Google LLC v. MindbaseHQ LLC

1. Case Identification

• Case #: IPR2021-01251
• Patent #: 6,510,433
• Filed: July 15, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): MindbaseHQ, LLC
• Challenged Claims: 1-46

2. Patent Overview

• Title: Database Management and Organizational Protocol
• Brief Description: The ’433 patent describes a database system and organizational protocol for creating and manipulating information by categorizing data elements using principles of elementary grammar. The system categorizes data into "tangible data elements" (concrete nouns with physical weight) and "intangible data elements" (verbs, adjectives, adverbs), which are further subdivided.

3. Grounds for Unpatentability

Ground 1: Obviousness over Conlon - Claims 1-2, 9, 12-21, 28, and 32-40 are obvious over Conlon

• Prior Art Relied Upon: Conlon (a 1993 journal article titled Developing a Large Lexical Database for Information Retrieval, Parsing, and Text Generation Systems).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Conlon’s lexical database (LDB), which is stored in an Oracle Relational Database Management System, discloses the core limitations of the challenged claims. Conlon’s LDB organizes approximately 50,000 word entries by part of speech into tables. Petitioner asserted that Conlon’s classification of nouns as either “concrete” (tangible) or “abstract” (intangible) meets the claimed "tangible data elements." The remaining word types stored in separate tables for verbs, adjectives, and adverbs correspond to the claimed "intangible data elements," which are further subdivided into "effect" (verbs) and "descriptive" (adjectives, adverbs) elements. Conlon also discloses linking these data elements through lexical and semantic relationships, such as linking a noun subject to a verb.
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference, Petitioner argued that Conlon alone anticipates or, at a minimum, renders obvious the challenged claims. Petitioner contended that any minor differences, such as creating separate sub-classes for only concrete nouns, would have been an obvious design choice for a Person of Ordinary Skill in the Art (POSITA) based on Conlon's own teachings about organizing nouns into sub-classes and its preference for smaller tables.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing the claimed database, as Conlon describes a functioning, reduced-to-practice lexical database system.

Ground 2: Obviousness over Conlon and Miller - Claims 3-6, 8, 10-11, 22-25, 27, 29-31, and 41-42 are obvious over Conlon in view of Miller

• Prior Art Relied Upon: Conlon (a 1993 journal article) and Miller (a 1990 journal article titled Nouns in WordNet: A Lexical Inheritance System).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Miller, which describes the WordNet lexical database. Petitioner argued Miller teaches the additional limitations of organizing data elements in hierarchical structures of parent-child relationships, such as a "lexical tree." In Miller's system, a specific term like "oak" is a child of a more generic term like "tree" (its parent), forming a hierarchical semantic organization.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine Miller's hierarchical organization with Conlon's database to improve its structure and inferencing capabilities. Conlon teaches that a good database should have "inferencing capabilities" and explicitly references WordNet (the system Miller describes) as a valuable resource. Therefore, applying Miller’s known technique for hierarchical organization to improve Conlon's system would have been obvious.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in this combination because Conlon already utilizes semantic relations (e.g., ISA relationships) that are readily adaptable to Miller's hierarchical model, a structure Miller notes is widely used by programmers to organize large databases.

Ground 3: Obviousness over Conlon, Miller, and Beckwith - Claims 7 and 26 are obvious over Conlon, Miller, and Beckwith

• Prior Art Relied Upon: Conlon (a 1993 journal article), Miller (a 1990 journal article), and Beckwith (a 1990 journal article titled Implementing a Lexical Network).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Beckwith, which was co-authored by Miller and describes the computer implementation of the same WordNet system. Petitioner argued Beckwith teaches the limitation of organizing the hierarchical structure as an "outline." Beckwith’s tables show hierarchical relationships where each word's level is indicated by its horizontal indentation, fulfilling the "outline" structure limitation.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to implement the hierarchical structure taught by Miller for the database in Conlon would have naturally looked to Beckwith for implementation details. Beckwith was published in the same journal issue as Miller and describes the same system. Beckwith explains that using an outline format is beneficial because it allows additional information (e.g., polysemy) to be presented for each word, providing a clear motivation for its use.
  • Expectation of Success (for §103 grounds): The combination would be a straightforward application of a known data representation technique (outline format) to a known system (a hierarchical lexical database) to yield predictable results, such as improved clarity and data presentation.
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 43-46 based on the combination of Conlon, Miller, and Fong (a 1985 NBS Special Publication). Fong was cited for its teachings on logical database design, specifically the process of "normalization" to remove redundancies and improve consistency when integrating data from different sources.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the prior art presented in the petition is substantively different from the art considered during prosecution. The examiner rejected the claims based on anticipation by three individual references, none of which were relied upon by the Petitioner, and allowed the claims without providing reasons after the Patent Owner distinguished that art.
• Petitioner also argued against discretionary denial under Fintiv factors (§314(a)). Petitioner asserted that the parallel district court litigation was not in an advanced state, as the case had been recently transferred, no answer had been filed, no schedule was set, and no trial date was near. Petitioner also stated its intent to file a motion to stay the litigation if the IPR was instituted.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-46 of the ’433 patent as unpatentable.