`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES LLC.
`Patent Owner
`
`____________________
`
`Case IPR2018-00044
`Patent No. 7,302,423
`____________________
`
`DECLARATION OF WESLEY W. CHU, PH.D.
`July 9, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................................... 4
`I.
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................................... 4
`III. LEVEL OF ORDINARY SKILL IN THE ART AND RELEVANT LEGAL
`STANDARDS ................................................................................................................. 11
`IV. U.S. PATENT 7,302,423 (THE ’423 PATENT), EXHIBIT 1001 .............................. 14
`A. Specification and Prosecution History ......................................................... 15
`1. Specification .................................................................................................... 15
`2. Prosecution History ........................................................................................ 17
`V. CLAIM CONSTRUCTION ........................................................................................ 20
`A. Determining a Database Schema for a Database ......................................... 21
`B. Determining a Number of Characters in Each Entry of the Selected
`Database Field ....................................................................................................... 23
`C. Performing a Truncation ................................................................................. 25
`D. 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 .................................................... 26
`E. Each Entry from the Selected Data Field is Displayed on a Terminal ........ 27
`VI. REFERENCES RELIED ON BY THE PETITIONER .............................................. 28
`A. U.S. Patent 5,701,453 to Maloney (Maloney, Exhibit 1006) .......................... 28
`1. Maloney Does Not Disclose Determining a Database Schema .................. 28
`2. Maloney Discloses and Requires an Explicit Naming Convention ............ 34
`B. Excel 2000 Bible and Excel (Exhibit 1009) ................................................... 39
`C. U.S. Patent 7,168,039 to Bertram (Bertram, Exhibit 1007) ........................... 55
`D. U.S. Patent 6,300,947 TO Kanevsky (Kanevsky, Exhibit 1008) ................... 70
`VII. NONE OF PETITIONER’S ASSERTED CHALLENGES ESTABLISH
`OBVIOUSNESS ............................................................................................................. 76
`A. Claim 1 is Not Obvious over Maloney in view of Bertram ........................... 77
`1. Maloney in View of Bertram Does Not Disclose or Suggest All Claim 1
`Limitations ........................................................................................................... 77
`2. There Can Be No Motivation to Combine Maloney and Bertram ................ 83
`B. Claim 2 is Not Obvious over Maloney in View of Bertram ........................... 87
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 2 of 126
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`C. Claim 1 Is Not Obvious over Excel in View of Bertram ................................ 89
`1. Excel in View of Bertram Does Not Disclose or Suggest All Claim 1
`Limitations ........................................................................................................... 89
`2. There Can Be No Motivation to Combine Excel and Bertram ..................... 91
`D. Claim 3 is Not Obvious over Maloney in View of Bertram ........................ 100
`1. Maloney in View of Bertram Does Not Disclose or Suggest All Claim 3
`Limitations ......................................................................................................... 101
`2. There Can Be No Motivation to Combine Maloney and Bertram Because
`Any Combination of Maloney and Bertram Would Render Critical Features of
`Maloney Inoperative ......................................................................................... 102
`E. Claim 3 is Not Obvious over Excel in View of Bertram .............................. 106
`1. Excel in View of Bertram Does Not Disclose or Suggest All Claim 3
`Limitations ......................................................................................................... 106
`2. There Can Be No Motivation to Combine Excel and Bertram ................... 106
`F. Claim 6 is not obvious over Maloney in View of Bertram and Kanevsky . 114
`1. The Combination of Maloney, Bertram, and Kanevsky Does Not Disclose
`or Suggest the Claim 6 Limitations ................................................................. 114
`2. There Can Be No Motivation to Combine Maloney, Bertram, and Kanevsky
` 115
`G. Claim 6 is Not Obvious over Excel in View of Bertram and Kanevsky .... 117
`1. There Can Be No Motivation to Combine Excel, Bertram, and Kanevsky
` 117
`VIII. CLAIMS 1, 3, AND 6, AS AMENDED, ARE VALID ........................................... 123
`A. CLAIM 1/24 ..................................................................................................... 123
`B. CLAIM 3/25 ..................................................................................................... 124
`C. CLAIM 6/26 ..................................................................................................... 125
`IX. CONCLUSION ...................................................................................................... 126
`
`
`
`
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 3 of 126
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`INTRODUCTION
`
`I have prepared this Declaration at the request of Vilox Technologies, LLC stating
`
`
`I.
`
`1.
`
`my opinions as an independent expert regarding issues raised in the matter of Petition
`
`IPR2018-00044 (“Petition”) and the April 19, 2018 Decision on Institution of Inter Partes
`
`Review (“Decision”).
`
`2.
`
`I am being compensated for this work, and my compensation is not dependent
`
`on the outcome of this matter.
`
`3.
`
`In preparation for this Declaration, I studied Exhibits 1001 – 1010 provided by
`
`Petitioner as well as the Petition. I also studied the Decision; Exhibit 2003, Declaration
`
`of Dr. Joseph L. De Bellis; Exhibit 2014, Excel III (excerpt tof Excel 2000 Bible); Exhibit
`
`2015, Deposition Transcript of Dr. Philip Greenspun; and Exhibits 2019 (Webster’s New
`
`Collegiate Dictionary), 2018 (IEEE Dictionary of Electrical and Electronics Terms), and
`
`Exhibit 2020, (Microsoft Press Computer Dictionary).
`
`4.
`
`In preparing this Declaration, I relied, in addition to the above Papers and other
`
`documents, on my knowledge and experience gained through 56 years as an engineer,
`
`professor, and consultant.
`
`II.
`
`5.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`My Curriculum Vitae is provided as Exhibit 2002. Following is a summary of my
`
`education and relevant experience.
`
`6.
`
`I am Emeritus Distinguished Professor at the University of California, Los
`
`Angeles. I received a Bachelor of Science degree in electrical engineering from the
`
`University of Michigan in 1960 and a Master of Science degree in electrical engineering
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 4 of 126
`
`
`
`
`from the University of Michigan in 1961. I received a Ph.D. in electrical engineering
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`from Stanford University in 1966.
`
`7.
`
`From 1961 to 1962, I worked at General Electric (now Honeywell) in Phoenix,
`
`Arizona with a focus on electrical switching circuits for computers. From 1964 to 1966, I
`
`worked on the design of large-scale computers at IBM in San Jose, California. From
`
`1966 to 1969, I worked at Bell Laboratories in Holmdel, New Jersey with a focus on
`
`computer communications and distributed databases.
`
`8.
`
`I joined the faculty of the of California, Los Angles in 1969 in the Computer
`
`Science Department. I served as Department Chair from 1988 to 1991, as
`
`Distinguished Professor since 1998, and as Emeritus Distinguished Professor since
`
`2009.
`
`9.
`
`From 1982 to 2005, I worked as a consultant for several large computer
`
`companies:
`
`• 1982 - 1984, Western Union Corporation, Upper Saddle River, New Jersey,
`
`Executive Consultant to VP Engineering and Member of the Technical Review
`
`Board with duties that included:
`o Evaluating and planning for the Western Union Packet Switched Network,
`
`Easylink, and other value-added services.
`o Developing transition plans for network modernization, integration with
`
`existing networks and for future network growth.
`o Critiquing on going and proposed enhancement plans and compare with
`
`other viable alternatives for effectiveness.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 5 of 126
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`• 1983 – 1986, Titan Systems Inc., Inglewood California, Consultant, with duties
`
`that included developing, evaluating and validating the SENTRY Distributed Data
`
`Base System.
`
`• 1985 – 1988, Unisys SDC Corp., Huntsville, Alabama, Consultant, with duties
`
`that included designing and developing a real time distributed database system
`
`for missile defense applications.
`
`• 1995 – 2005, Xerox Corporation, El Segundo, California, Consultant, fault
`
`tolerant computing, with duties that included designing and developing word
`
`processing systems.
`
`10. Early in my career, my research focus was on computer communication and
`
`networks, distributed databases, memory management, real-time distributed processing
`
`systems, and statistical multiplexing - the latter contributing to the development of ATM
`
`networks. My pioneering work in file allocation and directory design for distributed
`
`databases aided the design and development of domain name servers for the web and
`
`current cloud computing systems. I was named an IEEE Fellow for my contributions in
`
`these areas.
`
`11. Over the past two decades, my research interests evolved to include intelligent
`
`(knowledge-based) information systems and knowledge acquisition for large information
`
`systems. Using my methodology for relaxing query constraints, I led the development
`
`of CoBase, a cooperative database system for structured data, and KMed, a
`
`knowledge-based multimedia medical image system.
`
`12. Under the KMed project, I developed a Medical Digital Library that provides
`
`approximate content-matching and navigation; the library will serve as a cornerstone for
` IPR 2018-00044
`Exhibit 2017 / Page 6 of 126
`
`
`
`
`
`
`future paperless hospitals. More recently, I worked on inference techniques for data
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`security and privacy protection (ISP) and social network-based recommender system
`
`(SNRS).
`
`13.
`
`Together with my students, I received numerous best paper awards at
`
`conferences and workshops, and also a certificate of merit for work on the Medical
`
`Digital Library system. I am the recipient of the IEEE Computer Society's Technical
`
`Achievement Award for contributions to intelligent information systems.
`
`14.
`
`I am the author or coauthor of more than 150 articles, an editor of three
`
`textbooks on information technology, and the co-editor of a reference book on data
`
`mining.
`
`15.
`
`I have received the following U.S. Patents:
`
`“System and Methods for Evaluating Inferences for Unknown Attributes in a
`
`Social Network,” U.S. Patent Number 8,160,993 April 17, 2012, Lead inventor,
`
`Wesley W. Chu.
`
`“System and Method for Retrieving Scenario Specific Documents,” U.S. Patent
`
`Number 7, 548,910, June 2009, Lead inventor, Wesley W. Chu.
`
`“Database Event Detection and Notification System Using Type Abstraction
`
`Hierarchy (TAH),” U.S. Patent Number 6,247,146, July 2002.
`
`“Database System with Query Relaxation Using Type Abstraction Hierarchy
`
`(TAH) as Query Condition Relaxation Structure,” U.S. Patent Number 6,427,146,
`
`September 1999.
`
` IPR 2018-00044
`Exhibit 2017 / Page 7 of 126
`
`•
`
`•
`
`•
`
`•
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`“Multiplexed MOS Multi-Accessed Memory System” (co-invented with D. Hibbits),
`
`U.S Patent Number 4,415,991, November 1983.
`
`“Multi-access Memory Module for Data Processing System” (co-invented with P.
`
`Korff), U.S. Patent Number 4,109,719, August 1978.
`
`“Statistical Multiplexing Systems for Computer Communications,” U.S. Patent
`
`Number 4,093,823, June 1978.
`
`“Statistical Multiplexing Systems for Computer Communications,” U.S. Patent
`
`
`
`•
`
`•
`
`•
`
`•
`
`Number 4,082,922, April 1978.
`
`16.
`
`I have received the following special recognitions:
`
`•
`
`•
`
`Invited by United Nations (1984) and World Bank (1987) as a member of
`
`scientific delegates to consult and lecture on Computer Communications and
`
`Networks, and Distributed Data Bases in People's Republic of China.
`
`IEEE Computer Society Distinguished Visitors Program to give invited lectures to
`
`selected universities, 1990-1994.
`
`• Selected by National Science Council as a delegate scientist to visit Taiwan and
`
`give invited lecture series (1992).
`
`• External program review committee for the Department of Information and
`
`Computer Science for UC Irvine, June 1996.
`
`• KMeD as a feature article on Cutting Edge Technology related to content-based
`
`medical image retrieval in the Los Angeles Times, Business Section, August 4,
`
`1997.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 8 of 126
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`• National Science Foundation research proposal review panel member, 1998-
`
`
`
`2008.
`
`17.
`
`I have provided the following professional services:
`
`• ACM SIGCOMM chairman from 1973 to 1976.
`
`• Associate editor for IEEE Transactions on Computers for Computer Networking
`
`and Distributed Processing System (1978 to 1982) and received a meritorious
`
`award for his service to IEEE.
`
`• Workshop co-chair of the IEEE First International Workshop on Systems
`
`Management (1993) and received a Certificate of Appreciation award for his
`
`service.
`
`• Technical program chairs for SIGCOMM (1975), VLDB (1986), Information
`
`Knowledge Sharing (2003), and ER (2004), general conference chair of ER
`
`(1997). Technical program chair (knowledge management track) of the 2009
`
`International conference on information and knowledge management (CIKM09).
`
`• Guest editor and associate editor for several journals related to intelligent
`
`information systems.
`
`18.
`
`I served as an expert witness in the following matters:
`
`• 2009 – 2012
`
`U.S. Department of Justice, Case name: FedEx Corporation v. United States,
`
`case number: 2:08-cv-02423, filed in the U.S. District Court for the Western
`
`District of Tennessee.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 9 of 126
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`I was retained by the U.S. Government to evaluate the software projects by U.S.
`
`corporations to determine if they qualified for research credits under the legal
`
`standards of Internal Revenue Code (I.R.C.) section 41(d).
`
`Services included:
`o Review information on the software products and prepare report in detail
`
`opine on whether, as a matter of computer science, each project met the
`
`requirement of the statute and regulations.
`o Review the reports of the plaintiff's experts and identify any issues with
`
`their analysis, methodology and/or conclusions.
`o Write expert witness report.
`
`Prepare to testify at deposition.
`
`The case was settled before trail.
`
`• 2012—2014
`
`Microsoft Corp and Google Inc. v. GeoTag Inc. (D. Del, Case No 11-cv-175).
`
`Defended Microsoft Corp. and Google against GeoTag Inc.
`
`Provided expert opinion that U.S. Patent No. 5,930,474 (J.A. 89-133) is invalid as
`
`well as GeoTag's counterclaims that alleged that Google infringed the '474
`
`patent. See Microsoft Corp. v. GeoTag, Inc., No. 11-175-RGA, 2014 WL
`
`4312167 (D.Del. Aug. 29, 2014.
`
`I was deposed by GeoTag attorney and defended Google and Microsoft based
`
`on my published research work on Co-Base and Co-GIS resulting in the non-
`
`infringement of the ‘474 patent.
`
`• 2013
`
` IPR 2018-00044
`Exhibit 2017 / Page 10 of 126
`
`
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`Oracle Corporation v. Parent of Clouding; Case IPR 2013-00073 (JL), Patent
`
`
`
`6,738,799.
`
`Participated in Inter Partes Review.
`
`Expert consultant for Clouding in patent litigation. Tasks included analysis,
`
`conclusion, and preparation report of declaration.
`
`• 2014-2015
`
`GeoTag Inc. v. Classified Ventures LLC, U.S. District Court for Northern District
`
`of Illinois, cv-00633.
`
`Expert consultant for Apple Inc. in patent litigation.
`
`Based on our research on Natural Language Processing, the case was settled
`
`without going to trial.
`
`III.
`
`LEVEL OF ORDINARY SKILL IN THE ART AND RELEVANT LEGAL
`STANDARDS
`
`19.
`
`I understand that the level of ordinary skill may be reflected by the prior art of
`
`record, and that a person having ordinary skill in the art (“PHOSITA”) to which the
`
`claimed subject matter pertains would have had the capability of understanding the
`
`scientific and engineering principles applicable to the pertinent art. I understand that
`
`one of ordinary skill in the art has ordinary creativity, but is not an automaton.
`
`20.
`
`I understand there are multiple factors relevant to determining the level of
`
`ordinary skill in the pertinent art, including: (1) the levels of education and experience of
`
`persons working in the field at the time of the invention; (2) the sophistication of the
`
`technology; (3) the types of problems encountered in the field; and (4) the prior art
`
`solutions to those problems.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 11 of 126
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`I am familiar with all the subject matter of Exhibit 1001, the ’423 Patent. I am
`
`
`21.
`
`also aware of the state of the art at the time the application resulting in the ’423 Patent
`
`was filed. I have been informed that while, based on filing applications with the U.S.
`
`Patent Office, the priority date for the ’423 Patent may be as early as February 25,
`
`2000, in fact, the inventions disclosed in the ’423 Patent were conceived at least as
`
`early as mid-May 1999. I have reviewed the inventor’s declaration (Exhibit 2003,
`
`Declaration of Dr. Joseph L. De Bellis) on this subject, and believe the facts stated in
`
`the Declaration do support mid-May 1999 as the date of conception of the claimed
`
`inventions. Based on the inventions disclosed in the ’423 Patent, and my experience
`
`with software engineers at that time, I believe that a PHOSITA would have been
`
`someone who had, at the conception date, 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. I
`
`believe that I possessed at least such experience and knowledge at the mid-May 1999
`
`conception date of the ’423 Patent, and that I am qualified to opine on the ’423 Patent.
`
`22.
`
`For purposes of this Declaration, in general, and unless otherwise noted, my
`
`statements and opinions, such as
`
`those regarding my experience and
`
`the
`
`understanding of a PHOSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field before the priority date
`
`of the ’423 Patent.
`
`23.
`
`I have been asked to provide my opinions regarding whether claims 1-9 and 13
`
`of the ’423 Patent would have been nonobvious to a PHOSITA at the time of invention,
`
`in light of the prior art.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 12 of 126
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`I am not an attorney. In preparing and expressing my opinions and considering
`
`
`24.
`
`the subject matter of the ’423 Patent, I relied on certain legal principles that counsel has
`
`explained to me.
`
`25.
`
`I have been informed and understand that under 35 U.S.C. § 103, a patent may
`
`be invalid for obviousness if the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have been
`
`obvious, at the time the invention was made, to a person having ordinary skill in the art
`
`to which said subject matter pertains. I understand that although it is well settled that
`
`the ultimate determination of obviousness is a question of law, it is also well understood
`
`that there are factual issues underlying the ultimate obviousness decision. I understand
`
`that 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 and the prior
`
`art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations,
`
`if any, of nonobviousness.
`
`26.
`
`I understand that because inventions often involve a combination of known
`
`elements that in hindsight seems preordained, to prevent hindsight invalidation of patent
`
`claims, the law requires some “teaching, suggestion or motivation” to combine cited
`
`references. I understand that motivation to combine references may be found in the
`
`cited references themselves, in the knowledge of a PHOSITA at the time of invention,
`
`and in the nature of the problem to be solved.
`
`27.
`
`I understand that the Supreme Court has recognized other rationales for
`
`combining references or modifying a reference to show obviousness of claimed subject
`
`matter. Some of these other rationales are: (a) combining prior art elements according
` IPR 2018-00044
`Exhibit 2017 / Page 13 of 126
`
`
`
`
`
`
`to known methods to yield predictable results; (b) simple substitution of one known
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`element for another to obtain predictable results; (c) use of a known technique to
`
`improve a similar device (method, or product) in the same way; (d) applying a known
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (e) choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success.
`
`28.
`
`I understand that obviousness does not require physical combination/bodily
`
`incorporation, but rather consideration of what the combined teachings would have
`
`suggested to a PHOSITA at the time of the invention.
`
`29.
`
`I further understand that an asserted motivation to combine references can be
`
`overcome based on a showing that those references together “teach away” from their
`
`combination. I understand that if the references taken in combination would produce a
`
`“seemingly inoperable device,” such references teach away from the combination and
`
`thus cannot serve as a basis for obviousness.
`
`30.
`
`I understand that within the framework of an obviousness analysis, it is
`
`impermissible to pick and choose from any one reference only so much of it as will
`
`support a given position to the exclusion of other parts necessary to the full appreciation
`
`of what such reference fairly would have suggested to a PHOSITA. Thus, a reference
`
`must be considered in its entirety, including those portions of the reference that argue
`
`against obviousness.
`
`IV.
`
`31.
`
`U.S. PATENT 7,302,423 (THE ’423 PATENT), EXHIBIT 1001
`
`The following discusses aspects of the ’423 Patent and its prosecution history
`
`that are relevant to the claims subject to the Petition.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 14 of 126
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`A.
`
`Specification and Prosecution History
`
`1.
`
`Specification
`
`32.
`
`The ’423 Patent, Exhibit 1001, discloses a dynamic search engine and
`
`corresponding dynamic search methods. The search engine may be applied to
`
`databases for which prior knowledge of database schemas is not available to the search
`
`engine. That is, the search engine determines the database schema. See Exhibit
`
`1001, ’423 Patent, 6:32 - 33; 7:3 - 5.
`
`33.
`
`In response to a query, the search engine returns search results. In an
`
`embodiment, the search results may be returned in a tabular form that consists of a
`
`column with multiple rows. Id., Figure 4. Each search result may be termed an “entry”
`
`in the column. Id., 7:19 - 33. An entry may consist of text composed of a number of
`
`characters (for example, numbers, numerals, symbols, spaces and icons). See, e.g.,
`
`id., Fig. 30; 17:14 - 15. Thus, entries are not limited to text.
`
`34.
`
`The search engine may return so many entries that the search results cannot be
`
`displayed within the limited real estate of a display screen or on a single page. To
`
`contend with such a possibility, the search engine may perform operations on the
`
`returned search results. One such operation involves truncation. The specification
`
`provides numerous examples of truncation in the embodiments. See id., 7:19 - 16:40
`
`and Figures 4, 10 – 16, 18 – 24, 27 – 38, 40 -49, and 52.
`
`35. One example of truncation involves determining a number of characters in each
`
`entry in a database field, and if, for a specific entry, the number of characters exceeds a
`
`specified limit, deleting a character from the entry. The process of determining and
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 15 of 126
`
`
`
`
`deleting executes in an iterative fashion until all entries may be represented on the
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`display screen or page. See id.
`
`36.
`
`The following drawing (Figure 11) from the ’423 Patent shows truncation by
`
`determining a number of characters in each entry in a database field.
`
`37.
`
`The list of available data fields shows categories by which a search for books
`
`may be narrowed. One available data field is “Titles,” which, as can be seen, was
`
`selected by the user. A search for books by title produces so many results that the titles
`
`are truncated so that only the first character (1 – 9 and A – Z) of the title is displayed.
`
`
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 16 of 126
`
`
`
`
`This first interim result list is generated by successive, or iterative truncation, as
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`disclosed for example in Exhibit 1001, ’423 Patent, 8:22 – 9:6. An example of the actual
`
`truncation process used to generate the interim result lists of Figure 11 is provided in
`
`Exhibit 1001, ’423 Patent, at 12:33 – 65. Figure 11 shows three sequential interim
`
`result lists. Using the interim result lists, the user selects, in sequence, “C,” “Ce,” and
`
`finally, “Cells.” “Cells” is in the last sequential interim result list. Thus, each of the three
`
`sequential interim result lists produce entries that may be searched further – that is, for
`
`example, entry “Ce,” which is a truncation of titles that start with words having the first
`
`characters “Ce” (e.g., “Cells”) can be further searched to produce the column I have
`
`labeled as interim result list (actually the last sequential interim result list). As can be
`
`seen in Figure 11, the user selects “Cells” in the interim result list, and a final search
`
`result is displayed with the full titles of each of three books that are available from the
`
`Web site.
`
`38.
`
`The above description and Figure 11 itself show truncation by determining a
`
`number of characters in a data field entry and then iteratively reducing the number of
`
`characters until a displayable result list is produced. Note the entry “Cell an” in the
`
`column I labeled interim result list. The entry “Cell an” consists of seven characters and
`
`conveys much information to a user. For example, the user knows there is a book with
`
`the title “Cell an****,” where the asterisks mean additional characters have been
`
`removed from the title. A user might presume the “an” is a truncation of “and.”
`
`2.
`
`Prosecution History
`
`39. Claims 1 - 9 and 13 were examined extensively by the Office including with
`
`respect to Maloney. See Exhibit 1002, patent application 09/935,565 file history. In a
` IPR 2018-00044
`Exhibit 2017 / Page 17 of 126
`
`
`
`
`
`
`September 4, 2007 response to an office action, claim 3 was amended to incorporate
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`limitations recited in a dependent claim that the patent examiner found allowable over
`
`the combination of Maloney and Chew et al., U.S. Patent 6,593,849. In particular, claim
`
`3 was amended to recite the iterative truncation steps now present in claim 3, as shown
`
`below in paragraph 41. The office action stated claim 1 was allowable as examined,
`
`and no amendments were made to claim 1. Exhibit 1002, pgs. 27 – 37.
`
`40. Claim 1 as recited in the September 4, 2007 Response reads:
`
`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.
`
`See id.; see also Exhibit 1001, ’423 Patent, claim 1.
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 18 of 126
`
`
`
`
`In the Decision, pages 16-19, the PTAB concluded that the last two limitations of claim 1
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`are conditional and mutually exclusive and that only one of the two limitations needs to
`
`be considered to show invalidity. In my opinion, a PHOSITA reading claim 1 would
`
`understand that the claim is directed to displaying data in all of a number of entries.
`
`Since claim 1 is directed to displaying data in all of a number of entries, a PHOSITA
`
`would have understood that the method necessarily encompassed determining a
`
`number of characters in every entry. When the number of characters in every entry is
`
`determined, some entries will have a number of characters exceeding a character limit
`
`and other entries will have a number of character equal to or less than the limit. Hence,
`
`a PHOSITA would have understood that the logical and correct interpretation of claim 1
`
`is that both of claim 1’s last two limitations must be executed and the PTAB’s conclusion
`
`that the last two limitations are conditional and mutually exclusive would lead to a claim
`
`that does not meet the intent “to display data.”
`
`41. Claim 3 as recited in the September 4, 2007 Response reads:
`
`A computer-implemented method
`
`for
`
`formatting data
`
`for display,
`
`comprising:
`
`
`
`
`
`
`
`generating a list of data fields;
`
`receiving a first data field selection from the list of data fields;
`
`determining a first quantity indicative of a number of characters in
`
`each entry of the selected data field;
`
`
`
`
`
`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:
`
`
`
` IPR 2018-00044
`Exhibit 2017 / Page 19 of 126
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`
`
`
`
`performing a
`
`truncation
`
`that reduces
`
`the number of
`
`characters to be displayed from the selected data filed [sic],
`
`comparing the reduced number of characters to the specified limit, and
`
`
`
`
`
`if the reduced n