ServiceNow Inc v. InQuisient Inc

1. Case Identification

• Case #: IPR2023-01073
• Patent #: 8,224,855
• Filed: June 22, 2023
• Petitioner(s): ServiceNow, Incorporated
• Patent Owner(s): Inquisient Incorporated
• Challenged Claims: 1-34

2. Patent Overview

• Title: Object-Oriented Data Modeling
• Brief Description: The ’855 patent relates to systems and methods for manipulating data sets using object-oriented data modeling. The technology purports to provide a system that stores, manages, and retrieves data sets in a manner independent of the specific data model, using a data repository comprising modules for classes, attributes, elements, and their relationships.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-12, 14-23, and 25-34 are obvious over [Althoff](https://ai-lab.exparte.com/case/ptab/IPR2023-01073/doc/1006) in view of [Surjanto](https://ai-lab.exparte.com/case/ptab/IPR2023-01073/doc/1008).

• Prior Art Relied Upon: Althoff (Patent 6,374,252) and Surjanto (a June 2000 publication titled "XML Content Management Based on Object-Relational Database Technology").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Althoff, which is directed to object-oriented database applications, taught the foundational computerized system of claim 1. This included a relational database (data repository) with modules for defining and storing classes, attributes, class-attribute associations, and element relations. Petitioner contended that the two limitations added during prosecution to overcome prior art—the "element history module" and "element document module"—were disclosed by the combination. Specifically, Surjanto's system for "fragment modification and versioning" taught the element history module, while Althoff's "class Class Configuration," which stores display configuration data, taught the element document module.
  • Motivation to Combine: A POSITA would combine Surjanto’s XML management extensions with Althoff’s database to gain the well-known benefits of XML support. This was a common goal at the time for building web applications, and Althoff disclosed the exact type of object-relational database that Surjanto was designed to extend.
  • Expectation of Success: The combination would have yielded predictable results. Surjanto provided detailed instructions for implementing its extensions into a database like Althoff’s, making the integration straightforward for a POSITA.

Ground 2: Claims 2, 13, and 24 are obvious over Althoff in view of Surjanto and [Nye](https://ai-lab.exparte.com/case/ptab/IPR2023-01073/doc/1005).

• Prior Art Relied Upon: Althoff (Patent 6,374,252), Surjanto, and Nye (Patent 6,341,279).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Nye to the primary combination to address the limitations of claim 2, which require a "state machine module." Petitioner asserted that Nye’s event model, which allows a developer to add complex dependency logic to a database, directly taught a state machine. Nye’s model disclosed handling "state transitions" for database records, representing various event states (a status module), and defining the conditions for moving between states (a transition module), thus meeting all limitations of the claimed state machine.
  • Motivation to Combine: A POSITA would integrate Nye's event model into the Althoff/Surjanto database to add robust state management capabilities. Petitioner argued this was a long-standing and common practice in object-oriented software development to make systems more robust, readable, and easier to maintain.
  • Expectation of Success: Success was expected because Nye’s event model was explicitly designed to be compatible with existing relational and object-oriented databases without requiring modification of their underlying structure.

Ground 3: Claims 4, 6-7, 15, 17-18, 26, and 28-29 are obvious over Althoff in view of Surjanto and [Moore](https://ai-lab.exparte.com/case/ptab/IPR2023-01073/doc/1007).

• Prior Art Relied Upon: Althoff (Patent 6,374,252), Surjanto, and Moore (Patent 7,627,552).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Moore to address limitations related to a "named text module" and a "tuple module" that uses recursion. Petitioner argued that Moore's virtual folder system, which stores SQL queries and folder descriptions, constituted the "named text module." Moore’s teaching of hierarchical virtual folders, which can contain other folders and be linked, was argued to meet the limitations of a "tuple module" that links a first folder to additional folders in a hierarchy and filters entries.
  • Motivation to Combine: A POSITA would combine Moore’s virtual folder system with the Althoff/Surjanto database to provide end-users with a familiar, folder-based interface to navigate hierarchical database objects. This would offer a superior user experience compared to requiring users to write complex SQL queries.
  • Expectation of Success: High, as Moore’s system was designed to query relational databases like the one in Althoff and provided sufficient implementation details. The combination would predictably result in a more user-friendly database system.

4. Key Claim Construction Positions

• "module": Petitioner argued that this term, central to the challenged claims, should be construed as "a table or a portion of a table" within a data repository. This construction was based on the patent's specification and, critically, on an admission by the Patent Owner's counsel during parallel district court litigation. Petitioner applied this construction throughout its invalidity arguments.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny the petition under §314(a). To support this, Petitioner provided a Sotera-type stipulation, agreeing that if the IPR is instituted, it will not pursue in the parallel district court litigation any invalidity ground that was raised or could have been reasonably raised in the instituted IPR. Petitioner also argued denial under §325(d) was unwarranted as the patent had not been previously challenged at the PTAB and the examiner did not consider any of the asserted prior art.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-34 of Patent 8,224,855 as unpatentable.