Microsoft Corporationv.Enfish, LLC

Patent Trial and Appeal Board

Mar 2, 2015

09035187 (P.T.A.B. Mar. 2, 2015)

Trials@uspto.gov Paper 63
571.272.7822 Entered: March 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

ENFISH, LLC,
Patent Owner.
____________

Case IPR2013-00560
Patent 6,163,775

Before THOMAS L. GIANNETTI, BRYAN F. MOORE,
and BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Microsoft Corporation (“Microsoft”) filed a petition to institute an
inter partes review of claims 17–23 and 47–53 of U.S. Patent No. 6,163,775
(“the ’775 patent”). Paper 1 (“Pet.”). We instituted trial for claims 17–23
and 47–53 of the ’775 patent on certain grounds of unpatentability alleged in
the Petition. Paper 14 (“Decision to Institute” or “Inst. Dec.”).
After institution of trial, Patent Owner, Enfish, LLC (“Enfish”), filed a
Patent Owner Response, along with a Declaration by Dr. H.V. Jagadish
(“Jagadish Declaration”).
On September 16, 2014, Enfish filed an unopposed motion to correct
typographical errors in both papers and filed therewith the corrected Patent
Owner Response (“PO Resp.,” Paper 40) and the corrected Jagadish
Declaration (Ex. 2007). We grant Enfish’s motion to correct both papers.1
Microsoft filed a Reply (“Pet. Reply”). Paper 35.
A consolidated hearing for IPR2013-00559, IPR2013-00560,
IPR2013-00561, IPR2013-00562, and IPR2013-00563 was held on
December 3, 2014. The transcript of the consolidated hearing has been
entered into the record. Paper 62 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Microsoft has shown by a preponderance of the evidence that claims
47–50 of the ’775 patent are unpatentable. Microsoft has not shown that

1 For ease of reference, throughout we refer to Enfish’s corrected Patent
Owner Response (Paper 40) and corrected Jagadish Declaration (Exhibit
2007), both filed on September 16, 2014.
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claims 51–53 of the ’775 patent are unpatentable. For the reasons discussed
below, we are unable to reach a determination on the alleged grounds of
unpatentability over prior art for claims 17–23. Accordingly, we terminate
this proceeding with respect to claims 17–23 under 37 C.F.R. § 42.72.
B. Additional Proceedings
In addition to this petition, Microsoft has filed a petition challenging
the patentability of claims 1–16, 24–46, and 54–60 of the ’775 patent. See
Microsoft Corp. v. Enfish, LLC, IPR2013-00559; IPR2013-00561.
Microsoft indicates that claims of the ’775 patent have been asserted against
Microsoft in Enfish LLC v. Microsoft Corporation, et al., Case No. 12-cv-
7360 MRP, in the Central District of California (“California case”). Pet. 2.
Microsoft further contends that a final judgment against Enfish has been
entered in the California case. Ex. 1168.
Microsoft also has filed two petitions challenging the patentability of
claims 1–60 of U.S. Patent 6,151,604 (“the ’604 patent”).2 See Microsoft
Corp. v. Enfish, LLC, IPR2013-00562; IPR2013-00563.
C. The ’775 Patent
The ’775 patent (Ex. 1101) is titled, “Method and Apparatus
Configured According to a Logical Table Having Cell and Attributes
Containing Address Segments,” and generally relates to a system and
method for data storage, manipulation, and retrieval in a logical table of a
database. This table is a logical structure, not a physical structure, stored in
the memory. Ex. 1101, 6:39–41.

2 The ’604 patent and the ’775 patent both issued from continuations of
Application No. 08/383,752, filed March 28, 1995, now U.S. Patent No.
5,729,730. Pet. 5.
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Figure 3 is reproduced below:

Figure 3 of the ’775 patent illustrates a structure of a logical table.
Ex. 1101, 3:36–37. As depicted by Figure 3 of the ’775 patent, above, table
100 is defined by rows 108, 110, 138, 136, 135, and 140, and columns 120,
122, 124, and 126. Id. at Fig. 3. The intersection of a row and a column
defines a cell in the table. Id. at 6:48–49. Each column corresponds to an
attribute spanning various records. Id. at 6:46. An attribute is a single class
description, such as an employer, denoted in column 126 of Figure 3, for
example, by the text “Employed By.” Id. at 7:25–26.
Each row corresponds to a record spanning various attributes. Ex.
1101, 6:45–46. For example, row 110 corresponds to a company as shown
in cell 130. Id. at 6:62–64.
D. Illustrative claims
Of the challenged claims, the independent claims are 17 and 47. Each
of claims 18–23 depend, directly or indirectly, from claim 17. Claims 48–53
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depend, directly or indirectly, from claim 47. Claim 47 illustrates the
claimed subject matter and is reproduced below:
47. A method for storing and retrieving data in a
computer system having a memory, a central processing unit,
and a display, comprising the steps of:
configuring said memory according to a logical table,
said logical table including:
a plurality of cells, each said cell having a first address
segment and a second address segment;
a plurality of attribute sets, each said attribute set
including a series of cells having the same second address
segment, each said attribute set including an object
identification number (OID) to identify each said attribute set;
a plurality of records, each said record including a series
of cells having the same first address segment, each said record
including an OID to identify each said record; and
indexing data stored in said table.
E. The Prior Art References Supporting Alleged Unpatentability
Microsoft relies on the following references:
MICROSOFT® VISUAL BASIC™ PROGRAMMING SYSTEM FOR
WINDOWS™ VERSION 3.0 (1993) (“Visual Basic,” Ex. 1104).
Jensen et al., U.S. Patent No. 5,615,362 (issued Mar. 25, 1997)
(“Jensen,” Ex. 1106).
GERARD SALTON & MICHAEL J. MCGILL, INTRODUCTION TO MODERN
INFORMATION RETRIEVAL (1983) (“Salton,” Ex. 1107).
Smith et al., U.S. Patent No. 5,181,162 (issued Jan. 19, 1993) (“Smith
’162,” Ex. 1108).
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F. The Pending Grounds of Unpatentability
The following chart summarizes Microsoft’s patentablilty
challenges:
Reference[s] Basis Claims Challenged
Visual Basic § 102(b) 17, 18, 47, and 48
Visual Basic and Jensen § 103 19, 20, 49, and 50
Visual Basic and Salton § 103 23 and 53
Visual Basic, Jensen, and
Salton
§ 103 21 and 51
Visual Basic and Smith ’162 § 103 22 and 52

In support of the above-referenced grounds of unpatentability,
Microsoft relies on the Declaration of Dr. Hosking (Ex. 1119, “Hosking
Declaration”).
II. CLAIM CONSTRUCTION
A. Legal Standard
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC., No. 14-01301, slip op. at 16, 19 (Fed.
Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation.”). Under the broadest reasonable construction
standard, claims are to be given their broadest reasonable interpretation
consistent with the specification, and the claim language should be read in
light of the specification as it would be interpreted by one of ordinary skill in
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the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim, if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
specification.”).
B. Overview of the Parties’ Positions
Microsoft contends that this case involves a computer-implemented
invention. Pet. 6. Microsoft also contends that the challenged independent
claims invoke means-plus-function claiming, but the ’775 patent fails to
disclose an algorithm, which is an issue under § 112, sixth paragraph, that
cannot be addressed in this proceeding. Pet. 11. In the Decision to Institute,
we invited Enfish to direct us to the specific portions of the specification that
clearly link or associate a computer program or algorithm to the function
corresponding to the claimed means. Inst. Dec. 10. For the reasons
discussed below, we determine that Enfish in its response does not identify
sufficient corresponding structure, as required under 35 U.S.C. § 112, sixth
paragraph, for the “means for configuring said memory according to a
logical table,” recited in claim 17.
Regarding terms in the method claims, in the Decision to Institute, we
provided constructions for “logical table,” “object identification number,”
and “attribute set” which are shown in the table below. Inst. Dec. 10–13.
We also determined that no express construction is needed for the following
terms: “memory,” “a cell having a first address segment and a second
address segment,” and “records.” Inst. Dec. 14.

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Claim Term or Phrase Construction in the Decision to Institute
“logical table” “[W]e construe the term “table” to mean: ‘a
structure of a database comprising rows and
columns.’” Inst. Dec. 11. “We determine no
express construction of ‘logical’ is needed for
this decision.” Id.
“object identification
number”
“[W]e construe ‘object identification number’
in light of the specification to mean: ‘an array
of bits that define an object.’” Id. at 12.
“attribute set” “[A] name or characteristic corresponding to a
column.” Id.

Enfish contends that our construction for “object identification
number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention
below. Enfish also provides a proposed construction for “anchor,” recited in
claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has
not met its burden with respect to these claims for other reasons, no
construction of this term for the purposes of this Decision is necessary.
We discern no reason, based on the complete record now before us, to
change our constructions in the Decision to Institute of “logical table,”
“object identification number,” and “attribute set.”
C. Analysis of the Parties’ Claim Construction Positions
1. Means for configuring said memory according to a logical
table
Independent claim 17 includes the limitation “means for configuring
said memory according to a logical table.” In the Decision to Institute, we
agreed with Microsoft that under the broadest reasonable interpretation, the
function for the means for configuring is “configuring memory according to
a logical table.” Inst. Dec. 10. Additionally, we considered the
corresponding structure for the recited function as including a general
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purpose computer. Id. Enfish does not challenge persuasively either of
these determinations; however, Enfish identifies portions of the specification
that Enfish contends provide algorithmic support for the recited function.
PO Resp. 23–25. In particular, Enfish contends that the ’775 patent
discloses a four-step algorithm that is linked to the recited function of
configuring memory according to a logical table. Id.
“[T]he corresponding structure for a § 112 ¶ 6 claim for a computer-
implemented function is the algorithm disclosed in the specification.”
Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241,
1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification
must clearly link or associate a computer program or algorithm to the
function corresponding to the claimed means. See Medical Inst. & Diag.
Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons
set forth below, we conclude that the four steps and other ’775 patent
specification portions identified by Enfish do not describe an algorithm for
the recited function of “configuring memory according to a logical table.”
We further conclude that Enfish has not clearly linked or associated the
recited function to the four steps or the portions of the ’775 patent
specification that Enfish identifies.
For algorithmic support, Enfish identifies disparate excerpts of the
’775 patent specification, which do not link or associate clearly a computer
program or algorithm to the function corresponding to the claimed means for
configuring said memory according to a logical table. For example, the first
step, “[c]reate, in a computer memory, a logical table” (PO Resp. 23–24)
appears to be similar to the recited function of configuring memory
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according to a logical table, but the first step is not found in the ’775 patent
specification. Additionally, none of the portions of the ’775 patent
specification that Enfish cites for this first step provide an algorithm or
computer program for performing the recited function of “configuring
memory according to a logical table” or clearly link or associate any
algorithm or program to this recited function. PO Resp. 24 (citing Ex. 1101,
Abstract, 2:59–63, 6:38–46, Figs. 1, 3, 9). These portions describe that an
already-formed table has rows and columns, without describing how
memory is configured to create a logical table having rows and columns.
Ex. 1101, 2:59–63. One portion states that memories “need not store” the
table contiguously, but fails to describe an algorithm or computer program
for configuring memory such that a logical table is not stored contiguously.
Id. at 6:38–46.
Enfish’s three remaining steps and the other ’775 patent specification
portions identified by Enfish fail to remedy these deficiencies. The second
step is: “[a]ssign each row and column an object identification number
(OID) that, when stored as data, can act as a pointer to the associated row or
column.” PO Resp. 24. One of the portions of the ’775 patent specification
cited by Enfish for the second step indicates “the system must generate a
unique OID when columns and rows are formed.” Ex. 1101, 8:15–16. The
remainder of the identified portions relate to assigning an OID or indicate
that an OID “may be used” as a pointer, without describing an algorithm for
forming columns and rows of a table or showing how assigning an OID
relates to steps for forming columns and rows. Ex. 1101, Abstract, 2:60–61,
6:50–57, 7:1–2, 8:18–60, Figs. 3, 4. Additionally, the identified portions
discuss assigning a numeric value to an OID in the form of a bit array, but
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fail to describe how to configure memory such that an OID may be used as a
pointer. Id.
The third step is a feature of claim 1 (PO Resp. 11). That claim is not
challenged in this proceeding. Furthermore, the portions of the ’775 patent
specification cited by Patent Owner for the third step (PO Resp. 25 (citing
Ex. 1101, Abstract, 2:66–3:2, 6:47–48, 7:25–31, Fig. 3)) indicate that a table
has a row that corresponds to columns, such as a header row, which is a
generic feature of an already-formed table. These ’775 patent specification
portions identified by Enfish (id.), however, do not describe how to form a
table with this feature or link or associate this feature to the recited function.
The fourth step, i.e., storing and accessing data in cells (PO Resp. 25),
is performed in an already-configured table and, therefore, occurs after the
recited function of configuring a table has occurred. Nonetheless, the ’775
patent specification portions identified by Enfish (id. (citing Ex. 1101,
Abstract, 2:63–66, 6:48–49, 6:61–62, 7:9–10, 7:23–24, 11:52–62, Fig. 10))
suffer from the same deficiencies noted above.
We conclude that the four steps and ’775 patent specification portions
identified by Enfish do not describe an algorithm for configuring memory in
accordance with the claimed table. The portions of the ’775 patent
specification identified by Enfish describe an already-formed table having
generic characteristics, such as columns, rows, identifiers, and a header row.
See, e.g., Ex. 1101, Fig. 3. The description, however, does not disclose any
algorithm or computer program for forming this table. Additionally, the
description identified by Enfish is not linked or associated clearly with the
recited function of “configuring memory according to a logical table.”
Enfish also relies on Dr. Jagadish’s Declaration to show that the ’775
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patent specification provides an algorithm and clearly links the algorithm to
the recited function. PO Resp. 23–25 (citing Ex. 2007 ¶¶ 68–76). The
Jagadish Declaration, however, relies on similar portions of the ’775 patent
specification to those cited in Patent Owner’s Response. For the reasons
given, the Jagadish Declaration does not support Enfish’s assertion. Dr.
Jagadish further asserts, “[i]t is also my opinion that one of ordinary skill in
the art would understand how to implement those algorithm steps using
techniques and resources that were available at the time the ’775 Patent was
filed.” Ex. 2007 ¶ 69. Enfish, however, cannot rely on the knowledge of
one skilled in the art to address the deficiencies noted above. See Function
Media, LLC v. Google Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (“Having
failed to provide any disclosure of the structure . . . FM cannot rely on the
knowledge of one skilled in the art to fill in the gaps.”)
Because we conclude that the four steps and ’775 patent specification
portions identified by Enfish do not describe an algorithm for configuring
memory in accordance with the claimed table, we terminate this proceeding
with respect to the claims that recite this means-plus-function limitation. As
explained in BlackBerry Corporation v. Mobile Media Ideas, LLC, Case
IPR2013-00036 (PTAB Mar. 7, 2014) (Paper 65), the specification must
disclose enough of a specific algorithm to provide the necessary structure
under § 112, sixth paragraph. In the circumstance when the specification of
the challenged patent lacks sufficient disclosure of structure under 35
U.S.C. § 112, sixth paragraph, the scope of the claims cannot be determined
without speculation and, consequently, the differences between the claimed
invention and the prior art cannot be ascertained. Id. For the reasons given,
we determine that independent claim 17 is not amenable to construction and,
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thus, we terminate this proceeding with respect to claim 17 under 37
C.F.R. § 42.72. Because claims 18–23 depend, directly or indirectly, from
claim 17, we also terminate this proceeding with respect to these claims
under 37 C.F.R. § 42.72.
2. Other Means-Plus-Function Terms
Because we determine that this proceeding should be terminated as to
claims 18–23 for the reasons discussed above, we need not construe other
means-plus-function terms appearing in those claims for the purposes of this
Decision.
3. Object Identification Number (OID)
Independent claim 47 recites “object identification number (OID)”
and “OID.” In the Decision to Institute, we construed “object identification
number” in light of the specification to mean: “an array of bits that define
an object.” Inst. Dec. 12 (citing Ex. 1101, 3:38–40, 8:44–46).
Enfish “agrees in principle” with our construction, but contends that
the construction is incomplete. PO Resp. 15. Enfish contends that “OID”
should be defined further as “a unique, immutable, and system-generated
value that identifies an object.” Id. Microsoft contends that Enfish seeks to
read into the claims extraneous limitations that are unsupported by either
intrinsic or extrinsic evidence. Pet. Reply 2. Microsoft additionally
contends that Enfish’s proposed construction does not provide an
appropriate context for the additional limitations. See, e.g., Pet. Reply 3.
At the heart of Enfish’s contention is an assertion that an OID will not
function properly if it is not unique, immutable, and system generated. PO
Resp. 16–21. For example, Enfish, relying on Dr. Jagadish, contends that an
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OID must be a unique value because “if an OID were not unique the
database would be non-functional because objects could not be reliably
retrieved.” PO Resp. 16 (citing Ex. 2007 ¶ 51). Dr. Jagadish cites to a
portion of the specification stating that the OID is used for “exact retrieval”
and states that without uniqueness, retrieval using an OID will result in more
than one object. Ex. 2007 ¶ 51 (citing Ex. 1101, 1:60–64).
We determine that Enfish’s proposed construction of OID introduces
requirements beyond what is needed for an OID to identify data and retrieve
data from memory. Enfish, for example, contends that “an OID is unique
among all rows and columns of the logical table.” PO Resp. 29.
Additionally, claim 47 recites that an OID is included “to identify” each
attribute set and each record, but does not specifically recite using an OID to
retrieve data from memory.
Microsoft advances additional contentions regarding why Enfish’s
proposed construction should not be adopted. For example, Microsoft
contends that Enfish’s “unique” OID requirement would conflict with the
patent, which describes a row in a table with an OID that has the same value
as the OID of a column in the same table. Pet. Reply 3 (citing Ex. 1101, Fig.
3). Microsoft also contends that “immutable” should not be imported into
the construction of OID because the term is absent from the specification,
claims, and file history, and the specification is devoid of disclosure relating
to immutability of an OID. Pet. Reply 3–4. As further support, Dr. Hosking
states that an OID may change in certain circumstances and still retrieve
information reliably. Ex. 1143 ¶¶ 21, 22.
We determine that adopting Enfish’s proposed construction without
further context would create ambiguity. Additionally, limitations are not to
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be read into the claims from embodiments in the specification. See In re
Van Geuns, 988 F.2d at 1184. Furthermore, we agree with Microsoft that
Enfish’s reliance on extrinsic evidence is misplaced. Enfish, for example,
relies on excerpts of “text books” (PO Resp. 20) for its contention that an
OID is “immutable,” without showing sufficiently that the definition
ascertained from these excerpts of extrinsic evidence is consistent with the
definition that would be ascertained by reading the patent documents.
We, therefore, determine that the construction of “OID” in the
Decision to Institute should not be changed.
III. ANALYSIS
A. Alleged Anticipation of Claim 47 by Visual Basic
For the reasons given below, after consideration of the arguments in
Enfish’s Patent Owner Response, and the evidence cited therein, we
conclude that Microsoft has shown, by a preponderance of the evidence, that
claim 47 is unpatentable as anticipated by Visual Basic.
1. Visual Basic
Visual Basic describes a programming system for the Windows™
operating system that enables programmers to create databases.
Ex. 1104, PF 1, PG 453.3 The programming system uses objects to represent
tables of a database. Id. at PF 47. As described in Visual Basic, a table
object is a logical representation of a physical table with records (rows) and
fields (columns). Id. at LR 558.

3 Citations in this decision to Exhibit 1104 refer to the volumes
Programmer’s Guide (PG), Language Reference (LR), and Professional
Features (PF), respectively, as well as the page number within each volume.
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Visual Basic also describes adding an index to a database, “[a]dding
an index to your database can increase the speed with which you get access
to information.” Ex. 1104, PF 37. Visual Basic provides an example of an
index with key fields Name, Last Name, City, and Zip Code. Id. at 38.
2. Claim 47
We have reviewed Microsoft’s anticipation argument, supporting
evidence, and the detailed claim analysis, which reads persuasively all
elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing
Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47,
76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are
persuaded that Microsoft has shown by a preponderance of the evidence that
Visual Basic discloses configuring memory according to a logical table, as
recited in claim 47. In the cited portions above, Visual Basic discloses
storing data in a computer formatted as a table object, which is “a logical
representation of a physical table.” Ex. 1104, LR 558. The table object
comprises “records (rows) and fields (columns).” Id.
As an additional example, we are persuaded that Microsoft has shown
by a preponderance of the evidence that Visual Basic discloses each record
and each attribute set including an OID, as recited in claim 47. In the cited
portions above, Visual Basic describes assigning a primary key and that “[a]
table’s primary key is the determining factor when testing to see if the record
is unique within the table.” Ex. 1104, PF 39. According to Visual Basic
“[Visual Basic] creates an index on the primary key of the table and uses it
to find records and to create joins between tables.” Id. Regarding each
column including an OID, according to Visual Basic, “[e]ach Field in the
Fields collection of a TableDef has a unique value in the OrdinalPosition
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property.” Id. at LR 425.
Furthermore, we are persuaded that Microsoft has shown by a
preponderance of the evidence that Visual Basic discloses indexing data
stored in the table, as recited in claim 47. In the cited portions above, Visual
Basic discloses an index object used for creating indexes to “increase the
speed” of finding records. Ex. 1104, PF 37, 38, PG 482.
Enfish contends that Microsoft has not met its burden of showing that
Visual Basic discloses OIDs. PO Resp. 29–33. Enfish’s contentions are
based on its proposed construction of OID, which we decline to adopt for the
reasons given above.
For the foregoing reasons, Microsoft has shown, by a preponderance
of the evidence, that claim 47 of the ’775 patent is anticipated by Visual
Basic.
3. Claim 48
Claim 48 depends directly from independent claim 47. Microsoft has
shown by a preponderance of the evidence that Visual Basic describes the
additional elements recited in claim 48 of searching the table for a key word
and inserting into the table a record corresponding to the key word. Pet. 46–
47 (citing Ex. 1104, PF 1, 37, PG 487, Fig. 20.6; Ex. 1119 ¶¶ 99–101).
Accordingly, Microsoft has demonstrated by a preponderance of the
evidence that claim 48 of the ’775 patent is unpatentable, under 35
U.S.C. § 102(b), as anticipated by Visual Basic.
B. Obviousness of Claims 49 and 50 in view of Visual Basic and
Jensen
For the reasons given below, after consideration of the Petition,
Enfish’s Patent Owner Response, and the evidence cited therein, Microsoft
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has shown, by a preponderance of the evidence, that each of claims 49 and
50 is unpatentable as obvious over the combination of Visual Basic and
Jensen.
1. Jensen
Jensen describes managing information retrieved from a structured
database, such as a relational database, by constructing object instances in
which each object instance has its own unique object identifier that provides
a mapping between the object instance and at least one row in the structured
database. Ex. 1106, Abstract. Jensen further describes a pointer that is an
object instance attribute containing an address, such as a physical address, of
another object instance. Id. at 7:33–35. Jensen also describes bidirectional
pointers that are set up between a department instance and related employee
instances. Id. at 10:9–11.
2. Claims 49 and 50
Claims 49 and 50 depend, directly or indirectly, from claim 48.
Microsoft has shown by a preponderance of the evidence that Visual Basic
describes the additional elements recited in claims 49 and 50. Pet. 47–52
(citing Ex. 1104, PF 69, PG 487, 489, Fig. 20.6; Ex. 1106, 7:29–35, 8:24–
29, 8:50–10:17, 10:45–48, 10:62–11:26, Fig. 2, 3; Ex. 1119 ¶¶ 385–396,
397–404).
Enfish contends that Microsoft’s motivation-to-combine arguments
are insufficient. PO Resp. 35 (citing Ex. 2007 ¶ 231). Dr. Jagadish states
“[d]ue to the dissimilarity of environments between [Visual Basic] and
Jensen (a relational database employing unidirectional pointers in an
indexing structure vs. linking related objects in an object cache), extensive
redesign of the system in [Visual Basic] would be required.” Ex.
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2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches
an object-oriented application for managing information retrieved from a
structured database, such as a relational database. Ex. 1106, Abstract.
Enfish further contends that Microsoft does not explain why one of
ordinary skill in the art would have been motivated to apply the pointers of
Jensen to the indexing structure in Visual Basic. PO Resp. 35. We,
however, are persuaded that Microsoft has shown a sufficiently articulated
reason with rational underpinning to support obviousness (Pet. 48–49 (citing
Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known
in the art at the time that indexes such as the index disclosed in [Visual
Basic], maintain object identification numbers of the cell for locating data.”
Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing
the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id.
(citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the
art at the time that Index Objects locate data by maintaining object
identification numbers in the internal pointers as disclosed in Jensen.” Ex.
1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of
ordinary skill in the art would be motivated to combine Jensen’s teaching of
maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of
identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404.
The predictable use of familiar prior art elements according to their
established functions renders the recited invention obvious. See KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
For the foregoing reasons, Microsoft has shown, by a preponderance
of the evidence, that claims 49 and 50 of the ’775 patent are unpatentable as
obvious over the combination of Visual Basic and Jensen.
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C. Obviousness of Claim 53 in view of Visual Basic and Salton
and Obviousness of Claim 51 in view of Visual Basic, Jensen,
and Salton
For the reasons given below, Microsoft has not shown that claims 51
and 53 are unpatentable as obvious.
1. Salton
Salton describes information retrieval. Ex. 1107, 7. In particular,
Salton describes speeding up a search for information by developing an
index. Id. at 16. An index of Salton includes values for each key for records
in a file. Id. at 17.
2. Claim 53
Enfish contends that Microsoft’s motivation-to-combine contentions
are insufficient. PO Resp. 40–42. Dr. Jagadish states, “it is my opinion that
a POSITA would not have been motivated to import, into [Visual Basic], the
teachings in Salton regarding indexing architectures.” Ex. 2007 ¶ 242. Dr.
Jagadish provides various reasons including a lack of teachings in Visual
Basic, difficulties described in Salton, as well as difficulties that would have
been known to one of ordinary skill in the art. Ex. 2007 ¶¶ 240–242.
Microsoft states that one of ordinary skill in the art would have been
motivated to combine Salton with Visual Basic to employ the indexing and
text analysis techniques taught by Salton in the object database systems of
Visual Basic. Pet. 50 (citing Ex. 1119 ¶¶ 420–422). We are not persuaded
that this is a sufficient rationale for combining Visual Basic and Salton,
because Microsoft does not provide adequate evidentiary support.
Paragraphs 420 through 422 of Dr. Hosking’s Declaration simply reiterate
claim language. Although Dr. Hosking additionally testifies that Salton
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describes speeding up a search through indexing techniques and identifies
particular techniques in Salton to be combined with Visual Basic (Ex.
1119 ¶¶ 438–444), Dr. Hosking does not indicate that speeding up searching
using indexing is a reason to combine Visual Basic and Salton. Dr.
Hosking, instead, states that Visual Basic and Salton are in the same field
and provides a conclusion that one of ordinary skill in the art would have
been motivated to combine Visual Basic and Salton. Ex. 1119 ¶ 444.
Furthermore, in its contentions regarding another challenged claim,
Microsoft relies on Visual Basic for describing indexing. See Pet. 45 (Ex.
1104, PF 37, 38). In light of these other contentions, Microsoft does not
explain sufficiently why one of ordinary skill in the art would have been
motivated to employ Salton’s indexing techniques with Visual Basic.
As discussed above, Dr. Jagadish disagrees with Dr. Hosking. Ex.
2007 ¶¶ 240–242. In its Reply, Microsoft does not address Enfish’s
contentions or the testimony provided by Dr. Jagadish . Pet. Reply 11–12.
3. Claim 51
With respect to claim 51, Microsoft, relying on Dr. Hosking, further
states that “[o]ne of ordinary skill in the art would have been motivated to
combine Salton with [Visual Basic] and Jensen to employ the indexing and
text analysis techniques taught by Salton in the object database systems of
[Visual Basic] and Jensen to improve data searching and retrieval
efficiency.” Pet. 52 (citing Ex. 1119 ¶¶ 407–410). Dr. Hosking, however,
states that the references relate to data managing and then states his
conclusion that one of ordinary skill in the art would have been motivated to
combine them. Ex. 1119 ¶ 410.
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4. Conclusion
We determine that Dr. Hosking’s statements are not a sufficient
rationale for combining these references because he bases his conclusions on
simple statements that the references are in the same field. Microsoft does
not provide sufficient additional reasons, such as expert testimony that the
combinations of prior art references are of familiar elements according to
known methods that yield no more than predictable results. We, therefore,
conclude that Microsoft has not demonstrated that the teachings would have
been combined by a person of ordinary skill.
For the foregoing reasons, we determine that Microsoft has not set
forth a sufficient articulated reason with a rational underpinning to support a
showing of obviousness by a preponderance of the evidence. We, therefore,
conclude that Microsoft has not shown that claims 51 and 53 of the ’775
patent are unpatentable as obvious.
D. Obviousness of Claim 52 in view of Visual Basic and Smith
’162
For the reasons given below, Microsoft has not shown that claim 52 is
obvious.
1. Smith ’162
Smith ’162 describes an object-oriented document management and
production system. Ex. 1108, Abstract. Stored objects are organized,
accessed, and manipulated through a database management system. Id. For
example, documents and folders can be represented as objects. Id. at 3:29–
35. The hierarchically superior folder object pointers specify documents.
Id. at 8:19–20.
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2. Claim52
Enfish contends that Microsoft’s motivation-to-combine arguments
are insufficient. PO Resp. 39. We are not persuaded that Microsoft has set
forth a sufficient articulated reason with a rational underpinning to support a
determination of obviousness. Microsoft states that one of ordinary skill in
the art would have been motivated to combine the folder and document
objects of Smith ’162 with the objects disclosed in Visual Basic for the
benefits of providing varying data architectures in the database. Pet. 53–54
(citing Ex. 1119 ¶¶ 413–419). Microsoft, however, relies on Dr. Hosking,
who states that one of ordinary skill in the art would have been motivated to
combine Visual Basic and Smith ’162 because they “address the same
technical issues and disclose closely related subject matters.” Ex.
1119 ¶ 419. Although Dr. Hosking mentions that Smith ’162 relates to
managing documents and folders, he does not testify persuasively regarding
the benefits of providing varying data architectures in connection with
combining Visual Basic and Smith ’162. Microsoft does not offer
persuasive additional contentions or evidence supporting the asserted
combination of Visual Basic and Smith ’162.
For the foregoing reasons, Microsoft has not shown that claim 52 of
the ’775 patent is unpatentable as obvious.
E. Secondary Considerations
We note that factual inquiries for an obviousness determination
include secondary considerations based on evaluation and crediting of
objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
1, 17 (1966). Notwithstanding what the teachings of the prior art would
have suggested to one with ordinary skill in the art at the time of the
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invention, the totality of the evidence submitted, including objective
evidence of nonobviousness, may lead to a conclusion that the claimed
invention would not have been obvious to one with ordinary skill in the art.
In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to
accord substantial weight to objective evidence requires the finding of a
nexus between the evidence and the merits of the claimed invention. In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness
context only if there is proof that the sales were a direct result of the unique
characteristics of the claimed invention.”).
Enfish contends that the claimed invention received industry
accolades, including praise from Microsoft, satisfied a long-felt need,
resulted in success where others had failed, as well as commercial success.
PO Resp. 42–47. Enfish points to features of claim 17, which Enfish
contends are the features of the claimed invention that resulted in the
objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17
of the ’775 patent, however, is challenged on the basis that it is anticipated
by Visual Basic. Secondary considerations do not weigh into determinations
regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d
1351, 1364 (Fed. Cir. 2008).
Because we conclude that Microsoft has not shown that claims 51–53
of the ’775 patent are unpatentable for other reasons, the only claims that we
need to evaluate are dependent claims 49 and 50 of the ’775 patent.
Microsoft asserts that claims 49 and 50 are obvious over the combination of
Visual Basic with a reference that teaches referencing objects through two-
way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a
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nexus between any of the accolades or successes it says occurred and the use
of two-way pointers.
Enfish additionally submits evidence that Enfish states shows that
Microsoft failed at developing a suitable search engine. PO Resp. 47–49.
We are not persuaded by this argument. The statements submitted by Enfish
are not tied sufficiently to any claim at issue in this proceeding. Instead, the
statements broadly refer to search engines. None of the statements reference
two-way pointers.
Enfish further submits evidence that Enfish alleges shows commercial
success. PO Resp. 49. In addition to the shortcomings discussed above, the
proffered evidence is further deficient for the following reasons. Enfish
contends that the evidence supports that its product was “well received,”
75,000 users downloaded Enfish’s software, and the functionality of the
software resulted in a collaborative effort. See PO Resp. 49 (citing Ex.
2024; Ex. 2025, 2; Ex. 2030). Enfish’s evidence, however, does not
indicate that users paid for or actually used the downloaded software. The
evidence also does not indicate how the number of downloads illustrates
commercial acceptance, for example, as compared to downloads of other
software at the time. Additionally, a planned collaborative effort does not
indicate the results of the collaboration. Enfish’s evidence does not establish
commercial acceptance or financial success. See In re Fielder, 471 F.2d
640, 644 (CCPA 1973). Thus, Enfish’s evidence is not sufficient to show
commercial success.
We, therefore, determine that feature of pointers would have been a
predictable variation within the technical grasp of a person of ordinary skill
in the art, and are not persuaded by the objective evidence that claims 49 and
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50 of the ’775 patent are not obvious.
F. Motion to Correct Patent Owner Response
After institution of trial, Enfish timely filed a Patent Owner Response
(Paper 24), along with the Jagadish Declaration (Ex. 2007). On September
16, 2014, Enfish filed an unopposed motion to file a second corrected Patent
Owner Response and a corrected Jagadish Declaration, which Enfish
contends correct only typographical errors and erroneous citations.
Paper 38. We grant Enfish’s September 16, 2014 request.
G. Joint Stipulation
On November 14, 2014, the parties filed a joint stipulation requesting
that we expunge confidential versions of exhibits 2049–2058 and 2060–
2065. Paper 55. The parties contend that Microsoft withdraws its motion to
seal (Paper 28) provided that we expunge the confidential versions. Paper
55. Microsoft agrees that the sealed version of Exhibit 2059 may be
unsealed. Id. We hereby grant the motion and expunge only confidential
versions of exhibits 2049–2058 and 2060–2065.
H. Motion to Exclude
On November 3, 2014, Microsoft filed a motion to exclude Exhibit
2071, the Declaration of Dr. Sharad Mehrotra (“Mehrotra Declaration”), and
two paragraphs of the Declaration of Louise Wannier (“Wannier
Declaration,” Exhibit 2077 ¶¶ 32, 33). Paper 48.
Regarding the Mehrotra Declaration, we agree with Microsoft’s
assertion that Dr. Mehrotra provides only conclusory opinions and,
therefore, we give his Declaration no weight and do not rely on it in this
Decision. 37 C.F.R. § 42.65(a). Because Microsoft has not argued
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persuasively any other reason to exclude the Mehrotra Declaration, we
dismiss Microsoft’s request to exclude it as moot.
Regarding the Wannier Declaration, we disagree with Microsoft that
“Patent Owner has no basis to file the Wannier Declaration as supplemental
evidence because Microsoft has not moved to exclude the Armon
Declaration.” Paper 48, 4–5. Patent Owner is entitled to submit
supplemental evidence in response to Microsoft’s objection. 37
C.F.R. § 42.64(b)(2). Microsoft further contends that the Wannier
Declaration inserts untimely, conclusory, and improper technical opinions.
Paper 48, 5. Patent Owner contends that paragraphs 32 and 33 do not
exceed the scope because they are submitted to support admissibility. Paper
58, 3–4. We agree with Microsoft that the Wannier Declaration provides
conclusory technical opinions, and, therefore, give the technical opinions in
paragraphs 32 and 33 of her Declaration no weight. Because Microsoft has
not argued persuasively any other reason to exclude paragraphs 32 and 33 of
the Wannier Declaration, we dismiss Microsoft’s request to exclude it as
moot.
IV. CONCLUSION
We conclude that Microsoft has demonstrated by a preponderance of
the evidence that (1) claims 47 and 48 of the ’775 patent are anticipated by
Visual Basic and (2) claims 49 and 50 of the ’775 patent are obvious over
the combination of Visual Basic and Jensen.
We further conclude that Microsoft has not shown that claims 51–53
of the ’775 patent are unpatentable as obvious. In addition, we terminate
this proceeding with respect to claims 17–23 under 37 C.F.R. § 42.72.
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This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

V. ORDER
For the reasons given, it is
ORDERED that claims 47–50 of U.S. Patent No. 6,163,775 are
determined by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that this proceeding is TERMINATED, under
37 C.F.R. § 42.72, with respect to claims 17–23;
FURTHER ORDERED Enfish’s motion to file a second corrected
Patent Owner Response and a corrected Jagadish Declaration (Paper 38) is
GRANTED;
FURTHER ORDERED that Microsoft’s motion to exclude (Paper 48)
is DISMISSED;
FURTHER ORDERED that confidential versions of Exhibits 2049–
2058 and 2060–2065 are expunged;
FURTHER ORDERED Microsoft’s motion to seal is DISMISSED;
and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
Chun M. Ng
Amy E. Simpson
Chad Campbell
Theodore H. Wimsatt
PERKINS COIE LLP
CNg@perkinscoie.com
ASimpson@perkinscoie.com
CCampbell@perkinscoie.com
TWimsatt@perkinscoie.com

For PATENT OWNER:
Frank Pietrantonio
Orion Armon
COOLEY LLP
fpietrantonio@cooley.com
oarmon@cooley.com
zpatdcdocketing@cooley.com