Administrative Patent Judges. Administrative Patent …€¦ · FACEBOOK, INC., Petitioner, v....

28
[email protected] Paper 17 Tel: 571-272-7822 Entered: September 5, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ FACEBOOK, INC., Petitioner, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner. _______________ Case IPR2017-00985 Patent 6,125,371 _______________ Before DEBRA K. STEPHENS, JAMES B. ARPIN, and DANIEL J. GALLIGAN, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION Granting Institution of Inter Partes Review 37 C.F.R. § 42.108

Transcript of Administrative Patent Judges. Administrative Patent …€¦ · FACEBOOK, INC., Petitioner, v....

[email protected] Paper 17 Tel: 571-272-7822 Entered: September 5, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE _______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_______________

FACEBOOK, INC., Petitioner,

v.

SOUND VIEW INNOVATIONS, LLC, Patent Owner.

_______________

Case IPR2017-00985 Patent 6,125,371

_______________

Before DEBRA K. STEPHENS, JAMES B. ARPIN, and DANIEL J. GALLIGAN, Administrative Patent Judges. ARPIN, Administrative Patent Judge.

DECISION Granting Institution of Inter Partes Review

37 C.F.R. § 42.108

IPR2017-00985 Patent 6,125,371

2

I. INTRODUCTION

A. Background

Facebook, Inc. (“Petitioner”) filed a Petition to institute inter partes

review of claims 1–3 and 8–10 of U.S. Patent No. 6,125,371 (Ex. 1001, “the

’371 patent”). Paper 2 (“Pet.”). Sound View Innovations, LLC (“Patent

Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).

Having considered the Petition, the Preliminary Response, and the

evidence of record, and applying the standard set forth in 35 U.S.C.

§ 314(a), which requires demonstration of a reasonable likelihood that

Petitioner would prevail with respect to at least one challenged claim, we

grant Petitioner’s request and institute an inter partes review of claims 8–10

of the ’371 patent.

B. Related Matters

The ’371 patent is the subject of the following litigation: Sound View

Innovations, LLC v. Facebook, Inc., No. 16-cv-116 (RGA) (D. Del.), filed

on February 29, 2016. Pet. 1; Paper 4, 1. Petitioner explained that, as of the

date of this Petition, no claim construction ruling had occurred. Pet. 1.

However, on May 19, 2017, the U.S. District Court for Delaware issued a

Memorandum Opinion addressing claim construction in the related litigation

(Ex. 2001); and on August 10, 2017, district court issued a Memorandum

Order addressing claim construction in the related litigation (Ex. 2008).

C. The ’371 Patent

The ’371 patent, entitled “System and Method for Aging Versions of

Data in a Main Memory Database,” generally describes systems and

methods for managing versions of data records in a database to increase data

capacity. Ex. 1001, Abstract, 2:55–62. The Background of the ’371 patent

IPR2017-00985 Patent 6,125,371

3

explains that “[d]atabase systems typically include a database manager

(‘DBM’) and a database (i.e., a data repository).” Id. at 1:13–15. “A DBM

is a control application that supervises or manages interactions between

application tasks and the database.” Id. at 1:15–17.

Figure 1 of the ’371 patent is reproduced below.

Figure 1 depicts a flow diagram of an exemplary system and method for

controlling multi-versioned data records, as recited in claims 1 and 8. Id. at

3:36–38.

Version manager 100 may be software-based and executable by any suitably arranged processing system 105 (e.g., a computer, communications switch, etc.). Version manager 100 includes three controllers, namely, a time stamping controller 110, a

IPR2017-00985 Patent 6,125,371

4

versioning controller 115 and an aging controller 120. Those skilled in the art should be familiar with the use of controllers in processing environments generally and, more specifically, with main memory databases. Controllers may be implemented in software, firmware, hardware, or some suitable combination of at least two of the three.

Id. at 4:47–57. Time stamping controller 110 receives update and read-only

transactions for main memory database 125 (step 130). Id. at 4:58–60. “In

response, time stamping controller 110 assigns a time stamp to each received

transaction” (step 140). Id. at 4:62–64. “[V]ersioning controller 115

determines whether a given transaction is an update transaction” (step 150).

Id. at 5:5–7.

If the transaction is an update transaction, . . . versioning controller 115 (1) obtains a “X” lock on one or more data records to be modified (or otherwise changed), step 155, (2) modifies a copy of the most recent “past” version of the data record in response to the update transaction, creating a new “current” or “successor” version, step 165 and (3) commits the transaction, at which time it increments time stamp counter 145, assigns a time stamp therefrom to the new “successor” versions of the updated data records and releases the “X” lock held by the update transaction, step 170.

Id. at 5:7–18. Aging controller 120 monitors main memory database 125 to

(1) continuously order (e.g., sort, arrange, etc.) multiple versions of data

records according to their associated time stamps (step 180) and (2) monitor

one or more measurable characteristics describing, relating to, or otherwise

associated with a utilization or capacity of main memory 135 (step 185). Id.

at 5:36–44. Aging controller 120 also deletes earlier versions of data records

in response to the time stamp associated with those versions and at least one

measurable main memory characteristic (step 190). Id. at 5:44–48.

IPR2017-00985 Patent 6,125,371

5

D. Illustrative Claims

Claims 1 and 8 are independent. Ex. 1001, 9:10–22, 9:44–58. Claims

2 and 3 depend from claim 1, and claims 9 and 10 depend from claim 8. Id.

at 9:23–27, 9:59–62. Claim 8 recites a method of operating a processing

system, and claim 1 recites a processing system, in which various controllers

perform steps recited in claim 8. Consequently, claim 1 is illustrative and is

reproduced below with disputed limitations emphasized:

1. A processing system for use with a database of data records, said database stored in a memory, comprising:

a time stamping controller that assigns a time stamp to transactions to be performed on said database;

a versioning controller that creates multiple versions of ones of said data records affected by said transactions that are update transactions; and

an aging controller that monitors a measurable characteristic of said memory and deletes ones of said multiple versions of said ones of said data records in response to said time stamp and said measurable characteristic thereby to increase a capacity of said memory.

Id. at 9:10–22 (emphases added).

E. Applied References and Declaration

Petitioner relies on the following references and declaration in support

of its asserted grounds of unpatentability.

Exhibit No. Reference

1002 Declaration of David Klausner 1003 (Parts 1 & 2) Excerpts from Philip A. Bernstein et al., Concurrency

Control and Recovery in Database Systems (1987) (“Bernstein”)

1004 U.S. Patent No. 5,155,842 to Rubin (“Rubin”)

Pet. iii.

IPR2017-00985 Patent 6,125,371

6

F. Asserted Ground of Unpatentability

Petitioner contends that claims 1–3 and 8–10 of the ’371 patent are

unpatentable on the following ground:

References Basis Challenged Claims

Bernstein and Rubin 35 U.S.C. § 103(a) 1–3 and 8–10

Pet. 3.

II. ANALYSIS

A. Claim Construction

1. Standard of Construction

In an inter partes review, claim terms in an unexpired patent are given

their broadest reasonable interpretation in light of the specification of the

patent in which they appear. See 37 C.F.R. § 42.100(b). Nevertheless, “[a]

party may request [in the form of a motion] a district court-type claim

construction approach to be applied if a party certifies that the involved

patent will expire within 18 months from the entry of the Notice of Filing

Date Accorded to Petition.” Id. In this proceeding, Patent Owner timely

filed a motion pursuant to 37 C.F.R. § 42.100(b) (1) certifying that the ’371

patent will expire within 18 months from the entry of the Notice of Filing

Date Accorded to Petition, i.e., February 28, 2017 (Paper 3); and

(2) requesting district court-type claim construction.1 Paper 6, 1. Petitioner

did not oppose Patent Owner’s motion. Ex. 2007, 14:14–16, 18:6–14; see

37 C.F.R. § 42.23. Consequently, we granted Patent Owner’s unopposed

1 Patent Owner states that the ’371 patent expired on August 19, 2017. Prelim. Resp. 1.

IPR2017-00985 Patent 6,125,371

7

motion requesting district court-type claim construction. Paper 8; see

Prelim. Resp. 8–9.

In applying district court-type construction, we are guided by the

principle that the words of a claim “are generally given their ordinary and

customary meaning,” as understood by a person of ordinary skill in the art in

question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,

1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the

meaning of the disputed claim limitation, we look principally to the intrinsic

evidence of record, examining the claim language itself, the written

description, and the prosecution history, if in evidence.” DePuy Spine, Inc.

v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)

(citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption,”

however, that a claim term carries its ordinary and customary meaning. CCS

Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)

(citation omitted).

2. Means-Plus-Function Limitations

With regard to the construction of means-plus-function limitations

under 35 U.S.C. § 112, ¶ 6, the same two-step analysis applies under both

the broadest reasonable interpretation and district court-type standards. In

particular, our reviewing court recently explained that

the construction of a means-plus-function limitation under § 112 ¶ 6 “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” We “h[e]ld that paragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”

IPR2017-00985 Patent 6,125,371

8

In other words, § 112 ¶ 6 “sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of ‘reasonable interpretation,’” and “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.”

IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1369–70 (Fed. Cir.

2017) (emphasis added; citations omitted; quoting In re Donaldson Co., 16

F.3d 1189, 1193–95 (Fed. Cir. 1994) (en banc)); see Williamson v. Citrix

Online, LLC, 792 F.3d 1339, 1349–50 (Fed. Cir. 2015) (en banc in relevant

part)). When construing a means-plus-function limitation, § 112, ¶ 6,

requires us “to perform a two-step analysis. First, [we must] ‘identif[y] the

particular claimed function.’ Second, [we must] ‘look [ ] to the specification

and identif[y] the corresponding structure, material, or acts that perform that

function.’” IPCom, 861 F.3d at 1370 (citations omitted). This is true

whatever the applied standard of construction.

3. Petitioner’s Proposed Constructions

Petitioner proposes constructions for the following claim terms:

(1) “update transactions” (claims 1 and 8), (2) “data record” (claims 1 and

8), and (3) “controller” (claim 1). Pet. 3–7. In particular, Petitioner argues

that (1) “update transactions” are “transactions that modify portions of the

database” (id. at 4), (2) “data record” is “any file, entry, record, field, item

and other data associated with at least one database” (id. (quoting Ex. 1001,

3:57–60)), and (3) “controller” “should be accorded its plain and ordinary

meaning based on the specification, and thus, need not be explicitly

construed” (id. at 7). Petitioner proposes that each of these constructions is

the broadest reasonable interpretation of these claim terms. Id. at 3; see

Prelim. Resp. 18–21.

IPR2017-00985 Patent 6,125,371

9

a. “update transactions” and “data record”

Petitioner argues that the terms “update transactions” and “data

record” are defined in the Specification of the ’371 patent, and Petitioner

argues that these terms, as well as the term “controller,” should be given

their broadest reasonable interpretation. See Pet. 4; Prelim. Resp. 20. For

the reasons set forth above, however, each of the disputed claims terms shall

be given a district court-type construction in this proceeding.

The terms “update transactions” and “data record” appear in claim 8,

as well as claim 1. Pet. 3–7. We agree with Petitioner that these terms are

defined in the Specification of the ’371 patent. Id. In particular, “[t]he ’371

patent expressly defines ‘update transactions’ as ‘transactions that modify

portions of the database’” (id. at 4 (quoting Ex. 1001, 1:51–54); see

Ex. 1002 ¶ 19); and “[t]he ’371 patent also provides an explicit definition of

‘data record,’ stating that ‘the phrase ‘data record,’ as used herein, is defined

broadly to mean any file, entry, record, field, item and other data associated

with at least one database (or any suitable data repository for that matter)

. . .’” (id. (quoting Ex. 1001, 3:57–60); see Ex. 1002 ¶ 19); see Phillips, 415

F.3d at 1315 (“[T]he specification ‘is always highly relevant to the claim

construction analysis. Usually, it is dispositive; it is the single best guide to

the meaning of a disputed term.’”). Further, Patent Owner does not provide

an alternative construction for either term. See Prelim. Resp. 20. Given the

clarity of the definitions set forth in the Specification, we are persuaded that

the construction of these terms would not differ significantly regardless the

standard applied. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

Therefore, to the extent necessary and for purposes of this Decision, we

adopt Petitioner’s proposed constructions of these terms.

IPR2017-00985 Patent 6,125,371

10

b. “controller”

Although Petitioner acknowledges that it argued in the related

proceeding in district court (see supra Section I.B.) that “controller” is a

nonce word and that the use of the term “controller” invokes means-plus-

function treatment under 35 U.S.C. § 112, ¶ 6, Petitioner does not argue that

“controller” is a nonce word or for means-plus-function treatment in this

proceeding. Pet. 5–6. Specifically, “[t]he Petitioner does not contend, under

the broadest reasonable interpretation standard applicable in this IPR

proceeding, that the ‘controller’ terms should be treated as means-plus-

function limitations under 35 U.S.C. § 112, ¶ 6.” Id. Nevertheless,

Petitioner states that “[u]nder the narrower Phillips claim construction

standard applicable in litigation, the ‘controller’ terms would be subject to

§ 112, ¶ 6 treatment and are indefinite.” Id. at 7 n.1.

As noted above, Patent Owner moved for district court-type

construction, e.g., Phillips claim construction, in this proceeding, and

Petitioner did not oppose Patent Owner’s motion requesting district court-

type claim construction. Thus, claims terms will be construed under district

court-type construction and, by Petitioner’s own admission, under that

construction standard, the term “controller” is subject to means-plus-

function treatment under 35 U.S.C. § 112, ¶ 6. Id.

Petitioner also argues that, given that district court-type claim

construction now is applied in this case, claim 1 is indefinite. Id. In an inter

partes review, however, a petitioner may not challenge the patentability of a

claim due to indefiniteness under 35 U.S.C. § 112, ¶ 2. See 35 U.S.C.

§ 311(b); 37 C.F.R. § 42.104(b)(2). Nevertheless, to the extent “the

differences between the claimed invention and the prior art cannot be

IPR2017-00985 Patent 6,125,371

11

determined”, we would not institute review of such a claim. Blackberry

Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 8

(PTAB Mar. 7, 2014) (Paper 65) (“Consequently, the differences between the

claimed invention and the prior art cannot be determined. In this

circumstance, the analysis begins and ends with the claims, and we do not

attempt to apply the claims to the prior art.”); see Apple Inc. v. Valencell,

Inc., Case IPR2017-00319, slip op. at 12–14 (PTAB June 12, 2017) (Paper

10) (“If the scope and meaning of the claims cannot be determined without

speculation, the differences between the challenged claims and the prior art

cannot be ascertained.”). Patent Owner contends that we apply the same

standard for determining whether a claim term is definite regardless of

whether the patent has expired or not. Prelim. Resp. 10–11. For the reasons

set forth below, we do not need to construe this claim term or determine its

definiteness.

Despite asserting that under district court-type claim construction, the

term “controller” would be subject to treatment under 35 U.S.C. § 112, ¶ 6,

Petitioner does not provide a construction according to that treatment.

Pet. 4–7. In its Reply to Patent Owner’s Preliminary Response, Petitioner

argues that the district court in the related litigation found that the term

“controller” was not subject to treatment under 35 U.S.C. § 112, ¶ 6.

Paper 14 (“Reply”), 1 (citing Ex. 2001, 10–12). Nevertheless, as we

explained to the parties, we are not bound by the claim construction of the

district court even when both of us are applying district court-type claim

construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326

(Fed. Cir. 2015) (“There is no dispute that the board is not generally bound

by a prior judicial construction of a claim term.”); see Ex. 2007, 6:18–7:6.

IPR2017-00985 Patent 6,125,371

12

Because of differences in counsel and procedures before the district court

and the Board, the parties may present different arguments and evidence to

each tribunal in support of their constructions. Consequently, even when

applying the same standard, we may arrive at different constructions. To the

extent that a ruling from the district court may be informative here, we do

not understand the district court’s opinion to represent its final determination

on claim construction. Ex. 2001, 122 (“Having found [Petitioner] fails to

overcome the presumption that ‘controller’ is not a functional term, I decline

to construe the term because no alternative constructions have been

proposed by either party.” (emphasis added)); see also Ex. 2007 10:20–11:9

(discussing the effect of a stay of the related litigation).

Petitioner further argues that “[t]he district court’s claim conclusion

regarding the ‘controller’ terms is consistent with the position taken by both

the Petitioner and the Patent Owner in the present proceeding, i.e., that the

term ‘controller’ should not be construed under 35 U.S.C. § 112 ¶ 6.”

Reply 1 (emphasis added). This statement is incorrect. Petitioner clearly

has taken the position that, if district court–type claim construction is

applied, the term “controller” must be subject to treatment under 35 U.S.C.

§ 112, ¶ 6. Pet. 7 n.1. In view of its decision not to oppose Patent Owner’s

motion for district court-type claim construction, Petitioner’s proposed

construction of the term “controller” and its statements regarding the term’s

treatment under 35 U.S.C. § 112, ¶ 6, are clearly inconsistent. Reply 2

(“Petitioner does not dispute that the Board should apply the Phillips

standard in view of Patent Owner’s unopposed motion to do so.”).

2 Our citations are to the page numbers of this document itself, rather than to the page numbers of Exhibit 2001.

IPR2017-00985 Patent 6,125,371

13

Under our Rules, “[w]here the claim to be construed contains a

means-plus-function or step-plus-function limitation as permitted under 35

U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific

portions of the specification that describe the structure, material, or acts

corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3)

(emphasis added); see 35 U.S.C. § 312(a)(4) (“the petition provides such

other information as the Director may require by regulation”); Prelim.

Resp. 12–13. Here, Petitioner asserts that, under district court-type claim

construction, the term “controller” is subject to treatment under 35 U.S.C.

§ 112, ¶ 6, but Petitioner provides no construction according to that

treatment. See Reply 1–2; Prelim. Resp. 2–3. More importantly,

Petitioner’s arguments and evidence mapping the limitations of claims 1–3

to the combined teachings of Bernstein and Rubin are not based on a means-

plus-function construction of the term “controller.” E.g., Pet. 20–21

(mapping the “time stamping controller” of claim 1 to Bernstein’s

teachings); see Prelim. Resp. 22. On this record, we need not assess whether

the term “controller” is subject to treatment under 35 U.S.C. § 112, ¶ 6, and,

if so, whether the combined teachings of Bernstein and Rubin teach or

suggest such a controller because, although Petitioner unequivocally asserts

that it is, Petitioner provides no construction of the term “controller” under

35 U.S.C. § 112, ¶ 6, for our consideration. See 37 C.F.R. § 42.104(b)(3)

(quoted above).

We will not make arguments for Petitioner, and we cannot disregard

Petitioner’s unequivocal statement regarding the construction of this claim

term. See Prelim. Resp. 15–17. The analysis of Petitioner’s arguments

regarding claims 1–3 begins and ends with Petitioner’s failure to provide

IPR2017-00985 Patent 6,125,371

14

constructions of the claim terms including “controller” under 35 U.S.C.

§ 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect

to claims 1–3 in the absence of such constructions. See Blackberry, Case

IPR2013-00036, slip op. at 8 (Paper 65).

We determine no other terms require express construction at this

time.3 See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361

(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent

necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.

Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

B. Asserted Grounds

1. Overview

Petitioner argues 8–10 of the ’371 patent are rendered obvious over

the combined teachings of Bernstein and Rubin and relies upon the

Declaration of Mr. David Klausner (Ex. 1002) to support its arguments.

Pet. 3, 35–37. For the reasons set forth below, we grant institution of inter

partes review of these claims on this ground.

2. Legal Principles

A patent claim is unpatentable under 35 U.S.C. § 103(a) if the

differences between the claimed subject matter and the prior art are such that

the subject matter, as a whole, would have been obvious at the time the

invention was made to a person having ordinary skill in the art to which said

3 According to Patent Owner, Petitioner contends before the district court that the term “time stamp counter,” which is recited in claims 2, 3, 9, and 10, also is indefinite. Prelim. Resp. 2–3, 5; see Ex. 2002, 22. However, neither party proposes a construction for this term, and we need not construe terms that are not in dispute or the construction of which is not necessary to resolve the controversy in this proceeding.

IPR2017-00985 Patent 6,125,371

15

subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406

(2007). The question of obviousness is resolved on the basis of underlying

factual determinations including: (1) the scope and content of the prior art;

(2) any differences between the claimed subject matter and the prior art;

(3) the level of ordinary skill in the art;4 and (4) objective evidence of

nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).

3. Obviousness of Claims 8–10 over the Combined Teachings of Bernstein and Rubin

a. Bernstein (Ex. 1003, Parts 1 and 2)

Bernstein is a 1987 textbook on database systems, entitled

“Concurrency Control and Recovery in Database Systems.” Bernstein

explains that “[a] database consists of a set of named data items.” Ex. 1003,

2.6 “Each data item has a value.” Id. “A database system (DBS) is a

collection of hardware and software modules that support commands to

access the database, called database operations (or simply operations).” Id.

For example, a “Read(x)” operation “returns the value stored in data item x,”

while a “Write(x, val)” operation “changes the value of x to val.” Id.

4 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 7 n.2; see Ex. 1002 ¶ 10. Petitioner’s declarant, Mr. Klausner, exceeds this assessed level. Ex. 1002 ¶¶ 1–4. At this time, Patent Owner does not propose an alternative assessment. But see Prelim. Resp. 26–28. For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s assessment. 5 Patent Owner does not present arguments or evidence of such secondary considerations in the Preliminary Response. 6 Our citations are to the page numbers of the Bernstein reference itself, rather than to the page numbers of Exhibit 1003.

IPR2017-00985 Patent 6,125,371

16

Bernstein teaches a number of techniques for addressing concurrent

access problems. Id. at 1. In particular, Bernstein explains that “[w]hen two

or more transactions execute concurrently, their database operations execute

in an interleaved fashion. That is, operations from one program may

execute in between two operations from another program. This interleaving

can cause programs to behave incorrectly, or interfere, thereby leading to an

inconsistent database.” Id. at 11. One of the techniques described in

Bernstein to provide concurrency control is referred to as “multiversion

concurrency control.” Id. at 143. “In a multiversion concurrency control

algorithm, each Write on a data item x produces a new copy (or version) of

x.” Id. Thus, when a database operation modifies the value of a data item,

the system creates a new version of that item.

“The benefit of multiple versions for concurrency control is to help

the scheduler avoid rejecting operations that arrive too late.” Id. Bernstein

explains that with multiversion concurrency control, “each transaction has a

unique timestamp,” and that “[e]ach operation carries the timestamp of its

corresponding transaction.” Id. at 153; see also id. at 5 (“transactions that

write into the database (called update transactions or updaters.)”). For

example, as noted above, each Write operation produces a new copy or

version of x (id. at 143), and the new version is “labeled by the timestamp of

the transaction that wrote it.” Id. at 153.

Bernstein acknowledges that “[a]n obvious cost of maintaining

multiple versions is storage space. To control this storage requirement,

versions must periodically be purged or archived.” Id. at 143–44. Bernstein

explains that versions may be purged or archived when the system has run

out of storage space. In particular, Bernstein teaches that:

IPR2017-00985 Patent 6,125,371

17

Eventually, the scheduler will run out of space for storing intervals, or the [data manager] will run out of space for storing versions. At this point, old versions and their corresponding intervals must be deleted. To avoid incorrect behavior, it is essential that versions be deleted from oldest to newest.

Id. at 154.

b. Rubin (Ex. 1004)

Rubin, entitled “Logical Event Notification Method and Apparatus,”

discloses a technique for monitoring devices and programs in a computer

network for certain events (such as running out of storage space), and

notifying other programs that those events have occurred. Ex. 1004,

Abstract. Rubin’s Figure 1 is reproduced below.

Figure 1 depicts “a schematic of a logical event notification flow from an

operating program, through the alert database to a receiving program.” Id. at

2:66–68. Operating programs 10, 12, and 14 perform functions for

controlling devices or are controlled by devices or the network. Id. at 3:11–

12. “The operating program is the source of the event; it may be referred to

IPR2017-00985 Patent 6,125,371

18

as the source program. As programs operate on the network, logical events

occur.” Id. at 3:12–14; see also id. at 4:64–65 (“Any program operating on

the network may become a source program.”). Rubin teaches a variety of

logical events that may be produced by source programs. Id. at 2:51–53 (“A

further advantage of the invention is that the event triggering the notification

in the operating program is software defined.”).

In particular, Rubin teaches that the logical events may include “disk

events, such as, ‘disk full,’ ‘disk approaching a threshold full level,’ ‘disk

error,’ ‘failure in reading disk,’ ‘failure to write data to disk,’ or the like.”

Id. at 6:43–49. Once the operating program detects a logical event, it

invokes alert database 16. Id. at 3:15–24. Alert database 16 maintains a

record of which programs receive notification of the event, i.e., receiving

programs 18, 20, and 21. Id. at 3:25–34. While receiving programs 18 and

20 notify a user (id. at 3:38–41) or a system administrator (id. at 3:54–56) of

the occurrence of an event, other receiving programs 21 perform other

functions.

For example, “[o]ther receiving programs 21 may store the event or

take action based on the event type[.]” Id. at 3:56–58. That action can

include automatically deleting older programs when Rubin’s system

determines that the data stored on the disk has reached, exceeds, or is

approaching a threshold amount.

In one embodiment of the invention, the system administrator is automatically alerted whenever the quantity of data on the disk exceeds a threshold amount. The administrator may then take action to conserve disk space or delete programs. The program may automatically delete the oldest versions of some programs to obtain more disk space. The program may

IPR2017-00985 Patent 6,125,371

19

send mail to users using significant disk space and ask them to clean-up [] their databases and remove unnecessary data.

Id. at 5:24–32 (emphasis added).

c. Independent Claim 8

Petitioner provides a detailed mapping of the limitations of claim 1 on

the software and hardware and functionality taught by Bernstein and Rubin.

Pet. 15–34; see Ex. 1002 ¶¶ 41–59. Because, as noted above (see supra

Section II.A.3.b.), Petitioner fails to provide a means-plus-function

construction of the “controller” terms of claim 1, Petitioner cannot show that

the limitations of claims 1–3 are taught or suggested by the combined

teachings of Bernstein and Rubin.

Nevertheless, Petitioner maps the limitations of claim 1 to those of

claim 8. Pet. 35–36; see Ex. 1002 ¶ 62. Claim 8 is directed to “[a] method

of operating a processing system for use with a database of data records, said

database stored in a memory” and does not recite the “controllers” of

claim 1. Ex. 1001, 9:44–45. Consequently, Petitioner argues that “the

method steps recited in claim 8 are identical to the functions of the

controllers recited in claim 1” and that, “for the reasons discussed for claim

1, claim 8 would have been obvious over Bernstein in view of Rubin.”

Pet. 36; see Ex. 1002 ¶ 63. On this record and for purposes of this Decision,

we agree.

Claim 8 recites “[a] method of operating a processing system for use

with a database of data records, said database stored in a memory.”

Petitioner argues Bernstein teaches database systems, which store data items

in memory. Pet. 15–16 (citing Ex. 1003, 2); see Ex. 1002 ¶ 41. As noted

above (see supra Section II.A.3.a.), we construe “data record” to mean “‘any

IPR2017-00985 Patent 6,125,371

20

file, entry, record, field, item and other data associated with at least one

database (or any suitable data repository for that matter) . . .’” (Pet. 4

(quoting Ex. 1001, 3:57–60 (emphasis added)); see Ex. 1002 ¶ 19). Thus,

we are persuaded that Bernstein teaches the preamble of claim 8.

Claim 8 further recites the step of “assigning a time stamp to

transactions to be performed on said database.” Bernstein teaches that “[a]s

for all [timestamp ordering (“TO”)] schedulers, each transaction has a

unique timestamp, denoted ts(Ti). Each operation carries the timestamp of

its corresponding transaction. Each version is labeled by the timestamp of

the transaction that wrote it.” Ex. 1003, 153 (quoted at Pet. 18); see

Ex. 1002 ¶ 45. Thus, we are persuaded that Bernstein teaches this limitation

of claim 8.

In addition, claim 8 recites the step of “creating multiple versions of

ones of said data records affected by said transactions that are update

transactions.” According to Petitioner, Bernstein teaches that “when a

‘Write’ operation is to be performed on an item in the database, the software

generates a new version of the item.” Pet. 21. Thus, “[i]n a multiversion

concurrency control algorithm, each Write on a data item x produces a new

copy (or version) of x. The [data manager (“DM”)] that manages x therefore

keeps a list of versions of x, which is the history of values that the DM has

assigned to x.” Ex. 1003, 143. As discussed above, the operation “Write(x,

val) changes the value of x to val.” Pet. 22 (quoting Ex. 1003, 2); see

Ex. 1002 ¶¶ 48, 49. Although Bernstein refers to an “operation,” rather than

a “transaction,” we credit Petitioner’s declarant’s testimony that this

difference is immaterial. Ex. 1002 ¶ 50; see Ex. 1003, 2 (referring to

IPR2017-00985 Patent 6,125,371

21

“database operations (or simply operations)”).7 Thus, we are persuaded

that Bernstein teaches this limitation of claim 8.

Moreover, claim 8 recites the step of “monitoring a measurable

characteristic of said memory.” With regard to this step:

The Petitioner acknowledges that Bernstein does not explain how, from a technical standpoint, the system in Bernstein determines that it has “run out of space” for storing intervals or versions. It is possible that the patent owner might take a narrow position on the “monitoring” limitation in order to assert that Bernstein alone does not sufficiently disclose the claimed “monitoring” feature, or could argue for a different interpretation of the teachings of Bernstein. For this reason, this Petition also cites to the Rubin reference. Rubin clearly and explicitly discloses the claimed monitoring feature and, as explained above, is readily combinable with the database system in Bernstein.

Pet. 25; see Ex. 1002 ¶ 53. Thus, Petitioner argues that Bernstein’s teaching

that the scheduler or the database manager eventually may run out of space

for storing and that older versions of stored intervals may need to be deleted

(Ex. 1003, 154), may supply this limitation. According to Patent Owner,

however, Petitioner relies upon the combined teachings of Bernstein and

Rubin to teach this limitation. See Prelim. Resp. 29 n.4 (discussing

obviousness over Bernstein alone). In particular, Petitioner argues that

Rubin discloses a technique of “monitoring logical events on a network and notifying programs desiring information on specified types of events.” [Ex. 1004, 1:68–2:2.] These logical events can include “disk events, such as, ‘disk full,’ ‘disk approaching a threshold full level,’ ‘disk error,’ ‘failure in

7 We note, however, that Bernstein also teaches “transactions that write into the database” are “called update transactions or updaters.” Ex. 1003, 5.

IPR2017-00985 Patent 6,125,371

22

reading disk,’ ‘failure to write data to disk,’ or the like.” [id. at 6:43–49.]

Id. at 25–26 (underlining added by Petitioner). Further, Rubin teaches that

“the system administrator is automatically alerted whenever the quantity of

data on the disk exceeds a threshold amount.” Ex. 1004, 5:24–26 (emphasis

added). Thus, because Rubin teaches determining “the quantity of data on

the disk” and comparing that quantity to a threshold amount, we are

persuaded that Rubin teaches “monitoring a measurable characteristic of said

memory.” See id.

Petitioner argues that a person of ordinary skill in the art would have

had reason to combine the teachings of Bernstein and Rubin to achieve this

limitation. Pet. 28–32; see Ex. 1002 ¶¶ 70–76. In particular, Bernstein

teaches that:

Eventually, the scheduler will run out of space for storing intervals, or the [database manager] will run out of space for storing versions. At this point, old versions and their corresponding intervals must be deleted. To avoid incorrect behavior, it is essential that versions be deleted from oldest to newest.

Ex. 1003, 154 (emphasis added). Thus, Bernstein teaches deleting older

versions only after the scheduler or the database manager has run out of

storage space. Id.; see also Pet. 29; see Ex. 1002 ¶¶ 74–76. As Petitioner’s

declarant notes, Rubin, however, teaches notifying a “write” program when

a “disk [is] approaching a threshold full level.” Ex. 1002 ¶ 76 (citing

Ex. 1004, 5:24–32, 6:44–45). Petitioner’s declarant further testifies that

“Rubin offers a significant improvement of notifying the ‘write’ program of

a potential shortage of storage space before storage space has actually run

out.” Id. (emphasis added); see KSR, 550 U.S. at 417 (“[I]f a technique has

IPR2017-00985 Patent 6,125,371

23

been used to improve one device, and a person of ordinary skill in the art

would recognize that it would improve similar devices in the same way,

using the technique is obvious unless its actual application is beyond his or

her skill.”); In re Ethicon, 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The

normal desire of artisans to improve upon what is already generally known

can provide the motivation to optimize variables such as the percentage of a

known polymer for use in a known device.”).

Patent Owner contends that a person having the level of skill in the art

identified by Petitioner and its declarant would not have had the necessary

skills to modify Bernstein’s system in view of Rubin’s teachings to achieve

the recited method. Prelim. Resp. 26–28. On this record, however, we

credit Mr. Klausner’s testimony that a person of ordinary skill in the art

would have reason (see Ex. 1002 ¶¶ 72, 76) and the necessary understanding

(see id. ¶¶ 71, 74) to combine the teachings of Bernstein and Rubin in the

manner proposed. Moreover, Patent Owner relies on a Wikipedia posting

(Ex. 2005) in support of its contentions. Prelim. Resp. 27. Initially, we note

that the Wikipedia posting “was last edited on 24 May 2017, at 22:11,”

many years after the effective filing date of the ’371 patent. Ex. 2005, 11.

Given known deficiencies in Wikipedia postings, on this record and for this

preliminary proceeding, we do not credit this evidence over the testimony of

Petitioner’s declarant. See Ex parte Daum, Appeal No. 2011-012714, slip

op. at 12–13 (PTAB Sept. 16, 2014) (The Board stated that “Wikipedia, as a

website, can be an ‘unreliable source of information’ for purposes of

resolving legal disputes, because (1) it is not peer reviewed; (2) the authors

are unknown; and (3) apparently anyone can contribute to its content.”).

Thus, for the reasons set forth by Petitioner (Pet. 28–32), we are persuaded

IPR2017-00985 Patent 6,125,371

24

that a person of ordinary skill in the art would have had reason to combine

the teachings of Bernstein and Rubin in the manner proposed by Petitioner.

Patent Owner also contends the combined teachings of Bernstein and

Rubin would result in Rubin being unable to perform the same function that

it previously performed. Prelim. Resp. 28. In particular, Patent Owner

contends that Rubin requires the removal of unnecessary data from the data

base, rather than merely the oldest data. Id. at 29–30 (citing Ex. 1004, 5:24–

34). We disagree.

First, we note that Rubin teaches that “[t]he program may

automatically delete the oldest versions of some programs to obtain more

disk space. The program may send mail to users using significant disk space

and ask them to clean-up [] their databases and remove unnecessary data.”

Ex. 1004, 5:28–32 (emphases added). Thus, we understand Rubin to

describe two optional actions that may be taken to “conserve disk space or

delete programs.” Id. at 5:27–28 (emphasis added). Second, the quoted text

describes only one embodiment of Rubin’s invention (id. at 5:24–26), and,

on this record, we are not persuaded that both optional actions must be

included in every embodiment of Rubin. Thus, we are not persuaded that

the combined teachings of Bernstein and Rubin would render Rubin

unsuitable for its intended purpose or change its principle of operation.8

8 Patent Owner also contends that the Petitioner fails to demonstrate that the combined teachings of Bernstein and Rubin teach or suggest the “controllers” of claims 1–3. Prelim. Resp. 22–26. Because we deny institution of review of claims 1–3 for other reasons (see supra Section II.A.3.b.) and because claims 8–10 do not recite “controllers,” we need not discuss these contentions further.

IPR2017-00985 Patent 6,125,371

25

Finally, claim 8 recites the step of “deleting ones of said multiple

versions of said ones of said data records in response to said time stamp and

said measurable characteristic thereby to increase a capacity of said

memory.” Petitioner argues that Bernstein teaches deleting old versions of

data items and their corresponding intervals to recover storage space. Pet.

32 (citing Ex. 1003, 154). Further, because the deletions may be based on

the age of the version, as well as the storage space available, Petitioner

argues the combined teachings of Bernstein and Rubin teach that such

deletions are “in response to said time stamp and said measurable

characteristic.” Id. at 32–33 (citing Ex. 1003, 154; Ex. 1004, 5:24–32); see

Ex. 1002 ¶ 57; see also Ex. 1004, 153 (“largest,” i.e., latest, time stamp),

161 (“smallest,” i.e., earliest time stamp). Moreover, Petitioner argues that

these deletions are intended to “increase [the] capacity of said memory.”

Pet. 34 (citing Ex. 1003, 154, 161; Ex. 1004, 5:28–30); see Ex. 1002 ¶ 58.

We agree.

On this record, we are persuaded that Petitioner has established a

reasonable likelihood of prevailing in showing that claim 8 is unpatentable

under 35 U.S.C. § 103(a) as obvious over the combined teachings of

Bernstein and Rubin.

d. Dependent Claims 9 and 10

Claim 9 depends directly from claim 8, and claim 10 depends directly

from claim 9. Ex. 1001, 9:59–62. Specifically, claim 9 recites that in the

method of claim 8 “said time stamp is generated as a function of a time

stamp counter,” and claim 10 recites that the method of claim 9 further

comprises “the step of incrementing said time stamp counter.” Petitioner

IPR2017-00985 Patent 6,125,371

26

argues that these claims are rendered obvious over the combined teachings

of Bernstein and Rubin. Pet. 35, 37; see Ex. 1002 ¶ 46 n.1. We agree.

Initially, we note that the additional limitations of claims 2 and 3 are

essentially identical to those of claims 9 and 10. Pet. 37. Petitioner argues

that Bernstein teaches that the transaction manager (“TM”) usually generates

a timestamp by using an incremented counter. Id. at 35 (referring to claims

2 and 3). In particular, Bernstein teaches that “[u]sually, TMs assign

timestamps to transactions. If there is only one TM in the entire system,

then it can easily generate timestamps by maintaining a counter. To

generate a new timestamp, it simply increments the counter and uses the

resulting value.” Ex. 1003, 85 (emphases added). Petitioner argues that the

quoted portion of Bernstein teaches the use of a counter recited in claim 9

and the incrementing of that counter recited in claim 10. Pet. 34–35, 37; see

Ex. 1002 ¶¶ 64, 65. At this time, Patent Owner does not contest Petitioner’s

arguments and evidence with respect to claim 9 and 10.

On this record, we are persuaded that Petitioner has established a

reasonable likelihood of prevailing in showing that claims 9 and 10 are

unpatentable under 35 U.S.C. § 103(a) as obvious over the combined

teachings of Bernstein and Rubin.

III. CONCLUSION

For the foregoing reasons, we are persuaded that Petitioner has shown

a reasonable likelihood of prevailing in showing that claims 8–10 of the ’371

patent would have been obvious over the combined teachings of Bernstein

and Rubin. We have not made a final determination with respect to the

patentability of any challenged claim or the construction of any claim term.

IPR2017-00985 Patent 6,125,371

27

IV. ORDER

Accordingly, it is:

ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes

review is hereby instituted as to claims 8–10 of the ’371 patent on the

following ground:

Claims 8–10 as unpatentable under 35 U.S.C. § 103(a) as rendered

obvious over the combined teachings of Bernstein and Rubin;

FURTHER ORDERED that no other ground of unpatentability is

authorized for this inter partes review as to these or any other claims of the

’371 patent; and

FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and

37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial

will commence on the entry date of this decision.

IPR2017-00985 Patent 6,125,371

28

For PETITIONER: Heidi L. Keefe Phillip Morton Andrew C. Mace COOLEY LLP [email protected] [email protected] [email protected] [email protected] For PATENT OWNER: Kenneth J. Weatherwax Nathan Lowenstein LOWENSTEIN & WEATHERWAX LLP [email protected] [email protected]