Microsoft Corporationv.Enfish, LLC

Patent Trial and Appeal Board

Mar 3, 2015

09035510 (P.T.A.B. Mar. 3, 2015)

Trials@uspto.gov Paper 64
571.272.7822 Entered: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

ENFISH, LLC,
Patent Owner.
____________

Case IPR2013-00562
Patent 6,151,604

Before THOMAS L. GIANNETTI, BRYAN F. MOORE,
and SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
Case IPR2013-00562
Patent 6,151,604

2
I. INTRODUCTION
A. Background
Petitioner Microsoft Corporation (“Microsoft”) filed a petition to
institute an inter partes review of claims 1–15 and 31–45 of U.S. Patent No.
6,151,604 (“the ’604 patent”). Paper 1 (“Pet.”). We instituted trial for
claims 1–15 and 31–45 of the ’604 patent on certain grounds of
unpatentability alleged in the Petition. Paper 15 (“Decision to Institute” or
“Inst. Dec.”).
After institution of trial, Patent Owner, Enfish, LLC (“Enfish”), filed a
Patent Owner Response (“PO Resp., Paper 32), along with a Declaration by
Enfish’s Declarant, Dr. H.V. Jagadish (“Jagadish Declaration”). On
September 16, 2014, Enfish filed an unopposed motion to correct
typographical errors in the Jagadish Declaration (Ex. 2007). We grant
Enfish’s motion to correct both papers.
1
Microsoft filed a Reply (“Pet.
Reply”). Paper 37.
A consolidated hearing for IPR2013-00559, IPR2013-00560,
IPR2013-00561, IPR2013-00562, and IPR2013-00563 was held on
December 3, 2013. The transcript of the consolidated hearing has been
entered into the record. Paper 63. (“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).
We conclude that Microsoft has shown by a preponderance of the
evidence that claims 31, 41, and 42 of the ’604 patent are unpatentable.
Microsoft has not shown by a preponderance of the evidence that claims 32–

1
For ease of reference, throughout we refer to Enfish’s corrected Jagadish
Declaration (Exhibit 2007), filed on September 16, 2014.
Case IPR2013-00562
Patent 6,151,604

3
40 and 43–45 are unpatentable. For the reasons discussed below, for claims
1–15 we are unable to reach a determination on the alleged grounds of
unpatentability over prior art. Accordingly, we terminate this proceeding
with respect to claims 1–15 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 16–30 and 46–60 of the ’604 patent. See
IPR2013-00563. Microsoft indicates that claims 1, 2, 16, 17, 31, 32, 46, and
47 of the ’604 patent are presently asserted against Microsoft in Enfish LLC
v. Microsoft Corporation, et al., Case No. CV12-7360 MRP (MRWx) in the
Central District of California. Pet. 2. Microsoft further contends that a final
judgment against Enfish has been entered in the California case. Ex. 1071.
Microsoft also has filed three petitions challenging the patentability of
claims 1–60 of U.S. Patent 6,163,775 (“the ’775 patent”).
2
See IPR2013-
00559, IPR2013-00560; IPR2013-00561.
C. The ’604 Patent
The ’604 patent (Ex. 1001), titled “Method and Apparatus for
Improved Information Storage and Retrieval,” generally relates to a system
and method for data storage, manipulation, and retrieval in a self-referential
logical table of a database. This table is a logical structure, not a physical
structure, stored contiguously in the memory. Id. at 6:29–35
Figure 3 of the ’604 patent, reproduced below, illustrates a table
structure of a logical table. Id. at 3:30–31.

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. 6.
Case IPR2013-00562
Patent 6,151,604

4

As depicted by Figure 3 of the ’604 patent, above, table 100 is defined
by rows 108, 110, 138, 136, 135, and 140, and columns 120, 122, 124, and
126. Ex. 1001, Fig. 3. The intersection of a row and a column defines a cell
in the table. Id. at 6:42–50. Each column corresponds to an attribute
spanning various records. Id. at 6:38. 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 1:63–65; 7:16–18.
Each row corresponds to a record spanning various attributes. Ex.
1001, 6:37–38. For example, row 110 corresponds to a company as shown
in cell 130. Id. at 6:54–55.
The patent describes unique object identification numbers (OID)
shown in Figure 3 beginning with the “#” sign.
3
The ’604 patent explains
that each row is assigned a unique object identification number (OID) stored

3
The “#” sign appears to have no convention aside from differentiating in
the drawings the OID’s from other integers, e.g. reference numbers, entered
data etc.
Case IPR2013-00562
Patent 6,151,604

5
in column 120, (1100, 1101, 1118, etc.,) and each column is similarly
assigned a unique OID stored in row 108 ([101], [1012], [1013], etc.). Ex.
1001, 6:42–50. According to the ’604 patent it is desirable to have an
associated column definition stored in the same table, as a row, to provide
for better searching and synchronization between the columns and record
data. Id. at Abst. A column definition determines the specific properties of
a column. Id. at 7:11–14. For example, column 126 is defined as having a
label “Employed By” (from the cell at column 124, row 136). The
“Employed By” column contains employer information and OID [1019],
and is defined by the record at corresponding row OID 1019, where column
OID [1019] acts as a pointer to the record, thereby making the table self-
referential. Id. at 7:16–19.
According to the ’604 patent, the importance of the unique OID’s is
that they act as direct pointers to other records, which eliminates the
necessity for a query to search through unrelated columns, rows, and cells
for additional related data. Ex. 1001, 8:51–54.
D. Illustrative claims
Of the challenged claims, the independent claims are 1, 11, 12, 31, 41,
and 42. Each of claims 2–10 depends, directly or indirectly, from claim 1.
Each of claims 13–15 depends, directly or indirectly, from claim 12. Each
of claims 32–41 depends, directly or indirectly, from claim 31. Each of
claims 43–45 depends, directly or indirectly, from claim 12. Claims 1 and
31 illustrate the claimed subject matter and are reproduced below:

1. A data storage and retrieval system for a computer
memory, comprising:
means for configuring said memory according to a logical
table, said logical table including:
Case IPR2013-00562
Patent 6,151,604

6
a plurality of logical rows, each said logical row having
an object identification number (OID) to identify each
said logical row, each said logical row corresponding to a
record of information;
a plurality of logical columns intersecting said plurality
of logical rows to define a plurality of logical cells, each said
logical column having an OID to identify each said
logical column; and wherein
at least one of said logical rows has an OID equal to the
OID of a corresponding one of said logical columns, and at
least one of said logical rows includes logical column
information defining each of said logical columns.

31. A method for storing and retrieving data in a computer
memory, comprising the steps of:
configuring said memory according to a logical table, said
logical table including:
a plurality of logical rows, each said logical row
including an object identification number (OID) to
identify each said logical row, each said logical row
corresponding to a record of information;
a plurality of logical columns intersecting said plurality of
logical rows to define a plurality of logical cells, each said
logical column including an OID to identify each said logical
column; and wherein
at least one of said logical rows has an OID equal to the OID
of a corresponding one of said logical columns, and at least one
of said logical rows includes logical column information
defining each of said logical columns.

E. The Prior Art References Supporting Alleged Unpatentability
Microsoft relies upon the following prior art references:
Chang et al., EP Publication No. 0 336 580 A2 (pub. Oct. 11, 1989)
(“Chang,” Ex. 1003).
Dickerson et al., EP Publication No. 0 394 019 A2 (pub. Apr. 18,
1990) (“Dickerson,” Ex. 1003).
Case IPR2013-00562
Patent 6,151,604

7
Crus et al., U.S. Patent No. 5,133,068 (issued Jul. 21, 1992) (“Crus
’068,” Ex. 1010).
Smith et al., U.S. Patent No. 5,181,162 (issued Jan. 19, 1993) (“Smith
’162,” Ex. 1008).
Goldberg et al., U.S. Patent No. 5,201,046 (issued Apr. 6, 1993)
(“Goldberg ’046,” Ex. 1011).
Horn et al., U.S. Patent No. 5,226,158 (issued Jul. 6, 1993)
(“Horn’158,” Ex. 1005).
Jenness, U.S. Patent No. 5,463,774 (issued Oct. 31, 1995) (“Jenness
’774,” Ex. 1013).
Anderson et al., U.S. Patent No. 5,463,724 (issued Oct. 31, 1995)
(“Anderson ’724,” Ex. 1012).
Covey, U.S. Patent No. 5,745,755 (issued Apr. 28, 1998) (“Covey
’755,” Ex. 1014).
KENNETH WEBB AND LORI LAFRENIERE, ORACLE DISTRUBUTED
SYSTEMS-A C PROGRAMMER’S DEVELOPMENT GUIDE (1991) (“Webb,” Ex.
1007).
F. The Pending Grounds of Unpatentability
The following chart summarizes Microsoft’s patentablilty
challenges:
Reference(s) Basis Claims challenged
Chang (Ex. 1003) § 102 1, 2, 31, and 32
Chang and Horn (Ex.
1005)
§ 103 12, 13, 42, and 43
Chang and Webb (Ex.
1007)
§ 103 11 and 41
Chang and Smith ’162
(Ex. 1008)
§ 103 3, 8, 33, and 38
Chang and Dickerson § 103 4 and 34
Case IPR2013-00562
Patent 6,151,604

8
(Ex. 1009)
Chang, Dickerson and
Crus (Ex. 1010)
§ 103 5 and 35
Chang and Goldberg
(Ex. 1011)
§ 103 6 and 36
Chang and Anderson
(Ex.1012)
§ 103 7 and 37
Chang, Smith ’162, and
Jenness (Ex. 1013)
§ 103 9 and 39
Chang and Covey
(Ex.1014)
§ 103 10 and 40
Chang, Horn, and Smith
’162
§ 103 14 and 44
Chang, Horn, Smith
’162, and Jenness
§ 103 15 and 45

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.”). Claim terms are given their ordinary and
customary meaning as would be understood by a person of ordinary skill in
the art at the time of the invention and in the context of the entire patent
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). If the specification “reveal[s] a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
Case IPR2013-00562
Patent 6,151,604

9
possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). 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.”).
We apply this standard to the claims of the ’604 patent.

B. Overview of the Parties’ Positions
Microsoft contends that this case involves a computer-implemented
invention. Pet. 7. Microsoft also contends that the challenged independent
claims invoke means-plus-function claiming, but the ’604 patent fails to
disclose an algorithm, which is an issue under § 112, sixth paragraph, that
cannot be addressed in this proceeding. Pet. 14–15. 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. 11. 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 claims 1, 11, and 12.
Regarding terms in the method claims, in the Decision to Institute, we
provided constructions for “logical table” and “object identification
number,” which are shown in the table below. Inst. Dec. 12–13. We also
determined that no express construction is needed for the following terms:
Case IPR2013-00562
Patent 6,151,604

10
“memory,” “logical row,” and “logical column.” Inst. Dec. 15.
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. 12. “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 13.

Enfish contends that our construction for “object identification
number” is incomplete. PO Resp. 12. We evaluate Enfish’s contention
below. We discern no reason, based on the complete record now before us,
to change our constructions in the Decision to Institute of “logical table” and
“object identification number.”
C. Analysis of the Parties’ Claim Construction Positions
1. Means for configuring said memory according to a logical
table
Independent claims 1, 11, and 12 include 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. 11. Additionally, we
considered the corresponding structure for the recited function as including a
general 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. 17–18. In particular, Enfish contends that the ’604
Case IPR2013-00562
Patent 6,151,604

11
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. and 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 ’604 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 other portions of the ’604 patent
specification that Enfish identifies.
For algorithmic support, Enfish identifies disparate excerpts of the
’604 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. Enfish also relies on
Dr. Jagadish’s Declaration, which as discussed below also does not show
that the ’604 patent specification provides an algorithm and does not link
clearly any algorithm to the recited function. PO Resp. 17–18 (citing Ex.
2007 ¶¶ 69–74).
For example, the first step, “create, in computer memory, a logical
table” (PO Resp. 17) appears to be similar to the recited function of
Case IPR2013-00562
Patent 6,151,604

12
configuring memory according to a logical table, but the first step is not
found in the ’604 patent specification. Additionally, none of the portions of
the ’604 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. 17;
see also Ex. 2007 ¶ 70 (citing Ex. 1001, 2:53–57, 6:35–38).
4
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. 1001, 2:53–57. 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 6:30–38.
Enfish’s three remaining steps and the other ’604 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. 17. One of the portions of the ’604 patent specification
cited by Enfish for the second step indicates “the system must generate a
unique OID when columns and rows are formed.” Ex. 2007 ¶ 71 (citing Ex.
1001, 8:6–7). 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

4
Enfish’s citations in its Patent Owner Response appear to refer to column
and line numbers of the ’775 patent, rather than the ’604 patent.
Consequently, we use Enfish’s citations to the ’604 patent in Dr. Jagadish’s
Declaration.
Case IPR2013-00562
Patent 6,151,604

13
assigning an OID relates to steps for forming columns and rows. Id. (citing
Ex. 1001, Abstract, 2:54–55, 6:42–49, 6:60–61, 8:10–47, Figs. 3, 4).
Additionally, the identified portions discuss assigning a numeric value to an
OID in the form of a bit array, but fail to describe how to configure memory
such that an OID may be used as a pointer. Id.
The third step (PO Resp. 18) and the portions of the ’604 patent
specification cited by Patent Owner for the third step (Ex. 2007 ¶ 72 (citing
Ex. 1001, Abstract, 2:60–63, 6:39–40, 7:16–22, 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 ’604 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. 18)
is performed in an already-configured table and, therefore, occurs after the
recited function of configuring a table has occurred. Nonetheless, the ’604
patent specification portions identified by Enfish (Ex. 2007 ¶ 73 (citing Ex.
1001, Abstract, 2:57–60, 6:40–41, 6:53–54, 7:1–2, 7:14–15, 11:47–59, Fig.
10)) suffer from the same deficiencies noted above.
We conclude that the four steps and other ’604 patent specification
portions identified by Enfish do not describe an algorithm for configuring
memory in accordance with the claimed table. The portions of the ’604
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. 1001, 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
Case IPR2013-00562
Patent 6,151,604

14
clearly with the recited function of “configuring memory according to a
logical table.”
Enfish also relies on Dr. Jagadish’s further statement that “[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 ’604 Patent was filed.” Ex. 2007 ¶ 69. Enfish,
however, cannot rely on the knowledge of one skilled in the art to fill in
gaps. See Function Media, LLC v. Google Inc., 708 F.3d 1310, 1319 (Fed.
Cir. 2013).
Because we conclude that the four steps and other ’604 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 claims 1, 11, and 12
are not amenable to construction and, thus, we terminate this proceeding
with respect to these claims under 37 C.F.R. § 42.72. Because claims 2–10
and 13–15 depend, directly or indirectly, from either claim 1 or claim 12, we
also terminate this proceeding with respect to these claims under 37
Case IPR2013-00562
Patent 6,151,604

15
C.F.R. § 42.72.
2. Means for searching said table for said pointer
Claim 41 is a method claim, and besides the step of “configuring said
memory” includes a means-plus-function limitation, “means for searching
said table for said pointer.” Enfish contends that the specification and
drawings of the ’604 patent disclose an algorithm satisfying the necessity for
corresponding structure under § 112 ¶ 6 for “a means for searching.” PO
Resp. 18–19. Enfish points to column 9 and Figures 5 and 6 of the ’604
patent asserted as disclosing an algorithm for “searching” the table for the
pointer. Id. Enfish contends that the specification and drawings describe:
(1) Receiving a keyword and a column representative of an
object that the OID pointer references. Ex. 1001, 9:7–10.
(2) Retrieving the search path for the column to be searched for
the keyword. Ex. 1001, 9:10–19.
(3) Receiving search path information for the column to be
searched for the keyword. Ex. 1001, 9:20-26.
(4) Determining if more than one OID pointer referencing an
object with the keyword is found and, if only one, return the
OID pointer. Ex. 1001, 9:36–44.
Id. We find Enfish’s evidence here persuasive in that the necessary structure
in the form of an algorithm is set forth in the specification and drawings of
the ’604 patent such that one of ordinary skill in the art would have
understood the structure, or acts, that perform the required “searching”
function. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374,
1382 (Fed. Cir. 1999) (to satisfy 35 U.S.C. 112 “the corresponding
structure(s) of a means-plus-function limitation must be disclosed in the
Case IPR2013-00562
Patent 6,151,604

16
written description in such a manner that one skilled in the art will know and
understand what structure corresponds to the means limitation.”
Reviewing the specification, the first step in the algorithm is initiated
by a user entering text “through the keyboard or mouse for a particular
column that the user wishes to search.” Ex. 1001, 9:1–2, Fig. 6. The
database system thus, (1), receives the keyword for the desired column. For
the second step (2), “the system retrieves the search path for the column to
be searched.” Id. at 9:3–4. This second step is further shown in block 152
in Figure 6 as “Fetch ‘search path’ and related options from associated
column definition.” Then, for step (3) as shown in block 154 of Figure 6,
“the routine searches for a record that has an entry in the label column 124
of FIG. 2 that is the same as the text being searched for, and is of the same
class.” Id. at 9:14–17. Finally, at step (4) the routine determines if it has
found at least one matching entry, and can thus return the respective OID for
the object at block 168, as shown in Figure 6. Id. at 9:36–39.
In view of this description, we are persuaded that one of skill in the art
would have been able to understand and implement the specific “searching”
procedure contemplated in the ’604 patent. The steps for this algorithm are
articulated as a coherent “searching” procedure for obtaining an OID
corresponding to a text entry and set forth in column 9, lines 1–36. Indeed,
this searching procedure is shown and described with respect to Figure 5,
and the flow chart in Figure 6 diagrammatically explaining the same
procedure, which is linked to the claimed “means for searching.”
See Atmel, 198 F.3d at 1382 (“All one needs to do…is to recite some
structure corresponding to the means in the specification…so that one can
readily ascertain what the claim means and comply with the particularity
Case IPR2013-00562
Patent 6,151,604

17
requirement of Para. 2.”).
Accordingly, we agree with Enfish and identify the corresponding
structure for performing the function of the “means for searching” in claim
41, namely, steps (1)–(4) as discussed above, which is a program, or routine,
run on a specially programmed general computing device.
3. Other Means-Plus-Function Terms
Because we determine that this proceeding should be terminated as to
claims 1–15 for the reasons discussed above, we need not construe other
means-plus-function terms appearing in those claims for the purposes of this
Decision.
4. Object Identification Number (OID)
Independent claims 31, 41, and 42 recite “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. 13 (citing Ex. 1001, 3:33–35, 8:35–37).
Enfish “agrees in principle” with our construction, but contends that
the construction is incomplete. PO Resp. 12. Enfish contends that “OID”
should be defined further as “a unique, immutable, and system-generated
value that identifies an object.” Id. at 12–13. 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
Case IPR2013-00562
Patent 6,151,604

18
Resp. 13–16. For example, Enfish, relying on Dr. Jagadish, contends that an
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. 13 (citing Ex. 2007 ¶¶ 46–54). Dr. Jagadish cites to a
portion of the specification stating that the OID is used for “exact retrieval”
and that without uniqueness, retrieval using an OID will result in more than
one object. Ex. 2007 ¶ 51 (citing Ex. 1001, 1:60–64).
Microsoft contends that Enfish’s proposed construction should not be
adopted. Pet. Reply 2–7. 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. 1001, 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 4–5. As further support, Dr. Hosking states that OID
may change in certain circumstances and still retrieve information reliably.
Ex. 1046 ¶¶ 23–25.
We determine that adopting Enfish’s proposed construction without
further context would create ambiguity. Additionally, limitations are not to
be read into the claims from embodiments in the specification. See In re
Van Geuns, 988 F.2d 1181 at 1184. Furthermore, we agree with Microsoft
that Enfish relies on insufficient extrinsic evidence for support, for example,
that an OID is “immutable.” We also note that Enfish’s contentions are not
commensurate with the scope of the claims because each of the independent
claims recites that an OID is included “to identify” each logical row and
Case IPR2013-00562
Patent 6,151,604

19
each logical column, but does not recite using an OID to retrieve data from
memory.
We, therefore, determine that the construction of “OID” in the
Decision to Institute should not be changed.

III. ANALYSIS
A. Anticipation by Chang
We have reviewed Microsoft’s anticipation argument and supporting
evidence, including Chang’s disclosure and the detailed explanation
appearing on pages 21–38 of the Petition. We are persuaded that
Microsoft’s analysis demonstrates that each limitation of claim 31 is present
in Chang. Despite the counter-arguments in Enfish’s Patent Owner
Response, and the evidence cited therein, which we also have considered,
Microsoft has shown, by a preponderance of the evidence, that claim 31 is
unpatentable under 35 U.S.C. § 102(b) as anticipated by Chang. See 35
U.S.C. § 316(e).
1. Chang
Chang discloses a relational database including EMPLOYEE TABLE
10 (“EMP”) in Figure 1 which includes a number of records, each record
(row) containing specific data relating to a certain employee. Each record in
EMPLOYEE TABLE 10 includes the employee number, name, salary, and
department number aligned in columns 1–4 respectively. Ex. 1003, 5:26–
33. The relational database also includes other tables, i.e. system catalogs,
as shown in Figures 2–4. The system catalogs contain further information
about the tables in the database, for example SYS.TABLES 12 in Figure 2
contains a record for EMPLOYEE TABLE 10 including the table name, and
Case IPR2013-00562
Patent 6,151,604

20
the creator in columns 1 and 2. Chang states that SYS.TABLES 12 may
also contain information about a different table, such as an employee
location table (not shown) including the employee number and location.
Chang explains that:
Due to common elements in these various tables relational
information may be derived by using this commonality. For
example, because the employee number is common to the
aforementioned employee table and site location table, this
piece of information may be used to relate a particular
employee's name from the first table to the location where the
employee works derived from the second table.

Id. at 5, 45–53 (emphasis added).
Chang also discloses how to store definitional information relating to
column attributes in a single record (row) of a table so that “[a]ccessing the
row corresponding to a particular object returns a description of all of the
attributes of the object’s component objects, as well as information
describing the object itself.” Id. at 3:57–4:3. More specifically, Chang
explains that the table shown in Figure 3, as reproduced below,
SYS.COLUMNS catalog 14, contains records relating to the database
structure, i.e., database objects and component objects, of the EMPLOYEE
TABLE 10.
Case IPR2013-00562
Patent 6,151,604

21

Figure 3, above, reveals that SYS.COLUMNS catalog 14 contains specific
information about the attributes of each of the columns in the EMPLOYEE
TABLE 10. Id. at 6:25–39. Chang describes:
each record in the SYS.COLUMNS catalog14 shown therein
contains a number of fields describing attributes of a correlative
one of the columns in the employee table 10…for example,
EMP in the “Table” column as the first field thereof indicates
that the data to the right is further information or attributes
about a column appearing in the employee table.

Id. at 6:40–54. Moreover, still referring to Chang’s Figure 3, each record
(row) in SYS.COLUMNS catalog 14 includes a field (“COL.NO” 25)
having the column number relating to the corresponding column in the
EMPLOYEE TABLE 10, which is defined by that particular row. For
instance, observing the SYS.COLUMNS catalog 14 in Figure 3, it is clear
the value “1” in COL.NO 25 correlates this record with column 1 in the
EMPLOYEE TABLE 10 shown in Figure 1. Id. at 6:50–7:10.
Case IPR2013-00562
Patent 6,151,604

22
2. Claim 31
We have reviewed Microsoft’s anticipation argument and supporting
evidence which relates persuasively each element of claim 31 to the
disclosure of Chang. Pet. 22–29.
Microsoft asserts that Chang discloses a relational database and that it
is well known that databases are used to store and retrieve data. Id. at 22
(citing Ex. 1003, 1:3–4, Abst., Ex. 1022 ¶¶ 26, 158–159). Microsoft
contends that Chang describes implementing the database on a computer
system having memory, a central processing unit, and a display. Id. (citing
Ex. 1003, Fig. 11). Microsoft further asserts that Chang discloses a method
for configuring the memory according to a logical table that organizes data
into rows and columns. Id. at 23–24 (citing Ex. 1003, 13:57–14:10, Figs. 2–
5, 11, Ex. 1022 ¶¶ 173–175, 182–184). The OID’s identifying each row,
Microsoft contends, are disclosed at least by Chang’s specific discussion
stating for SYS.COLUMNS table, “that a row will have a ‘record i.d.’
associated with it.” Pet. 26 (citing Ex.1003 at 7:51–8:3). Also, Microsoft
asserts that SYS.COLUMNS includes an OID for each column, “because
SYS.COLUMNS stores the definition of all columns in the tables. . .
including the columns of SYS.COLUMNS itself . . . Chang teaches that the
columns of the SYS.COLUMNS table shown in Figure 3 will each have a
number to identify them.” Pet. 28–29 (citing Ex. 1003, 5:35–38, 5:54–55,
6:25–39, 6:58–7:3, 8:45–50). Microsoft’s arguments here relate to portions
[A], [B], [C], and [D] of claim 31 for example, reproduced below. We are
persuaded that Chang discloses these initial limitations of claim 31 because,
as Microsoft’s evidence shows, Chang describes a relational database having
objects such as tables, and columns for storing data in a determinable way.
Case IPR2013-00562
Patent 6,151,604

23
Ex. 1003, 1:1–14. Chang further explains how various data entry, search,
and manipulation is carried out with respect to such objects. Id. at 27–37,
Also, Chang discloses, in accordance with our claim construction, that each
database table includes column, and row, identifiers, such as record i.d.,
column numbers, or columns names, comporting with the proper
interpretation of an OID, as “an array of bits that define” a column. Id. at
5:41–45.
Turning to the remaining limitations in claim 31, referenced as [E]
and [E2], Enfish makes three specific arguments regarding why Chang does
not disclose all the limitations of independent claim 31. PO Resp. 20. For
purposes of clarity, we reproduce below claim 31, including the additional
reference elements ([E1] and [E2]) added by Enfish.
31. [A] A method for storing and retrieving data in a
computer memory, comprising the steps of:
[B] configuring said memory according to a logical table,
said logical table including:
[C] a plurality of logical rows, each said logical row
including an object identification number (OID) to identify each
said logical row, each said logical row corresponding to a
record of information;
[D] a plurality of logical columns intersecting said
plurality of logical rows to define a plurality of logical cells,
each said logical column including an OID to identify each said
logical column; and wherein
[E1] at least one of said logical rows has an OID equal to
the OID of a corresponding one of said logical columns, and
[E2] at least one of said logical rows includes logical column
information defining each of said logical columns.

Enfish asserts first that no one, single table in Chang includes all the
limitations of these independent claims. PO Resp. 20. Second, Enfish
contends that neither of Chang’s two tables (SYS.TABLES,
Case IPR2013-00562
Patent 6,151,604

24
SYS.COLUMNS), discloses the row OID limitation [C], and third, neither
table discloses the limitation [E1] requiring a row OID to be equal to a
column OID. Id.
Enfish’s contentions are based on its proposed construction of OID, “a
unique, immutable, and system-generated value that identifies an object,”
which we decline to adopt for the reasons given above. See PO Resp. 12–
13. In addition, we disagree with Enfish’s first assertion. While we are
persuaded that claim 31 requires the elements to be found in a single table,
Microsoft has provided persuasive evidence that Chang’s SYS.COLUMNS
table discloses each limitation of the claimed “logical table.”
To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art
reference must expressly or inherently disclose each claim limitation.”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Microsoft’s evidence is persuasive that Chang’s SYS.COLUMNS table, at
least inherently if not expressly, discloses a record/row that defines each of
the columns that appear in the SYS.COLUMNS table itself. Pet. 33 (citing
Ex. 1022 ¶¶ 169–175). SYS.COLUMNS, although shown by way of
example in Figure 3 of Chang for EMPLOYEE TABLE (“EMP”), will, in
the Table field also have a correlating SYS.COLUMNS row, defining the
various columns of the SYS.COLUMNS table. See Pet. 33, Ex. 1003 at
6:49–7:19. In light of our interpretation of OID set forth above in II.C.3, we
are persuaded by Microsoft’s argument for element [E1] that “[a] row
holding a column definition will of course hold an OID that is the same as
the OID of the defined column.” Pet. 33.
Enfish’s second position is that the OID’s identified by Microsoft do
not satisfy the “each said logical row including an OID” part of claim
Case IPR2013-00562
Patent 6,151,604

25
limitation [C] “because there is no cell in any row of Annotated FIG. 3 that
contains this supposed OID.” PO Resp. 27. We are not convinced by
Enfish’s argument. Enfish did not present any claim construction for the
term “logical row including.” The limitation in claim 31 reads in context
“each said logical row including an object identification number (OID),” not
“a cell of each said record including an object identification number (OID).”
Indeed, the evidence asserted by Enfish, specifically Dr. Hosking’s
deposition testimony, indicates that an OID can be stored in a cell, not that it
must be stored in a cell, in order to identify the row. Id.at 26–27 (citing Ex.
2003, 183:12–17. Enfish’s argument is not commensurate in scope with the
claims. Accordingly, we are not apprised by Enfish of any persuasive
evidence from the specification of the ’604 patent, or otherwise, that the
claims require that an OID must be stored in a cell of either a row or column.
In its third argument, Enfish maintains that the [E1] limitation, “at
least one of said logical rows has an OID equal to the OID of a
corresponding one of said logical columns,” is not meet by Chang because
none of the OID values considered by Microsoft (record i.d., column
number, column name, a combination of the table name, creator name,
and/or column name or number) “satisfy all three of the requirements of
OIDs—uniqueness, immutability and system generated.” PO Resp. 30.
This argument is not persuasive because it addresses the limitation [E1] in
terms of the wrong claim construction.
We determine that the values, alone and in combination, identified by
Microsoft as OID’s satisfy our construction for an OID as “an array of bits
that define.” Under the proper claim construction, each row in
SYS.COLUMNS, shown in Figure 3 of Chang, includes for example both
Case IPR2013-00562
Patent 6,151,604

26
the column name (column 3), as well as column number (column 4) as an
OID. See Pet. 33, annotated Fig. 3. Therefore, where at least the column
name and column number values can function as OID’s, and with such OID
values for the columns, being included in the row defining a particular
column of SYS.COLUMNS table, the single SYS.COLUMNS table thus
satisfies the [E1] limitation “wherein at least one of said logical rows has an
OID equal to the OID of a corresponding one of said logical columns.”
For the foregoing reasons, Microsoft has shown, by a preponderance
of the evidence, that claim 31 of the ’604 patent is anticipated by Chang.
3. Claim 32
Enfish further argues that logical column information defining “one of
said logical columns to contain information for enabling determination of
OID’s from text entry,” as called for in claim 32, is not found in a single
table, but is only found in SYS.INDEXES catalog of Figure 4, which is not a
part of SYS.TABLES (Figure 2) or SYS.COLUMNS (Figure 3). PO Resp.
42–43. Microsoft does not address this argument in their Reply.
As discussed above, we are persuaded that claims 31 and 32 require
all the claim elements following “said logical table including” to be found in
the same logical table. The Federal Circuit has repeatedly emphasized that
the indefinite article “a” carries the meaning of “one or more” in open-ended
claims containing the transitional phrase “comprising.” Baldwin Graphic
Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). Thus, claim
31 recites “a logical table,” and while the claim is not restricted to a database
with one table, we determine that the recitations in claim 31 and 32
following “said logical table including” must be found in a single table.
Claim 32 further limits the “logical column information” recited as an
Case IPR2013-00562
Patent 6,151,604

27
element of the logical table in claim 31. Microsoft does not identify in the
specification of the ’604 patent, nor point us to any evidence or
embodiment, indicating that the elements of Enfish’s claimed “logical table”
were intended to be in separate, different tables. See Ex. 1001, Abst., 1:41–
60, 3:7–21. The specification of the ’604 patent consistently refers to table
100 in the context of a single table, including, in an embodiment used in a
word processing application. Id. at 16:65–67, Figs 3, 9, 10, 13. (“The
database of the present invention includes a novel Structured Word
Processor that may be used in conjunction with the table 100.”)
We conclude that the evidence provided by Microsoft with respect to
the packed description in SYS.TABLES storing column information,
including primary key column definition information from SYS.COLUMNS
table is not persuasive because it does not explain how OID determination
by text searching as recited in claim 32 would be conducted on such stored
information and definitions in these particular tables, or even that
SYS.TABLES or SYS.COLUMNS are indexed to provide such a search
function. Pet. 34–35. Dr. Hosking describes that it is the SYS.INDEX of
Figure 4 that is necessary for Chang to determine what “columns are
amenable to being searched.” Ex. 1022 ¶ 184. Enfish argues persuasively
that the only table Chang discloses for index searching is SYS.INDEX
shown in Figure 4. PO Resp. 42–43 (citing Ex. 1003, 7:27–29, Ex. 2003 at
190–193:7–15).
For the foregoing reasons, we determine that Microsoft has not
shown, by a preponderance of the evidence, that claim 32 of the ’604 patent
is anticipated by Chang.
B. Obviousness over Chang and Horn
Case IPR2013-00562
Patent 6,151,604

28
For the reasons given below, after consideration of Enfish’s Patent
Owner Response, and the evidence cited therein, we determine that
Microsoft has shown, by a preponderance of the evidence, that claim 42 is
unpatentable as obvious over the combination of Chang and Horn. We
further determine that Microsoft has not shown by a preponderance of the
evidence that claim 43 is unpatentable over Chang and Horn.
1. Horn
Horn discloses a method for maintaining the referential integrity of a
relational database by reviewing, i.e. examining, prior to altering the
database, any proposed changes to the database and determining if the
proposed changes affect any known relationships in other data tables. Ex.
1005, Abst. Horn explains that in a referential database, it is important “to
efficiently and rapidly ascertain whether or not an attempted modification to
the structure of a relational database will allow consistent referential
integrity.” Id. at 4:48–51. Horn shows in Figure 2 an “employees” table
that contains an employee number column “EE NO” where the employee
number for a record object (e.g. employee Sharp) may also be found in a
different “MANAGER EE” column indicating a manager relationship with
respect to a different record object (i.e. employee Abel).
2. Claim 42
Enfish argues that Microsoft does not provide any explanation of how
Horn’s employee table at Figure 2 can be combined with Chang’s system
catalogs, i.e. SYS.TABLES and SYS.COLUMNS, which have no relational
data from the employee table. PO Resp. 50. Enfish specifically argues
“Petitioner merely proposed combining Horn with the Employee Table
(FIG. 1) of Chang, and makes no mention of how Horn can be combined
Case IPR2013-00562
Patent 6,151,604

29
with the system catalogs to disclose the single table recited in claims 12 and
42.” Id.
Microsoft asserts that from a combination perspective, Horn
represents prior art confirming Dr. Hosking’s testimony that it was widely
known in the art at the time of the invention of the subject matter of the ’640
patent, as a matter of design choice, to have separate rows with some
relationship in a table refer to one another. Id. at 38–39 (citing Ex. 1022 ¶¶
269–270). Microsoft explained that “[a]n employee table is a mere example
where this occurs, but a person of ordinary skill understood to create these
relationships as necessary, and it would have been obvious to employ row-
to-row pointers in the system tables as well as the employee table of Chang’s
Figure 1. Id. at 39 (citing Ex. 1022 ¶ 271). Dr. Hosking testified as follows:
271. The row-to-row pointers shown in Horn were a
common tool available to database designers from well before
the priority date of the ’604 patent. Horn’s use of that common
tool is not treated as an innovation within Horn because, as a
general matter, it was well-known to use row-to-row pointers
whenever an association (relation) is proper between two
elements in a table. The employee table in Horn is an example
of a table with the row-to-row pointers.

Ex. 1002 ¶ 271. We are persuaded by Microsoft’s argument because Horn’s
employee table example teaches that a cell in a row, such as record object
employee Abel, directs, or points, to a different row, e.g., record object
employee Sharp. Ex. 1002 ¶ 270. 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).
Enfish argues that Horn’s reference between associated rows is not a
Case IPR2013-00562
Patent 6,151,604

30
“pointer” within the plain meaning of the term, as understood by those of
ordinary skill in the art. PO Resp. 50. Enfish asserts that a “pointer” is
understood in the field as “a variable that stores an address to a location
where an object resides” and that a shared employee number is not a variable
that stores an address. Id. Enfish’s argument does not, however, explain
why the stored employee number, in the “MANAGER EE” column for
employee Able, is not an address, or is not storing an address, identifying
record object employee Sharp, i.e. Able’s manager.
We are not persuaded that Enfish has sufficiently rebutted Microsoft’s
explanation that one of ordinary skill in the art would understand the shared
employee number as a pointer in the context of functionally relating one
object to another, e.g. relating row object employee Sharp, to row object
employee Able.
For the foregoing reasons, Microsoft has shown, by a preponderance
of the evidence, that claim 42 of the ’604 patent is unpatentable as obvious
over the combination of Chang in view of Horn.
3. Claim 43
Enfish incorporates by reference its arguments from the Preliminary
Response, with respect to claims 7 and 37, which recite the same subject
matter as claim 43. PO Resp. 51 (citing Prelim. Resp. 56–58). Enfish
argues that Microsoft relied upon Anderson in claims 7 and 37 to teach the
“pointers” that apparently Chang lacks, but, does not rely upon Anderson for
claim 43. Enfish argues specifically that “[t]he Board should interpret
Petitioner's statements in claims 7 and 37 as an admission that Chang does
not disclose the ‘plurality of pointers’ recited in claims 13 and 43. Id. at 54.
Microsoft argues that the limitation of claim 43, “at least one of said
Case IPR2013-00562
Patent 6,151,604

31
logical columns defines logical cells that include a plurality of pointers to
other logical columns within the same record, said pointers indicating those
logical columns within the same record that contains defined values,” is met
in part by Chang’s disclosure of a cell in a row of SYS.TABLES containing
the Packed Description. Pet. 42. Microsoft further states that Chang
discloses logical pointer in “COL.NO” column in SYS.COLUMNS table
pointing to the column’s logical placement in a table. Id. at 43 (citing Ex.
1003, 7:1-3, Fig. 6).
We are not persuaded by Microsoft’s position because the argument
relies upon at least two different tables in Chang, SYS.TABLES and
SYS.COLUMNS. This evidence fails to show the limitations in claim 43 as
being within a single table as discussed above in section III.A.3. Claim 43
further limits the logical columns of “said logical table” as recited in claim
42, thus, the limitations of claim 43 must also be found within a single table.
We conclude that Microsoft has not shown by a preponderance of the
evidence that claim 43 would have been obvious over Chang and Horn.
C. Obviousness over Chang and Webb
We have reviewed Microsoft’s obviousness arguments and supporting
evidence, including Chang and Webb’s disclosure and the detailed
explanation appearing on pages 40–42 and 46–48 of the Petition. We
determine that Microsoft’s explanation persuasively reads all elements of
claim 41 onto the disclosure of Chang.
1. Webb
Webb describes a distributed application which runs on a local
computer and accesses data stored on a central computer. Ex. 1007, 14. The
central computer makes the same data accessible to multiple users and
Case IPR2013-00562
Patent 6,151,604

32
application programs. Id. Webb describes itself as a “[g]uide . . . for C
programmers who want to embed Structured Query Language (SQL)
statements into their programs for access to local or remote (distributed)
databases.” Id. Webb also discloses table 3-5 including several rows,
PRODUCT_ID 102 through 108, each row having pointer 101, that points to
PARENT_PRODUCT_ID 101 which is a separate record/row. See Ex. 1007
at 47.
2. Claim 41
Enfish argues that Microsoft does not provide sufficient rationale for
combining Chang and Webb. PO Resp. 51–52. Enfish specifically argues
“[n]either the Petitioner nor Dr. Hosking, however, have even discussed
such a combination, let alone demonstrated that such a combination is
possible.” Id. at 52 (citing Prelim. Resp, 53–56). We are not persuaded by
this argument. In contrast to this statement, Microsoft explained that Webb
provides a flexibility desired by relational database designers and relates to a
relational database system and specific database structure, which includes
SQL (Structured Query Language) statements, and discloses table 3-5 where
at least one of the records/rows has a cell that contains a pointer to a
different row.” Pet 44–46 (citing Ex. 1007 at 47, Ex. 1022 ¶¶ 287–288.).
We are persuaded that Microsoft has shown a sufficiently articulated
reason with rational underpinning to support obviousness. Pet. 47–48 (citing
Ex. 1022 ¶¶ 289–297). Microsoft explained that one of ordinary skill in the
art would have understood the SQL language and would have combined
Webb’s database structures with Chang’s system in order to “consolidate[e]
system catalog information to reduce access requirements within a relational
database.” Id. at 48. The predictable use of familiar prior art elements
Case IPR2013-00562
Patent 6,151,604

33
according to their established functions renders the recited invention
obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Microsoft explains how the initial limitations [A]–[D] of claim 41 are
met by Chang for the same reasons as claim 31 discussed above in section
III.C.2. Pet. 43. Microsoft additionally explains how the remaining
elements of claim 41, listed below as [F1], [F2], and [F3] as referred to by
Microsoft and Enfish, are met by Webb. Pet. 44–46 (citing Ex. 1007, xiii,
47).
[F1] at least one of said plurality of logical rows contains
a logical cell that contains a pointer to a different logical
row and

[F2] at least one of said plurality of logical rows includes
information defining the type of a different logical row;
and

[F3] means for searching said table for said pointer.

Id. at 44. Microsoft contends that Webb discloses table 3-5 having several
rows that point to the parent product ID of a different record/row. Pet. 47
(citing Ex. 1007, 47). Microsoft further argues “that rows with
PRODUCT_ID of 102 through 108 are all of the same type, i.e. category,
defined by the row for PRODUCT_ID 101, as indicated in the
PARENT_PRODUCT_ID column. See Ex. 1007 at 47. Observing table 3-
5 in Webb, the first column entry of the first record “Product ID” 101 is
referenced by the following seven records at PARENT_PRODUCT_ID
column. Further, the first record and column entry “Product ID” 101 defines
each of the seven following records in table 3-5 as a component of the first
record product “Professional Oracle.” We find this evidence persuasive that
Case IPR2013-00562
Patent 6,151,604

34
the value 101 in table 3-5 acts as a pointer, cross-referencing records to
interrelate and identify the type or category of certain records. Chang
discloses elements [F1] and [F2] of claim 41.
As discussed above in claim construction section II.C.2, claim 41 also
includes the limitation “means for searching said table for said pointer.”
Microsoft explains how this means-plus-function limitation, and its
corresponding structure, is met by Chang. Pet. 41–42, 46 (citing Ex. 1003,
10:34–11:4, Figs. 2, 4, 5, 6, 7, 11, Ex. 1022 ¶¶ 261–262).
Chang discloses searching a relational database using a
general purpose computer. See Ex. 1003 at Figure 11. Chang
discloses which columns are amenable to being searched by
disclosing that certain columns are indexed. See Ex. 1003 at
Figure 4. This information is collected into the same packed
descriptor, PD, as the other column defining information
discussed with respect to claim 31. See Ex. 1003 at Figures 2,
6, 7, 10:34–11:4. Searching the index is meant to return a
particular row or rows, from which the OIDs described for
limitation 31[C] can be determined. See Ex. 1002, Hosking
Decl. at ¶¶ 261-262. Chang stores the column information in
the Sys.Columns table, which is also stored in the packed
descriptor, PD, of Figure 2. See Ex. 1003 at Figures 2, 6, 7,
10:34–11:4. Accordingly, Chang discloses searching on a
general purpose computer using an index. See Ex. 1002,
Hosking Decl. at ¶¶ 261-262.

Pet. 41–42. Enfish does not specifically argue that Chang fails to meet this
means-plus-function claim limitation, but relies upon reference to sections
VII.A.1, and VII.A.1.b, of its Patent Owner Response that argue Chang fails
to disclose the column and row OID limitations recited in the independent
claims. See PO Resp. 51–52. As discussed above with respect to claim 31,
we do not find Enfish’s position persuasive. We are persuaded by
Microsoft’s explanation, above, that effectively reads the searching function
Case IPR2013-00562
Patent 6,151,604

35
described in Chang, on the algorithm structure of “means for searching.”
For the foregoing reasons, Microsoft has shown, by a preponderance
of the evidence, that claim 41 of the ’604 patent is unpatentable as obvious
over the combination of Chang in view of Webb.
D. Obviousness over Chang and Smith ’162, or over Chang, Horn,
and Smith ’162, or over Chang, Smith ’162, and Jenness, or over
Chang, Horn, Smith ’162, and Jenness
We have reviewed Microsoft’s obviousness arguments and supporting
evidence, including Chang and Smith ’162’s disclosure and the detailed
explanation appearing on pages 46–48 of the Petition. For the reasons given
below, we determine that Microsoft has not shown, by a preponderance of
the evidence, that claims 33, 38, 39, 44, and 45 are unpatentable as obvious
over the combination of Chang and Smith ’162.
1. Smith ’162
Smith ’162 describes an object-oriented database system where
various documents are organized and represented as collections of logically
related documents, i.e. documents of a similar type, or “objects.” Ex. 1008,
Abst. These “objects” containing the document collections can be
“generically referred to as ‘folders,’” and the folders represented as
“objects.” Id. at 3:29–35. The underlying database management system has
an organizational table structure with rows and columns, where columns can
specify objects, including attributes of an object, representing a folder. See
Id. at 9:66–68, 10:31–34, Fig. 1.
2. Claims 33 and 38
Enfish asserts that Microsoft fails to provide a sufficient rationale for
combining Chang and Smith ’162. Prelim. Resp. 38. Enfish contends that
Case IPR2013-00562
Patent 6,151,604

36
Microsoft’s only motivation for the combination is that “‘Chang, like Smith
’162, describes columns and rows as being represented by objects.’”Prelim.
Resp. 38 (citing Pet. 47:10–15). Enfish argues that the bare assertion by
Microsoft and Dr. Hoskings, that two references are within a similar field of
endeavor, is insufficient to support a determination of obviousness. Id.
(citing Ex.1022 ¶ 281).
We agree with Enfish that Microsoft has not met its burden to show
that a person of ordinary skill in the art would have modified Chang based
on the disclosure of Smith ’162 resulting in the subject matter of the
challenged claims. Microsoft asserts that “a person of ordinary skill in the
art would have been motivated to combine Chang with Smith ’162 because
Chang, like Smith ’162, describes columns and rows as being represented by
objects and Chang describes including a “file i.d.” describing a location in a
column.” Pet. 47 (citing Ex. 1008, 10:31–34, Ex. 1003, Abst., Fig. 3).
Microsoft contends that Chang arguably does not explicitly disclose folders
but a person of ordinary skill in the art would combine the folder objects of
Smith ’162 with Chang.. Pet. 47–48 (citing Ex. 1008, 8:12–13). Microsoft
further contends that Smith ’162 discloses folder objects having pointers that
point to other objects, such as documents, within the same folder. Pet. 48
(citing Ex. 1008 8:19–20).
Our review of Chang reveals simply that a “file i.d.,” represents a file
location “from which additional information on the table may be derived.”
Ex. 1003, 6:5–10. Microsoft’s statements indicating that both references
describe elements of tables in a database does not provide sufficient
explanation or evidence for combining these references. See Pet. 47–48.
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
Case IPR2013-00562
Patent 6,151,604

37
between the subject matter sought to be patented 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 the
subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). A patent claim composed of several elements, however, is not
proved obvious merely by demonstrating that each of its elements was
known, independently, in the prior art. Id. at 418. In analyzing the
obviousness of a combination of prior art elements, it can be important to
identify a reason that would have prompted one of skill in the art to combine
the elements in the way the claimed invention does. Id. Microsoft’s
argument does not explain why one of skill in the art would look to Smith
’162 for a “folder type record.” Microsoft has not articulated any reason, or
presented rational evidentiary underpinnings, explaining why Chang’s “file
i.d.” was, or should have been, understood as a “folder object” as disclosed
by Smith ’162, or why one of skill in the art at the time of invention of the
subject matter of the ’604 patent would have looked to combine Smith
’162’s “folder objects” with Chang’s “file i.d.”
We conclude that Microsoft has not shown by a preponderance of the
evidence that claims 33 and 38 would have been obvious over Chang and
Smith ’162.
3. Claims 39, 44, and 45
For claim 39, Microsoft relies on the combination of Chang, Smith
’162, and Jenness. Pet. 52–53. Microsoft contends that Jenness teaches a
pointer to the folder allegedly disclosed by Smith ’162. Id. (citing Ex. 1013
5:62-63). As explained above with regard to claims 33 and 38, we conclude
that Microsoft has not articulated any reason, or presented rational
Case IPR2013-00562
Patent 6,151,604

38
evidentiary underpinnings, explaining why Chang would have been
combined with Smith ’162. Thus, claim 39, which depends from claim 38,
is not obvious for the same reason as claim 38.
To meet the limitations of claim 44, Microsoft relies upon the
combination of Chang, Horn, and Smith ’162, and states that “it would have
been obvious to combine Chang and Smith ’162, as described for claim []
38, with the further teachings of Horn. Pet. 55. Chang and Smith ’162,
however, cannot be combined to meet claim 44 for the same reasons
discussed above in regard to claim 38. Claim 45 depends from claim 44,
thus for the same reasons discussed above, Chang and Smith ‘162 cannot be
combined to meet claim 44. Accordingly, we conclude that Microsoft has
not shown by a preponderance of the evidence that claims 39, 43, and 44
would have been obvious over Chang, Smith ’162, and Jenness, and/or
Horn.
E. Obviousness over Chang and Dickerson, or over Chang,
Dickerson, and Crus
For the reasons given below, after consideration of Microsoft’s
Petition and Enfish’s PO Response, and the evidence cited therein,
Microsoft has not shown by a preponderance of the evidence that claims 34
and 35 are unpatentable as obvious over the combination of Chang and
Dickerson, or Chang, Dickerson, and Crus.
1. Dickerson
Dickerson discloses a database system residing on a host, or central
computer, and users can access the database from terminals connected to the
central computer. Ex. 1009, 1:25–45, Fig. 1. Dickerson also teaches a
contingency system having the same database at two different sites, with
Case IPR2013-00562
Patent 6,151,604

39
both sites being accessible by users from other terminals, where both
databases are updated to maintain the databases identical. Id. at 11:5–20.
Dickerson states “[w]henever a resource such as a part of a database is
accessed during a sync interval, a lock will be placed on both copies of that
resource (one copy at each site) . . . the two databases will always remain
identical for practical purposes as the locks on the data at the second site will
not be released until its commit process is completed, so that no terminal
will ever be able to obtain differing information from the two databases.”
Id. at 11:9–20.
2. Claim 34
Microsoft argues that Chang discloses all the limitations of base claim
31, but not the reciprocal synchronization of two logical columns recited in
claim 34. Pet. 48. More particularly, Microsoft asserts that Dickerson
discloses the limitation in claim 34 “wherein said attribute set information
defines one of said logical columns to contain information for synchronizing
two logical columns reciprocally.” Id. Microsoft argues that Dickerson
discloses “a replicated database” that teaches “reciprocal synchronization of
two logical columns,” where Dickerson discloses modification of a column
in one database replicated in databases at other sites. Id. at 48–49 (citing Ex.
1009 at 10:56–11:28, Figure 8). In support of this ground, Microsoft relies
on the Hosking Declaration (Ex. 1022 ¶¶ 225, 285–294), explaining how
each limitation is disclosed in Chang and Dickerson. Pet. 49.
Enfish contends that Microsoft’s arguments are based on “mirroring”
that “occurs across separate databases as opposed to across two columns
within the same table.” PO Resp. 44. Enfish makes two specific arguments
with respect to “mirroring” and the asserted combination. Id. at 44–45.
Case IPR2013-00562
Patent 6,151,604

40
Enfish first contends that Petitioner has failed to explain, or provide
evidence, why one of skill in the art would combine these references to
“mirror” columns within the same logical table in the first place. Id. at 45.
Enfish asserts that on the contrary, one of skill in the art would understand
that “mirroring” columns across different databases defeats the purpose of a
single system catalog such as SYS.TABLES and SYS.COLUMNS in
Chang. Id. Also, Enfish contends that “mirroring” occurs across separate
databases and is not the same function as “synchronizing two logical
columns reciprocally” as recited in claim 34. Id.
Dickerson teaches replication of data across separate databases at
different sites by synchronization:
Whenever a resource such as a part of a database is
accessed during a sync interval, a lock will be placed on both
copies of that resource (one copy at each site). A
communications function local to the transaction manager will
participate in the commit process with that transaction manager
so as to guarantee that any update information is transmitted out
of that site by the time that commit takes place. The transmitted
update information is used to update the database at the other
site so as to maintain the two databases identical.

Ex. 1009 11:9–20. Dickerson states that mirroring “is an arrangement in
which databases at different sites hold the same data, as in a contingency
system, but with the databases at both sites being available for access by
terminals.” Id. at 10:58–11:4. The evidence in Dickerson relating to
mirroring data in separate databases reveals a discrete sync interval
permitting the transfer of the same data, in the same attribute set, between
separate databases and separate tables. Id. at 5:56–6:5. This disclosure,
however, does not describe how to synchronize two attribute sets in the same
Case IPR2013-00562
Patent 6,151,604

41
table by a specific synchronizing attribute set, also in the same table, as
called for in claim 34.
We give little weight to Dr. Hosking’s testimony with respect to the
limitations in claim 34 because he does not provide an explanation or
evidence as to why Dickerson’s synchronization of data in the same column
across separate databases teaches reciprocal synchronization between
columns in the same table. Dr. Hosking states that a person of skill in the art
would be motivated to combine Chang and “the synchronization concept as
taught in Dickerson in the case that similar elements were to be reciprocally
synchronized.” Ex. 1022 ¶ 225. The premise of this argument is the
assumption that Dickerson’s synchronization across separate databases is the
same as synchronizing two logical columns reciprocally in the same
database table. Dr. Hosking does not provide support for this assumption.
This argument, therefore, does not sufficiently explain why mirroring data
across separate databases leads to data synchronization between logical
columns in the same table. Dr. Hosking’s testimony does not explain why,
or how, one of ordinary skill in the art would use the database management
disclosed by Chang in cooperation with the linked database elements
between separate databases to achieve reciprocal synchronization “to
achieve such coordination of the data” between logical columns in the same
table. See id. at ¶¶ 283–294.
We conclude that Microsoft has not shown by a preponderance of the
evidence that claim 34 would have been obvious over Chang and Dickerson.
3. Claim 35
For claim 35, which depends from claim 34, Microsoft relies on the
combination of Chang, Dickerson, and Crus. Pet. 49–50. Microsoft
Case IPR2013-00562
Patent 6,151,604

42
contends that Crus teaches “reciprocal pointers to said two logical columns”
as required by claim 35. Id. Chang and Dickerson cannot be combined to
meet claim 35 for the same reasons as set forth above with respect to claim
34. Accordingly, we conclude that Microsoft has not shown by a
preponderance of the evidence that claim 35 would have been obvious over
Chang, Dickerson, and Crus.
F. Obviousness over Chang and Goldberg
For the reasons given below, after consideration of Microsoft’s
Petition and Enfish’s PO Response, and the evidence cited therein,
Microsoft has not shown, by a preponderance of the evidence, that claim 36
is unpatentable as obvious over the combination of Chang and Goldberg.
1. Goldberg
Goldberg teaches a database management system for a relational
database which facilitates storage and retrieval of what are known as
“directed graphs.” Ex. 1011, 1:7–10, Fig. 1. Goldberg also discloses that a
column in a table will have a reference data type, and that entries in that
column “are pointers to rows in a specified table.” Id. at Abst. Goldberg
further explains that the directed graph structure is stored as a record/row in
a table, “with references corresponding to interconnections between records
being stored in reference data type columns.” Id.
2. Claim 36
Microsoft relies on Dr. Hosking’s Declaration to explain how each
limitation of claim 36 is disclosed in Chang and Goldberg. Pet. 50–51
(citing Ex. 1022 ¶¶ 227, 310–313). In the Petition, Microsoft addresses only
the second limitation in claim 36, not the first limitation. Id. In Dr.
Hosking’s Declaration, however, he states that Chang discloses, “at least one
Case IPR2013-00562
Patent 6,151,604

43
of said plurality of records includes information defining the type of a
different record,” addressing the first limitation recited in claim 36. With
respect to this first limitation, Dr. Hosking testifies that:
310. As previously stated, Chang discloses a Packed
Description, PD, in a row that contains information about
columns that are represented by rows. See Claim 1[E] and
31[E] Anticipation by Chang Discussion. The PD includes
information that defines the column type. Id. The column is
represented as a row in the SYS.COLUMNS table. Id.
Accordingly, the PD disclosed by Chang includes information
that defines the type of a different logical row.

Ex. 1022 ¶ 310.
Enfish argues that Dr. Hosking’s rationale is flawed in that it relies
upon the Packed Description in SYS.TABLES table, and the column
defining the Packed Description in SYS.COLUMNS table, and therefore
does not meet the single table requirement of base claim 31. PO Resp. 46–
47. Enfish contends that the correct reading claims 31 and 36, “[t]he ‘at
least one of said plurality of logical rows’ and the ‘different logical row’
must be within the same table.” Id. at 46.
Microsoft’s assertion is based upon the Packed Description in
SYS.TABLES containing the definitions of column types of any particular
table, and, that the columns of SYS.TABLES are represented as a row in the
SYS.COLUMNS table, thus “the PD disclosed by Chang includes
information that defines the type of a different logical row.” Pet. 50 (citing
Ex. 1022 ¶ 310). We are persuaded that this evidence including both the
SYS.COLUMNS and SYS.TABLES tables, even when read as Microsoft
suggests, does not meet the single table requirement of claims 31 and 36 as
discussed in section III.A.3. Accordingly, we conclude that Microsoft has
Case IPR2013-00562
Patent 6,151,604

44
not shown by a preponderance of the evidence that claim 36 would have
been obvious over Chang and Goldberg.
G. Obviousness over Chang and Anderson
For the reasons given below, after consideration of Microsoft’s
Petition, Enfish’s Preliminary Response, and PO Response, and the evidence
cited therein, Microsoft has not shown, by a preponderance of the evidence,
that claim 37 is unpatentable as obvious over the combination of Chang and
Anderson.
1. Anderson
Anderson discloses an electronic spreadsheet having numbered
columns, for example 1, 2, 3 . . . etc., and letters referencing columns, for
example A, B, C . . . etc. Ex. 1012, 1:51–65. The intersection of any row
and column, for example B2, defines an addressable storage location, i.e. a
“cell” for holding text and numeric information. Id. Anderson also teaches
that spreadsheet cells can store formulas applying calculations to numbers
stored in spreadsheet cells. Id. at 2:3–6. Anderson explains that “[i]n this
fashion, cell references can serve as variables in an equation, thereby
allowing precise mathematical relationships to be defined between cells.”
Id. at 6–9.
2. Claim 37
In support of this asserted ground of unpatentability, Microsoft relies
on the Hosking Declaration (Ex. 1022 ¶¶ 228, 317–325), explaining how
each limitation is disclosed in Chang and Anderson. Pet. 51–52.
Microsoft asserts that Anderson teaches a spreadsheet program having
notebooks, i.e., tables, with cells, rows and columns, where the cells have
pointers to other columns. Pet. 51 (citing Ex. 1012, Figs. 2–5). Dr. Hosking
Case IPR2013-00562
Patent 6,151,604

45
testifies that one of skill in the art would understand spreadsheet programs as
a simple form of a database similar to relational databases. Ex. 1022, ¶ 321,
Further, Dr. Hosking states that one of skill in the art would therefore
recognize it as obvious to combine the cell pointer functions in such
spreadsheets with the relational tables in Chang, so that a cell in Chang’s
table would contain a plurality of pointers to other columns which contain
defined values. Id. ¶ 321–325 (citing Ex. 1012, Figs. 4J, 4G).
Enfish argues that a cell address in a spreadsheet, for example the
intersection of column A and row 2, “A2,” shown in Anderson’s Figure 4H,
is not a “pointer” in a relational database, but “a cell reference [that] merely
serves as a variable in the formula and the data stored within this referenced
cell (i.e., cell A2) is used in the calculation.” Prelim. Resp. 46. Enfish
asserts specifically that “[t]he term ‘pointer’ is known in the art to mean a
variable that stores an address to a location where an object resides. The
formula variables in Anderson are not pointers.” PO Resp. 48. Enfish relies
upon Dr. Jagadish to explain that one of ordinary skill in the art of relational
databases would not have understood a cell reference in Anderson’s
spreadsheet program, to be a “pointer,” in a relational database as recited in
the ’604 patent. Ex. 2007 ¶ 212. Dr. Jagadish refers to three textbooks
which explain that [t]he plain and ordinary meaning of the term “pointer” is
a variable that stores the address where another object resides.” Id. ¶ 207.
We credit Dr. Jagadish’s testimony and evidence as to the meaning of the
word “pointer” as it is understood by one of skill in the art because it is
consistent with usage of the term “pointer” in the ’604 patent. The ’604
patent, although it does not give a specific definition, describes for example
an OID used as a pointer to an object, where “the ‘Employed By’ column
Case IPR2013-00562
Patent 6,151,604

46
126 is synchronized with the ‘Employees’ column by an OID pointer in the
‘Synchronize With’ column 144 to the ‘Employees’ column, represented by
row 139.” Ex. 1001, 10:8–12, see also, Id. at 12: 22–32.
Microsoft does not explain sufficiently or provide evidence that a cell
reference for incorporating a variable stored in the cell into a formula in a
spreadsheet would have been understood as a variable that stores an address
to a location where an object resides in the database, at the time of the
invention of the subject matter of the ’604 patent.
We conclude that Microsoft has not shown by a preponderance of the
evidence that claim 37 would have been obvious over Chang and Anderson.
H. Obviousness over Chang and Covey
For the reasons given below, after consideration of Microsoft’s
Petition and Enfish’s Preliminary Response, and the evidence cited therein,
Microsoft has not shown, by a preponderance of the evidence, that claim 40
is unpatentable as obvious over the combination of Chang and Covey.
1. Covey
Covey is titled “Method for Creating and Maintaining a Database for
a Dynamic Enterprise” and discloses a method of constructing a database
which records a “token” to identify a database object, where a token is
created for each event and includes a field corresponding to the event date.
Ex. 1014. Abst. The database thus creates a record that preserves the
historical state conditions of the database. Id. at 8:21–26.
2. Claim 40
Microsoft argues that dependent claim 40 is obvious in view of Chang
and Covey. Microsoft concedes that Chang fails to disclose an OID having
a session identification number and a timestamp. Pet. 53. Microsoft asserts
Case IPR2013-00562
Patent 6,151,604

47
that claim 40 is made obvious by Covey’s disclosure of a relational database
associating time values and session identifiers with database objects. Id. at
53–54 (citing Ex. 1014, Abst., Figs. 12–13, 202). Microsoft argues that
“[b]ecause Chang and Covey both address the same technical issues and
disclose closely related subject matter, a person having ordinary skill in the
art would be motivated to combine Chang and Covey.” Id. at 54.
Enfish counters that Microsoft’s statement that the references are
analogous art is not sufficient to support obviousness, and that Microsoft’s
assertions are unsupported by any reliance on Dr. Hosking’s Declaration.
Prelim. Resp. 50. Microsoft does not, in the Petition, provide any reason for
the combination of Chang and Covey apart from asserting the references are
analogous art and address similar technical issues. Pet. 50. This is not a
sufficient reason with rational evidentiary underpinnings to support the
combination of Chang and Covey.
We conclude that Microsoft has not shown by a preponderance of the
evidence that claim 40 would have been obvious over Chang and Covey.
I. Secondary Considerations
The factual inquiries for obviousness include secondary
considerations based on evaluation and crediting of objective evidence.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). 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.”).
Case IPR2013-00562
Patent 6,151,604

48
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
and copying. PO Resp. 54–59. Enfish points to features of claim 31 that it
contends resulted in the objective indicia of success, such as industry
accolades and commercial success, to which Enfish refers. Id. at 54. We
are not convinced by this argument. Claim 31 of the ’604 patent is
challenged as anticipated by Chang. Secondary considerations do not weigh
into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters
Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). In addition, we are not
persuaded by secondary considerations here because Enfish has not shown a
nexus between any of the accolades or successes it says occurred and the use
of the pointer or pointer searching function.
Enfish additionally asserts that Microsoft failed at developing a
suitable search engine. PO Resp. 58–59. We are not persuaded by this
argument. The statements of Bill Gates and others at Microsoft relied on by
Enfish in support of this assertion are not tied sufficiently to any claim at
issue in this proceeding. Instead, the statements broadly refer to search
engines. PO Resp. 58 (citing Ex. 2050, 2055, 2029, 2030). None of the
statements reference two-way pointers, folder objects or searching for
pointers or OID’s.
Enfish further submits evidence to show commercial success. PO
Resp. 59. The evidence Enfish cites refers to how many users downloaded
Enfish’s software and to the planning of a collaborative effort as set forth in
one paragraph of its business plan. See Ex. 2025, 2. Enfish’s evidence,
however, does not indicate that these users paid for or actually used the
Case IPR2013-00562
Patent 6,151,604

49
downloaded software. The evidence also does not indicate how the number
of downloads indicates 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, we are
not persuaded by Enfish’s evidence of commercial success.
J. Motion to Correct Patent Owner Response
After institution of trial, Enfish timely filed a Patent Owner Response
(Paper 26), along with the Jagadish Declaration (Ex. 2007), which Enfish
later redacted (Paper 32). On September 16, 2014, Enfish filed an
unopposed motion to file a corrected Jagadish Declaration, which Enfish
contends correct only typographical errors and erroneous citations.
Paper 40. We grant Enfish’s September 16, 2014 motion.
K. 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 56. The parties contend that Microsoft withdraws its motion to
seal (Paper 30) provided that we expunge the confidential versions. Paper
56. 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.
L. 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
Case IPR2013-00562
Patent 6,151,604

50
Declaration,” Exhibit 2077 ¶¶ 32, 33). Paper 49.
Regarding the Mehrotra Declaration, we agree with Microsoft’s
assertion that Dr. Mehrotra provides only conclusory opinions and,
therefore, we do not rely on it in this Decision. 37 C.F.R. § 42.65(a).
Because Microsoft has not argued persuasively any other reason to exclude
the Mehrotra Declaration, we deny Microsoft’s request to exclude it.
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 49, 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 49, 5.
Patent Owner contends that paragraphs 32 and 33 do not exceed the scope
because they are submitted to support admissibility. Paper 59, 3–4. We
agree with Microsoft that the Wannier Declaration provides conclusory
technical opinions, and, therefore, do not rely upon it. Because Microsoft
has not argued persuasively any other reason to exclude paragraphs 32 and
33 of the Wannier Declaration, we deny Microsoft’s request to exclude it.
IV. CONCLUSION
We conclude that Microsoft has demonstrated by a preponderance of
the evidence that (1) claim 31 of the ’604 patent is anticipated by Chang, and
(2) claims 41 and 42 of the ’604 patent are obvious over the combination of
Chang and Horn, or Chang and Webb.
We further conclude that Microsoft has not shown that claims 32–40,
and 43– 45 of the ’604 patent are unpatentable as obvious. In addition, we
Case IPR2013-00562
Patent 6,151,604

51
terminate this proceeding with respect to claims 1–15 under 37
C.F.R. § 42.72.
IV. ORDER
For the reasons given, it is
ORDERED that claims 31, 41, and 42 of U.S. Patent No. 6,151,604
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 1–15;
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.
Case IPR2013-00562
Patent 6,151,604

52
For PETITIONER:

Amy E. Simpson
Chad Campbell
PERKINS COIE LLP
ASimpson@perkinscoie.com
CCampbell@perkinscoie.com

For PATENT OWNER:

Frank Pietrantonio
Orion Armon
COOLEY LLP
fpietrantonio@cooley.com
oarmon@cooley.com
zpatdcdocketing@cooley.com