Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: April 19, 2018
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: April 19, 2018
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`I.
`
`1-13-cv-01039 DED
`
`INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) for
`inter partes review of claims 1–9 and 13 (“the challenged claims”) of U.S.
`Patent No. 7,302,423 B2 (Ex. 1001, “the ’423 Patent”). Vilox Technologies,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim.
`Resp.”) to the Petition.
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may be authorized only if “the information presented in
`the petition . . . and any [preliminary] response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition and Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one challenged claim for each of the grounds asserted in the Petition.
`A. Related Matters
`Petitioner identifies the following as matters that the ’423 Patent “is or
`has been involved.”
`District
`Number
` Name
`1. Smart Search Concepts LLC v. Buy.Com Inc. 1-13-cv-01034 DED
`2. Smart Search Concepts LLC v. Wal-Mart
`1-13-cv-01042 DED
`Stores Inc. et al
`3. Smart Search Concepts LLC v. Neiman
`Marcus Inc. et al
`4. Vilox Technologies LLC v. The Priceline
`Group, Inc. et al
`5. Vilox Technologies LLC v. Orbitz
`Worldwide, Inc. et al
`2-15-cv-01457 TXED
`6. Vilox Technologies LLC v. Expedia, Inc.
`7. Vilox Technologies LLC v. Express, Inc. et al 2-15-cv-02025 TXED
`2
`
`2-15-cv-01460 TXED
`
`2-15-cv-01459 TXED
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
` Name
`8. Vilox Technologies LLC v. Costco
`Wholesale Corporation
`9. Vilox Technologies LLC v. Mindgeek USA,
`Inc.
`
`District
`Number
`2-15-cv-02019 TXED
`
`2-16-cv-01278 TXED
`
`
`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; Prelim. Resp. 7 (“The [’]423 Patent is not the subject
`of any judicial proceeding.”).
`
`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.
`B. 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, Abstract, 1:24–54, 24:51
`(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 Abstract, 8:27–48. In one embodiment, when the search results
`
`
`
`3
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`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.
`
`
`
`
`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”)
`
`
`
`4
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`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.
`C. 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
`
`if the number of characters included in each entry does
`not exceed the specified amount, displaying each entry in its
`entirety.
`
`
`
`
`
`5
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
` References
`Basis1
`Challenged Claims
`1. Maloney2 and Bertram3
`§ 103(a) 1–4, 7–9, and 13
`2. Excel4 and Bertram
`§ 103(a) 1–4, 7–9, and 13
`3. Maloney, Bertram, and
`§ 103(a) 5 and 6
`Kanevsky5
`4. Excel, Bertram, and Kanevsky
`
`§ 103(a) 5 and 6
`
`Pet. 4.
`
`E. Submitted Declarations
`Petitioner submits the declaration of Philip Greenspun, Ph.D (Ex.
`1005) in support of its contentions concerning the disclosures of the
`references and the ’423 Patent. Petitioner also submits the declaration of
`Ingrid Hsieh-Yee, Ph.D (Ex. 1011) in support of its contention as to when
`the Excel reference was first publicly accessible.
`
`
`
` 1
`
` 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.
`2 U.S. Patent No. 5,701,453 (issued Dec. 23, 1997) (Ex. 1006, “Maloney”).
`3 U.S. Patent No. 7,168,039 B2 (filed June 2, 1998 and issued Jan. 23, 2007)
`(Ex. 1007, “Bertram”).
`4 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.
`5 U.S. Patent No. 6,300,947 B1 (filed July 6, 1998 and issued Oct. 9, 2001)
`(Ex. 1008, “Kanevsky”).
`
`
`
`6
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`Patent Owner submits the declaration of Wesley W. Chu, Ph.D (Ex.
`2001) in support of its arguments concerning the disclosures of the
`references and the ’423 Patent. Patent Owner also submits the declaration of
`Dr. Joseph L. De Bellis (Ex. 2003) in support of its arguments concerning
`antedating the Excel reference.
`II. DISCUSSION
`A. 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); 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 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 PTO 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).
`Petitioner proposes constructions for “truncation” and “determining a
`database schema.” Pet. 13. Because we need not address the claim
`limitations that contain the “truncation” term, as we discuss below, we now
`address only the proposed construction for the latter phrase. Petitioner
`
`
`
`7
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`proposes that claim 1’s “determining a database schema” limitation should
`be construed as “determining a collection of tables of a database.” Id. at 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 schema is “a collection of
`tables of a database.” Id. at 13 (quoting Ex. 1001, 1:50–54); 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.”). Patent Owner does not provide a proposed
`construction for this phrase.
`For purposes of this Decision, and after review of the record, we
`conclude that no express claim construction of “determining a database
`schema” is necessary for our determination of whether to institute review of
`the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’”). For example, determining whether a database
`schema should be limited to a particular database structure (e.g., tables), as
`Petitioner proposes, is unnecessary for purposes of this Decision.
`B. 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
`made; sophistication of the technology; and educational level of active
`
`
`
`8
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`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)).
`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. 1005 ¶¶ 22–25). Patent Owner
`does not propose a skill level for a person of ordinary skill in the art.
`For purposes of this Decision, and based on the current record, we
`agree with and apply Petitioner’s definition of the level of skill in the art as a
`person having a bachelor’s degree in Computer Science and one year of
`experience designing, implementing, and using database management
`systems.
`
`C. Principles of Law Concerning § 103(a)
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`
`
`9
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`III. ASSERTED GROUND 1
`Petitioner contends claims 1–4, 7–9, and 13 of the ’423 Patent are
`unpatentable under 35 U.S.C. § 103(a) as being obvious over the
`combination of Maloney and Bertram. Pet. 4, 14–45.
`A. Summary of Maloney
`Maloney discloses a graphical user interface that allows an end user to
`retrieve data from a database without knowing the database’s structure. Ex.
`1006, Abstract, 4:64–5:5. To account for this lack of end user knowledge,
`Maloney provides a list of pre-existing logical schemas from which the end
`user selects. Id. at Abstract, 4:64–5:5. Each logical schema is created
`beforehand by a person who knows the database’s structure (e.g., a database
`administrator), and who selects relevant tables from the database and
`identifies the logical relationship (e.g., a common field) between the selected
`tables. Id. at 2:60–67, 7:44–56. Accordingly, using a logical schema, an
`end user can access and manipulate data from the database without knowing
`the database’s structure. Id. 4:64–5:5. Figure 19, shown below, illustrates a
`form created by an end user using a selected logical schema. Id. at 3:56–57.
`
`
`
`10
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`Figure 19 shows a form created by an end user using the “invoice”
`
`logical schema. Ex. 1006, 17:58–59, Fig. 19. In creating the form, the end
`user customized the arrangement of data returned from the database. Id. at
`17:59–60. Figure 19 shows the end user selected (i) the lname, fname,
`phone, storenm, and storeid data fields to be displayed in the “Master Level”
`portion of the form, and (ii) the salesdate, salesprsn, itemnm, itemno, price,
`and qty data fields to be displayed in the “Detail Level” portion of the form
`— the Master and Detail Levels reflect a one–to–many relationship. Id. at
`17:62–18:5, Fig. 19. Furthermore, “[e]ach data field is preceded by text
`[(i.e., “Labels”)] describing the field created by the end user when designing
`the form.” Id. at 17:65–66.
`
`After the end user has created the form, the end user can query the
`database based on the data fields in the form to retrieve and display the data
`for those fields. Id. at 18:13–17. The database management system
`determines from the logical schema the physical tables on which to perform
`the query, as well as how the physical tables are related. Id. at 18:17–22.
`B. Summary of Bertram
`Bertram discloses reducing the amount of horizontal space required
`for displaying text data (e.g., column headings or entries) in a column on a
`display screen. Ex. 1007, Abstract. To this end, Bertram discloses
`abbreviating, and potentially also truncating, the data for display so that it
`complies with a set width limit. Id. at Figs. 3, 7, 5:10–11, 7:25–32, 7:55–
`8:65. Figure 7, shown below, illustrates a flow chart for an embodiment in
`accordance with Bertram’s teachings. Id. at 3:25–27.
`
`
`
`
`
`11
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`
`Figure 7 illustrates a flow chart depicting a method for abbreviating
`and truncating column headings and entries for display. Id. at 3:25–27,
`6:24–37 (disclosing abbreviating entries), 7:25–32 (disclosing that Bertram’s
`teachings can be applied to entries, as well as column headings). This
`method relies on a hierarchy of character types (e.g., spaces (type one),
`lower case vowels (type two), lower case consonants (type three)) for
`removing characters from the entry if the entry exceeds the set width. Id. at
`7:55–67. If an entry is too wide — width checked at step 182 (“WIDTH >
`SET WIDTH?”) — the entry is abbreviated by first removing spaces, then
`12
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`lower case vowels, and then lower case consonants, in successive passes,
`until the entry no longer exceeds the set width. Id. at 8:3–57. If after the
`character types have been processed, and the entry still is too wide — width
`checked at step 194 (“WIDTH > SET WIDTH?”) — the entry “is truncated
`to the appropriate number of characters.” Id. at 8:58–65, Fig. 7; see also id.
`at 5:10–11 (“truncat[ing] the columns to be five characters in width”).
`C. Arguments Related to 35 U.S.C. § 325(d)
`Patent Owner argues that the Board should exercise its discretion
`
`under § 325(d) to reject the Petition “because the references relied on in the
`Petition do not raise any issues not already reviewed during prosecution of
`the [’]423 Patent.” Prelim. Resp. 35–36. Patent Owner also argues that
`“[t]he primary reference, Maloney, [already] was asserted in multiple Office
`Actions during prosecution.” Id. at 35. Furthermore, Patent Owner argues
`that the combination of Maloney and Chew6 (which was a combination
`examined during prosecution) has the same disclosure as the asserted
`combination of Maloney and Bertram because “Chew and Bertram disclose
`essentially the same subject matter.” Id. For example, according to Patent
`Owner, both Chew and Bertram fail to disclose “determining a number of
`characters.” Id.
`
`Petitioner agrees that Chew does not teach determining a number of
`characters. Pet. 8–9 (citing Ex. 2005, 3:60–64, 5:30–41, 6:62–66, Fig. 5).
`Petitioner, however, contends Bertram teaches determining a number of
`characters. Id. at 10–11 (citing Ex. 1007, 7:55–8:65, Fig. 7). Petitioner
`
`
`
` 6
`
` U.S. Patent No. 6,593,949 B1 (filed May 4, 2000 and issued July 15, 2003)
`(Ex. 2005, “Chew”).
`
`
`
`13
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`argues thus “the combination of Maloney and Bertram is different than
`anything that was before the Examiner during prosecution.” Id. at 11.
`
`As discussed herein, the evidence of record does not demonstrate that
`Bertram “is substantially the same” as Chew, which was previously
`presented to the Office. Thus, we do not find Patent Owner’s argument
`persuasive on this record. Accordingly, we decline to exercise our discretion
`under 35 U.S.C. § 325(d) to deny any of the asserted grounds.
`D. The Challenged Independent Claims
`Petitioner challenges independent claims 1 and 3 of the ’423 Patent.
`Pet. 4. Below we set forth Petitioner’s contentions for the required
`limitations of these claims, as well as Patent Owner’s responses, if any.
`1. Claim 1
`a. Computer-implemented method for displaying data
`Petitioner contends Maloney teaches “[a] computer-implemented
`
`method for displaying data” via Maloney’s teaching of a “computer-
`implemented method for providing a hierarchical view of data stored in a
`plurality of relational database tables.” Pet. 17 (citing Ex. 1006, 4:5–20,
`20:4–6; Ex. 1005, 29–30).
`b. Determining a database schema
`Petitioner contends Maloney teaches “determining a database schema
`for a database,” as recited in claim 1. See id. at 18. More specifically,
`Petitioner argues Maloney teaches “[p]airs of tables which will comprise a
`logical schema are selected from the relational database and the logical
`relationships between the pairs of tables are defined.” Id. (citing Ex. 1006,
`2:58–67). According to Petitioner, “Maloney’s disclosure of selecting tables
`and establishing a logical relationship to create the logical schemas
`
`
`
`14
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`teaches . . . determining a database schema for a database.” Id. (citing Ex.
`1006, 2:58–67, 17:13–18). In addition, Petitioner argues that Maloney’s
`teaching of “providing a list of available tables to a user,” also meets this
`limitation. Id. (citing Ex. 1006, 8:43–48; Ex. 1005, 30–31).
`Patent Owner disputes that Maloney teaches this limitation. Prelim.
`Resp. 8. Patent Owner argues Maloney instead teaches “a data base
`administrator (DBA) knows, in advance, a physical database schema and
`uses this knowledge to generate one or more logical schemas.” Id. (citing
`Ex. 2001 ¶¶ 59 – 61). “The DBA creates the logical schemas by first
`specifying which tables are available to an end user, and the relationships
`between columns of those tables.” Id. (citing Ex. 2001 ¶¶ 50–54).
`c. Providing a list of database fields
`Petitioner contends Maloney teaches “providing a list of database
`
`fields, wherein the list includes a descriptor indicating a data category,” as
`recited in claim 1. Pet. 18–19. Petitioner argues this limitation is met by
`Maloney’s teaching of “the dialog boxes of Figures 18–20, where each of
`the fields 44, 46, 48, 50 is listed and has a name, e.g., ‘storeid’ with a text 49
`descriptor indicating a data category, e.g., ‘Store number.’” Id. at 18 (citing
`Ex. 1006, 7:43–45, 17:18–27, 17:58–18:12; Ex. 1005, 31–35); see also id.
`(quoting Ex. 1006, 17:58–18:12) (disclosing “lname, fname, phone, storenm,
`and storeid, are pasted individually into the top portion of the form window
`as individual data fields 48. Each data field is preceded by text 49 describing
`the field created by the end user when designing the form”).
`d. Receiving a search selection
`Petitioner contends Maloney teaches “receiving a search selection for
`
`a database field on the provided list of database fields,” as recited in claim 1.
`
`
`
`15
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`Pet. 19–20. Petitioner argues that this limitation is met by Maloney’s
`teaching of “receiving field selections and then querying (searching) the
`database based on fields in the form of Figures 19 and 20.” Id. at 19. “After
`the end user has created a form or report by selecting fields, records from the
`database can be retrieved and viewed in the form the end user created by
`entering a command for the [database management system] to query the
`database based on the fields in the form.” Id. at 19–20 (quoting Ex. 1006,
`18:12–17).
`
`e. Determining a number of characters
`Petitioner contends the combination of Maloney and Bertram teaches
`
`“determining a number of characters included in each entry in the selected
`database field,” as recited in claim 1. Pet. 20–23. Petitioner argues Maloney
`teaches displaying records (i.e., the entries in the selected database fields)
`retrieved from querying the database. Id. at 20–21 (citing Ex. 1006, 18:23–
`43, Fig. 20). Petitioner argues Bertram teaches “determining a number of
`characters included in each column heading (entry) for all the columns in a
`viewed table by comparing a given entry to a set width.” Id. at 22 (citing
`Ex. 1007, Fig. 7, 6:38–54, 7:25–32, 8:22–29, 8:58–65); see also id. (quoting
`Ex. 1007, 8:22–25) (disclosing “determin[ing] if the width of the column
`heading is greater than the width set in step 52 of the method 50, via step
`182”) (emphasis omitted). Petitioner contends “Maloney’s display of entries
`for a selected database field in view of Bertram’s technique of determining a
`number of characters in column entries renders obvious determining a
`number of characters included in each entry in the selected database field.”
`Id. at 22–23.
`
`
`
`16
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`Patent Owner argues the combination, and Bertram in particular, fails
`
`to teach “determining a number of characters.” Prelim. Resp. 19 (citing Ex.
`2001 ¶¶ 107–108). Patent Owner argues “Bertram’s abbreviation process is
`iterative and is based on character type in an entry, as opposed to a number
`of characters, in which certain types of characters, such as vowels or lower-
`case letters, are removed.” Id. at 8; see also id. at 17–18 (citing Ex. 1007,
`6:24–30, 8:23–29, 8:49–51, 8:58–65). According to Patent Owner, in
`Bertram’s iterative abbreviation process “only character type is determined.”
`Id. at 8–9 (emphasis added). In addition, Patent Owner argues “Bertram
`does not disclose how the current column width is compared to the column
`width limit set in ‘step 52.’” Id. at 19.
`f. If the number of characters included in each entry
`The last two elements of claim 1 are conditional steps (i.e., steps that
`
`only need to be performed if certain conditions precedent are met). These
`two conditional 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).
`
`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 Ex parte Schulhauser, No. 2013-
`007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential).
`17
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`The broadest reasonable 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
`finds that if a method’s conditional step does not need to be performed, it
`does not need to be shown to invalidate the method. Id. at *4.
`
`Such a finding 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 Fed. Appx. 12, 21 (Fed. Cir. 2010)
`(unpublished) (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
`Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“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 invalidity, conditional method steps that need not be performed, also
`need not be shown in establishing invalidity. 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 for the condition (i.e., “if . . .
`exceeds a specified amount” and “if . . . does not exceed the specified
`amount”). Thus, the broadest reasonable interpretation of claim 1
`
`
`
`18
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`encompasses a method where one, and only one, of the conditional steps is
`performed and the other conditional step is not performed. Id. at *3–4.
`
`Although Petitioner contends that the combination of Maloney and
`Bertram teaches both of claim 1’s conditional steps, only one of these steps
`needs to be shown for unpatentability. We select the latter conditional step
`(i.e., “if the number of characters included in each entry does not exceed the
`specified amount, displaying each entry in its entirety”) for our analysis.
`Petitioner argues “Bertram teaches that if the number of characters in a
`column heading (entry) does not exceed the set width (specified amount),
`displaying the column heading in its entirety.” Pet. 25 (citing Ex. 1007,
`8:22–29, 8:58–65). Petitioner contends thus “Maloney’s display of entries
`for a selected database field in view of Bertram’s technique of determining a
`number of characters in column entries and then not reducing a number of
`characters in those column entries teaches” this latter conditional step. Id. at
`26 (citing Ex. 1005, 44–46).
`2. Claim 3
`a. Computer-implemented method for formatting data for
`display
`Petitioner contends the combination of Maloney and Bertram teaches
`
`“[a] computer-implemented method for formatting data for display,” as
`recited in claim 3. Pet. 27. Petitioner relies on the same disclosure from
`Maloney for teaching this preamble as it does for claim 1’s preamble of “a
`computer-implemented method for displaying data.” Compare Pet. 17, with
`id. at 27. Accordingly, we incorporate Petitioner’s arguments from
`§ III.D.1.a.
`
`
`
`19
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`b. Generating a list of data fields
`Petitioner contends the combination of Maloney and Bertram teaches
`
`“generating a list of data fields,” as recited in claim 3. Pet. 27–28.
`Petitioner relies on the same disclosure from Maloney for teaching this
`limitation as it does for claim 1’s limitation of “providing a list of database
`fields.” Compare Pet. 18–19, with id. at 27–28. Accordingly, we
`incorporate Petitioner’s arguments from § III.D.1.c.
`c. Receiving a first data field selection from the list of
`data fields
`Petitioner contends the combination of Maloney and Bertram teaches
`
`“receiving a first data field selection from the list of data fields,” as recited
`in claim 3. Pet. 29. Petitioner relies on the same disclosure from Maloney
`for teaching this limitation as it does for claim 1’s limitation of “receiving a
`search selection for a database field on the provided list of database fields.”
`Compare Pet. 19–20, with id. at 29. Accordingly, we incorporate
`Petitioner’s arguments from § III.D.1.d.
`d. Determining a first quantity indicative of a number of
`characters in each entry of the selected data field
`Petitioner contends the combination of Maloney and Bertram teaches
`
`“determining a first quantity indicative of a number of characters in each
`entry of the selected data field,” as recited in claim 3. Pet. 29–32. Petitioner
`relies on the same disclosures from Maloney and Bertram for teaching this
`limitation as it does for claim 1’s limitation of “determining a number of
`characters included in each entry in the selected database field.” Compare
`Pet. 20–23, with id. at 29–32. Likewise, Patent Owner sets forth
`substantively the same arguments for this limitation as for the corresponding
`
`
`
`20
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`claim 1 limitation. Compare Prelim. Resp. 17–19, with id. at 22.
`Accordingly, we incorporate the parties’ arguments from § III.D.1.e.
`e. If the first quantity exceeds a specified limit
`The last limitation of claim 3 is a conditional step, which
`
`only needs to be performed “if the first quantity exceeds a specified limit.”
`This conditional step is:
`
`if the first quantity exceeds a specified limit, reducing a
`number of characters to be displayed for each entry from the
`selected data field, comprising:
`
`
`performing a truncation that reduces the number of
`
`characters to be displayed from the selected data fi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
