Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`Filed on behalf of Unified Patents Inc.
`By:
`Jonathan Stroud, Reg. No. 72,518
`David M. O’Dell, Reg. No. 42,044
`Roshan Mansinghani, Reg. No. 62,429
`David L. McCombs, Reg. No. 32,271
`jonathan@unifiedpatents.com
`Thomas Kelton, Reg. No. 54,214
`roshan@unifiedpatents.com
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com Unified Patents Inc.
`thomas.kelton.ipr@haynesboone.com
`1875 Connecticut Ave NW, Floor 10
`HAYNES AND BOONE, LLP
`Washington, DC 20009
`2323 Victory Ave. Suite 700
`Telephone: (650) 999-0455
`Dallas, TX 75219
`
`Telephone: (972) 739-8635
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`vs.
`
`VILOX TECHNOLOGIES LLC.
`Patent Owner
`
`IPR2017-XXXXX
`U.S. Patent 7,302,423
`
`———————
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 7,302,423
`
`
`
`i
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. §°42.8 .................................... 1
`
`A. Real Party-in-Interest................................................................................. 1
`
`B. Related Matters .......................................................................................... 1
`
`C. Lead and Back-up Counsel and Service Information ............................... 2
`
`II. CERTIFICATION OF GROUNDS FOR STANDING .................................... 3
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ...................... 3
`
`A. Prior Art Patents and Printed Publications ................................................ 3
`
`B. Statutory Grounds for Challenges ............................................................. 4
`
`IV. U.S. Patent 7,302,423 ........................................................................................ 5
`
`A. Summary .................................................................................................... 5
`
`B. Level of Ordinary Skill in the Art ............................................................. 6
`
`C. Prosecution History and Discretion Under 35 U.S.C. §°325(d) ............... 7
`
`V. CLAIM CONSTRUCTION.............................................................................12
`
`A.
`
`B.
`
`“truncation” .............................................................................................13
`
`“determining a database schema” ............................................................13
`
`VI. CLAIMS 1-9 and 13 ARE UNPATENTABLE ..............................................14
`
`A. Challenge 1: Claims 1–4, 7–9, and 13 are unpatentable under 35
`U.S.C § 103 over Maloney in view of Bertram ......................................14
`
`1. Overview of Maloney ......................................................................14
`
`2. Overview of Bertram ......................................................................15
`
`3. Reasons to Combine Maloney and Bertram ...................................16
`
`ii
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`4. Analysis ...........................................................................................17
`
`B. Challenge 2: Claims 1–4, 7–9, and 13 are unpatentable under 35
`U.S.C § 103 over Excel in view of Bertram ............................................45
`
`1. Overview of Excel ...........................................................................45
`
`2. Reasons to Combine Excel and Bertram.........................................46
`
`3. Challenges 1 and 2 are not Substantially the Same ........................48
`
`4. Analysis ...........................................................................................48
`
`C. Challenge 3: Claims 5 and 6 are unpatentable under 35 U.S.C § 103
`over Maloney in view of Bertram, and Kanevsky ...................................78
`
`1. Overview of Kanevsky ....................................................................78
`
`2. Reasons to Combine Maloney, Bertram, and Kanevsky .................79
`
`3. Analysis ...........................................................................................81
`
`D. Challenge 4: Claims 5 and 6 are unpatentable under 35 U.S.C § 103
`over Excel in view of Bertram, and Kanevsky ........................................82
`
`1. Reasons to Combine Excel, Bertram, and Kanevsky ......................82
`
`2. Analysis ...........................................................................................84
`
`VII. CONCLUSION ................................................................................................86
`
`VIII. CERTIFICATE OF WORD COUNT..............................................................87
`
`
`
`
`
`
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`iii
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`PETITIONER’S EXHIBIT LIST
`
`October 6, 2017
`
`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
`
`
`iv
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`

`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. §°42.8
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
`
`that no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of this petition, or the conduct of any
`
`ensuing trial.
`
`B. Related Matters
`
`According to assignment records, US Patent 7,302,423 “the ’423 Patent”
`
`(EX1001) is owned by Vilox Technologies LLC of Plano, TX (“Vilox” or “Patent
`
`Owner”).
`
`As of the filing date of this Petition, and to the best knowledge of Petitioner,
`
`the ’423 Patent is or has been involved in these matters:
`
`Number
`1-13-cv-01034
`1-13-cv-01042
`
`1-13-cv-01039
`
`2-15-cv-01460
`
`Name
`Smart Search Concepts LLC v. Buy.Com Inc.
`Smart Search Concepts LLC v. Wal-Mart
`Stores Inc. et al
`Smart Search Concepts LLC v. Neiman Marcus
`Inc. et al
`Vilox Technologies LLC v. The Priceline
`Group, Inc. et al
`Vilox Technologies LLC v. Orbitz Worldwide,
`Inc. et al
`Vilox Technologies LLC v. Expedia, Inc. et al 2-15-cv-01457
`Vilox Technologies LLC v. Express, Inc. et al
`2-15-cv-02025
`Vilox Technologies LLC v. Costco Wholesale
`2-15-cv-02019
`Corporation
`
`2-15-cv-01459
`
`1
`
`District
`DED
`DED
`
`DED
`
`TXED
`
`TXED
`
`TXED
`TXED
`TXED
`
`

`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`Vilox Technologies LLC v. Mindgeek USA,
`Inc.
`
`
`
`2-16-cv-01278
`
`TXED
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`David M. O’Dell
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Thomas Kelton
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Roshan Mansinghani
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`
`972-739-8635
`Phone:
`214-200-0853
`Fax:
`
`david.odell.ipr@haynesboone.com
`USPTO Reg. No. 42,044
`
`650-999-0455
`
`214-651-5533
`
`
`Phone:
`
`jonathan@unifiedpatents.com
`USPTO Reg. No. 72,518
`
`Phone:
`
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`Phone:
`
`thomas.kelton.ipr@haynesboone.com
`USPTO Reg. No. 54,214
`
`972-739-8635
`
`214-945-0200
`
`Phone:
`
`roshan.@unifiedpatents.com
`USPTO Reg. No. 62,429
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service.
`
`2
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for IPR and that Petitioner is not barred or estopped
`
`from requesting IPR review challenging the patent claims on the grounds identified
`
`in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`claims 1–9 and 13 of the ’423 Patent.
`
`A. Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:
`
`1. US 5,701,453 (issued December 23, 1997) (“Maloney” (EX1006)),
`
`prior art under at least 35 U.S.C. § 102(b).1
`
`2. US 7,168,039 (filed June 2, 1998; issued January 23, 2007)
`
`(“Bertram” (EX1007)), prior art under at least 35 U.S.C. § 102(e).
`
`3. US 6,300,947 (filed July 6, 1998; issued October 9, 2001)
`
`(“Kanevsky” (EX1008)), prior art under at least 35 U.S.C. § 102(e).
`
`4. John Walkenbach, Microsoft Excel 2000 Bible (IDG Books
`
`1 The ’423 Patent issued from an application filed prior to the enactment of the
`
`America Invents Act (“AIA”). Thus, the pre-AIA statutory framework applies.
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`Worldwide, Inc. 1999) “Excel” (EX1009), which is prior art under at
`
`least 35 U.S.C. § 102(a). See EX1011, ¶¶20–26 (showing public
`
`availability as early as July 27, 1999 and no later than December,
`
`1999); see also ¶¶1–28.
`
`Citations to EX1001 and EX1006–EX1008 are to original page/column and
`
`line numbering. Citations to EX1002–EX1004, EX1009, EX1010, and EX1012
`
`are to page numbers added in compliance with 37 C.F.R. § 42.24(d).
`
`B. Statutory Grounds for Challenges
`
`This Petition, supported by the declaration of Dr. Philip Greenspun
`
`“Greenspun” (EX1005), requests cancellation of claims 1–9 and 13 under the
`
`Challenges listed below:
`
`Challenge #1: Claims 1–4, 7–9, and 13 are unpatentable under 35 U.S.C
`
`§ 103 over Maloney and Bertram.
`
`Challenge #2: Claims 1–4, 7–9, and 13 are unpatentable under 35 U.S.C
`
`§ 103 over Excel and Bertram.
`
`Challenge #3: Claims 5 and 6 are unpatentable under 35 U.S.C § 103 over
`
`Maloney in view of Bertram, and Kanevsky.
`
`Challenge #4: Claims 5 and 6 are unpatentable under 35 U.S.C § 103 over
`
`Excel in view of Bertram, and Kanevsky.
`
`Challenges #1, 3 are not cumulative of Challenges #2, 4. Infra § VI.B.3.
`
`4
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`IV. U.S. PATENT 7,302,423
`
`A. Summary
`
`The ‘423 Patent is directed to systems providing a user interface for database
`
`access. The patent acknowledges that results of a database search may contain too
`
`many entries to fit on a computer terminal. The ’423 Patent (EX1001), at 11:17–
`
`33. The ’423 Patent purports to solve this issue by truncating the characters of the
`
`entries that would be displayed. An example of displaying truncated city names is
`
`provided below.
`
`Many different methods of truncating for display or viewing may be
`used by truncator 152.... For example, instead of a full name of a city,
`some part of the name—the first n letters—is checked against the
`database 12 again, and n is reduced until the result list is small enough
`for the capacity of the terminal 14. If the maximum number of
`displayable results is three (3), and the database 12 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)
`Again with 5 characters:
`Armandia, Armonk, New O, New Y, (limit reached again)
`Again with 3 characters:
`
`5
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`Arm (...), New (...), Riv ( ... ). These results may now be
`displayed on the terminal 14.
`The display of Arm, New, Riv can then be used to conduct a
`further search-on-the-fly.
`For example, a user could then select Riv for a further search-
`on-the-fly. The result list returned would then list two cities, namely
`Riverhead and Riverdale.
`Id. at 8:8:27–9:2; see also Fig. 10.
`The example given above truncates the characters of the entries in order to
`
`consolidate a number of entries into a single selectable item that can be expanded
`
`by user selection. For instance, truncating a number of characters may result in
`
`“Riv,” which can be expanded by the user to display both “Riverhead” and
`
`“Riverdale.” However, the language of claims 1–9 and 13 is not so limited, instead
`
`merely “determining a number of characters included in each entry” and in
`
`response either “displaying a portion of each entry” (as in claim 1) or “performing
`
`a truncation that reduces the number of characters” (as in claim 3). As
`
`demonstrated below, however, systems that determine a number of characters for
`
`tabular displayed entries and then reduce those characters were well-known prior
`
`to the ’423 Patent’s filing. Greenspun ¶¶31–35 (EX1005).
`
`B. Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art at and before the priority date for the
`
`’423 Patent (“POSITA”) would have at least a bachelor’s degree in Computer
`
`6
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`Science or an equivalent field (or equivalent industry experience) and at least one
`
`year of experience designing, implementing, and using database management
`
`systems. Greenspun ¶¶22–25 (EX1005), see also ¶¶5–21.
`
`C. Prosecution History and Discretion Under 35 U.S.C. §°325(d)
`
`The Prosecution History
`
`The ’423 Patent issued from U.S. Patent Appl. 09/935,565 (“’565
`
`Application”), which was filed August 24, 2001. There are multiple continuations
`
`and continuations-in-part in the family of the ’423 Patent, and the direct lineage of
`
`the ’423 Patent stretches to U.S. Provisional Application 60/227,305 (“’305
`
`Provisional”).
`
`The first Office Action (OA) was mailed on August 24, 2004. The Examiner
`
`used Maloney as a primary reference against claims 1-3, 14, 20–21, and 41. ’423
`
`PH (EX1002), at 147–156. The Examiner acknowledged that Maloney does not
`
`teach “a step wherein if the quantity exceed a specified amount; truncating data,
`
`and displaying the truncated data; and if the quantity does not exceed the specified
`
`amount, displaying contents of the database field.” Id. at 148. The Examiner
`
`instead relied on US 6,321,228 to Crandall (“Crandall”) to teach this feature. Id.
`
`In response, the Applicant amended claim 1 in order to focus on determining a
`
`number of characters included in each entry, rather than determining a quantity
`
`of entries, and then displaying only a portion of each entry if the number of
`
`7
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`

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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`characters included in each entry exceeds a specified amount of characters. Id. at
`
`96–98.
`
`The response to the OA did not include substantive arguments, but rather
`
`referred to an interview with the examiner; the Examiner’s Interview Summary did
`
`not include much substance, either. Id. at 104–105, 89–91. The cited portions of
`
`Crandall at 6:13–15 and 8:25–27 refer to a web search feature providing “[r]esult
`
`set 510 [that] is typically truncated at a predetermined number to limit the number
`
`of records that are transmitted to the user.” In other words, Crandall limits a
`
`number of records that are returned to the user and does not determine a number
`
`of characters or reduce a number of characters displayed for each entry.
`
`Next, the Examiner issued a Final OA on June 1, 2007, allowing claims 1
`
`and 2, and indicating allowability of dependent claim 8. Id. at 63, 74. However, the
`
`Final Office Action combined Maloney with US 6,593,949 to Chew (“Chew”) and
`
`relied on Chew as teaching, “wherein if the quantity exceeds a specified limit,
`
`reducing a number of characters to be displayed for each entry from the selected
`
`data field and displaying the reduced number of characters for each entry from of
`
`[sic] the database field.” Id. at 66–67.
`
`The cited portions of Chew at 5:30–41, 6:62–66, and 3:60–64 disclose a
`
`contact list arranged in rows and columns, wherein a rightmost column may
`
`display the letter w indicating that the phone number shown is for work. When a
`
`8
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`user taps the letter w, additional information such as further telephone numbers for
`
`that contact are displayed, as in Chew’s Figure 5. In other words, Chew uses an
`
`abbreviation, such as the letter w, as an expandable item rather than reducing a
`
`number of characters to be displayed in an entry. Furthermore, Chew does not
`
`appear to teach determining a number of characters and then reducing a number of
`
`characters in response thereto.
`
`The Applicant then amended claim 3 to rewrite dependent claim 8 in
`
`independent form to gain allowance. Id. at 51–52.2
`
`However, the combination of Maloney and Bertram and the combination of
`
`Excel and Bertram render obvious determining a number of characters included in
`
`each entry and then displaying a portion of each entry to have a fewer number of
`
`characters (or truncating). As demonstrated below, this prior art renders obvious
`
`the other limitations of claims 1–9 and 13 as well.
`
`The Board Should Institute Grounds Including Maloney
`
`The grounds of unpatentability including Maloney deserve institution
`
`because they combine Maloney with Bertram in a way that was not considered by
`
`the USPTO Examiner.
`
`2 Combinations including Maloney in view of Crandall were also cited against the
`
`claims of the parent application, which issued as US 6,760,720. ‘720 PH
`
`(EX1003), at 196–204.
`
`9
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`Maloney was used as a primary reference in the prosecution. The issue is
`
`whether the Maloney grounds, as presented herein, fall under 35 U.S.C. § 325(d)
`
`and thus are subject to the Board’s discretion to deny institution. In Juniper
`
`Networks, Inc. v. Mobile Telecommunications Techs., LLC, IPR2017-00642 (Paper
`
`24), the Board addressed its discretion to deny institution where “the same or
`
`substantially the same prior art or arguments” were previously presented to the
`
`Office (e.g. during prosecution of the patent). Drawing from a collection of other
`
`institution decisions, the Board provided a list of factors to consider, each
`
`discussed below. See Juniper Networks, 8–9. The facts as applied using the Juniper
`
`Networks factors weigh in favor of institution:
`
`1) The similarity of the asserted art in the prior art involved during
`
`examination. Maloney was used as a primary reference during prosecution, but the
`
`present ground of unpatentability combines Maloney with Bertram (US
`
`7,168,039). Unlike Crandall and Chew, Bertram explicitly discloses in its Figure 7
`
`and associated description determining a number of characters in entries of data
`
`fields and then reducing the characters to conform to a “set width.” Figure 7 and its
`
`associated description in Bertram walks the reader through a process that
`
`iteratively reduces characters one-by-one starting from the rightmost side, and after
`
`a given character is removed, the process determines again the number of
`
`characters and compares them to the set width and removes the next character if
`
`10
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`appropriate. Bertram (EX1007), at 7:55–8:65. Bertram applies this process to
`
`either column headings or entries in columns, as shown in its Figure 8. Id. at 8:66–
`
`9:8, see also 7:30–32. Bertram directly addresses the limitations the examiner
`
`perceived were missing, and operates differently than do either Crandall or Chew,
`
`and thus the combination of Maloney and Bertram is different than anything that
`
`was before the Examiner during prosecution.
`
`2) The extent to which the asserted art was considered during
`
`examination, including whether the prior art was the basis for rejection.
`
`Maloney was considered and discussed during prosecution of the ’423 Patent.
`
`Bertram, however, was not.
`
`3) The cumulative nature of the asserted art and the prior art
`
`considered during examination. As noted above, Bertram is not cumulative of
`
`either Crandall or Chew.
`
`4) Whether Petitioner has pointed out sufficiently how the Examiner
`
`erred in its consideration of the asserted prior art. The Examiner did not have
`
`Bertram before him during examination. Furthermore, the present Petition does not
`
`use Maloney in any way inconsistent with any issues decided during examination.
`
`5) The extent of the overlap between the arguments made during
`
`examination and the manner in which Petitioner relies on the prior art or the
`
`applicant’s arguments during examination. Bertram discloses a much different
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`technology than does either Crandall or Chew. Due to these differences, none of
`
`the arguments made during examination regarding either Crandall or Chew applies
`
`to Bertram. Therefore, there is no overlap.
`
`6) The extent to which additional evidence and facts presented in the
`
`Petition warrant reconsideration of the prior art. Bertram is highly relevant
`
`evidence of unpatentability of the claims. The combinations of Maloney and
`
`Bertram are different than those combinations using either Crandall or Chew and
`
`thus warrant reconsideration.
`
`The Board Should Institute Grounds Including Excel
`
`The grounds of unpatentability including Excel deserve institution because
`
`neither Excel nor Bertram were cited or considered by the USPTO Examiner. In
`
`addition, neither reference is similar to, nor cumulative of, the art cited during
`
`examination. Petitioner discusses Bertram above and shows infra at § VI.B.3 that
`
`Excel is not cumulative of Maloney. Further, the operation of Maloney with respect
`
`to schemas is different than that of Excel, as discussed in the analysis section
`
`below for Grounds 1 and 2.
`
`V. CLAIM CONSTRUCTION
`
`Here, the claim language is “given its broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Terms not
`
`12
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`

`

`Petition for Inter Partes Review of U.S. Patent 7,302,423
`
`specifically construed below have their plain and ordinary meaning under the
`
`broadest reasonable interpretation. See id.
`
`A. “truncation”
`
`The ’423 Patent does not define this term, but it does provide an example at
`
`8:8:27–9:2. Such example is consistent with the IBM Dictionary of Computing:
`
`“The deletion or omission of a leading or of a trailing portion of a string in
`
`accordance with specified criteria.” IBM (EX1010), at 3. This is what a POSITA
`
`would have understood to be the broadest reasonable interpretation. Greenspun
`
`¶¶39–43 (EX1005); see also (EX1003) at 174.
`
`B. “determining a database schema”
`
`The ’423 Patent states, “[a]ll databases require a consistent structure, termed
`
`a schema, to organize and manage the information. In a relational database, the
`
`schema is a collection of tables. Similarly, for each table, there is generally one
`
`schema to which it belongs.” ’423 Patent (EX1001), at 1:5–54. Thus, a POSITA
`
`would have understood a schema, as used in the claims and specification, is “a
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`collection of tables of a database.” The ’423 Patent specification does not use the
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`term “determining” a database schema, but it does provide an example of
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`“identify[ing] a database schema.” See id. at 6:32–42. Accordingly, a POSITA
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`would have understood the broadest reasonable interpretation of “determining a
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`database schema” to include “determining a collection of tables of a database.”
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`Greenspun ¶¶44–45 (EX1005).
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`VI. CLAIMS 1-9 AND 13 ARE UNPATENTABLE3
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`A. Challenge 1: Claims 1–4, 7–9, and 13 are unpatentable under 35
`U.S.C § 103 over Maloney in view of Bertram
`
`1. Overview of Maloney
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`Maloney describes a system and method “of retrieving data in a relational
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`database using a graphical user interface.” Maloney (EX1006), Abstract. In
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`particular, Maloney describes “[p]airs of tables which will comprise a logical
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`schema are selected from the relational database and the logical relationships
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`between the pairs of tables are defined.... the logical relationship between the pairs
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`of tables is stored in a relational database thereby creating a logical schema.”
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`Maloney (EX1006), at 2:58–67. An end user “can use a graphical user interface
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`(GUI) to logical schema [] to design custom forms and reports ... [and the user]
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`selects the fields or columns he wants from a dialog box (not shown) that displays
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`all the columns that are available in [the] logical schema.” Maloney (EX1006), at
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`4:64–5:5. Example user interfaces are shown at Figs. 18–20. Maloney is of record
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`in the ’423 Patent, as explained supra at § IVI.C. See also Greenspun,¶¶46–49
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`
`3 Unless otherwise specified, all bold italics emphasis below has been added. Text
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`in italics is used to signify claim language, while reference names are also
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`italicized.
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`(EX1005).
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`2. Overview of Bertram
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`Bertram is directed to “reducing an amount of horizontal space required
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`when displaying a plurality of columns on a display screen.” Bertram (EX1007), at
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`6:24–26. Bertram teaches a method at Figure 7 that iteratively removes characters
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`from either a column heading or an entry of a column. Id. at 7:26–33. Looking at a
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`particular entry, the method of Figure 7 works from right to left, counting a
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`number of characters against a set width, removing a character if the number of
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`characters is larger than a set width, and repeating the process until the entry is
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`smaller than or equal to the set width. Id. at Figure 7, 6:24–37, 7:55–8:65. In the
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`example of Figure 8, the method removes lower-case letters in the column
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`headings one at a time, counting the letters against the set width and removing
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`those letters, until a given column heading is smaller than or equal to the set width.
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`Id. at 7:55–8:65, Figure 7 steps 176–192. Bertram does not teach away from
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`truncation, instead teaching truncation in addition to removing characters that may
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`appear in a middle of a string, such as spaces and vowels. Id. at 7:13–24, 7:55–64,
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`Figure 7 step 196. Bertram counts among its advantages, efficient use of space,
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`preserving certain information, and the ability to adapt to new monitors or
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`columns. Id. at 4:2–4, 7:14–25. Greenspun,¶¶50–54 (EX1005).
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`3. Reasons to Combine Maloney and Bertram
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`A POSITA would have been motivated to combine Maloney and Bertram
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`for several reasons. First, Maloney and Bertram are analogous prior art and in the
`
`same field of endeavor. Both Maloney and Bertram disclose displaying data in a
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`tabular format and, more specifically, in columns. Maloney (EX1006), at Figures
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`18–20; Bertram (EX1007), at Abstract; Greenspun, ¶55 (EX1005).
`
`Second, Bertram provides an express motivation to use its techniques in the
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`system of Maloney. Bertram teaches that its technique is used for “displaying a
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`plurality of columns on a display screen” and teaches that its technique “can
`
`display information in a format more easily viewed by a user.” Bertram (EX1007),
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`at 2:58–60, 3:4–6. Bertram also describes that the technique is generally applicable
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`to “entries containing text data,” such as those of Maloney’s Figure 20. Bertram
`
`(EX1007), at 7:25–32. Maloney teaches displaying a multitude of entries in the
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`form of Figure 20, which uses a tabular format to show the entries in columns. A
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`POSITA would have understood that data entries may exceed a column width in
`
`Maloney. Thus, a POSITA would have been motivated to apply Bertram’s
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`technique to the displays of Maloney (e.g., headings and entries of the columns in
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`scrolling table 52 of Figure 20) to ensure that the columns of data can fit within a
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`display window and would be readable to a user, would use space efficiently,
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`would preserve information, and would adapt to new columns, as suggested by
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`Bertram. Greenspun,¶¶56–58 (EX1005).
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`In addition, combining the teachings of Maloney and Bertram would
`
`produce predictable, operable results. Applying Bertram’s technique to the
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`interface of Maloney is a use of a known technique (reducing a number of
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`characters in column data) to improve a similar method (a graphical user interface
`
`displaying data in columns) in the same way. Implementing Bertram’s technique to
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`the interface of Maloney is also an application of a known technique (reducing a
`
`number of characters in column data) to a known method (a graphical user
`
`interface displaying data in columns) ready for improvement to yield predictable
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`results by achieving the benefits of Bertram. Maloney’s operation would
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`essentially be unchanged, except for implementing Bertram’s abbreviation
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`technique, which demonstrates that a POSITA would have had a reasonable
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`expectation of success. Greenspun, ¶59–61 (EX1005).
`
`4. Analysis
`
`Claim 1
`
`[1.1] 1. A computer-implemented method for displaying data comprising:
`Maloney teaches this feature by disclosing a “computer-implemented
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`method for providing a hierarchical view of data stored in a plurality of relational
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`database tables,” which discloses this limitation. Maloney (EX1006), at 20:4–6,
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`see also 4:5–20; Greenspun, pp.29–30 (EX1005).
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`[1.2] determining a database schema for a database;
`Maloney teaches “[p]airs of tables which will comprise a logical schema are
`
`selected from the relational database and the logical relationships between the pairs
`
`of tables are defined.... [o]nce a join operator is selected for each join field, the
`
`logical relationship between the pairs of tables is stored in a relational database
`
`thereby creating a logical schema,” which discloses this limitation. Maloney
`
`(EX1006), 2:58–67. Maloney’s disclosure of selecting tables and establishing a
`
`logical relationship to create the logical schemas teaches determining a collection
`
`of tables of the database, as construed above at § V.B, i.e., determining a database
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`schema for a database. Maloney (EX1006), at 2:58–67, see also 17:13–18.
`
`Maloney also teaches providing a list of available tables to a user, which
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`additionally teaches this feature. Id. (EX1006) at 8:43–48; Greenspun pp.30–31
`
`(EX1005).
`
`[1.3] providing a list of database fields, wherein the list includes a descriptor
`indicating a data category;
`Maloney teaches: (1) providing a list of database fields; and (2) the list
`
`includes a descriptor indicating a data category, by disclosing the dialog boxes of
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`Figures 18–20, where each of the fields 44, 46, 48, 50 is listed and has a name,
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`e.g., “storeid” with a text 49 descriptor indicating a data category, e.g., “Store
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`number.” “The selected master level data fields 46 selected by the end user from
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`the Customer level 129 of FIG. 18, namely, lname, fname, phone, storenm, and
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`Petition for Inter Partes Review of U.S. Patent 7,302,423
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`storeid, are pasted individually into the top portion of the form window as
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`individual data fields 48. Each data field is preceded by text 49 describing the field
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`created by the end user when designing the form.” Maloney (EX1006), at 17:58–
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`18:12, see also 7:43–45, 17:18–21, 17:22–27; Greenspun pp.31–35 (EX1005).
`
`Lists of database fields
`
`Descriptor indicating
`data categories
`
`
`
`
`
`
`
`
`Lists of database f