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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES LLC.
`Patent Owner
`
`____________________
`
`Case IPR2018-00044
`Patent No. 7,302,423
`____________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`
`

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`Case IPR2018-00044
`Patent No. 7,302,423
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`
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`TABLE OF CONTENTS
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`SUMMARY ..................................................................................................................................... 6
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`BACKGROUND ............................................................................................................................ 6
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`REFERENCES RELIED ON BY PETITIONER ........................................................................ 7
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`A.
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`B.
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`C.
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`D.
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`E.
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`U.S. Patent 5,701,453 to Maloney et al (Maloney) .................................................. 7
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`U.S. Patent 7,168,039 to Bertram (Bertram) ............................................................ 8
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`Excel 2000 Bible (Excel) ............................................................................................... 9
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`U.S. Patent 6,300,947 to Kanevsky (Kanevsky) ................................................... 10
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`Additional References ................................................................................................ 11
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`1.
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`2.
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`U.S. Patent 6,593,949 to Chew et al. (Chew) ............................................ 11
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`U.S. Patent 6,321,228 to Crandall (Crandall) ............................................ 11
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`CHALLENGES ............................................................................................................................ 12
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`FILE HISTORY AND CLAIM CONSTRUCTION ................................................................... 15
`
`A.
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`File History ..................................................................................................................... 15
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`1.
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`Specific Claim Terms: Truncation .............................................................. 16
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`INSTITUTION IS NOT PROPER BECAUSE THE REFERENCES, INDIVIDUALLY AND
`IN COMBINATION, DO NOT DISCLOSE OR SUGGEST ALL LIMITATIONS OF
`INDEPENDENT CLAIMS 1 AND 3, AND THERE IS NO MOTIVATION TO COMBINE
`THE REFERENCES ................................................................................................................... 16
`
`A.
`
`Challenge 1, Maloney in View of Bertram – Claims 1 – 4, 7 – 9, and 13 ........ 17
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`1.
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`2.
`
`3.
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`Challenge 1, Claim 1....................................................................................... 17
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`Challenge 1, Claim 3....................................................................................... 21
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`Challenge 1, Claims 2, 4, 7 – 9, and 13 ...................................................... 24
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`B.
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`Challenge 2, Excel in View of Bertram – Claims 1 – 4, 7 – 9, and 13 .............. 24
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`2
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`Patent No. 7,302,423
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`Challenge 2, Claim 1....................................................................................... 24
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`Challenge 2, Claim 3....................................................................................... 28
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`Challenge 2, Excel in View of Bertram - Claims 2, 4, 7 – 9, and 13 .... 34
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`1.
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`2.
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`3.
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`C.
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`D.
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`Challenge 3, Maloney in View of Bertram and Kanevsky (6,300,947) –
`Claims 5 and 6 .............................................................................................................. 34
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`Challenge 4, Excel in view of Bertram and Kanevsky (6,300,947) – Claims 5
`and 6 ................................................................................................................................ 34
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`VII.
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`THE PETITION DOES NOT SATISFY THE BOARD’S CRITERIA FOR INSTITUTION 34
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`VIII. AT LEAST ONE REFERENCE IS NOT PRIOR ART ........................................................... 36
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`IX.
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`CONCLUSION ............................................................................................................................. 37
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`3
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`TABLE OF AUTHORITIES
`
`Cases
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013)............. 19, 23, 30, 32
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`Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 42 USPQ2d 1378 (Fed.
`Cir. 1997) ................................................................................................................... 13
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`Graham v. John Deere Co., 383 U.S. 1 (1966). ............................................................ 13
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`In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000) ............................... 13
`
`In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ..................................... 14
`
`In re Gurley, 27 F.3d 551, 31 USPQ2d 1130 (Fed. Cir. 1994) ...................................... 14
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`In re Sponnoble, 405 F.2d 578, 160 USPQ 237, 56 C.C.P.A. 823 (1969) ..................... 14
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ....................................................... 13
`
`McGinley v. Franklin Sports, Inc., 262 F.3d 1339 (Fed. Cir. 2001) ................................ 14
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ........................... 12
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755 (Fed. Cir. 2015) . 20, 23, 27
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`Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997). ......................... 12
`
`See In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999) ...................... 13
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir.
`1983) .......................................................................................................................... 14
`
`Statutes
`35 U.S.C. § 103 ............................................................................................................. 12
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`35 U.S.C. § 325(d) .................................................................................................. 15, 37
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`Case IPR2018-00044
`Patent No. 7,302,423
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`LIST OF EXHIBITS
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`Declaration of Dr. Wesley W. Chu……………………………………Exhibit 2001
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`Curriculum Vitae of Dr. Wesley W. Chu……………………………..Exhibit 2002
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`Declaration of Dr. Joseph L. De Bellis……………………………….Exhibit 2003
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`Excel 2000 Bible (IDG Books Worldwide, Inc., 1999)(Excel II) …..Exhibit 2004
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`U.S. Patent 6,593,949 to Chew et al. (Chew)……………………….Exhibit 2005
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`Webster’s New Collegiate Dictionary (G. C. Mirriam-Webster Company, 1974)..
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`……………………………………………………………………………Exhibit 2006
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`5
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`I.
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`SUMMARY
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Petitioner does not meet the requirements for institution for the following reasons:
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`Petitioner’s challenges do not address each and every limitation of the
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`independent claims.
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`
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`Petitioner’s challenges rely on references that in combination do not teach or
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`suggest all claim limitations.
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`
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`Petitioner’s challenges raise issues previously considered by the Office during
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`prosecution of the subject patent and subsequently overcome by the Patent Owner.
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`At least two of Petitioner’s challenges rely on references that cannot be combined.
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`At least two of Petitioner’s challenges rely on a reference that is not prior art.
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`For at least these reasons, the Board should deny the Petition.
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`II.
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`BACKGROUND
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`U.S. Patent 7,302,423 (‘423 Patent) claims the benefit of U.S. Provisional Patent
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`Application 60/227,305, filed August 24, 2000, and is a continuation-in-part of U.S. Patent
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`Application 09/513,340 filed February 25, 2000, now U.S. Patent 6,760,720.
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`
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`The ‘423 Patent issued with 23 total claims, including independent claims 1, 3, and
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`14. Claims 1 – 9 and 13 are the only claims that are subject to the Petition.
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`
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`The claims subject to the Petition are directed to sort-on-the-fly/search-on-the-fly
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`data retrieval or analysis that provides intuitive mechanisms for accessing databases, and
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`allowing a user to access or obtain information about data in the database without having
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`to know anything about the database structure. Ex. 1001, Abstract. A user selects a
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`desired term, and the method or apparatus delivers all instances of the desired term, even
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`if a specific file or table does not contain the instance. Id. The database need not have
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`a specific file (as in a flat database) or a table (as in a relational database) of names. Id.
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`The user may specify other criteria, or constraints to narrow the search results, or for
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`other reasons. The method or apparatus then conducts further analysis or searching
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`using these criteria and produces a second result. Id. Further narrowing or broadening
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`of the process is permitted, with search-on-the-fly returning results based on any new
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`constraints. If the returned information would be too large to be conveniently displayed
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`at a terminal, the process executes a truncation routine so that the returned data are
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`easily displayed. Id.
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`
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`The ‘423 Patent is not the subject of any judicial proceeding.
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`III.
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`REFERENCES RELIED ON BY PETITIONER
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`A. U.S. Patent 5,701,453 to Maloney et al. (Maloney)
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`Maloney was applied and overcome during prosecution of the ‘423 Patent.
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`Maloney is directed to logical schemas that are used to allow an end user the ability
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`to access and manipulate relational database data without knowledge of the structure of
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`the relational database. To this end, Maloney discloses transformation of a database’s
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`physical schema to one or more logical schemas. See Ex. 2001, ¶ 49. The
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`transformation process involves a specific naming convention and a convention for linking
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`elements that comprise the logical schemas.
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`
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`An end user may manipulate the logical schema using a graphical interface to build
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`customized forms, reports, and queries. An end user is not required to be familiar with a
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`database query language, such as SQL, or the structure of the relational database. See
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`Ex. 1006, Abstract.
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`Maloney does not disclose or suggest the claim 1 and claim 3 limitations of a
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`
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`processor determining a database schema. Instead, a data base administrator (DBA)
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`knows, in advance, a physical database schema and uses this knowledge to generate
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`one or more logical schemas. A logical schema defines a structure for the data fields
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`having a master level and a plurality of detail levels. The logical schemas have a detailed,
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`mandatory naming convention. See Ex. 2001, ¶¶ 59 – 61 (including Fig. 13). The DBA
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`creates the logical schemas by first specifying which tables are available to an end user,
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`and the relationships between columns of those tables. An end user of the logical
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`schemas is required to know the structure of the logical schemas and may use that
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`knowledge to manipulate the logical schemas. See id., ¶¶ 50 – 54.
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`B. U.S. Patent 7,168,039 to Bertram (Bertram)
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`
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`Bertram is directed to a method and system for reducing an amount of horizontal
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`space required when displaying columns on a display screen. Each column has at least
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`one entry. Bertram’s method and system obtain the at least one entry from the column,
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`abbreviates a width of the entry, and then determines if there is another entry containing
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`text data. The method and system then repeats the steps of obtaining the entries,
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`abbreviating the entries, and determining if there is another entry until all of the entries
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`are abbreviated. See Ex. 1007, Abstract.
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`
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`Bertram then employs an optional truncation process if the prior abbreviation
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`process has not sufficiently reduced column width. See Ex. 2001, ¶ 67 - 69.
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`
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`More specifically, Bertram’s abbreviation process is iterative and is based on
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`character type in an entry, as opposed to a number of characters, in which certain types
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`of characters, such as vowels or lower-case letters, are removed. The iterative
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`abbreviation does not involve determining a number of characters in an entry; rather, only
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`character type is determined. Since the number of characters is not determined,
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`Bertram’s iterative abbreviation does not involve a comparison of a number of characters
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`to a set column width; rather, Bertram merely discloses comparing a column width, after
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`an abbreviation step, to a set width. See id., ¶ 67.
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`As the second method to reduce column width, Bertram discloses a one-time
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`truncation process consisting of a sequence of steps 178, 194, 196, and 184. Id., 8:25-
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`65. The truncation does not involve determining a number of characters in an entry, and
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`the truncation executes to reduce the column width to the set width. See id., ¶ 68.
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`Bertram provides no disclosure explaining how to measure column width for either
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`its abbreviation process or its one-time, optional truncation process. See id., ¶ 67.
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`
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`Bertram makes clear that its abbreviation process is far superior to truncation.
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`Bertram goes to great length to disparage truncation as a mechanism for reducing column
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`width. Bertram clearly favors abbreviation over truncation. See id., ¶¶ 64 – 67.
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`Furthermore, Bertram provides little disclosure regarding its optional truncation process.
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`See id., ¶ 48 (providing a tabular comparison of truncation disclosure in U.S. Patent
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`6,593,949 to Chew et al. (Chew) and Bertram).
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`
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`Thus, Bertram does not disclose or suggest how the comparison of column width
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`to set width occurs.
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`C. Excel 2000 Bible (Excel)
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`
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`Excel describes the Excel 2000 Bible spreadsheet program, including in depth
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`descriptions of basic and advanced concepts. Excel 2000 Bible is 936 pages and
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`includes an electronic copy on CD-ROM, and Petitioner’s excerpt (Ex. 1009) constitutes
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`a very small portion of this reference. See Ex. 2001, ¶ 71.
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`
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`The Petition refers to selected pages of Excel. Patent Owner includes additional
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`material from Excel 2000 Bible, referred to hereafter as Excel II. See Ex. 2004.
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`D. U.S. Patent 6,300,947 to Kanevsky (Kanevsky)
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`
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`Kanevsky is directed to a web page adaptation system and method that provides
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`organization of viewing material associated with web sites for visual displays and windows
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`on which these home pages are being viewed. A different viewing-access strategy is
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`provided for such visual devices varying, for example, from standard PC monitors, laptop
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`screens and palmtops to web phone and digital camera displays and from large windows
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`to small windows. Ex. 1008, Abstract. A new web site design incorporates features that
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`permit automatic display of the content of home pages based on screen or window size.
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`For example, if a size of a display screen or window allows, links are displayed with some
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`text or pictures to which they are linked. Conversely, if a size of a screen or window does
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`not allow display of all textual and icon information on a whole screen or window, the
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`home page is mapped into hierarchically linked new smaller pages that fully fit the current
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`display or window. Id. This display strategy of the invention is provided by a web page
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`adaptation scheme that is implemented on a web site server or is incorporated in a web
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`browser (e.g., as a java applet) or both. This adaptation strategy employs variables that
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`provide size of screen and/or window information from which a call to a web site was
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`initiated. Id.
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`E. Additional References
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`Case IPR2018-00044
`Patent No. 7,302,423
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`The Petition refers to the following additional references, both of which were
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`applied and overcome during prosecution.
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`1. U.S. Patent 6,593,949 to Chew et al. (Chew)
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`
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`During prosecution, Chew (Exhibit 2005) was applied in combination with Maloney
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`to reject several claims including claim 3. In response, Patent Owner amended claim 3
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`to incorporate the limitations of allowable claim 8. The Examiner provided the following
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`rationale for allowability of claim 8:
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`Prior art of record fails to teach a combination of elements including wherein
`the method for reducing the number of characters to be displayed from the
`selected data field comprises: performing a truncation that reduces the
`number of characters to be displayed from the selected data field;
`comparing the reduced number of characters to the specified limitation; and
`if the reduced number of characters exceeds the specified limit, repeating
`the truncation and comparing steps until the reduced number of characters
`to be displayed from the selected data field is less than or equal to the
`specified limit.
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`
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`See Ex. 1002, final Office Action dated June 1, 2007.
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`
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`Petitioner concedes that “Chew does not appear to teach determining a number of
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`characters and then reducing a number of characters in response thereto.” Petition at 9.
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`2. U.S. Patent 6,321,228 to Crandall (Crandall)
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`
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`Prior to the rejections over Maloney in view of Chew, Crandall was applied in
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`combination with Maloney to reject several claims including claims 1 and 3.
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`
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`Petitioner concedes that Crandall limits “a number of records that are returned to
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`the user and does not determine a number of characters or reduce a number of
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`characters displayed for each entry.” Petition at 8.
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`IV.
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`CHALLENGES
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`Petitioner presents no argument that any of the challenged claims are anticipated
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`by the prior art. Rather, Petitioner presents four challenges, all based on alleged
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`obviousness in light of certain combinations of references, as follows:
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`Challenge 1, Maloney in view of Bertram – claims 1 – 4, 7 – 9, and 13;
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`Challenge 2, Excel in view of Bertram – claims 1 – 4, 7 – 9, and 13;
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`Challenge 3, Maloney in view of Bertram and Kanevsky – claims 5 and 6; and
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`Challenge 4, Excel in view of Bertram and Kanevsky – Claims 5 and 6.
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`Under 35 U.S.C. § 103, a claim may be invalid for obviousness if the differences
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`between the claimed subject matter and the prior art are such that the subject matter as
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`a whole would have been obvious, at the time the invention was made, to a person
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`having ordinary skill in the art (PHOSITA) to which said subject matter pertains. Panduit
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`Corp. v. Dennison Mfg. Co., 810 F.2d 1561, _____ (Fed. Cir. 1987).
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`
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`Although it is well settled that the ultimate determination of obviousness is a
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`question of law, it is also well understood that there are factual issues underlying the
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`ultimate obviousness decision. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476,
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`1479 (Fed. Cir. 1997). The obviousness analysis is based on four underlying factual
`
`inquiries:  (1) the scope and content of the prior art;  (2) the differences between the claims
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`and the prior art;  (3) the level of ordinary skill in the pertinent art;  and (4) secondary
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`considerations, if any, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-
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`18, (1966).  
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`Because inventions often involve a combination of known elements that in
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`
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`hindsight seems preordained, to prevent hindsight invalidation of patent claims, the law
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`requires some “teaching, suggestion or motivation” to combine cited references. The
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`motivation to combine references may be found in the cited references themselves, in the
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`knowledge of a PHOSITA, and in the nature of the problem to be solved. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also Gambro Lundia AB v. Baxter
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`Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997). “When
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`the art in question is relatively simple, as is the case here, the opportunity to judge by
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`hindsight is particularly tempting. Consequently, the tests of whether to combine
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`references need to be applied rigorously.” See In re Dembiczak, 175 F.3d 994, 999, 50
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`USPQ2d 1614, 1617 (Fed. Cir. 1999), limited on other grounds by In re Gartside, 203
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`F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000) (guarding against falling victim to the
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`insidious effect of a hindsight syndrome wherein that which only the inventor taught is
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`used against its teacher).
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`
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`The Supreme Court has recognized rationales for combining references or
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`modifying a reference to show obviousness of claimed subject matter. Some of these
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`other rationales are: (a) combining prior art elements according to known methods to yield
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`predictable results; (b) simple substitution of one known element for another to obtain
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`predictable results; (c) use of a known technique to improve a similar device (method, or
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`product) in the same way; (d) applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results; (e) choosing from a finite
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`number of identified, predictable solutions, with a reasonable expectation of success.
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`All references must be considered in their entirety, including portions of a
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`
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`references that argues against obviousness. W.L. Gore & Associates, Inc. v. Garlock, Inc.,
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`721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983).
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`
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`An asserted motivation to combine references can be overcome based on a
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`showing that those references together “teach away” from their combination. If the
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`references taken in combination would produce a “seemingly inoperable device,” such
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`references teach away from the combination and thus cannot serve as a basis for
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`obviousness. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001):
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`“Perhaps McGinley's best argument to save his claims from prima facie obviousness in
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`the light of Pratt and Morgan is his contention that those references together teach away
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`from their combination. We have noted elsewhere, as a ‘useful general rule,’ that
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`references that teach away cannot serve to create a prima facie case of obviousness.”
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`In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130 (Fed. Cir. 1994). If references taken in
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`combination would produce a ‘seemingly inoperative device,’ we have held that such
`
`references teach away from the combination and thus cannot serve as predicates for a
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`prima facie case of obviousness. In re Sponnoble, 405 F.2d 578, 587, 160 USPQ 237,
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`244, 56 C.C.P.A. 823 (1969) (references teach away from combination if combination
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`produces seemingly inoperative device);  see also In re Gordon, 733 F.2d 900, 902, 221
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`USPQ 1125, 1127 (Fed.Cir.1984) (inoperable modification teaches away).”
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`Within the framework of an obviousness analysis, it is impermissible to pick and
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`choose from any one reference only so much of it as will support a given position to the
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`exclusion of other parts necessary to the full appreciation of what such reference fairly
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`suggests to a PHOSITA. Thus, a reference must be considered in its entirety, including
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`Patent No. 7,302,423
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`those portions of the reference that argue against obviousness. In re Wesslau, 353 F.2d
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`238, 241 (CCPA 1965); see also In re Mercer, 515 F.2d 1161, 1165-66, (CCPA 1975).
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`
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`Finally, the Board has discretion to reject a petition that presents the same or
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`substantially the same prior art or arguments that were previously presented to the Office
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`during prosecution of the patent at issue. 35 U.S.C. § 325(d).
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`V.
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`FILE HISTORY AND CLAIM CONSTRUCTION
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`A. File History
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`
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`The Petition discusses claim construction and a file history review on pages 7 –
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`14. On pages 8 – 9, the Petition discusses application of Maloney in view of Chew during
`
`examination of the application corresponding to the ‘423 Patent. Specifically, the Petition
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`states that “In other words, Chew uses an abbreviation … rather than reducing a number
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`of characters to be displayed in an entry. Furthermore, Chew does not appear to disclose
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`determining a number of characters and then reducing a number of characters in
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`response thereto.” Petition at 9 (emphasis added). Patent Owner agrees, as did the
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`Office – as Patent Owner took this position during prosecution, thereby gaining allowance
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`of claim 3. Ex. 1002, Office Action Response dated September 4, 2007. The Petition’s
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`discussion of and application of Bertram makes clear that Chew and Bertram disclose
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`essentially the same subject matter. See Ex. 2001, ¶ 48.
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`
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`Clearly, independent claims 1 and 3 have been thoroughly examined on the basis
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`of at least the claim limitations “determining a number of characters included in each entry
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`in the selected database field” (claim 1) and “performing a truncation that reduces the
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`number of characters to be displayed from the selected data field, comparing the reduced
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`number of characters to the specified limit, and … repeating the truncation and comparing
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`Case IPR2018-00044
`Patent No. 7,302,423
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`steps until the reduced number of characters to be displayed from the selected data field
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`is less than or eciual [sic] to the specified limits” (claim 3). See Ex. 2001, ¶ 48.
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`
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`In view of the above, Maloney in view of Bertram does not raise any issues that
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`were not raised, and resolved, during prosecution of the ‘423 Patent’s application.
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`1. Specific Claim Terms: Truncation
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`
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`Petitioner asserts that the “’423 Patent does not define [truncation], but it does
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`provide an example …[which] is consistent with the IBM Dictionary of Computing .…”
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`Petition, at 13.
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`
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`In fact, the specification and drawings of the ‘423 Patent provide numerous
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`truncation examples, and no single dictionary definition exists that encompasses all such
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`examples. See, e.g., Ex. 1001, 7:19-16:40; Figures 4, 10 – 16, 18 – 24, 27 – 38, 40 - 49,
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`and 52. See also, Ex. 2001, ¶¶ 33 – 39. For purposes of its Preliminary Response to the
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`Petition, however, Patent Owner is accepting Petitioner’s construction because, as set
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`forth below, the Petition fails even under Petitioner’s construction.
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`VI.
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`IS NOT PROPER BECAUSE THE REFERENCES,
`INSTITUTION
`INDIVIDUALLY AND IN COMBINATION, DO NOT DISCLOSE OR SUGGEST
`ALL LIMITATIONS OF INDEPENDENT CLAIMS 1 AND 3, AND THERE IS
`NO MOTIVATION TO COMBINE THE REFERENCES
`
`In general, Petitioner’s Challenges either do not address all independent claim
`limitations or do not teach or suggest all independent claim limitations, as follows:
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`Claim 1:
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`
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`“determining a number of characters included in each entry in the selected
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`database fields”
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`Claim 3:
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`Patent No. 7,302,423
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`“determining a first quantity indicative of a number of characters in each entry of
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`
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`the selected field”
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`
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`“if the first quantity exceeds a specified limit … performing a truncation … [by]
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`comparing the reduced number of characters to the specified limit … [and] repeating the
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`truncation ….”
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`
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`Additionally, the Petitioner’s combinations of references teach away from the
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`claimed inventions, and thus, a PHOSITA would not be motivated to make the stated
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`combinations.
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`A. Challenge 1, Maloney in View of Bertram – Claims 1 – 4, 7 – 9, and 13
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`1. Challenge 1, Claim 1
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`a. Maloney in View of Bertram Does Not Disclose or Suggest all
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`the Limitations of Claim 1.
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`
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`The Petition, referring to Bertram alone, states “Looking at a particular entry, the
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`method of Figure 7 works from right to left, counting a number of characters against a set
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`width, removing a character if the number of characters is larger than a set width, and
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`repeating the process until the entry is smaller than or equal to the set width.” Petition,
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`at 15, citing Ex. 1007, at Figure 7, 6:24-37, 7:55-8:65 (emphasis added).
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`
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`What Bertram actually discloses is as follows:
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`The present invention provides a method and system for reducing an
`amount of horizontal space required when displaying a plurality of
`columns on a display screen. … The method and system include
`obtaining the at least one entry from the at least one column, and
`abbreviating a width of the at least one entry …
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`Ex 1007, 6:24-30.
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`The last character for the column heading is retrieved via step 18C
`[sic]. It is then determined if the width of the column heading is
`greater than the width set in step 52 of the method 50, via step 182.
`If the width is not greater than the width set, the abbreviation is
`terminated via step 184. Thus, the abbreviation method 162 can be
`terminated when the column heading reaches the set width
`regardless of the number of passes made for the heading.
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`Id., 8: 23-29.
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` …
`
`
`
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`Thus, each character in the column heading is tested to see if it
`matches the current character type and removed if a match is found.
`…
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`Id., 8: 49-51.
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`Step 178 sets the test as being a truncation test. Thus, in the last
`pass through the column heading, the column heading may be
`truncated. It is determined via step 194 if the width of the column
`heading is still greater than set in step 152. If the width is greater,
`then the column heading is truncated to the appropriate number of
`characters via step 196. If the width is not greater, then step 196 is
`omitted. The abbreviation method 162 is then terminated via step
`184.
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`Id., 8: 58-65.
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`A simple word search of these sections of Bertram reveals that the word “count” or
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`
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`any variation thereof does not appear even once. Further, a word search of Bertram’s
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`entire disclosure reveals the word “count” or any variation thereof does not appear. See
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`Ex. 2001, ¶ 105.
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`
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`On page 10, the Petition asserts that Bertram “explicitly discloses in Figure 7 and
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`associated description determining a number of characters in entries of data fields … .”
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`First, the Petition uses the term “explicitly.” Explicitly, according to a common dictionary
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`definition means: (1) free from all vagueness and ambiguity; and (2) unreserved and
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`unambiguous in expression. WEBSTER’S New Collegiate Dictionary, page 404, G.& C.
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`Merriam Co., 1974. (Ex. 2006). Second, assuming the “associated description” in 6:24-
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`37, 7:55-8:65, quoted in part above, then a simple word search reveals that nowhere does
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`Bertram disclose, implicitly or explicitly, “determining a number of characters.” See Ex.
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`2001, ¶ 106.
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`
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`On page 22, the Petition states “Bertram teaches determining a number of
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`characters included in each column heading (entry) for all the columns in a viewed table
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`by comparing a given entry to a set width.” In fact, Bertram does not disclose how the
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`current column width is compared to the column width limit set in “step 52.” As noted
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`above, Bertram does not disclose counting or determining a number of characters at all.
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`See Ex. 2001, ¶¶ 107 – 108.
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`
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`Thus, Maloney in view of Bertram does not teach or suggest all the limitations of
`
`claim 1, and specifically the limitations directed to determining a number of characters.
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`Petitioner’s challenge must therefore be rejected. Broadcom Corp. v. Emulex Corp.,
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`732 F.3d 1325, 1335 (Fed. Cir. 2013).
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`b.
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`Maloney in View of Bertram Teaches Away from Claim 1.
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`
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`Prior art combinations that change the “basic principles under which the [prior art]
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`was designed to operate,” or that render the resulting device “inoperable for its intended
`
`purpose,” fail to support a conclusion of obviousness. Plas-Pak Indus., Inc. v. Sulzer
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`Mixpac AG, 600 F. App’x 755, 758 (Fed. Cir. 2015).
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`Bertram discloses an abbreviation process followed by a truncation process. The
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`
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`abbreviation process removes certain characters from a text string. See Ex. 2001, ¶¶ 48
`
`and 63 – 70.
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`
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`Maloney creates one or more logical schemas that use a detailed, mandatory
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`naming convention. See id., ¶¶ 59 – 61.
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`
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`If Bertram’s abbreviation or truncation processes were applied to Maloney’s logical
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`schemas, the results of the process would destroy the relationships established by the
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`DBA when constructing the logical schemas thereby rendering Maloney’s invention
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`inoperable. In addition, any truncation or abbreviation process could render Maloney’s
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`naming convention inoperable. For example, Maloney discloses “the tables Customer
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`and Sales_Info contain a column nam