UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
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`Petitioner
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`- vs. -
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`VILOX TECHNOLOGIES, LLC
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`Patent Owner
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`———————
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`IPR2018-00044
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`U.S. Patent 7,302,423
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`PETITIONER’S OPPOSITION
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`TO PATENT OWNER’S MOTION TO AMEND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`
`Petitioner
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`- vs. -
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`VILOX TECHNOLOGIES, LLC
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`Patent Owner
`
`———————
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`IPR2018-00044
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`U.S. Patent 7,302,423
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`PETITIONER’S OPPOSITION
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`TO PATENT OWNER’S MOTION TO AMEND
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`PETITIONER’S EXHIBIT LIST
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`September 24, 2018
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`EX1001 U.S. Patent 7,302,423 to De Bellis (“’423 Patent”)
`EX1002
`Prosecution File History of U.S. Patent 7,302,423 (“’423 PH”)
`EX1003
`Excerpts from Prosecution File History of U.S. Patent 6,760,720
`(“’720 PH”)
`Prosecution File History of U.S. Provisional Appl. 60/227,305
`EX1004
`EX1005 Declaration of Dr. Philip Greenspun Under 37 C.F.R. § 1.68
`(“Greenspun”)
`EX1006 US Patent 5,701,453 to Maloney et al. (“Maloney”)
`EX1007 US Patent 7,168,039 to Bertram (“Bertram”)
`EX1008 US Patent 6,300,947 to Kanevsky (“Kanevsky”)
`EX1009
`John Walkenbach, Microsoft Excel 2000 Bible (IDG Books
`Worldwide, Inc. 1999). (“Excel”)
`IBM Dictionary of Computing, Tenth Edition (1993) (“IBM”)
`EX1010
`EX1011 Declaration of Ingrid Hsieh-Yee
`EX1012 Curriculum Vitae of Dr. Philip Greenspun
`EX1013 Declaration of Dr. Philip Greenspun Under 37 C.F.R. § 1.68 in
`Support of Petitioner’s Opposition to Patent Owner’s Motion to
`Amend (“Greenspun-MtA”)
`EX1014 US Patent 6,452,597 to Goldberg et al. (“Goldberg”)
`EX1015 Deposition Transcript of Dr. Wesley Chu (“Chu Deposition”)
`
`ii
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`
`I.
`
`INTRODUCTION.
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`The Board should deny entry of the proposed claims in Patent Owner’s
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`Motion to Amend (“Motion to Amend”) (Paper 27). None of the proposed claims
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`are supported by the original disclosure of the ’423 Patent or its parent ’720 Patent.
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`In particular, the proposed independent claims recite “displaying a truncated
`
`portion of each entry in the selected database field…” (proposed claim 24) or
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`“displaying the reduced number of characters for each entry from the selected
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`data field” (proposed claim 25). But the ’423 Patent does not provide written
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`description support for such a feature. In the identified support for the display of a
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`truncated portion or reduced number of characters, there is no display of “each
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`entry [from/in] the selected data[base] field” but instead, a subset of the entries
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`from the selected data[base] field is displayed, and not each entry. For this reason
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`alone, proposed claims 24-27 cannot be entered.
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`Further, the proposed claims are not patentable over the art of record. Patent
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`Owner rests on its arguments as to the original claims, and does not specifically
`
`argue any feature of the proposed claims as patentable over the art applied in the
`
`Petition. Indeed, the amendments to the independent claims are no more than
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`obvious variations of the previously-recited limitations; for example, proposed
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`claim 24 adds a limitation that requires “truncating each entry…,” but as
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`established in the Petition, “Bertram teaches…performing a truncation.” Petition
`
`1
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`at 34. The limitations of the proposed dependent claims are similarly taught by the
`
`prior art of record or by additional prior art, and for this additional reason, the
`
`proposed claims cannot be entered.
`
`II. THE PROPOSED CLAIMS ARE UNSUPPORTED BY THE
`SPECIFICATION.
`A.
`
`Proposed Claim 24 is Not Supported by the Identified Portions of
`the ’423 Patent.
`
`Limitation [24.5] of independent proposed claim 24 recites “truncating each
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`entry having a number of characters determined to be greater than a specified
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`number of characters and displaying a truncated portion of each entry in the
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`selected database field, the displayed truncated portion truncated to reduce a
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`number of characters to be less than or equal to the specified number of
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`characters.” Motion to Amend Appendix, p. 1. Patent Owner asserts that this
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`limitation is supported by the ’423 Patent1 from column 8, line 48 to column 9, line
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`2, and column 9 at lines 20-24.
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`1 The Rules require an identification of support in the “original disclosure of the
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`application,” and the Board has consistently held that “citation should be made to
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`the original disclosure of the application, as filed, rather than to the patent as
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`issued.” Western Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00082,
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`Paper 13 (informative). Patent Owner does not identify support in the “original
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`disclosure” as required.
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`2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`But these portions of the ’423 Patent do not provide the requisite written
`
`description support for the amended limitation. Patent Owner asserts that the
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`“patents provide an example of such a truncation process” and quotes the ’423
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`Patent as follows:
`
`If the maximum number of displayable results is three (3), and
`the database contains the names of six cities "Armandia,
`Armonk, New Orleans, New York Riverhead, Riverdale," then
`the first attempt to "resolve" the result list will stop after a result
`list display is created with the full name of the cities:
`
`Armandia, Armonk, New Orleans ... (the limit was reached)
`
`Try again with 7 characters:
`
`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 on the terminal. The display of Arm, New, Riv can
`then be used to conduct a further search-on-the-fly.
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`Motion to Amend, pp. 9-10. This passage reveals the lack of support for the
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`claimed limitations.
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`In particular, using Patent Owner’s example as a starting point and mapping
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`it to the proposed claim language, the “plurality of entries” (recited in limitation
`
`3
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`[24.4]) include Armandia, Armonk, New Orleans, New York, Riverhead, and
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`Riverdale—six entries in total. “Each entry in the plurality of entries” would thus
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`be each of those six city names.
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`But there is no disclosure of a “truncated portion of each” of these six entries
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`being displayed. At the end of the truncation, according to the Specification, the
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`following “results may now be displayed on the terminal”: “Arm, New, Riv”—
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`three entries. ’423 Patent (EX1001), at 8:67-9:2. For the claim limitation to be
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`supported, the ’423 Patent would have to disclose an embodiment in which Arm,
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`Arm, New, New, Riv, and Riv were displayed. But it does not. In other words, the
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`’423 Patent, at best, discloses truncation of entries in order to collapse the number
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`of entries into a smaller or lower number, such that the smaller or lower number of
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`entries can be displayed on a terminal screen. This is consistent with the earlier
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`portion of column 8: “the terminal 14 may be limited to displaying 20 lines of data
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`(entries, records) from the database 12. The truncator 152 will cycle until the
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`displayed result list is at most 20 lines.” Id. at 8:56-40. Similarly, the ’423 Patent
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`states “[i]f the maximum number of displayable results is three (3), and the
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`database 12 contains the names of six cities…then the first attempt to ‘resolve’ the
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`result list will stop after a result list display is created with the full name of the
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`cities…” Id. at 8:52-57. That is to say, the purpose of “truncation” in the ’423
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`Patent is to reduce a number of lines in a result list so as to collapse the list
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`4
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`vertically, by reducing the number of characters in returned entries to common
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`characters (e.g., Armandia and Armonk are reduced to Arm, the three common
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`characters). This is also consistent with proposed claims 27 and 28, which specify
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`fitting results on a “single page” of a terminal, and as noted in the Specification, a
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`terminal has a particular number of lines it can display—the Specification does not
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`contemplate fitting entries into horizontal space constraints of a terminal.
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`Patent Owner also alleges support in the parent ’720 Patent. Motion to
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`Amend Appendix, p. 3. For at least this limitation, the identified disclosure in the
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`’720 Patent corresponds to the disclosure found in the ’423 Patent, and thus, the
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`’720 Patent similarly fails to support the amended claim language.
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`Accordingly, because the ’423 Patent does not disclose an embodiment in
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`which a “truncated portion of each entry in the selected database field” is
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`displayed, the limitation, and proposed claim 24, is unsupported by the
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`Specification. Thus, the Motion to Amend cannot be granted as to proposed claim
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`24.
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`B.
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`Proposed Claim 25 is Not Supported by the Identified Portions of
`the ’423 Patent.
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`Proposed claim 25 is similarly lacking in written description support in the
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`’423 Patent. The final limitation of proposed claim 25 (limitation [25.8]) recites
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`“displaying the reduced number of characters for each entry from the selected data
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`field.” Motion to Amend Appendix, p. 2.
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`5
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`Like the limitation of proposed claim 24 above, Patent Owner identifies
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`column 8, line 48 through column 9, line 2, as supporting this limitation. Motion
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`to Amend Appendix, p. 6. Again, however, this portion of the Specification does
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`not provide the requisite support for displaying a reduced number of characters
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`“for each entry from the selected data field.” As in the example, there are six
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`entries in the data field, but only three entries with a “reduced number of
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`characters” are displayed. Thus, the ’423 Patent does not provide written
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`description support for at least this limitation of proposed claim 25. Like proposed
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`claim 24, the identified support for proposed claim 25 in the parent ’720 Patent
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`corresponds to the disclosure found in the ’423 Patent, and thus, the ’720 Patent
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`similarly fails to support the amended claim language.
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`Further, the motion must “set forth written description for each proposed
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`substitute claim as a whole, and not just the features added by the amendment.”
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`Western Digital at 8. That is to say, it is irrelevant that this limitation was
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`previously recited in claim 3. For a proposed claim to be entered, the claim as a
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`whole must be supported by the Specification. It is plainly apparent that proposed
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`claim 25 is not supported by the ’423 Patent, and therefore, the Motion to Amend
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`cannot be granted as to that claim.
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`C.
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`Proposed Claim 26 is Not Supported by the ’423 Patent.
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`Proposed claim 26 depends from original claim 3, and is also unsupported
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`6
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`by the ’423 Patent. Proposed claim 26 recites that “all entries from the selected
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`data field are displayed on a single page of a terminal . . .” Motion to Amend
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`Appendix, p. 2. Patent Owner cites to column 8, lines 40 through 52, which appear
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`directly before the portions cited for proposed claims 24 and 25. The ’423 Patent
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`states that “if the size of the resulting result list is larger than some numeric
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`parameter related to a display size of the terminal 14, then the constraints can be
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`modified by the truncator 152 so that the result list can accommodated (e.g.,
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`displayed on one page) by the terminal 14.” ’423 Patent (EX1001), at 8:40-52.
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`The ’423 Patent then continues to give the example explained above of reducing a
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`result list of six cities to three displayed entries. Thus, for the same reasons as
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`established above as to proposed claims 24 and 25, the ’423 Patent does not
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`disclose any embodiment in which, after the results of a truncation process, all
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`entries from a selected data field are displayed on a page of a terminal. Rather, in
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`the sole disclosed example, only a subset of entries is displayed on a terminal.
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`Again, the identified support for proposed claim 26 in the parent ’720 Patent
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`corresponds to the disclosure found in the ’423 Patent, and thus, the ’720 Patent
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`similarly fails to support the amended claim language.
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`Further, proposed claim 26 recites that “the specified limit is determined
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`dynamically, based on a characteristic of a terminal.” The identified portion of the
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`’423 Patent, column 8 from line 40 to 52, does not provide written description
`
`7
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`support for determining a limit “dynamically,” nor does any other portion of the
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`Specification. The identified portion of the ’423 Patent describes a “numeric
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`parameter related to a display size of the terminal 14,” but does not disclose
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`determining this parameter, nor does it disclose that this parameter is determined
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`dynamically as recited or when the parameter is determined. The specification of
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`the ’423 Patent does not use the term “dynamically” or any variations of the term
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`at any point. For this additional reason, proposed claim 26 does not have adequate
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`written description support in the ’423 Patent.
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`Thus, as proposed claim 26 is also not supported by the ’423 Patent, the
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`Motion to Amend should be denied as to that claim.
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`D.
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`Proposed Claim 27 is Not Supported by the ’423 Patent.
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`Proposed claim 27 is analogous to proposed claim 26; the only change is that
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`proposed claim 27 depends from proposed claim 25 (analyzed above) instead of
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`original claim 3. Motion to Amend Appendix, p. 2. Patent Owner relies on the
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`same portions of the ’423 Patent and ’720 Patent as the alleged support for
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`proposed claim 27 as it did for proposed claim 26. Thus, for at least the same
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`reasons, proposed claim 27 is not supported by the written description of the ’423
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`Patent, and the Motion to Amend should be denied as to that claim.
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`III. THE PRPOPOSED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART OF RECORD.
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`Notwithstanding the fact that none of the proposed claims are supported by
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`8
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`the ’423 Patent, the proposed claims are also rendered obvious by the same
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`teachings of the prior art cited in the Petition. Accordingly, for this additional
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`independent reason, the Motion to Amend should not be granted.
`
`E.
`
`Independent Proposed Claims 24 and 25 are Obvious over the
`Maloney and Bertram combination and/or the Excel and Bertram
`combination.
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`Patent Owner characterizes the changes in proposed, independent claims 24
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`and 25 as follows: “Proposed Contingent Claims 24 and 25 add the substantive
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`limitation of ‘a plurality of entries’ as well as remove conditional language thus
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`requiring the performance of additional steps in the method.” Motion to Amend, p.
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`6.
`
`Taking that at face value, proposed claims 24 and 25 are therefore obvious
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`over the same prior art as presented in the Petition. As to proposed claim 24,
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`limitations [24.P], [24.1], [24.2], and [24.3] are identical to limitations recited in
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`claim 1 (referred to in the Petition as limitations [1.1], [1.2], [1.3], and [1.4]), and
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`are therefore rendered obvious by the same prior art cited in the Petition. See
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`Petition at 17-20, 48-52; Greenspun (EX1005) at 29-36, 77-83.
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`As to limitation [24.4], in the Petition, Bertram (in combination with
`
`Maloney) was cited as teaching “determining a number of characters included in
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`each entry in the selected data field,” (see Petition at 20-23) and in the explanation
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`that followed, the Petition noted that Bertram taught “determining a number of
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`9
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`characters included in each column heading (entry) for all the columns in a
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`viewed table…” Petition at 22. Analogous teachings were cited for the Excel and
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`Bertram combination. See Petition at 55-56.
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` That is, Bertram clearly
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`contemplates determining a number of characters for a “plurality of entries” as
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`recited in limitation [24.4] of proposed independent claims.
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`Likewise, the Petition relied on Bertram as teaching “displaying a portion of
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`each entry in the selected database field,” now recited in the second portion of
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`limitation [24.5]. See Petition at 23-25, 55-57 (both discussing limitation [1.6]).
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`Proposed claim 24 has been amended to recite “truncating each entry…” and
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`“displaying a truncated portion of each entry…” That is, proposed claim 24 differs
`
`from claim 1 in that proposed claim 24 explicitly requires truncation in the first
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`portion of limitation [24.5]. The Petition asserted that “Maloney’s display of
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`entries for a selected database field in view of Bertram’s technique of determining
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`a number of characters in column entries and then reducing a number of characters
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`in those column entries if the entries exceed a set width” renders obvious the
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`previous limitation. Petition at 24-25. To reduce a number of characters in
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`column entries, Bertram truncates text: in the analysis of independent claim 3,
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`Bertram was cited as teaching “truncation” as recited in that claim (Petition at 34-
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`37), and therefore, Maloney and Bertram likewise renders obvious the amended
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`limitations in proposed claim 24. Again, analogous reasoning was included for the
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`10
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`Excel and Bertram combination (see Petition at 55-57), and therefore, the proposed
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`claim limitation [24.5] is obvious over that combination as well.
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`Finally, limitation [24.6] merely restates what was previously found in claim
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`1 (referred to in the Petition as limitation [1.7]), and therefore, the prior art cited in
`
`the Petition renders obvious this limitation as well. See Petition at 25-27, 57-59;
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`Greenspun (EX1005) at 44-46, 91-93.
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`As to proposed claim 25, similar reasoning applies. Limitations [25.P],
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`[25.1], and [25.2] are unchanged and are obvious over the teachings of the prior art
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`cited in the Petition for claim 3, referenced as limitations [3.1], [3.2], and [3.3].
`
`See Petition at 27-29, 59-61, Greenspun (EX1005) at 47-52, 93-99. The Maloney
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`and Bertram combination was cited as teaching “determining a first quantity
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`indicative of a number of characters in each entry of the selected data field…” as in
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`the Petition’s limitation [3.4] (see Petition at 29-32); the proposed amendment
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`recites “determining a number of characters in each entry in a plurality of
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`entries…” The modification of the claim language does not affect whether the
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`prior art teaches the limitation. Petition at 29-32. As noted in the Petition,
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`Bertram teaches “determining a number of characters included in each column
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`heading (entry) for all the columns in a viewed table…” clearly teaching
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`determining for a plurality of entries as recited. The same applies equally to the
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`Excel and Bertram combination. Id. at 61-64. Thus, proposed claim limitation
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`11
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`
`[25.3] is taught by the prior art.
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`Proposed claim 25 further recites “performing an iterative process to reduce
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`a number of characters to be displayed for each entry from the selected data field
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`that exceeds a specified limit on the number of characters to be displayed…” in
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`limitation [25.4]. Previously, the claim did not explicitly recite an “iterative
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`process.” But that limitation is also taught by Bertram. As described in the
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`Petition:
`
`“Bertram teaches a method at Figure 7 that iteratively removes
`characters from either a column heading or an entry of a
`column. Id. at 7:26–33. Looking at a particular entry, the
`method of Figure 7 works from right to left, counting a number
`of characters against a set width, removing a character if the
`number of characters is larger than a set width, and repeating
`the process until the entry is smaller than or equal to the set
`width. Id. at Figure 7, 6:24–37, 7:55–8:65.”
`
`Petition at 15. Thus, Bertram teaches an “iterative process” as recited in proposed
`
`claim 25. Limitations [25.5] and [25.6] are unchanged from their corresponding
`
`limitations in original claim 3 (referred to in the Petition as limitations [3.5.2] and
`
`[3.5.3]), and are also obvious over the prior art cited in the Petition. See Petition at
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`34-38, 66-70; Greenspun (EX1005) at 60-66, 106-112. Limitation [25.7] merely
`
`deletes text that was previously recited, and is also obvious over the prior art cited
`
`in the Petition (referred to in the Petition as limitation [3.6]). See Petition at 38-39,
`
`12
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`70-71; Greenspun (EX1005) at 66, 110-112. And finally, limitation [25.8] is
`
`unchanged from its corresponding limitation in original claim 3 (referred to in the
`
`Petition as limitation [3.7]), and is likewise obvious over the prior art cited in the
`
`Petition. See Petition at 39-40, 71-72; Greenspun (EX1005) at 66-67, 112-113.
`
`Accordingly, as each of the amended claim limitations in the independent
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`proposed claims are rendered obvious by the same prior art as presented in the
`
`Petition, the Board should not grant the motion to amend as to proposed claims 24
`
`and 25.
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`F.
`
`The Dependent Proposed Claims Are Also Unpatentable.
`
`Proposed claims 26 and 27 are intended to replace original claim 6, and
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`recite the same language; the only difference is the claim upon which they depend.
`
`In particular, the proposed claims newly recite that “all entries from the selected
`
`data field [are] displayed on a single page of a terminal,” whereas claim 6
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`previously recited that “the data are displayed on a terminal” (referred to in the
`
`Petition as limitation [6.1]). Limitation [6.2] is unchanged in proposed claims 26
`
`and 27, and Kanevsky still teaches that limitation, as detailed in the Petition. See
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`Petition at 78-85.
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`Bertram itself teaches the amended limitations of proposed claims 26 and
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`27. In particular, in describing the prior art technique, Bertram describes that, as a
`
`result of truncation, a previously unviewable column, referred to as column 80,
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`13
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`“can be displayed to the system administrator without horizontal scrolling.”
`
`Bertram (EX1007), at 5:9-24; Greenspun-MtA (EX1013), ¶ 13. That is to say,
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`Bertram truncates the column headings so that all columns of a table can be
`
`displayed without scrolling, or rather, so that all columns can be displayed on a
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`single screen of a terminal. While Bertram’s teaching is to avoid horizontal
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`scrolling, and the ’423 Patent is limited in its written description to vertically
`
`compressing data (so as to avoid vertical scrolling), Bertram still teaches the claim
`
`feature, as its techniques would result in displaying a given set of data “on a single
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`page of a terminal.” Greenspun-MtA (EX1013), ¶ 13. Thus, proposed claims 26
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`and 27 are also unpatentable over the previously-cited combinations of Maloney,
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`Bertram, and Kanevsky, and Excel, Bertram, and Kanevsky, the Board should not
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`grant the motion to amend as to those proposed claims.
`
`Further, the amended limitations of proposed claims 26 and 27 are also
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`taught by other prior art. For example, Goldberg (U.S. Patent 6,452,597)
`
`(EX1014) was filed August 24, 1999, and issued September 17, 2002, and
`
`therefore qualifies as prior art under at least 35 U.S.C. § 102(e).2 Goldberg is titled
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`2 To the extent Patent Owner argues that Goldberg does not qualify as prior art
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`based on its swear-behind evidence and arguments presented in the Patent Owner
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`response, none of that evidence or arguments relates to the newly-recited
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`limitations of proposed claims 26 and 27, and thus, there is no basis to find that
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`14
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`“Displaying Text on a Limited-Area Display Surface” and describes that its
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`invention “automatically adjusts the size of information being display[ed] [sic] by
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`a computer system in order to make the information easily readable, while at the
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`same time leaving most (or all) of the information displayed on a single screen.”
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`Goldberg (EX1014), at 2:4-9. Goldberg further describes that the “adjustment is
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`based on the size of a display area available on the display…for displaying the
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`information.” Id. at 4:52-61. Further, adjusting the size of information can be
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`accomplished “by making one or more changes, such as…truncating…” Id.
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`Goldberg’s vehicle computer system 100 can support “spreadsheet applications”
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`and “database applications” and outputs visual data to a “LCD 134” or a “display
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`device 104.” Id. at 4:23-26, 3:55-63. Further, Goldberg’s “size adjuster 202,”
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`which “automatically adjusts the size of information…to be displayed to a user”
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`receives “an indication of the size of the display area” such as the “entire surface
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`of” the display in the process of fitting information to the screen. Id. at 4:47-64.
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`Further, the “size adjuster 202” includes a “truncator 206.” Id. at Fig. 3.
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`That is, Goldberg teaches adjusting data including by truncating so as to
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`
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`Goldberg does not qualify as prior art. See Brown v. Barbacid, 276 F.3d 1327,
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`1336 (Fed. Cir. 2002) (conception evidence must encompass “all limitations of the
`
`claimed invention.”).
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`15
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`display a given set of data on a single screen, or in other words, displaying “all
`
`entries from the selected data field…on a single page of a terminal” as newly
`
`recited in proposed claims 26 and 27. Greenspun-MtA (EX1013), ¶¶ 14-20.
`
`A POSITA would have been motivated to combine the teachings of
`
`Maloney, Bertram, and Goldberg, or Excel, Bertram, and Goldberg, for several
`
`reasons. First, Goldberg is analogous prior art and in the same field of endeavor as
`
`the ’423 Patent and the other references of record, as it discloses displaying data,
`
`including tabular data like spreadsheets or databases, on a display screen.
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`Goldberg (EX1014), 4:23-26, 3:55-63; Greenspun-MtA (EX1013), ¶¶ 22-23.
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`Second, Goldberg provides an express motivation to use its techniques in the
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`system of Maloney/Bertram or Excel/Bertram. Goldberg teaches that its invention
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`“provid[es] a way to improve the display of information on small display surfaces”
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`and specifically, “in a manner that allows the user to easily read the information.”
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`Goldberg (EX1014), 1:65-2:5. As above, Goldberg describes that the computing
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`system in which its invention operates may support spreadsheet programs and
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`database programs, like that of Maloney, Bertram, and Excel. A POSITA would
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`have understood a need for a way to display the tabular data of Maloney, Bertram,
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`or Excel on small display surfaces, as Goldberg indicates that, “as computer
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`technology has advanced a new field of use for computers has opened up, allowing
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`more conventional ‘desktop computer’ functionality to be made available to
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`16
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`vehicle operators via ‘vehicle computers’.” Id. at 1:20-24. Further, Goldberg
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`recognizes the need to display information on a single screen, because using
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`multiple screens “can be confusing to the user.” Id. at 1:46-52. Thus, Goldberg
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`recognizes a need for methods of adjusting data to fit on a single display screen
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`(including smaller display screens), and thus, a POSITA would have been
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`motivated to apply Goldberg’s teachings and techniques to those of Maloney,
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`Bertram, and Excel to ensure that data could be displayed to a user such that the
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`user can easily read the information without the presentation of that information
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`being confusing, as suggested by Goldberg. Greenspun-MtA (EX1013), ¶¶ 24-27.
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`In addition, combining the teachings of Goldberg with those of Maloney and
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`Bertram or Excel and Bertram would produce predictable, operable results because
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`it would have been no more than the combination of known elements according to
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`known methods, as Goldberg recites familiar components (e.g., computing
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`devices) and techniques (displaying information on those devices and truncating
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`information). Goldberg (EX1014), at 1:65-2:5, 4:52-61. The combination would
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`have been straightforward and would have used similar concepts well-known at the
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`time of the ’423 Patent, and accordingly, a POSITA would have had a reasonable
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`expectation of success in combining the teachings. Greenspun-MtA (EX1013), ¶¶
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`28-30.
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`Thus, the combined teachings of Maloney, Bertram, Goldberg, and
`
`17
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`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
`Kanevsky, or Excel, Bertram, Goldberg, and Kanevsky teach each and every
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`limitation of proposed claims 26 and 27, and render the proposed claims obvious.
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`As a result, the Board should not grant the Motion to Amend as to proposed claims
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`26 and 27.
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`IV. CONCLUSION
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`Because Patent Owner’s proposed claims are not supported by its written
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`description and are obvious over the prior art, the Board should not grant the
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`Motion to Amend.
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`September 24, 2018
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`
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`Respectfully submitted,
`
`/Thomas Kelton/
`Thomas Kelton
`Counsel for Petitioner
`Registration No. 54,214
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`18
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend
`IPR2018-00044 (U.S. Patent 7,302,423)
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Unified Patents, Inc.
`
`Petitioner
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`§
`§
`§
`§
`§
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`Petition for Inter Partes Review
`
`IPR2018-00044
`U.S. Patent No. 7,302,423
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service September 24, 2018
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`Manner of service Electronic Service by E-Mail: harrop@vapatent.com
`
`Documents served Petitioner’s Opposition to Patent Owner’s Motion to Amend;
`Exhibits 1013 and 1014
`
`Persons served John K. Harrop
`Cecil E. Key
`Jay Kesan
`P.O. Box 320171
`Alexandria, VA 22320
`
`440 Belmont Bay Drive, Unit 202
`Woodbridge, VA 22191
`
`Respectfully submitted,
`
`/Thomas Kelton/
`Thomas Kelton
`Counsel for Petitioner
`Registration No. 54,214
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`19
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