US 7110936

Patent Overview — US 7,110,936 B2

Title: System and method for generating and maintaining software code.

Assignee: Complementsoft LLC (original assignee; listed as current assignee). Inventors: Fen Hiew and Edwin M. Schroeder.

Key dates (as listed): Priority date 2001-02-23; application US09/992,624 filed 2001-11-19; published as US2005/0229154A1 on 2005-10-13; patent granted/publication date 2006-09-19. Status: Expired – Lifetime, adjusted expiration 2024-05-30.

Purpose: The invention relates generally to software maintenance and development tools — specifically an extensible, language-independent software development tool with a graphical user interface, i.e., a GUI Integrated Development Environment (IDE). It is directed to generating and maintaining source code, particularly in data manipulation languages. The system resides on a local computer that can exchange files with a remote computer over a network (LAN, WAN, or the Internet).

Plain-language scope (from the excerpt): The IDE includes: a document manager for file transfer and enhanced file management such as version synchronization across platforms; a server module, site manager, and connectivity layer for connecting to remote computers, transparently exchanging files, and managing server profiles/connection information; an editor that can modify code, create new files, and provide features such as visual execution breakpoints, standardized formatting, and line numbering; a visualizer that reads code and generates program flow, data flow, or logic diagrams, integrated with the editor so changes in one are immediately reflected in the other, and able to read execution logs/outputs to show execution paths and debugging/optimization information; a template manager for browsing and copying existing code/templates; and a parser layer that detects the code type in a selected file and activates corresponding data manipulation language rules and logic. The excerpt lists "seamlessly exchanging with and executing files on local and remote computers" as among its functions.

What the excerpt does not establish: The full text of the claims and their exact metes and bounds; the complete detailed description and figures; the full definitions/classification sections; and any omitted content (the source is explicitly excerpted). Classification listings given are G06F8/00, G06F8/30, G06F8/34.

Source: https://patents.google.com/patent/US7110936/en

I'll research the litigation history for US patent 7110936 using multiple sources.

Let me dig deeper into the specific district court and PTAB/Supreme Court cases.

Let me search for the original district court case details and any additional defendants/litigation.

Litigation Involving US Patent 7,110,936 ("the '936 patent")

Patent details (per the authoritative Google Patents record): US 7,110,936 B2, "System and method for generating and maintaining software code"; inventors Fen Hiew and Edwin M. Schroeder; original/current assignee ComplementSoft LLC; filed Nov. 19, 2001; priority date Feb. 23, 2001; granted Sept. 19, 2006; status Expired – Lifetime (adjusted expiration May 30, 2024).

I found no litigation involving any defendant other than SAS Institute, Inc. All known contested proceedings trace back to a single patent-infringement dispute between ComplementSoft and SAS and its appellate/post-grant offshoots. The Google Patents "litigation" links match these cases. Details below.

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1. District Court — the underlying infringement suit

• Case: ComplementSoft, LLC v. SAS Institute, Inc.
• Plaintiff: ComplementSoft, LLC
• Defendant: SAS Institute, Inc.
• Jurisdiction: U.S. District Court for the Northern District of Illinois (Eastern Division)
• Case No.: 1:12-cv-07372 (some secondary sources render it "1:12-cv-7372" — same case)
• Filing date: September 14, 2012
• Asserted claims: the complaint alleged infringement of at least claims 1, 2, 3, 4, 8, and 10 of the '936 patent
• Outcome/status: Dismissed with prejudice. Per the PTAB's September 7, 2018 termination order in IPR2013-00226, the parties represented that they had "settled their pending litigation in the Northern District of Illinois, and that district court action has already been dismissed with prejudice."

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2. PTAB — IPR2013-00226 (the primary post-grant challenge)

• Case: SAS Institute, Inc. v. ComplementSoft, LLC
• Petitioner: SAS Institute, Inc.; Patent Owner: ComplementSoft, LLC
• Jurisdiction: USPTO Patent Trial and Appeal Board
• Case No.: IPR2013-00226 (Patent 7,110,936 B2)
• Filing date: March 29, 2013
• Key timeline / outcome:
  • Aug. 12, 2013 – Institution decision: IPR instituted on claims 1 and 3–10 only; not instituted on claims 2 and 11–16.
  • Aug. 6, 2014 – Final Written Decision: claims 1, 3, and 5–10 unpatentable as obvious; claim 4 held patentable.
  • Nov. 10, 2014 – Request for rehearing denied.
  • Jan. 8, 2015 – SAS noticed appeal to the Federal Circuit.
  • June 18, 2018 – After the Supreme Court's SAS v. Iancu decision, the Federal Circuit granted SAS's motion to remand; Patent Owner statutorily disclaimed claims 1, 3, and 5–10 (35 U.S.C. § 253(a)).
  • Sept. 7, 2018 – Board granted the parties' Joint Motion to Terminate the proceeding (35 U.S.C. § 317); the settlement agreement (Ex. 1059) was kept as business-confidential information.
• Current status: Terminated (settled).

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3. PTAB — IPR2013-00581 (SAS's second petition)

• Case: SAS Institute, Inc. v. ComplementSoft, LLC
• Petitioner: SAS Institute, Inc.; Patent Owner: ComplementSoft, LLC
• Jurisdiction: USPTO Patent Trial and Appeal Board
• Case No.: IPR2013-00581 (Patent 7,110,936 B2)
• Filing date: 2013 (a second petition by SAS, filed while IPR2013-00226 was pending; it sought review largely of the claims not instituted in the first petition, asserting grounds based on the Polo reference and others)
• Outcome/status: Not instituted (procedural). The Board did not institute this follow-on petition; per the Google Patents docket annotation, it is characterized as "Not Instituted – Procedural."

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4. Federal Circuit appeal

• Case: SAS Institute, Inc. v. ComplementSoft, LLC (consolidated appeals)
• Appellant: SAS Institute, Inc.; Cross-Appellant: ComplementSoft, LLC; USPTO Director intervened
• Jurisdiction: U.S. Court of Appeals for the Federal Circuit
• Case Nos.: 2015-1346 and 2015-1347
• Filing date: January 2015 (appeal from the Aug. 6, 2014 Final Written Decision and Nov. 10, 2014 rehearing denial)
• Outcome/status:
  • June 10, 2016 – Panel decision, 825 F.3d 1341: affirmed-in-part, vacated-in-part, remanded. Affirmed the Board's claim constructions and held the Board need not address non-instituted claims in its final written decision (following Synopsys v. Mentor Graphics); vacated the Board's patentability determination as to claim 4 and remanded because the Board adopted a new construction of "graphical representations of data flows" in its final decision without giving the parties notice (APA violation). Judge Newman concurred-in-part/dissented-in-part.
  • Nov. 7, 2016 – Petition for rehearing en banc denied (842 F.3d 1223), Judge Newman dissenting.
  • Dec. 15, 2016 – Mandate issued.
  • June 18, 2018 – On remand from the Supreme Court, the Federal Circuit granted SAS's unopposed motion to terminate the appeal via remand to the Board (which led to the PTAB termination above).

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5. U.S. Supreme Court

• Case: SAS Institute Inc. v. Iancu (originally docketed against Director Michelle K. Lee; the Federal Respondent caption appeared as SAS Institute Inc. v. Matal during pendency)
• Petitioner: SAS Institute Inc.; Respondents: Andrei Iancu, Director, USPTO, and ComplementSoft, LLC
• Jurisdiction: Supreme Court of the United States
• Case No.: 16-969
• Cert. petition filed: January 31, 2017 (some sources note Jan. 21, 2017); cert. granted May 22, 2017; argued Nov. 27, 2017
• Question presented: Whether 35 U.S.C. § 318(a) requires the PTAB to issue a final written decision as to every claim challenged by the petitioner, or only some of them.
• Outcome: Reversed and remanded, 5–4 (April 24, 2018); majority opinion by Justice Gorsuch (joined by Roberts, Kennedy, Thomas, Alito). Held that when the PTAB institutes an IPR, it must decide the patentability of all claims the petitioner challenged. Justices Ginsburg and Breyer filed dissents. Judgment issued May 29, 2018.
• Effect on this patent: After remand, the parties settled and the IPR was terminated (see item 2).

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Summary table

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Notes on scope and confidence

• Only one accused infringer (SAS) appears in the record. I found no other district-court actions, ITC investigations, or other-defendant suits involving the '936 patent. The Google Patents "Family has litigation" data lists exactly the matters above (the two PTAB cases, the N.D. Ill. case, the two Federal Circuit appeals, and the Supreme Court case 16-969).
• I did not attempt to verify outcomes against PACER/docket-level documents beyond the sources retrieved; the settlement amounts and the specific terms of the SAS–ComplementSoft agreement are confidential (Ex. 1059 sealed as business-confidential in IPR2013-00226).
• Consistent with your strict rule, I have reproduced patent and case identifiers literally as they appear in the sources (e.g., "1:12-cv-07372" as shown on Google Patents, vs. "1:12-cv-7372" in some commentary; "SAS v. Matal" vs. "SAS v. Iancu" for the same Supreme Court case). Where sources differ on a filing date (e.g., cert. petition Jan. 21 vs. Jan. 31, 2017), I flagged both rather than silently choosing one.

If you want, I can pull the specific PTAB final written decision (Paper 38), the Federal Circuit opinion (825 F.3d 1341), or the docket sheet for 1:12-cv-07372 from PACER/CourtListener to confirm docket-level entries.

I'll research the PTAB and litigation history for US 7,110,936. The structured block says no AIA proceedings, but the patent page itself lists two PTAB case numbers and a Supreme Court docket — I'll verify those.

I have strong material on IPR2013-00226 and the appeals. Now let me pin down IPR2013-00581's outcome, the post-remand history, and any later petitions.

I hit the tool-step limit before confirming a few secondary items, so I'll flag those explicitly as unverified. Here is the analysis.

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PTAB / AIA trial history — US 7,110,936 ("System and method for generating and maintaining software code")

Data-source flag (read first). The structured "PTAB proceedings on file" block in my task prompt states the USPTO ODP API returned no AIA trial proceedings. That is contradicted by the patent's own Google Patents record and by primary USPTO documents. The patent page lists IPR2013-00226 and IPR2013-00581, and I verified both against the actual PTAB decisions hosted on uspto.gov and third-party dockets. I am therefore reporting two PTAB proceedings, not zero. The ODP "no proceedings" result appears to be an ingest/completeness gap for this expired, 2001-priority patent — not evidence of no PTAB activity. Do not treat the ODP null as dispositive.

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Proceedings overview

Two AIA trial petitions, both filed by SAS Institute, Inc. against patent owner ComplementSoft, LLC: one instituted and carried to a Final Written Decision that invalidated seven of the eight instituted claims (IPR2013-00226), and one denied institution as redundant of the first (IPR2013-00581). Neither was settled at the PTAB. The invalidation of claims 1, 3, and 5–10 was affirmed by the Federal Circuit, but the lone surviving claim (claim 4) was vacated on APA grounds, and the Federal Circuit's partial-institution ruling was itself reversed by the Supreme Court in SAS Institute Inc. v. Iancu (2018). Bottom line for a defendant: the patent's only independent claim (claim 1) is dead and the broadest dependent set (3, 5–10) is dead — an infringement theory built on claim 1 is very weak. But claims 2 and 11–16 were never adjudicated, so the patent is not fully "cleared"; the residual exposure is on the untested dependent claims.

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IPR2013-00226 — SAS Institute, Inc. v. ComplementSoft, LLC

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)

• Filed: 2013-03-29

• Status (verbatim from structured data): "Settlement." Gloss / discrepancy: this tag (Google Patents / Darts‑ip) does not describe the PTAB case, which ran to an adverse Final Written Decision and a multi-year appeal. The "settlement" label almost certainly reflects the parallel district-court action (ComplementSoft, LLC v. SAS Institute, Inc., No. 1:12‑cv‑07372, N.D. Ill., filed 2012‑09‑14) or the overall dispute. The IPR itself was not terminated by settlement. I could not independently confirm the district-court terms.

• Judge panel: Administrative Patent Judges Jennifer S. Bisk, Justin T. Arbes, and Kevin F. Turner (Tech Center 2100).

• Petition grounds: SAS challenged claims 1–16 under pre-AIA § 102 and § 103. The Board instituted on obviousness (§ 103) only, on claims 1 and 3–10:

  1. claim 1 over Coad + Oracle Primer + Oracle8 Primer;
  2. claims 1, 3, 5, 6, 8, 10 over Antis + Coad;
  3. claim 4 over Antis + Coad + Burkwald;
  4. claim 7 over Antis + Coad + Eick;
  5. claim 9 over Antis + Coad + "Building Applications."

  (Coad = U.S. Pat. 6,851,107; Antis = U.S. Pat. 5,572,650; Burkwald = U.S. Pat. 6,356,285; Eick = U.S. Pat. 5,937,064.)

• Institution decision: Instituted in part on 2013-08-12 (Paper 9). The Board instituted on claims 1 and 3–10 but declined to institute on claims 2 and 11–16. In the institution decision the Board construed "data manipulation language" as "a programming language used to access data in a database, such as to retrieve, insert, delete, or modify data in the database," and "graphical representations of flows" as "a diagram that depicts a map of the progression (or path) through the source code."

• Final Written Decision: 2014-08-06 (Paper 38). At claim level:

  • Unpatentable (canceled): claims 1, 3, 5, 6, 7, 8, 9, and 10.
  • Claim 4 — NOT shown unpatentable. Claim 4 depends from claim 1 and recites "the graphical representations of data flows are expandable and collapsible." The Board adopted a new construction in the FWD — "a graphical representation comprised of icons depicting data processing steps and arrows to depict the movement of data through source code" — and on that construction found the prior art did not meet the limitation. (Note: at least one secondary source mislabeled claim 4 as "independent"; per the claim text and the Federal Circuit opinion it is dependent on claim 1.)
  • Motion to Amend denied — the Board found proposed substitute claims 17, 18, and 20–25 not patentable over the prior art.
  • Claims 2 and 11–16 were not addressed because the Board had not instituted on them.
  • Reasoning in brief: claim 1 was obvious over Coad + Oracle Primers, and over Antis + Coad; dependent claims 5, 6, 8, 10 fell with claim 1 because patent owner did not separately argue them; claim 3 was obvious over Antis + Coad, with the Board crediting petitioner's expert Dr. Roussopoulos over patent owner's expert Mr. Zatkovich.

• Settlement / termination: None at the PTAB. A Request for Rehearing was denied 2014-11-10 (Paper 40).

• Appeal: Yes. SAS filed a Notice of Appeal 2015-01-08 to the Federal Circuit.

  • Federal Circuit Nos. 2015-1346 & 2015-1347, SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016-06-10), panel of Judges Newman, Chen, and Stoll (Stoll writing). Disposition: affirmed-in-part, vacated-in-part, and remanded. The court (a) affirmed the Board's claim constructions and the invalidation of claims 1, 3, 5–10; (b) rejected SAS's argument that the Board had to address non-instituted claims (Newman dissenting on that point); and (c) vacated the claim 4 patentability determination and remanded, because the Board "changed theories in midstream" by adopting a new construction of "graphical representations of data flows" in the FWD without giving the parties notice and an opportunity to argue — an APA violation (citing Belden v. Berk‑Tek). The court agreed with the substance of the new construction but condemned the procedure.
  • Rehearing en banc denied 2016-11-07 (precedential order, 842 F.3d 1223).
  • Supreme Court: No. 16‑969, SAS Institute Inc. v. Iancu, 584 U.S. 357, argued 2017-11-27, decided 2018-04-24. The Court (Gorsuch, J., 5–4) reversed the Federal Circuit's partial-institution holding and remanded, holding that under § 318(a) "the Board must address every claim the petitioner has challenged." The ruling was a direct response to this case's facts and abrogated the Board's 37 C.F.R. § 42.108(a) partial-institution practice nationwide. On remand, the PTAB would be required to address all of claims 1–16.

• Defensive value: High for the patent owner's core claim. Claim 1 — the only independent claim — was canceled and that cancellation was affirmed by the Federal Circuit. Any modern demand letter built on claim 1 is on very thin ice. The catch: because of the SAS remand and the claim‑4 vacatur, the FWD is not a clean, final, all‑claims adjudication, and claims 2 and 11–16 remain untested. Verify the post‑remand posture before relying on the FWD as a complete bar.

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IPR2013-00581 — SAS Institute, Inc. v. ComplementSoft, LLC

• Type: Inter Partes Review (with a motion for joinder with IPR2013-00226)
• Filed: 2013-09-12 (corrected petition, Paper 7)
• Status (verbatim from structured data): "Not Instituted - Procedural." Gloss: the Board denied institution and dismissed the joinder motion as moot. (Docketalarm lists the case status as "Terminated.")
• Judge panel: Kevin F. Turner, Justin T. Arbes, and Jennifer S. Bisk — the same panel as IPR2013-00226.
• Petition grounds: SAS sought review of claims 1–16 under § 103, this time primarily on Polo, and on Coad, as primary references — i.e., a different/expanded art set aimed at the claims that IPR2013-00226 had left out (notably claims 2 and 11–16). Representative grounds included Polo + Coad + Oracle Primer + Oracle8 Primer against claims 1–3, 6, 8, 10–12, 15, 16, and several Coad‑based combinations against claims 2–16.
• Institution decision: Denied (Decision, Paper 15). Reasoning in brief:
  • SAS failed to show a reasonable likelihood under § 314(a) on (1) any Polo‑based ground; (2) any ground primarily based on Antis; or (3) obviousness of claims 2 and 11–16 primarily based on Coad. On the means‑plus‑function limitation "means for allowing the source code to be executed both locally and remotely," the Board agreed with ComplementSoft that Coad discloses only local/remote storage, not local/remote execution.
  • Separately, exercising discretion under 35 U.S.C. § 325(d), the Board denied the grounds that were "based upon substantially the same prior art and arguments as set forth in IPR2013-00226" (e.g., Coad + Oracle Primers for claims 3, 6, 8, 10; claim 4 with Burkwald; claim 5 with Antis; claim 7 with Eick; claim 9 with "Building Applications").
  • Order: "the petition is denied and no trial is instituted"; the motion for joinder is dismissed as moot.
• Final Written Decision: None issued (no institution).
• Settlement / termination: Terminated by denial of institution; no settlement.
• Appeal: None (institution denials under § 314(d) are non-appealable, and no FWD issued).
• Defensive value: Mixed. The denial means claims 2 and 11–16 were never adjudicated on the merits — SAS's second bite at them failed on the reasonable-likelihood threshold and on § 325(d) redundancy. The denial is not a merits endorsement of those claims; it is a threshold/procedural loss. It does, however, show the Board was unwilling to run a second, largely duplicative trial.

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Strategic summary

Claim status of US 7,110,936.

• Canceled / held unpatentable at the PTAB, affirmed on appeal: claims 1, 3, 5, 6, 7, 8, 9, 10. Claim 1 is the patent's only independent claim, so this is the substantive core of the patent.
• Sustained at the PTAB but vacated on appeal (unresolved): claim 4 (depends from claim 1) — the Board found it not unpatentable; the Federal Circuit vacated that finding and remanded for the Board to re-run it with proper notice.
• Untested / never adjudicated: claims 2 and 11–16 — not instituted in IPR2013‑00226 (partial institution), and SAS's dedicated attempt to reach them in IPR2013‑00581 was denied.
• Amended claims: proposed substitute claims 17, 18, 20–25 were rejected (motion to amend denied), so there is no amended claim set to fall back on.
• Caveat: the SAS v. Iancu remand (2018) required the Board to address all challenged claims (1–16). I could not confirm from my sources whether the Board issued a post-remand FWD or how claims 2 and 11–16 were ultimately resolved. Treat the post-2018 posture as unverified and pull the live PTAB E2E docket before relying on it.

Estoppel landscape (§ 315(e)(2)). SAS and its privies are estopped from re-asserting, in district court, any § 102/§ 103 ground they raised or reasonably could have raised in IPR2013-00226 — but only as to claims 1 and 3–10, i.e., the claims that reached a FWD. No estoppel attached to claims 2 and 11–16 because the partial institution left them out of the FWD — this asymmetry was the precise concern raised by Judge Newman's dissent in the Federal Circuit and the reason the Supreme Court took SAS. For a new defendant (not a SAS privy), no estoppel applies at all; the full prior-art palette — Coad, Antis, Burkwald, Eick, Polo, the Oracle Primers, Corda, "Building Applications," Access 97 Visual Basic — is available, and the § 103 record in IPR2013‑00226 is a ready-made roadmap. The § 325(d) denial in IPR2013‑00581 also means a fresh petitioner should present new art, not a rehash of Coad/Antis.

Pattern signals. A single petitioner, SAS Institute, drove the entire PTAB and appellate history — a classic district-court–defendant-files-IPR posture (ComplementSoft v. SAS, N.D. Ill. 1:12‑cv‑07372). There is no defensive aggregator in the chain on these two IPRs (no Unified Patents / RPX petition appears in the record I retrieved), though the Google Patents page lists a Darts‑ip "first worldwide family litigation" link and PTAB case entries sourced to Unified Patents' data (that is a database, not a filer). Patent owner ComplementSoft litigated aggressively through the appeal (cross-appealing the Board's constructions) and through the Supreme Court — the SAS case bears its name and it filed a merits brief defending the Board. The patent is now expired (adjusted expiration 2024-05-30), which sharply limits any forward-looking assertion value.

One open item to verify. A petition-for-IPR document for the '936 patent is hosted at patentlyo.com under a 2017-05 path ("Trial No.: Not Yet Assigned," seeking review of claims 1–16). I could not confirm whether it corresponds to a distinct later trial or is a re-posted copy of the 2013 petition used as a cert-stage exhibit. Do not treat it as a third proceeding without docket confirmation.

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Recommended next steps

1. If you are a defendant and the demand letter cites claim 1 (or claims 3, 5–10): the contention is built on canceled claims. Point to the Final Written Decision, IPR2013‑00226, Paper 38 (2014-08-06) — claims 1, 3, 5–10 unpatentable — and the Federal Circuit's affirmance in SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016-06-10). Available at the CourtListener record: https://www.courtlistener.com/opinion/[4318797](/patent/4318797)/sas-institute-inc-v-complementsoft-llc/. The FWD itself: https://ptabtrialblog.com/wp-content/uploads/2014/08/IPR2013-00226-FWD-20140806.pdf. Asserting a canceled claim is at minimum a Rule 11 exposure.
2. Confirm the post-2018 status before relying on anything. The SAS remand (SCOTUS No. 16‑969, https://supreme.justia.com/cases/federal/us/584/16-969/) and the Federal Circuit's vacatur of the claim‑4 finding mean the FWD was not the last word. Pull the live docket at USPTO PTAB E2E (or the Unified Patents portal entries listed on the patent page) for IPR2013‑00226 and IPR2013‑00581 to see whether a post-remand FWD issued and how claims 2 and 11–16 were handled.
3. Focus the residual risk on claims 2 and 11–16. These were never tested, and the Board's IPR2013‑00581 denial was on threshold/redundancy grounds, not merits. If the patent owner asserts them, a fresh IPR is available (no estoppel binding a non-privy), but bring new art to survive § 325(d) in light of the Coad/Antis/Oracle record already before the Office. Original IPR2013‑00581 denial: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/IPR2013-00581_sas_institute_inc_v_complementsoft_llc_paper_15.pdf.
4. No active trial-stage milestones to track — both proceedings are closed (one by FWD + appeal exhaustion, one by institution denial), and the patent is expired (adjusted expiration 2024-05-30). There is no live 1-year § 316(a)(11) clock running on this patent.

Confidence / gaps. High confidence on the existence, panels, grounds, institution decisions, the 2014-08-06 FWD claim-level results, the 2013-00581 denial, and the CAFC/SCOTUS appellate chain. Below high confidence: (a) the post-SAS-remand disposition and the ultimate fate of claims 2, 11–16, and 4; (b) the "Settlement" tag on IPR2013‑00226 and the outcome/terms of the N.D. Ill. litigation (1:12‑cv‑07372); (c) whether the 2017-dated patentlyo petition is a separate trial. I did not fabricate any proceeding numbers; both numbers I report come from the patent record and were confirmed against USPTO-hosted decisions.

I'll research the assignment/ownership record for US 7,110,936 using multiple sources.

Let me look at Google Patents legal events and the assignment history directly.

Let me try to find the actual USPTO assignment records and ComplementSoft's corporate status.

Assignment / Ownership Reconstruction — US 7,110,936

Data-source caveat (read first): I was able to retrieve the patent's own legal-events record (Google Patents, which mirrors the USPTO assignment feed) and corroborating secondary sources, but my live queries against the USPTO Assignment Center (assignmentcenter.uspto.gov / assignment.uspto.gov) were not completed within this session. I therefore do not have verified reel/frame numbers for the one recorded assignment, and I did not fabricate any. Where the record below lacks a reel/frame, that is a gap in what I could retrieve — not evidence that no record exists. Verify at the USPTO Assignment Search page: https://assignment.uspto.gov/patent/index.html.

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Inventors

Unusual patterns: Neither inventor appears anywhere in the record as departing to a later assignee, and there is no recorded assignment away from ComplementSoft. The only recorded transfer runs from the inventors to ComplementSoft — consistent with founder/employee ownership rather than an outside-inventor assignment. There is no evidence of a within-12-months inventor departure preceding a fire-sale. One minor anomaly worth noting: the two inventors are geographically split (Twin Cities, MN + Chicago, IL) while the assignee is a single Chicago LLC — a small, distributed shop rather than a large corporate R&D group.

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Original assignee

• Entity on the issued patent: ComplementSoft LLC, Chicago, IL (per the printed patent, item (73)).
• Product / embodiment: Yes — the company appears to have shipped a product embodying the disclosure. The pre-grant publication US 2005/0229154 A1 contains an architecture figure captioned "ComplementSoft ASAP Architecture Overview," and secondary commentary describes ComplementSoft as selling supplemental software that adds a GUI/visualization layer to SAS software (Ohio State Bar IP newsletter, Summer 2017). This is a shipped, if niche, product, not a paper-only holding.
• Primary line of business: Software tools for data-manipulation languages — a GUI Integrated Development Environment / visualizer for SAS, SPSS, SQL, DB2 UDB and Oracle RDBMS code.
• Current status: Not established with high confidence. The patent record continues to list ComplementSoft LLC as current assignee (Google Patents), and the entity actively litigated as late as 2012–2016. I could not confirm from a primary corporate-registry or SEC source whether ComplementSoft is currently operating, dormant, dissolved, or acquired. Treat status as unverified.

Cross-reference result: ComplementSoft is a private LLC; no SEC 10-K/8-K filings exist for it, so no SEC-derived ownership signal is available.

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Assignment timeline

Only one assignment is reflected in the patent's own legal-events record. No post-issuance transfer is recorded through the sources I could reach.

• ~2002-01 (executed; exact execution date not retrieved) / recorded 2002-01-28 — Reel/Frame: not retrieved

  • Conveyance: Assignment — "ASSIGNMENT OF ASSIGNORS' INTEREST (SEE DOCUMENT FOR DETAILS)"
  • Assignor: Fen Hiew; Edwin M. Schroeder (joint inventors)
  • Assignee: ComplementSoft LLC (Chicago, IL)
  • Correspondent: Not confirmed from the assignment record. The patent's prosecution correspondent of record is McDonnell Boehnen Hulbert & Berghoff LLP, Chicago, IL (listed on the FPO record for US 7,110,936). I could not verify that this firm is the named correspondent on the assignment document itself. It is a large, general-practice IP firm appearing once in this chain — no recurrence, so no repeat-correspondent flag.
  • Context: Internal formation / founders-to-company — the inventors assigned their rights to the company that commercialized the IDE. This is the original assignment, not a re-sale.

• All later dates: no recorded assignment found. Between 2002 and the 2012 suit, during the 2013–2018 PTAB/Federal Circuit/Supreme Court proceedings, and after the 2018 settlement, no ownership-change event appears in the patent's legal-events feed. ComplementSoft LLC remains the named current assignee.

If the Assignment Center shows additional recordings (e.g., a security interest or a post-settlement transfer) that are absent from the Google Patents feed, my "no post-issuance assignment" conclusion would need to be revised. This is the single most important item to verify directly at the Assignment Center.

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Timeline diagram

timeline
    title Ownership of US 7110936
    2001 : Provisionals filed by Hiew and Schroeder
    2001 : Utility application filed
    2002 : Inventors assign rights to ComplementSoft LLC
    2006 : Patent issued to ComplementSoft LLC
    2012 : ComplementSoft sues SAS for infringement
    2013 : SAS petitions for IPR at the PTAB
    2018 : IPR terminated after party settlement
    2024 : Patent reaches adjusted expiration

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NPE / troll-pattern signals

1. Shell-entity transfer — not present. There is no transfer to a licensing-only LLC (no "IP / Holdings / Ventures" assignee anywhere in the chain). The sole assignment runs inventors → ComplementSoft LLC, the same entity that made a product ("ComplementSoft ASAP") and that remains the current assignee. The chain contains only one link, so a shell-entity step cannot be shown.

2. Known asserter in the chain — not present. The only assignee, ComplementSoft LLC, does not match any entity on the standard asserter lists invoked (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN/Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). It is an operating software vendor, and its litigation was directed at SAS Institute — the vendor of the very SAS language the product supplemented — i.e., an operating-company-vs-operating-company dispute, not an NPE campaign. Caveat: ComplementSoft is a small, thinly capitalized company, so it is NPE-adjacent in profile even though it is not a listed recurring asserter; I do not treat profile alone as a finding.

3. Repeat correspondent across the chain — not present. The only correspondent/agent identifiable in the record is McDonnell Boehnen Hulbert & Berghoff LLP (Chicago, IL) on the patent prosecution record. It appears once; there is no second link for it (or any other firm) to recur on. A single appearance is expressly not a finding under your rule. Unresolved: I could not confirm the correspondent of record on the assignment itself (that field was not retrievable), so I cannot fully exclude a different recording agent on the one assignment.

4. Cascading transfers — not present. One assignment total. No chained LLCs, no shared correspondent addresses, no common-principal sequence.

5. Pre-litigation transfer — not present. The only assignment (recorded 2002-01-28) predates the first infringement suit (ComplementSoft, LLC v. SAS Institute, Inc., No. 1:12-cv-07372, N.D. Ill., filed 2012-09-14) by roughly ten years. Nothing was arranged within 6 months of suit to set venue or manufacture standing; the patent owner at suit was the original assignee.

6. Bankruptcy fire-sale — not present. No bankruptcy record for ComplementSoft surfaced, and no Chapter 7/11 sale is reflected. (Status of the company is unverified, but there is no fire-sale evidence.)

7. Privateering — not present. No operating company transferred this patent to an NPE to assert on its behalf. The asserter is the original operating company, asserting its own patent.

8. Defensive aggregator — not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. There is no neutralization event in the record.

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Verdict

Operating-company assertion.

The ownership chain is a single link — inventors Hiew and Schroeder assigned to ComplementSoft LLC, the original assignee, which remained the record owner throughout (recorded 2002-01-28; no post-issuance transfer found). ComplementSoft was not a bare licensing shell: it marketed the "ComplementSoft ASAP" IDE described in its own pre-grant publication and asserted the patent against SAS Institute, the vendor of the SAS language its product supplemented — an operating-company-vs-operating-company dispute, not an NPE campaign. None of the classic NPE signals (shell transfer, known asserter, cascading LLCs, pre-suit transfer, privateering, defensive aggregator) is present; the one signal I could not fully evaluate is the assignment's correspondent of record, because reel/frame and correspondent were not retrievable in this session.

Confidence and limitations: This verdict rests on a chain that contains only the original assignment, so it is closer to "insufficient data" than to a rich ownership history — the outcome is driven mainly by the type of plaintiff (a product company) rather than by an assignment pattern. Before finalizing, verify at https://assignment.uspto.gov/patent/index.html (search US 7,110,936) that (a) the 2002 recording's reel/frame and correspondent match what I report, and (b) no post-2018 (post-settlement) assignment exists that the Google Patents feed omitted.

I'll research the prior art citations for US 7,110,936. Let me run several targeted searches.

Let me search for the specific prior art references cited in this patent.

Let me search for the complete list of references cited on the patent itself.

Prior Art Analysis — US 7,110,936 B2

Important scope caveat up front

I could not retrieve the "References Cited" front‑page list for US 7,110,936 from the sources available to me. The authoritative full text you supplied (Google Patents, https://patents.google.com/patent/US7110936/en) is truncated at the end of the detailed description and does not include the "(56) References Cited" block. My follow‑up searches against Google Patents, Justia, FreePatentsOnline, and the USPTO‑mirrored PDFs returned the specification, the claims, and the litigation docket — but not the enumerated patent citations. I also hit a hard stop on tool calls before I could exhaustively pull every citation.

I am therefore not going to fabricate a clean "list of citations" table. Instead I report (a) the prior art references that appear by name in primary legal records (the Federal Circuit opinion and the PTAB proceedings) with high confidence, and (b) explicitly flag what I could not verify. Per your strict rule, I have not auto‑corrected any identifier.

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1. References I can confirm from primary legal records

A. U.S. Patent No. 6,851,107 to Coad et al. ("the Coad patent")

§ 102 analysis (Coad):

• Type of art: Because it is a U.S. patent granted on an application filed October 4, 2000 (with priority back to October 5, 1999) — i.e., before the '936 patent's February 23, 2001 priority date — Coad is classic pre‑AIA § 102(e) art (a U.S. patent "granted on an application… filed before the invention thereof by the applicant").
• Claims it potentially anticipated: On the record, Coad was applied against the pre‑issue claims (the prosecution history refers to "independent claims 1 and 18"). It was not applied against issued claim 1 successfully, because the amendment added "data manipulation languages," a limitation Coad does not disclose. Coad therefore does not anticipate issued claim 1 under § 102. By the examiner's own stated reason for allowance, Coad lacks at least the data‑manipulation‑language element now recited in claim 1.
• Practical takeaway: Coad is best characterized as the reason for the pivotal claim amendment, not as a § 102 anticipator of the patent as issued. It would only be a § 102 reference against claims that do not require a data manipulation language.

B. The "Antis" reference — Exhibit 1047, IPR2013‑00226

§ 102 analysis (Antis): The record shows Antis was not used alone as a § 102 anticipator. It was the primary reference in a § 103 combination with Coad. So while Antis is the most relevant reference in the litigation record, it is not, on the record I can verify, a § 102 anticipation reference (either alone or in the noted combination).

C. The "Polo" reference — IPR2013‑00581

• Identified in the case history as the basis (with "others") for SAS's second petition, IPR2013‑00581 (the earlier summary of this patent states it "sought review… asserting grounds based on the Polo reference and others").
• IPR2013‑00581 was not instituted (procedural), so no Board decision adopted Polo as a ground of unpatentability.
• I could not verify the full citation, date, or content of "Polo" from available sources, and I will not fabricate it.

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2. What the claims require (so the § 102 test is clear)

Issued claim 1 is the only independent claim (16 claims total). It requires four cooperating elements: (1) a document manager, (2) an editor, (3) a parser layer that detects which of a plurality of types of data manipulation languages the code uses and activates that language's rules/logic, and (4) a visualizer dynamically linked to the editor, with the "wherein" clause requiring bidirectional automatic synchronization between text edits and the diagram. Dependent claims 2 and 3 specify "data flows" and "program flows," respectively.

This matters for your § 102 question: the "data manipulation languages" limitation is precisely what distinguished the issued claims over the Coad art, and it is the element no confirmed reference in the record squarely discloses.

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3. Bottom line

1. No reference I can confirm from the record anticipates issued claim 1 under § 102. The confirmed prior art (Coad) was expressly found not to disclose the claim‑1 "data manipulation language" element, and the confirmed litigation reference (Antis) was used in a § 103 combination, not as a § 102 anticipator.
2. The most relevant confirmed patent citation is U.S. 6,851,107 to Coad (granted Feb. 1, 2005; app. 09/680,063 filed Oct. 4, 2000; priority Oct. 5, 1999) — a § 102(e) reference that drove the amendment adding "data manipulation languages."
3. The most relevant confirmed non‑patent citation is the "Antis" article (IPR2013‑00226 Ex. 1047), used with Coad under § 103 against claims 1, 3, 5–10.
4. "Polo" is named only in the non‑instituted IPR2013‑00581.

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4. Explicit uncertainties / items I did not verify

• I did not obtain the complete "References Cited" list printed on the face of US 7,110,936, and I cannot rule out that it contains U.S. patents, foreign patents, or non‑patent literature I have not identified. Any "full citation list" I produced beyond the items above would be speculation.
• Bibliographic details for "Antis" and "Polo" (authors, titles, publication dates/venues) are unverified.
• The description above attributes to the Federal Circuit the statement that Coad concerns "purely object‑oriented programming languages, such as Java and C++"; I have quoted it as reported, but I did not inspect the Coad patent's own specification.
• There is an unresolved conflict already flagged in the earlier sections: a 2005 Office Action reference to "independent claims 1 and 18," versus the PTAB/Federal Circuit treating the issued patent as having a single independent claim. That affects which claims a reference might be said to "anticipate," so it should be resolved before relying on any per‑claim mapping for the pre‑issue claim set.
• Claim 4 was held patentable by the Board (Aug. 6, 2014), then vacated and remanded by the Federal Circuit (June 10, 2016); claims 1, 3, and 5–10 were later statutorily disclaimed by the patent owner (2018). These developments mean the live‑claim picture for any § 102 analysis of the current patent is essentially mooted by disclaimer.

If you can supply the patent's front‑page "(56) References Cited" block (or let me resume tool calls), I can complete the per‑citation table — full citation, publication/filing date, description, and claim‑by‑claim § 102 mapping — for every enumerated reference rather than only the ones named in the litigation record.

I'll ground this in the actual prior art at issue. Let me research the specific references from the PTAB record.

Let me pull the specifics on the key references and the dependent claim limitations.

Let me confirm the full claim set text and the Polo reference.

Obviousness Analysis — U.S. Patent No. 7,110,936 under 35 U.S.C. § 103

Preliminary note on the prior-art record used

The previously generated sections in this analysis covered the patent's bibliographic data, abstract, claims and litigation history — they did not include a prior-art list. So before analyzing I reconstructed the prior-art of record from the authoritative source for § 103 purposes for this patent: the PTAB proceedings themselves. Everything below is grounded in the IPR2013‑00226 Petition and Final Written Decision, and the IPR2013‑00581 institution decision, which together set out the only fully litigated § 103 case on the '936 patent.

Governing law: the parties and the Federal Circuit treated the pre‑AIA versions of §§ 102 and 103 as controlling, given the effective filing dates (SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1346 n.3 (Fed. Cir. 2016)). This matters: pre‑AIA § 103(a) permits pre‑AIA § 102(e) art (Coad) to be used in an obviousness combination. Confidence: high on this point, because the Federal Circuit stated it expressly.

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1. The claim set to be analyzed

Per the Board (Paper 38, Aug. 6, 2014) and the Federal Circuit: the issued patent has 16 claims with exactly one independent claim (claim 1). Claims 2–16 all depend, directly or indirectly, from claim 1.

This resolves a discrepancy flagged in the earlier "Patent summary" section. That section noted a 2005 Office Action referring to "independent claims 1 and 18," and could not confirm the issued claim set. The record now answers it: claim 18 was in the pre‑issue claim set (the Petition quotes the examiner: "[The Coad reference] clearly anticipates the claimed limitations of independent claims 1 and 18" — Ex. 1002, Office Action dated May 31, 2005, at 3). A "claim 18" also appears later only as a proposed substitute claim in ComplementSoft's Motion to Amend (proposed claims 17–25). It is not an issued claim. The issued independent claim is claim 1, and only claim 1.

Claim 1 (the sole independent claim)

"1. An integrated development environment, comprising:
a document manager for retrieving source code programmed using one of a plurality of types of data manipulation languages;
an editor for displaying the retrieved source code and providing a means for a user to edit the retrieved source code;
a parser layer which detects the one of the plurality of types of data manipulation languages in which the retrieved source code is programmed and which activates rules and logic applicable to the detected one of the plurality of types of data manipulation languages; and
a visualizer dynamically linked to the editor for displaying graphical representations of flows within the retrieved source code using the rules and logic applicable to the detected one of the plurality of types of data manipulation languages and activated by the parser,
wherein the editor, parser layer and visualizer cooperate such that edits made to the source code using the editor are automatically reflected in the graphical representations of flows displayed by the visualizer and edits made to the graphical representations of flows in the visualizer are automatically reflected in the source code displayed by the editor."

Dependent claims — what they add

(Claims 5, 6, 8, 10 were not separately argued by the Patent Owner — a failure that, under the Board's approach, effectively conceded their obviousness once claim 1 fell.)

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2. Claim constructions that drive the § 103 outcome

Because obviousness rises or falls on the meaning of the "data manipulation language" and "flows" terms, the Board's constructions are the analytical hinge. All quotes below are from the Decision to Institute and the Final Written Decision.

Critical feature of this construction set: "data manipulation language" is construed broadly, and the claim 4 construction of "data flows" is narrow (requiring icons + arrows depicting movement of data). That asymmetry is precisely what produced the split outcome — a broad reading killed claims 1, 3, 5–10; a narrow reading saved claim 4.

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3. The prior art of record

(Footnote 2 of the IPR2013‑00581 decision supplies the exhibit numbers and citations verbatim. Source: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/IPR2013-00581_sas_institute_inc_v_complementsoft_llc_paper_15.pdf)

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4. What each primary reference discloses, element-by-element against claim 1

4a. Coad (U.S. 6,851,107) — discloses three of the four elements expressly

The Petition maps Coad to claim 1 as follows (quotes verified against the Petition text retrieved from Patently‑O):

• Editor: Coad col. 4, ll. 54–60 — "Although modifications made on the displays 204 and 206 may appear to modify the displays 204 and 206, in actuality all modifications are made directly to the source code 202 via an incremental code editor (ICE) 208, and the TMM 200 is used to generate the modifications in both the graphical 204 and the textual 206 views from the modifications to the source code 202."
• Parser layer: Coad col. 2, ll. 57–58 ("determining the language of the source code of the chosen file") and col. 5, ll. 50–55 ("The core 700 includes a parser 706 and an ICE 208. The parser 706 converts the source code into the language‑neutral representation in the TMM…"), with rules set out in Tables 1–17 (col. 6 l. 30 – col. 14 l. 63).
• Visualizer dynamically linked to editor: Coad col. 16 l. 57 – col. 17 l. 47 — static, dynamic and functional views; use‑case and class diagrams (FIG. 12).
• Bidirectional synchronization: Coad's whole architecture is bidirectional by construction — the ICE writes to source code 202 "and the TMM 200 is used to generate the modifications in both the graphical 204 and the textual 206 views" (col. 4, ll. 54–60).

Importantly, the Petition states that during prosecution "Complementsoft did not dispute that all four elements of the independent claim (i.e., the document manager, editor, parser, and visualizer) were disclosed in Coad." ComplementSoft's only distinction was that Coad addresses "structured" object‑oriented languages (Java, C++), while the claims recite "unstructured" data manipulation languages.

This concession is the single most damaging fact in the obviousness case. It means the entire validity of claim 1 rests on the presence of a data manipulation language — and, on prosecution history estoppel‑style reasoning, on the proposition that one of ordinary skill could not have adapted Coad's language‑agnostic architecture to a DML.

4b. Antis (U.S. 5,572,650) — supplies the "data manipulation language" limitation

Antis discloses a database‑analysis/visualization tool with seven linked views (over view, specification view, associations view, path view, code view, layout view, domain view). The Board rejected the Patent Owner's argument that Antis is confined to data definition languages:

"We agree with Patent Owner that a data definition language is different than a data manipulation language… However, we do not agree that Antis's disclosure is limited to data definition languages. Antis also discusses the use of RDBMS."

The Board found Antis's Figure 12 ("/HOME/PYRC/DATA/EXTRACT/V6.0/") shows "some source code that retrieves data from a database—a data manipulation language," and credited Dr. Roussopoulos's testimony that Figure 12 "shows a database query." It further observed the '936 specification itself contemplates RDBMS (col. 1 l. 66 – col. 2 l. 3: "a need exists for a system and method for exchanging, editing, debugging, visualizing[,] and developing SAS®, SPSS®, SQL®, DB2 UDB®, Oracle RDBMS®[,] and other relational database management software").

4c. Where the two references leave a gap — the editor

The Board rejected SAS's separate anticipation theory against Antis, agreeing with the Patent Owner that Antis "does not describe editing or modifying underlying source code files" — it merely shows/highlights views on cursor touches and mouse clicks (Antis col. 3, ll. 58–60; col. 7, ll. 46–54). That is exactly the gap Coad fills — and it is the engine of the § 103 combination.

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5. The combinations that render the claims obvious

Combination A — Antis + Coad (the primary combination)

Claims rendered obvious: 1, 3, 5, 6, 8, and 10 (Board: all unpatentable). Also 2, 11, 12, 15 and 16 in SAS's second petition — not instituted.

Motivation to combine (as articulated and credited by the Board):

1. Same field, same problem, same solution type. "A POSITA would have been motivated to combine Antis's teachings with Coad because both Antis and Coad are directed to software development tools that provide visual representations of source code." — a classic KSR "familiar elements according to known methods" rationale.
2. Overlapping, interlinked "views." Both references are built around synchronized, linked views of source code.
3. Stated benefit — simpler debugging and a more accurate code view. "The POSITA in software development systems would have been motivated to supplement Antis's database analysis system with Coad's teaching of a Quality Assurance (QA), because this would allow for easier source code debugging and a more accurate code view display in Antis by enabling automatic detection of source code errors."
4. Predictable, mechanical substitution. The Board expressly rejected the Patent Owner's "physical incompatibility" argument, quoting In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012): "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements."
5. The Patent Owner conceded the gap was only additive. ComplementSoft argued only that Antis "does not actually manipulate data" — an argument the Board found unpersuasive and which, notably, was not directed at any limitation of claim 1 other than "data manipulation language" and "graphical representations of flows."

Result: The Board concluded "a preponderance of the evidence demonstrates that independent claim 1 is unpatentable based on the combination of Antis and Coad."

Combination B — Coad + Oracle Primer + Oracle8 Primer (independent alternative for claim 1; also covers claims 3, 6, 8, 10)

The Board maintained its preliminary finding that claim 1 is unpatentable on this ground — as an independent basis, not merely cumulative. The Oracle Primers supply the DML teaching (SQL data retrieval/manipulation against a database via embedded calls), which closes the same gap Antis closes. Their teaching is used by the Board to reject ComplementSoft's proposed substitute‑claim argument (the Board credited Dr. Roussopoulos: "After retrieving data, additional functional calls may be used to perform data manipulation procedures on the retrieved data," citing the Oracle8 Primer at 93, 95, 103, 118).

Why this combination works: SQL is a data manipulation language by definition under the Board's construction, and the Oracle Primers are published SQL/embedded‑SQL references (1999, 2000) directly on point for the "retrieve, insert, delete, or modify data in a database" definition. Combining a language‑neutral visual development environment with a canonical DML text is a textbook KSR "use of a known technique to improve similar devices in the same way" rationale.

Combination C — Antis + Coad + Burkwald (claim 4)

Claim 4 adds only that the graphical representations of data flows are "expandable and collapsible."

Motivation: "all three references are directed to software development tools that provide visual representations of source code, such that the similar purposes and overlapping teachings would have motivated the POSITA to combine the teachings of the references. The POSITA would have been motivated to supplement the development tools of Antis and Coad with Burkwald's teaching of expanding and collapsing graphical representations of source code flows, because this would provide a developer with flexibility to modify the views of Antis and Coad to display information at a higher or lower level of detail."

⚠️ Outcome — this ground FAILED. The Board held the Petitioner "had not shown by a preponderance of the evidence that [claim 4] would have been obvious in view of Coad, Antis, and [Burkwald]." The reason is claim‑construction‑driven: the Board's narrow construction of "data flows" (icons depicting data processing steps + arrows depicting the movement of data) was not met by the icons/arrows of Burkwald as mapped. On appeal the Federal Circuit agreed with the construction but vacated the claim 4 determination because the Board adopted that narrower construction only in the Final Written Decision, without notice — an APA violation (825 F.3d at 1350–53). "It is uncertain whether SAS will ultimately be able to show unpatentability of the '936 patent claim 4 even under the construction… that we agree with."

Combination D — Antis + Coad + Eick (claim 7)

Claim 7 (security layer) is met by Eick (U.S. 5,937,064).

Motivation: "all three references are directed to visual representations of source code and data structures… the POSITA in software development systems would have been motivated to supplement the development tools of Antis and Coad with Eick's teaching of a security layer for managing secure connections with remote computers, because this would allow the systems of Antis and Coad to be distributed to one or more remote locations without a substantially increased risk that remotely stored data could be [compromised]."

Outcome: The Board found claim 7 unpatentable on this ground. This is a straightforward KSR "known technique to address a known problem" rationale (security when distributing a tool across a network).

Combination E — Antis + Coad + "Building Applications" (claim 9)

Claim 9 adds that "the template manager is adapted to automatically correct segments of the source code."

Motivation: "Building Applications's teaching of automatically correcting segments of source code determined to have errors would simplify the debugging of source code in Antis and Coad." All three are framed as software development tools.

Outcome: The Board found claim 9 unpatentable on this ground.

Combination F — Antis + Coad + Corda (claim 13, not instituted)

Motivation offered: "changing the appearance of displayed flows to indicate source code determined to have errors, because this would simplify source code debugging in Antis [and Coad]."
Outcome: Not instituted — the Board found no reasonable likelihood under § 314(a). Caveat: non‑institution is not a merits holding of non‑obviousness; it is a threshold determination on the petition record.

Combination G — Antis + Coad + Access 97 Visual Basic (claim 14, not instituted)

Motivation offered: "changing the appearance of source code determined to have errors, because this would simplify source code debugging in Antis and Coad."
Outcome: Not instituted.

Combination H — Polo‑based grounds (IPR2013‑00581; claims 1–3, 6, 8, 10–16)

The second petition substituted Polo (U.S. 6,785,668 B1) as the lead reference in place of Antis, in combinations including Polo + Coad + Oracle Primer + Oracle8 Primer (+ Burkwald for claims 2 and 4; + Antis for claim 5; + Eick for claim 7; + Building Applications for claims 9, 11, 12; + Corda for claim 13; + Access 97 Visual Basic for claim 14).

Outcome: The Board denied institution on every Polo‑based ground under § 314(a), and separately exercised its § 325(d) discretion to deny the grounds that "are based upon substantially the same prior art and arguments as set forth in IPR2013‑00226." This is a procedural denial, not a patentability holding.

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6. Summary table — combination → claims → outcome

(Sources: FWD Paper 38, Aug. 6, 2014, https://ptabtrialblog.com/wp-content/uploads/2014/08/IPR2013-00226-FWD-20140806.pdf; IPR2013‑00581 Paper 15, https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/IPR2013-00581_sas_institute_inc_v_complementsoft_llc_paper_15.pdf)

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7. Why a POSITA would have combined these references — the doctrinal structure

The motivations articulated in the record map cleanly onto the KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) rationales:

1. Same field of endeavor / similar purpose. Every reference is a "software development tool that provides visual representations of source code." KSR: combination of "familiar elements according to known methods."
2. Known benefit, predictable result. Each secondary reference (Burkwald, Eick, Corda, Building Applications, Access 97 Visual Basic) was cited for a specific, known improvement — view abstraction, security for distributed execution, error visualization, auto‑correction — that improves the base Antis+Coad system in a predictable way. KSR: "the improvement is no more than the predictable use of prior art elements according to their established functions."
3. The gap is narrow and additive. Because ComplementSoft conceded Coad disclosed all four structural elements of claim 1, the only work the combination had to do was import a data manipulation language — which Antis and the Oracle Primers each independently supply. That is a two‑reference case with a small, identifiable missing element.
4. The examiner already signaled this. The Supplemental Notice of Allowability (Ex. 1004) stated that Coad "does not explicitly disclose… that the detected language is a data manipulation language" — an explicit-disclosure framing, not a teaching‑away. The Office Action of May 31, 2005 went further: "[The Coad reference] clearly anticipates the claimed limitations of independent claims 1 and 18."

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8. Secondary considerations / objective indicia

I found no evidence in the record of commercial success, long‑felt need, failure of others, copying, unexpected results, or industry praise tied by nexus to the claimed subject matter. Note the admission in the '936 specification itself that GUI editors and GUI FTP tools were already commonplace, and that what was "lacking" was integration — an admission that undercuts a long‑felt‑need narrative, because the specification frames the problem as one of combination, i.e., the classic § 103 scenario:

"There are a few GUI based ftp software packages to make the job of transferring and managing code easier. There are also a few GUI based editor software packages to make editing code easier.… What is lacking, however, is a software package that integrates these best of breed point solutions and integrates them in such a way that they work seamlessly with each other…"

That paragraph is, functionally, a roadmap for the obviousness case: it concedes the constituent tools existed and identifies the incentive to integrate them.

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9. Where the obviousness case is weak or fails — the honest counter‑picture

An adversary's strongest points, some of which actually carried the day in part:

1. Claim 4 survived. The Board found the Antis + Coad + Burkwald combination insufficient to meet "graphical representations of data flows" under the narrow icons‑and‑arrows construction. Post‑remand, whether SAS could meet that construction was expressly left open by the Federal Circuit ("That is not for us to decide today"), and the proceeding ended by settlement before the Board resolved it.
2. Claims 2 and 11–16 were never adjudicated on the merits. Claim 2 ("data flows") was not instituted in IPR2013‑00226, and in IPR2013‑00581 the Board found SAS had not shown that Coad discloses "graphical representations of flows depict data flows." Claims 11–16 (the § 112(f) "means for allowing the source code to be executed both locally and remotely") were not instituted because SAS failed to identify corresponding structure; the Board rejected the Antis col. 7 ll. 55–61 mapping on the ground that "SAS does not explain how this language, which explains how source code is to be viewed in a user interface, relates in any way to the structure 'server module 160 in connection with site manager 70 and document manager 60…'"
3. Both independent anticipation theories failed. Neither Coad alone (claim 1) nor Antis alone (claims 1–3, 5) anticipated — Antis lacks an editor; Coad lacks explicit DML. The obviousness case therefore depends entirely on the combination, so any argument that the references are not properly combinable cuts against every instituted ground.
4. The "structured vs. unstructured" overlay. ComplementSoft's prosecution position (object‑oriented = "structured," DML = "unstructured") is technically weak — the Board and the Federal Circuit both construed "data manipulation language" broadly to include C++/Java with embedded SQL — but a POSITA declaration attacking that characterization is the main factual battleground on motivation.

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10. Current status of the claims (which is why this analysis is historic rather than live)

• Claims 1, 3, and 5–10 were held unpatentable in the Aug. 6, 2014 FWD and were subsequently statutorily disclaimed by the Patent Owner (35 U.S.C. § 253(a)) after the Supreme Court's SAS Inst. Inc. v. Iancu remand. In SAS Inst. Inc. v. Iancu, 585 U.S. 303 (2018) (docket 16‑969), the Court held (5–4, Gorsuch, J.) that § 318(a) requires the PTAB to decide every claim challenged. On remand the parties settled, and the Board terminated IPR2013‑00226 on Sept. 7, 2018.
• Claim 4 had its determination vacated and remanded (825 F.3d at 1350–53) and was never re‑decided on the merits.
• Claims 2 and 11–16 were never instituted.
• The patent expired on May 30, 2024 (adjusted expiration), and the underlying N.D. Ill. action (No. 1:12‑cv‑07372) was dismissed with prejudice as part of the settlement.

Net practical conclusion: for the claims that were actually adjudicated, the obviousness case succeeded — and it succeeded twice over claim 1 (two independent combinations: Antis+Coad and Coad+Oracle Primers). For claims 2, 4, and 11–16, the record does not establish obviousness, and the strongest § 103 combination on the full 16‑claim set has never been fully tested.

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11. Confidence and limitations

• High confidence in: the claim 1 text; the existence and disposition of the two independent combinations for claim 1; the specific claim→reference mappings for claims 3, 4, 7, 9; the Board's constructions; the disclaimers; and the sources cited (all quoted from PTAB decisions, the Federal Circuit opinion, or the Petition as retrieved).
• Moderate confidence in: the exact text of dependent claims 5, 6, 10, 12–16. The record identifies them and their dependency, and states the grounds asserted against them, but I did not retrieve a verbatim claim listing for each. I have therefore not invented limitation text for them.
• Not verified: I did not independently read the full texts of Antis, Coad, Burkwald, Eick, Corda, or Polo. Their disclosures are described here as mapped and credited in the PTAB and Federal Circuit decisions, which is the appropriate evidentiary posture for a § 103 analysis of this patent but should not be treated as my own independent reading of those documents.
• Flagged as unresolved: whether SAS could meet the narrow "data flows" construction for claim 4 on remand (Federal Circuit expressly left this open); and the exact terms of the confidential settlement (Ex. 1059 sealed as business‑confidential in IPR2013‑00226) that ended the dispute.