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`Paper No. __
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`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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`———————
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`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES, LLC.
`Patent Owner
`
`———————
`
`Case IPR2018-00044
`Patent 7,302,423
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`———————
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`PETITIONER’S REPLY
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`4810-4216-8179 v.1
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`TABLE OF CONTENTS
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`Introduction ......................................................................................................... 5 
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`
`
`I. 
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`
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`II.  Vilox’s Proposed Constructions Do Not Affect the Present Grounds of
`Unpatentability and Should not be Adopted ........................................................ 5
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`A.  Claim 1 “determining a database schema for a database” ............................ 5 
`
`B.  Other Terms from Claim 1, 3, and 6 ............................................................. 7 
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`III.  Vilox Did Not Meet Its Burden to Swear Behind Excel ....................................... 8 
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`A.  Vilox Fails to Prove Conception ................................................................... 8 
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`1.  Vilox does not allege conception of the claimed subject matter .................. 9 
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`2.  Vilox does not provide sufficient evidence of conception ........................... 9 
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`B.  Vilox Fails to Prove Reduction to Practice ................................................. 10
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`1.  No reduction to practice of “if the number of characters included in each
`entry exceeds a specified amount of characters, displaying a portion of each
`entry in the selected database field” Claim 1 .................................................... 11
`
`2.  No reduction to practice of “if the first quantity [indicative of a number of
`characters in each entry of the selected data field] exceeds a specified limit,
`reducing a number of characters to be displayed for each entry from the
`selected data field” Claim 3 .............................................................................. 14
`
`C.  Vilox Fails to Show Diligence .................................................................... 14
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`IV.  Bertram Is Properly Combined with Maloney and Excel ................................... 16
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`A.  Bertram does not teach altering data ........................................................... 16
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`B.  Bertram does not render Maloney inoperable ............................................. 18
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`C.  Bertram does not render Excel inoperable .................................................. 19
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`D.  Bertram provides features different from those of Excel and with additional
`advantages ................................................................................................... 21
`
`A.  Maloney teaches “determining a database schema for a database” ............ 22
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`B.  Bertram teaches “determining a number of characters” ............................. 24
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`V.  Maloney and Bertram Teach All Features of the Claims ................................... 22
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`C.  Bertram teaches “if the number of characters included in each entry
`exceeds a specified amount of characters…” ............................................. 25
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`VI.  Excel and Bertram Teach All Features of the Claims ........................................ 25
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`VII.  Dependent Claim 2 ............................................................................................ 26
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`VIII.  Independent Claim 3 ......................................................................................... 26
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`IX.  Grounds Including Kanevsky ............................................................................. 26
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`A.  Kanevsky is properly combined with Maloney and Bertram ...................... 26
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`X.  The Board Correctly Applied Schulhauser to Claims 1 and 3 ............................ 28
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`B.  Kanevsky is properly combined with Excel and Bertram ........................... 28
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`A.  Claim 1 ........................................................................................................ 29
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`B.  Claim 3 ........................................................................................................ 30
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`XI.  Conclusion ........................................................................................................ 30
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`PETITIONER’S UPDATED EXHIBIT LIST
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`EX1001 U.S. Patent 7,302,423 to DeBellis (“’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”)
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`
`I.
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`Introduction
`The Response fails in almost every instance to address the specific
`
`combinations of art articulated in the Petition, instead addressing passages that do
`
`not pertain to the grounds of unpatentability. Furthermore, Vilox does not:
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`a) contest that the combination of Excel and Bertram fails to
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`teach limitations of claims 1–3, or
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`b) contest that any limitations of claim 3 are missing from either
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`of the grounds.
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`For the reasons discussed in the Petition and elaborated below, the challenged claims
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`(1–9 and 13) are unpatentable.
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`II. Vilox’s Proposed Constructions Do Not Affect the Present Grounds of
`Unpatentability and Should not be Adopted
`
`A. Claim 1 “determining a database schema for a database”
`Vilox construes this claim term as, “ascertaining or identifying the logical
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`structure of data stored in computerized files.” Resp., 27. This proposed construction
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`should be rejected, at least in part.
`
`First, Vilox construes “determining” to mean, “ascertaining or identifying.”
`
`Unified does not oppose this construction. However, Vilox is incorrect to use this
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`construction to attempt to preclude any knowledge by a “human person, or any
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`inanimate object,” of a database schema. See, e.g., Resp., 52. Vilox appears to be
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`advancing a construction that is similar to “deducing” or “discovering” rather than
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`“ascertaining or identifying.” Resp., 51–52. The claim language and specification do
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`not require or define “determining a database schema” to exclude knowledge of a
`
`database schema. Vilox’s own expert, Dr. Chu, even acknowledges that some prior
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`knowledge would be needed to identify a database schema. Chu Deposition
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`(EX1015), 38, lines 6–18 and at 37, lines 5–23. Vilox’s attempt to preclude
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`knowledge of a database schema should be rejected as improperly importing a
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`limitation from the specification. See, e.g., Biotec Biologische Naturverpackungen
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`GmbHv. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001).
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`Second, Vilox construes “a database schema” as “the logical structure of data”
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`in the database. Unified does not oppose this construction, either. And even if
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`“determining a database schema” was construed as “ascertaining or identifying the
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`logical structure of data,” it would still be disclosed by Maloney anyway, as shown
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`below at section V(A).1
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`Third, Vilox construes “a database” as “data stored in computerized files.”
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`But the specification contradicts this construction, stating that a file or a table may
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`contain data:
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`
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` 1
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` Vilox argues that Maloney fails to disclose “determining a database schema for a
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`database,” but does not contest that Excel teaches this feature.
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`Using Sort-on-the-Fly/Search-on-the-Fly, a user selects a desired term,
`and the user is delivered all instances of the desired term, even if a
`specific file or table does not contain the instance … The database need
`not have a specific file (in a flat database) or a table (in a relational
`database) of names.
`
`’423 Patent (EX1001), 2:60–3:2 (emphasis added); see also 1:51–52 and 1:38–40
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`(describing use of tables). And any construction that would require files in all
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`instances should not be adopted because it would exclude preferred embodiments.2
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`On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138
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`(Fed. Cir. 2004).
`
`B. Other Terms from Claim 1, 3, and 6
`Vilox also proposes constructions for the following terms:
`
`
`
`
`“determining a number of characters”
`“performing a truncation”
`
`
`
` 2
`
` Vilox does not argue against any ground of unpatentability by distinguishing a table
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`and a file, so this construction is moot. A term not in controversy needs no
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`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999).
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`
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`
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`“displaying a portion of each entry in the selected database field,
`wherein a number of characters displayed in each portion is less
`than or equal to the specified amount of characters”
`“each entry from the selected data field is displayed on a
`terminal”
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`Resp., 27–30. But Vilox does not argue that these constructions affect patentability.
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`Unified does not concede to these proposed constructions, but also does not believe
`
`that these constructions affect the obviousness of the claims. Because these terms
`
`are not in controversy, they need no construction. See Vivid Techs., 200 F.3d at 803.
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`III. Vilox Did Not Meet Its Burden to Swear Behind Excel
`
`Vilox argues that Excel (EX1009) is not prior art. Resp., 35. But Excel was
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`publicly available as early as July 1999 or as late as December 1999. Hsieh-Yee
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`(EX1011), ¶ 26. So any date in that range is months before the February 25, 2000
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`priority date of the ’423 patent. For the reasons below, Vilox fails to meet its burden
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`of production regarding (1) alleged conception as of January 1999, (2) reduction to
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`practice as of December 9, 1999, or (3) reasonable diligence. See Mahurkar v. C.R.
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`Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
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`A. Vilox Fails to Prove Conception
`Vilox alleges that “Dr. De Bellis described his concept for his search on-the-
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`fly system that would ... truncate results to allow all results to be returned and
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`displayed” in January 1999. Resp., 38. While Vilox submits declarations by Dr.
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`DeBellis and Missy DeBellis, as well as numerous office documents like credit card
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`statements and receipts attempting to prove a timeline of events culminating in a
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`reduction to practice, Vilox does not meet its burden because the evidence fails to
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`show conception of “all limitations of the claimed invention.” Brown v. Barbacid,
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`276 F.3d 1327, 1336 (Fed. Cir. 2002).
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`1.
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`Vilox does not allege conception of the claimed subject
`matter
`
`Vilox repeatedly refers to the “search-on-the-fly system” in the Response, Dr.
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`
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`DeBellis’s declaration, and Missy DeBellis’s declaration. See, e.g., Resp., 38,
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`DeBellis (EX2021), ¶ 9, Missy DeBellis (EX2022), ¶ 8. But Vilox does not link the
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`search-on-the-fly system to any claimed subject matter and, in fact, does not allege
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`particular subject matter of any claim was conceived before the priority date. Even
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`if all of the facts alleged by Vilox at section IV of their Response were taken as true,
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`Vilox would still fail to show conception because their evidence and arguments do
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`not apply to the claim limitations, much less, all claim limitations. Brown, 276 F.3d
`
`at 1336, (“A conception must encompass all limitations of the claimed invention.”)
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`(citing Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000)). For this reason alone,
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`Vilox’s attempt to swear behind Excel should be dismissed.
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`2.
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`Vilox does not provide sufficient evidence of conception
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`4810-4216-8179 v.1
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`Vilox relies on testimony from the inventor and Missy DeBellis to show a
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`
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`conception date in January 1999. Resp., 38. However, “[a] party seeking to prove
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`conception via the oral testimony of a putative inventor must proffer evidence
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`corroborating that testimony.” Brown, 276 F.3d at 1335, (citing Singh, 222 F.3d at
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`1367). The testimony of the inventor as to conception is uncorroborated by any
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`independent or trustworthy exhibits, such as proper notebooks. The receipts
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`presented by Dr. DeBellis simply evidence purchases of software and computer
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`hardware but do not corroborate conception of the claimed subject matter. E.g.,
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`DeBellis (EX2021), ¶¶ 7-18. To the extent that Vilox may argue that the testimony
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`of Missy DeBellis provides corroboration, such testimony should be provided little
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`weight, as it is from a former employee with the same last name as the inventor and
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`similarly fails to reference any claimed subject matter.
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`B. Vilox Fails to Prove Reduction to Practice
`Vilox fails to prove reduction to practice for the same reason that it fails to
`
`prove conception—the arguments and evidence do not address the claim limitations.
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`“To establish an actual reduction to practice, Patent Owner must produce evidence
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`showing that the inventor … constructed an embodiment or performed a process that
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`met all the claim limitations.” Kayak Software Corp. et al. v International Business
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`Machines Corp., IPR2016-00608, paper 67, 11-12 (PTAB 2017) (citing Cooper v.
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`Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998)). Vilox fails to even allege reduction
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`to practice of particular claim limitations and, for at least that reason, does not prove
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`reduction to practice before the priority date. For instance, the “Computer
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`Equipment Invoice[s]” of Figures 2–12 of Exhibit 2021 may show purchase of
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`hardware and software, but they do not demonstrate that the computers were
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`programmed to perform any particular function, much less the particular functions
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`recited in claims 1 and 3 of the ’423 Patent.
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`Furthermore, Vilox relies on a screenshot of the search-on-the-fly system to
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`argue a December 9, 1999 reduction to practice date. Resp., 41. Vilox does not
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`explain how the screenshot corresponds to any claim limitations. While this
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`omission is enough for Vilox to fail, Unified nevertheless shows below how the
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`screenshot does not address at least two example elements of claims 1 and 3 below.
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`1.
`No reduction to practice of “if the number of characters
`included in each entry exceeds a specified amount of characters,
`displaying a portion of each entry in the selected database field”
`Claim 1
`
`Claim 1 recites a specific if-then relationship between “the number of
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`
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`characters in each entry” and “displaying a portion of each entry.” There is no
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`evidence that DeBellis conceived or reduced to practice this feature before the ’423
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`Patent’s priority date.
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`The closest Vilox comes to alleging conception or reduction to practice of any
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`technical feature is by proffering that “[s]creenshots of the system .... were
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`incorporated into drawings in the first application ... One such screenshot is Fig. 10
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`[of US Patent 6,760,720].” See DeBellis (EX2021), ¶ 24.
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`
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`’720 Patent (EX1003), Fig. 10
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`
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`Figure 10 addresses a scenario wherein a truncator 152 fits entries on one
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`
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`page. See ’720 Patent (EX1003), 9:54–60. But the truncator 152 reduces the number
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`of characters based on the number of entries exceeding the number of displayable
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`results, not based on “if the number of characters included in each entry exceeds a
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`specified amount of characters,” as required by claim 1. The ’423 Patent explains
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`how the truncator 152 reduces “Armandia, Armonk, New Orleans, New York
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`Riverhead, Riverdale” to Arm, New, and Riv:
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`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:
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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 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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`720 Patent (EX1003), 7:22–42. Thus, in contrast to claim 1 in which “displaying a
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`portion of each entry” is performed “if the number of characters included in each
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`entry exceeds a specified amount of characters,” the ’720 specification discloses an
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`if-then relationship in which the number of characters in the entries is reduced only
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`if the number of entries is larger than the number of displayable results.
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`Therefore, Vilox provides no evidence of reduction to practice of this claim 1
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`limitation, whether in Figure 10 of the ’720 Patent or elsewhere. See Kayak,
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`IPR2016-00608, paper 67, 11-12 (a reduction to practice must meet all claim
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`limitations).
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`2.
`No reduction to practice of “if the first quantity [indicative
`of a number of characters in each entry of the selected data field]
`exceeds a specified limit, reducing a number of characters to be
`displayed for each entry from the selected data field” Claim 3
`
`Vilox provides no evidence for this feature of claim 3 for the same reasons as
`
`above. Specifically, in claim 3, “reducing a number of characters to be displayed for
`
`each entry from the selected data field” is performed “if the first quantity [indicative
`
`of a number of characters in each entry of the selected data field] exceeds a specified
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`limit.” By contrast, Figure 10 of the ’720 Patent, at best, discloses an if-then
`
`relationship in which the number of characters in the entries is reduced only if the
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`number of entries is larger than the number of displayable results.
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`C. Vilox Fails to Show Diligence
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`Even if Vilox had shown prior conception—and it did not—Vilox must
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`show diligence during the critical period, namely, from before Excel’s publication
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`date to a reduction to practice, i.e., either an alleged actual reduction on December
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`9, 1999 or the constructive February 25, 2000 priority date. See, e.g., Perfect
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`Surgical Techs., Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016).
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`At least one gap in the timeline negates Vilox’s attempt to show diligence.
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`Unified demonstrated that Excel was publicly available as prior art at the
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`Wayne State University Library “within a week” of October 1, 1999 (i.e., by October
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`8, 1999). Hsieh-Yee (EX1011), ¶¶ 23–25. Vilox does not challenge the merits of
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`Unified’s October 8, 1999 date, and Dr. Hsieh-Yee did not concede fault with, or
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`disparage, this date. See contra Resp. at 44, fn. 1; see also Hsieh-Yee Deposition
`
`(EX2013), 70:17–22.
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`Vilox cannot show diligence from before the October 8, 1999 Excel
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`publication date to the alleged December 9, 1999 reduction date. Vilox leaves a six-
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`week gap between the October 28, 1999 telephone conversation with Dr. DeBellis’s
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`attorneys (DeBellis (EX2021), ¶ 19) and the December 9 meeting with those
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`attorneys (DeBellis (EX2021), ¶ 21). Six weeks is more than half of the critical
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`period. In the absence of an adequate explanation, this amount of delay is sufficient,
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`in and of itself, to defeat Vilox’s claim of diligence. Ireland v. Smith, 97 F.2d 95,
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`99–100 (CCPA 1938) (party held not diligent for failing to account for three and
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`one-half weeks of inactivity); D’Amico v. Koike, 347 F.2d 867, 871 (CCPA 1965)
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`(party held not diligent for a one-month gap).
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`Vilox does not explain this six-week gap. Instead, Vilox gives a vague and
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`conclusory statement from Dr. DeBellis that “[t]hroughout this time, I continued
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`work on developing my search-on-the-fly systems.” See DeBellis (EX2021), ¶ 20.
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`But a “party alleging diligence must provide corroboration with evidence that is
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`specific both as to facts and dates.” LG Electronics, Inc. v. ATI Techs. ULC,
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`IPR2015-00325, paper 62, at 39 (PTAB 2016), citing Gould v. Schawlow, 363 F.2d
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`908, 920 (CCPA 1966). Further, Dr. DeBellis’s conclusory and unexplained
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`testimony is “entitled to little, if any, weight.” See LG Electronics, Inc., Paper 62 at
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`33, citing In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011). Missy DeBellis’s
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`testimony that, “[b]y November 1999, Dr. DeBellis ... had ... demonstrated how the
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`database could be searched using the search-on-the-fly process,” is similarly
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`uncorroborated, unexplained, and conclusory. See Missy DeBellis (EX2022), ¶ 19.
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`Therefore, even assuming reduction to practice on December 9, 1999, Vilox cannot
`
`prove diligence or disqualify Excel as prior art.
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`IV. Bertram Is Properly Combined with Maloney and Excel
`
`A. Bertram does not teach altering data
`
`Vilox argues that combining Bertram with Maloney or Excel would have
`
`saved the shortened entries “in a file” or “permanently altered the contents of the
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`cell,” thereby rendering the resulting combinations inoperable. E.g., Resp., 50, 58–
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`59. But Bertram contradicts these arguments by acknowledging the very problem
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`Vilox tries to raise and by using a different technique than what Vilox alleges:
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`“However, storing shortened headings for each column may be
`problematic: ... If the column contains other entries having text data, it
`become [sic] even more difficult to store shortened headings in
`advance. Consequently, it may be difficult to determine in advance the
`shortened headings which should be stored and to which column the
`shortened heading corresponds.”
`
`“The method abbreviates existing columns, rather than storing
`shortened headings for particular columns. As a result,
`the
`abbreviations method 100 and 150 need not know in advance which
`column contains what data or in what order the columns are arranged.”
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`Bertram (EX1007), 2:29–50 and 9:24–28 (emphasis added). Thus, Bertram focuses
`
`on displaying and viewing, rather than altering, the underlying data. “According to
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`the system and method disclosed herein, the present invention can display
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`information in a format more easily viewed by a user.” Bertram (EX1007), 3:3–5
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`(emphasis added). Bertram also suggests not replacing the stored entry by disclosing
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`“obtaining the entry” before the abbreviation and truncation process. Bertram
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`(EX1007), 6:24–37.
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`In other words, Bertram, when combined with Maloney or Excel, would not
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`have led a POSITA to alter the underlying data, whether in a file or in a cell. The
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`combination also would not “result in an improper reference back to the physical
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`database and a corresponding erroneous form,” for the same reasons. See Resp., 49.
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`Rather, combining Bertram with Maloney or Excel would result in a system for
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`“displaying a plurality of columns on a display screen” so that the system “can
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`display information in a format more easily viewed by a user.” Greenspun
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`(EX1005), ¶¶ 56, 68 (citing Bertram (EX1007), 2:58–60, 3:4–6. Thus, the
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`combinations including Bertram are not inoperable.
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`Vilox asserts that combining Maloney and Bertram “would result in ‘saving
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`in a file,’” or “an improper reference back to the physical database.” Resp., 49–50.
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`There is no merit to Vilox’s point, as Bertram is focused on displaying and viewing,
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`rather than altering the underlying data as evidenced by the discussion above.
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`Next, looking at the Excel and Bertram combination, Vilox argues throughout
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`the Response that combining Excel and Bertram “would have affected both what
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`was displayed on a screen display and what was stored in memory.” Resp., 59; also,
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`e.g., id., 60 (“Excel in view of Bertram affects what is stored in memory.”) (emphasis
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`in original). Once again, this argument is without merit, as Bertram teaches
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`displaying and viewing, rather than altering the underlying data as evidenced by the
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`discussion above.
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`B.
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`Bertram does not render Maloney inoperable
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`Vilox further argues that altering the displayed table names “would make the
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`displayed table names both confusing and unrecognizable.” Resp., 49–50. Vilox is
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`incorrect. Vilox uses an unhelpful example in extremis of reducing a number of
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`characters to three.3 See Resp., 47–49, citing Greenspun Deposition (EX2015), 134–
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`137. Vilox fails to address Bertram’s own Figure 8 example of preserving at least
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`five or six characters so “that a user can still distinguish between information
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`contained in different columns of the table.” Bertram (EX1007), 9:17–18; see also
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`Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003)
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`(prior art “that sometimes, but not always, embodies a claimed method nonetheless
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`teaches that aspect of the invention.”). And Vilox’s argument is not commensurate
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`with the claims which do not specify any particular number of characters.
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`C. Bertram does not render Excel inoperable
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`Vilox’s arguments regarding Excel and Bertram fail for an additional reason.
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`Vilox does not address the grounds of unpatentability as they are proposed, instead
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`preferring to make their own grounds of patentability. For instance, the Petition
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`demonstrated that portions of Excel directed to database uses render the claims
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` Vilox’s admits that the example is extreme, while conveniently omitting that
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`admission from their quote at pages 47–48 of the Response. See Greenspun
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`Deposition (EX2015), 135 (“If ‘storenm’ is abbreviated according to Bertram’s
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`method 162 - and let’s say you just took it to the extreme where the column width
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`was such that only three characters could be displayed.”) (emphasis added).
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`obvious when combined with Bertram. But Vilox provides counterexamples
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`directed to the use of mathematical formulas and functions. See Resp., 60–62 and
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`64. These examples are irrelevant, as they do not rebut the specific portions of Excel
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`and Bertram discussed in the Petition. See, e.g., Riverbed Technology, Inc. et al., v.
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`Realtime Data LLC, IPR2016-00978, paper 67, at 18 (PTAB 2017) (argument
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`against portion of prior art reference not relied upon by Petition “is not persuasive.”)
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`Petitioner showed that Excel discloses displaying entries in a database field
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`by citing to Figure 24-12, as shown below. Petition, 52–53.
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`Displaying entries
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`
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`Excel at FIG. 24-12 (EX1009), annotated
`“A POSITA would have incorporated Bertram’s teaching into Excel to shorten text
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`in columns of Excel’s Figure 24-12 while preserving readability.” Petition, 54.
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`Vilox’s Response does not address these entries in a database field, instead
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`addressing a strawman of mathematical formulas and functions.
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`Vilox further argues that the combination of Excel and Bertram would “not
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`produce satisfactory results” for long text strings, such as, “the quick red fox jumped
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`over the fence.” Resp., 63–64. This line of argument fails for the same reasons as
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`those discussed above—it does not respond to the ground of unpatentability actually
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`made, namely, to the text strings in the examples provided in Bertram and Excel.
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`Riverbed, IPR2016-00978, paper 67, at 18. The line of argument also ignores
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`Bertram’s teaching to abbreviate so “that a user can still distinguish between
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`information contained in different columns of the table.” Bertram (EX1007), 9:17–
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`18.
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`D. Bertram provides features different from those of Excel and with
`additional advantages
`Vilox points to various features already in Excel, such as a wrap-text feature,
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`width adjustment of a column, reducing font size, and “displaying only as much data
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`as will fit within the set width of a cell.” Resp., 58 and 62–63. Vilox then asserts that
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`Bertram does not “provide any advantages over these existing Excel features.” Id.,
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`63. But Vilox is wrong.
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`The Petition describes a unique feature in Bertram, namely, removing
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`
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`characters in the middle of the string as well as at the end of the string to provide
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`an efficient use of space and to preserve information:
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`Bertram does not teach away from truncation, instead teaching
`truncation in addition to removing characters that may appear in a
`middle of a string, such as spaces and vowels. Id. at 7:13–24, 7:55–64,
`Figure 7 step 196. Bertram counts among its advantages, efficient use
`of space, preserving certain information, and the ability to adapt to new
`monitors or columns. Id. at 4:2–4, 7:14–25.
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`Petition, 15, citing Bertram (EX1007). Excel does not have Bertram’s feature, and
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`combining Bertram and Excel would have the advantages of efficiently using space
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`while preserving information. Greenspun (EX1005), ¶¶ 50–54. Furthermore,
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`Vilox’s argument appears to be based on the premise that Bertram’s technique would
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`alter the underlying data, which was shown above to be incorrect. For at least this
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`additional reason, Vilox has failed to rebut Unified’s combination of Excel and
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`Bertram.
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`V. Maloney and Bertram Teach All Features of the Claims
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`A. Maloney teaches “determining a database schema for a database”
`Vilox makes three arguments. Resp., 51–52. The first and third arguments are
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`premised on the same misunderstanding: Vilox misleadingly asserts that Maloney’s
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`logical schemas do not disclose tables but merely “sets of rules.” Id. Yet Maloney
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`IPR 2018-00044 Petitioner’s Reply
`U.S. Patent 7,302,423
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`teaches that the logical schemas include tables, and those tables have defined logical
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`relationships. Maloney (EX1006), 2:58–67 (“Pairs of tables which will comprise a
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`logical schema are selected from the relational database and the logical relationships
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`between the pairs of tables are defined.... [o]nce a join operator is selected for each
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`join field, the logical relationship between the pairs of tables is stored in a relational
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`database thereby creating a logical schema.”); see also Greenspun (EX1005), pp.30–
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`31. Vilox’s own expert even acknowledges that the logical schemas include tables.
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`Chu Deposition (EX1015), 51, lines 18–23 (“Q. when Maloney talks about a logical
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`schema, part of that logical schema is the tables themselves, right? A. Yes. It could
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`be expressing a table. It’s a special table.”). Thus, the first and third arguments are
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`mista