UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`VILOX TECHNOLOGIES, LLC.
`Patent Owner
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`Case IPR2018-00044
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`Patent No. 7,302,423
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`Patent Owner’s Sur-Reply in Support of Patent Owner’s
`Response
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`VILOX TECHNOLOGIES, LLC.
`Patent Owner
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`Case IPR2018-00044
`
`Patent No. 7,302,423
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`Patent Owner’s Sur-Reply in Support of Patent Owner’s
`Response
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`TABLE OF AUTHORITIES
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`Cases
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`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ......................................................................... 3
`
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`NFC Tech. LLC v. Matal,
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`871 F.3d 1367 (Fed. Cir. 2017). ...................................................................... 5
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`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
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`841 F.3d 1004 (Fed. Cir. 2016) ....................................................................... 3
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`Price v. Symsek,
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`988 F.2d 1187 (Fed. Cir. 1993) ...................................................................3, 5
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`Singh v. Brake,
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`222 F.3d 1362 (Fed. Cir. 2000) ....................................................................... 5
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`
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`i
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`LIST OF EXHIBITS
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`2001
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`Declaration of Wesley W. Chu, Ph.D. (Patent Owner Preliminary
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`Response)
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`Curriculum Vitae of Wesley W. Chu, Ph.D.
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`Declaration of Dr. Joseph L. De Bellis (Patent Owner
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`Preliminary Response)
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`Excel II
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`U.S. Patent No. 6,593,949 to Chee H. Chew (Chew)
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`Excerpt from Webster’s Dictionary
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`Declaration of Cecil E. Key
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`Patent Owner's Notice of Deposition of Dr., Hsieh-Yee
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`Curriculum Vitae of Dr. Ingrid Hsieh-Yee
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`Library of Congress Online Catalog Listing for Microsoft Excel
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`2000 Bible, Full Record
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`2011
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`Library of Congress Online Catalog Listing for Microsoft Excel
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`2000 Bible, MARC Tags
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`2012
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`Wayne State University Library System Listing for Microsoft
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`
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`ii
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`Excel 2000 Bible
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`Deposition Transcript of Dr. Ingrid Hsieh-Yee
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`Excel III (excerpt of Excel 2000 Bible)
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`Deposition Transcript of Philip Greenspun, Ph.D.
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`U.S. Patent No. 6,760,720 to De Bellis
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`Declaration of Wesley W. Chu, Ph.D. (Patent Owner Response)
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`The IEEE Standard Dictionary of Electrical and Electronics
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`Terms (6th ed.)(excerpt) (Patent Owner Response)
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`Webster’s New Collegiate Dictionary (excerpt)
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`Microsoft Press Computer Dictionary (3rd ed.) (excerpt)
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`Declaration of Dr. Joseph L. De Bellis (Patent Owner Response)
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`Declaration of Lucille Marie De Bellis (Patent Owner Response)
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`Warehouse.com Receipt (Dec. 10, 1999)
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`Tallgrass Technologies Receipt (Dec. 15, 1999)
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`Fig. 10 from U.S. Patent No. 6,760,720
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`Letter from Dr. Joseph L. De Bellis to John Harrop (Dec. 28,
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`1999)
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`2027
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`Declaration of Wesley W. Chu, Ph.D.
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`iii
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`Patent No. 7,302,423
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`The IEEE Standard Dictionary of Electrical and Electronics
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`2028
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`Terms (6th ed.)(excerpt)
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`2028
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`Declaration of Lucille Marie De Bellis
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`iv
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`Petitioner’s Reply misconstrues Patent Owner’s Response as asserting that
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`Bertram does not teach altering data. Paper 41 at 16. Rather, Patent Owner
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`showed conclusively, and Dr. Greenspun admitted during his deposition, that
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`application of Bertram’s teaching to the list of Maloney, Fig. 18, would render
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`certain of the names as displayed therein unrecognizable to a user. Paper 26 at 8-9,
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`46-46; Ex. 2015, 134:32-137:16. The names provided in Fig. 18 identify the
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`pathway to data tables accessible by a user to create reports, such as the report
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`shown in Fig. 20 of Maloney. Ex. 1006, 9:3-10, 12:66-13:4, 14:59-65. Maloney
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`discloses that Fig. 18’s pathway names can be permanently altered and suggests
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`that alterations to the pathway names initiated by the user might be beneficial. Id.
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`14:59-65. Whether the names were permanently altered or merely altered for
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`display is not germane. Alternation for display is sufficient to render the pathway
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`names unrecognizable to the user. Petitioner’s expert admitted that a user might
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`not recognize the truncated table names generated by application of Bertram’s
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`teachings. Ex. 1015, 134:22-137:16. Since Maloney explicitly states the
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`importance of displaying pathway names recognizable by the user (Ex. 1006,
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`12:66-13:4), alteration according to Bertram render Maloney inoperable. Thus, a
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`PHOSITA would not combine Bertram’s teaching with Maloney’s invention.
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`Petitioner also incorrectly argues that Excel combined with Bertram “would
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`not have led a PHOSITA to alter the underlying data, whether in a file or in a cell.”
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`1
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`PET RESP pg 17. While it may be true that Excel modified by Bertram’s teachings
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`would not alter the content of data in an external database linked to an Excel
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`spreadsheet, the same cannot be said for data within the Excel spreadsheets
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`themselves. Furthermore, not all Excel spreadsheets link to an external database.
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`However, whether linked to an external database or not, a PHOSITA would know
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`that an Excel spreadsheet is saved in computer memory (i.e., volatile storage) and
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`that cell contents would be changed when Bertram’s teachings are combined with
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`Excel. Thus, applying Bertram’s teachings changes the data displayed in an Excel
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`spreadsheet. Paper 26 at 57-59. A PHOSITA would also know that an Excel
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`spreadsheet may be, and usually is, stored in the persistent memory of a computer
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`(by, for example, operating a “save as” function; when the “save as” function is
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`executed, ALL displayed values are saved to permanent storage on the computer).
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`The abbreviation routines taught by Bertram as applied to data displayed in
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`an Excel spreadsheet would render that data unusable and therefore make Excel
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`inoperative for its intended purpose. Paper 26 at 60-65. A PHOSITA would
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`therefore not combine Bertram and Excel.
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`In its Reply, Petitioner asserts that Patent Owner failed to show Ex. 1001,
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`Excel 2000 Bible, is not prior art. Petitioner’s assertion is based on significant
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`distortions of both the facts of this case and the controlling law. As to the law, a
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`reference must have been shelved so as to be actually accessible to the public;
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`2
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`mere cataloguing is insufficient to qualify a reference as “publicly available.” In
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 1986). As to the facts, Petitioner asserts
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`it established that Excel 2000 Bible was “publicly available as early as July 1999.”
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`Paper 41 at 8. This assertion is contradicted by Petitioner’s expert, who testified
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`that Excel 2000 Bible was catalogued in the Library of Congress in July 1999 (Ex.
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`2013, 66:2-14), but explained that the earliest date Excel 2000 Bible was shelved
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`and available to the public was October 26, 1999 (id., 55:11-56:17). Petitioner did
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`not inform the Board of this contradictory testimony from its own expert.
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`Petitioner then incorrectly asserts that Patent Owner cannot establish
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`conception or reduction to practice. Paper 41 at 10-14. As a general matter,
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`conception and reasonable diligence in reduction to practice are assessed according
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`to the “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).
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`Reasonable diligence does not require a patent owner to prove that the inventor
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`continuously exercised diligence every day within the critical period; rather, the
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`patent owner must show “reasonably continuous diligence.” Perfect Surgical
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`Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016).
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`Petitioner incorrectly contends that Patent Owner failed to show conception
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`because Patent Owner did not allege that the claimed invention was conceived
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`before the priority date. Paper 41 at 9. This contention is belied by Patent
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`Owner’s documentary evidence, as explained and corroborated by both Dr. De
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`3
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`Bellis and Ms. De Bellis. Paper 26 at 38; Ex. 2021, ¶¶ 9-11; Ex. 2022 ¶ 6; Ex.
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`2029 ¶¶ 6-10. Patent Owner’s documentary evidence shows the inventor
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`conceived of the claimed inventions by at least May 1999, began reasonably
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`continuous diligent reduction to practice until a system with all the claimed
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`limitations (as shown by, inter alia, Figs. 4 and 10 of the ‘423 Patent) was built,
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`and then demonstrated the invention to Ms. De Bellis and presented it to his
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`attorneys at a December 9 meeting. Ex. 2021 ¶¶ 19-23. The pace of Dr. De Bellis’
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`reduction to practice is easily understood: he was first a surgeon, one of only two
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`such surgeons in his area, not a software developer. His medical practice placed
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`significant demands on his time during the critical period.
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`Petitioner attacks Patent Owner’s actual reduction to practice by incorrectly
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`alleging that the screenshot of the system (Fig. 10) does not show “displaying a
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`portion of each entry” or “reducing a number of characters to be displayed for each
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`entry” “if the number of characters included in each entry exceeds a specified
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`amount of characters.” Paper 41, at 11-14. Petitioner concedes that Fig. 10
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`teaches a truncator that reduces the number of characters based on the number of
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`entries in the search results exceeding the number of displayable results. Id. at 12.
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`A PHOSITA would understand from the ‘423 Patent that one way of determining
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`whether the number of entries exceeds the displayable results is by determining the
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`4
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`number of characters. Ex. 1001 at 9:19-24; Ex. 2017 ¶¶ 50-51; Ex. 2027 ¶ 27.
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`Petitioner makes no showing to the contrary.
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`Petitioner incorrectly asserts that Patent Owner has not shown reasonable
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`diligence based on a six-week period from October 28, 1999 to December 9, 1999
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`Paper 41 at 15.. Given the passage of nearly two decades since the events
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`occurred, the level of evidence presented by Patent Owner is more than sufficient
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`to establish conception and reasonable diligence under the rule of reason. NFC
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`Tech. LLC v. Matal, 871 F.3d 1367, 1374 (Fed. Cir. 2017).
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`Next, Petitioner asserts that evidence corroborating conception also must
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`clearly show each limitation of the claimed inventions. Paper 41 at 9. This is not
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`the law. Corroborative evidence need only be reasonably sufficient to allow
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`evaluation of the credibility of the inventor’s testimony. Singh v. Brake, 222 F.3d
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`1362, 1367 (Fed. Cir. 2000) (citing Price, 988 F.2d at 1195). Here, Patent Owner
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`has presented corroborating documentary evidence that has been explained without
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`contradiction by a witness with first-hand knowledge. Ex. 2023; Ex. 2024; Ex.
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`2025. Under the circumstances, the fact that the witness has the same last name as
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`the ‘423 Patent’s inventor is immaterial. Petitioner had the opportunity to take Ms.
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`De Bellis’ deposition if it wanted to challenge her credibility but chose not to.
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`Thus, Excel Bible is not prior art because it was not publicly available
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`before Patent Owner’s conception and reasonably diligent reduction to practice.
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`5
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`Respectfully submitted,
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`Dated: October 22, 2018
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`By:
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` /John K. Harrop/
`John K. Harrop
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`Counsel for Patent Owner Vilox
`Technologies LLC
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`6
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`Case IPR2018-00044
`Patent No. 7,302,423
`Sur-Reply in Supp. of Pat. Owner Resp
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`indicated below, a complete and entire copy of this submission, including the
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`exhibits hereto, was provided by email to Petitioner’s counsel via email, as
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`agreed to by Petitioner’s Service Information in the Petition submission, by
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`serving the email address of record as follows:
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`Dated: October 22, 2018
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`Respectfully submitted,
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`By:
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` /John K. Harrop/
`John K. Harrop
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`Counsel for Patent Owner Vilox
`Technologies LLC
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