UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
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`VILOX TECHNOLOGIES, LLC.
`Patent Owner
`
`____________________
`
`Case IPR2018-00044
`Patent No. 7,302,423
`____________________
`
`DECLARATION OF WESLEY W. CHU, PH.D.
`October 22, 2018
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
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`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES, LLC.
`Patent Owner
`
`____________________
`
`Case IPR2018-00044
`Patent No. 7,302,423
`____________________
`
`DECLARATION OF WESLEY W. CHU, PH.D.
`October 22, 2018
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`INTRODUCTION
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`I prepared this Declaration at the request of Vilox Technologies, LLC stating
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`I.
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`1.
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`my opinions as an independent expert regarding issues raised in the matter of
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`Petition IPR2018-00044 (“Petition”), the April 19, 2018 Decision on Institution of
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`Inter Partes Review (“Decision”), Petitioner’s Reply to Patent Owner’s Response
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`(“Petitioner’s Reply”), and Petitioner’s Opposition to Patent Owner’s Motion to
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`Amend (“Opposition”).
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`2.
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`In preparation for this Declaration, I also studied Exhibit 1013, Declaration of
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`Dr. Philip Greenspun (Greenspun-MtA), Exhibit 1014, U.S. Patent 6,452,597 to
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`Goldberg (Goldberg), Petitioner’s Opposition (Opposition), and Petitioner’s Reply
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`(Petitioner’s Reply). I also reviewed Exhibits 1001 – 1010 provided by Petitioner
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`as well as Exhibit 2021, Declaration of Dr. Joseph L. De Bellis, Exhibit 2022 and
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`2029; Declarations of Missy De Bellis; Exhibit 2025, Figure 10 of the ‘423 Patent;
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`Exhibit 2015, Deposition Transcript of Dr. Philip Greenspun; and all Exhibits and
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`other documents referenced in Exhibit 2017, Declaration of Dr. Wesley W. Chu.
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`3.
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`In preparing this Declaration I also relied on my knowledge and experience
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`gained through 56 years as an engineer, professor, and consultant.
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`4.
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`I am being compensated for this work, and my compensation is not dependent
`
`on the outcome of this matter.
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 2 of 17
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`
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
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`5. My experience is detailed in my previous Declaration, Exhibit 2021. My
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`Curriculum Vitae is provided as Exhibit 2002.
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`III. OPPOSITION TO MOTION TO AMEND
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`6.
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`The Opposition states that the ‘423 Patent does not provide written description
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`support for the proposed amended claim 24 limitation (limitation [24.5])“displaying
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`a truncated portion of each entry in the selected database field.” The Opposition
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`alleges that what is disclosed is “instead, a subset of the entries … and not each
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`entry.” Opp., p. 1-2.
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`7.
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`The Opposition notes that “Patent Owner asserts limitation [24.5] is supported
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`by the ‘423 patent from column 8, line 48 to column 9, 2, and at column 9 at lines
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`20-24.” Opp., p. 2.
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`8.
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`The Opposition makes similar allegations with respect to proposed amended
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`claim 25, specifically limitation [25.8]. Opp., pp. 5-6
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`9.
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`Proposed amended claims 24 and 25 are directed to truncating entries in
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`search results, with the final, truncated list or display of entries including a portion
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`of each truncated entry. The claims recite truncation limitations based on
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`determining a number of characters in each original entry and then truncating the
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`entry. The Opposition goes to great length to alleged that the cited portions of the
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 3 of 17
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`
`
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`‘423 Patent “do not provide the requisite written description support for the amended
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`limitation” of “displaying a truncated portion of each entry in the selected database
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`field.” Opp., pp 2-3. The Opposition then cites a section of the disclosure that shows
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`truncation of six city names to three entries. Opp., p 3. The Opposition concludes
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`that truncating the six city names should produce six truncated entries, and that,
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`accordingly, the “disclosure,” by showing only three entries, namely “Arm, New,
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`Riv” fails to support the claim limitations. Opp., pp 3-4. But the Opposition goes
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`on to acknowledge that the disclosure shows “truncation of entries to collapse the
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`number of entries into a smaller or lower number, such that the smaller or lower
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`number of entries can be displayed on a terminal screen” and that “the purpose of
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`‘truncation’ in the ‘423 Patent is to reduce a number of lines in a result list so as to
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`collapse the list vertically by reducing the number of characters in returned entries
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`to common characters.” Opp., pp 4-5.
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`10. A PHOSITA would understand that in proposed amended claims 24 and 25,
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`the claimed truncation reduces characters and will result in collapsing the result list
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`vertically so that the result list may be displayed on the terminal. Thus, the cities
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`Armandia and Armonk, in the disclosed example, become “Arm,” thereby reducing
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`the number of lines by one. However, “a truncated portion [in the example, “Arm”]
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`of each entry in the selected database field is displayed,” as recited in proposed
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 4 of 17
`
`
`
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`amended claims 24 and 25. Nowhere do the proposed amended claims 24 and 25
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`recite that each entry, once truncated, must be displayed, as the Petitioner apparently
`
`assumes. That is, as a PHOSITA would understand, neither proposed amended
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`claim 24 nor 25 recites or requires “displaying each truncated entry.” Doing so
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`would be contrary to the disclosure of the ‘423 Patent, as Petitioner acknowledges.
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`Opp., pp. 2-3. The claim limitation of “a truncated portion of each entry in the
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`selected database field is displayed” is clearly supported in the section of the
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`disclosure cited in the Opposition. Thus, a PHOSITA, viewing the disclosure and
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`each of proposed amended claims 24 and 25, would understand that truncation of
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`Armandia and Armonk to three characters and displaying “Arm” on the terminal
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`meets the limitation of “a truncated portion of each entry in the selected database
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`field is displayed” – “Arm” being a truncated portion of Armandia and Armonk.
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`11. Proposed amended claims 26 and 27 add to their base claim 25 the limitations
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`“all entries from the selected data field are displayed on a single page of a terminal.”
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`Claims 26 and 27 also recite “the specified limit is determined dynamically, based
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`on a characteristic of the terminal.” However, this limitation was already present in
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`claim 6, the original claim from which claims 26 and 27 are derived. In attacking
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`proposed amended claims 26 and 27 for alleged lack of support, the Opposition
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 5 of 17
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`
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`merely refers to its arguments related to the allegedly lacking disclosure in support
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
`
`of proposed amended claims 24 and 25.
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`12. A PHOSITA would understand that the operation of claim 25 generates a
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`result list having truncated entries. The example cited in the Opposition is a result
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`list having three entries “Arm, New, Riv.” Claims 26 and 27 merely recite that the
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`entries are displayed on a single page of a terminal. The Opposition asserts that
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`“[t]he identified portion of the ‘423 Patent, column 8 line 40 to 52, does not provide
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`written description support for determining a limit dynamically’.” Opp., pp 7-8. The
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`cited disclosure states “if the size of the resulting result list is larger than some
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`numeric parameter related to the display size of the terminal 14, then the constrains
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`may be modified by the truncator 152 so that the result list can be accommodated
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`(e.g., displayed on one page) by the terminal 14.” Ex 1001, 8:44-48. Thus, this first
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`challenged limitation of claims 26 and 27 is fully supported in the original
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`disclosure. A PHOSITA would have understood that “dynamically determined,” as
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`recited in proposed amended claims 26 and 27, in the context of computer, refers to
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`“an event or process that occurs during computer program execution.” The
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`PHOSITA would have understood the above quoted excerpt from the ‘423 Patent
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`refers to a process (truncation) that occurs during execution of truncator 152, which,
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`a PHOSITA would have known, was a computer program. See Ex. 2028, an excerpt
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 6 of 17
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`
`
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`from IEEE Standard Dictionary of Electrical and Electronic Terms, 1996 ed.
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`(defining “dynamically”).
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`13. Exhibit 1013, Declaration of Dr. Philip Greenspun (“Greenspun MtA”),
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`asserts that certain limitations of proposed claims 26 and 27 “would be taught by
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`Maloney, Bertram, and Kanevsky or Excel, Bertram, and Kanevsky; Greenspun MtA
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`asserts if the underlying database were small in size.” Greenspun MtA, ¶ 13.
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`14.
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`In my opinion, a PHOSITA would find this statement by Petitioner’s expert
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`to be unsupportable and contrary to how the PHOSITA would view the combination
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`of references.
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`15. Specifically, Petitioner’s expert states that “at least some tables would not
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`contain enough data for a multiple screen display to be necessary in the first
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`instance.” Greenspun MtA, ¶ 13. Yet Petitioner’s expert does not quantify what he
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`means by “small in size” and a PHOSITA would be left to wonder just what the
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`definition of “small in size” is. A PHOSITA might understand a small database
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`could have perhaps a hundred entries. The PHOSITA would know that a hundred
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`entries may be too large to fit on certain displays. Furthermore, the PHOSITA would
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`know that the ability to fit data onto a single page of a terminal depends on not just
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`the number of entries, but also on the quantity of data in each entry. A PHOSITA
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`would find arguments of Petitioner’s expert related to “databases [that are] small in
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 7 of 17
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`
`
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`size” to be vague and technically incorrect. In short, Petitioner’s expert proposes a
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`hypothetical without bounds.
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`16. Greenspun MtA then states that Goldberg “explicitly teaches this limitation.”
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`Greenspun MtA, ¶ 14. A PHOSITA would understand that Goldberg neither teaches
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`nor suggests this limitation.
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`17. Goldberg is directed to a system that displays information to a user (i.e., a
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`driver) operating a motor vehicle. An example of such information is an address to
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`which the driver is proceeding; the address is presented on an in-vehicle display.
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`Goldberg discloses that such information “[t]o be useful … should be easily readable
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`by the user. This is particularly true in a vehicle computer because the user (e.g., the
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`driver of the vehicle) may only be able to take brief glances at the display.” Ex.
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`1014, 1:29-33. Goldberg then explicitly discloses that its system is intended to
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`“automatically adjust the size of information being displayed … in order to make
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`the information easily readable while at the same time leaving most (or all) of the
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`information displayed on a single screen.” Ex. 1014, 2:4-9.
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`18. The Opposition notes that Goldberg discloses fitting other applications such
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`as spreadsheet applications to small screens. Opp., p. 15. However, because
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`Goldberg does not describe such a process as displaying a spreadsheet on a small
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`screen, the Opposition provides no citation to Goldberg that would lead a PHOSITA
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 8 of 17
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`
`
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`to understand how such a process could occur. Faced with just a bares statement
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`that its concepts could be used “for spreadsheet applications,” (Ex. 1014, 4:22-25),
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`a PHOSITA would not know how such a spreadsheet application could be
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`“miniaturized” to fit Goldberg’s display and still be “readable” to any occupant of
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`the vehicle (or any user of a small-scale display).
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`19. The passages from Goldberg that I cite in paragraphs 17 and 18 above would
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`lead a PHOSITA to understand that Goldberg’s preeminent concept is to make a
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`sufficient amount of data available on a single screen, if possible, and to make that
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`data “readable” in the sense that the characters are sufficiently large, and the text
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`sufficiently complete, in the sense that the driver would know precisely and with no
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`ambiguity, what information (for example, a street address) is being conveyed, and
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`to do so in a manner that would not distract the driver from his most important task,
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`namely safely operating the vehicle.
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`20. Thus, a PHOSITA would know that Goldberg teaches retention of a sufficient
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`amount of information on the computer display. A PHOSITA would further know
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`that were the information to be displayed reduced for display on a single screen,
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`through some process such as truncation, to the point that the intended information
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`became ambiguous, the information would instead be displayed on multiple screens.
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`In other words, a PHOSITA would know there is some limit to the reduction of
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 9 of 17
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`
`
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`information to make it fit on a single display, rather than the unbound hypothetical
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`proposed by Petitioner’s expert.
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`21. A PHOSITA further would know that Goldberg is directed to display of one,
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`and only one, “entry” on the screen, or within a button on the screen (a “button”
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`being a screen within a screen – see Ex. 1014, 6:36-47 (noting that a “button” is a
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`display area)). The example information items provided in Goldberg all are street
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`addresses (Figures 5a – 5f) or data related to operation of the vehicle (Figure 5g),
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`data that readily may be expressed in the form of a single entry displayable on a
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`single page or screen of the display area (as opposed to spreadsheet and word
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`processing documents, which a PHOSITA would understand would require multiple
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`pages or screens for display).
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`22.
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`In contrast to Goldberg, proposed amended claims 26 and 27 recite “wherein
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`each entry from the selected data field is displayed on a single page of the terminal,
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`and wherein the specified limit is determined dynamically, based on a characteristic
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`of the terminal.” Claims 26 and 27, depending on proposed amended claim 25, and
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`thereby incorporating all its respective limitations, must be construed to mean that
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`each of a plurality of entries is displayed on a single page of a terminal.
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`23. Petitioner’s expert argues that Goldberg discloses displaying “all entries from
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`the selected data field … on a single page of a terminal.” Greenspun MtA ¶ 14. No
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 10 of 17
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`
`
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`PHOSITA would understand Goldberg provides this teaching. First, Petitioner’s
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`expert states that “Goldberg teaches that, when a given set of data or information is
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`to be displayed on a screen … adjusting the data to be displayed … .” Greenspun
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`MtA ¶ 20 (emphasis added). However, a PHOSITA would understand that nothing
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`in Goldberg discloses or suggests applying its methods to a “set of data,” and
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`Petitioner’s expert fails to cite any disclosure in Goldberg to support this statement.
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`Rather, a PHOSITA would understand that Goldberg is directed to adjusting the size
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`of information contained in a single entry, such as a street address where the driver
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`“is supposed to be going to.” Ex. 1014, 1:63; Figs. 5a – 5g. Even were Goldberg to
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`be read to apply to a “plurality of entries” (which no PHOSITA would understand
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`from studying Goldberg), a PHOSITA would understand that because Goldberg’s
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`system is directed to making data “readable” to a vehicle operator (driver), Goldberg
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`simply would display each of the entries (adjusted in size or not adjusted) on a
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`separate screen or page so that the driver could readily read (and grasp) the data
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`using only brief glances at the computer screen to avoid distraction from safe
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`operation of the vehicle. In summary, a PHOSITA would not understand that
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`Goldberg provides a teaching or suggestion to display “each of a plurality of entries
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`on a single page of the terminal.” Thus, it appears Petitioner is trying to stretch
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`Goldberg’s disclosure to apply it to proposed amended claims 26 and 27.
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 11 of 17
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`
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`In addition to no teaching or even suggesting of the claim limitations of
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`
`24.
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`proposed amended claims 26 and 27, a PHOSITA would not be motivated to
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`combine Goldberg with Maloney, Bertram, and Kanevsky or to combine Goldberg
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`with Excel, Bertram, and Kanevsky. This lack of motivation is based on Goldberg’s
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`express teaching away from the limitations of proposed amended claims 26 and 27.
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`Specifically, Goldberg explicitly states that “adding lines” to a text entry is an
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`important option to make an entry readable for an vehicle operator so as to avoid
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`distracting the driver, who can only briefly view the display. Ex. 1014, 1:46-52. As
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`Petitioner acknowledges, the challenged claims in this IPR, and by extension, the
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`proposed claims, are directed to compressing the vertical space required for display
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`of multiple entries. Opp., pp. 2-3. Adding lines to be displayed is directly contrary
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`to reducing the number of lines to be displayed. Accordingly, a PHOSITA would
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`not be motivated to incorporate Goldberg’s teachings of adding lines to improve
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`readability because to do so would have an effect that is unwanted and diametrically
`
`opposite to the intended reduction of vertical lines the proposed amended claims 24
`
`– 27 encompass in order to make the entries fit the available display space. Petitioner
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`argues that it is citing Goldberg for its alleged teaching of fitting an entry to a small
`
`display, one option for which is to truncate a “caption,” which as Goldberg discloses,
`
`does not affect the informative value of the entry to be “adjusted.” Ex. 1014, 4:35-
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 12 of 17
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`
`
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`45. However, this argument ignores Goldberg’s clear disclosure to add lines, which
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`Petitioner clearly ignores; that is, Petitioner cites only so much of Goldberg as
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`Petitioner finds helpful while ignoring portions of Goldberg that are harmful to
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`Petitioner’s position and argument.
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`IV. PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
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`PETITIONER’S PETITION
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`25.
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`In its Reply to Patent Owner’s Response, Petitioner states “Vilox does not
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`allege conception of the claimed subject matter.” Petitioner’s Reply, page 1. More
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`specifically, in the Petitioner’s Reply, Petitioner states Vilox fails to prove reduction
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`to practice and that “Patent Owner must produce evidence showing the inventor …
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`constructed an embodiment or performed a process that met all the claim
`
`limitations.” Petitioner’s Reply, page 10. However, the ‘423 Patent includes Figure
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`10, which Patent Owner avers is a screen shot of a prototype search-on-the-fly
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`system developed by Patent Owner and demonstrated to both Missy De Bellis and
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`Patent Owner’s attorneys at least by December 9, 1999. Missy De Bellis testified to
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`this fact in her July 9, 2018 Declaration:
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`Submitted concurrently with my declaration as Exhibit 2025 is Figure
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`10 to U.S. Patent 6,760,720. I recognize Figure 10 to be a reproduction
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`of a screenshot of the search-on-the-fly system developed and
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 13 of 17
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`
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`demonstrated by Dr. De Bellis and Mr. Freire. I recognize it because I
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`specifically recall Mr. Freire importing data from the telephone book
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`for purposes of demonstrating the search-on-the-fly software.
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`Ex. 2022, ¶ 25.
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`26. Furthermore, Dr. De Bellis testified in his July 9, 2018 Declaration (Exhibit
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`2021) as follows:
`
`I explained to Ms. De Bellis that by using the system and methods
`
`described above, we would have much better visibility into the data for
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`a given patient. In essence, she, as Office Manager, would be able to
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`roll and tumble the data across our multiple databases, or search on the
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`fly. Our software then would truncate search results, as necessary, so
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`that she could view all search results on one page of the terminal, which
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`would allow her to recognize the results.
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`Ex. 2021, ¶ 11.
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`27. A PHOSITA would understand that Figure 10 as described in the ‘423 Patent
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`discloses each and every limitation of independent claims 1 and 3. Below is a chart
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`comparing claim 1, as exemplary, to Figure 10 and its accompanying description:
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`
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`
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`IPR 2018-00044
`Exhibit 2027 / Page 14 of 17
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`
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`Claim limitation
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`Figure 10 (and accompanying
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`description, including description of
`
`the SOF search engine)
`
`Determining a database schema for a
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`A PHOSITA would understand that a
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`database
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`schema is determined in order to present
`
`the list of available data fields displayed
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`in 201.
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`Providing a list of database fields …
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`The list of data fields in 201 includes
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`includ[ing] a descriptor …
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`descriptors (e.g., Name, Address)
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`Receiving a search selection
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`203 shows receiving a search selection
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`Determining a number of characters
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`The description of the SOF search
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`for cities starting with the letter “A.”
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`engine discloses this limitation: See
`
`Ex. 1001, P 7:19 - 16:40 and Figures 4,
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`10 – 16, 18 – 24, 27 – 38, 40 -49, and
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`52.
`
`If the number of characters in each entry
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`201 and 209, for example, show
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`exceeds
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`a
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`specified
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`amount of
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`“displaying a portion of each entry.”
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`IPR 2018-00044
`Exhibit 2027 / Page 15 of 17
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`Claim limitation
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`Figure 10 (and accompanying
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`
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`description, including description of
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`the SOF search engine)
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`characters, displaying a portion of each
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`entry
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`If the number of characters … does not
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`211, for example, shows displaying
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`exceed the specified amount, displaying
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`each entry in its entirety.
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`each entry in its entirety.
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`
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`28.
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`In summary, a PHOSITA would understand Patent Owner, by December 9,
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`1999, at the latest, reduced to actual practice the inventions conceived as late as May
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`1999.
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`V. CONCLUSION
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`29. This Declaration and the opinions I express herein are made to the best of my
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`knowledge and understanding based on the material I reviewed. I declare that all
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`statements made herein based on my own knowledge are true and all statements
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`made herein based on the information I reviewed are believed to be true, and further
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`that I made all statements with the knowledge that willful false statements are
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`IPR 2018-00044
`Exhibit 2027 / Page 16 of 17
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`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Wesley W. Chu, Ph.D.
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`United States Code.
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`Date: October 22, 2018
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`Wesley W. Chu, PhD
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`IPR 2018-00044
`Exhibit 2027 / Page 17 of 17
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