format derived from the same parent language as HTML (SGML) and that publicly available tools could convert between the two. A POSITA would have been motivated to add the XML features taught by The XML Handbook to expand the data compatibility of a program like Access 97, thereby improving data sharing and integration capabilities.
    • Expectation of Success: The common origin of HTML and XML, combined with the availability of conversion tools and the known benefits of XML's structured format, would have provided a POSITA with a high expectation of success in integrating these technologies.

Ground 2: Obviousness over Lyons and The XML Handbook

  • Legal Basis: Claims 1, 27, 28, and 54 are obvious under 35 U.S.C. §103.
  • 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 asserted that Lyons discloses a financial data processing system that stores and manipulates tagged numerical data. Lyons teaches using input templates to "tag" financial data with characteristics across four dimensions (Schedule, Entity, Period, Type). The system then uses functions and rules (macros), such as a "RETURN ON SALES" calculation, to perform arithmetic operations on the tagged data and generate reports with new, calculated values. Lyons further discloses that the system can import data from external documents, satisfying the limitation of referencing a variable in a remote document. The XML Handbook provides further detail on implementing such a system using XML, where attributes serve as tags and procedural scripts act as macros to manipulate data.
    • Motivation to Combine: A POSITA seeking to modernize and improve the Lyons database would be motivated to use the structured data format of XML taught in The XML Handbook. This would add more detailed metadata and provide greater consistency and predictability during the importation of source files. Furthermore, The XML Handbook teaches embedding database queries within an XML document to access and pull data from a database, providing an express motivation to combine its teachings with a database system like that disclosed in Lyons.
    • Expectation of Success: Combining a database system (Lyons) with a structured data language (XML) to improve data handling and reporting would have been a predictable and straightforward implementation for a POSITA at the time.
  • Additional Grounds: Petitioner also asserted obviousness challenges based on Mastering Access 97 alone (Ground 1) and Lyons alone (Ground 3), which form the basis for the combination grounds detailed above.

4. Key Claim Construction Positions

  • "Tag": Petitioner argued for the construction "a sequence of characters that adds data about data." This position was based on the specification's explicit definition of "tagging" as "adding metadata" and the well-understood meaning of metadata as "data about data" at the time of the invention.
  • "Macro": Petitioner proposed the construction "a short program that defines a set of instructions." This was derived from the plain and ordinary meaning of the term to a POSITA in 1999, as supported by the Microsoft Computer Dictionary and consistent with the patent's background section describing macros as "short programs which perform well-defined, generally limited, tasks."
  • "Interpreted Code": Petitioner argued for the construction "program instructions that are executed without being separately compiled." This construction distinguishes interpreted code from compiled code and relies on the common technical understanding of the term, asserting that macros in the prior art (like Access 97 macros) were executed in this manner.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 27, 28, and 54 of the ’355 patent as unpatentable.