`
`Case IPR2018-00044
`Patent No. 7,302,423
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.
`Petitioner
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`v.
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`VILOX TECHNOLOGIES, LLC.
`Patent Owner
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`
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`Case IPR2018-00044
`Patent No. 7,302,423
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`PATENT OWNER MOTION TO AMEND
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` Case IPR2018-00044
`Patent No. 7,302,423
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................. 1
`BACKGROUND ............................................................................................... 2
`ARGUMENT ..................................................................................................... 2
`I. Vilox has proposed a reasonable number of substitute claims ................. 3
`II. The proposed amendments do not enlarge the scope of the claims or
`introduce new subject matter .......................................................................... 4
`III. The proposed amendments are responsive to at least one ground of
`unpatentability involved in the trial ................................................................ 6
`IV. Proposed Contingent Claim listing and support in earlier disclosures ... 6
`V. The Proposed Contingent Claims are patentable over the prior art .......15
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` Case IPR2018-00044
`Patent No. 7,302,423
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`TABLE OF AUTHORITIES
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`
`Cases
`Nichia Corp. v. Emcore Corp.,
`
`IPR2012-00005, Paper 27 (PTAB June 3, 2013) ......................................... 7
`Aqua Products, Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) .................................................................... 3
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336 (Fed. Cir. 2010) .................................................................... 7
`Unified Patents, Inc. v. Vilox Techs. LLC,
`
`IPR2018-00044, Decision on Institution (PTAB, Apr. 19, 2018) ................ 5
`Statutes
`35 U.S.C. § 112 .................................................................................................. 1
`35 U.S.C. §103 ................................................................................................... 6
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`ii
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` Case IPR2018-00044
`Patent No. 7,302,423
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`LIST OF EXHIBITS
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`Declaration of Wesley W. Chu, Ph.D. (Patent Owner
`Preliminary Response)
`
`Curriculum Vitae of Wesley W. Chu, Ph.D.
`
`Declaration of Dr. Joseph L. De Bellis (Patent Owner
`Preliminary Response
`
`Excel II
`
`U.S. Patent No. 6,593,949 to Chee H. Chew (Chew)
`
`Excerpt from Webster’s Dictionary
`
`Declaration of Cecil E. Key
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`Patent Owner's Notice of Deposition of Dr., Hsieh-Yee
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`Curriculum Vitae of Dr. Ingrid Hsieh-Yee
`
`Library of Congress Online Catalog Listing for Microsoft
`Excel 2000 Bible, Full Record
`
`Library of Congress Online Catalog Listing for Microsoft
`Excel 2000 Bible, MARC Tags
`
`Wayne State University Library System Listing for
`Microsoft Excel 2000 Bible
`
`Deposition Transcript of Dr. Ingrid Hsieh-Yee
`
`Excel III (excerpt of Excel 2000 Bible)
`
`Deposition Transcript of Philip Greenspun, Ph.D.
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`U.S. Patent No. 6,760,720 to De Bellis
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`Declaration of Wesley W. Chu, Ph.D.
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`iii
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`2001
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`2002
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`2003
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`2004
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`2005
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`Patent No. 7,302,423
`The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed.)(excerpt)
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`
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`Webster’s New Collegiate Dictionary (excerpt)
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`Microsoft Press Computer Dictionary (3rd ed.) (excerpt)
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`Declaration of Dr. Joseph L. De Bellis
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`Declaration of Lucille Marie De Bellis
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`Warehouse.com Receipt (Dec. 10, 1999)
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`Tallgrass Technologies Receipt (Dec. 15, 1999)
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`Fig. 10 from U.S. Patent No. 6,760,720
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`Letter from Dr. Joseph L. De Bellis to John Harrop (Dec.
`28, 1999)
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`2018
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`2019
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`2020
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`Patent No. 7,302,423
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`INTRODUCTION
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`
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`Patent Owner Vilox Technologies, LLC (“Vilox”) provides these
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`proposed claims contingent upon a finding of invalidity of the respective
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`challenged original claim(s). Proposed Contingent Claim 24 clarifies that a
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`number of characters is determined for a plurality of database entries, that
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`reduction of the number of characters occurs by truncation, and that none of the
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`steps of the claim are to be considered conditional. Proposed Contingent Claim
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`25 also clarifies that a number of characters is determined for a plurality of
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`database entries and that none of the steps are to be considered conditional;
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`Claim 25 also further specifies that it is the actual number of characters
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`determined, not a quality indicative of such number. Claims 26 and 27 provide
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`a further limitation that all entries are to be displayed on a single page of the
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`terminal. Finally, some limited potential issues under 35 U.S.C. § 112 are
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`addressed. The amendments do not broaden the scope of the claims and are
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`each responsive to at least one of the alleged grounds of invalidity. Vilox
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`respectfully submits that these amendments are permissible and should be
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`entered by the Panel in this IPR in the event that the Board determines that the
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`corresponding originally issued claim(s) are not patentable.
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`Patent No. 7,302,423
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`BACKGROUND
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`
`
`The Panel’s consideration of this motion and the proposed amendments
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`are contingent upon a finding that the original challenged claims of U.S. Patent
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`7,302,423 (the “’423 Patent”) are invalid. Accordingly, Vilox provides further
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`limitation and clarification of its claimed invention by and through the proposed
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`amendments below. Proposed Contingent Claim 24 includes proposed
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`amendments to clarify that a number of characters is determined for a plurality
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`of entries, that the reduction in the number of characters occurs by truncation,
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`and that none of the steps of the method are conditional. (24.4, 24.5, 24.6).
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`Proposed Contingent Claim 25 includes proposed amendments to clarify that a
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`number of characters is determined for a plurality of entries, that none of the
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`steps of the method are conditional, and that it is the actual number of characters
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`determined. (25.3, 25.4, 25.7). Claim 26 and 27 are proposed to be amended to
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`clarify that all of the entries are to be displayed on a single page of the terminal.
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`(26, 27).
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`
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`ARGUMENT
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`In accordance with 35 U.S.C. § 316(d)(1)(B), Vilox may propose a
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`reasonable number of substitute claims for each claim challenged by petitioner
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`Unified Patents, Inc., (“Unified”). These substitutions may not broaden the
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`scope of the claims or introduce new claimed matter. Id., § 316(d)(3); 37 CFR
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`§ 42.121(a)(2)(ii). Proposed amendments may be (but are not required to be)
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`
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`denied if they do not respond to a ground of unpatentability raised by the
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`petitioner in the trial. 37 CFR § 42.121(a)(2)(i). The claim listing, contained in
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`the appendix affixed hereto, clearly indicates the changes and sets forth: (1) the
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`support in the original disclosure of the patent for each added or amended claim;
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`and (2) the support for each claim in an earlier-filed disclosure for which benefit
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`of the filing of the earlier filed disclosure is sought. Id., sub. (b). Vilox shows
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`below that the proposed amended claims do not broaden the scope, are
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`responsive to a ground at issue in this IPR, and are supported by the ‘423
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`specification and the specification of an earlier-filed application. It is the burden
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`of the petitioner to show that the amended claims are unpatentable over the
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`prior art. Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1324 (Fed. Cir. 2017).
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`I.
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`Vilox has proposed a reasonable number of substitute claims
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`According to 37 C.F.R § 42.121(a)(3), a motion to amend may propose
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`a reasonable number of substitute claims for each challenged claim. Generally,
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`it is presumed “that only one substitute claim would be needed to replace each
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`challenged claim,” but that challenge may be rebutted by a showing of need. 37
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`CFR § 42.121(a)(3). Vilox proposes one substitute claim for each of challenged
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`Claims 1 and 3. Vilox has proposed two substitute claims for challenged Claim
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`6. Two proposed substitute claims are necessary for Claim 6 because Claim 6
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`3
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`Patent No. 7,302,423
`is dependent on Claim 3, which may be found unpatentable in this proceeding
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`
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`and replaced by Proposed Contingent Claim 25. Proposed Contingent Claims
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`26 and 27, the two proposed substitutes for Claim 6, are substantively identical.
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`They only differ in that the former depends from Claim 3, and the latter depends
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`from Proposed Contingent Claim 25 in the event that Claim 3 is found
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`unpatentable.
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`II. The proposed amendments do not enlarge the scope of the claims
`or introduce new subject matter
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`The proposed amended claims do not exceed the scope of the original
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`
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`claims of the ‘423 Patent. Any deletions are for the purpose of clarifying the
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`scope of the invention; no limitations are removed thereby impermissibly
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`expanding the scope of the claims. Any additions are for the purposes of
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`clarifying the scope or for adding further limitation, thereby narrowing the
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`scope.
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`Step 24.4 of Proposed Contingent Claim 24 adds the limitation of
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`determining a number of characters included in each entry “in a plurality of
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`entries.” This limits the scope of the claim as it clarifies that the step of
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`“determining a number of characters included in each entry in the selected
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`database” cannot be performed on only a single entry. Step 24.5 adds the
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`limitation of “truncating each entry having a number of characters determined
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`to be greater than a specified number of characters,” clarifying that any
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`Patent No. 7,302,423
`reduction of characters must occur by truncation and not by another reduction
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`
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`method. The remaining additions and deletions to steps 24.5 and 24.6 clarify
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`that no steps of the claim are conditional and address any potential § 112 issues
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`created by the amendment. According to this Board, the broadest reasonable
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`interpretation of a claim with a conditional step need not be performed. Unified
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`Patents, Inc. v. Vilox Techs. LLC, IPR2018-00044, Decision on Institution, at
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`*21 (PTAB, Apr. 19, 2018) (hereinafter the “Decision”). Therefore, by making
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`clear that the step is an unconditional requirement of the method claimed, the
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`scope of the claim is limited only to the method in which the step is performed.
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`Step 25.3 of Proposed Contingent Claim 25 removes the term “a quantity
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`indicative of a” number of characters. This deletion serves to narrow the scope
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`of the claim. The step is now limited to “determining a first number of
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`characters” as opposed to the broader limitation of “determining a first quantity
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`indicative of a number of characters.” Step 25.3 also adds the limitation of
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`determining a first number of characters in each entry “in a plurality of entries”
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`of the selected data field, which has the same effect as discussed above for step
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`24.4. The remaining additions and deletions to steps 25.4 and 25.7 serve to
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`clarify scope and remove any potentially conditional language to the same
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`effect as described above for the changes made in steps 24.5 and 24.6.
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`Step 26 and 27 of Proposed Contingent Claims 26 and 27 each add the
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`limitation displaying all entries on “a single page of” the terminal. This further
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`Patent No. 7,302,423
`limits the claim so that all entries must be displayed on a single page of the
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`
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`terminal as opposed to multiple pages.
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`III. The proposed amendments are responsive to at least one ground
`of unpatentability involved in the trial
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`“A motion to amend may be denied” where “[t]he amendment does not
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`respond to a ground of unpatentability involved in the trial.” 37 CFR §
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`42.121(a)(2)(i). Where the proposed amendment is intended to address the
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`grounds for institution, additional modifications may be permissible. Because
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`the petition here necessarily claims that every element of each challenged claim
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`in the patent is disclosed by a combination of prior art references under 35
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`U.S.C. §103, any substantive added limitations to any element is responsive to
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`a grounds. Vilox has added such limitations as discussed above. Proposed
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`Contingent Claims 24 and 25 add the substantive limitation of “a plurality of
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`entries” as well as remove conditional language thus requiring the performance
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`of additional steps in the method. Proposed Contingent Claims 26 and 27 add
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`the substantive limitation of displaying the entries on “a single page of” the
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`terminal.
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`IV. Proposed Contingent Claim listing and support in earlier
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`disclosures
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`The ‘423 Patent issued from U.S. Application No. 09/935,565, filed on
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`Aug. 24 2001, which is a continuation-in-part of U.S. Application No.
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`Patent No. 7,302,423
`09/513,340, file on Feb. 25, 2000, now U.S. Patent No. 6,760,720 (‘720 Patent).
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`
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`Each Proposed Contingent Claim is supported by the original disclosure of the
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`‘423 Patent and the related ‘720 Patent, thereby reasonably conveying to one
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`of ordinary skill in the art that the inventor was in possession of the claimed
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`subject matter as of the filing dates of the ‘423 and ‘720 Patents. 37 CFR §§
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`42.121(b)(1)-(2); see also Nichia Corp. v. Emcore Corp., IPR2012-00005,
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`Paper 27 at 3 (PTAB June 3, 2013) (citing Ariad Pharms., Inc. v. Eli Lilly &
`
`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The Appendix attached
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`hereto includes a Claim Listing that identifies the proposed changes and sets
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`forth the support in the original disclosure and the earlier-filed disclosure for
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`which the benefit of the earlier filing date is sought. Written support from each
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`disclosure is demonstrated for each element of each Proposed Contingent
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`Claim.
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`a. Proposed Contingent Claim 24
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`Support for the various amendments to Proposed Contingent Claim 24 is
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`found at least in the following disclosures:
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`The disclosures of both the ‘423 and ‘720 patents support the preamble
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`of Proposed Contingent Claim 24, “A computer-implemented method for
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`displaying data” (Appendix, at 24.P). For example, both patents disclose, “if a
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`user wants to analyze/search the database using the name of a specific
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`individual as a database entry point, the database manager will search the
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`Patent No. 7,302,423
`database or index using the desired name, and will organize the results so that
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`
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`all entries associated with that name are displayed.” Ex. 1001 at 5:18-22; Ex.
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`2016 at 3:62-67.
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`The ‘423 and ‘720 patents also provide support for “determining a
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`database schema for a database” (Appendix, at 24.1). For example, both patents
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`disclose, “The search engine may identify a database schema by simply using
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`a trial and error process. Alternatively, the search engine may use other
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`techniques known in the art. Such techniques are described, for example in...”
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`Ex. 1001 at 6:32-42; Ex. 2016 at 5:4-14.
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`The ‘423 and ‘720 patents provide support for “providing a list of
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`database fields” (Appendix, at 24.2). For example, both patents disclose, “a
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`database qualifier receives information from the database driver and provides a
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`list of available data fields from the database.” Ex. 1001 at 6:23-25; Ex. 2016
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`at 4:62-64. The patents also provide support for “wherein the list includes a
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`descriptor indicating a data category,” (Appendix, at 24.2). For example, the
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`patents each disclose: “The database may have its data organized in one or more
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`data fields... and each such data field may be identified by a data field
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`descriptor... the data field descriptor includes enough text for the user at the
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`terminal to determine the general contents of the data field.” Ex. 1001 at 7:5-
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`10; Ex. 2016 at 5:44-49.
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`Patent No. 7,302,423
`The ‘423 and ‘720 patents provide support for “receiving a search
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`
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`selection for a database field on the provided list of database fields” (Appendix,
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`at 24.3). For example, both patents disclose, “Using the terminal, the user may
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`select one of the data field descriptors to be searched.” Ex. 1001 at 7:19-20; Ex.
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`2016 at 5:59-60.
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`The ‘423 and ‘720 patents provide support for “determining a number of
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`characters included in each entry in a plurality of entries in the selected database
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`field” (Appendix, at 24.4). For example, the patents each disclose, “the
`
`subroutine adjusts a size of a data field by decrementing a parameter TP related
`
`to entries in a selected data field... the parameter TP may be the number of
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`alphabetical characters.” Ex. 1001 at 15:53-57; Ex. 2016 at 14:7-11 (emphasis
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`added).
`
`The ‘423 and ‘720 patents provide support for “truncating each entry
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`having a number of characters determined to be greater than a specified number
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`of characters and displaying a truncated portion of each entry in the selected
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`database field, the displayed truncated portion truncated to reduce a number of
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`characters to be less than or equal to the specified number of characters”
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`(Appendix, at 24.5). For example, each patent discloses, “the first n letters—is
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`checked against the database again and n is reduced until the result list is small
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`enough for the capacity of the terminal.” Ex. 1001 at 8:49-52; Ex. 2016 at 7:19-
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`22. The patents provide an example of such a truncation process:
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`Patent No. 7,302,423
`If the maximum number of displayable results is three (3), and the
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`
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`database contains the names of six cities "Armandia, Armonk, New
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`Orleans, New York Riverhead, Riverdale," then the first attempt to
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`"resolve" the result list will stop after a result list display is created with
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`the full name of the cities:
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`Armandia, Armonk, New Orleans ... (the limit was reached)
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`Try again with 7 characters:
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`Armandia, Armonk, New Orl, New Yor, (limit reached again)
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`Again with 5 characters:
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`Armandia, Armonk, New O, New Y, (limit reached again)
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`Again with 3 characters:
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`Arm ( ... ), New ( ... ), Riv ( ... ). These results may now be displayed
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`on the terminal. The display of Arm, New, Riv can then be used to
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`conduct a further search-on-the-fly.
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`Ex. 1001 at 8:52-9:2; Ex. 2016 at 7:22-39. The ‘423 patent further discloses
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`“the truncator may attempt truncation by beginning with one character (26
`
`letters and perhaps 10 digits) and incrementing to two characters and then
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`three, four, until a failure to display is reached. Ex. 1001 at 9:20-24.
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`
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`The ‘423 and ‘720 patents provide support for “displaying each entry
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`having a number of characters determined to be less than or equal to the
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`specified number in its entirety” (Appendix, at 24.6). For example, the quoted
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`Patent No. 7,302,423
`sections supporting the limitation in the paragraph above, also provide support
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`
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`for this limitation. Ex. 1001 at 8:48-9:2; Ex. 2016 at 7:18-42. The ‘423 patent
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`provides further discloses “the truncator first attempts to display the
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`information without truncation.” Ex. 1001 at 9:19-20.
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`b. Proposed Contingent Claim 25
`
`Support for the various amendments to Proposed Contingent Claim 25 is
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`found at least in the following disclosures:
`
`The disclosures of both the ‘423 and ‘720 patents support the preamble
`
`of Proposed Contingent Claim 25, “A computer-implemented method for
`
`formatting data for display” (Appendix, at 25.P). For example, each patent
`
`discloses, “if a user wants to analyze/search the database using the name of a
`
`specific individual as a database entry point, the database manager will search
`
`the database or index using the desired name, and will organize the results so
`
`that all entries associated with that name are displayed.” Ex. 1001 at 5:18-22;
`
`Ex. 2016 at 3:62-67.
`
`The ‘423 and ‘720 patents provide support for “generating a list of data
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`field” (Appendix, at 25.1). For example, each patent discloses, “a database
`
`qualifier receives information from the database driver and provides a list of
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`available data fields from the database.” Ex. 1001 at 6:23-25; Ex. 2016 at 4:62-
`
`64.
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`
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`Patent No. 7,302,423
`The ‘423 and ‘720 patents provide support for “receiving a first data field
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`
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`selection from the list of data field” (Appendix, at 25.2). For example, each
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`patent discloses, “Using the terminal, the user may select one of the data field
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`descriptors to be searched.” Ex. 1001 at 7:19-20; Ex. 2016 at 5:59-60.
`
`The ‘423 and ‘720 patents provide support for “determining a first
`
`number of characters in each entry in a plurality of entries of the selected
`
`database field” (Appendix, at 25.3). For example, the patents each disclose, “the
`
`subroutine adjusts a size of a data field by decrementing a parameter TP related
`
`to entries in a selected data field... the parameter TP may be the number of
`
`alphabetical characters.” Ex. 1001 at 15:53-57; Ex. 2016 at 14:7-11 (emphasis
`
`added).
`
`The ‘423 and ‘720 patents provide support for “performing an iterative
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`process to reduce a number of characters to be displayed for each entry from
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`the selected data field that exceeds a specified limit on the number of characters
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`to be displayed” (Appendix, at 25.4). For example, each patent discloses, “the
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`first n letters—is checked against the database again and n is reduced until the
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`result list is small enough for the capacity of the terminal.” Ex. 1001 at 8:49-
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`52; Ex. 2016 at 7:19-22. The patents provide an example of such an iterative
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`process. Ex. 1001 at 8:52-9:2; Ex. 2016 at 7:22-39. The ‘423 patent further
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`discloses “the truncator may attempt truncation by beginning with one character
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`Patent No. 7,302,423
`(26 letters and perhaps 10 digits) and incrementing to two characters and then
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`
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`three, four, until a failure to display is reached. Ex. 1001 at 9:20-24.
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`
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`The ‘423 and ‘720 patents provide support for “performing a truncation
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`that reduces the number of characters to be displayed from the selected data
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`field” (Appendix, at 25.5). For example, the quoted sections supporting the
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`limitation in the paragraph above, also provide support for this limitation. Ex.
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`1001 at 8:48-9:2; Ex. 2016 at 7:18-42.
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`
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`The‘423 and ‘720 patents provide support for “comparing the reduced
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`number of characters to the specified limit” (Appendix, at 25.6). For example,
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`each patent discloses, “the first n letters—is checked against the database
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`again and n is reduced until the result list is small enough for the capacity of
`
`the terminal.” Ex. 1001 at 8:49-52; Ex. 2016 at 7:19-22.
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`
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`The ‘423 and ‘720 patents provide support for “repeating the truncation
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`and comparing steps until the reduced number of characters to be displayed
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`from the selected data field is less than or equal to the specified limit”
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`(Appendix, at 25.7). For example, the patents each disclose the iterative
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`process quoted above. Ex. 1001 at 8:52-9:2; Ex. 2016 at 7:22-39.
`
`The ‘423 and ‘720 patents provide support for “displaying the reduced
`
`number of characters for each entry from the selected data field” (Appendix, at
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`25.8). For example, each paten discloses, “the first n letters—is checked against
`
`the database again and n is reduced until the result list is small enough for the
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`capacity of the terminal... the results may now be displayed on the terminal.”
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`
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`Ex. 1001 at 8:49-9:2; Ex. 2016 at 7:19-42.
`
`c. Proposed Contingent Claim 26
`
`Support for the amendment to Proposed Contingent Claim 26 is found at
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`least in the following disclosures:
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`The ‘423 and ‘720 patents provide support for dependent Proposed
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`Contingent Claim 26 “wherein all entries from the selected data field are
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`displayed on a single page of a terminal” (Appendix, at 26). For example, each
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`paten discloses, “so that the result list can [be] accommodated (e.g. displayed
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`on one page) by the terminal.” Ex. 1001 at 8:46-48; Ex. 2016 at 7:17-18. The
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`patents also provide support for “wherein the specified limit is determined
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`dynamically, based on a characteristic of the terminal” (Appendix, at 26). For
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`example, the patents each disclose, “if the size of the resulting list is larger than
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`some numeric parameter related to a display size of the terminal, then the
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`constraints may be modified by the truncator.” Ex. 1001 at 8:43-47; Ex. 2016
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`at 7:14-17.
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`d. Proposed Contingent Claim 27
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`Support for the amendment to Proposed Contingent Claim 27 is identical
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`to that provided above for Proposed Contingent Claim 26.
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`14
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` Case IPR2018-00044
`Patent No. 7,302,423
`V. The Proposed Contingent Claims are patentable over the prior
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`
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`art
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`As mandated by Aqua Products, it is the burden of the petitioner,
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`Unified, to prove that the Proposed Contingent Claims in this motion are
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`unpatentable over the prior art. Nonetheless, Patent Owner confirms that no
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`combination of the prior art of record teaches the subject matter of the proposed
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`claims. This motion discusses the closest known art to the features discussed
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`above, which Patent Owner believes is the art raised by Unified in its Petition.
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`The Proposed Contingent Claims are patentable over the art at issue in
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`this proceeding.
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`Proposed Contingent Claim 24 is amended from current Claim 1 to
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`replace any possible conditional limitations with non-conditional limitations.
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`As such, all limitations of Proposed Contingent Claim 24 should be considered
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`in any validity challenges. Proposed Contingent Claim 24 also recites an
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`affirmative truncation step and clarifies that each entry is in a plurality of
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`entries. As discussed in the accompanying Patent Owner’s Response, Patent
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`Owner considers current Claim 1 to be valid in view of the challenges in this
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`IPR. Proposed Contingent Claim 24 corrects any Claim 1 defects asserted by
`
`the PTAB in its Decision. Accordingly, Proposed Contingent Claim 24 is valid
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`over the references asserted in this IPR, and in light of any additional grounds
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`asserted in the Decision. Proposed Contingent Claim 25 is amended from
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`
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`15
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`

`

` Case IPR2018-00044
`Patent No. 7,302,423
`current Claim 3 to replace any possible conditional limitations with non-
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`
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`conditional limitations. As such, all limitations of Proposed Contingent Claim
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`24 should be considered in any validity challenges. Proposed Contingent Claim
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`25 also recites determining a number of characters in each entry in a plurality
`
`of entries in the selected data field. As discussed in the accompanying Patent
`
`Owner’s Response, Patent Owner considers current Claim 3 to be valid in view
`
`of the challenges in this IPR. Proposed Contingent Claim 24 corrects any Claim
`
`3 defects asserted by the PTAB in its Decision. Accordingly, Proposed
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`Contingent Claim 24 is valid over the references asserted in this IPR, and in
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`light of any additional grounds asserted in the Decision.
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`Proposed Contingent Claims 26 and 27 are amended from current Claim
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`6 and recite that all entries from the selected data field are displayed on a single
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`page. As such, Proposed Contingent Claims 26 and 27 are further defined over
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`the closest prior art.
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`Dated: July 9, 2018
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`/John K. Harrop/
`John K. Harrop
`
`Counsel for Patent Owner
`Vilox Technologies LLC
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`16
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`
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` Case IPR2018-00044
`Patent No. 7,302,423
`
`Certificate of Service
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`The undersigned certifies service pursuant to 37 CFR § 42.6(e) that
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`PATENT OWNER’S MOTION TO AMEND was served on the Petitioner by
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`email as authorized by the Petitioner in the Petition at the following:
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`Dated: July 9, 2018
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`/John K. Harrop/
`John K. Harrop
`
`Counsel for Patent Owner
`Vilox Technologies LLC
`
`17
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`

`

`CLAIM LISTING APPENDIX
`
` Case IPR2018-00044
`Patent No. 7,302,423
`I.
`Proposed Contingent Claim 24 to Replace Claim 1 if Claim 1
`is Found Unpatentable
`
`[24.P] A computer-implemented method for displaying data comprising:
`[24.1] determining a database schema for a database;
`[24.2] providing a list of database fields, wherein the list includes a descriptor
`indicating a data category;
`[24.3] receiving a search selection for a database field on the provided list of
`database fields;
`[24.4] determining a number of characters included in each entry in a plurality
`of entries in the selected database field; [and]
`[24.5] [if the number of characters included in each entry exceeds a specified
`amount of characters], truncating each entry having a number of characters
`determined to be greater than a specified number of characters and displaying
`a truncated portion of each entry in the selected database field, [wherein] the
`displayed truncated portion truncated to reduce a number of characters to
`be[displayed in each portion is] less than or equal to the specified number
`[amount] of characters; and
`[24.6] [if the number of characters included in each entry does not exceed the
`specified amount,] displaying each entry having a number of characters
`determined to be less than or equal to the specified number in its entirety.
`
`II.
`Proposed Contingent Claim 25 to Replace Claim 3 if Claim 3
`is Found Unpatentable
`
`[25.P] A computer-implemented method for formatting data for display,
`comprising:
`[25.1] generating a list of data fields;
`[25.2] receiving a first data field selection from the list of data fields;
`[25.3] determining a first [quantity indicative of a] number of characters in each
`entry in a plurality of entries of the selected data field;
`[25.4] [if the first quantity exceeds a specified limit,] performing an iterative
`process to reduce [reducing] a number of characters to be displayed for each
`entry from the selected data field that exceeds a specified limit on the number
`of characters to be displayed, comprising:
`[25.5] performing a truncation that reduces the number of characters to be
`displayed from the selected data field,
`[25.6] comparing the reduced number of characters to the specified limit, and
`[25.7] [if the reduced number of characters exceeds the specified limit,]
`repeating the truncation and comparing steps until the reduced number of
`characters to be displayed from the selected data field is less than or equal to
`
`
`
`1
`
`

`

`CLAIM LISTING APPENDIX
`
` Case IPR2018-00044
`Patent No. 7,302,423
`
`the specified limit[s]; and
`[25.8] displaying the reduced number of characters for each entry from the
`selected data field.
`
`III. Proposed Contingent Claim 26 to Replace Claim 6 if Claim 6
`is Found Unpatentable and Claim 3 is Found Patentable
`
`[26] The method of claim 3, wherein [each entry] all entries from the selected
`data field [is] are displayed on a single page of a terminal, and wherein the
`specified limit is determined dynamically, based on a characteristic of the
`terminal.
`
`
`IV. Proposed Contingent Claim 27 to Replace Claim 6 if Claim 6
`is Found Unpatentable and Claim 3 is Found Patentable
`
`[27] The method of claim [3] 25, wherein [each entry] all entries from the
`selected data field [is] displayed on a single page of a terminal, and wherein the
`specified limit is determined dynamically, based on a characteristic of the
`terminal.
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`2
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`

`

`CLAIM LISTING APPENDIX
`
`Support in ‘423 Patent
`
` Case IPR2018-00044
`Patent No. 7,302,423
`Support in ‘720 Patent
`
`Contingent
`
`Proposed
`Claim 24
`computer-
`[24.P] A
`implemented method
`for
`displaying
`data
`comprising:
`[24.1] determining a
`database schema for a
`database;
`[24.2] providing a list of
`database fields, wherein
`the
`list
`includes
`a
`descriptor indicating a
`data category;
`[24.3] receiving a search
`selection for a database
`field on the provided list
`of database fields;
`[24.4] determining a
`number of characters
`included in each entry in
`a plurality of entries in
`the selected database
`field; [and]
`[24.5] [if the number of
`characters included in
`each entry exceeds a
`specified
`amount of
`characters],
`truncating
`each entry having a
`number of characters
`determined to be greater
`than a specified number
`of
`characters
`and
`displaying a truncated
`portion of each entry in
`t