Sound View Innovations, LLC

Patent Trials and Appeals Board

Oct 5, 2021

IPR2018-01039 (P.T.A.B. Oct. 5, 2021)

Trials@uspto.gov Paper 66
571-272-7822 Date: October 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HULU, LLC,
Petitioner,
v.
SOUND VIEW INNOVATIONS, LLC,
Patent Owner.

IPR2018-01039
Patent 5,806,062

Before JAMESON LEE, DEBRA K. STEPHENS, and DANIEL J.
GALLIGAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
A. Background and Summary
Hulu, LLC (“Petitioner”) filed an Inter Partes Review petition (Paper
3 (“Pet.”)) to institute an inter partes review of claims 1–3, 7, 10, 11, 14, and
15 (the “challenged claims”) of U.S. Patent 5,806,062 (Exhibit 1001, the
IPR2018-01039
Patent 5,806,062
2
“’062 Patent”; 35 U.S.C. § 311). Sound View Innovations, LLC (“Patent
Owner”) timely filed a Preliminary Response (Paper 10 (“Prelim. Resp.”)).
In our original Decision Denying Institution of Inter Partes Review
(“Decision Denying Institution”), we1 declined to institute inter partes
review because Petitioner failed to persuade us sufficiently that relied-upon
prior art qualifies under 35 U.S.C. §§ 102(a) and 102(b) (Paper 12, 12).
Petitioner then requested rehearing of our Decision Denying Institution by
the Precedential Opinion Panel (Paper 13, 13). The Precedential Opinion
Panel determined that Petitioner established a reasonable likelihood that the
relied-upon prior art qualified as a printed publication for the purposes of
institution (Paper 29, 20). The Precedential Opinion Panel further granted
Petitioner’s request for rehearing and remanded this matter to the original
panel for consideration of whether to institute a trial on the merits of the
unpatentability ground presented in the Petition (id. at 21).
In light of the Precedential Opinion Panel’s Decision, we determined
that Petitioner established a reasonable likelihood that the relied-upon
reference taught the challenged claims (Paper 31). More specifically, based
on our review of the record, we concluded that Petitioner was reasonably
likely to prevail in demonstrating that at least one of the challenged claims is
not patentable (id.). Thus, we instituted inter partes review of claims 1–3, 7,
10, 11, 14, and 15 on all of the alleged grounds of unpatentability (id.).
Patent Owner then filed a response (Paper 45 (“PO Response”)),
which was followed by Petitioner’s Reply (Paper 47 (“Pet. Reply”)). Patent
Owner then filed a Sur-Reply in response (Paper 56 (“PO Sur-Reply”)).

1 The panel changed on December 28, 2020, due to unavailability of one of
the judges (Paper 37). “We” and “our” in this Decision refer to the panel of
judges that presided at the relevant time.
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Patent 5,806,062
3
An Oral Hearing was held July 1, 2021, a transcript of which has been
entered (Paper 65 (“Tr.”)). We additionally granted supplemental briefing
on Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364 (Fed. Cir. 2021)
(hereinafter, “Valve”) and its impact on the publication status of the asserted
prior art (Papers 62, 63).
Petitioner challenges claims 1–3, 7, 10, 11, 14, and 15 as unpatentable
under 35 U.S.C. § 103 (Pet. 4, 20–52). Generally, Patent Owner contends
that the Petition fails as to all challenged claims (PO Resp. passim).

B. Real Parties in Interest
Patent Owner states that the real parties-in-interest are Sound View
Innovations, LLC and Sound View Innovation Holdings, LLC (Paper 27, 1).
Petitioner states Hulu, LLC, is the real party-in-interest (Pet. 2).
Petitioner further attests that:
The following entities own ten percent or more of the stock of
Petitioner: The Walt Disney Company, 21st Century Fox,
Comcast Corporation and Time Warner Inc. None of the parties
listed above as part-owners of Hulu controlled or funded this
Inter Partes Review proceeding (IPR), nor did they contribute to
the preparation of this IPR in any way
(id.).

C. Related Matters
Both Petitioner and Patent Owner identify the following related
current proceeding as involving the patent-at-issue:
Sound View Innovations, LLC v. Hulu, LLC, No. 2:17-cv-04146
(C.D. Cal.)
(Pet. 2; Paper 27, 1).
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Patent 5,806,062
4
Patent Owner additionally identifies the following related former
proceedings that involve the patent-at-issue:
Sound View Innovations, LLC v. Cigna Corp. et al., No. 1-19-
cv00964 (D. Del.);
Sound View Innovations, LLC v. AMC Networks, Inc., No. 1-19-
cv00145 (D. Del.);
Sound View Innovations, LLC v. Delta Air Lines, Inc., No. 1-19-
cv00659 (D. Del.);
Sound View Innovations, LLC v. HSN, Inc., No. 1-19-cv-00193
(D. Del.);
Sound View Innovations, LLC v. CBS Corp., No. 1-19-cv-00146
(D. Del.);
Sound View Innovations, LLC v. Walmart Inc., No. 1-19-cv-
00660 (D. Del.);
Sound View Innovations, LLC v. The CW Network, LLC, No. 1-
19-cv00147 (D. Del.);
Sound View Innovations, LLC v. Facebook Inc., No. 2:17-cv-
04275 (C.D. Cal.) (terminated Jan. 10, 2018, Dkt. 59);
Sound View Innovations, LLC v. FMR, LLC et al., No. 1-17-cv-
01388 (D. Del.) (dismissed Feb. 17, 2018, Dkt. 17);
Sound View Innovations, LLC v. Twitter, Inc., No. 1-16-cv-
00652 (D. Del.) (dismissed Jan. 16, 2017, Dkt. 21); and
Sound View Innovations, LLC v. LinkedIn Corp., No. 1-16-00497
(D. Del.) (dismissed Jan. 17, 2017, Dkt. 20)
(Paper 52, 1–2).
Petitioner also has requested inter partes review of various other
patents owned by Patent Owner.2

2 IPR2018-00017 (6,125,371), IPR2018-00366 (6,125,371),
IPR2018-00582 (6,502,133 B1), IPR2018-01023 (6,708,213 B1).
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Patent 5,806,062
5
D. The ’062 Patent (Ex. 1001)
The ’062 Patent, titled “DATA ANALYSIS SYSTEM USING
VIRTUAL DATABASES,” issued on September 8, 1998, from an
Application filed October 17, 19953 (Ex. 1001, codes (21), (22), (45), (54)).
The ’062 Patent is directed to “creating data analysis applications using
reusable software operators” (id. at code (57)). As explained in the ’062
Patent, “[w]hen dealing with large or complex documents, it is often
desirable to analyze the structure of the documents” (id. at 1:16–18). To
accomplish this, various operators are used to analyze a repository
comprising a collection of documents along with an associated database that
describes the structure of the documents (id. at 1:23–34). An operator is “[a]
computer program that extracts or converts information from a repository”
(id. at 1:33–34). As described in the ’062 Patent, existing operators were
designed for a single application and there was no convenient mechanism for
combining various operators (id. at 1:44–52). Thus, when a new application
was desired, a new operator had to be designed from scratch (id. at 1:52–53).
The ’062 Patent describes customizable data analysis on virtual
databases using such reusable software operators (id. at 2:1–8). That is, a
virtual database “may be operated on by . . . operators” (id. at 3:37–39). As
described by the Specification, a “virtual database” (VDB) “is a sequence of
characters organized into one or more sections” containing “zero or more
records, with each record made up of one or more fields” (id. at 3:27–30).
Further, the “virtual database . . . has a schema which describes the format of
the entire virtual database” (id. at 3:33–36). Still further, “[v]irtual
databases which may be used in conjunction with the present invention may

3 The ’062 Patent does not claim priority to any prior application.
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be of the type which are described in . . . A Flat File Database Query
Language” (id. at 7:47–50).
The operators, operating on the virtual database, include initial
operators that convert source information into virtual database format, query
operators that perform search queries on the virtual databases, and terminal
operators that convert a virtual database into an external format (id. at 2:2–9;
see id. at 3:45–4:30). For example, a “query operator takes a VDB of a
given schema, performs an operation on the VDB, and outputs another VDB
of the same schema” (id. at 3:53–55). Operators may be combined in
various ways “to create customizable data analysis applications” (id. at 2:8–
19).
E. Illustrative Claims
Of the challenged claims, claims 1, 7, and 14 are independent and
reproduced below.
1. A data processing apparatus comprising:
a plurality of query operators, each of said query operators
configured to receive a first virtual data base having a schema,
for processing data in said virtual database, and for outputting a
second virtual database reflecting said processing and having
said schema; and
means for combining at least two of said query operators to
create an application.
(Ex. 1001, 14:65–15:5).
7. A data processing apparatus comprising:
a first software operator for receiving a first virtual database
having a first schema, for processing data in said first virtual
database, and for outputting a second virtual database having
said first schema; and
a second software operator for receiving said second virtual
database, for processing data in said second virtual database,
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and for outputting a third virtual database having said first
schema.
(Ex. 1001, 15:19–27).
14. A method for processing information comprising the
steps of:
providing a plurality of software operators each configured to
receive a virtual database having a first schema, for processing
information contained in said virtual database, and for
outputting a virtual database having said first schema; and
combining at least two of said software operators to create an
application.
(Ex. 1001, 15:66–16:7). Claims 2 and 3 depend directly from claim 1;
claims 10 and 11 depend directly from claim 7; and claim 15 depends
directly from claim 14.

F. Reference Relied Upon
Petitioner relies upon the following prior art reference:
Reference Exhibit No.
Dale Dougherty, Sed & Awk, (edited by Tim
O’Reilly) O’Reilly & Associates, Inc., November
1990 (hereinafter, “Dougherty”)
1004
(Pet. 3).
Petitioner supports its challenge with a Declaration by Phillip B.
Gibbons, Ph.D. (“Gibbons Decl.”) dated May 8, 2018 (Ex. 1003) and a
Reply Declaration dated April 12, 2021 (Ex. 1014).
Patent Owner supports its response with a Declaration of Dr. Sigurd
Meldal (“Meldal Decl.”) dated February 1, 2021 (Ex. 2007).
The ’062 Patent incorporates by reference (Ex. 1001, 7:47–53) an
article by one of the inventors of the ’062 Patent, Glenn Stephen Fowler:
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Fowler, Glenn, cql ––A Flat File Database Query Language, USENIX
Winter 1994 Conference, San Francisco, 11–21, January 1994 (“Fowler”)
(Ex. 1008).
G. Asserted Ground
Petitioner asserts that claims 1–3, 7, 10, 11, 14, and 15 would have
been unpatentable on the following ground:
Claims Challenged 35 U.S.C. § Reference
1–3, 7, 10, 11, 14, 15 1034 Dougherty
(Pet. 29).
II. ANALYSIS
A. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 718 (Fed. Cir. 1991))).
Petitioner asserts that
[a]t the time the ’062 patent was filed, a person of ordinary skill
in the art (“POSITA”) would have had at least a Bachelor’s
degree in electrical engineering or computer science (or
equivalent degree or experience) with at least two years of
experience in the design and/or development of database and
record management systems. Alternatively, a POSITA may have
had less than two years of practical experience but had more
formal education in computer science, such as a Master’s degree

4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
effective after the effective filing date of the challenged claims. Therefore,
we apply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
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9
(Pet. 4 (citing Ex. 1003 ¶¶ 9–11)).
Patent Owner does not contest Petitioner’s assertion regarding the
level of ordinary skill in the art (see generally PO Resp.).
We regard Petitioner’s formulation of the level of skill as consistent
with the prior art before us (see Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill)).
Based on the record before us and in view of the parties’ agreement at this
stage of the proceeding, we adopt Petitioner’s formulation of the level of
ordinary skill in the art, with the exception of the language “at least,” which
introduces ambiguity.
Thus, we determine, based on the record before us, a person of
ordinary skill in the art would have had a Bachelor’s degree in electrical
engineering, computer science, or equivalent degree or experience, with
(i) two years of experience in the design and/or development of database and
record management systems or (ii) more formal education in computer
science, such as a Master’s degree, without the two years of practical
experience.

B. Claim Construction5
Patent Owner submitted a Motion for District Court-Type Claim
Construction in accordance with 37 C.F.R. § 42.100(b), certifying that the
challenged patent has expired or will expire within 18 months of the entry of

5 The 2018 amendment to 37 C.F.R. § 42.100(b) does not apply here because
the Petition was filed before November 13, 2018 (see Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018)).
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the Notice of Filing Data Accorded to Petition (Paper 7). Patent Owner
certified “[t]he ’062 Patent expired no later than October 17, 2015” (id. at 1).
Thus, the patent expired before the filing date of the Petition, May 8, 20186;
therefore, we interpret claim terms under a district court-type claim
construction. Accordingly, we determined Patent Owner’s Motion was moot
(Paper 30).
For claims of an expired patent, our claim interpretation analysis is
similar to that of a district court (see In re Rambus, Inc., 694 F.3d 42, 46
(Fed. Cir. 2012)). Under district court-type claim construction, claim terms
are given their ordinary and customary meaning, as would be understood by
a person of ordinary skill in the art, at the time of the invention, in light of
the language of the claims, the specification, and the prosecution history of
record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc);
see also In re Rambus Inc., 694 F.3d at 46 (“While claims are generally
given their broadest possible scope during prosecution, the Board’s review
of the claims of an expired patent is similar to that of a district court’s
review.”) (internal citations omitted)).
“[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention” (Phillips, 415 F.3d at 1313).
“Importantly, the person of ordinary skill in the art is deemed to read the
claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent, including the

6 We note the Notice of Filing Date Accorded to Petition states the filing
date accorded is May 8, 2016. We consider this date to have a typographical
error in the year. We thus determine the filing date accorded is May 8,
2018.
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11
specification” (id.). An inventor may provide a definition of the term with
“reasonable clarity, deliberateness, and precision” in the specification (In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a
definition, limitations are not to be read from the specification into the
claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)).
Both Petitioner and Patent Owner propose interpretations for various
terms (Pet. 15–19; PO Resp. 15–38).
We address only those terms necessary for this decision.
Accordingly, on the record before us, we construe the claim terms as
follows.
1. “virtual database”
Petitioner asserts the term “virtual database,” as recited in claim 14,
should be construed to mean “a self-contained sequence of characters
organized into one or more sections, which contains zero or more records
made up of one or more fields containing information” (Pet. 16–17
(emphasis omitted)). Independent claims 1 and 7 also recite a virtual
database (Ex. 1001, 14:65–15:5, 15:19–27).
Patent Owner disagrees with Petitioner’s proposed construction (PO
Resp. 19–38). In our Decision to Institute, we preliminarily construed
“virtual database” as:
a sequence of characters organized into one or more sections
which contains zero or more records made up of one or more
fields containing information, in that if a record is referred to in
a field in the virtual database, then the referred to record is
contained in the virtual database
(Dec. 18). Patent Owner contends the preliminary construction “goes
directly against the specification and prosecution history, which exclude flat
file databases from the claimed ‘virtual database’” (PO Resp. 19).
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According to Patent Owner, “[d]uring prosecution, the applicant made a
clear and unmistakable disclaimer of flat file databases . . . and the
specification unambiguously confirms that the claimed ‘virtual database’
does not include flat file databases” (id. at 20).
a) Claim Construction Standards
The words of a claim are generally given their ordinary and
customary meaning as understood by a person of ordinary skill
in the art when read in the context of the specification and
prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed.Cir.2005) (en banc). There are only two exceptions to
this general rule: 1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the
full scope of a claim term either in the specification or during
prosecution. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1580 (Fed.Cir.1996).
(Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012); see Info-Hold, Inc. v. Applied Media Technologies Corp., 783 F.3d
1262, 1266 (Fed. Cir. 2015)).
To determine the proper meaning of claims, the intrinsic evidence,
i.e., the claims, the written description, and, if in evidence, the prosecution
history, are reviewed (see Vitronics Corp., 90 F.3d at 1582). “Even within
the intrinsic evidence, however, there is a hierarchy of analytical tools”
(Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir.
1998)). The actual words of the claim are the controlling focus (see
Thermalloy, Inc. v. Aavid Engineering, Inc., 121 F.3d 691, 693 (Fed. Cir.
1997)). “The written description is considered, in particular to determine if
the patentee acted as his own lexicographer, as our law permits, and ascribed
a certain meaning to those claim terms. If not, the ordinary meaning, to one
skilled in the art, of the claim language controls” (Digital Biometrics, 149
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F.3d at 1344). “Without an express intent to impart a novel meaning to claim
terms, an inventor’s claim terms take on their ordinary meaning” (York
Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572
(Fed. Cir. 1996)).
b) Own Lexicographer
The ’062 Patent sets out an explicit definition of “virtual database.”
Specifically, the Specification of the ’062 Patent discloses that
[a] virtual database is a sequence of characters organized into one
or more sections. Each section contains zero or more records,
with each record made up of one or more fields containing
information. Each section of the virtual database has an
associated schema which describes the format of the records and
fields. The virtual database itself has a schema which describes
the format of the entire virtual database. The schema of the
virtual database includes the schemas of each of the sections.
A virtual database (VDB), such as initial VDB 106, is self
contained and may be operated on further by other operators. A
VDB is self contained, in that if a record is referred to in a field
in the VDB, then the referred to record is contained in the VDB.
(Ex. 1001, 3:28–42 (emphasis added).) The meaning of “virtual database” is
clearly and deliberately set forth in the ’062 Patent so as to put an ordinarily
skilled artisan on notice as to its intended definition.
Here, we have the applicants acting as their own lexicographer. As
discussed above, we preliminarily construed “virtual database” as:
a sequence of characters organized into one or more sections which
contains zero or more records made up of one or more fields
containing information, in that if a record is referred to in a field in the
virtual database, then the referred to record is contained in the virtual
database.
Patent Owner contends the Board’s preliminary construction should
include that “‘[e]ach section of the virtual database has an associated schema
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which describes the format of the records and fields,’ and that the ‘virtual
database itself has a schema which describes the format of the entire virtual
database,’ and which ‘includes the schemas of each of the sections’” which
was not included in our preliminary construction of “virtual database” (PO
Resp. 31 (citing Ex. 1001, 3:31–36)).
The explicit definition, however, states a section may contain zero
records (Ex. 1001, 3:30–35). Thus, a virtual database having one section
with zero records and therefore, zero fields, would not have an associated
schema as no records exist for which a format can be described (id.).
Therefore, although the definition describes “[e]ach section of the virtual
database has an associated schema which describes the format of the records
and fields,” the associated schema would not exist if the virtual database has
one section with zero records and fields (Ex. 1001, 3:32–35). Nevertheless,
we include the requirement of an associated schema in the claim
construction because such inclusion is not inconsistent with the explicit
definition (id. at 3:30–35). We also note the independent claims specifically
recite that the virtual database has a schema (see id. at 14:65–15:5, 15:19–
27, 15:66–16:7).
On the record before us, in light of the explicit definition in the
Specification, we construe “virtual database” as a sequence of characters
organized into one or more sections which contains zero or more records
made up of one or more fields containing information, having a schema
describing the format of the entire virtual database, and, if a section has
records and fields, an associated schema that describes the format of the
records and fields, and being self contained in that if a record is referred to
in a field in the virtual database, then the referred to record is contained in
the virtual database.
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c) Alleged Flat File Databases Disclaimed
Despite the explicit definition in the Specification, Patent Owner
argues that during prosecution, the applicants “[c]learly [a]nd
[u]nambiguously [d]isavowed [f]lat [f]ile [d]atabases” (PO Resp. 19–24).
According to Patent Owner, the Specification and prosecution history of the
’062 Patent exclude flat file databases from the claimed “virtual database”
(id. at 19–20).
[T]he specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography
governs. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed.Cir.2002). In other cases, the specification may
reveal an intentional disclaimer, or disavowal, of claim scope by
the inventor. In that instance as well, the inventor has dictated
the correct claim scope, and the inventor's intention, as expressed
in the specification, is regarded as dispositive. See SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1343–44 (Fed.Cir.2001).
(Phillips, 415 F.3d at 1316.) The applicants set forth a special definition to
the claim term, “virtual database,” in the Specification of the ’062 Patent
(Ex. 1001, 3:28–42). Thus, the inventor’s lexicography governs.
Nonetheless, we address Patent Owner’s contention that flat file databases
are disclaimed. To that end, we determine the applicants did not set forth
words or expressions of manifest exclusion or restriction. “[I]n order to
disavow claim scope, a patent applicant must clearly and unambiguously
express surrender of subject matter during prosecution” (Arendi S.A.R.L. v.
Google LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018)).
(1) Prosecution History
Patent Owner first points to the prosecution history as supporting its
assertion that “flat file database” is disclaimed from “virtual database” (PO
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Resp. 20 (citing Ex. 1002, 117–119)). The portion of the prosecution history
cited by Patent Owner is the beginning of the Examiner’s detailed action
(Ex. 1002, 117) and thus, does not appear to be a correct cite. We look to
the applicants’ amended claims and arguments in distinguishing over the
prior art reference, Exhibit 1008 (“Fowler”), set forth by the Examiner (Ex.
1002, 131–137). We do not see anything in this argument that rises to the
level of a clear disavowal. Patent Owner points to a statement made in their
arguments –– “[t]he first, virtual database files, Fig. 3, allows multiple
schemas to be defined in a single file. This portion of Fowler is Fowler’s
only discussion of virtual databases” (id. at 136). The applicants, however,
without further argument or explanation, then state “[t]here is no indication
in Fowler that each of a plurality of query operators is ‘configured to receive
a first virtual database having a schema, for processing data in said virtual
database, and for outputting a second virtual database reflecting said
processing and having said schema’” (id.). These contentions do not clearly
disavow the explicit definition set forth in the ’062 Patent. Indeed, the
statement does not make clear that it is a flat file database being
distinguished from Fowler or the processing of a first virtual database with a
schema and outputting a second virtual database reflecting that schema. The
applicants’ amendments to the claims are made to clearly distinguish a first
and a second virtual database and to add that the second virtual database
reflects the processing (id. at 132). None of these amendments clearly
disclaims flat file databases from virtual databases. The applicants’
additional arguments distinguishing Fowler are focused on the “means for
combining” but do not discuss or distinguish flat database files (id. at 136–
137).
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The applicants do not discuss flat file databases in any of their
responses (see Ex. 1002). Nor do the Examiner’s reasons for allowance
indicate any discussion or recognition of any alleged disavowal (Ex. 1002,
148). Thus, the prosecution history does not support Patent Owner’s
assertion of a disclaimer of flat file databases from the explicit definition of
virtual database set forth in the ’062 Patent.
(2) The ’062 Patent Specification
Patent Owner further contends Fowler is incorporated by reference
into the Specification of the ’062 Patent and, specifically with regard to
virtual databases (PO Resp. 25–26). More specifically, Patent Owner
contends, “the claimed ‘virtual database’ cannot include what Fowler and
the specification clearly distinguish from a virtual database” (id. at 28).
Patent Owner asserts,
the incorporated Fowler reference discusses cql, a query
language for flat file databases. Fowler, e.g., 7 (title “cql – A Flat
File Database Query Language”). While much of Fowler
generally discusses the cql tool for use in flat file databases,
Fowler also explains that “alternate database formats” are
supported for cql. Id., 19. Among those “alternate database
formats,” Fowler says, are “virtual database files.” Id., 19. Thus,
Fowler expressly describes “virtual database files” as an
“alternate database format” to flat file databases. Meldal
Declaration, ¶46
(PO Resp. 28.) Thus, according to Patent Owner, “[t]his disclosure,
incorporated in the Patent’s specification, makes clear that ‘virtual’
databases and ‘flat file’ databases are two different things” (id.).
The ’062 Patent discloses:
Virtual databases which may be used in conjunction with
the present invention may be of the type which are described in
Fowler, Glenn, cql––A Flat File Database Query Language,
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USENIX Winter 1994 Conference, San Francisco, pages 11–21,
January 1994, which is incorporated by reference herein. Other
types of virtual databases may also be implemented by one
skilled in the art.
(Ex, 1001, 7:47–53 (first and third emphases added).) Therefore, the ’062
Patent describes a type of virtual database that may be used, but does not
preclude other types of virtual databases and, importantly, does not
distinguish between flat file databases and virtual databases. Nevertheless,
Patent Owner argues that we need to look to Fowler because “Fowler
expressly describes ‘virtual database files’ as an ‘alternate database format’
to flat file databases” (PO Resp. 28).
The Specification points to pages 11–21 of Fowler as being
incorporated by reference (Ex. 1001, 7:47–52). Patent Owner points to
Fowler’s discussion that “‘alternate database formats’ are supported for cql,”
one of which is “virtual database files” (PO Resp. 28). Thus, Patent Owner
is asserting that because Fowler is part of the Specification, we should adopt
Fowler’s alleged distinction between flat file databases and virtual databases
(id.). Fowler, on page 19, discusses alternate database formats which
include virtual database files (Ex. 1008, 19).
The ’062 Patent, however, sets forth an explicit definition (Ex. 1001,
3:28–42). In spite of this, Patent Owner appears to contend an ordinarily
skilled artisan would not adopt this definition, but instead, define “virtual
database” by looking at Fowler (PO Resp. 28). We do not see that the ’062
Patent limits its definition to Fowler’s description as Patent Owner would
have us do (Ex. 1001, 3:28–42). Rather, the ’062 Patent states “[v]irtual
databases which may be used in conjunction with the present invention may
be of the type which are described in” Fowler and “[o]ther types of virtual
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databases may also be implemented by one skilled in the art” (Ex. 1001,
7:47–53). These statements that virtual databases are not limited to those in
Fowler and the explicit definition support that the ’062 Patent does not limit
virtual databases to those described in Fowler. Thus, we are not persuaded
the applicants limited the claimed virtual databases to those described in
Fowler.
d) Conclusion
The applicants have an express intent to impart a specific meaning to
a claim term. Thus, we do not impart the “plain and ordinary meaning.”
Indeed, the applicants chose to be their own lexicographer by setting forth an
explicit definition (Ex. 1001, 3:28–42). “The public has a right to rely on
such definitive statements made during prosecution. Notice is an important
function of the patent prosecution process” (Digital Biometrics, 149 F.3d at
1347). “The specification acts as a dictionary when it expressly defines
terms used in the claims or when it defines terms by implication” (Vitronics
Corp. 90 F.3d at1582 (citing Markman v. Westview Instruments, Inc. 52
F.3d, 967, 979 (Fed. Cir. 1995)).
Accordingly, as stated above, we construe “virtual database” in light
of the explicit definition, as a sequence of characters organized into one or
more sections which contains zero or more records made up of one or more
fields containing information, having a schema describing the format of the
entire virtual database, and, if a section has records and fields, an associated
schema that describes the format of the records and fields, and being self
contained in that if a record is referred to in a field in the virtual database,
then the referred to record is contained in the virtual database.
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2. “schema,” “schema of a virtual database,” and “associated schema of
a section”
Petitioner asserts the term “schema,” as recited in claim 14, should be
construed to mean “format of the entire virtual database that includes format
of the records and fields of each section of the virtual database” (Pet. 18
(emphasis omitted)).
Patent Owner contends the claims should be construed to match the
District Court’s “[u]ndisputed [c]onstructions” (PO Resp. 36 (emphasis
omitted)). Patent Owner, however, indicates in its Response that “the
District Court’s construction did not need to, and therefore did not, address
all issues related to the ‘schema,’ such as whether the virtual database
requires an assigned schema” (id. at 37, n.6). Indeed, when questioned in
the Oral Hearing, Patent Owner indicated “the district court did not have that
part of the construction because it did not need it at that time” (Tr. 62:19–
25).
In our Institution Decision, we preliminarily construed “schema” as
“the format” and “schema of a virtual database” as “the format of the entire
virtual database including the format of any records and fields of the section
of the virtual database” (Paper 31, 19). Patent Owner contends “schema of a
virtual database” should be construed to “include the ‘format of the entire
virtual database, which includes the formats of each section of the virtual
database’” (PO Resp. 38 (citing Ex. 2007 ¶ 62)).
The ’062 Patent discloses “[e]ach section of the virtual database has
an associated schema which describes the format of the records and fields”
and “[t]he schema of the virtual database includes the schemas of each of the
sections” (Ex. 1001, 3:32–34, 36–37). As previously noted, however, a
virtual database may be one section with zero records and, therefore, may
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not have an associated schema of the section (Ex. 1001, 3:28–32). In
particular, a schema of a virtual database may not include the recited
“associated schema” of the section. Nevertheless, because it is not
inconsistent with the explicit definition, on this record, we construe “schema
of a virtual database” as “the format of the entire virtual database including
the format(s) of the section(s).” We note, however, the schema of the
section may not be present if there are zero records and fields.
Although not recited in any of the challenged claims, because
“associated schema of a section” is in the definition of “virtual database” set
forth in the Specification of the ’062 Patent, we further interpret “associated
schema of a section” as “the format of the records and fields.”
In light of the record before us, we construe “schema” as “format”;
“schema of a virtual database” as “the format of the entire virtual database
including the format(s) of the section(s)”; and “associated schema” as “the
format of the records and fields of a section, if the section has any records.”

C. Public Availability of Dougherty
In the grounds proffered by Petitioner, Petitioner relies on Dougherty,
Exhibit 1004, which has a copyright date of 1990. Petitioner additionally
submits Exhibit 1005, pages from a different version of Dougherty, showing
a date-stamp from Cornell University Library, which has a copyright date of
1991 (hereinafter, “the Cornell Dougherty”). Petitioner further provides an
affidavit from an Administrative Supervisor in the Original Cataloging Unit
of Cornell University Library, Ms. Stansbury, (Exhibit 1006), to support the
“public availability” of the Cornell Dougherty.
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1. Legal Standards
Petitioner has the burden to prove Dougherty qualifies as prior art
under 35 U.S.C. §§ 102 (a) and 102 (b) (see In re Magnum Oil Tools Int’l,
Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016)).
The standard of proof to institute a trial is “that there is a reasonable
likelihood that the petitioner would prevail” (35 U.S.C. § 314(a)) while the
standard of proof for a final decision is whether the Petitioner has met “the
burden of proving a proposition of unpatentability by a preponderance of the
evidence” (35 U.S.C. § 316(e)).
2. Evidence Submitted with Petition
a) Dougherty (Ex. 1004)
Petitioner relied on Dougherty, a textbook titled “sed & awk”
authored by Dale Dougherty, to support its assertion of unpatentability (see
Pet. 20–52; Ex. 1004). Dougherty has a copyright date of 1990 by O’Reilly
& Associates, Inc. (id. at iv). Dougherty lists its printing history:

Dougherty additionally indicates its ISBN number and “impression” date:

(id.).
b) Cornell Version of Dougherty and Affidavit of Pamela Stansbury
Cornell Dougherty is also a textbook titled “sed & awk” authored by
Dale Dougherty (Ex. 1005). Cornell Dougherty has a copyright date of 1991
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by O’Reilly & Associates, Inc. (id.). Cornell Dougherty lists its printing
history:

(id.). Cornell Dougherty also lists its ISBN number and “impression” date:

Petitioner provides only the beginning pages of Cornell Dougherty,
but does not provide the body of the textbook which, importantly, includes
the alleged corresponding portions of Dougherty (id.). Petitioner provides
an Affidavit of Pamela Stansbury to support the public availability of
Cornell Dougherty (Ex. 1006).
As noted in the POP Decision, Petitioner no longer relies on the
Affidavit of Ms. Stansbury, accompanying Cornell Dougherty (Paper 17, 3
n. 1; Paper 29, 20). In particular, Petitioner states Ms. Stansbury’s Affidavit
“is unnecessary to resolve the question presented[; thus, Petitioner] does not
rely on it” (Paper 17, 3 n. 1). The POP Decision, however, pointed to Ms.
Stansbury’s Affidavit as being “probative that Dougherty is the type of book
that a university library would have collected and catalogued” (Paper 29,
20).
We do not rely on Cornell Dougherty or Ms. Stansburty’s Affidavit in
determining whether Dougherty qualifies as prior art because Petitioner no
longer relies on the Affidavit of Ms. Stansbury. Further, this evidence is
unnecessary for our findings herein.

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3. Additional Evidence Submitted with Petitioner’s Reply
Patent Owner contends Petitioner may not submit any further
evidence on this subject beyond the evidence submitted with the Petition
(PO Resp. 13–15). More specifically, Patent Owner asserts, “Petitioner has
not sought to . . . supplement the record” (id. at 14). According to Patent
Owner, “[a]fter the Petition in this case was filed, Patent Owner raised the
issue of public availability in the [Patent Owner Preliminary Response]”
(id.). Patent Owner further asserts that the POP Decision made a
“reasonable-probability finding [that] pointed expressly to Petitioner’s right
‘to move to submit supplemental information . . . within one month of
institution’” (id. at 14–15 (citing Paper 29, 8)). However, Patent Owner
contends, “no supplemental information was offered” (id. at 15). Thus,
Patent Owner asserts “[g]iven that the central focus of the POP rehearing
was the question of Dougherty’s public availability, now that Patent
Owner’s window to timely submit rebuttal evidence has closed[,] it is too
late for Petitioner to seek to submit any further evidence on this subject” (id.
at 15 (citing Paper 29, 8; Unified Patents Inc. v. Plectrum LLC, IPR2017-
01430, Paper 17, 6 & n.2 (PTAB June 6, 2018))).
In its Reply, Petitioner asserts the POP Decision “invited” Petitioner
to submit additional evidence to “properly respond to [Patent Owner’s]
challenges” (Pet. Reply 3 (citing Paper 29, 7–8)). Petitioner asserts it is “not
prohibited from relying on new evidence and arguments in a reply, if the
evidence and arguments are responsive to arguments made in a patent owner
response” (id. (citing Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-00973,
Paper 11, 16 (Nov. 13, 2020))).
Patent Owner, however, argues the POP Decision said “after
institution, the petitioner ‘may not submit new evidence or argument in reply
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that it could have presented earlier,’” such as by “mov[ing] to submit
supplemental information…within one month of institution” or with a
“show[ing] ‘why [it] reasonably could not have been obtained earlier,’” and
“cannot raise new issues in reply” (PO Sur-Reply 1 (quoting Paper 29, 7–8
(quoting 37 C.F.R. § 42.123; citing Consolidated Trial Practice Guide
(“CTPG”)7, 73–74))). Thus, Patent Owner asserts, as held by the POP
Decision, “after institution, the petitioner ‘may not submit new evidence or
argument in reply that it could have presented earlier’” (id. (quoting Paper
29, 7 (quoting CTPG at 73)).
As noted in the POP Decision, Petitioner may file a reply and,
although Petitioner “‘may not submit new evidence or argument in reply that
it could have presented earlier, e.g., to make out a prima facie case of
unpatentability[,]’ . . . [t]he exception to this general rule precluding the
submission of new evidence is that the parties can respond to arguments
raised in a prior brief and ‘[a] party also may submit rebuttal evidence in
support of its reply’” (Paper 29, 7 (citing CTPG, 73–74)). The POP Decision
further determined “[a]fter institution, there is also an opportunity for the
petitioner to move to submit supplemental information under 37 C.F.R.
§ 42.123” (id. at 8). However, “[u]nless this motion is filed within one
month of institution, the petitioner must show ‘why the supplemental
information reasonably could not have been obtained earlier’” (id. (citing
37 C.F.R. § 42.123(b) and (c))).
We agree with Patent Owner that Petitioner had the opportunity to
submit supplemental evidence after the Preliminary Response was filed but
did not request to supplement the record (see PO Resp. 13–15). Patent

7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Owner contends it asserted Dougherty was not prior art in the Preliminary
Response (Prelim. Resp. 4–23), the briefing for the POP (Papers 17, 25) and
the Patent Owner Response (PO Resp. 3–15). Patent Owner argues,
however, Petitioner did not contact the Board to request to submit
supplemental evidence after the Preliminary Response, after the POP
Decision which specifically addressed this issue (see Paper 29), or after
Patent Owner’s Response. Nonetheless, as discussed above, Petitioner is
permitted to file additional evidence in response to Patent Owner’s
arguments (Paper 29, 14; see also Paper 29, 7–8 (“The exception to this
general rule precluding the submission of new evidence is that the parties
can respond to arguments raised in a prior brief and “[a] party also may
submit rebuttal evidence in support of its reply” (citing CTPG, 73–74;
Belden Inc., 805 F.3d at 1077–78))).
Thus, in light of the POP Decision, we determine evidence submitted
with Petitioner’s Reply that is rebuttal evidence in support of its Reply, is
permitted to be submitted (see Paper 29, 7). Here, Patent Owner argued in
its Response that Dougherty does not qualify as prior art (PO Resp. 3–15).
Accordingly, evidence that Petitioner asserts supports its assertion that
Dougherty qualifies as prior art is permitted to be submitted (see Paper 29,
7).
Petitioner submits the following evidence as support.
a) Johns Hopkins Dougherty (Ex. 1010)
Petitioner provides the front pages and table of contents from a book
entitled “sed & awk” authored by Dale Dougherty (Ex. 1010 (hereinafter,
“Johns Hopkins Dougherty”)). The front pages disclose that Johns Hopkins
Dougherty has a copyright date of 1990 by O’Reilly & Associates, Inc. (id.
at iv). Johns Hopkins Dougherty lists its printing history:
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(id.). Johns Hopkins also lists its ISBN number and “impression” date:

(id.). The remaining pages of the excerpt provided are the Table of
Contents, List of Figures, and List of Tables (id. at v–xiii).
b) University of Michigan Dougherty (Exhibit 1011)
Petitioner provides excerpts from a book entitled “sed & awk”
authored by Dale Dougherty housed at the University of Michigan (Ex. 1011
(hereinafter, “Michigan Dougherty”)). Michigan Dougherty has a copyright
date of 1990 by O’Reilly & Associates, Inc. (id. at iv). Michigan Dougherty
lists its printing history:

(id.). Michigan Dougherty also lists its ISBN number and “impression”
date:

(id.). The remaining pages of the excerpt provided in the Exhibit, include
the Table of Contents, List of Figures, and List of Tables (id. at v–xiii) as
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well as excerpts from the body of the book that, according to Petitioner, are
“relevant” (Pet. Reply 8).
c) Declarations of Dr. Hall-Ellis (Exs. 1012, 1013)
Petitioner submits two Declarations of Dr. Hall-Ellis to support its
assertion that Johns Hopkins Dougherty and Michigan Dougherty are the
same textbook as Dougherty and were publicly available as required under
35 U.S.C. § 103 (see Exs. 1012, 1013).
d) Special Libraries (Ex. 1015)
Petitioner relies on a book review by Hope N. Tillman of “The Whole
Internet Users Guide and Catalog” authored by Ed Krol and published by
O’Reilly and Associates, that was included in the publication, Special
Libraries (Tillman, Hope N., Book Review, Special Libraries, Winter 1993
(1993) (found at https://scholarworks.sjsu.edu/slasl1993/1)) to support its
assertion that “Dougherty’s publisher, O’Reilly and Associates (now
O’Reilly Media) is a well-known publisher of technical textbooks and has
been since the 1990s” (Pet. Reply 4).
e) College Syllabi (Exs. 1016–1018)
Petitioner further relies on several college syllabi as evidence of
O’Reilly & Associates being a “well-known publisher of technical
textbooks” (Pet. Reply 4). Exhibit 1016 is a copy of course information for
a Fall 2015 Bioinformatics class in the Computer Science Department at San
José University. According to Petitioner, “[d]uring Dr. Meldal’s tenure at
[San José State University], his colleagues recommended reading from
O’Reilly textbooks to students in published course syllabi” (id. at 4–5 (citing
Ex. 1016, 2–3)).
Also submitted, are two course syllabi from Carnegie Mellon
University (CMU) (Exs. 1017, 1018). Exhibit 1017 is a copy of “Course
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Policies and Syllabus” from a Fall 2003 Statistical Computing class at CMU.
Dougherty is not listed as any of the resources. Exhibit 1018 is a copy of
information for Software Architecture for User Interfaces for a Spring 2001
course at CMU.

4. Propriety of Petitioner’s Reply Evidence
Patent Owner asserts, “Petitioner failed to show by a preponderance
of the evidence that its only reference, Dougherty, was publicly available as
a printed publication by the October 17, 1995 filing date of the ’062 Patent”
(PO Resp. 3). Patent Owner contends Petitioner has not made its case in the
Petition and the POP’s “reasonable likelihood determination was based on
evidence and arguments not identified by the Petition . . . and not in the
evidentiary record” (id. at 4–5; PO Sur-Reply 4). More specifically, Patent
Owner contends, the POP Decision based its decision on “statements not
found in the Petition” and “allegations never subsequently substantiated in
the record on which this instituted trial will be decided” (PO Resp. 5).
Patent Owner further contends the POP determined that Dougherty is
“a textbook from an established publisher, O’Reilly, and a well-known book
series”; however, Patent Owner asserts, Petitioner did not identify in its
Petition or its exhibits any mention or proof that Dougherty is “from an
established publisher” or part of a “well-known book series” (id. at 5–6
(footnote omitted)). Rather, Patent Owner contends, the POP Decision
relied on a brief and evidence submitted by a third party (Paper 29, 19
(citing Paper 20, 11–12)). Patent Owner additionally contends the copyright
dates of Dougherty and Cornell Dougherty cited by the POP Decision, were
not “cited, let alone identified, in the Petition” (PO Resp. 6 (citing Pet. 3)).
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In its Reply, Petitioner argues Dougherty has a 1990 copyright date
with “Minor corrections” printing date of November 1992 and an impression
date of August 1994 (Pet. Reply 1). Petitioner also asserts, “Dougherty is a
textbook from an established publisher, O’Reilly, and from a well-known
book series” (Pet. Reply 2 (citing Paper 24, 10; Paper 20, 11 (citing
http://www.oreilly.com/about/history.html))). Petitioner argues the POP
Decision found that Dougherty is a textbook from an established publisher
and a well-known book series and credited Dr. Stansbury’s Affidavit (Ex.
1006) as “probabtive that Dougherty is the type of book that a university
library would have collected and cataloged” (Pet. Reply 1–2 (citing Paper
24, 10; Paper 29, 19–20)). Petitioner contends the POP Decision therefore
determined Petitioner had “establish[ed] a reasonable likelihood that
Dougherty is a printed publication that a publisher made available to the
pertinent public prior to the October 1995 critical date” (id. at 2 (citing Paper
29, 19–20). Thus, according to Petitioner, “[t]here is no reason to disturb the
POP[ Decision] now: this same evidence is also sufficient to show
Dougherty’s public availability for the purposes of Final Written Decision”
(id. at 1–2 (citing Ex. 1004, 4; Paper 24, 10; Paper 29, 19–20)).
Patent Owner argues, even in light of the POP’s permitting new
evidence to be submitted, Petitioner may not “raise a new public availability
theory in the Reply based on new evidence it ‘could have presented earlier’”
(PO Sur-Reply 2 (citing Paper 29, 7)). Patent Owner asserts that Petitioner’s
Reply
substitutes a new theory, based on new facts (a printed
“copyright date of 1990, a ‘Minor correction’ printing date of
November 1992, and an impression date of “8/94”); two new
versions of Dougherty allegedly from Johns Hopkins University
(Ex. 1010 . . . ), and the University of Michigan (Ex. 1011 . . . );
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two new declarations from new witness Dr. Hall-Ellis (Exs.
1012-1013), and four more new exhibits allegedly showing for
the first time that Dougherty had a “well-known publisher”
(PO Sur-Reply 2 (citing Pet. Reply 1–9)). Patent Owner therefore argues
Petitioner has submitted new evidence or argument in reply that it could
have presented earlier and that raises new issue in the reply (id. at 3 (citing
Paper 29, 7)).
Initially, we note the standards are different in instituting an inter
partes review and in assessing proffered grounds for a final written decision
(see 35 U.S.C. §§ 314(a), 316(e)). Thus, we consider the evidence in light
of the standard for a final written decision.
Petitioner contends it “properly responds” to Patent Owner’s
challenges –– “Petitioners are not prohibited from relying on new evidence
and arguments in a reply, if the evidence and arguments are responsive to
arguments made in a patent owner response” (Pet. Reply 3; see generally
POP).
We determine, based on the record before us and the POP Decision,
Petitioner’s newly proffered evidence and arguments, as set forth above in
Section II C 4., do not introduce a new theory of public availability (see
Paper 29). Petitioner’s theory remains that Dougherty qualifies as prior art
(see Pet. Reply). Accordingly, evidence that supports Petitioner’s assertion
that Dougherty qualifies as prior art is permitted (see Paper 29, 7). More
specifically, the POP Decision set forth that
some limited opportunities exist for the petitioner to present new
evidence later, including: (1) in a reply to a patent owner
preliminary response; (2) in a reply to the patent owner response;
and (3) in a motion to file supplemental information. 37 C.F.R.
§§ 42.108(c), 42.23, 42.123. As to the first two opportunities,
the evidence must be responsive to the prior briefing. 37 C.F.R.
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§ 42.23 (“A reply may only respond to arguments raised in the
corresponding opposition, patent owner preliminary response, or
patent owner response.”). As to the third, the supplemental
information must be relevant to a claim for which trial was
instituted and, if the submission occurs after one month from
institution, the petitioner must show good cause as to “why the
supplemental information reasonably could not have been
obtained earlier, and that consideration of the supplemental
information would be in the interests-of-justice.” 37 C.F.R.
§ 42.123
(Paper 29, 14; see also Paper 29, 7–8 (“The exception to this general rule
precluding the submission of new evidence is that the parties can respond to
arguments raised in a prior brief and ‘[a] party also may submit rebuttal
evidence in support of its reply’” (citing CTPG, 73–74; Belden Inc. v. Berk-
Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)))). The POP Decision
further indicated that “Patent Owner may challenge Petitioner’s evidence,”
here, the Dougherty reference, and “Petitioner may respond if appropriate, as
indicated herein” (id. at 21).
Patent Owner challenged Petitioner’s evidence –– Dougherty –– as
not qualifying as prior art under 35 U.S.C. §§ 102, 311(b) for failure to
establish Dougherty was publicly available at the time of the invention, in
the Preliminary Response (Prelim. Resp. 4–23), the briefing for the POP
(Papers 17; 25), and the Patent Owner Response (PO Resp. 3–15).
Petitioner submitted evidence supporting Dougherty as prior art with the
Petitioner Reply (see Pet. Reply). Thus, in light of the POP Decision, we
determine the new evidence submitted –– two new printings of Dougherty
(Johns Hopkins Dougherty (Ex. 1010) and Michigan Dougherty (Ex. 1011);
two new declarations from a new witness, Dr. Hall-Ellis (Exs. 1012–1013);
and four more new exhibits allegedly showing Dougherty had a “well-
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known publisher” –– is permitted under 37 C.F.R. §§ 42.108(c), 42.23,
42.123 and the Consolidated Trial Practice Guide.
Thus, we consider the two new printings of Dougherty, Johns Hopkins
Dougherty (Ex. 1010) and Michigan Dougherty (Ex. 1011); the two new
declarations from a new witness, Dr. Hall-Ellis (Exs. 1012–1013); and the
four more new exhibits allegedly showing Dougherty had a “well-known
publisher,” as they properly respond to arguments raised in the Preliminary
Response and Patent Owner Response.

5. Alleged Failure to Show Dougherty was Publicly Available
Patent Owner contends the Petition’s entire argument on Dougherty’s
public availability is
Dougherty, Sed & Awk (edited by Tim O’Reilly), O’Reilly &
Associates, Inc. (November, 1990) (“Dougherty”, Ex. 1004),
which is prior art under pre-AIA 35 U.S.C. § 102(a) and (b) (see
also, Ex. 1005 and Ex. 1006 confirming public availability as of
September 16, 1992, and at least before October 17, 1995.)
(PO Resp. 7 (quoting Pet. 3)). First, Patent Owner asserts “[t]he Petition
does not explain the significance of ‘November, 1990,’” or its origin (PO
Resp. 7). By looking at Dougherty’s title page, we determine Petitioner is
citing to the printing date of the “First Edition” of November 1990; the
copyright date only lists the year, 1990 (Ex. 1004).
Patent Owner further asserts, “Petitioner has submitted no evidence
showing that the asserted version of Dougherty is materially the same as any
earlier versions” (PO Resp. 8). Patent Owner contends the table of contents
“reflects numerous changes between the printings, including additional
headings in chapters starting at the beginning of the book” (id.).
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As to the evidence submitted with Petitioner’s Reply Brief, Patent
Owner asserts the new evidence does not support that Dougherty is prior art
(PO Sur-Reply 4–7).
a) Dougherty
(1) Printing and Impression Date
Patent Owner contends Petitioner has not explained how the
“‘printing date of November 1992’ . . . demonstrates Dougherty’s public
availability . . . (or even [that it was] printed) as of November 1992 or
shortly thereafter” because the impression date is “8/94”– “almost two years
after the alleged ‘printing date of November 1992’” (PO Resp. 10).
Patent Owner contests the POP Decision’s finding that the number
“appear[ing] on the same line as (albeit well away from) Dougherty’s
International Standard Book Number (‘ISBN’) . . . indicates ‘8/94’ is a
so-called ‘ISBN date’ or even materially connected to Dougherty’s ISBN”
(PO Resp. 10–11). Patent Owner contends that “[a]t most, ‘8/94’ shows that
this reference was not printed before August 1994” and, thus, “does not
prove Dougherty was publicly available by the patent’s priority date” (id. at
11).
Dr. Hall-Ellis states the date and year after the ISBN number
represents the date “the publisher printed this copy of the book” (Ex. 1013
¶ 42; Pet. Reply 1, n. 1). Dr. Hall-Ellis testifies the various printings of
Dougherty are “the same work because they contain[] the same ISBN.
Therefore[,] they are the same–– the same work, which in lay parlance is the
same book” (Ex. 2012, 43:9–18).
We are persuaded, based on the record, that the copyright date
indicates the date the work was created while the impression date indicates
when the copy was physically printed. We credit Dr. Hall-Ellis’s undisputed
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testimony that the “impression” or “imprint” date –– the date following the
ISBN number –– “corresponds to the month and year . . . that the publisher
printed this copy of the book” (Ex. 1012 ¶ 42; Ex. 1013 ¶ 42). Dr. Hall-Ellis
continues that
publishers routinely print additional copies of the book to satisfy
[new consumer] demand. Those additional copies will be printed
form the same source . . . and have the same contents as prior
printings of the same version . . . the impression date will vary to
reflect the month and year of the particular additional printing
(Ex. 1012 ¶ 42; Ex. 1013 ¶ 42).
(2) “Established Publisher” and “Well-Known Book Series”
Patent Owner again contests the POP Decision’s finding that O’Reilly
was an “established publisher” and part of a “well-known book series” (PO
Resp. 11 (citing Paper 29, 19)). Patent Owner contends Petitioner has not
proffered evidence that O’Reilly was either an established publisher or part
of a well-known book series at the patent’s filing date (id.). Patent Owner
further contends that even if O’Reilly is “the most established and well
regarded publisher in the Nation,” this would not be probative as to “its
publishing procedures or when a specific book was printed and made
publicly available” (id. at 12).
Petitioner, however, contends “[t]here can be no question that
O’Reilly’s textbooks, generally, are well-known and publicly available to
those in the field” (Pet. Reply 6).
In its Sur-Reply, Patent Owner contends that Petitioner’s submitted
evidence does not support that O’Reilly & Associates was a well-known
publisher as of the priority date (PO Sur-Reply 4).
We agree that none of the course syllabi submitted supports that
contention as all are from well after the priority date of the ’062 Patent (Ex.
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1016 from 2015, Exhibit 1017 from 2003, and Exhibit 1018 from 2001).
Nonetheless, Petitioner asserts, “colleagues at Carnegie Mellon University[]
(CMU) have been recommending O’Reilly books to students for decades”
(Pet. Reply 5). The priority date of the ’062 Patent is October 17, 1995 (Ex.
1001). Thus, the course syllabi proffered by Petitioner do little to illuminate
O’Reilly & Associates’ status in October, 1995 as these syllabi are from
2001, 2003, and 2015 (see Exs. 1016–1018).
The book review from Special Libraries is from 1993 and thus,
predates the ’062 Patent’s priority date (Ex. 1015). In the book review of an
O’Reilly & Associates book, “The Whole Internet Users Guide & Catalog,”
the reviewer writes “[t]he publisher, O’Reilly and Associates, is noted for
high-caliber technical publications on UNIX and networking” (Ex. 1015, 66;
Tillman, Hope N., The Whole Internet Users Guide & Catalog, Special
Libraries, Winter 1993, 66 (1993)). Patent Owner argues that this is a
statement about “the publisher’s publications on UNIX (not sed or awk)”
and “does not preponderantly show the publisher was ‘well-known’ for
publishing on relevant subjects at the relevant time” (PO Sur-Reply 4). But
Dougherty states that it is a “book . . . about a set of uncommonly named
UNIX utilities, sed and awk.” Thus, we disagree with Patent Owner’s
implication that Dougherty is not about UNIX. Rather, we find this
evidence persuasive of O’Reilly & Associates’ status as a well-known
publisher as of the ’062 Patent’s priority date.
Patent Owner argues the evidence relied upon by the POP is “a link to
O’Reilly’s own website – not an exhibit – asserting O’Reilly’s importance”
(PO Resp. 11 (citing Paper 29, 19; Paper 20, 11–12; quoting
“https://www.oreilly.com/about/history.html”)). Patent Owner’s argument is
moot because, based on the article in Special Libraries, we are persuaded
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O’Reilly and Associates was a well-known publisher as of the ’062 Patent’s
priority date (Ex. 1015). In particular, the statement that O’Reilly and
Associates is noted for high-caliber technical publications in the networking
and UNIX fields is persuasive that O’Reilly and Associates would have been
a well-known publisher to an ordinarily skilled artisan at the time of the
invention.
“A reference will be considered publicly accessible if it was
disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art exercising
reasonable diligence[] can locate it” (Vidstream LLC v. Twitter, Inc., 981
F.3d 1060, 1065 (Fed. Cir. 2020)). “When there is an established publisher
there is a presumption of public accessibility as of the publication date” (id.
at 1065 (citing Giora George Angres, Ltd. v. Tinny Beauty & Figure, Inc.,
116 F.3d 1497, No. 96-1507, 1997 WL 355479 at *7 (Fed. Cir. 1997) (“[A]s
Memoirs was published (in England) by an established publisher, there is no
reason to suspect that it was not publicly available, including to one skilled
in the art, and no evidence was presented that it was not”))).
Here, the publisher of Dougherty was an established publisher as of
the ’062 Patent’s priority date and thus, there is no reason on this record to
suspect Dougherty was not publicly available.
b) Michigan Dougherty
Petitioner contends, “the Michigan copy of Dougherty is the same
version as [Dougherty], it will have the same contents despite coming off the
printing press in a different month” (Pet. Reply 8). Petitioner further asserts,
“Dr. Gibbons has compared the relevant pages of the Michigan copy of
Dougherty to the pages he cited and relied upon from Dougherty in his
initial Declaration. . . . Dr. Gibbons found that all of the relied upon content
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was exactly the same between the [Exhibit] 1004 copy of Dougherty and the
Michigan copy” (Pet. Reply 8; Ex. 1014 ¶ 6).
The copyright dates and printing history of Dougherty and Michigan
Dougherty are the same, as are the ISBN numbers (compare Ex. 1011, iv
with Ex. 1004, iv). More specifically, the front pages of Michigan
Dougherty set forth a copyright date of 1990 by O’Reilly & Associates, Inc.
(Ex. 1011, iv), the same as Dougherty (Ex. 1004, iv). Michigan Dougherty
lists its printing history:

(Ex. 1011, iv) which is the same as Dougherty’s printing history (Ex. 1004,
iv). Michigan Dougherty also lists its ISBN number as 0-937175-59-5 (Ex.
1011, iv) which is the same as Dougherty’s ISBN number (Ex. 1004, iv).
Michigan Dougherty has an “impression” date of 3/94 (Ex. 1011, iv) –
several months before Dougherty’s impression date of 8/94 (Ex. 1004, iv).
Thus, this book was physically printed before Dougherty was physically
printed.
Petitioner relies on Dr. Hall-Ellis who testifies
any copy of the book issued by O’Reilly & Associated with a
1990 copyright date and showing minor corrections in March
1991, July 1992, and November 1992, would have been printed
from the same source and contain the same contents, regardless
of the particular impression date found in the verso.
(Ex. 1013 ¶ 43). Dr. Hall-Ellis states the Dougherty and Michigan
Dougherty “versions and contents therein are the same” (id. ¶ 45).
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Dr. Hall-Ellis further states review of Michigan Dougherty from the
Frances Willson Thompson Library, was of scanned copies of the selected
pages, not the entire book (Ex. 1013 ¶ 44). Dr. Hall-Ellis declares Michigan
Dougherty was “issued by O’Reilly & Associate[s] with a 1990 copyright
date and minor correction in March 1991, July 1992, and November 1992”
(id. ¶ 45). Additionally, Dr. Hall-Ellis declares “the verso of [Michigan
Dougherty’s] title page also indicates that the volume was printed in March
1994, as shown by the impression date designation” (id. ¶ 45). Thus, Dr.
Hall-Ellis determines “because the copy of Dougherty of Exhibit 1004 was
issued by O’Reilly & Associate[s] with a 1990 copyright date and minor
corrections in March 1991, July 1993, I can conclude that [Michigan
Dougherty of Exhibit] 1011 is the same version of Dougherty as that of the
Ex[hibit] 1004 copy of Dougherty” (id.). Therefore, Dr. Hall-Ellis
determines, “despite the differing impression dates, the versions and
contents therein are the same” (id.).
Dr. Gibbon additionally states, “I have reviewed the technical content
of both copies of Dougherty and determined that the only difference between
the copies is the addition of ‘We’d Like to Hear From You’ on the preface
page of Ex[hibit] 1004. The technical content of both Ex[hibit] 1004 and
Ex[hibit] 1011 is otherwise identical” (Ex. 1014 ¶ 6). Patent Owner argues
this admission, of the addition of “We’d Like to Hear From You” as a
preface page, is an admission that Dougherty and Michigan Dougherty have
different content (PO Sur-Reply 6). We do not consider the addition of a
preface page to be sufficient to indicate differences in the technical content.
Patent Owner further argues, “Petitioner filed some pages of
Michigan-Dougherty, [but] inexplicably omitted other pages” (PO Sur-
Reply 6). In particular, Patent Owner asserts, Petitioner failed to provide
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corresponding pages of Michigan Dougherty for the pages of Dougherty that
are cited by Petitioner in the Petition and Petitioner’s Reply (PO Sur-Reply 6
(citing Pet. 33 (citing Ex. 1004, 58); Pet. Reply 11 (citing Ex. 1004, 41), 27
(citing Ex. 1004, xvi, xvii), 29 (citing Ex. 1004, 189–192))).
Petitioner asserted “Dr. Gibbons has compared the relevant pages of
the Michigan copy of Dougherty to the pages he cited and relied upon from
Dougherty in his initial Declaration [and] found that all of the relied upon
content was exactly the same between [Dougherty] and the Michigan
[Dougherty]” (Pet. Reply 8; Ex. 1014 ¶ 6).
We do note that not all the pages cited in Petitioner’s Briefs were
provided (PO Sur-Reply 6). Indeed, we do not have the full Michigan
Dougherty text or the disputed pages of Michigan Dougherty (see Ex. 1011).
Nor do we have a statement from Dr. Gibbons that the additional pages cited
in Petitioner’s Reply are “exactly the same.” However, the court in Valve
found that although some of the images were missing in certain copies of the
articles, “it does not amount to ‘affirmative evidence challenging . . .
material facts’” (Valve Corp., 8 F.4th at 1372 (quoting Suffolk Techs., LLC v.
AOL Inc., 752 F.3d 1358, 1365–66 (Fed. Cir. 2014))). Thus, we determine
the missing pages do not amount to affirmative evidence challenging
material facts. Patent Owner has not alleged the missing pages are required
as support for Petitioner’s assertions.
Dr. Ellis-Hall testifies that the books are identical (Ex. 1013 ¶¶ 44–51)
and Dr. Gibbons also testifies that the scanned pages of Michigan Dougherty
have the same technical content as the pages of Dougherty (Ex. 1014 ¶ 6).
We are persuaded the relevant contents of Michigan Dougherty and
Dougherty have the same contents based on our review of the scanned pages
and Dougherty’s corresponding pages, the testimony of Dr. Gibbons, and the
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identical ISBN number, copyright date, and printing history of Dougherty
and Michigan Dougherty.
In addition, Petitioner proffers a declaration of Dr. Hall-Ellis (Ex.
1013) who testifies that Michigan Dougherty “was cataloged and made
publicly available by the Frances Willson Thompson Library at the
University of Michigan . . . on or shortly after January 10, 1995” (Pet. Reply
8 (citing Ex. 1013 ¶¶ 44–51)). Petitioner relies on testimony of Dr. Hall-
Ellis who relies on the MARC record (Pet. Reply 8 (citing Ex. 1013 ¶¶ 44–
51)). Dr. Hall-Ellis testifies Attachment 1A to her Declaration “is a true and
correct copy of the online catalog record for Sed & Awk in the Frances
Willson Thomson Library” as indicated by field 852 –– MiFliC, the library’s
code (id. ¶ 46). Dr. Hall-Ellis states, based on the MARC record, Michigan
Dougherty “was publicly available on or shortly after January 10, 1995 as
indicated in field 008 (‘950110’)” (id. ¶¶ 46–47, Attachment 1A; Pet. Reply
8). Dr. Hall-Ellis further states, “the most recent enhancement to
Attachment 1[A] was November 29, 1999, as shown in filed 005
(‘19991129’)” (id.).
Patent Owner argues, “MARC record dates are not reliable indicators
of when a particular printing of a book was shelved” (PO Sur-Reply 7).
Thus, Patent Owner contends, “Dr. Hall-Ellis’s testimony . . . is insufficient
to shown when [Michigan Dougherty], let alone [Dougherty], was publicly
available” (id.).
Dr. Hall-Ellis admits, “this MARC record was based on a prior
imprint of the same book,” but determines, “the different impression date
would not have been significant enough to merit creation of a separate
MARC record” (Ex. 1013 ¶ 47). Indeed, Dr. Hall-Ellis did not testify that
the MARC record for the “prior imprint of the same book” has the same
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printing history as Dougherty (id. at Att. 1A), nor does Dr. Hall-Ellis explain
how the “prior imprint” recorded in the MARC, has the same content as
Dougherty. Indeed, Dr. Hall-Ellis concluded Dougherty and Michigan
Dougherty are the same “versions” because of the same publisher, copyright
date, printing history, and ISBN number (id. ¶ 45). These MARC records
postdate Michigan Dougherty’s impression date (3/94) by 10 months as
acknowledged by Dr. Hall-Ellis (Ex. 2012, 33:12–21).
Dr. Hall-Ellis further provides an attachment of the MARC record
created at the NASA Goddard Space Flight Center Library and contributed
to the OCLC (the Library of Congress Online Catalog) bibliographic
database (Ex. 1013 ¶ 49, Att. 1F). This entry was created on October 19,
1992 (shown in the “Entered” field (“19921019”) (id.). The entry shows an
ISBN (field 020) (id.) that is the same as Dougherty (Ex. 1004, iv). Dr.
Hall-Ellis then again states Michigan Dougherty was publicly available “on
or shortly after January 10, 1995”:
Attachment 1f indicates that the volume Sed & Awk by
Dougherty as cataloged at the NASA Goddard Space Flight
Center Library is currently available from 215 libraries. In view
of above, the Dougherty book was publicly available on or
shortly after October 19, 1992, because by that date it had been
received, cataloged, and indexed at the NASA Goddard Space
Flight Center Library and made part of the OCLC bibliographic
database. For these reasons, it is my opinion that Exhibit 1011
was published and accessible to the public in the Frances Willson
Thompson Library on or shortly after January 10, 1995
(Ex. 1013 ¶ 50).
We determine the only reasonable interpretation of the declaration is
that Dr. Hall-Ellis is relying on university libraries’ general practice for
indexing, cataloging, and shelving books in estimating the time it would
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have taken to make the book available to the interested public (see In re Hall
781 F.2d 897, 899 (Fed. Cir. 1986)). We have no evidence rebutting Dr.
Hall-Ellis’s testimony as to university library practice (see id.). Although
there is some discrepancy in what printing of Dougherty was relied upon
when the MARC record and OCLC records were created, and what printing
was cataloged and shelved, we determine, as a whole, these records evidence
that the technical content of Dougherty relied upon was available at multiple
libraries before the priority date. We determine Dr. Hall-Ellis’s declaration
is competent evidence, and in light of the record before us, are persuaded the
testimony and proffered evidence show Michigan Dougherty was accessible
prior to the critical date.

c) Johns Hopkins Dougherty
The copyright dates and printing history of Dougherty and Johns
Hopkins Dougherty are the same, as are the ISBN numbers (compare Ex.
1010, iv with Ex. 1004, iv). More specifically, the front pages of Johns
Hopkins Dougherty set forth a copyright date of 1990 by O’Reilly &
Associates, Inc. (Ex. 1010, iv), the same as Dougherty (Ex. 1004, iv). Johns
Hopkins Dougherty lists its printing history:

(Ex. 1010, iv) which is the same as Dougherty’s printing history (Ex. 1004,
iv). Johns Hopkins also lists its ISBN number as 0-937175-59-5 (Ex. 1010,
iv) which is the same as Dougherty’s ISBN number (Ex. 1004, iv). Johns
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Hopkins Dougherty has an “impression” date of 4/95 (Ex. 1010, iv) – several
months after Dougherty’s impression date of 8/94 (Ex. 1004, iv). Thus, this
book was physically printed after Dougherty was physically printed.
The remaining pages of the excerpt provided by Petitioner, are the
Table of Contents, List of Figures, and List of Tables (id. at v–xiii).
Petitioner does not provide any excerpts of Johns Hopkins Dougherty that
allegedly correspond to the relied-upon excerpts of Dougherty, or any part of
the body of the text of Johns Hopkins Dougherty. Thus, neither Patent
Owner nor the Board are able to compare the texts.
Petitioner further relies on testimony from Dr. Hall-Ellis that Johns
Hopkins Dougherty was publicly available “or shortly after February 14,
1994” (Pet. Reply 7 (citing Ex. 1012 ¶¶ 44–51)). Dr. Hall-Ellis’s Johns
Hopkins Declaration is substantially similar to that set forth in Dr. Hall-
Ellis’s Michigan Declaration for the opening paragraphs (compare Ex. 1012
¶¶ 1–43 with Ex. 1013 ¶¶ 1–43).
Johns Hopkins Dougherty was printed in April 1995, so this date of
public availability is not for the current text submitted as evidence. Rather,
Petitioner relies on MARC records submitted as Attachments 1A–1D to Dr.
Hall-Ellis’ declaration (Ex. 1012 ¶ 47).
Dr. Hall-Ellis testifies that the MARC record for Johns Hopkins
Dougherty “was created for the work from the first printing” and thus, “was
created prior to the library receiving [Johns Hopkins Dougherty] (Ex. 2012,
30:22–32:5). In review of the MARC records, Attachments 1A and 1D, we
note the “catalogued” versions do not appear to be the same version as Johns
Hopkins Dougherty or even of Dougherty (Ex. 1012, Att. 1A, 1D). The
MARC records indicate a 1992 copyright date for the textbooks referred to,
in contrast to Dougherty’s 1990 copyright date (compare Ex. 1012, Att. 1A–
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1D with Ex. 1004, iv). Further, the MARC records list only minor
corrections in “Nov. 1992” and not the date of first edition and several dates
of “minor corrections” (id.).
Although we are unable to determine if the texts are the same because
none of the body of Johns Hopkins Dougherty was proffered in the
proceeding, we credit Dr. Hall-Ellis’s testimony that “in the case of the
Dougherty book, any copy of the book issued by O’Reilly & Associated
[sic] with a 1990 copyright date and showing minor revisions in March
1991, July 1992, and November 1992, would have been printed from the
same source and contain the same contents, regardless of the particular
impression date found in the verso” (id. ¶ 43).
As noted by Dr. Hall-Ellis, Johns Hopkins Dougherty also has a 1990
copyright date with minor revisions in March 1991, July 1992, and
November 1992 and an impression date designation of April 1995 (id. ¶ 45
(citing Ex. 1010, title page)). Thus, although Dr. Hall-Ellis only reviewed
scanned copies of selected pages of the Johns Hopkins Dougherty and did
not review the entire book, we credit Dr. Hall-Ellis’s testimony that Johns
Hopkins Dougherty is the same version as Dougherty (id. ¶¶ 44, 45).
Dr. Hall-Ellis further states upon review of the Machine Readable
Cataloging (MARC) Standard, the Johns Hopkins Dougherty was “publicly
available on or shortly after February 14, 1994 as indicated in field 008
(‘940214’),” in the Johns Hopkins University Library (id. ¶ 47). As
previously discussed, Dr. Hall-Ellis “note[s] that this MARC record was
based on a prior imprint of the same book” (id. (emphasis added)).
Dr. Hall-Ellis additionally points to Attachments to the Declaration
which, according to Dr. Hall-Ellis, are the MARC record for Dougherty
obtained from the OCLC (Library of Congress) that indicate the MARC
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record for this book was created at the NASA Goddard Space Flight Center
Library (id. ¶¶ 48–49). Dr. Hall-Ellis states, “[t]he library continues to
update this MARC record and enhance the MARC record to meet current
cataloging rules” (id. ¶ 49). Thus, Dr. Hall-Ellis testifies “the Dougherty
book was publicly available on or shortly after October 19, 1992 because by
that date it had been received, cataloged, and indexed at the NASA Goddard
Space Flight Center Library and made part of the OCLC bibliographic
database” (id. ¶ 50).
Again, we determine the only reasonable interpretation of the
declaration is that Dr. Hall-Ellis is relying on university libraries’ general
practice for indexing, cataloging, and shelving books in estimating the time
it would have taken to make the book available to the interested public (see
In re Hall, 781 F.3d at 899). We have no evidence rebutting Dr. Hall-Ellis’s
testimony as to university library practice (see id.). Although there is some
discrepancy in what printing of Dougherty was relied upon when the MARC
record and OCLC records were created, and what printing was cataloged and
shelved, we determine, as a whole, these records evidence that the technical
content of Dougherty relied upon was available at multiple libraries before
the priority date. We determine Dr. Hall-Ellis’s declarations are competent
evidence, and in light of the record before us, are persuaded the testimony
and proffered evidence show Johns Hopkins Dougherty was accessible prior
to the critical date.

d) Totality of the evidence
Patent Owner contends Petitioner has set forth allegations that
do not prove Dougherty was publicly available by the ’062’s
filing date when taken as a whole, rather than one at a time. The
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issue is not whether Dougherty’s copyright date, printing date,
ISBN, and alleged status of Dougherty’s publisher, taken
together, demonstrate that Dougherty was publicly available.
The issue is whether Dougherty was publicly available by the
patent’s filing date. None of the “evidence” in the Petition or
cited by the POP proves by a preponderance that it was
(PO Resp. 12–13).
We have reviewed all of the submitted evidence as well as Patent
Owner’s contentions. We determine the evidence, viewed as a whole,
sufficiently supports that Dougherty was publicly accessible and, therefore,
is a printed publication that qualifies as prior art. In particular, Petitioner has
shown Dougherty was published by an established publisher (see Vidstream,
981 F.3d at 1064); Michigan Dougherty has the same technical content as
Dougherty and was publicly accessible prior to the critical date (Ex. 1013
¶ 45; Ex. 1014 ¶ 6); and a version of Dougherty with a prior imprint date
was available publicly before the priority date (Ex. 1013 ¶¶ 47, 50).
Additionally, Johns Hopkins Dougherty supports that Dougherty was
publicly available before the priority date (Ex. 1010; Ex. 1012 ¶¶ 44–47).
Furthermore, we determine O’Reilly & Associates’ purpose of publishing
Dougherty was “dialogue with an intended audience,” thus indicating public
accessibility of Dougherty (see Valve Corp., 8 F.4th at 1374).

D. Asserted Obviousness over Dougherty
Petitioner contends Dougherty would have rendered claims 1–3, 7, 10,
11, 14, and 15 obvious (Pet. 29–52).
1. Dougherty (Ex. 1004)
Dougherty is a textbook titled “sed & awk.” (Ex. 1004). Sed and awk
are UNIX utilities that use regular expressions for pattern matching in text
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files (id. at xv). Sed is a stream editor used to apply a series of edits to files
(id.). Awk is a programming language the permits manipulation of
structured data and the generation of formatted reports (id.). That is, both
sed and awk are tools which execute instructions to edit or manipulate data
and generate a resulting output (id. at 8). Figure 2-1 of Dougherty is a block
diagram illustrating the basic operation of sed and awk, and is reproduced
below.

Figure 2-1 is a block diagram showing
the basic operation of sed and awk (Ex. 1004, 14).
As shown in Figure 2-1, “an input line . . . is read one at a time from
the input file” (id. at 14). That input file may be “a text file . . . made up of
records and fields in a textual database” (id. at 6; see id. at 172). Dougherty
“makes the assumption that its input is structured” and “in the usual case,
interprets each input line as a record and each word on that line, delimited by
blank spaces or tabs, as a field” (id. at 21, 147). For example, an input file
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“contains a list of names and addresses,” such as depicted below:

(id. at 15). The above image from Dougherty relates to sample file named
“list” that includes eight lines with the name of a person and their respective
street address, such as “John Daggett, 341 King Road, Plymouth MA” (id.).
To perform operations on the file, an “instruction specified in the
script” is executed on the input line read in from the file (id. at 14). After
“applicable instructions have been interpreted and applied for a single line,”
the line is output (id. at 15). Returning to the example, a script includes an
instruction which is a “command for substitution to replace ‘MA’ with
‘Massachusetts’” (id. at 16). Accordingly, after execution of the script to the
input file, the resulting output reads:

(id. at 17). The above image from Dougherty relates to a sample output file
that includes eight lines with the name of a person and their respective street
address, such as “John Daggett, 341 King Road, Plymouth Massachusetts”
(id.). Further, the output can be saved to another file that is not the input file
(id. at 13, 19).
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2. Independent Claims 1, 7, and 14
a) Virtual Database Having a Schema
Petitioner contends Dougherty teaches a virtual database having a first
schema (Pet. 34–43 (citing Ex. 1004, 5–6, 15–16, 19–21, 147, 172, 193,
229–230, 287, 291–292)). Petitioner contends Dougherty teaches that the
benefits of awk, a reusable software operator, “are ‘best realized when the
data has some kind of structure’” (id. at 34 (quoting Ex. 1004, 5–6, 172)).
Petitioner identifies an example from Dougherty that Petitioner asserts
discloses the recited virtual databases (id. at 34–35 (quoting Ex. 1004, 15,
291–292)). A sample mailing list disclosed in Dougherty is reproduced
below:

(Ex. 1004, 15). The above image from Dougherty relates to a sample
mailing list that includes eight lines with the name of a person and their
respective street address, such as “John Daggett, 341 King Road, Plymouth
MA” (id.). According to Petitioner, “[t]he data structure of Dougherty’s
mailing list text file is the schema of the text file” (Pet. 26 (citing Ex. 1003
¶ 44)). In particular, the schema of the sample mailing list contains a list of
names and addresses separated by commas (Pet. 34 (citing Ex. 1003 ¶ 61;
Ex. 1004, 15)). According to Petitioner, the contents of Dougherty’s mailing
list file make up a section and each “section of Dougherty’s mailing list
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example contains several lines of information, each line representing a
record” (id. at 25 (quoting Ex. 1004, 15; Ex. 1003 ¶¶ 41–42)).
Patent Owner contends Dougherty fails to teach the recited virtual
database because Dougherty teaches flat file databases which are not virtual
databases; Dougherty’s files lack the required assigned schema; and
Dougherty’s files are not organized into one or more sections (PO Resp. 39–
40).
(1) Dougherty’s Database
Petitioner contends Dougherty only teaches flat file databases (PO
Resp. 40). As discussed in our claim construction, “virtual database” does
not preclude flat file databases (see supra). For the reasons given by
Petitioner and as further explained below, we find Dougherty’s database
teaches a virtual database as construed above.
(2) Virtual Database Must Have Assigned Schema
Patent Owner argues that Dougherty fails to teach the recited “virtual
database” because the virtual database must have an “assigned” schema (PO
Resp. 31, 42). More specifically, Patent Owner asserts the claims recite “has
an associated schema,” “has a schema,” and “includes the schemas” and that
such recitations “make[] it plain that a schema must be assigned as a
fundamental attribute of the virtual database itself, and not merely
independently ‘associated’ after the fact by an interpreting tool” (id. at 31–
32). According to Patent Owner, “for a given sequence of characters to meet
the ‘virtual database’ recited in the claims, that sequence must first be
assigned a schema” (id.).
The explicit definition of virtual database in the Specification,
however, does not require the schema be assigned (Ex. 1001, 3:28–42).
Thus, nothing in the explicit definition requires “assignment” of the schema
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as proposed by Patent Owner. Additionally, independent claims 1, 7, and 14
do not recite “assign” or “assigning” a schema (see Ex. 1001, 14:65–15:5,
15:19–27, 15:66–16:7). Nevertheless, despite the explicit definition, Patent
Owner proffers extrinsic evidence and contends the experts, Dr. Gibbons
and Dr. Meldal, agree a sequence of characters is not a virtual database until
a schema is assigned (PO Resp. 32, 42). Patent Owner then argues that none
of Dougherty’s files has an assigned schema (PO Resp. 43–51).
Petitioner provides examples from Dougherty as teaching the recited
virtual database (Pet. 34–43). A first example is a mailing list, reproduced
below:

(Ex. 1004, 15; Pet. 34, 39–40). In this mailing list, each line contains a
name, street address, city and state (Ex. 1004, 15; Pet. 34 (citing Ex. 1003
¶ 61)). Dougherty provides an example that uses an s command to replace a
state abbreviation (MA) with the state’s full name (Massachusetts) (Ex.
1004, 16). When the mailing list is input into a sed script and processed, the
resulting database is output, as reproduced below:
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(id.; Pet. 39). Petitioner further asserts “[e]ach record in Dougherty’s
mailing list example contains several fields, including names and addresses,
separated by commas” –– “John Daggett” is a field, for example (Pet 25
(quoting Ex. 1004, 15; Ex. 1003 ¶ 43)). Thus, according to Petitioner, “[t]he
data structure of Dougherty’s mailing list text file is the schema of the text
file” (id. at 26 (citing Ex. 1003 ¶ 44)).
Another example described in Dougherty and relied upon by
Petitioner is that of a database of students and their respective grades,
reproduced below:

(Ex. 1004, 193; Pet. 41). In this database, each line has a student’s name,
followed by six numerical grades, each separated by a space (Ex. 1004, 193;
Pet. 41). Dougherty provides examples of use of this database (Ex. 1004,
193, 229–230; Pet. 41–42). For example, Dougherty teaches use of a
“nawk” command that “[w]hen the grades test file is input into the described
sort routing and processed,” results in a database with each line having a
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student name followed by a colon, and six space delineated numerical grades
in ascending order, as reproduced below:

(Ex. 1004, 229–230; Pet. 41–42). Thus, Dougherty’s example results in a
sorted grade database (Ex. 1004, 230).
Petitioner additionally relies on a description input.idx, a program
“produc[ing] output records with three colon-separated fields,” reproduced
below:

(Pet. 35 (citing Ex. 1004, 291–292), 27–28). The above image from
Dougherty relates to the output of a program called “input.idx” that outputs
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16 lines having three colon-separate fields, including, for example,
“XView:programs; initialization:45” (id.). “The first field contains the
primary key; the second field contains the secondary and tertiary keys, if
defined; and the third field contains the page number” (Pet. 35 (quoting
Ex. 1004, 291–292; citing Ex. 1003 ¶ 62), 26). The sample output has
“examples of entries with only a primary key, those with primary and
secondary keys, and those with primary, secondary, and tertiary keys”
(Ex. 1004, 292). Thus, for example, the first line: “XView:programs;
initialization:45” has a primary key “XView,” a secondary key of
“programs; initialization,” and a tertiary key “45” (id.). The last line in the
example, has a primary key “header file,” a secondary key “xlib.h,” and a
tertiary key “89” (id.).
Petitioner asserts “[i]n the input.idx example, the virtual database has
a schema that indicates ‘[e]ach entry now consists of three colon-separated
fields,’ where ‘[t]he first field contains the primary key; the second field
contains the secondary and tertiary keys, if defined; and the third field
contains the page number’” (Pet. 35–36 (citing Ex. 1004 ¶ 287)).
Each of these databases has a schema or format. In the case of the
mailing list, it is each line representing the name, street address, city, and
state of a person (Ex. 1004, 16). In the case of the grades, each line
represents a student and six separate grades (id. at 193). In the case of the
input.idx example, each entry consists of three colon-separated fields (id. at
292).
Patent Owner relies on testimony by Petitioner’s expert, Dr. Gibbons,
as evidence the two proffered examples of Dougherty do not have an
“assigned” schema (PO Resp. 44–48). We do not find Dr. Gibbons’
testimony to state the examples shown in Dougherty do not have a schema.
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In particular, Patent Owner relies on responses when Dr. Gibbons was
questioned as to whether a sequence of characters as shown on the page is
by itself a virtual database (Ex. 2006, 42–60; PO Resp. 44–48). We find this
excerpted portion does not take into account Dr. Gibbons’ full testimony.
Indeed, Dr. Gibbons clearly stated, in response to Patent Owner’s question if
Figure 7 of the ’062 Patent has schema, that it did –– “Figure 7, the schema
is not explicitly shown in the figure, but in the description that accompanies
Figure 7, the schema is discussed” and “[w]hen you look at the text that
describes Figure 7, it talks about the different fields and what they mean. So
it describes the schema associated with what we are seeing there in Figure 7”
(Ex. 2006, 46:10– 47:1). Thus, we determine the excerpted portions of Dr.
Gibbons’ testimony do not evidence that the examples in Dougherty
proffered by Petitioner lack a schema.
Patent Owner further contends that because “Dougherty’s mailing list
must be interpreted by an external tool, such as Awk, means that there is no
schema assigned to the file” (PO Resp. 45). Patent Owner argues “the
interpretation of records and fields is tied to the tool in Dougherty that
interprets the file, not anything in the file. The file in Dougherty has no
schema as the claims require: it is merely read by an external tool and
interpreted to have a format” (PO Resp. 49 (citing Ex. 2007 ¶ 77)).
We find this contention unavailing. In response to the Board’s
question — whether the schema has to be in the file — Patent Owner admits,
“We are not contending that [the schema] has to be in the file itself, but there
has to be something defining the schema for the virtual database” (Tr., 54:1–
14). Patent Owner contends Dougherty’s databases have a schema defined
“after the fact” (Tr. 54:15–56:6). According to Patent Owner, “Dougherty
does not teach that its tools identify or locate an existing assigned schema of
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a database file” (PO Sur-Reply 18). Patent Owner further argues, “the
claims show ‘a schema must be assigned as a fundamental attribute of the
virtual database itself, and not merely independently ‘associated’ after the
fact by an interpreting tool’” (PO Sur-Reply 16).
The claims, however, do not require that the “processing” recited in
the claims includes “identifying and locating an existing assigned schema”
of the virtual database (see Ex. 1001, 14:65–15:5, 15:19–27, 15:66–16:7).
Additionally, the claims do not recite “assigning a schema”; rather, they
recite “a virtual database having a schema” (id.). Indeed, the claims do not
recite what, who, or how the virtual database acquires its schema nor do they
recite any timing of when the virtual database acquires its schema as Dr.
Gibbons testified (id.; Ex. 2011, 12:18–13:6). Instead, the claims merely
recite a virtual database having a schema (Ex. 1001, 14:65–15:5, 15:19–27,
15:66–16:7).
We also do not find Dougherty’s virtual database having a schema is
“after the fact.” Each of Dougherty’s databases has a schema. For example,
the mailing list schema has a schema of lines of name, street address, city
and state (Ex. 1004, 15–16). Thus, the mailing list schema has a schema –
each line representing a different person and each of those lines having that
person’s name, street address, city, and state. Further, Dougherty’s example
of a grade database and sorting that grade database, evidences the grade
database has a schema of name and grades, because to sort the grade
database, the operator would use the schema (Ex. 1004, 5–6, 229–230; Pet.
34; Ex. 1003 ¶ 60).
Accordingly, we are persuaded Dougherty teaches “a first virtual
database having a schema,” as recited in claim 1 and “a first virtual database
having a first schema,” as recited in claim 7; and “a virtual database having a
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first schema,” as recited in claim 14 (see Ex. 1001, 14:65–15:5, 15:19–27,
15:66–16:7).
(3) “Sequence of Characters Organized into One or More Sections”
Patent Owner contends the ’062 Patent’s definition of “virtual
database” includes “a sequence of characters organized into one or more
sections which contains zero or more records made up of one or more fields”
(PO Resp. 52). Therefore, according to Patent Owner, “for a sequence of
characters to be organized into one or more sections, something must
identify a grouping of characters as a particular section” (id.).
The terms “section” and “record” are not defined explicitly in the ’062
Patent (see ’062 Patent). Rather, these terms represent data in the virtual
database. In particular, the ’062 Patent discloses “[a] virtual database is a
sequence of characters organized into one or more sections” (Ex. 1001,
3:27–29). Therefore, we determine that an ordinarily skilled artisan would
understand “section” to be a size equal to or less than the virtual database.
The ’062 Patent does not disclose the size of a section other than “[e]ach
section contains zero or more records, with each record made up of one or
more fields containing information” (Ex. 1001, 3:30–32). Thus, we
determine an ordinarily skilled artisan would understand, “record,” if one
exists, to be a size equal to or less than that of the section.
Virtual database, as defined in the ’062 Patent, permits one section
(Ex. 1001, 3:28–30). Patent Owner indicates Petitioner and its expert all
admit Figure 6 of the ’062 Patent has a section heading (PO Resp. 54–56).
Thus, according to Patent Owner, “[i]ndicators such as these section headers
are consistently used in each of the embodiments of the claimed ‘virtual
database’ in the ’062 patent to separate the records of one section from the
records in another section” (PO Resp. 56 (citing Ex. 2007 ¶ 87)).
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This does not negate that the applicants defined virtual database as
having one section with zero records (see Ex. 1001, 3:28–32). Patent
Owner, however, admits “it is possible for the ‘virtual database’ in the
claims to have only one section,” but contends, “neither the requirement nor
the benefit of a section indicator evaporates when the virtual database has
only one section” (PO Resp. 57). Patent Owner’s expert, Dr. Meldal,
explains “even when the virtual database has only one section, there still has
to be something indicating that single section as such” (Ex. 2007 ¶ 90; PO
Resp. 57). Dr. Meldal continues:
This will inform the user, designer, or maintainer of the database
about the structure of the database, and how it can be updated,
queried, or otherwise used. Without a way to indicate a section,
even in a one section database, there is no way to ensure that the
designer, maintainer, or user would not misinterpret or misuse
the database, such as interpreting the database to have multiple
sections with different schemas.
(Ex. 2007 ¶ 90.)
None of the claims recite a section identifier or section heading (Ex.
14:65–15:5, 15:19–27, 15:66–16:7). Patent Owner points to Figure 6 of the
’062 Patent which “shows the schema of an example database,” as
disclosing a section heading, “Section 604 . . . deliminated by a section
heading ‘ENTITY’ 610” (PO Resp. 54 (citing Ex. 1001, Figs. 6–8, 6:31–32;
7:12–13, 730–31); Ex. 1001, 2:66). However, we will not read that
requirement into the claim. We are not persuaded an ordinarily skilled
artisan would understand the ’062 Patent as requiring a section heading in
the virtual database, based on the explicit definition of virtual database
including a virtual database with one section and zero records.
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Patent Owner further contends Dougherty “do[es] not contain
anything that would distinguish a section –– nor does Petitioner point to
anything” (PO Resp. 59). According to Patent Owner, Dougherty’s files
(mailing file and input file) “simply contain lines of characters, with nothing
that tells where a section starts” (id.). Relying on Dr. Meldal’s testimony,
Patent Owner asserts “these simple files in Dougherty, at best, merely
contain a single table with alleged ‘records’” (id. at 60 (citing Ex. 2007
¶ 95)).
Dr. Meldal’s statement, however, describes a sequence of characters
organized into a “table” or section. The terms “table” and “section” are both
describing a sequence of characters that is organized into something
understandable by a user, designer, or maintainer of the database. We
determine the input text files disclosed in Dougherty describe a sequence of
characters organized into something understandable by a user, designer, or
maintainer of the database. In particular, Dougherty discloses “[t]he key to
all of these operations [described in Dougherty, such as sed and awk,] is that
the data has some kind of structure” (Ex. 1004, 5). Thus, Dougherty teaches
that the data has a schema upon which operations such as sed and awk act.
Patent Owner further argues if Dougherty’s files are determined to be
organized into one or more sections, the requirement that the claimed
“virtual database” be organized into one or more sections would be obviated
(PO Resp. 61). In particular, Patent Owner contends neither Petitioner nor
Dr. Gibbons “attempts to offer any explanation or evidence showing why a
POSITA would understand Dougherty’s files to contain ‘one or more
sections’” (id. at 62). Patent Owner argues Dr. Gibbons, in discussing
Dougherty’s input.idx example file, testifies, “‘[t]here is nothing in
Dougherty that describes this collection of records as being organized into
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. . . different groups’ yet contended that a ‘POSITA would interpret this as
being a single section’” (id. at 62–63 (quoting Ex. 2006, 7:12–17)). Patent
Owner further contends Dougherty’s flat files have no indication of where a
section starts and Dr. Gibbons is “advocating an interpretation of ‘section’
such that any ‘sequence of characters’ would always be at least organized
into one section” (id. at 64). Thus, according to Patent Owner, “[t]hat
interpretation would read out the section requirement of the ‘virtual
database’ construction and is contrary to the Patent’s express disclosure” (id.
(citing Ex. 2007 ¶ 100)).
Although Patent Owner contends Dr. Gibbons indicated such a feature
must be “inherent,” Patent Owner does not cite to any specific testimony by
Dr. Gibbons (id. at 63). Rather, Dr. Gibbons testifies “[a] POSITA would
interpret this as being a single section” (Ex. 2006, 74:12–25).
As previously discussed, the ’062 Patent does not explicitly define
“section” (see Ex. 1001). Patent Owner would have us read the requirement
that a section have a section identifier into the claim (Tr. 58:7–60:2). We
decline to do so. Patent Owner has not identified anything in the claims or
’062 Patent that requires a section heading or identifier in the virtual
database (see id.). Applicants defined virtual database as including a virtual
database with one section and zero records (Ex. 1001, 3:28–32). With
respect to Patent Owner’s contention that this would obviate the recited
“organized into one or more sections,” we do not find this to be the case. A
database of one section is “organized into one section.” Moreover, the
definition of “virtual database” allows “one or more sections” and thus, a
sequence of characters may be organized into two or more sections, as
permitted by the explicit definition (id.). Here, we find Dougherty describes
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a virtual database having one or more sections, with both the virtual database
and the section each having a respective schema.
Therefore, we determine Dougherty’s examples each provide a
defined structure that includes at least one or more sections. And we are
persuaded, based on the record before us, Dougherty’s examples teach “a
virtual database organized into one or more sections.”
(4) Conclusion
For the reasons set forth above, Petitioner has established that
Dougherty teaches or suggests “a first virtual database having a schema,” as
recited in claim 1 and as commensurately recited in claims 7 and 14.
b) Remaining Limitations
With respect to claim 14, Petitioner contends Dougherty teaches:
[a] method for processing information comprising the steps of:
(Pet. 29–30 (citing Ex. 1004, xv));
providing a plurality of software operators each configured to
receive
(Pet. 30–34 (citing Ex. 1004, 3–5, 18–20, 26, 287, 292–293));
for processing information contained in said virtual database,
(Pet. 38–43 (citing Ex. 1004, 15–16, 21, 193, 229–230)); and
combining at least two of said software operators to create an
application.
(Pet. 43–48 (citing Ex. 1004, 18–19, 23–24, 287, 23–24, 292–293).)
Petitioner references its analysis of independent claim 14 in analyzing
similar elements recited in independent claim 1 (id. at 30–48 (citing Ex.
1004, 2–3, 5–6, 15–16, 18–21, 193, 229–230, 287, 291–293; Ex. 1003
¶¶ 51–57, 59–85)). Petitioner references the analysis of independent claim
14 in analyzing similar elements recited in independent claim 7 (id. at 30–48
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(citing Ex. 1004, 2–3, 5–6, 15–16, 18–21, 193, 229–230, 287, 291–293; Ex.
1003 ¶¶ 51–57, 59–85)).
Patent Owner does not proffer any argument specifically directed to
these limitations (see generally PO Resp.).
Upon review of the entire trial record and the specific portions of
Dougherty cited by Petitioner, Petitioner has established that Dougherty
teaches the subject matter of the remaining limitations recited in claims 1, 7,
and 14.
c) Conclusion
For the reasons discussed above, Petitioner has established that
Dougherty teaches the subject matter of claims 1, 7, and 14. Based on the
entire trial record, we determine Petitioner has established by a
preponderance of the evidence that the subject matter of claims 1, 7, and 14
would have been obvious over Dougherty under 35 U.S.C. § 103.

3. Dependent claims 2, 3, 10, 11, and 15
Petitioner contends Dougherty renders dependent claims 2, 3, 10, 11,
and 15 obvious (Pet. 43–48, 50–52). Patent Owner does not proffer any
argument specifically directed to these dependent claims (see generally PO
Resp.).
Claim 15 recites “wherein said step of combining further comprises
the step of: providing a virtual database pipeline” (Ex. 1001, 16:8–10).
Claim 2 has a commensurate recitation as does claim 11 (id. at 15:6–7, 41–
43). Dougherty teaches pipes that pass output from one program as input to
the next program in a UNIX system (Pet. 48 (citing Ex. 1004, 23)). Thus,
Petitioner has shown Dougherty teaches the subject matter of claims 2, 11,
and 15.
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Claim 3 recites “wherein said query operators are combinable in any
order to create an application” (Ex. 1001, 15:8–9). Dougherty teaches using
the output produced by one operator to be used by another operator to sort
the results (Ex. 1004, 292; Pet. 43). Thus, Petitioner has shown Dougherty
teaches the subject matter of claim 3.
Claim 10 recites “wherein said first and second operators are chosen
from a library of operators, and wherein each of said operators in said library
are configured to receive a virtual database having said first schema, process
information in said received virtual database, and output a virtual database
having said first schema” (Ex. 1001, 15:36–44). Dougherty teaches a library
of operators such as “sed” and “awk” scripts and “sort” and “uniq” (Ex.
1004, 3–5, 18–19, 26, 287, 292). As discussed above in conjunction with
claims 1, 7, and 14, Dougherty describes that each of these operators, e.g.,
sort, receives a virtual database having a schema, processes the information,
e.g., performs the sort on the received virtual database, and outputs a virtual
database having the schema (e.g., the sorted database) (id.). Thus, Petitioner
has shown Dougherty teaches the subject matter of claim 10.
For the reasons discussed above, Petitioner has established that
Dougherty teaches the subject matter of claims 2, 3, 10, 11, and 15. Based
on the entire trial record, we determine Petitioner has established by a
preponderance of the evidence that the subject matter of claims 2, 3, 10, 11,
and 15 would have been obvious over Dougherty under 35 U.S.C. § 103.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1–3, 7, 10, 11, 14, and 15 of the ’062 Patent would have been
obvious over Dougherty.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, on the record before us, Petitioner has shown by a
preponderance of the evidence that claims 1–3, 7, 10, 11, 14, and 15 of the
’062 Patent are unpatentable.

In summary:

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 7,
10, 11,
14, 15
103 Dougherty 1–3, 7, 10, 11,
14, 15

Overall
Outcome
1–3, 7, 10, 11,
14, 15

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FOR PETITIONER:
David Cavanaugh
David.cavanaugh@wilmerhale.com

Scott Bertulli
Scott.bertulli@wilmerhale.com

Evelyn Mak
Evelyn.mak@wilmerhale.com

FOR PATENT OWNER:
Kenneth Weatherwax
weatherwax@lowensteinweatherwax.com

Edward Hsieh
hsieh@lowensteinweatherwax.com

Parham Hendifar
hendifar@lowensteinweatherwax.com

Nathan Lowenstein
lowenstein@lowensteinweatherwax.com

Patrick Maloney
maloney@lowensteinweatherwax.com