Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 67
`Entered: April 18, 2019
`
`
`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
`____________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`DECISION ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`
`
`Tel: 571-272-7822
`
`
`Paper 67
`Entered: April 18, 2019
`
`
`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
`____________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`DECISION ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`I.
`
`INTRODUCTION
`This inter partes review, instituted pursuant to 35 U.S.C. § 314,
`challenges the patentability of claims 1–9 and 13 (“the challenged claims”)
`of U.S. Patent No. 7,302,423 B2 (“the ’423 patent,” Ex. 1001), owned by
`Vilox Technologies, LLC (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons discussed herein, Unified Patents Inc. (“Petitioner”)
`has shown by a preponderance of the evidence that (i) the challenged claims
`of the ’423 patent are unpatentable, and (ii) Patent Owner’s contingent,
`substitute claims would be unpatentable.
`
`II.
`
`BACKGROUND
`A. Procedural History
`On October 6, 2017, Petitioner filed a Petition requesting inter partes
`review of the challenged claims of the ’423 patent. Paper 1 (“Pet.”). The
`Petition is supported by the Declaration of Philip Greenspun, Ph.D.
`(“Greenspun Decl.,” Ex. 1005) and the Declaration of Ingrid Hsieh-Yee,
`Ph.D. (Ex. 1011). Patent Owner filed a Preliminary Response. Paper 7.
`On April 19, 2018, we instituted inter partes review of all of the
`challenged claims of the ’423 patent on all of the asserted grounds. Paper 9
`(“Inst. Dec.”), 6, 38. On July 9, 2018, Patent Owner filed a Response to the
`Petition. Paper 26 (“PO Resp.”). The Response is supported by the
`Declaration of Wesley W. Chu, Ph.D. (“Chu Decl.,” Ex. 2017), the
`Declaration of Dr. Joseph L. De Bellis (Ex. 2021), and the Declaration of
`Lucille Marie De Bellis (Ex. 2022). On September 24, 2018, Petitioner filed
`a Reply to Patent Owner’s Response. Paper 41 (“Pet. Reply”). On
`2
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`November 6, 2018, Patent Owner filed an amended Sur-Reply to Petitioner’s
`Reply. Paper 52 (“PO Sur-Reply”).
`In addition, on July 9, 2018, Patent Owner filed a contingent Motion
`to Amend certain of the challenged claims. Paper 27 (“MTA”), 1–2. On
`September 24, 2018, Petitioner filed an Opposition to Patent Owner’s
`Motion to Amend. Paper 42 (“MTA Opp.”). The Opposition to the Motion
`to Amend is supported by a separate Declaration of Philip Greenspun, Ph.D.
`(“Greenspun MTA Decl.,” Ex. 1013). On October 22, 2018, Patent Owner
`filed a Reply to Petitioner’s Opposition to Patent Owner’s Motion to
`Amend. Paper 45 (“MTA Reply”). Patent Owner’s Reply for the Motion to
`Amend is supported by a separate Declaration of Wesley W. Chu, Ph.D.
`(“Chu MTA Decl.,” Ex. 2027) and a Declaration of Lucille Marie De Bellis
`(Ex. 2029). On November 13, 2018, Petitioner filed a Sur-Reply to Patent
`Owner’s Reply to Petitioner’s Opposition to Patent Owner’s Motion to
`Amend. Paper 53 (“MTA Sur-Reply”).
`On November 5, 2018, Patent Owner filed a Motion to Exclude
`Evidence. Paper 49 (“Mot. Ex. Ev.”). On November 16, 2018, Petitioner
`filed an Opposition to Patent Owner’s Motion to Exclude Evidence. Paper
`56 (“Opp. Ex. Ev.”). On November 28, 2018, Patent Owner filed a Reply to
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence.
`Paper 57 (“Reply Ex. Ev.”).
`An oral hearing was held on December 11, 2018. A transcript of the
`oral hearing is included in the record. Paper 63 (“Tr.”).
`
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`IPR2018-00044
`Patent 7,302,423 B2
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`
`District
`Number
`1-13-cv-01034 D. Del.
`1-13-cv-01042 D. Del.
`
`1-13-cv-01039 D. Del.
`
`B. Related Matters
`Petitioner identifies the following as matters that the ’423 Patent “is or
`has been involved.”
` Name
`1. Smart Search Concepts LLC v. Buy.com Inc.
`2. Smart Search Concepts LLC v. Wal-Mart
`Stores Inc.
`3. Smart Search Concepts LLC v. Neiman
`Marcus Inc.
`4. Vilox Tech. LLC v. The Priceline Group, Inc. 2-15-cv-01460 E.D. Tex.
`2-15-cv-01459 E.D. Tex.
`5. Vilox Tech. LLC v. Orbitz Worldwide, Inc.
`6. Vilox Tech. LLC v. Expedia, Inc.
`2-15-cv-01457 E.D. Tex.
`7. Vilox Tech. LLC v. Express, Inc.
`2-15-cv-02025 E.D. Tex.
`8. Vilox Tech. LLC v. Costco Wholesale Corp.
`2-15-cv-02019 E.D. Tex.
`9. Vilox Tech. LLC v. Mindgeek USA, Inc.
`2-16-cv-01278 E.D. Tex.
`
`
`Pet. 1–2. Patent Owner submits that there are no related matters in
`accordance with 37 C.F.R. § 42.8(b)(2) — this section requires identification
`of “any other judicial or administrative matter that would affect, or be
`affected by, a decision in the proceeding.” Paper 4 (Patent Owner’s
`Mandatory Notices), 2.
`
`Accordingly, we understand that (i) the judicial matters involving the
`’423 Patent identified by Petitioner are no longer pending and (ii) there are
`no other matters that would affect or be affected by a decision in this
`proceeding.
`C. The Challenged Patent
`The ’423 patent discloses, in relevant part, formatting for display on a
`screen the data returned (i.e., search results) from querying a database — a
`database is a collection of data having a structure, such as a collection of
`tables for a relational database. E.g., Ex. 1001, [57], 1:24–54, 24:51
`
`
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`(reciting for independent claim 1 “[a] computer-implemented method for
`displaying data”), 25:3–4 (reciting for independent claim 3 “[a] computer-
`implemented method for formatting data for display”). More specifically,
`the ’423 patent discloses that if the search results from a query would be too
`large (e.g., too many entries) to be displayed conveniently on a screen, the
`search results can be truncated so that they can be displayed more easily.
`E.g., id. at [57], 8:27–48. In one embodiment, when the search results are
`larger than the display size, the query’s constraints are changed so that fewer
`distinct search results are returned, allowing for the search results to be
`displayed on one page. Id. at 8:40–48. For example, the screen may be
`limited to displaying 20 lines of data, and thus, if the query returns more
`than 20 entries, the entries would need to be truncated (e.g., instead of a full
`name of a city, the first n letters can be used) until a displayable amount (i.e.,
`20 or less) of search results are achieved. Id. at 8:36–37, 8:48–52.
`Figure 10, a portion of which is shown below, illustrates an example of this
`truncation. Id. at 3:62–63.
`
`
`
`
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`This portion of Figure 10 illustrates a graphical user interface for a
`
`database having data fields (i.e., Name, Address, City, State, and Phone)
`from which a user has selected the “City” data field for display. Id. at
`11:17–27. The number of cities (i.e., entries) contained in the database is
`too large, however, to conveniently display on one page on the screen. Id. at
`11:27–30. Accordingly, the city names are truncated until a convenient
`display is achieved — resulting in only the first letter (e.g., “A,” “B,” “C”)
`of the city names being displayed. Id. at 11:30–33, Fig. 10. This portion of
`Figure 10 additionally shows that the user next selected cities beginning with
`the letter “A,” with those results (i.e., “Abilene, Albany, . . . Austin”) being
`displayed. Id. at 11:34–35, Fig. 10.
`
`Independent claim 14, which is not challenged, for example, is
`directed to this embodiment and recites “determining a first [q]uantity
`indicative of a number of entries of the selected data field,” “reducing a size
`of data to be displayed,” and “displaying data from the selected data field.”
`Id. at 26:15–18, 26:27; see also Ex. 1002, 215–20 (reciting claims that later
`issued in the parent application, including claim 1, which recites
`“determining a quantity of entries in the selected database field” and “if the
`quantity exceed[s] a specified amount, truncating data, and displaying the
`truncated data wherein the truncating reduces characters in one or more
`entries in the selected database field and the truncated data represents each
`of the entries in the selected database field”) (emphasis added).
`
`In contrast to the above embodiment, the challenged claims are
`directed to determining “a number of characters” for each entry of a selected
`
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`data field, rather than the number of entries.1 E.g., id. at 24:58–59, 25:8–9.
`If the number of characters exceeds a limit, the challenged claims require
`reducing the number of characters for each entry and displaying the reduced
`number of characters for each entry. E.g., id. at 24:60–64, 25:10–24. In
`other words, the challenged claims require displaying at least part of the
`entry for each entry, rather than just data that represents each of the entries.
`D. Illustrative Challenged Claim
`Petitioner challenges claims 1–9 and 13 of the ’423 patent, of which
`
`claims 1 and 3 are independent claims. Claim 1 is illustrative of the claimed
`subject matter and is reproduced below.
`1.
`A computer-implemented method for displaying data
`comprising:
`
`determining a database schema for a database;
`
`providing a list of database fields, wherein the list
`includes a descriptor indicating a data category;
`
`receiving a search selection for a database field on the
`provided list of database fields;
`
`determining a number of characters included in each
`entry in the selected database field; and
`
`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, wherein a number
`of characters displayed in each portion is less than or equal to
`the specified amount of characters; and
`
`
`
` 1
`
` Petitioner, in the context of Patent Owner’s Motion to Amend, argues that
`features (e.g., displaying a truncated portion of each entry in the selected
`database field) in the amended claims, which also are recited in the
`challenged claims, lack written description support in the Specification.
`MTA Opp. 2–8. In light of our determinations below, we need not, and thus,
`do not reach this issue.
`
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`
`if the number of characters included in each entry does
`
`not exceed the specified amount, displaying each entry in its
`entirety.
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
` References
`Basis2
`Challenged Claims
`1. Maloney3 and Bertram4
`§ 103(a) 1–4, 7–9, and 13
`2. Excel5 and Bertram
`§ 103(a) 1–4, 7–9, and 13
`3. Maloney, Bertram, and Kanevsky6 § 103(a) 5 and 6
`4. Excel, Bertram, and Kanevsky
`§ 103(a) 5 and 6
`
`Pet. 4.
`
`III.
`
`DISCUSSION
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`
`
` 2
`
` The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’423
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent No. 5,701,453 (issued Dec. 23, 1997) (Ex. 1006, “Maloney”).
`4 U.S. Patent No. 7,168,039 B2 (filed June 2, 1998 and issued Jan. 23, 2007)
`(Ex. 1007, “Bertram”).
`5 Excerpts of John Walkenbach, Microsoft Excel 2000 Bible (IDG Books
`Worldwide, Inc. 1999) (Ex. 1009, “Excel”). Petitioner submits
`approximately forty of Excel’s pages as Exhibit 1009. Patent Owner
`submits five additional pages of Excel as Exhibit 2004.
`6 U.S. Patent No. 6,300,947 B1 (filed July 6, 1998 and issued Oct. 9, 2001)
`(Ex. 1008, “Kanevsky”).
`
`
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`Petitioner asserts a person having ordinary skill in the art at the time
`of the invention would have had “at least a bachelor’s degree in Computer
`Science or an equivalent field (or equivalent industry experience) and at
`least one year of experience designing, implementing, and using database
`management systems.” Pet. 6–7 (citing Ex. 10057 ¶¶ 22–25). Patent
`Owner’s expert, Dr. Chu, makes the same assessment of the level of skill in
`the art. Ex. 2017 ¶ 21.
`
`We agree with and apply Petitioner’s definition of the level of skill in
`the art. See Ex. 1005 ¶¶ 22–24. We find that this definition is consistent
`with the level of ordinary skill in the art reflected by the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC,
`57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. Claim Construction
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b) (2017); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding the
`broadest reasonable construction “regulation represents a reasonable
`exercise of the rulemaking authority that Congress delegated to the Patent
`
`
` Here, Petitioner cites to Exhibit 1005 by paragraph number. Petitioner also
`cites to Exhibit 1005 by exhibit page number, on occasion. We copy the
`manner Petitioner cites to Exhibit 1005 for each specific citation.
`9
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`Office”). Under that standard, claim terms are presumed to be given their
`ordinary and customary meaning as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`claim term must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Further,
`“[t]he [U.S. Patent and Trademark Office] should also consult the patent’s
`prosecution history in proceedings in which the patent has been brought
`back to the agency for a second review.” Microsoft Corp. v. Proxyconn,
`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
`Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`Petitioner proposes constructions for two claim terms: “determining a
`database schema” and “truncation.” Pet 13. Patent Owner proposes
`constructions for those two terms, plus three additional terms: “determining
`a number of characters in each entry of the selected database field”;
`“displaying a portion of each entry in the selected database field, wherein a
`number of characters displayed in each portion is less than or equal to the
`specified amount of characters”; and “each entry from the selected data field
`is displayed on a terminal.” PO Resp. 27–30. We address below these five
`terms proposed for construction.
`1. Determining a Database Schema
`Petitioner proposes that claim 1’s “determining a database schema”
`limitation should be construed as “determining a collection of tables of a
`database.” Pet. 13–14 (citing Ex. 1005 ¶¶ 44–45). In support of this
`proposed construction, Petitioner quotes the ’423 patent’s Specification and
`argues that a person of ordinary skill in the art would have understood a
`
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`schema is “a collection of tables of a database.” Id. at 13 (quoting Ex. 1001,
`1:50–54); see also Ex. 1001, 1:50–54 (“All databases require a consistent
`structure, termed a schema, to organize and manage the information. In a
`relational database, the schema is a collection of tables. Similarly, for each
`table, there is generally one schema to which it belongs.”).
`Petitioner also argues that Patent Owner incorrectly construes “‘a
`database’ as ‘data stored in computerized files,’” because limiting a database
`to “files” is contrary to the Specification and improperly excludes preferred
`embodiments. Pet. Reply 6–7 (citing Ex. 1001, 1:38–40, 1:51–52, 2:60–3:2)
`(arguing that the Specification teaches that data can be contained in a file or
`a table). Petitioner also argues that Patent Owner “does not argue against
`any ground of unpatentability by distinguishing a table and a file, so this
`construction is moot.” Id. at 7 n.2.
`Patent Owner proposes that “determining a database schema” should
`be construed as “ascertaining or identifying the logical structure of data
`stored in computerized files.” PO Resp. 27 (citing Ex. 2017 ¶ 49). In
`support of this proposed construction, Patent Owner argues that a common
`definition for “determining” is “to fix or define the position or configuration
`of.” Id. (citing Ex. 2017 ¶ 45). Patent Owner also argues that one of
`ordinary skill in the art “would have understood ‘determining’ to be an
`active step in a process.” Id. As to “database,” Patent Owner argues that the
`Specification refers to it “as a computerized ‘collection of data.’” Id. (citing
`Ex. 1001, 1:24–25). As to “schema,” Patent Owner relies on a dictionary
`definition which “refers to ‘schema’ as ‘a description of the logical structure
`of a database.’” Id. (citing Ex. 2017 ¶ 47). Patent Owner argues that
`Petitioner’s construction as to “schema” is too limiting because, although the
`
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`’423 patent “refers to ‘schema’ in a relational database as ‘a collection of
`tables,’ other database types would have other structures.” Id.
`We have reviewed the parties’ arguments and supporting evidence, as
`well as the claim language and the ’423 patent’s Specification. We parse
`through the parties’ arguments below.
`Patent Owner relies on its expert, Dr. Chu, to replace “determining”
`with “ascertaining or identifying” in its proposed construction. See PO
`Resp. 27; Ex. 2017 ¶ 45. Dr. Chu appears to piece this construction together
`by (i) agreeing with Petitioner’s expert, Dr. Greenspun, that the ’423 patent
`refers to “identifying” (rather than “determining”) a database schema and
`(ii) opining that “[a] common definition for ‘identifying’ is ‘to ascertain the
`origin, nature, or characteristics of.’” Ex. 2017 ¶ 45. Dr. Chu opines that
`one of ordinary skill in the art “would have understood ‘determining’” to
`mean “ascertaining the components of.” Id. Dr. Chu further opines that one
`of ordinary skill in the art would have understood “determining” means
`“ascertaining or identifying,” in the context of “determining a database
`schema.” Id. ¶¶ 45, 49. Dr. Chu, however, fails to identify factual support
`for why “determining” should be replaced with “ascertaining or identifying.”
`Id. Accordingly, we find that the above cited testimony of Dr. Chu is
`entitled to little or no weight because it is conclusory and lacks factual
`support. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
`Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude
`that the lack of factual corroboration warrants discounting the opinions
`expressed in the declarations.”); 37 C.F.R § 42.65(a). Moreover, Patent
`Owner admits that determining, ascertaining, and identifying are synonyms
`for each other. Tr. 36:3–9. Thus, Patent Owner does not explain how
`
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`replacing “determining” with “ascertaining or identifying” is relevant to the
`patentability issues in this case.
`
`Patent Owner also relies on Dr. Chu’s testimony to argue that one of
`ordinary skill in the art “would have understood ‘determining’ to be an
`active step in a process.” PO Resp. 27 (citing Ex. 2017 ¶ 45). Patent
`Owner’s Response and Dr. Chu do not explain, however, the meaning of
`“active step,” its interplay with Patent Owner’s proposed construction, or
`any factual basis for requiring an “active step.” Id.; Ex. 2017 ¶ 45.
`
`As best we determine from Patent Owner’s statements during the oral
`hearing, Patent Owner’s “active step” requires a computer process, such as a
`“search engine in the search on the fly search engine program [to] . . . look
`at a database and . . . identify . . . what the schema is . . . every time it
`accesses the database.” Tr. 35:19–36:2. That explanation of what an “active
`step” constitutes, however, is not in either Patent Owner’s Response or in
`Dr. Chu’s Declaration, and therefore, we need not consider such a late
`argument. Even considering Patent Owner’s explanation made during the
`oral hearing, along with the arguments made in Patent Owner’s Response,
`we are not persuaded by the argument that the disputed phrase requires an
`“active step.” Neither Patent Owner nor Dr. Chu points to any intrinsic
`evidence or other documentary evidence to support the argument that
`determining requires an “active step.” See In re Geisler, 116 F.3d 1465,
`1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory
`statements that are unsupported by factual evidence are entitled to little
`probative value). Moreover, Patent Owner does not provide a principled
`basis for importing an “active step” into this limitation based on the
`Specification. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`
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`870, 875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim
`limitations that are not a part of the claim.”).
`
`As to “database,” Patent Owner argues that the Specification refers to
`it “as a computerized ‘collection of data,’” yet Patent Owner proposes
`construing “database” as “data stored in computerized files.” PO Resp. 27
`(citing Ex. 1001, 1:24–25). Moreover, Patent Owner’s proposed
`construction conflicts with Patent Owner’s expert’s opinion of what
`“database” means — Dr. Chu opines that “database” means “a computerized
`collection of data.” Ex. 2017 ¶ 46. As Petitioner argues, and in accordance
`with Dr. Chu’s opinion, we find that there is no basis to limit a “database” to
`“files,” as such is contrary to the Specification. Ex. 1001, 124–25, 1:38–40,
`1:51–52, 2:60–3:2.
`
`As to “schema,” we agree with Patent Owner that Petitioner’s
`proposed construction is too narrow as it limits “schema” to a relational
`database’s structure (i.e., tables), despite the Specification’s teaching of
`additional database types. See, e.g., Ex. 1001, 1:25–26, 1:29–30 (“Various
`architectures have been devised to organize data in a computerized database.
`. . . Three main database architectures are termed hierarchical, network and
`relational.”), 1:51–52 (“In a relational database, the schema is a collection of
`tables.”). Patent Owner’s proposed construction also is too limiting in that
`the Specification refers to a “schema” as “consistent structure” without
`limiting “schema” to a “logical structure.” Ex. 1001, 1:50–51 (“All
`databases require a consistent structure, termed a schema, to organize and
`manage the information.”).
`
`In summary, we find no principled basis to replace “determining”
`with “ascertaining or identifying,” or to require Patent Owner’s “active
`
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`step.” Nor do we find a principled basis to limit “database schema” as the
`parties propose. Accordingly, we do not adopt either of the parties’
`proposed constructions.
`Having considered the evidence presented, we conclude that no
`further express claim construction of this limitation is necessary to resolve
`the issues presented in this trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`2. Truncation
`Petitioner relies on a dictionary definition to propose that we construe
`“truncation” to mean “[t]he deletion or omission of a leading or of a trailing
`portion of a string in accordance with specified criteria.” Pet. 13 (citing Ex.
`1010, 3). Petitioner argues that this definition is consistent with an example
`from the Specification where truncation was employed. Id. (citing Ex. 1001,
`8:27–9:2). Petitioner also argues that one of ordinary skill in the art would
`have understood its proposed construction to be the broadest reasonable
`interpretation of “truncation.” Id. (citing Ex. 1005 ¶¶39–43; Ex. 1003, 174).
`Patent Owner argues that Petitioner’s proposed construction for
`“truncation” is incorrect, as it conflicts with the definition the applicant
`provided during the prosecution of the ’423 patent’s parent application. PO
`Resp. 28–29. In particular, Patent Owner points to the definition provided
`during that prosecution, which defines “truncation” as: “[T]o cut off the
`beginning or end of [a] series of characters; specifically[,] to eliminate one
`or more of the least significant (typically rightmost) digits.” Id. (quoting Ex.
`
`
`
`15
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`IPR2018-00044
`Patent 7,302,423 B2
`
`1005 ¶ 41 (quoting Ex. 1003, 174)) (emphasis omitted); see also Ex. 1005
`¶ 41.
`
`The fact that a term “has multiple dictionary meanings does not mean
`that all of these meanings are reasonable interpretations in light of” the
`intrinsic evidence. See PPC Broadband, Inc. v. Corning Optical Commc’ns
`RF, LLC, 815 F.3d 747, 752 (Fed. Circ. 2016). To that end, statements
`made during prosecution are relevant to claim construction, and can serve to
`define, explain, or disavow claim scope. See Teva Pharm. USA, Inc. v.
`Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citations omitted). This
`includes “statement[s] made during prosecution of related patents[, which
`also] may be properly considered in construing a term common to those
`patents.” Id. Based on the statements made, and the definition offered (Ex.
`1003, 174), during prosecution of the ’423 patent’s parent application, we
`find persuasive Patent Owner’s interpretation that “truncation” means: “To
`cut off the beginning or end of a series of characters; specifically, to
`eliminate one or more of the least significant (typically rightmost) digits.”
`3. Remaining Terms Proposed by Patent Owner
`Patent Owner proposes three additional terms for construction:
`
`(i) “determining a number of characters in each entry of the selected
`database field”; (ii) “displaying a portion of each entry in the selected
`database field, wherein a number of characters displayed in each portion is
`less than or equal to the specified amount of characters”; and (iii) “wherein
`each entry from the selected data field is displayed on a terminal.” PO Resp.
`27–30 (emphasis omitted).
`First, Patent Owner argues that we should construe “determining a
`number of characters in each entry of the selected database field,” to mean
`
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`IPR2018-00044
`Patent 7,302,423 B2
`
`“determining how many characters exist in every entry of a selected
`database field.” Id. at 28.
`Second, Patent Owner argues that we should construe “displaying a
`portion of each entry in the selected database field, wherein a number of
`characters displayed in each portion is less than or equal to the specified
`amount of characters” as follows: (i) “displaying a portion” to mean “a
`portion of an entry that had been reduced by truncation,” and (ii) “wherein a
`number of characters displayed in each portion is less than or equal to the
`specified amount of characters” to mean “a displayed portion is a part of an
`entry truncated to reduce a number of characters in the entry.” Id. at 29
`(citing Ex. 2017 ¶ 57).
`Third, Patent Owner argues that we should construe “wherein each
`entry from the selected data field is displayed on a terminal” to mean “all
`entries from the selected data field are displayed on a terminal.” Id. at 30
`(citing Ex. 2017 ¶ 58).
`
`Petitioner argues that Patent Owner “does not argue that these
`constructions affect patentability,” and more specifically, that Patent
`Owner’s proposed constructions do not “affect the obviousness of the
`claims.” Pet. Reply 8.
`We agree with Petitioner that Patent Owner’s proposed constructions
`do not differ from the claim language in a way meaningful to the
`obviousness analysis. Rather, Patent Owner relies on its expert, Dr. Chu, to
`reword the claim language, without adding clarity to the claim language or
`providing reasoning to do so. PO Resp. 27, 29–30. For example, Patent
`Owner replaces “each” with “every” for the first term and replaces “each”
`
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`with “all” in the third term without explaining any difference in meaning
`between any of the terms. Id.
`Having considered the evidence presented, we conclude that no
`express claim construction of these limitations is necessary to resolve the
`issues presented in this trial. See Vivid Techs., 200 F.3d at 803.
`C. Conditional Limitations
`Independent claims 1 and 3 are method claims that recite conditional
`
`steps (i.e., steps that are performed only if certain conditions precedent are
`met). Our precedential decision in Ex parte Schulhauser, No. 2013-007847,
`2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential), thus applies to
`these claims. We address below Schulhauser’s application, as well as Patent
`Owner’s arguments that attempt to distinguish Schulhauser.
`1. Claim 1
`The last two elements of claim 1 are conditional steps. These two
`
`steps are:
`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, wherein a number
`of characters displayed in each portion is less than or equal to
`the specified amount of characters; and
`
`if the number of characters included in each entry does
`not exceed the specified amount, displaying each entry in its
`entirety.
`Ex. 1001, 24:60–67 (emphasis added to the conditions).
`
`As set forth in Schulhauser, a method claim that includes a
`conditional step can be thought of as covering two methods — one method
`where the condition for the step is met and the step is performed, and the
`second method where the condition is not met and the step is not performed.
`See Schulhauser, 2016 WL 6277792, at *4. The broadest reasonable
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`
`interpretation of such a claim encompasses the method where only the non-
`conditional steps are performed (i.e., this occurs when the condition is not
`met). See id. at *3–4. Furthermore, Schulhauser determines that if a
`method’s conditional step does not need to be performed, it does not need to
`be shown to invalidate the method claim. Id. at *4.
`
`Such a determination follows from the relationship between invalidity
`and infringement. “[I]t is axiomatic that that which would literally infringe
`if later anticipates if earlier.” Bristol-Myers Squibb Co. v. Ben Venue Labs,
`Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement, conditional
`method steps need not be performed for infringement to be found. See, e.g.,
`Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir. 2010)
`(nonprecedential) (affirming a district court’s interpretation of a method
`claim as including a step that need not be practiced if the condition for
`practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum,
`Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (nonprecedential) (“It is of
`course true that method steps may be contingent. If the condition for
`performing a contingent step is not satisfied, the performance recited by the
`step need not be carried out in order for the claimed method to be
`performed.”). Likewise, as to unpatentability, conditional method steps that
`need not be performed, also need not be shown in establishing
`unpatentability. Schulhauser, 2016 WL 6277792, at *4–5.
`
`Here, claim 1’s conditional steps are mutually exclusive and together
`the conditions cover the full set of possibilities
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