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In Facebook v. Software Rights Archive, three online service companies challenged two Software Rights’ patents –5,832,494 (“the '494 patent) and 6,233,571 (“the '571 patent”) – in three separate Inter Partes Reviews (IPR). (IPR2013-001479, 00480, and 00481). The claims at issue relate to improved methods for indexing and searching databases. The majority of the claims were found unpatentable, but claims 1, 5, 15, and 16 of the ‘494 patent and claim 21 of the ‘571 patent were ruled nonobvious.
Exemplary claim 1 of the ‘494 patent recites, in part:
A method of analyzing a database . . . comprising the steps of: . . .
generating candidate cluster links for the selected node, wherein the step of generating comprises an analysis of one or more indirect relationships in the database;
deriving actual cluster links from the candidate cluster links . . . .
In the petition, Petitioners cited their expert’s doctoral dissertation describing a clustering algorithm that creates a tree out of all documents in a collection of documents. Facebook, Inc., et al. v. Software Rights Archive, LLC (IPR2013-001479, Paper No. 54, page 13). When creating the tree, documents may be placed in multiple clusters, and overlapping clusters are deleted. Id. at 14. Petitioners relied upon the tree creation to teach the generating the candidate links, and the cluster deletion to teach the deriving the actual cluster links. Id. at 13 and 14.
However, the Patent Trials and Appeals Board (“PTAB”) interpreted the generating and deriving to represent separate steps in the method: first, the set of candidate cluster links are generated, and only then are the actual cluster links derived. Id. at 9 and 10. In contrast, the dissertation described the cluster deletion as part of the creation of the tree. Id. at 15. In other words, the PTAB found that, because of the inherent ordering in the claim language, the candidate cluster links had to be generated separately from, and before, the actual cluster links can be derived. Id. at 17.
As always, claim interpretation is paramount in determining patentability. When attacking the validity of a patent, one should consider language that could be inherently limiting, such as an inherent order to steps of a method. When defending claims, one should diligent to ensure such inherent limitations are taught by the cited references and addressed by the petitioner.