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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VILOX TECHNOLOGIES, LLC.,
`Patent Owner.
`____________
`
`Case IPR2018-00044
`Patent 7,302,423 B2
`____________
`
`Record of Oral Hearing
`Held: December 11, 2018
`____________
`
`
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00044
`Patent 7,302,423 B2
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DAVID M. O'DELL, ESQUIRE
`DAVID L. MCCOMBS, ESQUIRE
`THOMAS KELTON, ESQUIRE
`Haynes & Boone, LLP
`2505 N. Plano Road
`Suite 4000
`Richardson, TX 75802
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN K. HARROP, ESQUIRE
`ARLEN PAPAZIAN, ESQUIRE
`Dickinson Wright, PLLC
`International Square
`1825 Eye Street, N.W.
`Suite 1200
`Washington, D.C. 20006
`
`
`
`The above-entitled matter came on for hearing on Tuesday, December
`11, 2018, commencing at 9:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
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`Case IPR2018-00044
`Patent 7,302,423 B2
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE WEINSCHENK: Good morning everyone. This is a
`
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`hearing for IPR 2018-00044, Unified Patents v. Vilox Technologies. Let's
`start with appearances and when you introduce yourself please step up to the
`center podium. Who do we have for Petitioner?
`
`
`MR. O'DELL: My name is David O'Dell, lead counsel for the
`Petitioner. With me today are Thomas Kelton sitting at the table who will
`also be leading the conversation today. Also David McComb with Haynes
`& Boone, and Jonathon Stroud, an attorney also of record and attorney at
`Vilox.
`JUDGE WEINSCHENK: Okay. And who do we have here for
`
`
`Patent Owner?
`
`
`MR. HARROP: John Harrop, lead counsel for Patent Owner.
`With me is Arlen Papazian.
`
`
`JUDGE WEINSCHENK: Okay. All right. Before we get
`started just a few preliminary matters. As you can see, Judge Hamann is
`appearing remotely so when you're speaking please step up to the center
`podium so he can hear you and also please try to refer to slide numbers so he
`can follow along. As you know from our Order we gave each 60 minutes.
`We'll start with Petitioner followed by Patent Owner and Petitioner, before
`you begin just let us know how much time you'd like to reserve for rebuttal.
`You can start when you're ready.
`
`
`JUDGE HAMANN: Counsel, before you begin let me just note
`– I'm not sure you're hearing (indiscernible) set up in the video, but when
`you look at the Judges that are present in the room there you're also looking
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`at the -- my camera vantage point is directly behind them so (indiscernible.)
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`MR. KELTON: Can you hear me when I speak into the
`microphone?
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`JUDGE HAMANN: Absolutely.
`
`
`MR. KELTON: Good morning, Your Honors. I am Thomas
`Kelton for Petitioner Unified Patents. We request to reserve 20 minutes for
`rebuttal. May it please the Board. Just briefly we would like to go over the
`grounds of unpatentability and talk about what issues are at play and what
`issues are not at play so that we can focus on the issues that are most
`important.
`So there are four grounds of unpatentability. Challenge No. 1
`
`
`and challenge No. 2, they're alternative grounds. So one is Maloney and
`Bertram and the other is Excel and Bertram and those include both of the
`independent claims being challenged, so that's claims 1 and 3. We also have
`challenges 3 and 4 and those go to just dependent claims 5 and 6 and they
`add another piece of prior art, Kanevsky.
`
`
`We're on slide 2. There's challenge No. 1. So Patent Owner
`does not contest that any limitation of independent claim 3 is missing from
`the references, only that the combination is improper. Also Patent Owner
`does not separately argue any dependent claims except for claim 2.
`
`
`Moving to slide No. 4, that's challenge No. 2. It's the
`alternative ground using Excel. In this case the same thing, Patent Owner
`does not contest that any limitation of independent claim 3 is missing from
`the references, only that the combination is improper. Also Patent Owner
`does not separately argue any dependent claims.
`
`
`On slide 5, this is challenges 3 and 4 where we add Kanevsky.
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`Patent Owner does not contest that any limitation of dependent claims 5 and
`6 is missing from the references, only that the combination is improper. So
`those are the issues that we will focus on.
`
`
`If we go to slide No. 6 we can see independent claim No. 1.
`We'll just consider for the purposes of this presentation that claim No. 1 is
`representative unless we say otherwise. But it's a method and it has to do
`with how a user would interact with the database and so, for instance,
`assume you're buying something online and you're filling out an online web
`form and maybe you have to select in a field an entry which would be the
`state you live in. So if you live in a state like Tennessee that has a lot of
`letters and maybe all those letters don't fit in that horizontal space that's
`allowed in the blank there so maybe it abbreviates it to TENN or something
`like that and maybe you have to select your city too and maybe your city
`name is just too long to fit in the space so that's abbreviated as well, and
`that's what claim 1 is directed to.
`
`
`So when we look at claim 1, if we go down to that second to
`determining step that's the fourth limitation under the preamble determining
`a number of characters included in each entry in a selected database field, so
`that's where it determines how many characters are in Tennessee, and then
`the next one that's the if limitation. If the number of characters included in
`each entry exceeds a specified amount of characters displaying a portion of
`each entry. So it shortens that text stream. That's what claim 1 is directed
`at.
`So if we move to slide 8. This is where I'd like to do just a brief
`
`
`technology overview so we can talk about claim 1, claim 3, the file history
`and how that relates to the prior art that we're presenting at this time.
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`Slide 10. This is figure 10 of the 423 patent. So you can see
`
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`the left hand box 201 that has city, so maybe a user selects city and it pops
`up this box 203 in the middle and it has a number of entries. Those entries
`are consolidated. So if you look on the right hand side the cities that begin
`with A, Abilene, Albany, Amity, those are over there but those are
`consolidated into the single entry A because they have in common that
`character at the beginning, the letter A, and the same is true for the entries
`for B, C, D and on and on and the purpose of what's going on in figure 10 is
`so that that middle box right there 203 doesn't have hundreds or thousands of
`entries displaying all of the different city names that could be possible. So
`what it's doing here is actually reducing a number of entries to be displayed.
`
`
`This is important when we get to slide 11. This is how claim 1
`was amended during prosecution and so it was originally directed to what
`was shown in figure 10. So if you look at the crossed out portion in that
`determining step, that second determining step, determining a quantity of
`entries in the selected database field and if the quantity exceeds a specified
`amount truncating data and displaying the truncated data, so that was what
`was going on in figure 10. It looked at a quantity of entries and then it
`reduced the quantity of entries, for instance, Abilene, Albany, Amity
`reducing those down to A.
`
`
`But that was changed during prosecution. Instead of
`determining a quantity of entries and then taking an action in response to the
`quantity of entries, now it determines a number of characters included in
`each entry and then if the number of characters included in each entry
`exceeds a specified amount of characters displaying a portion of each entry
`in the selected database field. This is important. It's important because it
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`Case IPR2018-00044
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`brings the subject matter of claim 1 directly into the disclosure of Bertram.
`This is exactly what Bertram does as we'll talk about in slides in the future in
`just a few minutes.
`
`
`JUDGE WEINSCHENK: So you're saying the claim after it
`was amended no longer relates to figure 10?
`
`
`MR. KELTON: It's certainly not the same thing because figure
`10 doesn't show determining a number of characters.
`
`
`JUDGE WEINSCHENK: Well couldn't you just say in figure
`10 the number of characters is anything greater than one and then reducing it
`to one?
`MR. KELTON: But figure 10 doesn't actually show a step of
`
`
`determining the number of characters and it's reducing the number of entries.
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`JUDGE HAMANN: And counsel?
`
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`MR. KELTON: Yes, Your Honor.
`
`
`JUDGE HAMANN: Looking on slide 11 at claim 1 as well and
`this is during the prosecution is what you're saying, correct?
`
`
`MR. KELTON: Yes, Your Honor. During prosecution of the
`423 patent.
`JUDGE HAMANN: Okay. And obviously claim 1 issued I
`
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`believe with these amendments; is that correct?
`
`
`MR. KELTON: Yes, I believe claim 1 did.
`
`
`JUDGE HAMANN: Now obviously I think a part of one of the
`issues before us today is whether this concept that's claim 1 is sort of new
`matter. The examiner didn't make any rejection, make any colloquy as to
`whether this has support in the prosecution, did they?
`
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`MR. KELTON: No, I do not believe the examiner did, and
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`we're not arguing that claim 1 lacks written description or anything, not for
`the original claims.
`
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`JUDGE MEDLEY: But that same language is in the amended
`claims, correct?
`
`
`MR. KELTON: Yes, Your Honor. It's either the same or very
`similar.
`JUDGE MEDLEY: In each entry --
`
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`MR. KELTON: Yes.
`
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`JUDGE MEDLEY: -- language and you do assert that that
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`lacks written description support?
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`MR. KELTON: Yes, in the amended claims, Your Honor.
`
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`JUDGE MEDLEY: Thank you.
`
`
`MR. KELTON: Claim 12, or slide 12. Similar amendments
`made with respect to claim 3 although claim 3 had more added to it before it
`issued. If we move to slide 14 that's where we begin talking about the
`disputed claim elements.
`
`
`JUDGE WEINSCHENK: Mr. Kelton, do we need to do any
`claim construction to resolve any of the disputes in this case?
`
`
`MR. KELTON: Determining a database schema is one where
`both parties submitted claim construction arguments.
`
`
`JUDGE WEINSCHENK: Right. But is there any dispute about
`whether the prior art teaches it? Like does the construction matter for us
`determining whether the prior art teaches it?
`
`
`MR. KELTON: Our position is no, that Maloney teaches
`determining a database schema regardless of which claim construction is
`chosen.
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`JUDGE WEINSCHENK: So whether we adopt yours or Patent
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`Owner's, this prior art still teaches it?
`
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`MR. KELTON: Yes, Your Honor.
`
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`JUDGE HAMANN: And counsel, if I could focusing a bit on
`this limitation, it seems to me the biggest dispute I guess (indiscernible) but
`there's certainly dispute as to the meaning of determining and the other part
`of the phrase may be ultimately less than controversial, but as to determining
`I believe Patent Owner puts forward ascertaining or identifying --
`
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`MR. KELTON: Uh-huh.
`
`
`JUDGE HAMANN: -- and it seems that although Petitioner
`has a problem with that characterization (indiscernible), I'm trying to
`understand the difference really between determining and ascertaining or
`identifying from Petitioner's standpoint, if any.
`
`
`MR. KELTON: Determining is probably maybe an overused
`word in the patent and the term determining a database schema that doesn't
`appear in the specification to kind of give us any help.
`
`
`So even if the Board were to adopt ascertaining or identifying,
`Maloney still teaches that. For instance, if we go to slide 16 this is one way
`that Maloney teaches ascertaining or identifying. So in this case a user
`would be at a computer, slide 16, and a list of available tables that's
`established in the display to the user, there's also a list called selected tables
`and that's displayed to a user as the user interacts with the computer, and
`then also a list of logical schemas appears in the dialogue box to the user as
`well. So all those things are provided to the user and providing those lists
`that's the computer identifying those features to the user, and the user also
`when the user looks identifies those things as well.
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`JUDGE HAMANN: So in that sense it's determining?
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`MR. KELTON: Yes, yes, Your Honor.
`
`
`JUDGE HAMANN: Okay. And I know -- I'm not trying to
`
`
`obviously use what you task of Patent Owner's language -- I'm trying to
`understand Petitioner's reaction to it. I believe describing determining
`Patent Owner uses the phrase "active step," determining the "active step."
`Help me understand whether Petitioner agrees with that or how it impacts
`the construction, if any, of determining.
`
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`MR. KELTON: "Active step", could you clarify that, Your
`Honor? Is it --
`
`
`JUDGE HAMANN: I believe, and again I know this is not
`Petitioner's language, but I think Patent Owner characterizes determining as
`an active step and I'm trying to understand what Petitioner's view is as to the
`meaning of determining. It seems like Petitioner's okay potentially with
`characterizing determining as identifying or ascertaining but then I'm afraid
`we're going to get into what those words mean and the need to construe the
`construction which is not helpful, and so active step is a term used by the
`Patent Owner I believe in its response to sort of characterize its
`understanding of how determining should be construed and I'm trying to
`understand if Petitioner doesn't need to adopt that, certainly Patent Owner
`suggests that it does, but what are its thoughts as to that phrase as it relates to
`determining.
`
`
`MR. KELTON: I believe Maloney still teaches an active step
`because in this case it would be the user interacting with the computer and
`the computer providing these things actively for the user to see.
`
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`So I believe that's still taught and additionally, on slide 17 we
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`go into a second way that Maloney teaches determining a database schema
`as well. I don't know if you want me to wait to speak about that or if that's --
`
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`JUDGE HAMANN: I think you've answered my question. If
`you want (indiscernible.)
`
`
`MR. KELTON: Thank you, Your Honor. So on slide 17
`there's an additional way that Maloney teaches determining a database
`schema and that is selecting pairs of tables and logical relationships between
`the tables. So in this case it's the user interacting with the computer again
`and the computer displays pairs of tables which will comprise a logical
`schema and the user selects those, and I should preface this by saying as a
`bit of context this is the process of creation of a logical schema.
`
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`So the tables are up there. The joint operators that link fields
`within the tables, those are also there to be selected so that the tables can be
`joined to create the logical schema and also a table may be added to the
`logical schema by selecting and moving. So that process of the user in front
`of the computer selecting tables -- selecting logical relationships like the
`joint operators and then creating logical schemas -- that selecting by the user
`and by the computer as it selects in response to the user input, that's an
`active step and it is identifying a schema. So two ways that Maloney teaches
`it. Either way Maloney gets there.
`
`
`JUDGE HAMANN: Okay.
`
`
`MR. KELTON: So slide 18. This is the next dispute about the
`claim element that's determining a number of characters. So when we get to
`slide 19, we can see this highlighted in claim 1, so it's that second
`determining step. I should not that this is in dispute for claim 1 only, not for
`claim 3 and it applies to both grounds 1 and 2.
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`Bertram teaches exactly this. In the decision boxes 182 and
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`194, there is a width that is compared to a set width and the width is a length
`of a character string and characters and the set width is a limit set by the user
`on the number of characters that can be accommodated in this heading or
`like a column heading, and if the width exceeds a set width in the system of
`Bertram it shortens that text string that has the width.
`
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`Going to slide 21. In case there's any doubt that that width is
`measured in number of characters in Bertram, well it certainly is. We can
`see it used in context in a passage within Bertram where it says five
`characters in width so we know that that's what Bertram is speaking about.
`
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`JUDGE HAMANN: Counsel, just real quick looking at slide
`20 of Bertram, this is again a flow chart of -- I think you were just talking
`about.
`MR. KELTON: Yes. Slide 20.
`
`
`JUDGE HAMANN: I believe this comparison of the width
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`being greater than set width is sort of a final step so to speak. That may be
`an unfair characterization, but this flow chart anticipates first removing
`certain character types potentially and I think it ends with this last step
`which I believe Petitioner characterizes as accommodation. Does it matter
`that those other steps of removing characters from an entry occur before this
`last truncation or is that immaterial to the claim?
`
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`MR. KELTON: I may need to clear up a misunderstanding
`about figure 7 of Bertram and so what we're showing on slide 20 is not the
`entire figure 7 of Bertram and 194, that decision box 194 is close to a last
`step and that's after the special characters have been removed but box 182 is
`actually an early step and so what happens is there are different character
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`types that are removed in a certain order in Bertram so decision box 170 in
`figure 7, that's well, you know, let's look at a character type and that could
`be a lower case letter, a space or a lower case consonant. Actually I think
`the examples given in Bertram are spaces, vowels and lower case consonants
`and so 172, 174 and 176 show that it looks for those types and then it goes
`into the width versus the set width and it removes those characters.
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`So first it goes through and it removes the spaces. Next it goes
`through and removes the vowels. Then it goes through and removes the
`lower case consonants and only then does it move on to the decision box
`194. But it does remove characters at the end, as we showed in our petition
`and in the declaration of Dr. Greenspun as well as in the middle, so -- Your
`Honor?
`JUDGE HAMANN: I think I followed (indiscernible)
`
`
`clarification and probably should have pointed or referred you to 194 box at
`the last pass but is it material claim that, you know, as I understand
`Petitioner's argument, this last pass truncation is needed but is it material
`that the entry may be shortened even by this invention's process pertaining to
`the type of character before that last truncation? If I'm not clear I can
`certainly clarify my question for you.
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`MR. KELTON: No, that's not material to the way we're
`applying Bertram to the claim. It's our position that those characters that are
`removed after decision box 182, those also satisfy the language of claim 1
`which is displaying a portion of each entry but also the language of claim 3
`which says truncation because in many instances, especially as we show in
`the Dr. Greenspun declaration, even when it's say illuminating lower case
`consonants it's still grabbing characters from the end of the character string.
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`JUDGE HAMANN: Okay.
`
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`MR. KELTON: Did I answer your question?
`
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`JUDGE HAMANN: It did. Thank you.
`
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`MR. KELTON: Thank you, Your Honor. So if we go to slide
`
`
`22, Patent Owner has this argument Dr. Greenspun admitted that
`determining a number of characters is not taught by Bertram. That's false.
`As we can see here is the excerpt from the Dr. Greenspun declaration.
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`Question: "Is there any disclosure in Bertram that states
`determining a number of characters?"
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`Dr. Greenspun's answer, "I don't think that Bertram uses that
`phrase determining a number of characters."
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`So Dr. Greenspun certainly did not admit that the concept of
`determining a number of characters was missing. He just acknowledged that
`the particular phrase used in the claim is not used exactly in the disclosure of
`Bertram. So there's no admission there and we saw in the previous slides,
`Bertram certainly does teach determining the number of characters.
`
`
`Moving on to the third part of the agenda and that's disputes
`about combining references. We're on slide 24 and this is just to get us
`grounded in the claims again and to talk about what Bertram adds and why
`Bertram is added to the combination before we actually get into the
`argument about whether it should be combined. So claim 1 recites
`displaying a portion of each entry, that's if the number of characters is too
`long and claim 3 also recites reduces the number of characters to be
`displayed.
`When we get to slide 25, this shows an illustration from
`
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`Bertram about what it does when the number of characters is too big and so
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`up on the top you can see bytes received. That's just an example from figure
`2. Then by figure 8 what Bertram has done has reduced bytes received I
`think it's 15 or 16 characters down to five characters so you can see the
`characters removed from the end and so that's one way that certainly
`Bertram teaches removing characters at the end as well as in the middle. But
`it's shortened, so it's BytsR, the space is removed. Important here, Patent
`Owner does not dispute that Bertram teaches this feature as displaying a
`portion of each entry. Instead Patent Owner only argues against combining
`Bertram with Maloney or Excel.
`
`
`So Patent Owner's first argument here is that the resulting
`combination would save the altered contents in a file and thus Bertram
`would not be combinable with Maloney. So, for instance, if we go back to
`slide 25 where it goes from bytes received to BytsR and then move to slide
`26 where we discuss this argument, Patent Owner's argument is that
`Maloney or Excel would end up saving BytsR instead of bytes received or
`something like that, thereby corrupting the data that would be stored and this
`argument of Patent Owner's is not supported.
`
`
`For instance, if we go to slide 27 we see that Bertram actually
`teaches against storing that altered data. They say don't store shortened
`headings, it may be problematic. So what we see is that Bertram is actually
`directed only toward altering the display but not altering the data itself. So
`that argument, it's just simply unsupported when we look at the explicit
`disclosure of Bertram.
`
`
`Going to slide 28. Patent Owner also argues that the
`combination would cause display table names to be confusing and
`unrecognizable or unreadable to a user and the two examples they give are
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`shown on slide 28. The first at the top where in Maloney store name and
`store ID, if they were shortened to three characters each using the algorithm
`of Bertram they would both be STR and the argument there is that since two
`entries would have the same characters it would be confusing, and in the
`second is a full sentence. It's the second on the slide. "The quick red fox
`jumped over the fence." That would be shortened to kind of a collection of
`just consonants THQCKDRF.
`
`
`Now both of these are corner cases. I mean, they represent the
`trade-off inherent in truncation or reducing the number of characters. That is
`the more you truncate or reduce, the more information you lose and so if you
`take it to an extreme and shorten it down to where you have kinds of
`characters that are repeating it might be a problem in some instances. But to
`the extent that it's a problem in Bertram, it's also a problem in the underlying
`claimed subject matter claim 1. It does not set a limit on the number of
`characters it should be left.
`
`
`Also if we go to slide 28 we can look at the explicit teaching of
`Bertram which is actually focused on using a format that's more easily
`viewed by a user. So Bertram kind of has this in mind and wants things to
`be easily readable and also if we go to the passage of Bertram at column 9,
`lines 14 through 18, it talks about -- in the figure 8 example it's preserving
`characters so that a user can still distinguish between information contained
`in different columns of the table. So Bertram has this in mind and it teaches
`that when you perform truncation you should make it still readable and
`viewable by a user.
`
`
`JUDGE WEINSCHENK: So, for example, in figure 8 it kept
`the R after bytes in case and kept the S after bytes but you didn't have two
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`columns that both said B-Y-T-S?
`
`
`MR. KELTON: Yes, Your Honor, that's on slide 25 we show
`that. So if we move to slide 30 that takes us to the next issue and this is
`Kanevsky combined with Maloney, Excel and Bertram. So that's grounds 3
`and 4 and it only goes to claims 5 and 6. Those are dependent claims.
`
`
`So let's move to slide 31. You can see claim 5 adds that the
`specified limit. That refers to the specified limit in claim 3 which is a limit
`on the number of characters, so that's what it's talking about, the specified
`limit is variable, and then claim 6, the specified limit is determined
`dynamically and it's based on a characteristic of the terminal. So
`interestingly here Patent Owner does not dispute that Kanevsky teaches this
`feature, only that the combination is improper.
`
`
`Let's talk for a second about why we would combine Kanevsky
`with the other art. So let's move to slide 32. So when we combine Bertram
`with Maloney and Excel, Bertram teaches this concept where you have the
`set width that the user can set to limit the width of a column heading and that
`can be applied to Maloney and Excel to shorten the entries. So there's that
`set width in Bertram and that's the limit and it compares the width to the set
`width.
`Now Bertram may not be explicit that its set width could be
`
`
`variable or could be based on a characteristic of a terminal and that's where
`Kanevsky comes in. So it teaches that there's a web server that stores a table
`that has characteristics of different terminals and that when the web server
`transmits web content to a client it can reference that table, see what the
`terminal can display -- in other words, its dimensions or its pixels,
`something like that -- and either shrink or enlarge the content or just leave
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`the content alone before it sends it to the client so that the content fits the
`screen. So we use Kanevsky for the limited purpose, that it informs us that it
`was obvious to be aware of a screen size and to change content on the screen
`based on that screen size and so we propose in the ground of unpatentability
`that the teaching of Kanevsky would lead a POSITA to make that set width
`in Bertram variable and based on a characteristic of a terminal.
`
`
`So if we go to slide 33, we see why that's obvious. Kanevsky
`tells us. People of ordinary skill in the art were looking at this at the time
`and that is advantageously any type of display device and associated screen
`may be provided by a user, for example, a web phone or palm top, also any
`sized window may be displayed on such screen. So it's telling us that this is
`desirable and people were thinking about it to be able to adapt content to the
`size of a screen of a user and to be able to accommodate a variety of
`different users with different screen sizes, and that's the limited nature that
`we're using Kanevsky for. It informs us how we would set Bertram's set
`width.
`But when we go to slide 34 we see that Patent Owner
`
`
`immediately goes to bodily incorporation. Patent Owner doesn't contest that
`the set width, in other words adjusting that set width that we proposed in the
`combination, is somehow improper. They go into the gory details of
`Kanevsky, pull out all sorts of details and say that they couldn't be combined
`with what's going on. For instance, highlighted Kanevsky provides no
`teaching as to how to divide a unitary object. Well the petition doesn't
`propose to divide a unitary object. They also say Kanevsky does not teach
`or suggest how elements or sections, for example, a range of rows and
`columns of a spreadsheet would be prioritized for removal, but the ground of
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`unpatentability does not propose to remove ranges of rows or columns. It's
`just not in the petition. They also say Kanevsky's semantic interpreter
`module 905 was critical to Kanevsky's method. Well, that's beyond what the
`petition is really using Kanevsky for. So this is simply an example of bodily
`incorporation which, on slide 35, we know is not the test for obviousness.
`Okay. Let's move to slide 36. This --
`
`
`JUDGE WEINSCHENK: Counsel, before you get into the
`Excel reference, there was some dispute about whether our precedential
`decision in Schulhauser applies here.
`
`
`MR. KELTON: Yes.
`
`
`JUDGE WEINSCHENK: Does that matter? Do we need to
`resolve that issue?
`
`
`MR. KELTON: No, Your Honor, because we have shown that
`the prior art gets both of those conditional limitations in claim 1 and all the
`limitations in claim 3 even after the one conditional limitation.
`
`
`JUDGE WEINSCHENK: And so it doesn't matter whether
`Schulhauser applies or not?
`
`
`MR. KELTON: Exactly, Your Honor. From our standpoint it
`doesn't.
`JUDGE WEINSCHENK: Okay.
`
`
`MR. KELTON: Slide 36. This is where we're going to talk
`
`
`about Excel and so there are a number of issues here. No., 1, Excel is a book
`like you would find in a library, so instead of having a nice date on the front
`like a patent it's got a public availability date in a library, in this case the
`Wayne State University Library, and that is October versus the earliest
`priority date on the front of the 423 patent February 25, 2000. So there's a
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`separation of several months there and Pa
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