PTAB

IPR2018-01394

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

Log In

1. Case Identification

2. Patent Overview

  • Title: Reusable Macro Markup Language
  • Brief Description: The ’355 patent discloses computer-implemented methods and systems for processing numerical data using a markup language. The core technology involves receiving numerical values with associated "tags" indicating their characteristics and using a "macro" to perform operations that transform the data into a new representation for display.

3. Grounds for Unpatentability

Ground 1: Claims 1, 27, 28, and 54 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, which describes the commercially available Microsoft Access 97 database software, teaches every element of the challenged claims. The reference allegedly discloses a computer-implemented method of processing tagged numerical data by importing data tables where field names (e.g., "Salary," "State") function as tags. Petitioner asserted that the reference teaches receiving and executing macros to perform operations, such as calculating sales tax based on the "State" tag, thereby transforming a series of numerical values. The argument noted that Mastering Access 97 discloses generating titles for both the original and transformed data (e.g., "SubTotal," "TotalSale") and displaying them. Furthermore, Petitioner contended the reference teaches making a copy of data before manipulation (via "CopyObject" or "TransferText" commands), using arithmetic statements with variables (called "controls") that can be referenced from remote documents, and that the macros consist of interpreted code with associated metadata and error-handling instructions.
    • Motivation to Combine (for §103 grounds): As a single-reference obviousness ground, Petitioner argued that all features were presented as part of a single, integrated software product. A person of ordinary skill in the art (POSITA) would have found it obvious to use the various disclosed features of Microsoft Access 97 together in the manner claimed.

Ground 2: Claims 1, 27, 28, and 54 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 relied on the disclosures of Mastering Access 97 as the base system for database management, macro execution, and data processing. The XML Handbook was introduced to supply teachings on using a more structured markup language (XML) for data representation and interchange. Petitioner pointed to disclosures in The XML Handbook of using procedural scripts (macros) to manipulate data, such as an "Auction Demo" example where a script converts painting dimensions from inches to centimeters, and using XML tags to provide semantic meaning to data.
    • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine these references because Mastering Access 97 already supported data import/export in HTML format. The XML Handbook explicitly positioned XML as a more powerful and structured successor to HTML, designed for application-independent data sharing. Given the known relationship and available conversion tools, it would have been an obvious and logical step for a POSITA to enhance the capabilities of the Access 97 database by adding support for the emerging XML standard.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because both HTML and XML are derivatives of SGML, sharing common structural principles, and publicly available tools already existed for converting between the formats.

Ground 3: Claims 1, 27, 28, and 54 are obvious over Lyons.

  • Prior Art Relied Upon: Lyons (Patent 5,189,608).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the Lyons patent, directed to a financial reporting and analysis software package, discloses all limitations of the challenged claims. The system in Lyons processes tagged numerical data by organizing financial data using four-dimensional tags (Schedule, Entity, Period, Type, or "SEPT" values). It uses functions and rules (macros) to perform operations, such as calculating "return on sales" from net income and sales data, thereby transforming numerical values. Petitioner argued that Lyons teaches importing data from external documents (e.g., worksheets), meaning variables in the calculations are referenced from a remote document. The system also generates reports with titles corresponding to the calculated results, includes error-checking functions (e.g., "Cross_Integrity"), and its rules are a form of interpreted code.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1, 27, 28, and 54 based on the combination of Lyons in view of The XML Handbook, relying on similar design modification theories as presented in Ground 2.

4. Key Claim Construction Positions

  • "Tag": Petitioner argued for the construction "a sequence of characters that adds data about data." This construction was based on the patent’s specification equating "tagging" with adding "metadata," which is defined as "data about data." This broad construction was central to mapping prior art field names and other data descriptors to the "tag" limitation.
  • "Macro": Petitioner proposed the construction "a short program that defines a set of instructions." This was based on contemporary dictionary definitions and the patent's background description of macros as "short programs." This construction allowed Petitioner to equate the "macros" of Mastering Access 97 and the "functions" or "rules" of Lyons with the claimed term.
  • "Interpreted Code": Petitioner proposed the construction "program instructions that are executed without being separately compiled." This was critical to arguing that the prior art macros, which are run directly from human-readable instructions, met the claim limitation without needing an explicit disclosure of a compiler-less execution environment.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1, 27, 28, and 54 of Patent 7,650,355 as unpatentable.