ServiceNow Inc v. InQuisient Inc

1. Case Identification

• Case #: IPR2023-01072
• Patent #: 8,219,585
• Filed: June 22, 2023
• Petitioner(s): ServiceNow, Incorporated
• Patent Owner(s): Inquisient Incorporated
• Challenged Claims: 1-47

2. Patent Overview

• Title: Computerized System for Manipulating Data Sets
• Brief Description: The ’585 patent discloses systems and methods for object-oriented data modeling. The invention purports to provide a data repository that stores, manages, and retrieves data sets in a manner independent of the data model, using a series of specialized modules for elements, classes, attributes, and relationships.

3. Grounds for Unpatentability

Ground 1: Obviousness over Althoff and Moore - Claims 1, 4-11, 14-17, 20-27, 30-32, 33, 36-43, and 46-47 are obvious over Althoff in view of Moore.

• Prior Art Relied Upon: Althoff (Patent 6,374,252) and Moore (Patent 7,627,552).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Althoff teaches the foundational computerized system for manipulating object-oriented databases. It discloses a data repository comprising various modules (implemented as relational database tables and columns) to define and store elements (objects), classes, attributes, relationships, and class-attribute associations, thereby teaching the core limitations of independent claims 1, 17, and 33. Petitioner contended that Moore’s virtual folder system teaches the remaining limitations of the independent claims: a "named text module" and a "tuple module." Moore’s system uses a "virtual folder descriptions database" to store SQL queries (textual representations) and folder definitions (tuples) that create a user-friendly, hierarchical folder interface for viewing database items.
  • Motivation to Combine: A POSITA would combine Althoff's object-oriented relational database with Moore's virtual folder system to provide the well-known benefit of a familiar, folder-based user interface. This would improve the user experience for navigating the hierarchical database objects taught by Althoff, avoiding the need for users to write complex SQL queries directly.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Moore’s system is explicitly designed to query and present data from relational databases, the same type of database structure disclosed in Althoff.

Ground 2: Obviousness over Althoff, Moore, and Nye - Claims 2-3, 18-19, and 34-35 are obvious over Althoff in view of Moore and in further view of Nye.

• Prior Art Relied Upon: Althoff (Patent 6,374,252), Moore (Patent 7,627,552), and Nye (Patent 6,341,279).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the Althoff-Moore combination is rendered obvious by further adding the teachings of Nye. Petitioner argued that Nye teaches the "state machine module" required by claims 2 and 18. Nye discloses an "event model" that allows a developer to add complex dependency logic to an existing database to "flexibly handle state transitions" as records change over time. This event model, which represents different event states and the transitions between them, is a state machine. Nye further teaches that contingent conditions ("event triggers") can restrict transitions between a first status and a second status, meeting the limitations of claims 3 and 19.
  • Motivation to Combine: A POSITA would be motivated to integrate Nye's event model into the Althoff-Moore database to gain the known benefits of state machines. This would allow for the clear and robust management of object states and transitions without modifying the underlying database structure, which was a long-standing practice in object-oriented software development.
  • Expectation of Success: Success would be expected because Nye's event model was designed for use with various database environments, including relational and object-oriented databases, and could be implemented without altering the existing database schema.

Ground 3: Obviousness over Althoff, Moore, and Surjanto - Claims 12-13, 28-29, and 44-45 are obvious over Althoff in view of Moore and in further view of Surjanto.

• Prior Art Relied Upon: Althoff (Patent 6,374,252), Moore (Patent 7,627,552), and Surjanto (a Jan. 2000 article on XML content management).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the Althoff-Moore combination is rendered obvious by adding Surjanto's XML document management extensions. Petitioner argued that Surjanto teaches an "element history module" (claims 12 and 28) through its system for "fragment modification and versioning," which stores indicators of modification to different versions of document fragments (elements). Surjanto also teaches an "element document module" (claims 13 and 29) that stores formatting data for grouping and displaying elements.
  • Motivation to Combine: A POSITA would be motivated to add Surjanto's extensions to the Althoff-Moore database to provide support for XML documents. This would enable well-known benefits such as content reuse, collaborative document development, and the ability to build XML-supporting web applications on top of the database, a key trend at the time.
  • Expectation of Success: A POSITA would expect success because Surjanto's technology was specifically designed to extend object-relational database management systems like the one taught by Althoff to add content management functionality.

4. Key Claim Construction Positions

• "module": Petitioner argued that, consistent with the patent specification and the Patent Owner's concessions in parallel litigation, a POSITA would understand "module" to be a portion of a data repository. Petitioner applied the Patent Owner's litigation-proffered example that a "module" is "a table or a portion of a table." This construction is critical to mapping the claimed modules to the table and column structures of the prior art relational databases.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). To address potential parallel litigation concerns, Petitioner provided a Sotera-type stipulation, agreeing not to pursue in district court any ground raised or that could have been reasonably raised in the IPR if it is instituted. Petitioner also argued that denial under General Plastic is not warranted because the examiner did not cite or consider any of the asserted prior art references during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-47 of Patent 8,219,585 as unpatentable.