Facebook Inc.v.Software Rights Archive, LLC

Patent Trial and Appeal Board

Feb 2, 2015

08649304 (P.T.A.B. Feb. 2, 2015)

Trials@uspto.gov Paper 54
494.272.7822 Entered: February 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
Petitioner,

v.

SOFTWARE RIGHTS ARCHIVE, LLC,
Patent Owner.
____________

Case IPR2013-00479
Patent 5,832,494
____________

Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
BARBARA A. PARVIS, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. BACKGROUND
A. Introduction
On July 30, 2013, Facebook, Inc., LinkedIn Corp., and Twitter, Inc.
(collectively, “Petitioner”) filed a Petition requesting an inter partes review
of claims 18–20, 45, 48, 49, 51 and 54 of U.S. Patent No. 5,832,494 (Ex.
1201, “the ’494 patent”). Paper 2 (“Pet.”). On February 3, 2014, we
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instituted trial on all challenged claims, on certain of the grounds of
unpatentability alleged in the Petition. Paper 18 (“Decision to Institute” or
“Inst. Dec.”).
After institution of trial, Software Rights Archive, LLC (“Patent
Owner”), filed a Patent Owner Response (“PO Resp.”). Paper 31. Petitioner
also filed a Reply. Paper 40 (“Reply”).
A consolidated oral hearing for IPR2013-00478, IPR2013-00479,
IPR2013-00480, and IPR2013-00481, each involving the same Petitioner
and the same Patent Owner, was held on October 30, 2014. The transcript of
the consolidated hearing has been entered into the record. Paper 53, “Tr.”
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has shown by a preponderance of the evidence that claims
18–20, 45, 48, 49, 51 and 54 of the ’494 patent are unpatentable.
B. Related Proceedings
Petitioner and Patent Owner both indicate that the ’494 patent is
involved in the following co-pending district court proceedings: Software
Rights Archive, LLC v. Facebook, Inc., Case No. 12-cv-3970; Software
Rights Archive, LLC v. LinkedIn Corp., Case No. 12-cv-3971; and Software
Rights Archive, LLC v. Twitter, Inc., Case No. 12-cv-3972, each pending in
the United States District Court for the Northern District of California. Pet.
1; Paper 9, Patent Owner’s Mandatory Notice, 2.
Petitioner filed another Petition seeking, and we instituted, inter
partes review of other claims of the ’494 patent in Case IPR2013-00480. In
addition, we instituted trial on Petitioner’s petitions on related patents
including: (1) IPR2013-00478, which seeks inter partes review of U.S.
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Patent No. 5,544,352 (the “’352 patent”) and (2) IPR2013-00481, which
seeks inter partes review of U.S. Patent No. 6,233,571 (the “’571
patent”). The ’352 patent issued from the parent of the application that
issued as the ’494 patent. The ’571 patent issued from an application that
was a divisional of the application that issued as the ’494 patent. The ’494
patent was the subject of Reexamination No. 90/011,014.
C. The ’494 patent
The ’494 patent relates to computerized research on databases. Ex.
1201, 1:11–13. The ’494 patent discloses that it improves search methods
by indexing data using proximity indexing techniques. Id. at 3:20–31.
According to the ’494 patent, proximity indexing techniques generate a
quick-reference of the relations, patterns, and similarity found among the
data in the database. Id. at 3:28–31.
Figure 2 of the ’494 patent illustrates the high-level processing of
software for computerized searching (Id. at 8:7–8) and is reproduced below:

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Figure 2 depicts software system 60 comprising Proximity Indexing
Application Program 62, Computer Search Program for Data Represented by
Matrices (“CSPDM”) 66, and Graphical User Interface (“GUI”) program 70.

Ex. 1201, 11:29–36.
Processing of software system 60 begins with Proximity Indexing
Application Program 62 indexing a database. Id. at 11:46–47. Then,
CSPDM 66 searches the indexed database and retrieves requested objects.
Id. at 11:49–53. CSPDM 66 relays the retrieved objects to GUI program 70
to display on a display. Id. at 11:53–55.
Software system 60 runs on a computer system comprising, for
example, a processor of a personal computer. Id. at 10:11–15. The system
comprises a display, which displays information to the user. Id. at 10:43–44.
Exemplary displays include: computer monitors, televisions, LCDs, or
LEDs. Id. at 10:44–46.
The processor is connected to a database to be searched. Id. at 10:18–
20. Data in the database may be represented as a node. Id. at 12:29–33.
Exemplary nodes include an object or a portion of an object, a document or
section of a document, and a World Wide Web page. Id. at 12:35–38.
A cluster link generation algorithm may be used alone or in
conjunction with other proximity indexing subroutines, and prior to
searching. Id. at 21:30–33. The cluster link generation algorithm may
generate candidate cluster links (Id. at 21:64–66) and then derive actual
cluster links, which are used to locate nodes for display (Id. at 22:1–4).
Actual cluster links are: “a subset of the candidate cluster links . . . which
meet a certain criteria.” Id. at 22:1–4.
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D. Illustrative Claim
Of the challenged claims, only claim 18 is independent, whereas
claims 19–20, 45, 48, 49, 51 and 54 depend directly or indirectly from claim
18. Claim 18 is illustrative of the claimed subject matter and is reproduced
below:
18. A method of analyzing a database having objects
and a first numerical representation of direct relationships in the
database, comprising the steps of:
generating a second numerical representation using the
first numerical representation, wherein the second numerical
representation accounts for indirect relationships in the
database;
storing the second numerical representation;
identifying at least one object in the database, wherein
the stored numerical representation is used to identify objects;
and
displaying one or more identified objects from the
database.
Ex. 1201, 53:27–39.

E. The Prior Art References Upon Which Trial Was Instituted
Colin F.H. Tapper, Citation Patterns in Legal Information Retrieval, 3
DATENVERARBEITUNG IM RECHT 249–75 (1976) (“Tapper 1976”) (Ex.
1204).
Colin Tapper, The Use of Citation Vectors for Legal Information
Retrieval, 1 J. OF LAW AND INFO. SCI. 131–61 (1982) (“Tapper 1982”) (Ex.
1205).
Edward A. Fox, Characterization of Two New Experimental
Collections in Computer and Information Science Containing Textual and
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Bibliographic Concepts (Sept. 1983) (Ph.D. dissertation, Cornell Univ.
Dep’t of Comp. Sci.) (“Fox Collection”) (Ex. 1206).
Edward A. Fox, Some Considerations for Implementing the SMART
Information Retrieval System under UNIX (Sept. 1983) (Ph.D. dissertation,
Cornell Univ. Dep’t of Comp. Sci.) (“Fox SMART”) (Ex. 1208).
Edward A. Fox, Extending the Boolean and Vector Space Models of
Information Retrieval with P-Norm Queries and Multiple Concept Types
(Aug. 1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox
Thesis”) (Ex. 1209).
Edward A. Fox, et al., Users, User Interfaces, and Objects: Envision,
a Digital Library, 44 J. AM. SOC. INF. SCI. 480–91 (Sept. 1993) (“Fox
Envision”) (Ex. 1210).
Tatsuki Saito, A Clustering method using the strength of citation, 16 J.
INF. SCI. 175–81 (Jan. 1990) (“Saito Clustering”) (Ex. 1212).
Thomas D.C. Little, Commerce on the Internet, IEEE Multimedia at
Work 74–78 (1994) (“Little”) (Ex. 1216).
The parties do not dispute the prior art status of the references.
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F. The Pending Grounds of Unpatentability
References Basis Claims instituted
Fox Thesis, Fox SMART, and
Fox Collection
§ 103 18–20, 48, and 49
Tapper 1976 and Tapper 1982 § 103

18–20, 48, and 49
Fox Thesis, Fox SMART, Fox
Collection, Saito Clustering, and
Fox Envision
§ 103 45 and 51
Fox Thesis, Fox SMART, Fox
Collection, Saito Clustering, Fox
Envision, and Little
§ 103 54

II. ANALYSIS
A. Claim Construction
1. Principles of Law
Petitioner asserts, and Patent Owner does not dispute, that the ’494
patent expired on June 14, 2013. Pet. 6. The Board’s interpretation of the
claims of an expired patent is similar to that of a district court’s review. See
In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We, therefore, are
guided by the principle that the words of a claim “are generally given their
ordinary and customary meaning,” as understood by a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted).
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
presumption,” however, that a claim term carries its ordinary and customary
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meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002) (citation omitted).
2. Overview of the Parties’ Positions
In the Decision to Institute, we found it instructive to construe the
claim terms direct relationships and indirect relationships. Inst. Dec. 10–
11. Our constructions are set forth in the table below.
Claim Term or Phrase Construction
direct relationships “relationships where one object cites to
another object” Inst. Dec. 11.
indirect relationships “relationships where at least one
intermediate object exists between two
objects and where the intermediate
object(s) connect the two objects through
a chain of citations” Inst. Dec. 11.

Petitioner does not challenge any of our constructions. Reply 1–2.
Patent Owner appears to agree with many of our constructions, and states
that it uses our constructions for the purpose of evaluating patentability of
the challenged claims of the ’494 patent. PO Resp. 8–11. Based on the
complete record now before us, we discern no reason to change our prior
constructions.
Additionally, Patent Owner addresses the terms computerized
database and numerical representation of direct relationships which are
evaluated below. PO Resp. 8–11. Petitioner’s Reply further addresses
database and numerical representation. Reply 1–2.
3. computerized database
Patent Owner asks that we construe computerized database, and
asserts that “the claims of the ‘494 patent are methods that are directed to
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representing, analyzing, and searching objects in a computer database
having direct and indirect relationships between objects in the database.”
PO Resp. 8 (emphasis in original). The phrases computerized database or
computer database, however, appear nowhere in the claims of the ’494
patent that are subject to this trial.
To the extent that the Patent Owner wishes for us to construe
database, which does appear in the claims, Petitioner correctly notes that the
specification of the ’494 patent states that the database “can be any device
which will hold data” such as “any type of magnetic or optical storing
device.” Ex. 1201, 10:18–21. We do not consider the term to need any
additional construction.
4. numerical representation
Patent Owner asks for a construction of numerical representation of
direct relationships, proffering the interpretation “a numerical value or set of
values that represent direct relationships in a computer database.” PO Resp.
11. Patent Owner distinguishes these numerical representations from
“strings,” which may include letters. Id. at 7. At oral argument, Patent
Owner confirmed that its construction of numerical representation is
something “represented only by digits,” or in other words “expressed by
numbers, not by letters.” Tr. 85.
Petitioner responds that numerical includes “any representation of
binary or digital data that can be processed and analyzed by a computer,”
and means simply “of or relating to numbers.” Reply 1; Tr. 13. Petitioner’s
construction is, therefore, not limited to representations consisting only of
numbers. At oral argument, Petitioner argued that the inclusion of a single
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number into a string is sufficient to make that string a numerical
representation. Tr. 25.
Petitioner’s proffered construction is overly broad and unsupported by
the specification. While one dictionary definition of numerical is “of or
relating to a number or series of numbers,” it may also refer to “expressed in
or counted by numbers.” THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE (2000) (Ex. 3001); see also COLLINS ENGLISH
DICTIONARY (2000) (Ex. 3002) (“measured or expressed in numbers”).
The specification of the ’494 patent uses numerical consistent with
this latter interpretation. In the Initial Extractor Subroutine, the “full textual
objects” of the database are numbered “with Arabic numbers from 1 through
n.” Ex. 1201, 16:64–65. These numbers are used to create vectors and
matrices, which are then run through various algorithms such as the Opinion
Patterner Subroutine. Id. at 17:3–37. “Numerical factors” are then
“calculated” to determine “values.” Id. at 17:34–37; 21:10–14. This
emphasis on calculation, values, and on processing by computer algorithms,
leads us to conclude that numerical representation, as used in the ’494
patent specification, must refer to solely numbers, so that a computer can
process the representations using mathematical algorithms.
Petitioner’s attempt to link the numerical representation of the
specification to the West “key number” system is unpersuasive. Reply 2.
While the specification of the ’494 patent does discuss the key number
system, and such “key numbers” include letters, there is no indication that
the patentee intended to link the numerical representation of the claims to
the West key number system discussed—and distinguished—in the
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background portion of the specification. Ex. 1201, 2:25–29 (“such a
numbering process is subjective and is prone to error”).
Nor do we find persuasive Petitioner’s argument that numerical is
somehow distinct from “numeric,” in that the latter term means only
numbers but the former may encompass letters. Tr. 13. Not only was this
argument advanced for the first time at oral hearing,
1
but it is unsupported
by any evidence of record. Indeed, the two terms are used interchangeably
in dictionary definitions. See Ex. 3001 (entry for “numerical also numeric”);
Ex. 3002 (entry for “numerical or numeric”).
For these reasons, we construe numerical representation as
“representation consisting exclusively of numbers or a set of numbers.”
B. Obviousness of Claims 18–20, 48, and 49 Over the Fox Papers
We instituted trial to determine whether claims 18–20, 48, and 49 are
unpatentable under 35 U.S.C. § 103 as having been obvious over the
combined disclosures of Fox Thesis, Fox SMART, and Fox Collection
(collectively, “the Fox Papers”). Inst. Dec. 12–16. In support of the
asserted ground of unpatentability, Petitioner sets forth the teachings of the
cited prior art, provides detailed claim charts, and cites to the declaration of
Dr. Fox (Ex. 1218 ¶¶ 182–210), explaining how each limitation is taught in
the cited prior art combination. Pet. 8–18.
We have considered Petitioner’s arguments and evidence, as well as
the counterarguments in Patent Owner’s Response, and the evidence cited
therein, and conclude that Petitioner has shown by a preponderance of the

1
Our Rules do not permit arguments to be raised for the first time at oral
hearing. 37 C.F.R. § 42.70(a) (permitting oral argument only on “an issue
raised in a paper.”).
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evidence that each of claims 18–20, 48, and 49 of the ’494 patent is
unpatentable, under 35 U.S.C. § 103, as having been obvious over the Fox
Papers.
1. Fox Thesis
Fox Thesis describes improving query and document representation
schemes for information retrieval. Ex. 1209, 261. In particular, useful types
of bibliographic data are incorporated into a model to test clustering and
retrieval functions. Id. at 164. Bibliographic connections between articles
are illustrated for an exemplary set “O” of documents, which are represented
by letters A through G. Id. at 165–66, Fig. 6.2. This exemplary set “O”
includes direct and indirect citation references. Id. at 166–67, Table 6.2.
Based on the reference pattern for a set of documents, Fox Thesis
describes deriving various measures of the interconnection between the
documents. Id. at 166. For example, weights are assigned “based upon
integer counts” for bibliographically coupled documents. Id. at 167.
Citation submatrices represent reference or citation information. Id. at 169–
70. For example, submatrix bc represents bibliographically coupled
reference information and submatrix cc represents co-citation reference
information. Id. at 169–72, Figs. 6.3–6.5.
2. Fox SMART
Fox SMART describes the System for Mechanical Analysis and
Retrieval of Text (SMART) as a project for designing a fully automatic
document retrieval system and for testing new ideas in information science.
Ex. 1208, 3. Fox SMART describes the computer system used to implement
the experiments described in the Fox Thesis. Ex. 1218 ¶ 27. The software
components of SMART are implemented in the C Programming Language
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and run under the UNIX™ operating system on a VAX™ 11/780 computer.
Ex. 1208, 1, 4.
In SMART, an automatic indexing component constructs stored
representations of documents. Id. at 3. Bibliographic information is used to
enhance document representations. Id. at 29. The SMART system may
process basic raw data, such as an exemplary “N” collection of articles and
citation data describing which articles are cited by others. Id.at 29–30. Data
is entered into the SMART system as a set of tuples {(di, dj)|di→dj} which
describe the cited and citing documents, as well as the direction of citation.
Id. at 29. The exemplary input data also includes indirect citation
relationships, such as bibliographic coupled and co-citation relationships.
Id. at 30–32. These relationships are used to create extended vectors which
can then be clustered and searched to aid document retrieval. Id. at 29.
3. Fox Collection
Fox Collection describes collections of data which are said to be
useful for investigating the interaction of textual and bibliographic data in
retrieval of documents. Ex. 1206, 1. According to the testimony of Dr. Fox,
Fox Collection was originally part of the same work as Fox Thesis and Fox
SMART, and describes the manner in which the data sets were obtained and
processed prior to their use in the Fox SMART experiments. Ex. 1218 ¶ 27.
According to Fox Collection, the experiments were performed on a
collection of bibliographic records (title, abstract, author, keywords, etc.)
from the Communications of the ACM, termed the “CACM collection.” Ex.
1206, 14.
2
Two individuals then examined printed copies of the articles

2
The Fox Collection also discusses an ISI Collection, but in his Reply
Declaration Dr. Fox explains that he cites the ISI collection to “emphasize
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referenced by the CACM bibliographic records, and citation data was
obtained from the articles and entered into a set Raw_data. Id. The citation
data contained pairs of identifiers (citing, cited) which were the document id
numbers (“dids”) of the citing record and record it cites. Id. From this
Raw_data matrix, secondary matrices such as bc (bibliographic coupling)
and cc (co-citation) were derived computationally. Id. at 14–16.
4. Claim 18
Petitioner’s claim chart persuasively reads all elements of claim 18
onto the combined teachings of Fox Thesis, Fox SMART, and Fox
Collection. Pet. 9–14 (citing Ex. 1206, 14–15, 45–46; Ex. 1208, 3, 11–13,
23–24, 26–27, 29–32, 38, 41–54, 58–59; Ex. 1209, 17, 19, 173, 179, 181–
83, 194, 201, 207, 211, 213; 1218 ¶¶ 71–108, 122–131, 182–184, 194–196).
For instance, the combination of Fox Thesis, Fox SMART, and Fox
Collection teaches a database having objects, and a first numerical
representation of direct relationships in the database, as recited in claim 26.
In particular, Fox Collection teaches a database containing the CACM
collection of bibliographic entries. Ex. 1206, 14. Printed copies of each
article with a bibliographic entry in the CACM collection are then manually
reviewed, to obtain bibliographic subvectors in the form “Raw_data (cited,
citing),” and the results entered into the database Id. This is a first
numerical representation of the direct relationship between the “cited,
citing” pair.

findings in the prior art about the value of using co-citation data (a non-
semantic indirect relationship) in information retrieval, not to fully address
all the elements of claims. . . . For the sake of simplicity, the Board should
focus on the methodology given in Fox Papers, and the examples of their use
with the CACM Collection.” Ex. 1233 ¶ 6.
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The combination of Fox Thesis, Fox SMART, and Fox Collection
also teaches generating a second numerical representation using the first
numerical representation, wherein the second numerical representation
accounts for indirect relationships in the database, as recited in claim 18.
Fox SMART teaches that direct relationships may be represented by tuples
called “CITED,” which contain a citing document, a cited document, and the
direction of the citation. Ex. 1208, 29. These tuples are then processed to
construct submatrices such as bc and cc, which contain numbers
representing indirect relationships. Id. at 30–32 (“construct BC by counting
the number of identical tuples of C”). Dr. Fox testifies that the CITED
tuples of Fox SMART refer to the Raw_data derived from the CACM
collection. Ex. 1218 ¶ 124. Because these bc and cc submatrices are
numerical representations, are generated from the first numerical
representations CITED which are based on direct relationships, and account
for indirect relationships, we find that the Fox Papers together teach
generating a second numerical representation.
a. Combination of References
As to whether Petitioner has satisfied the requirements for combining
the teachings of Fox Thesis, Fox SMART, and Fox Collection, we determine
that Petitioner has articulated sufficient reasoning with a rational
underpinning as to why one of ordinary skill in the art would have combined
the retrieval systems taught in Fox Thesis, Fox SMART, and Fox Collection.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Dr. Fox states that the three
publications arose from the same thesis project, and were originally one
document. Ex. 1218 ¶ 70. Furthermore, Dr. Fox notes that Fox Thesis
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“explain[s] the method and experimental results of [his] information
retrieval work,” Fox SMART “detail[s] the updated SMART computer
system used to execute the experiments,” and Fox Collection “describes how
the data sets were obtained and processed prior to being used in the
experiments.” Id. We give Dr. Fox’s statement that one of skill in the art
would have been motivated to combine the references because they
“describe a complete project with its underlying system and data” (id.)
substantial weight, because it is consistent with the considerable overlap in
the disclosures of the Fox Papers and their internal references to one another.
See, e.g., Ex. 1209, 343 (Fox Thesis cites to Fox SMART); Ex. 1208, 84
(Fox SMART cites to Fox Thesis).
b. Patent Owner’s Counterarguments
We have considered Patent Owner’s counterarguments and do not
find them persuasive. Patent Owner contends that various elements of claim
18 are not taught or suggested by the Fox Papers in combination. First,
Patent Owner argues that the Fox Papers do not teach analyzing a database
having objects and a first numerical representation of direct relationships in
the database. PO Resp. 21. In particular, Patent Owner focuses on the fact
that the first numerical representation of Raw_data was not derived from
objects in the database, but rather from manually reviewing the full articles
to which the objects pertain. Id. at 22. Patent Owner concludes that “there
is simply no database disclosed with objects citing to other objects, and
Raw_data cannot be based upon ‘an object’s direct relationships with other
objects in the database.’” Id. at 23.
There is no requirement in claim 18, however, that the first numerical
representation be “based on” objects in the database. The preamble of claim
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18 assumes a pre-existing database that contains two things: objects, and a
first numerical representation of direct relationships. Once the Raw_data
pairs were compiled and entered into the CACM database, as disclosed in
Fox Collection (Ex. 1208, 14), these requirements were met.
Even if claim 18 did require the objects of the database to have direct
and indirect relationships, Petitioner persuasively argues this feature is
suggested by the Fox Papers in combination. For example, Petitioner shows
persuasively that that it would have been obvious to modify the databases of
the Fox Papers to contain full text documents. Reply 4. Dr. Fox’s testimony
supports this argument, noting that if storage resources allowed storage of
the full text of documents, this would have been understood as preferable.
Ex. 1218 ¶¶ 76, 89. We credit Dr. Fox’s testimony on this point, as it is
consistent with the disclosure of Fox Thesis that “some [information
retrieval] systems store the full text of the various documents.” Ex. 1209, 6.
Fox Thesis adds that full text permits users to “locate documents of interest,”
as well as “retrieve and/or examine paragraphs, passages, sentences, or
single word occurrences (in context).” Id. These extra capabilities are
described as “straightforward generalizations of document retrieval
methods.” Id.
Furthermore, if modified to include full text documents, Fox SMART
teaches that it would be of “particular value” in such applications to compute
vectors (a first numerical representation) for smaller items than just
documents. Ex. 1208, 80. As an example, Fox SMART discusses
computing vectors for verses and chapters of the Bible, subsets of the entire
document. Id.
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We, therefore, conclude that the Fox Papers suggested to one of
ordinary skill in the art at the time of the invention the modification of the
Fox databases to include full text documents. With such a modification, the
databases would contain, as objects, the full text documents—or even
subsets of the full text documents—and these objects would have direct and
indirect relationships due to their citation of one another. Patent Owner’s
argument to the contrary is unpersuasive.
Patent Owner also argues that the Fox Papers do not teach or suggest
displaying one or more identified objects from the database, as claim 18
requires. PO Resp. 25. Patent Owner emphasizes that the identifying and
displaying steps of claim 18 must apply to objects in the same database. Id.
Because, Patent Owner alleges, the identified objects of Fox SMART are the
full articles which are not present in the database, the objects cannot be
displayed. Id.
Fox SMART, however, discloses an operation in which documents
are retrieved, and then desired portions of the text of the retrieved documents
are displayed to the user. Ex. 1208, 24, Fig. 6; see also id. at 11 (“display of
portions of text from selected top-ranked documents”). Because, as noted
above, we find that the Fox Papers suggest that the objects in the database
can be both full text documents, as well as portions of those documents,
3
we
conclude that the displaying one or more identified objects requirement of
claim 18 is met.
Patent Owner’s remaining contentions relate to whether Petitioner has
satisfied the requirements for combining the teachings of Fox Thesis, Fox

3
“For example, a section, page, or paragraph of text taken from a longer text
may be treated as a textual object.” Ex. 1201, 14:2–4.
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SMART, and Fox Collection. For example, Patent Owner contends that the
systems disclosed in the individual Fox Papers are “narrowly tailored” and
would not have been combined merely because of their common authorship.
PO Resp. 16–21.
As indicated above, we determine that Petitioner has articulated
sufficient reasoning with a rational underpinning as to why one of ordinary
skill in the art would have combined the retrieval systems taught in Fox
Thesis, Fox SMART, and Fox Collection. See KSR, 550 U.S. at 398. For
example, Dr. Fox wrote each of Fox Thesis, Fox SMART, and Fox
Collection. See Ex. 1209, i; Ex. 1208, 1; Ex. 1206, 1.
Patent Owner also contends that the Raw_data relation of Fox
Collection could not be combined with the CITED tuples of Fox SMART,
because they are “fundamentally incompatible.” PO Resp. 17. In support of
this argument, Dr. Jacobs testifies, for example, that CITED does not
describe using document ids (“dids”) while Raw_data does. Ex. 2113
¶¶ 124–125. Dr. Fox testifies to the contrary, stating that the CITED tuples
of Fox SMART specifically refer to the “Raw_data” derived from the
CACM collection. Ex. 1218 ¶ 124. We give Dr. Fox’s testimony on this
point substantial weight, and do not credit Dr. Jacobs’ testimony. Our
determination is not only due to Dr. Fox’s personal knowledge of the Fox
Papers, but also supported by the descriptions of Raw_data and CITED in
the references. The references indicate that both Raw_data and CITED
contain pairs of document identifiers, with the sole difference being that
CITED also contains a third data element that signifies the direction of the
citation. Furthermore, while the description of CITED in Fox SMART is
silent as to document ids, other portions of the document discuss dids which
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are an “index in range 1 . . . N.” Ex. 1208, 36. We do not consider the
combination of Raw_data with CITED, or the combination of the systems of
Fox Collection, Fox SMART, and Fox Thesis, to be beyond the level of
ordinary skill in the art.
Patent Owner further contends that using indirect relationships in a
computerized search system would not have been predictable at the time of
the invention of the ’494 patent. PO Resp. 48–50. In particular, Patent
Owner contends that Google’s introduction of its algorithms took experts in
the field by surprise and was considered a major breakthrough. PO Resp. 49
(citing Ex. 2113 ¶ 431; Ex. 2114 ¶¶ 43–65). Patent Owner’s contention is
based on its view that the combined teachings of Fox Thesis, Fox SMART,
and Fox Collection are not sufficient because they do not teach
computerized searching of an electronic database. PO Resp. 54; see also Tr.
49 (“[T]he Fox papers by themselves don’t get you there . . . every one . . . is
directed to printed articles, not an electronic database.”). According to
Patent Owner, the prior art cited by Petitioner teaches experiments that are
not directed to web based documents, “but rather are directed toward limited
experimentation with bibliographic relationships existing among paper
documents.” PO Resp. 1.
We disagree with Patent Owner. For example, Fox SMART teaches
an implementation in which software components of SMART are
implemented in the C Programming Language and run under the UNIX™
operating system on a VAX™ 11/780 computer. Ex. 1208, 1, 4. In
SMART, an automatic indexing component constructs stored representations
of documents. Id. at 3. In light of the various teachings of Fox Thesis, Fox
SMART, and Fox Collection discussed herein, we determine that Fox
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Thesis, Fox SMART, and Fox Collection, taken together, teach or suggest
computerized searching of an electronic database.
Patent Owner also contends that the inclusion of indirect relationships
into search “degrades results,” and therefore provides a teaching away from
the invention. PO Resp. 51. As Patent Owner acknowledges, its evidence of
degraded results does not teach away from the combination of the Fox
Papers, but rather from the modification of the teachings of the Fox Papers
to incorporate “an electronic database that has references to the objects in
the database.” Tr. 49–50. We found above, however, that the Fox Papers
teach this feature. In addition, to the extent modification of the Fox Papers
is necessary to meet claim 18, we have found that modification is expressly
suggested by the Fox Papers themselves. The record is insufficient to
establish a teaching away.
Patent Owner also asserts objective indicia of non-obviousness,
focusing on Google’s search engine using its PageRank algorithm. PO
Resp. 57–60. As an initial matter, Patent Owner’s contentions again appear
to be based on its view that the combined teachings of Fox Thesis, Fox
SMART, and Fox Collection are not sufficient because they do not teach
computerized searching of an electronic database. Id. at 56 (“Link analysis
technology applied to the Web, as claimed in the ’494 patent and embodied
in PageRank, satisfied a long felt need for improved computerized search.”
(citation omitted)); Tr. 60–61 (“[I]t certainly wouldn’t have been obvious to
one of ordinary skill based on Fox’s work to extend these ideas from this
paper collection to electronic databases.”). For the reasons discussed above,
we disagree with Patent Owner’s view and determine that Fox Thesis, Fox
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SMART, and Fox Collection, taken together, teach or suggest computerized
searching of an electronic database.
Furthermore, we note that Patent Owner has not shown that the
asserted success of a commercial embodiment of the ’494 patent actually
resulted from features recited in the claims of the ’494 patent. Patent Owner
has not provided sufficient evidence to support a nexus between claim 18
and the Google PageRank algorithm. Because Patent Owner has failed to
provide the source code of PageRank, or any other detailed information
beyond publicly-available, generalized hearsay statements about Google’s
search (Ex. 2051), the record is insufficient to prove that PageRank uses the
method of claim 18. Without further information, even if PageRank’s
algorithm incorporates the method of claim 18, we cannot determine that
Google’s success is due to the method of claim 18, as opposed to other
elements of the algorithm.
Patent Owner also points to Google’s license of the ’494 patent as
evidence of nexus. PO Resp. 59–60. Patent Owner, however, admits that
this license resulted in the settlement of a lawsuit (id.), which without
additional contextual evidence, weighs against finding a nexus.
Additionally, we determine that in light of the weak showing of
secondary considerations, the evidence of obviousness with respect to Fox
Thesis, Fox SMART, and Fox Collection, is sufficient to support the
conclusion that claim 18 would have been obvious. See Leapfrog
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
As discussed above, Petitioner has provided a strong case of obviousness.
Accordingly, even after considering the counterarguments in Patent
Owner’s Response, and the evidence cited therein, we find that Petitioner
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has shown by a preponderance of the evidence that claim 18 is unpatentable
as it would have been obvious over the combination of Fox Thesis, Fox
SMART, and Fox Collection.
5. Dependent Claims
Petitioner’s claim chart persuasively reads all elements of dependent
claims 19, 20, 48, and 49 onto the teachings of Fox Thesis, Fox SMART,
and Fox Collection, taken together. Pet. 11–21 (citing Ex. 1206, 14–16; Ex.
1208, 7–8, 10–11, 15, 20–21, 23–24, 29–33, 41, 53; Ex. 1209, 181–82, 237–
38, 246–47; 1003 ¶¶ 78–88, 99–106, 108, 127–129, 131, 185–188, 192, 193,
197, 199, 201–05). For instance, we determine that Petitioner has shown by
a preponderance of the evidence that the combination of Fox Thesis, Fox
SMART, and Fox Collection teaches that the identifying step comprising
searching for objects in a database using the stored numerical representation,
wherein direct and/or indirect relationships are searched, as required by
claim 20. Fox SMART teaches a “p-norm query” example, in which a user
can search for documents linked to, bibliographically coupled to, or co-cited
with a previously retrieved document. Ex. 1208, 41, Fig. 14. Links
represent direct relationships, while bibliographic coupling and co-citation
are indirect relationships, thus satisfying claim 20’s additional limitations.
We also conclude that Petitioner has shown by a preponderance of the
evidence that the combination of Fox Thesis, Fox SMART, and Fox
Collection teaches identifying objects using “the second numerical
representation and semantical factors to rank objects for display,” as recited
in claim 48. Petitioner identifies several portions of the Fox Papers which
allegedly teach this limitation. Pet. 16–17. For example, Petitioner notes
the disclosure of Fox SMART that “it should be possible to rank the
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documents retrieved by a Boolean search according to some other similarity
function.” Id. (citing Ex. 1208, 10). Petitioner also identifies Figure 14 of
Fox SMART, which discloses sequentially searching using various concept
types including terms (a semantical factor), followed by retrieval of
documents using non-semantical terms such as bibliographic coupling. Id.
(citing Ex. 1208, 41); Ex. 1233 ¶ 233.
Claim 49 requires that generating the second numerical representation
considers the quantity of direct relationships between objects. We determine
that Fox SMART teaches, for example, the construction of bc subvectors,
which represent bibliographic coupling and therefore are second numerical
representations. Ex. 1208, 31, Fig. 9. This process uses the CITED tuples to
generate the bc subvectors, and “count[s] the number of identical tuples,”
which represent direct relationships. Id. at 30–31. We, therefore, conclude
that Fox SMART teaches the additional limitation of claim 49.
Additionally, for the reasons discussed above with respect to claim 18,
we determine that Petitioner has satisfied the requirements for combining the
teachings of Fox Thesis, Fox SMART, and Fox Collection.
Again, we are unpersuaded by Patent Owner’s counterarguments.
Patent Owner argues that Petitioner has not proven by a preponderance of
the evidence that all elements of the dependent claims are taught or
suggested by the Fox Papers. PO Resp. 27–34. Some of these arguments
are based on the fact that the databases of the Fox Papers do not include full
text documents (see, e.g., id. at 29–30), while others are based on the alleged
incompatibility between the Fox Collection Raw_data and the Fox SMART
CITED tuples. See, e.g., id. at 31, 32. We find these arguments
unpersuasive for the same reasons discussed above with respect to claim 18.
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The Fox Papers suggest the inclusion of full text documents into the
databases, and that such a modification could be beneficial.
Patent Owner also argues that claim 48’s requirement of using the
second numerical representation and semantical factors to rank objects for
display is not met by the Fox Papers. Id. at 33. According to Patent Owner,
Petitioner’s argument conflates two distinct disclosures of Fox SMART:
searching using indirect relationships (second numerical representation), but
not ranking; or ranking, but not in the context of indirect relationships. Id.
Dr. Jacobs testifies that “the claim specifically requires using the
combination of the second numerical representation (alleged to be bc and/or
cc) and ‘semantic factors’ together to rank objects for display.” Ex. 2113
¶ 272 (underlining in original).
We disagree with Patent Owner’s interpretation of claim 48. The
claim does not require, contrary to Dr. Jacobs’s testimony, that the second
numerical representation and the semantical factors be used together, but
rather that they are both used to rank objects for display. The search
operation of Figure 14 of Fox SMART discloses using both indirect
representations and semantical factors sequentially (Ex. 1208, 41), which
satisfies claim 48. Furthermore, Fox SMART discloses retrieving
documents with “highest similarity” to a query, which necessarily requires
ranking of the retrieved results by similarity. Indeed, Fox SMART teaches
that “ranking of documents should be possible for any type of search
method.” Ex. 1208, 10. Dr. Fox testifies that “Figure 14 discloses that the
user can input any desired [concept types], including semantical . . . and the
indirect relationship . . ., to obtain a set of search results with the documents
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ranked based on those factors.” Ex. 1233 ¶ 233. We find this testimony
credible and consistent with the disclosure of Fox SMART.
With respect to claim 49, Patent Owner contends that the Fox Papers
do not teach or suggest considering “a quantity of direct relationships” when
generating the second numerical representation, because “the ‘counting’ in
the Fox Papers alleged to teach the features of claim 49 refer to counting
indirect relationships, not direct links.” PO Resp. 34. As discussed above,
we find that Figure 9 of Fox SMART is contrary to Patent Owner’s
argument and satisfies claim 49.
We also note Dr. Jacobs testifies that Fox SMART only teaches
counting indirect relationships, and quotes the reference as stating that
“[f]orming the bc submatrix requires a bit more processing. . . . result is also
sorted and duplicates are counted.” Ex. 2113 ¶ 274 (quoting Ex. 1208, 30).
The ellipsis in Dr. Jacobs’s quotation, however, omits a sentence that
directly contradicts Patent Owner’s contention: “Cited tuples are sorted on
the second attribute and then coupled articles are identified.” Ex. 1208, 30.
The CITED tuples of Fox SMART are the direct links, not the indirect
relationships Patent Owner and Dr. Jacobs contend. Because of omission,
Dr. Jacobs’s testimony on this issue lacks credibility.
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 19, 20, 48, and 49 of the ’494 patent are
unpatentable under 35 U.S.C. § 103(a) as they would have been obvious
over Fox Thesis, Fox SMART, and Fox Collection.
6. Combinations With Other References
In addition to the obviousness ground based solely on the Fox Papers,
we instituted trial on two related grounds alleging obviousness of various
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dependent claims over the Fox Papers in combination with other secondary
references. Inst. Dec. 19–23 (claims 45 and 51 over Fox Papers, Saito
Clustering, and Fox Envision; claim 54 over Fox Papers, Saito Clustering,
Fox Envision, and Little). As set forth below, Petitioner has established by a
preponderance of the evidence that claims 45, 51, and 54 are unpatentable.
a. Claim 45
We find that Petitioner has established by a preponderance of the
evidence that claim 45 would have been obvious over the combined
disclosures of the Fox Papers, Fox Envision, and Saito Clustering. Claim 45
depends from claim 19, and further requires, inter alia, that “the direct
relationships are hyperlink relationships between objects on the world wide
web” and “analyzing direct link weights in a set of paths.” Petitioner
contends that the former limitation is taught by Fox Envision, whereas the
latter is taught by Fox Thesis, Fox SMART, or Saito Clustering. Pet. 54–55.
Petitioner asserts that Fox Envision “suggests the extension of
[information retrieval] techniques to the Web,” and that a person of ordinary
skill in the art would have combined Fox Envision with the Fox Papers
because Envision is follow-on work to Dr. Fox’s original thesis. Pet. 53–54.
Petitioner characterizes Saito Clustering as “applying a weighting
factor to each link in [a path of links] that diminishes as the number of links
increases.” Id. Saito Clustering’s “total citation relation matrix” includes a
weight wk that reduces for each additional link in a path. Id. Petitioner
provides no testimony from Dr. Fox regarding the disclosure of Saito
Clustering.
Patent Owner contends that Saito Clustering fails to disclose the
analyzing direct link weights element of claim 45, and thus the combination
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of Saito Clustering with the Fox Papers and Fox Envision fails to render
claim 45 obvious. PO Resp. 44–46. Patent Owner argues that the weight wk
in Saito Clustering is applied to a “walk,” meaning the entire path between
two nodes, as opposed to the individual links of the path. Id. Dr. Jacobs
adds that a person of ordinary skill in the art would have understood that “a
directed walk is not a link, but rather corresponds to a path.” Ex. 2113 ¶
399.
We agree with Patent Owner that Saito Clustering’s weights are
applied to a path, not the direct links therein, and thus do not meet claim
45’s limitation. However, Patent Owner fails to address the disclosures of
Fox Thesis and Fox SMART, which are also cited by Petitioner. One cannot
show non-obviousness by attacking references individually where the
challenge is based on a combination of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981).
Dr. Fox testifies that Fox Thesis discloses that “[t]he bc and cc
subvectors are generated based on an analysis of direct links, and are
weighted according to the count of the coupling and co-citation relationships
established by those direct links.” Ex. 1218 ¶ 209. In other words, the
weighting of the paths bc and cc in Fox Thesis are generated using a count
of the direct links, which are each weighted as 1. Ex. 1209, 171–72, Figs.
6.3, 6.4. Patent Owner provides no reason why a weight of 1 for each direct
link is insufficient to meet the limitation of a “direct link weight,” and we
discern no disclosure in the specification of the ’494 patent that would
require a narrower interpretation.
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Patent Owner contends that the Petition does not establish that
“analyzing web-based links would have been obvious to one of ordinary
skill in 1996; they are obvious only in hindsight.” PO Resp. 46. Dr. Jacobs
acknowledges that “the Web was known before 1996, and hypertext had
been known long before the Web,” but argues that “[w]hile it may have been
obvious to combine some information retrieval methods with the Web in
1996 . . . the inventive step of the ’494 patent of treating Web links as
citations was by all indications non-obvious.” Ex. 2113 ¶ 403.
Fox Envision, however, teaches applying citation analysis to hypertext
systems, including the World Wide Web:
We are beginning to see the emergence of wide area hypertext
systems (Yankelovich, 1990) like the WorldWideWeb (WWW),
that carry this concept forward into a distributed environment.
Clearly, we must coordinate hypertext and hypermedia linking
with the various approaches to search and retrieval (Fox et al.,
1991b). One approach is the idea of information graphs
(including hypergraphs), where objects of all types are
interrelated by links or arcs that capture not only citation
(reference) but also inheritance, inclusion, association,
synchronization, sequencing, and other relationships.
Ex. 1210, 482 (emphases added).
Patent Owner argues that the above-referenced excerpt of Fox
Envision is not sufficient because “[n]owhere is there any suggestion that
hyperlinks should be treated as citations for purposes of citation analysis.”
PO Resp. 18. Dr. Jacobs makes the same claim. Ex. 2113 ¶ 393. Patent
Owner and Dr. Jacobs’s statements are inaccurate representations of the
reference. The approach taught in Fox Envision interrelates “objects of all
types,” including objects on the World Wide Web, so as to capture citation
relationships (Ex. 1210, 482).
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b. Claim 51
We find that Petitioner has established by a preponderance of the
evidence that claim 51 would have been obvious over the combined
disclosures of the Fox Papers, Fox Envision, and Saito Clustering. Claim 51
depends from claim 48—which we have found to have been obvious over
the Fox Papers—and further requires that the identified objects include web
sites, and the identifying step includes providing a Universal Resource
Locator that identifies a web page. Patent Owner does not address any
particular limitation of claim 51, but rather repeats its argument that
analyzing web-based links would not have been obvious to one of ordinary
skill. PO Resp. 46. We find this argument unpersuasive for the reasons
discussed above.
c. Claim 54
Claim 54 depends from claim 45, which we have found would have
been obvious for the reasons discussed above. The additional limitation of
claim 54 recites that “an independent application determines a cost
associated with accessing the identified objects.” Petitioner contends that
claim 54 would have been obvious over an eight-reference
4
combination of
Fox Thesis, Fox SMART, Fox Collection, Fox Envision, Saito Clustering,
Saito Design,
5
Fox Hypertext,
6
and Little. Pet. 56. The Petition primarily

4
Because the Petition set forth the ground of unpatentability of claim 54 as
being based on the combination of all eight references, we repeat them here.
Pet. 56. However, we do not rely on all references in the ground to find that
all elements of the claims are taught or suggested by the prior art.
5
Tatsuki Saito, Design and Implementation for Scientific Article Data Base,
Bulletin of the Faculty of Eng’g, Hokkaido Univ. no. 151 pp. 19–34 (July
30, 1990) (“Saito Design”) (Ex. 1213).
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relies on Little, which discloses methods for billing users of a website
according to the amount of information accessed or the amount of detail
extracted (Ex. 1216, 77), to teach the additional limitation of claim 54.
Petitioner further contends that it would have been obvious to use a program
separate from the content database to determine the cost for accessing the
information in the database, because Little recites advantages for doing so.
Pet. 56–57.
Patent Owner does not argue the patentability of claim 54 separately
or address the disclosure of Little. Upon review of the Petition and
supporting evidence, we conclude that Petitioner has shown by a
preponderance of the evidence that claim 54 would have been obvious over
the combination of Fox Thesis, Fox SMART, Fox Collection, Fox Envision,
Saito Clustering, and Little.
C. Obviousness of Claims 18–20, 48, and 49 Over the Tapper Papers
We instituted trial to determine whether claims 18–20, 48, and 49 are
unpatentable under 35 U.S.C. § 103 as having been obvious over the
combined disclosures of Tapper 1976 and Tapper 1982 (collectively, “the
Tapper Papers”). Inst. Dec. 16–19.
We have considered Petitioner’s arguments and evidence, as well as
the counter-arguments in Patent Owner’s Response, and the evidence cited
therein, and conclude that Petitioner has not shown by a preponderance of
the evidence that claims 18–20, 48, and 49 of the ’494 patent are

6
Edward A. Fox, et al., Integrating Search and Retrieval with Hypertext,
HYPERTEXT/ HYPERMEDIA HANDBOOK, 329–355 (1991) (“Fox Hypertext”)
(Ex. 1211).
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unpatentable, under 35 U.S.C. § 103, as having been obvious over the
Tapper Papers.
1. Tapper 1976
Tapper 1976 discloses a “citation vector technique” for retrieving
legal information that seeks to overcome perceived deficiencies in Boolean
search strings. Ex. 1204, 270–71. Rather than characterizing a legal
document by the words it contains, vector matching focuses on the citations
the document contains. Id. at 263. Tapper 1976 also notes that the
technique may be used as an adjunct to a full-text retrieval system. Id. at
272.
By repeating the vector characterization of the documents, Tapper
1976 discloses that a matrix may be created that shows the similarities
between the documents. Id. By re-ordering the matrix, the documents may
be clustered according to their similarity. Id. The reference also discloses
that “second generation citations” may be used: “if a case cites cases A', B'
and C', and case A' cites a1', a2' and a3', case B' b1', b2' and b3' and case C'
c1', c2' and c3' the original case would be represented by a combination of
its own vector, and those of cases A', B' and C'.” Id. at 266.
2. Tapper 1982
Tapper 1982 similarly focuses on the drawbacks of full-text searching
of legal documents and the alternative use of citation vectors for legal
research. Ex. 1205, 135–36. The reference discusses weighting certain
citation vectors more heavily than others, for example by the difference in
the ages of the citing and cited case. Id. at 138.
A pilot project implementing such a citation vector-based system is
also described by Tapper 1982. Id. at 139. The reference discloses a
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correlation algorithm used in the pilot project to cluster together vectors with
a high degree of association. Id. at 143–44. Such clustering is said to permit
a document to be retrieved “not only because it is itself closely associated
with another target document, but also because both it and the target
document are closely associated with a third.” Id.
3. Claim 18
As discussed above, the preamble of claim 18 requires that the
database have “a first numerical representation of direct relationships in the
database.” We find that this limitation is neither taught nor suggested by the
combined Tapper Papers.
Petitioner’s claim chart does not identify a first numerical
representation, instead merely identifying where the Tapper papers disclose
direct relationships. Pet 27. For example, Tapper 1976 is cited as disclosing
“algorithms that identify citations in full-text automatically” (Ex. 1204, 260)
and “[c]haracterizing a legal document not by the words, but by the citations
it contains.” Id. at 262. Tapper 1982 is cited as disclosing “the use of case
citations as selection vectors in legal information retrieval.” Ex. 1205,
Abstract. These portions of Tapper, however, merely discuss the use of case
citations (direct relationships) as the basis for non-semantical search.
Petitioner provides no citation to a disclosure by the Tapper Papers that
these direct relationships are represented by a first numerical representation.
The narrative portion of the Petition accompanying the claim chart
pertaining to the Tapper Papers does not address first numerical
representation, or specify how the second numerical representation is
created. Pet. 26–27, 36–37.
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In its Reply Brief, Petitioner identifies two other disclosures by the
Tapper Papers it contends satisfy the first numerical representation
limitation. First, Petitioner argues that “the legal citations in Tapper clearly
qualify as numerical representations.” Reply 11. The legal citations
Petitioner identifies, however, are in the exemplary form of “500 F.2d 411,”
which includes letters. As we have construed the term, this is not a
numerical representation.
Second, Petitioner notes that the Tapper Papers describe assigning
cases in the database a unique ID number. Id. (citing Ex. 1205, 148). At
oral argument, Petitioner’s counsel directed our attention to Table 2 of
Tapper 1982, which includes in the leftmost column pairs of numbers which
signify pairs of documents. Tr. 16; Ex. 1205, 147. The document numbers
indicated by Petitioner are numerical representations of documents,
7
not the
relationships between those documents. Claim 18 requires that the first
numerical representations are of direct relationships in the database.
Numerical representations of documents, not the relationships between
them, cannot satisfy this limitation.
Nor can the document number pairs be a first numerical
representation, as Tapper 1982 does not disclose that the pairs represent a
direct relationship (i.e., one of the documents in the pair citing the second).
Rather, the pairs of documents appear to be listed together in the table
because of their high “correlation values.” Ex. 1205, 148. As Petitioner
acknowledges, these correlation values represent indirect relationships
between the documents (Reply 12 (“correlation values of cases’ indirect

7
“The first column gives the numbers allocated to the cases.” Ex. 1205,
148.
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relationships”)), therefore they cannot be a first numerical representation of
a direct relationship.
Petitioner argues in the alternative that “there is nothing non-obvious
about creating citation vectors consisting solely of numbers.” Reply 11. At
the outset, we note that this argument was presented for the first time in the
Reply; the sole modification to the Tapper Papers addressed in the Petition is
the combination of the disclosures of the two references. Pet. 36–37. Nor
did Petitioner present any testimony with the Petition regarding the Tapper
Papers, or how a person of ordinary skill in the art would have modified the
references. It would be a proper exercise of our discretion, therefore, to not
consider this argument and the Reply Declaration of Dr. Fox (Ex. 1233),
which presents testimony on the Tapper Papers for the first time.
8
See Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“a
reply that raises a new issue or belatedly presents evidence will not be
considered.”)
Even if we were to consider Petitioner’s Reply and Dr. Fox’s Reply
Declaration, however, we are not persuaded. Petitioner cites to various
portions of the Tapper Papers (Reply 11), but none of these citations
sufficiently establish a reason to substitute numerical representations for
those disclosed in Tapper. For example, Petitioner argues—using pieced-
together quotations—that “Tapper [1982] also makes clear that one could
‘very easily’ use a ‘simple conversion table’ to map ‘extracted’ citations to
any ‘chosen style.’” Id. (citing Ex. 1205, 136). Upon reading the full
context from which these quotes are drawn, however, it is clear that Tapper

8
We address Patent Owner’s Motion to Exclude portions of the Reply
Declaration below.
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1982 is discussing “parallel reports of the same decision.” Ex. 1205, 136.
In other words, Tapper 1982 does not contemplate converting letter-
containing case citations into numbers, but rather converting one letter-
containing citation into another.
Dr. Fox’s Reply Declaration (Ex. 1218 ¶¶ 107–115) relies on the same
arguments as Petitioner’s Reply, and we find them unpersuasive for the
same reasons. Nor are we persuaded by the portions of Dr. Jacobs’s cross-
examination Petitioner cites (Reply 11 (citing Ex. 1235, 313:7–316:23,
339:3–342:6)), as Dr. Jacobs’s testimony was to what a person of ordinary
skill would have understood from the ’494 patent specification, not the
Tapper Papers. See In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991)
(suggestion to make invention cannot “be founded . . . in the applicant’s
disclosure”). The record before us does not support the conclusion that a
person of ordinary skill in the art would have modified the combined
disclosures of the Tapper Papers to include a first numerical representation.
4. Dependent Claims
The remaining instituted claims all depend, directly or indirectly, from
claim 18, and thus incorporate claim 18’s requirement of a first numerical
representation. We, therefore, find that the Tapper Papers do not teach or
suggest all elements of these dependent claims.
D. Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 44) in which Patent
Owner seeks to exclude portions of the Reply Declaration of Dr. Edward A.
Fox (Ex. 1233) (“Reply Declaration”) submitted with Petitioner’s Reply. In
particular, Patent Owner identifies three issues with the Declaration, each of
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which is based on the argument that portions of the Declaration are improper
reply evidence.
In its Reply, a Petitioner may only respond to arguments raised in the
Patent Owner’s Response. 37 C.F.R. § 42.23(a). “A reply that raises a new
issue or belatedly presents evidence will not be considered.” Office Patent
Trial Practice Guide, 77 Fed. Reg. at 48,767. The Practice Guide provides,
as indications of improper reply evidence, “new evidence necessary to make
out a prima facie case for . . . patentability or unpatentability . . ., and new
evidence that could have been presented in a prior filing.” Id.
A motion to exclude evidence under 37 C.F.R. § 42.64(c), however,
“normally is not the proper vehicle for resolution of a dispute regarding
reply arguments and evidence exceeding the proper scope of a reply.” ABB,
Inc. v. Roy-G-Biv Corp., Case IPR2013-00063, slip op. 13–14 (PTAB May
16, 2014) (Paper 71); Corning Inc. v. DSM IP Assets B.V., Case IPR2013-
00047, slip op 7 n.3 (PTAB May 1, 2014) (Paper 84) (characterizing such
motions as “now disfavored”). Rather, when evaluating the record after oral
argument, the Board is capable of determining what, if any, evidence
exceeds the proper scope of rely, and accordingly disregarding that
evidence.
While we, therefore, deny Patent Owner’s Motion, we also note that
even if it were proper, we would dismiss it as moot. With respect to the
objected-to portions of the Reply Declaration which discuss the Tapper
Papers, we have considered them above, found Dr. Fox’s testimony
unpersuasive, and found in favor of Patent Owner on the Tapper Papers
ground. With respect to the Fox Papers grounds, we have found in favor of
Petitioner, but did not rely on any of the objected-to portions of the Reply
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Declaration in so doing. A decision to exclude the Reply Declaration would,
therefore, not affect our determinations in this case.
E. Motions to Seal
Patent Owner filed a Motion to Seal (Paper 32) the Declaration of Dr.
Amy N. Langville (“Langville Declaration”) filed as Exhibit 2114.
Petitioner filed a Motion to Seal (Paper 39) the Transcript of the Deposition
of Amy N. Langville, Ph.D. (“Langville Transcript”) filed as Exhibit 1236.
Both of these motions are unopposed.
Regarding Patent Owner’s Motion to Seal, according to Patent Owner
paragraphs 25, 112, and 113 of the Langville Declaration make reference to
certain facts about confidential licenses to the patents under review. Paper
32, 3. Additionally, Patent Owner contends that this information has not
been made, and will not be made, public. Id.
Regarding Petitioner’s Motion to Seal, according to Petitioner, Patent
Owner has designated the transcript as confidential. Paper 39, 3. To avoid
public disclosure, therefore, Petitioner submits sealing the Langville
Transcript is appropriate. Id.
There is a strong public policy in favor of making information filed in
inter partes review proceedings open to the public. See Garmin Int’l v.
Cuozzo Speed Techs., LLC, Case IPR2012-00001 (PTAB Mar. 14, 2013)
(Paper 34). Under 35 U.S.C. § 316(a)(1), the default rule is that all papers
filed in an inter partes review are open and available for access by the
public.
9
The standard for granting a motion to seal is “good cause.”

9
Additionally, we note that confidential information subject to a protective
order ordinarily would become public 45 days after final judgment in a trial.
Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761. However, after
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Patent 5,832,494

39

37 C.F.R. § 42.54. A moving party bears the burden of showing that the
relief requested should be granted. 37 C.F.R. § 42.20(c).
Regarding Patent Owner’s Motion to Seal, Patent Owner, as the
moving party, has failed to carry its burden. Patent Owner identifies only
three paragraphs in the Langville Declaration that purportedly contain
confidential information. However, Patent Owner has not pointed to proof
in the record that any information contained in these paragraphs is
confidential. Additionally, although Patent Owner contends that this
information has not been made, and will not be made, public, Patent Owner
presented this information during the hearing on October 30, 2014, which
was open to the public. See Tr. 54:12–25. We, therefore, determine that
Patent Owner has not met its burden of proof.
Regarding Petitioner’s Motion to Seal, Patent Owner’s designation of
the transcript as confidential is not sufficient to show that the transcript
contains confidential information. We, therefore, determine that Petitioner
has not met its burden of proof.
We recognize a denial of the motions to seal would immediately
unseal the material that Patent Owner desires to remain confidential and the
effect would be irreversible. Therefore, rather than denying the motions at
this time, we will provide Patent Owner and Petitioner one week to
(1) withdraw the motions to seal and request that we expunge Exhibits 2114
and 1236, or (2) withdraw the motions to seal, request that we expunge
Exhibits 2114 and 1236, and replace them with redacted versions that leave
out the confidential information. We note that we have not relied on the

denial of a petition to institute a trial or after final judgment in a trial, a party
may file a motion to expunge confidential information from the record.
37 C.F.R. § 42.56.
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Patent 5,832,494

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three paragraphs of the Langville Declaration that Patent Owner identifies as
containing allegedly confidential information.

III. CONCLUSION
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 18–20, 45, 48, 49, 51, and 54 of the ’494 patent are
unpatentable under 35 U.S.C. § 103.

IV. ORDER
For the reasons given, it is
ORDERED that claims 18–20, 45, 48, 49, 51, and 54 of U.S. Patent
No. 5,544,494 are determined by a preponderance of the evidence to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude the
Reply Declaration of Dr. Edward A. Fox (Exhibit 1233) is denied;
FURTHER ORDERED that Exhibit 2114 and Exhibit 1236 will be
made available to the public after 5 PM Eastern five business days after the
entry date of this decision, unless prior to that time, each of Patent Owner
and Petitioner (1) withdraws the motions to seal and requests that we
expunge Exhibits 2114 and 1236, or (2) withdraws the motions to seal,
requests that we expunge Exhibits 2114 and 1236, and replaces them with
redacted versions that leave out the confidential information; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:

Heidi L. Keefe
COOLEY, LLP
hkeefe@cooley.com
dcpatentdocketing@cooley.com.

David Silbert
KEKER & VAN NEST, LLP
djs@kvn.com
efiling@kvn.com

FOR PATENT OWNER:

Martin M. Zoltick
Nancy J. Linck
Soumya P. Panda
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
mzoltick@rfem.com
nlinck@rfem.com
SRA-IPR@rfem.com