PTAB

IPR2024-00221

Oracle Corp v. De BEllis Joseph

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1. Case Identification

2. Patent Overview

  • Title: Search-On-The-Fly/Sort-On-The-Fly Search Engine for Searching Databases
  • Brief Description: The ’720 patent relates to a method for a database search engine that automatically determines a database’s structure (schema) to provide a user with searchable fields and corresponding search terms. The method requires “truncating” a list of search terms into a representative set if the number of terms exceeds a specified amount, thereby making voluminous lists navigable.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 15-20, and 27-30 are obvious over Cochran in view of Zellweger.

  • Prior Art Relied Upon: Cochran (Patent 5,995,979) and Zellweger (Patent 6,433,797).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cochran taught a method for searching databases using a graphical user interface (GUI) that displayed a plurality of database fields (“list identifiers”) and allowed users to select from available search terms in corresponding dropdown menus (“pick boxes”). However, for fields with numerous entries, Cochran’s use of a simple scroll bar could be inefficient. Petitioner asserted that Zellweger addressed this exact problem by teaching methods to reduce the size of voluminous lists, including by “truncating” list items into navigable “Alphabet Lists” (e.g., A-Z) or “Content Lists” (e.g., ranges of entries) when a list exceeded a certain size.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Cochran and Zellweger to improve the user-friendliness and efficiency of Cochran’s search system. When Cochran’s “pick box” lists became voluminous (e.g., hundreds of entries), a POSITA would have looked to known solutions like those in Zellweger to make navigation less tedious than simple scrolling.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references are analogous art (GUI-based database access) and implementing Zellweger’s menu truncation techniques into Cochran’s system would have involved only routine programming.

Ground 2: Claims 1-5, 7, 15-19, and 27-30 are obvious over HyperSQL in view of Zellweger.

  • Prior Art Relied Upon: HyperSQL (a 1997 conference paper) and Zellweger (Patent 6,433,797).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that HyperSQL disclosed a browser-based interface for searching databases that automatically generated “query forms” with data entry fields. These forms included “querylists,” which were scrollable lists of allowed values automatically populated from the database. Similar to the argument in Ground 1, Petitioner argued that Zellweger’s truncation methods would be applied to HyperSQL’s potentially voluminous querylists.
    • Motivation to Combine: A POSITA would combine HyperSQL with Zellweger for the same reasons as in Ground 1: to improve usability. HyperSQL’s exemplary use case involved biological databases where querylists could be extremely long. A POSITA would have been motivated to replace or supplement HyperSQL’s basic scrollable lists with Zellweger’s more efficient Alphabet or Content List truncation methods to remedy this known issue.
    • Expectation of Success: Success was expected as the combination involved applying a known UI improvement (Zellweger) to a system (HyperSQL) with a known UI deficiency, which was a predictable and routine software modification.

Ground 3: Claims 21-23 are obvious over HyperSQL in view of Zellweger and Microsoft Access.

  • Prior Art Relied Upon: HyperSQL, Zellweger, and Microsoft Access (a 1997 textbook).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of HyperSQL and Zellweger to address claims requiring searching multiple databases and combining the results. Petitioner asserted that HyperSQL taught a system capable of searching multiple databases simultaneously (e.g., two Sybase databases). To meet the limitations of combining these search results, Petitioner pointed to Microsoft Access, a well-known database management system textbook that explicitly taught using logical operators (e.g., Boolean "AND" and "OR" operations) to combine the results of two or more expressions into a single result set.
    • Motivation to Combine: After implementing a system like HyperSQL to query multiple databases, a POSITA would have needed a method to combine the results. A POSITA would have naturally turned to fundamental, well-known database techniques as taught in standard texts like Microsoft Access to implement Boolean "AND" (for results common to both databases) and "OR" (for results from either database) operations.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining search results using Boolean logic was a basic, fundamental, and ubiquitous feature of database management systems.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining HyperSQL and associated references with Janes (Patent 6,642,946) to teach a drag-and-drop graphical interface for combining search results (Claim 25), and combining Cochran and associated references with Spiegel (Patent 6,629,079) to teach an e-commerce function for purchasing items from search results (Claim 26).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The parallel district court cases were in their early stages, with no trial dates set or significant investment made. Further, Petitioner noted that the inter partes review (IPR) challenges 22 claims, whereas only two of those claims were asserted in the parallel litigation, minimizing overlap. Petitioner also stipulated that it would not pursue any instituted grounds in district court.
  • Petitioner contended that denial under 35 U.S.C. §325(d) was inappropriate because none of the prior art references relied upon in the petition were previously considered by the USPTO examiner during prosecution of the ’720 patent.
  • Petitioner also argued that the petition was not time-barred under 35 U.S.C. §315(b). While a prior litigation involving an Oracle customer (Costco) and the ’720 patent existed, Petitioner asserted it did not indemnify or control Costco’s defense for the ’720 patent, and thus privity or real-party-in-interest status was not established.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-7, 15-23, and 25-30 of the ’720 patent as unpatentable.